DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
The instant application 18/551,255, filed 09/19/2023, is a 371 National Stage Entry of international patent application PCT/EP2022/057156, filed 03/18/2022, and claims foreign priority to European patent application EP 21163835.8, filed 03/19/2021.
Status of Action/Claims
Receipt of Remarks/Amendments filed on 11/26/2025 is acknowledged. Claims 1, 3-5, 7-22 are currently pending in this application and are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Note: This is a second non-final office action that is prompted by further consideration of the instant claims and the prior art.
Claim Objections
Claim 4 is objected to because of the following informalities:
In claim 4, the recitation “An aqueous suspension” should recite “The aqueous suspension”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 16-18 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites “according to one of claims 1 to 7”. There is insufficient antecedent basis for this limitation in the claim because claims 2 and 6 have been cancelled and this renders the claim indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 16-18 recite the broad recitation colorant, and the claim also recites pigment which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 depends from one of claims 1 to 7 and the claim fails to further limit the subject matter of the claims upon which it depends and/or improperly broaden the subject matter of claims from which it depends. For example, Claim 5 recites wherein the vegetable oil is soybean oil and claim 4 recites 75 to 125 gram/liter of the vegetable oil. Claim 8 recites 25 to 125 grams/let of a vegetable oil, and this improperly broadens the amount of vegetable oil of claim 4 and the soybean oil of claim 5 (vegetable oil is broader than soybean oil of claim 5). The recitation “25 to 125 gram/liter of an oleyl alcohol polyglycol ether” in claim 8 also improperly broadens the amount of oleyl alcohol polyglycol ether recited in claim 4.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-5, 7-22 are rejected under 35 U.S.C. 103 as being unpatentable over CN-111990405-A (Shao, Y. et al) published 11/27/2020 (cited, with machine translation, in PTO-892) in view of WO-2020245088-A1 (Martelletti, A. et al) published 12/10/2020 (cited in PTO-892; utilizing corresponding US 2022/0322661 A1 as English translation), US 2009/0186767 A1 (Arbogast, S. et al) published 07/23/2009 (cited in PTO-892), WO 2014131337 A1 (Bristow, T.) published 09/04/2014 (cited in IDS), WO 2012/130823 A1 (Sowa, C. et al) published 04/10/2012 (cited in PTO-892), WO 2011030806 A1 (Okada, Y) published 03/17/2011 (cited in PTO-892), Anon.; “Toximul 8315” 01 June 2015; pp. 1-2 https:/www.stepan.com/content/dam/stepan-dot-com/webdan/website-product-documents/product-bulletins/surfactants/TOXIMUL8315.pdf (cited in IDS, hereinafter “Toximul 8315”), AU 2018282387 A1 (Pentland, P. et al) published 07/11/2019 (cited in PTO-892) and Martin (US20210015098A).
Shao teaches a nematicidal agricultural composition containing fluopyram and cyclobutrifluram wherein the mass ratio of fluopyram to cyclobutrifluram in the agricultural composition is 20: 1-1: 30 (claims 1 and 2). Shao teaches the composition is formulated in an agriculturally acceptable formulation, with components including adjuvants or carriers to assist the efficacy of the fluopyram and cyclobutrifluram (claim 3). Shao exemplifies the use of a 400 g/L fluopyram-cyclobutrifluram suspension and demonstrates its improved efficacy against Meloidogyne incognita inoculated on root seedlings compared to a suspension of fluopyram alone and a suspension of cyclobutrifluram alone ([0023]-[0030]). The Examiner calculates the concentration of cyclobutrifluram in the exemplified 400 g/L suspension to be roughly 387 g/L in the suspension when in a mass ratio of 1 fluopyram to 30 cyclobutrifluram. Shao also exemplifies the use of a similar preparation of fluopyram-cyclobutrifluram in controlling peanut root knot nematodes ([0036]-[0039]).
Shao teaches that, in order to fully exert the efficacy of the active ingredients in the pesticide, they can be prepared in a formulation that is convenient for application; the dosage form can include suspensions, and when forming said dosage form the ordinarily skilled artisan will know that, in addition to using the pesticide containing nematicidal active ingredients, a variety of adjuvants are needed, such as one or more of a dispersion medium, a dispersant, an emulsifier, a wetting agent, a thickener, defoaming agent, antifreeze agent, disintegrant, binder, filler, carrier, and the like ([0015]).
Shao teaches the nematicidal agricultural composition can be applied in various ways, including seed soaking; soil-borne nematodes are preferentially controlled by soil treatment such as seed soaking and seed coating ([0016]). Shao teaches a seed and seed coating composition which reads on claims 21 and 22.
Shao differs from the instantly claimed invention in that it fails to teach the cyclobutrifluram is present in an aqueous suspension concentrate composition, which includes 25-125 g/L of a vegetable oil and 25-125 g/L of an ethoxylated fatty alcohol; more narrowly, Shao fails to teach that the composition comprises 75-125 g/L of vegetable oil, and 60-110 g/L of ethoxylated fatty alcohol. Because Shao doesn’t teach inclusion of these two ingredients, Shao fails to teach that the composition comprises more vegetable oil than ethoxylated fatty alcohol. Additionally, Shao fails to teach that said composition comprises 100 to 300 g/L of cyclobutrifluram.
Because Shao doesn’t teach the full composition of instant claims, Shao also differs from the instantly claimed invention in that it fails to teach a method of controlling pests in a plant comprising applying a composition to the seed of a plant, wherein the plant is selected from a long list, more narrowly barley, wheat, peanut, and rice, as recited in instant claims. Also due to the fact that Shao doesn’t teach this method, Shao also doesn’t teach the method wherein the composition comprises a further pesticidally active ingredient.
Martelletti teaches adjuvants in agrochemical formulations can have various functions, such as, for example, improving application of sprays, increasing effectiveness of agrochemical active ingredients, and reducing drift of active ingredients ([0006]). Martelletti teaches an adjuvant combination for improving bioavailability of an active ingredient in an herbicidal composition ([0004]). Martelletti teaches the adjuvant combination contains (a) tris(2-ethylhexyl)phosphate (TEHP), (b) at least one alkyl ether phosphate ammonium salt, (c) at least one emulsifier, and (d) at least one wetting agent ([0014]). Martelletti teaches the adjuvant combination (TEHP premix V) contains: as wetting agents (component (d)), Genapol ® LRO paste at 62.5 g/L (6.25 % w/w) and Genapol ® X-060 at 75 g/L (7.5 % w/w); as alkyl ether phosphate ammonium salt (component (b)), Geronol ® CF/AR-E at 300 g/L (30 % w/w); as emulsifier (component (c)), Lucramul ® CO 30 at 62.5 g/L (6.25 % w/w); and as TEHP (component (a)), Disflamoll ® TOF at 500 g/L (50 % w/w) ([0099] Table 1). Martelletti teaches that Genapol ® X-060 is the tradename for tridecyl polyethylene glycol ether and isotridecyl alcohol polyglycol ether with 6 ethylene oxide (EO), and Lucramul ® CO 30 is ethoxylated castor oil ([0097]-[0098]). A combination of tridecyl polyethylene glycol ether and isotridecyl alcohol polyglycol ether with 6 ethylene oxide (EO) reads as a species of ethoxylated fatty alcohol, and ethoxylated castor oil reads as a species of vegetable oil. Thus, Martelletti teaches inclusion of ethoxylated fatty alcohol (in the form of Genapol ® X-060) at a concentration of 75 g/L as wetting agent in the adjuvant combination, and vegetable oil (in the form of Lucramul ® CO 30) at a concentration of 62.5 g/L as emulsifier in the adjuvant combination.
Martelletti also teaches that components (c) and/or (d) are present in the adjuvant combination at 10% by weight to 25% by weight, optionally at 12% by weight to 23% by weight, and optionally 12% by weight to 22% by weight, based on the total weight of the adjuvant combination (claim 5).
Martelletti teaches an herbicidal composition comprising at least one active agrochemical ingredient and the adjuvant combination may be used in customary formulations known to those skilled in the art, including in the form of a suspension concentrate (SC) (claims 9-11; [0048]). Martelletti teaches suspension concentrates may be water- or oil-based ([0054]).
Regarding instant claims wherein the cyclobutrifluram is present in an aqueous suspension concentrate composition, which comprises 25-125 g/L of a vegetable oil and 25-125 g/L of an ethoxylated fatty alcohol), it would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the instantly claimed invention, to (1) add the adjuvant combination of Martelletti, with Martelletti’s taught concentrations for components including the Genapol ® X-060 (ethoxylated fatty alcohols) and Lucramul ® CO 30 (vegetable oil), to the nematicidal composition of fluopyram and cyclobutrifluram taught by Shao, and (2) formulate the resulting formulation containing the nematicidal ingredients and adjuvant combination into a water-based suspension concentrate, and arrive at the instantly claimed invention. The ordinarily skilled artisan would have been motivated to perform modification (1) because Shao teaches that a variety of adjuvants are needed in combination with the nematicidal active agents in order to formulate a dosage form appropriate for application of the agents; Martelletti provides a suitable adjuvant combination for agrochemical applications which, when combined with agricultural active, facilitates improved bioavailability of the agricultural active, and thus the nematicidal actives of Shao would benefit from the adjuvant combination taught by Martelletti when formulated together in an agricultural composition. The ordinarily skilled artisan would find a reasonable expectation of success performing modification (1) based on the fact that Shao teaches the ordinarily skilled artisan will know that adjuvants are necessary in the formulation, and Martelletti teaches this combination of adjuvants to be suitable in agricultural applications. The ordinarily skilled artisan would have been motivated to perform modification (2) because Shao teaches its nematicidal actives are effective in a suspension formulation for application to plants affected by nematodes, and Martelletti teaches water-based suspension concentrates to be appropriate agricultural formulations when using the specifically-taught adjuvant combination. The ordinarily skilled artisan would have thus formulated a water-based (aqueous) suspension concentrate of the nematicidal agricultural composition of Shao when combined with the adjuvants of Martelletti, and would have a reasonable expectation of success doing so based on the fact that Shao teaches its agricultural actives are appropriate for use in suspension formulations, and Martelletti teaches its adjuvants are also appropriate for use in water-based suspension concentrates.
Regarding instant claims (wherein the composition comprises 100 to 300 g/L of cyclobutrifluram), it would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the instantly claimed invention, to perform routine optimization on the amount of cyclobutrifluram in the agricultural composition combining Shao’s fluopyram and cyclobutrifluram with the adjuvants of Martelletti, for the purpose of optimizing nematicidal activity of the resulting composition, and arrive at the instantly claimed concentration range for cyclobutrifluram. Shao exemplifies the use of a 5:1 ratio of fluopyram to cyclobutrifluram in a 400 g/L suspension for nematicidal activity. Shao establishes that the amounts of fluopyram and cyclobutrifluram in the suspension are results-effective variables, with the observable result being the nematicidal activity against nematodes. Shao also teaches that the ratio of fluopyram to cyclobutrifluram can be anywhere from 5:1 to 1:5. When in a 400 g/L nematicidal suspension, this is equivalent to a range of roughly 67-335 g/L for both fluopyram and cyclobutrifluram, depending on the ratios between the two. Thus, Shao teaches a finite range of concentrations for cyclobutrifluram in a suspension composition (67-335 g/L) with which the ordinarily skilled artisan can perform routine optimization with a reasonable expectation of success, in order to optimize the nematicidal activity when combining the two ingredients with the adjuvants of Martelletti. Shao’s taught concentration range for cyclobutrifluram overlaps, and thus renders obvious, the claimed amount range for cyclobutrifluram recited in instant claim 2. Additionally, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (I) and (II) for discussions on overlapping ranges and optimization within prior art conditions through routine experimentation.
Regarding instant claims (wherein the composition comprises 75-125 g/L of vegetable oil, and 60-110 g/L of ethoxylated fatty alcohol, and the composition comprises more vegetable oil than ethoxylated fatty alcohol), it would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the instantly claimed invention, to perform routine optimization on the amounts of wetting agent and emulsifier adjuvants of Martelletti, upon combination with Shao’s nematicides, for the purpose of optimizing the wettability and emulsion properties of the resulting suspension concentrate composition, and arrive at the instantly claimed amount limitations for vegetable oil and ethoxylated fatty alcohol. Martelletti establishes the purpose of ethoxylated fatty alcohol (in the form of Genapol ® X-060) is to be a wetting agent in the adjuvant combination, and the purpose of vegetable oil (in the form of Lucramul ® CO 30) is to be an emulsifier in the adjuvant combination. In other words, Martelletti establishes that the amounts of ethoxylated fatty alcohol and vegetable oil in a composition are results-effective variables, with the observable results being improved wettability and emulsion properties, respectively, when combined in an agricultural suspension composition. Martelletti also teaches that the amounts for wetting agent(s) and emulsifier can vary, but teaches both the wetting agent and emulsifier components are each present in the adjuvant combination at 10% by weight to 25% by weight of the adjuvant combination. Based on Martelletti’s teachings that 75 g/L of Genapol ® X-060 (ethoxylated fatty alcohol) is equivalent to 7.5 % w/w of the adjuvant combination, and 62.5 g/L of Lucramul ® CO 30 (vegetable oil) is equivalent to 6.25 % w/w of the adjuvant combination, the Examiner has calculated finite ranges for wetting agent and emulsifier in the adjuvant combination to be anywhere between 100-250 g/L (equivalent to 10-25% w/w). Thus, Martelletti teaches a finite range of concentrations for wetting agent and emulsifier in an agricultural composition with which the ordinarily skilled artisan can perform routine optimization with a reasonable expectation of success, in order to optimize the wettability and emulsion properties upon combination of the adjuvants with Shao’s nematicidal actives into one suspension concentrate composition. Martelletti’s taught concentration ranges for wetting agent and emulsifier overlap, and thus render obvious, the claimed amount ranges for ethoxylated fatty alcohol and vegetable oil recited in instant claim 4. Furthermore, because it is prima facie obvious to perform routine optimization of the amounts of wetting agent and the emulsifier each within the ranges of 100-250 g/L (10-25% w/w), there are obviously instances wherein more emulsifier than wetting agent can be present, for example when wetting agent (ethoxylated fatty alcohol) is present at 10% w/w (100 g/L) and emulsifier (vegetable oil) is present at 12% w/w (120 g/L). Finally, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (I) and (II) for discussions on overlapping ranges and optimization within prior art conditions through routine experimentation.
Regarding instant claims (wherein the composition is applied to the seed of a plant in a method of controlling pests, wherein the plant is chosen from a group including peanut, and wherein the composition comprises a further pesticidally active ingredient), it would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the instantly claimed invention, to apply the resulting suspension concentrate composition rendered obvious by the combined teachings of Shao and Martelletti (comprising both cyclobutrifluram and fluopyram as pesticidally active ingredients) to the seeds of a peanut plant using seed soaking or seed coating, and arrive at the instantly claimed invention. The ordinarily skilled artisan would have been motivated to do so because Shao teaches its combination of cyclobutrifluram and fluopyram is effective in controlling peanut root knot nematodes, and that soil-borne nematodes are preferentially controlled by soil treatment such as seed soaking and seed coating. Therefore, the ordinarily skilled artisan would be motivated to use the composition rendered obvious by the combined teachings of Shao and Martelletti by applying the composition to seeds of peanut plant in order to control and reduce damage caused by soil-borne root knot nematodes affecting peanut plants. The ordinarily skilled artisan would have a reasonable expectation of success applying the composition rendered obvious by the combined teachings of Shao and Martelletti to peanut seeds in order to reduce damage from root knot nematodes because Shao teaches this combination of nematicidal actives to be effective against peanut root knot nematodes.
The teachings of Shao, Martelletti are addressed supra.
To reiterate, the collective teachings render obvious the concentrations for vegetable oil and ethoxylated fatty alcohol being between 75-125 g/L and 60-110 g/L, respectively. Shao also teaches a finite range of concentrations for cyclobutrifluram in a suspension composition (67-335 g/L) with which the ordinarily skilled artisan can perform routine optimization on the amount of cyclobutrifluram. Additionally, Martelletti teaches that dyes, such as inorganic pigments, can be used in its adjuvant composition ([0077]).
The collective teachings differ from the instantly claimed invention in that they fail to teach the ethoxylated fatty alcohol is an oleyl alcohol polyglycol ether, and the vegetable oil is soybean oil. Furthermore, the collective teachings fail to teach that the composition comprises 150-250 g/L cyclobutrifluram, along with 40 to 100 g/L pigment.
Arbogast teaches methods for applying bio-derived surfactants to crops and other plants or to the soil used for such plants in order to reduce the need to apply environmentally unfriendly pesticides substances (Abstract). Arbogast teaches that, in spite of the biobased compounds being relatively mild and non-toxic with respect to humans, and in spite of past teachings that might suggest such compounds would not be effective, a series of experiments have confirmed that such bio-derived surfactants can be used against a variety of pests, including parasitic nematodes, root weevils (e.g., Diaprepes abbreviatus), etc ([0022]). Arbogast teaches the bio-derived surfactants comprise surfactants obtained by esterification of vegetable lipids, in particular, from soybean oil and castor oil ([0066]). Arbogast teaches ethoxylated soybean oils and ethoxylated castor oils for use as the bio-derived surfactants ([0061]).
Bristow teaches there is a need for an improved agrochemical formulation for the treatment of seeds; it would be advantageous if formulations had a viscosity such that application of the formulation to seeds was made easier and quicker and the resultant coating on the seeds could be more even while maintaining the adhesion of the formulation to the seeds and without reducing the efficacy of the active ingredients (p. 2 lines 22-28). It has been found that polyethers having at least 16 polyoxyethylene moieties provide advantageous adhesion of a pesticidally active formulation to seeds being treated, without resulting in a significant increase in the viscosity of the formulation and without reducing the efficacy of the active ingredient (p. 4 lines 15-18). Bristow teaches preferred polyethers are polyethers of oleyl alcohol (p. 11 lines 24-29). Bristow exemplifies the use of oleyl alcohol polyglycol ether as adhesion promoter in an aqueous suspension composition, wherein the adhesion level after spraying the composition on dry bean seeds was 88% compared to a similar composition without the oleyl alcohol polyglycol ether only maintaining an adhesion level of 35% (claim 17; p. 22-23 Example 4).
Sowa teaches aqueous suspension concentrates comprising pesticidal active compounds (Abstract). Sowa teaches suitable colorants in the aqueous suspension concentrate are pigments of low water solubility and water-soluble dyes, and teaches the amount of colorants usually does not exceed 20% by weight of the formulation, preferably from 0.1 to 15% by weight of a formulation (p. 32 lines 21-30).
It would have been prima facie obvious, before the effective filing date of the claimed invention, for a person having ordinary skill in the art to replace the ethoxylated castor oil (Lucramul ® CO 30) in the resulting concentrate composition rendered obvious by the combined teachings of Shao and Martelletti (keeping the concentration for Lucramul ® CO 30 rendered obvious by the collective teachings), and instead use ethoxylated soybean oil, and arrive at the instantly claimed invention. Per MPEP 2143 I(B), it is prima facie obvious to simply substitute one known element for another to yield predictable results. The prior art suspension concentrate composition rendered obvious by the combined teachings of Shao and Martelletti differed from the instantly claimed invention in that the vegetable oil is castor oil, not soybean oil. However, Arbogast teaches these vegetable oils to be interchangeable, when ethoxylated, for the purpose of agricultural applications, and teaches that both can be helpful against pests including nematodes. The ordinarily skilled artisan could have substituted the ethoxylated castor oil in the concentrate composition with ethoxylated soybean oil, and the substitution would have predictably resulted in a comparable nematocidal concentrate composition for application to plants based on the fact that these are both ethoxylated vegetable oil surfactants applicable in agricultural settings, particularly nematocidal compositions.
It would have been prima facie obvious, before the effective filing date of the claimed invention, for a person having ordinary skill in the art to replace the Genapol ® X-060 (ethoxylated fatty alcohols) in the resulting concentrate composition rendered obvious by the combined teachings of Shao and Martelletti (keeping the concentration for Genapol ® X-060 rendered obvious by the collective teachings), and instead use oleyl alcohol polyglycol ether, and arrive at the instantly claimed invention. The prior art suspension concentrate composition rendered obvious by the combined teachings of Shao and Martelletti differed from the instantly claimed invention in that the ethoxylated fatty alcohols are Genapol ® X-060 (tridecyl polyethylene glycol ether, isotridecyl alcohol polyglycol ether with 6 ethylene oxide (EO)) instead of oleyl alcohol polyglycol ether. However, Bristow teaches it has been found that polyethers having at least 16 polyoxyethylene moieties provide advantageous adhesion of a pesticidally active formulation to seeds being treated, and exemplifies these effects using oleyl alcohol polyglycol ether in a composition for treatment of seeds. The ordinarily skilled artisan would have been motivated to swap these polyglycol ethers in order to provide improved adhesive ability when applying the resulting aqueous suspension composition to plant seeds for nematicidal applications. The ordinarily skilled artisan would have a reasonable expectation of success making this modification because both Genapol ® X-060 and oleyl alcohol polyglycol ether are polyethers, and both are known as appropriate adjuvants in compositions for agricultural applications, particularly in formulation of water-based suspensions.
It would have been prima facie obvious, before the effective filing date of the instantly claimed invention, for a person having ordinary skill in the art to incorporate a pigment into the aqueous suspension concentrate rendered obvious by the combined teachings of Shao and Martelletti, at the concentration taught by Sowa, and arrive at the instantly claimed invention. It is reiterated that the examiner has converted 10% by weight to 25% by weight of the adjuvant combination of Martelletti to be anywhere between 100-250 g/L (equivalent to 10-25% w/w). Based on this conversion, the ordinarily skilled artisan would be motivated to include pigment as well into the adjuvant combination of Martelletti, prior to incorporation into the suspension concentrate composition with the nematicidal actives of Shao, at 0.1-15% by weight of the formulation, which converts to 1-150 g/L of pigment in the resulting combination. The ordinarily skilled artisan would have been motivated to do so in order to provide color to the resulting aqueous concentrate composition, similar to the color of aqueous concentrate composition shown by Sowa. The ordinarily skilled artisan would have a reasonable expectation of success incorporating pigment into the adjuvant combination used in the resulting aqueous suspension concentrate composition because Martelletti teaches this is an appropriate adjuvant to include in the adjuvant combination, and Sowa teaches a similar aqueous suspension concentrate also appropriately incorporating pigment. Sowa’s taught concentration range for pigment, in combination with the conversions between % w/w and g/L taught by Martelletti, overlaps, and thus renders obvious, the claimed amount range for pigment recited in instant claims. Additionally, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (I) and (II) for discussions on overlapping ranges and optimization within prior art conditions through routine experimentation.
Regarding the composition comprising 150 to 250 g/L of cyclobutrifluram, it would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the instantly claimed invention, to perform routine optimization on the amount of cyclobutrifluram in the agricultural composition combining Shao’s fluopyram and cyclobutrifluram with the adjuvants of Martelletti, for the purpose of optimizing nematicidal activity of the resulting composition, and arrive at the instantly claimed concentration range for cyclobutrifluram. Shao exemplifies the use of a 5:1 ratio of fluopyram to cyclobutrifluram in a 400 g/L suspension for nematicidal activity. Shao establishes that the amounts of fluopyram and cyclobutrifluram in the suspension are results-effective variables, with the observable result being the nematicidal activity against nematodes. Shao also teaches that the ratio of fluopyram to cyclobutrifluram can be anywhere from 5:1 to 1:5. When in a 400 g/L nematicidal suspension, this is equivalent to a range of roughly 67-335 g/L for both fluopyram and cyclobutrifluram, depending on the ratios between the two. Thus, Shao teaches a finite range of concentrations for cyclobutrifluram in a suspension composition (67-335 g/L) with which the ordinarily skilled artisan can perform routine optimization with a reasonable expectation of success, in order to optimize the nematicidal activity when combining the two ingredients with the adjuvants of Martelletti. Shao’s taught concentration range for cyclobutrifluram overlaps, and thus renders obvious, the claimed amount range for cyclobutrifluram recited in instant claim 2. Additionally, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (I) and (II) for discussions on overlapping ranges and optimization within prior art conditions through routine experimentation.
The teachings of Shao, Martelletti, Arbogast, Bristow, Sowa are addressed supra.
To reiterate, Martelletti teaches the adjuvant combination (TEHP premix V) contains: as wetting agents (component (d)), Genapol ® LRO paste at 62.5 g/L (6.25 % w/w) and Genapol ® X-060 at 75 g/L (7.5 % w/w); and as emulsifier (component (c)), Lucramul ® CO 30 at 62.5 g/L (6.25 % w/w) ([0099] Table 1). Martelletti teaches that Genapol ® X-060 is the tradename for tridecyl polyethylene glycol ether, isotridecyl alcohol polyglycol ether with 6 ethylene oxide (EO), and Lucramul ® CO 30 is ethoxylated castor oil ([0097]-[0098]). Martelletti also teaches that components (c) and/or (d) are present in the adjuvant combination at 10% by weight to 25% by weight based on the total weight of the adjuvant combination (claim 5). It is reiterated that the examiner has converted 10% by weight to 25% by weight of the adjuvant combination of Martelletti to be anywhere between 100-250 g/L (equivalent to 10-25% w/w).
Martelletti teaches that the wetting agent (d) is selected from a group consisting of, among other components, sulfosuccinates and lignosulfonates, as well as mixtures of wetting agents (claim 8).
The combined teachings differ from the instantly claimed invention in that they fail to teach further inclusion of 1 to 30 gram / liter of a sulfosuccinate or sodium dioctyl sulfosuccinate wetting agent, 5 to 50 gram / liter of a butyl polyalkylene oxide block copolymer, and 2.5 to 35 gram / liter of a sodium lignosulfonate.
Okada teaches a pesticidal aqueous suspension concentrate comprising clothianidin, a surfactant, a polyacrylic acid salt, a lignosulfonic acid salt, and a polysaccharidic polymeric material which resists caking and is useful as a pesticide formulation (Abstract). Okada teaches specific examples of sodium lignosulfonate appropriate for use in the aqueous suspension concentrate (p. 7 line 16 through p. 8 line 9).
Toximul 8315 teaches that Toximul® 8315 is a butyl polyalkylene oxide block copolymer used as a wetting agent in suspension concentrate formulations (p. 1).
Martin teaches pesticidal compositions and specifically suspension concentrates wherein the composition comprise wetting agent. Martin teaches sodium dioctyl sulfosuccinate as suitable wetting agent in the compositions disclosed. (e.g. para 0425-0450).
It would have been prima facie obvious, before the effective filing date of the instantly claimed invention, for the ordinarily skilled artisan to (1) add the wetting agents sodium dioctyl sulfosuccinate, sodium lignosulfonate, and Toximul 8315 (butyl polyalkylene oxide block copolymer) to the aqueous suspension concentrate composition rendered obvious by the combined teachings of Shao, Martelletti, and Martin and (2) perform routine optimization on each added wetting agent, within the bounds for amount of wetting agent component (d) taught by Martelletti (10-25% w/w, or 100-250 g/L, based on the adjuvant combination) and arrive at the instantly claimed invention. Regarding modification (1), per MPEP 2143 I(A), it is prima facie obvious to combine prior art elements according to known methods to yield predictable results. Martelletti teach that lignosulfonates and sulfosuccinates are wetting agents suitable to include in component (d) of the adjuvant combination, Martin teaches dioctyl sodium sulfosuccinate as the specific type of sulfosuccinate wetting agent in pesticidal compositions, and Toximul 8315 teaches another wetting agent applicable for suspension concentrates. One of ordinary skill in the art could have combined these wetting agents with the already-present wetting agents making up component (d) of Martelletti’s adjuvant combination, prior to incorporating of the resulting adjuvant combination with Shao’s nematicidal actives fluopyram and cyclobutrifluram into an aqueous suspension concentrate, and would have expected each wetting agent to continue to function as a wetting agent in the resulting aqueous suspension concentrate due to the fact that each ingredient is applicable in formulations of suspension concentrates, and each ingredient is known in the art to be wetting agents in suspension compositions.
Regarding modification (2), it would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the instantly claimed invention, to perform routine optimization on the amounts of newly-added wetting agents, upon combination with Shao’s nematicides into an aqueous suspension concentrate formulation, for the purpose of optimizing the wettability of the resulting suspension concentrate composition, and arrive at the instantly claimed concentrations for sulfosuccinate, sodium lignosulfonate, and butyl polyalkylene oxide block copolymer. Martelletti establishes the purpose of all ingredients in component (d) to be wetting agents in the adjuvant combination. Martelletti establishes that the amounts of wetting agent in an agricultural suspension are results-effective variables, with the observable results being improved wettability when combined in an agricultural suspension composition. Martelletti also teaches that the amounts for wetting agent(s) can vary, but teaches all wetting agents comprising component (d) should be present in the adjuvant combination at 10% by weight to 25% by weight of the adjuvant combination. Based on Martelletti’s teachings that 75 g/L of Genapol ® X-060 is equivalent to 7.5 % w/w of the adjuvant combination, the Examiner has calculated Martelletti’s finite concentration range for wetting agents in component (d) (10-25% w/w) to be anywhere between 100-250 g/L of the adjuvant combination. Because component (d) is already occupied by 137 g/L of Genapol ® LRO paste and Genapol ® X-060 (at 62.5 g/L (6.25 % w/w) and 75 g/L (7.5 % w/w) respectively), this leaves a maximum of 113 g/L for the combination of sulfosuccinate, sodium lignosulfonate, and butyl polyalkylene oxide block copolymer wetting agents. Thus, Martelletti teaches a finite range of concentrations for wetting agent in an agricultural composition with which the ordinarily skilled artisan can perform routine optimization with a reasonable expectation of success, in order to optimize the wettability of the suspension concentrate composition upon combination of Martelletti’s adjuvant combination with Shao’s nematicidal actives. Furthermore, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (I) and (II) for discussions on optimization within prior art conditions through routine experimentation.
The teachings of Shao, Martelletti, Arbogast, Bristow, Sowa, Martin, Okada and Toximul 8315 are addressed supra.
To reiterate, formulation of an aqueous suspension concentrate composition containing Shao’s nematicidal ingredients and Martelletti’s adjuvant combination is rendered obvious by the combined teachings of Shao and Martelletti. Additionally, it is reiterated that Shao teaches, when forming dosage forms such as suspensions, the ordinarily skilled artisan will know that, in addition to using the pesticide containing nematicidal active ingredients, a variety of adjuvants are needed, such as one or more of a dispersion medium, a dispersant, etc ([0015])
The combined teachings differ from the instantly claimed invention in that they fail to teach the aqueous suspension concentrate composition further comprises 1 to 55 g/L of an acrylic graft copolymer.
Pentland teaches aqueous suspension concentrate compositions of suspended particles of pesticides which includes graft copolymers ([0011]). Pentland teaches Tersperse 2500 dispersant is a 33% solution of an acrylic graft copolymer in water/propylene glycol ([0067]). Pentland exemplifies the use of Tersperse 2500 as dispersant in an aqueous suspension composition containing suspended pesticides, which is quite stable with respect to particle homogeneity ([0064]-[0065]; Table 1 “F3”; ]). Pentland teaches the composition comprises a surfactant comprising an acrylic graft copolymer, present in the range 3 g/L to 60 g/L (weight of the acrylic graft copolymer based on the total weight of the composition), preferably 3g/L to 30 g/L and still more preferably in the range 5g/L to 15 g/L ([0042]).
It would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to add the dispersant Tersperse 2500 (an acrylic graft copolymer), within Pentland’s taught concentration range for acrylic graft copolymer in an aqueous suspension composition (most preferably 5 g/L to 15 g/L), to the aqueous suspension composition rendered obvious by the combined teachings of Shao and Martelletti, and arrive at the instantly claimed invention. The ordinarily skilled artisan would have been motivated to do so because Pentland demonstrates a stable suspension containing Tersperse 2500 (acrylic graft copolymer) as dispersant, and the ordinarily skilled artisan would seek to incorporate this dispersant into the suspension composition rendered obvious by Shao and Martelletti in order to harness the benefits of including the dispersant shown by Pentland. The ordinarily skilled artisan would have a reasonable expectation of success adding dispersant to the aqueous suspension composition because Shao teaches dispersants to be appropriate adjuvants to include in agricultural suspensions containing nematicidal actives, and Pentland teaches that acrylic graft copolymers are effective dispersants when used at the concentration between 5 g/L to 15 g/L in agricultural aqueous suspension compositions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-5, 7-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 7-23 of copending Application No. 18/550,876 in view of WO-2020245088-A1 (Martelletti, A. et al) published 12/10/2020 (cited in PTO-892; utilizing corresponding US patent application as English translation), US 2009/0186767 A1 (Arbogast, S. et al) published 07/23/2009 (cited in PTO-892), and WO 2014131337 A1 (Bristow, T.) published 09/04/2014 (cited in IDS).
App’876 claims an aqueous suspension concentrate composition comprising (i) cyclobutrifluram as active ingredient; (ii) 1 to 30 gram / liter of a sulfosuccinate wetting agent; (iii) 5 to 50 gram / liter of a butyl polyalkylene oxide block copolymer; and (iv) 2.5 to 35 gram / liter of a sodium lignosulfonate (claim 1). The identities and amounts for (ii), (iii) and (iv) read upon the components (v), (vi) and (vii) of instant claims. App’876 claims the composition further comprises (v) 1 to 55 gram / liter of an acrylic graft copolymer; this reads on component (viii) in instant claims. App’876 claims the composition comprises 100 to 600 gram / liter of cyclobutrifluram. This amount range for cyclobutrifluram encompasses, and renders obvious, the amounts for cyclobutrifluram recited in instant claims.
App’876 claims the composition further comprises from 5 to 120 gram / liter of a pigment. This amount range for pigment encompasses, and renders obvious, the amounts for pigment recited in instant claims. App’876 claims the composition further comprises one or more adjuvants or carriers.
App’876 claims a method of controlling pests in a plant comprising applying a composition to the seed of a plant. App’876 claims the method wherein the plant is selected from barley, brassica head and stem vegetables, bean, carrot, chickpea, corn, cotton, cowpea, curcurbits, dry beans, field peas, garden beans, garlic, lentils, lettuce, millet, oat, onion, peanut, peas, potato, rice, rye, sorghum, soybean, sugarbeet, sunflower, triticale and wheat. App’876 claims the method wherein the composition comprises a further pesticidally active ingredient.
App’876 differs from the instantly claimed invention in that it fails to also claim the composition includes 25-125 g/L of a vegetable oil, and 25-125 g/L of an ethoxylated fatty alcohol, and more narrowly 75-126 g/L of vegetable oil and 60-110 g/L of ethoxylated fatty alcohol. Additionally, App’876 fails to claim more vegetable oil than ethoxylated fatty alcohol in the composition. App’876 fails to claim that the vegetable oil is soybean oil and the ethoxylated fatty alcohol is an oleyl alcohol polyglycol ether. Therefore, these ingredients and amounts as recited in instant claims are not claimed by App’876.
Martelletti teaches adjuvants in agrochemical formulations can have various functions, such as, for example, improving application of sprays, increasing effectiveness of agrochemical active ingredients, and reducing drift of active ingredients ([0006]). Martelletti teaches an adjuvant combination for improving bioavailability of an active ingredient in an herbicidal composition ([0004]). Martelletti teaches the adjuvant combination contains (a) tris(2-ethylhexyl)phosphate (TEHP), (b) at least one alkyl ether phosphate ammonium salt, (c) at least one emulsifier, and (d) at least one wetting agent ([0014]). Martelletti teaches the adjuvant combination (TEHP premix V) contains: as wetting agents (component (d)), Genapol ® LRO paste at 62.5 g/L (6.25 % w/w) and Genapol ® X-060 at 75 g/L (7.5 % w/w); as alkyl ether phosphate ammonium salt (component (b)), Geronol ® CF/AR-E at 300 g/L (30 % w/w); as emulsifier (component (c)), Lucramul ® CO 30 at 62.5 g/L (6.25 % w/w); and as TEHP (component (a)), Disflamoll ® TOF at 500 g/L (50 % w/w) ([0099] Table 1). Martelletti teaches that Genapol ® X-060 is the tradename for tridecyl polyethylene glycol ether, isotridecyl alcohol polyglycol ether with 6 ethylene oxide (EO), and Lucramul ® CO 30 is ethoxylated castor oil ([0097]-[0098]). A combination of tridecyl polyethylene glycol ether and isotridecyl alcohol polyglycol ether with 6 ethylene oxide (EO) reads as a species of ethoxylated fatty alcohol, and ethoxylated castor oil reads as a species of vegetable oil. Thus, Martelletti teaches inclusion of ethoxylated fatty alcohol (in the form of Genapol ® X-060) at a concentration of 75 g/L as wetting agent in the adjuvant combination, and vegetable oil (in the form of Lucramul ® CO 30) at a concentration of 62.5 g/L as emulsifier in the adjuvant combination.
Martelletti also teaches that components (c) and/or (d) are present in the adjuvant combination at 10% by weight to 25% by weight, optionally at 12% by weight to 23% by weight, and optionally 12% by weight to 22% by weight, based on the total weight of the adjuvant combination (claim 5).
Arbogast teaches methods for applying bio-derived surfactants to crops and other plants or to the soil used for such plants in order to reduce the need to apply environmentally unfriendly pesticides substances (Abstract). Arbogast teaches that, in spite of the biobased compounds being relatively mild and non-toxic with respect to humans, and in spite of past teachings that might suggest such compounds would not be effective, a series of experiments have confirmed that such bio-derived surfactants can be used against a variety of pests, including parasitic nematodes, root weevils (e.g., Diaprepes abbreviatus), etc ([0022]). Arbogast teaches the bio-derived surfactants comprise surfactants obtained by esterification of vegetable lipids, in particular, from soybean oil and castor oil ([0066]). Arbogast teaches ethoxylated soybean oils and ethoxylated castor oils for use as the bio-derived surfactants ([0061]).
Bristow teaches there is a need for an improved agrochemical formulation for the treatment of seeds; it would be advantageous if formulations had a viscosity such that application of the formulation to seeds was made easier and quicker and the resultant coating on the seeds could be more even while maintaining the adhesion of the formulation to the seeds and without reducing the efficacy of the active ingredients (p. 2 lines 22-28). It has been found that polyethers having at least 16 polyoxyethylene moieties provide advantageous adhesion of a pesticidally active formulation to seeds being treated, without resulting in a significant increase in the viscosity of the formulation and without reducing the efficacy of the active ingredient (p. 4 lines 15-18). Bristow teaches preferred polyethers are polyethers of oleyl alcohol (p. 11 lines 24-29). Bristow exemplifies the use of oleyl alcohol polyglycol ether as adhesion promoter in an aqueous suspension composition, wherein the adhesion level after spraying the composition on dry bean seeds was 88% compared to a similar composition without the oleyl alcohol polyglycol ether only maintaining an adhesion level of 35% (claim 17; p. 22-23 Example 4).
Regarding instant claims recitation of 25-125 g/L of a vegetable oil and 25-125 g/L of an ethoxylated fatty alcohol in the composition, it would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the instantly claimed invention, to add the adjuvant combination of Martelletti, with Martelletti’s taught concentrations for components including the Genapol ® X-060 (ethoxylated fatty alcohols) and Lucramul ® CO 30 (vegetable oil), to App’876’s aqueous suspension concentrate composition and arrive at the instantly claimed invention. The ordinarily skilled artisan would have been motivated to do so because App’876 claims the inclusion of one or more adjuvants in its composition; Martelletti provides a suitable adjuvant combination for agrochemical applications which, when combined with agricultural active, facilitates improved bioavailability of the agricultural active, and thus the cyclobutrifluram of App’876 would benefit from the adjuvant combination taught by Martelletti when formulated together in the aqueous suspension concentrate composition. The ordinarily skilled artisan would find a reasonable expectation of success based on the fact that App’876 claims the use of any adjuvant in the composition, and Martelletti teaches this combination of adjuvants to be suitable in agricultural applications.
Regarding instant claims (wherein the composition comprises 75-125 g/L of vegetable oil, and 60-110 g/L of ethoxylated fatty alcohol, and the composition comprises more vegetable oil than ethoxylated fatty alcohol), it would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the instantly claimed invention, to perform routine optimization on the amounts of wetting agent and emulsifier adjuvants of Martelletti, upon addition to the aqueous suspension concentrate composition of App’876, for the purpose of optimizing the wettability and emulsion properties of the resulting suspension concentrate composition, and arrive at the instantly claimed amount limitations for vegetable oil and ethoxylated fatty alcohol. Martelletti establishes the purpose of ethoxylated fatty alcohol (in the form of Genapol ® X-060) is to be a wetting agent in the adjuvant combination, and the purpose of vegetable oil (in the form of Lucramul ® CO 30) is to be an emulsifier in the adjuvant combination. In other words, Martelletti establishes that the amounts of ethoxylated fatty alcohol and vegetable oil in a composition are results-effective variables, with the observable results being improved wettability and emulsion properties, respectively, when combined in an agricultural suspension composition. Martelletti also teaches that the amounts for wetting agent(s) and emulsifier can vary, but teaches both the wetting agent and emulsifier components are each present in the adjuvant combination at 10% by weight to 25% by weight of the adjuvant combination. Based on Martelletti’s teachings that 75 g/L of Genapol ® X-060 (ethoxylated fatty alcohol) is equivalent to 7.5 % w/w of the adjuvant combination, and 62.5 g/L of Lucramul ® CO 30 (vegetable oil) is equivalent to 6.25 % w/w of the adjuvant combination, the Examiner has calculated finite ranges for wetting agent and emulsifier to be anywhere between 100-250 g/L (equivalent to 10-25% w/w). Thus, Martelletti teaches a finite range of concentrations for wetting agent and emulsifier in an agricultural composition with which the ordinarily skilled artisan can perform routine optimization with a reasonable expectation of success, in order to optimize the wettability and emulsion properties upon addition of the adjuvant combination into the composition of App’876. Martelletti’s taught concentration ranges for wetting agent and emulsifier overlap, and thus render obvious, the claimed amount ranges for ethoxylated fatty alcohol and vegetable oil recited in instant claims. Furthermore, because it is prima facie obvious to perform routine optimization of the amounts of wetting agent and the emulsifier each within the ranges of 100-250 g/L (10-25% w/w), there are obviously instances wherein more emulsifier than wetting agent can be present, for example when wetting agent (ethoxylated fatty alcohol) is present at 10% w/w (100 g/L) and emulsifier (vegetable oil) is present at 12% w/w (120 g/L). Finally, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (I) and (II) for discussions on overlapping ranges and optimization within prior art conditions through routine experimentation.
It would have been prima facie obvious, before the effective filing date of the claimed invention, for a person having ordinary skill in the art to replace the ethoxylated castor oil (Lucramul ® CO 30) in the resulting concentrate composition rendered obvious by the combined teachings of App’876 and Martelletti (keeping Martelletti’s taught concentration for Lucramul ® CO 30), and instead use ethoxylated soybean oil, and arrive at the instantly claimed invention. Per MPEP 2143 I(B), it is prima facie obvious to simply substitute one known element for another to yield predictable results. The suspension concentrate composition rendered obvious by the combined teachings of App’876 and Martelletti differs from the instantly claimed invention in that the vegetable oil is castor oil, not soybean oil. However, Arbogast teaches these vegetable oils to be interchangeable when ethoxylated for the purpose of agricultural applications, and teaches that both can be helpful against pests including nematodes. The ordinarily skilled artisan could have substituted the ethoxylated castor oil in the concentrate composition with ethoxylated soybean oil, and the substitution would have predictably resulted in a comparable nematocidal concentrate composition for application to plants based on the fact that these are both ethoxylated vegetable oil surfactants applicable in agricultural settings, particularly nematocidal compositions.
It would have been prima facie obvious, before the effective filing date of the claimed invention, for a person having ordinary skill in the art to replace the Genapol ® X-060 (ethoxylated fatty alcohols) in the resulting concentrate composition rendered obvious by the combined teachings of App’876 and Martelletti (keeping Martelletti’s taught concentration for Genapol ® X-060), and instead use oleyl alcohol polyglycol ether, and arrive at the instantly claimed invention. The suspension concentrate composition rendered obvious by the combined teachings of App’876and Martelletti differed from the instantly claimed invention in that the ethoxylated fatty alcohols are Genapol ® X-060 (tridecyl polyethylene glycol ether, isotridecyl alcohol polyglycol ether with 6 ethylene oxide (EO)) instead of oleyl alcohol polyglycol ether. However, Bristow teaches it has been found that polyethers having at least 16 polyoxyethylene moieties provide advantageous adhesion of a pesticidally active formulation to seeds being treated, and exemplifies these effects using oleyl alcohol polyglycol ether in a composition for treatment of seeds. The ordinarily skilled artisan would have been motivated to swap these alcohol polyglycol ethers in order to provide improved adhesive ability when applying the resulting aqueous suspension composition to plant seeds for nematicidal applications. The ordinarily skilled artisan would have a reasonable expectation of success making this modification because both Genapol ® X-060 and oleyl alcohol polyglycol ether are polyethers, and both are known as appropriate adjuvants in compositions for agricultural applications, particularly in formulation of water-based suspensions.
Because all of the ingredients and concentration ranges of instant claims are either explicitly taught, or rendered obvious by, the combination of App’876 and the teachings of Martelletti, Arbogast and Bristow, the instant claims are thus rendered obvious.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant argued that the TEHP premix V disclosed in Martelletti in Table 1 is not an aqueous suspension concentrate but merely an adjuvant combination and that Martelletti in example 2 dilutes TEHP premix V which reduces oleyl alcohol polyglycol ether concentration to only 0.225 or 0.45 g/l.
In response, the examiner argues that Martelletti teaches adding/diluting the premix in water for application to the plant (e.g. leaf surface). The instant claims are directed to a suspension concentrate and the instant specification disclose wherein the concentrate is diluted in liquid carrier such as water and then applied to the plant. Similarly, Martelletti also teaches a concentrated premix and then diluting the premix in water to apply to the plants. As such, Martelletti teaching the dilution of the premix in water does not teach away from the concentrations of the individual adjuvant ingredients in the TEHP premix before diluting in water. Thus, applicant’s argument that Martelletti teaches oleyl alcohol polyglycol ether concentration to only 0.225 or 0.45 g/l is not found persuasive at this time.
Conclusion
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/ALI S SAEED/Examiner, Art Unit 1616
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