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 .
Formal Matters
Receipt of Applicant’s response dated 04/28/2026 is acknowledged.
Claims 1-3, 6-10, and 14-25 are pending.
Claims 4-5 and 11-13 are canceled.
Claims 14-25 are new.
Claims 1-3 and 6-9 are amended.
New claims 21-22 are withdrawn from consideration as being drawn to a nonelected species (i.e., Applicant has elected the combination of polyoxyethylene sorbitan fatty acid ester and sulfosuccinate as the at least one surfactant and not either a polyoxyalkylene sorbit fatty acid ester or a polyoxyalkylene alkyl ether).
Claims 1-3, 6-10, 14-20, and 23-25 are being examined in the instant Office action to the extent of the elected species, i.e., the at least one oil component is soybean oil and the at least one surfactant is the combination of polyoxyethylene sorbitan fatty acid ester and sulfosuccinate.
Information Disclosure Statement
The information disclosure statement (IDS) filed 06/09/2026 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objections to the specification set forth in the Office action dated 01/09/2026 are hereby withdrawn in light of Applicant’s amendments to the specification.
Claim Objections
The objections to claims 1 and 6 set forth in the Office action dated 01/09/2026 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(b)
The indefiniteness rejections of claims 2-3 and 6-9 set forth in the Office action dated 01/09/2026 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejection of claims 1-3 and 6-10 over Ohara et al set forth in the Office action dated 01/09/2026 is hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejections set forth below as necessitated by Applicant’s amendments to the claims.
NEW GROUNDS OF REJECTION
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6-10, 14-20, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Ohara et al (US 2016/0037768 A1, published 02/11/2016, cited in IDS dated 11/03/2023) in view of Wells et al (“Rainfastness of Pesticides”, published 08/2011).
Ohara et al teach a composition that enhances the plant disease control effect of a monosaccharide and is effective as an agricultural control composition, i.e., control agent, against plant disease, particularly plant disease caused by fungi and plant disease caused by bacteria (See entire document, e.g., Abstract, [0001], [0040], claims 9-10). The composition comprises a monosaccharide as an active ingredient and comprises at least one or more assistants selected from a nonionic surfactant (excluding acetylene glycol-based surfactants, fluorine-based surfactants and silicone-based surfactants), an anionic surfactant (excluding lignin sulfonate), a cationic surfactant, an amphoteric surfactant, a water-soluble polymer, an amino acid, an amino sugar, a disaccharide alcohol and a salt (e.g., Abstract, [0017], claim 1). Preferably, the monosaccharide is D-tagatose (e.g., [0020], [0056], claim 3). Preferably, the nonionic surfactant is selected from a list including polyoxyethylene sorbitan fatty acid esters (e.g., [0021], [0058]). Preferably, the anionic surfactant is selected from a list including sulfosuccinates (e.g., [0022], [0060]). Solvents that can be used in the composition are exemplified from a list including oils such as soybean oil (e.g., [0076], [0079], [0081]).
Ohara et al do not teach the combination of monosaccharide active ingredient, surfactant, and oil providing improved rainfastness.
This deficiency is made up for in the teaching of Wells et al.
Wells et al teach that the inclusion of adjuvants, including surfactants, oils, deposition agents, and thickeners, to a pesticide increases absorption of the product into plant tissues and can be used as a strategy to increase the rainfastness and overall performance of a pesticide (See entire document, e.g., “Adjuvants to Improve Rainfastness” in Col. 2 of Page 2).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Ohara et al and Wells et al, to provide a plant disease control composition comprising D-tagatose as the monosaccharide active ingredient, polyoxyethylene sorbitan fatty acid ester and sulfosuccinate as assistants, and soybean oil as solvent. One of ordinary skill in the art would have been motivated to use at least one surfactant as assistant and at least one oil as solvent because Wells et al teach that inclusion of adjuvants such as surfactants and oils to a pesticide increases absorption of the product into plant tissues and can be used as a strategy to increase the rainfastness and overall performance of a pesticide and one of ordinary skill in the art would have been motivated to make the aforementioned selections of the monosaccharide active ingredient, the assistants, and the solvent because Ohara et al teach each of D-tagatose, polyoxyethylene sorbitan fatty acid ester and sulfosuccinate, and soybean oil as suitable/preferable as the monosaccharide active ingredient, the assistants, and the solvent, respectively, in the plant disease control composition. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands (Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985)).
In addition, Wells et al provides the aforementioned motivation to include at least one surfactant as assistant and at least one oil as solvent in the plant disease control composition of Ohara et al, the plant disease control composition of Ohara et al in view of Wells et al necessarily provides improved rainfastness as compared with the D-tagatose alone or a combination of the D-tagatose, polyoxyethylene sorbitan fatty acid ester, and sulfosuccinate without the soybean oil because the plant disease control composition of Ohara et al in view of Wells et al is the same as the plant disease control composition of instant claim 1 to the extent of the elected species, i.e., comprises D-tagatose, polyoxyethylene sorbitan fatty acid ester, sulfosuccinate, and soybean oil. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).
The plant disease control composition of Ohara et al in view of Wells et al, which is effective as a control agent for plant disease caused by fungi and by bacteria, comprising D-tagatose as the monosaccharide active ingredient, polyoxyethylene sorbitan fatty acid ester and sulfosuccinate as assistants, and soybean oil as solvent renders obvious the composition of instant claims 1-3, 6-10, 14-20, and 23-25.
Response to Applicant’s Arguments
Applicant’s arguments filed on 04/28/2026 have been considered.
Applicant argues that Ohara does not disclose a single composition that comprises D-tagatose, at least one oil component, and at least one surfactant, and that provides improved rainfastness as compared with the D-tagatose alone or a combination of the D-tagatose and the at least one surfactant without the at least one oil component. Applicant argues that new claim 25, which recites a composition comprising the specific combination of D-tagatose, at least one oil component, at least one nonionic surfactant, and at least one anionic surfactant, is not taught or suggested in Ohara. Applicant argues that the experimental results in the present specification are a surprisingly discovery that a plant disease control composition of the present invention comprising D-tagatose, at least one oil component, and at least one surfactant produced more enhanced plant disease control effects against various plant diseases, showed no chemical damage to plants, and improved rainfastness, compared to D-tagatose alone or a combination of the D-tagatose and the at least one surfactant without the at least one oil component. Applicant argues that results of test examples in the present application demonstrated that the claimed compositions provided the improved efficacy and rainfastness as compared to the compositions taught by Ohara. Applicant argues in view of the teachings of Ohara it was not predictable that the claimed composition would provide improved rainfastness as compared the D-tagatose alone or a combination of the D-tagatose and the at least one surfactant without the at least one oil component.
The above arguments have been fully considered by the Examiner but are not found persuasive because, firstly, although Ohara et al do not teach in a single embodiment a plant disease control composition comprising D-tagatose as the monosaccharide active ingredient, polyoxyethylene sorbitan fatty acid ester and sulfosuccinate as assistants, and soybean oil as solvent, Ohara et al do teach a plant disease control composition comprising a monosaccharide as an active ingredient, wherein the monosaccharide is preferably D-tagatose, comprising at least one or more assistants selected from a nonionic surfactant, an anionic surfactant, a cationic surfactant, an amphoteric surfactant, a water-soluble polymer, an amino acid, an amino sugar, a disaccharide alcohol and a salt, wherein preferable nonionic surfactants include polyoxyethylene sorbitan fatty acid esters and preferable anionic surfactants include sulfosuccinates, wherein the composition may comprise solvents including soybean oil, and Wells et al teach motivation for the inclusion of at least one surfactant as assistant and at least one oil as solvent as a strategy to increase absorption of the composition into plant tissues and increase the rainfastness and overall performance of the composition. Secondly, because the plant disease control composition of Ohara et al in view of Wells et al is the same as the plant disease control composition of instant claim 1, the plant disease control composition of Ohara et al in view of Wells et al necessarily provides improved rainfastness, produces more enhanced plant disease control effects against various plant diseases, and shows no chemical damage to plants as compared with the D-tagatose alone or a combination of the D-tagatose, polyoxyethylene sorbitan fatty acid ester, and sulfosuccinate without the soybean oil. A chemical composition and its properties are inseparable; therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicant is reminded that "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Regarding the argument about claim 25, the Examiner notes that claim 1 is already being examined to the extent of the elected species, which includes that the at least one surfactant is the combination of polyoxyethylene sorbitan fatty acid ester (a nonionic surfactant) and sulfosuccinate (an anionic surfactant). The above argument regarding results of test examples in the present application demonstrating that the claimed compositions provide improved efficacy and rainfastness as compared to the compositions taught by Ohara has been fully considered by the Examiner but is not found persuasive because the compositions taught by Ohara comprise D-tagatose, Newkalgen SX-C, Emal 10PT, and MORWET D-425 and, therefore, do not represent a composition of the closest prior art. See MPEP 716.02(e). Further, the comparison of the test examples to the compositions taught by Ohara is not commensurate in scope with the composition of instant claim 1 as the composition of instant claim 1 does not recite any amounts of the recited components. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
Conclusion
No claims are allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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