DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-14, 17-19 and 22-26 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 16 March 2026 was filed after the mailing date of the non-final Office action on 20 November 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Rejections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn.
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 1-2, 4-10, 12-14, 17-18 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Masaki et al. (JP 2005015377 A).
Regarding instant claim 1, Masaki et al. teach a cationic surfactant which has high biodegradability, low irritativeness to the skins and the mucous membranes, and excellent hydrolysis stability (Abstract). Masaki et al. teach that the cationic surfactant can be used in combination with components that are known to be used in combination with ordinary cationic surfactants. Such components include nonionic surfactants, anionic surfactants, other surfactants such as amphoteric surfactants, inorganic electrolytes, silicone derivatives, etc. ([0032]). Nonionic surfactants include polyoxyalkylene alkyl ether ([0033]); examples of the anionic surfactant include sulfonates and N-acyl-N-methyltaurine salt ([0034]); and examples of the inorganic electrolyte include potassium hydrogen carbonate ([0036]). Thickeners include dimethylpolysiloxane and methylphenylpolysiloxane ([0040]). The cationic surfactants are readily biodegradable, and are useful in the field of fungicides ([0041]).
Masaki et al. do not explicitly disclose a composition comprising potassium bicarbonate, a taurate, and at least one additional surfactant selected from sulfonates, ethoxylated alcohols, organo-mineral polymers, and combinations thereof.
However, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare a composition according to Masaki et al. comprising a cationic surfactant, an inorganic electrolyte such as potassium hydrogen carbonate, an anionic surfactant such as a taurate, and at least one additional excipient selected from polyoxyalkylene alkyl ether and sulfonates. Such would have been obvious because Masaki et al. teach that the cationic surfactants can be used in combination with components that are known to be used in combination with ordinary cationic surfactants.
Regarding instant claim 2, Masaki et al. do not explicitly disclose that the composition is in the form of a solid. However, Masaki et al. teach that the cationic surfactant is first dissolved in order to evaluate the biodegradability (Example 2).
Therefore, it would have been prima facie obvious to combine the additional components with the cationic surfactant prior to dissolution, such that the composition is in solid form and then dissolved.
Regarding instant claim 4, the recitation of how the potassium bicarbonate is made is a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113(I).
Regarding instant claim 5, Masaki et al. teach that the anionic surfactant includes N-acyl-N-methyltaurate ([0034]).
Regarding instant claims 6-7, Masaki et al. teach that the inorganic electrolyte includes sodium silicate, potassium silicate, magnesium silicate, calcium silicate and aluminum silicate ([0036]). The instant specification states that clay includes aluminum silicate (pg. 18, ln. 22-23).
Regarding instant claim 8, Masaki et al. teach that the anionic surfactant includes sulfonates ([0034]).
Regarding instant claim 9, Masaki et al. teach that the nonionic surfactant includes polyoxyalkylene alkyl ether ([0034]).
Regarding instant claim 10, Masaki et al. teach that the composition can include silicone derivatives, such as dimethylpolysiloxane and methylphenylpolysiloxane ([0040]).
Regarding instant claim 12, Masaki et al. teach compositions comprising cationic surfactant, and may be combined with potassium hydrogen carbonate, N-acyl-N-methyltaurate, a nonionic surfactant, and a silicate ([0032]-[0041]).
Regarding instant claim 13, Masaki et al. teach compositions comprising the same components as instantly claimed. Therefore, the compositions are capable of being a phytosanitary composition.
Regarding instant claim 14, Masaki et al. teach compositions comprising cationic surfactants that are readily biodegradable ([0041]). Masaki et al. also teach that the cationic surfactants may be used with potassium hydrogen carbonate, N-acyl-N-methyltaurine salt, and additional surfactants ([0032]-[0036], [0040]). Therefore, the compositions according to Masaki et al. comprising the same components as instantly claimed would be essentially composed of biobased ingredients.
Regarding instant claims 17-18 and 22-23, Masaki et al. teach that the compositions may be used in fields such as antibacterial agents, agrochemical emulsifiers, and fungicides ([0041]-[0042]).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare compositions according to Masaki et al. comprising a cationic surfactant in combination with components including potassium bicarbonate, N-acyl-N-methyltaurine salt, sulfonates, polyoxyalkylene alkyl ether, polysiloxanes, and inorganic silicates. Such would have been obvious because Masaki et al. teach that the cationic surfactants can be used in combination with components that are known to be used in combination with ordinary cationic surfactants. Also, it would have been prima facie obvious to use the compositions in agrochemical formulations for the treatment of crops since Masaki et al. teach that the cationic emulsifiers are suitable for use in fields such as agrochemical emulsifiers and fungicides.
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive. Applicant argues that it is clear from the entire disclosure of Masaki that the active agent in the compositions described therein is the cationic surfactant produced from ethanolamine compounds and methyl carbonates, and that such compositions are for use as softeners, hair conditioners or detergents. Masaki fails to describe any composition containing potassium bicarbonate and fails to mention its antifungal properties. Potassium bicarbonate appears only in a list of potential excipients, classified as inorganic electrolytes. As a consequence, a person skilled in the art had no reason to consult Masaki more than any other document describing surfactants (regarding which there is a huge number of prior art: more than 100,000 results are obtained by typing "surfactant" into the Google patents search engine) in order to develop compositions whose active agent is potassium bicarbonate. Applicant asserts that a person skilled in the art had no reason to consult Masaki in the context of developing compositions effective for treating crops against pathogenic fungi. Indeed, Masaki's teaching is limited to softening compositions (laundry, hair) or detergent compositions
The examiner respectfully argues that Masaki et al. teach a cationic surfactant composition wherein the cationic surfactant can be combined with other surfactants, inorganic electrolytes, etc. The other surfactants suitable for use with the cationic surfactant include nonionic surfactants such as polyoxyalkylene alkyl ethers, and anionic surfactants such as sulfonates and taurates, and the inorganic electrolytes include inorganic carbonates such as potassium hydrogen carbonate ([0032]-[0034] and [0036]). Therefore, a person of ordinary skill in the art would have been motivated to prepare compositions according to Masaki et al. comprising the cationic surfactant combined with other known components that are suitable for combination with the cationic surfactant, including the nonionic surfactants, anionic surfactants, and inorganic electrolytes taught by Masaki et al.
Regarding the use of the compositions, Masaki et al. teach that the cationic surfactants are readily biodegradable and can be used in the fields where ordinary surfactants are used, including as agrochemical emulsifiers, fungicides, etc. ([0041]). Masaki et al. further teach the cationic surfactant blended with other surfactants and inorganic electrolytes ([0042]-[0045]).
The examiner directs attention to MPEP 2123(I) and (II):
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Applicant argues that Masaki does not relate to the field of crop treatment. While the antibacterial properties of the cationic surfactant are evaluated on four species of bacteria, Masaki provides no data on the alleged antifungal activities of this compound.
The examiner respectfully argues that Masaki et al. teach that the cationic surfactant composition may be suitably used in fields such as agrochemical emulsifiers, bactericides, etc. Therefore, a person of ordinary skill in the art would have been motivated to prepare the compositions according to Masaki et al. for use in agrochemical formulations, including for crop treatment.
Applicant further asserts that Masaki lists a very large number of potential excipients and gives no indication as to how to select the excipient(s) according to the desired use.
The examiner respectfully argues that Masaki et al. teach that the cationic surfactants are used in fields where ordinary surfactants are used ([0041]). A person of ordinary skill in the art would know where ordinary surfactants are used and how to use them. Also, Masaki et al. teach that the cationic surfactants can be blended with other surfactants and the like when used for various purposes ([0042]-[0045]). A person of ordinary skill in the art would have been able to determine through reasonable experimentation the blends of surfactants and inorganic electrolytes suitable for use in the compositions according to Masaki et al.
Applicant further argues that none of the compositions described in Masaki include an anionic surfactant selected from taurates. Masaki fails to teach that the presence of taurate in potassium bicarbonate-based compositions optimizes the antifungal properties of the latter on crops.
The examiner respectfully argues that Masaki et al. teach that examples of anionic surfactants include N-acyl-N-methyltaurine and N-acyl-N-carboxyethyl taurine or salts thereof ([0034]).
Also, the examiner respectfully argues that the data in the specification is not commensurate in scope with the instant claims. Tables 2-3 of the instant specification show compositions comprising 50-62 wt.% potassium bicarbonate, 10 wt.% Ufoxane 3A (lignosulfonate anionic polyelectrolyte polymer), 2.5-7.5 wt.% Tergitol 15-S-12 (ethoxylated alcohol non-ionic surfactant), 3-6 wt.% Adinol OT-72 (taurate anionic surfactant), 1 wt.% Rhodorsil EP6703 (PDMS cationic surfactant), and 22-28 wt.% Argirec B22 (kaolinite clay). The instant claims do not require the combination of all of these specific components and within the narrower concentration ranges. Therefore, the instant claims are not commensurate in scope with the compositions of Tables 2-3.
Claims 19 and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Masaki et al. (JP 2005015377 A) as applied to claims 1-2, 4-10, 12-14, 17-18 and 22-23 above, further in view of Sawant et al. (International Symposium on Grape Production and Processing 785, 2008).
The teachings of Masaki et al. are discussed above.
Regarding instant claims 19 and 24-26, Masaki et al. teach that the formulations may be used in fields such as antibacterial agents, agrochemical emulsifiers, and fungicides, but do not explicitly disclose controlling the claimed fungal pathogens.
Sawant et al. teach that potassium bicarbonate is effective for the control of powdery mildew on grapes (Abstract; pg. 288). Sawant et al. teach that potassium bicarbonate was effective for the control of Uncinula necator in concentrations of 0.5% and 1% (pg. 287-288; Tables 1-4). Sawant et al. also teach that the use of nonionic surfactants improved the efficacy of potassium bicarbonate to control powdery mildew on bunches (Abstract; pg. 287-288).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to control fungal pathogens, such as powdery mildew, with compositions according to Masaki et al. which comprise surfactants and potassium bicarbonate. Such would have been obvious because Sawant et al. teach that potassium bicarbonate combined with surfactants is particularly effective at the control of powdery mildew on grapes.
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive. Applicant argues that examples 3, 4 and 5 of the instant application show that various products according to the invention have a significantly improved antifungal effect, inhibiting the growth of fungal pathogens responsible for vine downy mildew, as well as fungal pathogens causing downy mildew of Solanaceae (Phytophtora infestans) compared with those of an aqueous potassium bicarbonate or sodium bicarbonate solution without excipient, both on leaves in vitro and under semi-controlled greenhouse conditions. The data unexpectedly demonstrate that the adhesion, spreading, resistance to leaching and longevity properties on crop leaves is increased compared with those of an aqueous potassium bicarbonate solution.
The examiner respectfully argues that Sawant et al. teach that potassium bicarbonate is effective for the control of powdery mildew on grapes and the use of nonionic surfactants improved the efficacy of potassium bicarbonate to control powdery mildew on bunches. Therefore, the enhanced efficacy of potassium bicarbonate in the presence of surfactants is not surprising and unexpected.
Applicant also argues that Sawant fails to teach a composition comprising both potassium bicarbonate as active ingredient and at least one anionic surfactant belonging to the taurate family.
The examiner respectfully argues that Masaki et al. teach that examples of anionic surfactants include N-acyl-N-methyltaurine and N-acyl-N-carboxyethyl taurine or salts thereof ([0034]). Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to prepare compositions according to Masaki et al. comprising a taurate anionic surfactant.
Claims 1, 3-5, 9, 11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (CN 106833929 A) in view of Bolkan et al. (US 5,482,647).
Regarding instant claim 1, Cheng et al. teach an environmentally friendly cleaning agent comprising an anionic surfactant, a nonionic surfactant, a detergent builder, a preservative, an essence, a pigment and water (Abstract; Claims 1-2). The anionic surfactant includes sodium methyl cocoyl taurate, the nonionic surfactant includes an isopropanol alcohol-ethylene oxide condensation product, the detergent building includes sodium bicarbonate, and the preservative is sodium benzoate (Examples 3-4 and 6).
Cheng et al. do not explicitly disclose compositions comprising potassium bicarbonate, as instantly claimed.
However, Bolkan et al. teach that it is conventional to use "builders" in detergent compositions which supplement and enhance the cleaning effect of an active surfactant present in the composition (col. 1, ln. 14-16). Bolkan et al. teach detergent compositions comprising a carbonate builder, such as sodium or potassium bicarbonate (col. 4, ln. 27-30).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to substitute potassium bicarbonate for sodium bicarbonate as a detergent builder in the compositions according to Cheng et al.
The Supreme Court in KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. One such rationale includes the simple substitution of one known element for another to obtain predictable results. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. See MPEP 2143.
Regarding instant claim 3, Cheng et al. teach that the detergent builder is present in an amount of 5-10 parts by weight, and the anionic surfactant is present in an amount of 20-30 parts by weight (Abstract; Claims 1-2).
Regarding instant claim 4, the recitation of how the potassium bicarbonate is made is a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113(I).
Regarding instant claim 5, Cheng et al. teach that the anionic surfactant is sodium methyl cocoyl taurate (Abstract; Claims 1-2).
Regarding instant claim 9, Cheng et al. teach that the nonionic surfactant includes isopropanol-ethylene oxide condensation product (Abstract; Claims 1-2).
Regarding instant claim 11, Cheng et al. teach that the detergent composition comprises 20-30 parts by weight anionic surfactant and 30-50 parts by weight nonionic surfactant (Abstract).
Regarding instant claim 13, Cheng et al. teach compositions comprising the same components as instantly claimed. Therefore, the compositions are capable of being a phytosanitary composition.
Regarding instant claim 14, Cheng et al. teach compositions comprising the same components as instantly claimed. Therefore, the composition is essentially composed of biobased ingredients.
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive. Applicant argues that Cheng, does not relate to the field of crop treatment and does not mention potassium bicarbonate. Cheng does not describe any composition comprising potassium bicarbonate and does not mention its antifungal properties. Applicant further argues that Bolkan is also in a very different field from that of the present invention. Its teaching is limited to detergents, the active ingredient of which is a surfactant. Carbonate salt only plays a "builder" role, unlike the claimed composition.
In response to applicant's argument, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant also argues that the skilled artisan would not combine teachings of Bolkan's powdered laundry detergent with Cheng's teachings of a liquid cleaning composition.
The examiner respectfully argues that Cheng et al. and Bolkan et al. both teach detergents and carbonate detergent builders. Bolkan et al. teach that it is conventional to use "builders" in detergent compositions which supplement and enhance the cleaning effect of an active surfactant present in the composition. Bolkan et al. teach detergent compositions comprising a carbonate builder, such as sodium or potassium bicarbonate. Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to substitute one known detergent builder for another functionally equivalent detergent builder with the reasonable expectation that the detergent builder would supplement and enhance the cleaning effect of an active surfactant present in the composition.
Conclusion
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571) 272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.W.S/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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