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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/10/26 has been entered.
Status of the Claims
Claims 1-12, 14, and 15 have been canceled. Claims 22-30, 32, and 33 are withdrawn. No new claim is added. Accordingly, claims 13 and 16-33 are pending with claims 13, 16-21, and 31 under current examination.
Previous Elections
The following previous elections are noted: Group I, claims 13-25, and species (A) ethoxylate surfactant; (B) xanthan gum thickener; and (c) benzisothiazol-3(3h)-one antibacterial and 4,4-dimethyloxazolidine antifungal.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/10/26 has been considered by the examiner.
Response to Arguments
Applicant’s arguments filed 9/10/2026 (hereafter, “Remarks”) have been fully considered and are addressed as follows.
Applicant argues that Schlatter’s teaching differs in numerous ways from the claimed invention particularly since Schlatter applies the formulation to seeds, rhizomes, bulbs, corms, and tubers, in contrast with Applicant’s formulations which are used to protect growing plants exposed to sunlight. In reply, Applicant’s argument has been considered but is not persuasive since it pertains to a method of use and/or the effects thereof and not a composition which is the statutory class of invention under examination.
Applicant continues on page 6 of Remarks that his position is that the Schlatter and Kibbee references constitute nonanalogous art and asserts that the Office’s position treats use of calcium carbonate “as a foregone conclusion”. Applicant argues that much experimentation was undertaken [in the instant application] to achieve satisfactory compositions for the intended use and concludes that the claimed combination results from mere adjustment of calcium carbonate/titanium dioxide parameters (bottom of page 6 of Remarks). In reply, the reason or motivation to modify the reference may suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. Moreover, in the instant case, it is maintained that the cited references reasonably constitute analogous art to the claimed invention since the references are both in the same field of endeavor and reasonably pertinent to the problem faced by the inventor where the problem, for instance, may be considered formulation of titanium dioxide and/or calcium carbonate aqueous formulations. Moreover, Schlatter’s ultimate purpose is to facilitate plant propagation for instance by employing fungicides and/or bactericides and insecticides wherein Schlatter’s aqueous formulations may include titanium dioxide or calcium carbonate components as well as a variety of active agents (see [0072] of Schlatter in particular). Schlatter encompasses herbicides, insecticides, fungicides, bactericides, insect growth regulators, plant growth regulators, nematicides, molluscides, and similar (see [0072]) and have improved flowability properties and functional carrier components as well (see [0010]). Accordingly, the relevance of Schlatter is maintained for what it considered as a whole reasonably would have suggested to the ordinary artisan.
Further, it is maintained that both Schlatter and Kibbee teach compositions which are aqueous continuous phase dispersions of pesticide active agents having desirable physical flow characteristics. It is the examiner’s position that the prior art is similar to the instant invention both in structure and in function as agrochemical compositions and products. Moreover, a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Accordingly, where both Schlatter and Kibbee are directed to flowable compositions, it would have been prima facie obvious to add calcium carbonate within the size range taught by Kibbee to the formulations of Schlatter in order to facilitate flowability by desirably inhibiting phase separation as suggested by Kibbee. Moreover, in view of Schlatter’s teaching of titanium dioxide and in view of Kibbee’s teaching of calcium carbonate and titanium dioxide as functional equivalents, one reasonably would have expected success from adding or substituting calcium carbonate as in Kibbee for a portion of Schlatter’s titanium dioxide component in order to provide desirable flowability and phase physical properties as taught by Kibbee.
Applicant argues on page 7 of Remarks that the prior art in a Glenn reference counter indicates calcium carbonate for achieving benefits from reducing or preventing chloroplast avoidance of sunlight and that the instant invention provides a solution by reducing or preventing chloroplast avoidance movement. Applicant asserts that the problem solved is not provision of a variation on titanium dioxide and/or calcium carbonate compositions, elaborating on the argument otherwise addressed above. Applicant “requests that the Examiner accept this more accurate description of the “problem/solution” (see paragraph bridging pages 7 and 8 of Remarks). Further regarding the Glenn reference as previously addressed in the record, Applicant argues that Glenn is focused on carbon assimilation in the context of plant photosynthesis which is the same focus as the present invention, and Applicant re-iterates his conclusion that Schlatter and Kibbee does not offer a solution to that particular problem.
In reply, Applicant’s position regarding Glenn has been considered, however the relevance of the previously cited references is maintained, and a case of obviousness is maintained in view of the preponderance of evidence in the record. Whether or not the effects of a method of using a composition improves plant productive or quality by a mechanism of reducing heat stress is not directly relevant to the composition claims under examination, which may be constructed or used for another purpose as in the prior art and still be rendered obvious. It is clarified that Glenn is not a reference cited in any rejection of record, currently or previously; rather, Glenn is a reference that Applicant has provided for showing that calcium carbonate did not provide plant productivity or quality in particularly by reducing heat stress. Nevertheless, Glenn does not exclude or teach away from alternate or additional rationale for including calcium carbonate.
Regarding subsequent rejections further relying on Hieng, Applicant argues that the underlying primary reference combination should be withdrawn. As noted above, Applicant’s argument is not persuasive in view of the preponderance of evidence in the record particularly in view of the claim language drawn to a composition.
Applicant requests rejoinder, however no claim is indicated allowable at this time, so no claim is eligible for rejoinder.
New Rejection
Claim Rejections - 35 USC § 112(d)
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 21 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 21 depends from canceled claim 1. 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.
Modified Grounds of Rejection Necessitated by Amendments of 9/10/2026
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 13 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over US2005/0209103A1 (“Schlatter”) in view of WO2009/153231A2 (“Ishaque”) and US 2003/0118626A1 (“Kibbee”) as evidenced by Working Party on Manufactured Nanomaterials, Draft Dossier Development Plan: Titanium Dioxide, ENV/CHEM/NANO(2009)4/ADD6 (https://one.oecd.org/document?ENV/CHEM/NANO(2009)4/ADD6/en/pdf, Accessed online 12/16/2025).
The claims are drawn to a composition comprising (a) titanium dioxide nanoparticles, (b) calcium carbonate nanoparticles, (c) at least one surfactant, (d) at least one thickener, and (e) optionally water. Applicant previously elected the at least one surfactant to be ethoxylate and the at least one thickener to be xanthan gum. The titanium dioxide nanoparticles are limited to a size range of from about 10 nm to about 50 nm, and the calcium carbonate nanoparticles are limited to a size range from about 200 nm to about 3 microns.
Schlatter teaches aqueous compositions suitable for applying fungicides to plant propagation materials (see abstract, in particular) and more generally seed treatment compositions including fungicides but can include other pesticides such as bactericides and insecticides (see [0084]). As a carrier component, Schlatter teaches the aqueous formulations may include for instance titanium dioxide or calcium carbonate among others (see [0059]-[0060]). The formulations may include additional active components such as herbicides, insecticides, fungicides, bactericides, insect growth regulators, plant growth regulators, nematicides, molluscicides, or mixtures of these preparations (see [0072]). Schlatter’s formulations have improved flowability properties (see [0010]) and include a film forming polymer, a surfactant, an inorganic carrier, and an antifreeze agent in aqueous composition (see [0010]).
Regarding (a), Schlatter teaches titanium dioxide as at least one solid inorganic carrier for instance (see Schlatter claim 25).
Regarding (c) at least one surfactant component, Schlatter teaches a surfactant component (see [0111]). For instance, the surfactant may be Makon TD-6 (Stepan)(ethoxylated fatty alcohol) which appears to be an alkyl ethoxylate as instantly elected surfactant (limitation of claim 16).
Regarding (d) at least one thickener, Schlatter teaches xanthan gum among illustrative water-soluble polymers which may desirably exhibit pseudoplastic properties in aqueous media (see [0068]), and xanthan gum, as instantly elected to be the thickener, is preferred among Schaletter’s acceptable thickeners (see [0069])(limitation of claims 17 and 18).
Regarding optional component (e) water, as noted above, Schlatter’s formulations are aqueous.
All together, Schalatter’s formulations are aqueous and include a combination of components which are desirably storage stable, have improved flowability, and good adherence to plant propagation material with low dust-off, and have excellent performance on cold or frozen seed (see [0010]) and are further applicable in combination with one or more fungicides for the protection of plant propagation materials (see [0010]).
As to (a) titanium dioxide nanoparticles, Schlatter does not specify that the nanoparticles range in size from about 10 nm to about 50 nm as newly claimed.
Ishaque cures this deficiency. Ishaque teaches agrochemical formulations comprising a pesticide, an organic UV photoprotective filter, and coated metal oxide nanoparticles wherein the formulations may be used in methods of contacting plants, soil, or habitat of plants in or on which harmful insects or phytopathogenic fungi are growing or may grow (see title, in particular). Like Schlatter, Ishaque encompasses seed treatment for instance, among other applications (see page 19, line 37). Ishaque’s formulations may be intended to treat plants and vegetables such as cucumbers for instance (see page 19, lines 35-37 in particular). Ishaque teaches the titanium dioxide particles to be included as coated or uncoated (see page 2, lines 31-37), and the titanium dioxide nanoparticles may be commercially available from BASF SE as T-LiteTM MAX (see page 24, lines 30-36). T-lite max have a size range within 10 to 50 nm (see Ishaque page 3, lines 35 and 36) and are rutile as evidenced by Working Party on Manufactured Nanomaterials “Titanium Dioxide” (page 11, see description of “Material 4”)(limitations of claims 13 and 19).
Both Schlatter and Ishaque pertain to agrochemical formulations comprising titanium dioxide in coated form for known benefits. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention as made to utilize T-lite max or T-lite SF-S, both rutile particles having the dimensions claimed) as taught by Ishaque as Materials 3 and 4 in place of Schlatter’s generally disclosed titanium dioxide nanoparticles. One would have been motivated to do so in view of Ishaque’s particular teaching of these titanium dioxide particles to be desirably useful in agrochemical formulations and even preferred (see page 2, lines 35-36).
As to (b) calcium carbonate, Schlatter does not include calcium carbonate as recited in claim 13. In other words, Schlatter generally teaches calcium carbonate but does not specify nanoparticular form as instantly claimed.
Kibbee cures this deficiency. Like Schlatter, Kibbee pertains to flowable compositions comprising one or more active ingredients and other dispersed ingredients in an aqueous continuous phase (see abstract, in particular). Kibbee teaches that low-density particles are included in the formulations to desirably inhibit phase separation in pesticidal chemical flowable formulations (see abstract, in particular). Kibbee’s dispersed ingredients comprise one or more active ingredients and fine particles wherein said fine particles are selected from a group including calcium carbonate and titanium dioxide (see [0019], [0020], [0023]). Fine particles sized less than 5 micrometers and preferably less than 3 micrometers which may be calcium carbonate are included for the purpose of inhibiting phase separation (see [0066], [0067]). It is noted that the calcium carbonate size range preferred by Kibbee, less than 3 microns, overlaps significantly with the instantly claimed range of 200 nm to about 3 microns (limitation of claim 13 as amended).
Both Schlatter (see [0010]) and Kibbee are directed to flowable compositions comprising an active agent and particles in aqueous formulation. It would have been prima facie obvious to one of ordinary skill in the art to add calcium carbonate fine particles within the size range suggested by Kibbee to the formulations of Schlatter, with a reasonable expectation of success. One would have been motivated to do so to facilitate flowability by desirably inhibiting phase separation in a formulation as taught by Kibbee.
Further regarding the new claim language, “wherein the composition when applied to a living plant is effective to reduce or prevent chloroplast avoidance of sunlight in the plant”, at the end of claim 13, it is the examiner’s position that this claimed characteristic or result of a method of use is considered inseparable from the product itself, which is otherwise addressed above. The claim is interpreted to be a composition claim and not a stepwise method claim. Since the prior art structure is capable of performing this stepwise process or intended use, then the prior art structure, detailed above, is considered to meet the claim.
Claims 20, 21, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over US2005/0209103A1 (“Schlatter”) in view of WO2009/153231A2 (“Ishaque”) US 2003/0118626A1 (“Kibbee”) as evidenced by Working Party on Manufactured Nanomaterials, Draft Dossier Development Plan: Titanium Dioxide, ENV/CHEM/NANO(2009)4/ADD6 (https://one.oecd.org/document?ENV/CHEM/NANO(2009)4/ADD6/en/pdf, Accessed online 12/16/2025) as applied to claims 13 and 16-19 above, and further in view of DE102005024496A1 (“Hieng”; translation previously enclosed).
The teachings of Schlatter, Ishaque, and Kibbee have been delineated above. Regarding claim 21, Applicant has elected benzisothiazol-3(2h)-one as the antibacterial agent and 4,4-dimethyloxazolidine as the antifungal agent wherein the combination of these two components is the elected embodiment as in claim 21; for the purpose of compact prosecution, the substance of claim 21 is examined here despite its incorrect dependency from a canceled claim, as noted above in the rejection under 35 U.S.C. 112(d). Schlatter teaches 1,2-benzisothiazol-3(2-one (see [0105]) as a bactericide in combination with xanthan gum, and similarly Kibbee teaches 1,2-benzisothiazolin-3-one (benzisothiazol-3(2h)-one) as a biocide and/or preservative desirably included (see [0101]).
Neither Schlatter nor Kibbee teach clove oil as in claim 20 or 4,4-dimethyloxazolidine as in claim 21.
Hieng cures this deficiency. Hieng is drawn to the same problem of providing stabilized and dispersed formulations as Schlatter and Kibbee (see Hieng title, in particular). Hieng teaches liquid formulations comprising a surfactant and an active ingredient (see abstract, in particular). Hieng includes nonionic surfactants which may be fatty alcohol ethoxylates for instance (see page 4/9 of translation), among others. The formulations may be aqueous (see page 5/9, middle of page). Hieng teaches the state of the art wherein fragrance or perfume oils may further be included, and clove oil is named as an example perfume oil (see page 7/9 of translation, paragraph starting “Perfume oils…”). Hieng teaches that the stabilized formulations may additionally include biocides (see page 7/9 of translation, paragraph starting “Prefers solutions…”) then subsequently names 1,2-benzisothiazolin-3-one in a list with only four other biocides disclosed, one of which is 4,4-dimethyloxazolidine (see fourth paragraph from bottom of page 7/9of translation).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add clove oil as taught by Hieng to stabilized formulations of Schlatter and Kibbee, with a reasonable expectation of success. One would have been motivated to do so to provide fragrance perfume benefit as taught by Hieng in a stabilized formulation. Moreover, it would have been prima facie obvious to one of ordinary skill in the art to add 4,4-dimethyloxoazolidine as taught by Hieng for at least a portion of Schlatter and Kibbee’s benzisothiazol-3(2h)-one active agent, with a reasonable expectation of success. One would have been motivated to do so based on Hieng’s teaching of these agents as similarly useful as biocide active agents able to be included in a stabilized formulation.
Further regarding claim 31, Kibbee teaches that acrylic copolymers may be included as a thickener for instance (see [0093]). It would have been prima facie obvious to one of ordinary skill in the art to substitute acrylic copolymer as taught by Kibbee for a portion of a thickening component in Schlatter and Kibbee, with a reasonable expectation of success. One would have been motivated to do so based on Kibbee’s teaching of acrylic copolymers as thickening equivalents which may be used in combination with the preferred xanthan gum component otherwise addressed above (see [0093]). Moreover and further in view of Hieng’s teaching one would have been additionally motivated to adjust the thickness in order to achieve the desired carrier medium physical properties of both distribution formulation components (i.e., fragrance and biocides alike) and further in view of Kibbee and Schlatter’s general teaching of thickeners included in similar carrier formulations.
Conclusion
No claim is allowed.
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/AUDREA B CONIGLIO/Primary Examiner, Art Unit 1617
