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 .
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.
Status of the Claims
Claims 1-12, 14, and 15 have been canceled. Claims 22-30, 32, and 33 previously were withdrawn. Claims 13 and 16-33 remain pending. Claims 13, 16-21, and 31 are pending and under current examination. No new claim has been added.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/26/26 has been considered by the examiner.
Response to Arguments
Applicant’s arguments filed 2/26/26 (hereafter, “Remarks”) have been fully considered and are addressed as follows. Applicant’s delineation of rejections of record and case law as detailed on page 5 of Remarks is noted.
On pages 6 and 7 of Remarks, Applicant argues that Schlatter and Kibbee references fail tests of being established as analogous art in view of Applicant’s characterization of the claimed invention pertaining to sunlight and processes of enhancing carbon dioxide by trapping it from air. In reply, Applicant’s argument is noted but is not persuasive since it is directed to limitations not claimed, particularly being directed to process steps. It is noted that the elected invention under current examination is a composition. 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.
Furthermore, in reply, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Specifically, here 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. 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.
On page 8 of Remarks, Applicant presents a table with citations to the Schlatter reference, Schlatter reference text, and characterizations of uses of the compositions disclosed in the Schlatter reference (“relevance”). Applicant describes his position as a discussion in view of “common sense” and “reality of the circumstances” based on his citations to and interpretations of case law (see bottom of page 8 of Remarks). Applicant asserts that anti-freeze as in Schlatter is inconsistent with the claimed composition which is used in sunlight and not applied to frozen seeds. In reply, Applicant’s argument has been considered but is not persuasive in view of the reference considered for what it reasonably suggests when considered as a whole which reasonably encompasses stabilized formulations for agrochemicals, the particular effect of which may be substituted according to the desired end result based on Schlatter as would have been understood by the ordinary artisan. Further, Schlatter’s ultimate purpose is to facilitate plant propagation for instance by employing fungicides and/or bactericides and insecticides wherein Schlatte’rs 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 funcitnoal 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.
Applicant on page 9 of Remarks discusses Schlatter as being directed against phytopathogenic fungi and being applied to a seed and describing treatment of rhizomes, bulbs, corns, and tubers. Applicant narrowly defines the field of endeavor of the instant invention as protecting plants from sunlight. On page 10 of Remarks, Applicant repeats that Schlatter pertains to seed stage growth in alleged contrast with the instant invention. Applicant concludes Schlatter and the instant invention (above the soil) are mutually exclusive since the instant invention pertains to plants growing in sunlight. In reply, the claims do not recite any limitation such as being limited to method steps or sunlight exposure parameters in particular. Applicant is therefore arguing limitations not claimed. Furthermore, in reply, this argument is not persuasive in view of Schlatter considered as a whole and in view of the preponderance of evidence in the record.
Applicant cites Clay at the bottom of page 10 of Remarks and continues on page 11 of Remarks that just as the petroleum industry contains multiple fields of endeavor according to Clay, the instant scenario is comparable allegedly wherein the agrochemical industry as in the cited art contains multiple fields of endeavor. Applicant asserts that because Schlatter is the primary reference and Kibbee is a secondary reference and allegedly because these are non-analogous art, the rejections are improper. In reply, it is maintained that the cited references are relevant as both pertaining to the structural elements claimed and also as being generally directed to analogous arts, even if useful for a different intended use or a narrower intended use than Schlatter generally encourages. Here, 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.
Regarding subsequent rejections of claims 13 and 16-19, Applicant argues that combining Schlatter with Ishaque and Working Party moves away [from the claimed invention] because one would not have sought a method of protecting a pesticide and asserts that there is no common sense motivation to bring Ishaque’s teaching into this combination. In reply, Ishaque is cited for its teaching of the state of the art with regard to titanium dioxide particles and their benefit and inclusion in plant and/or vegetable treating compositions. It’s relevance is maintained for the reasons of record.
Applicant argues that Kibbee, pertaining to antifungal compositions, does not cure Schlatter’s deficiency regarding particle size of calcium carbonate. Kibbee teaches flowable compositions and provides rationale for providing compositions having desirably inhibited phase separation; its relevance is maintained for the reasons of record.
Applicant argues that Glenn teaches away and counter’s the examiner’s previously state position by suggesting that “it is helpful to take a step back and ask why prior art in the field of agricultural pestide use on seeds (Schlatter) is being applied in the first place” and concludes that Schlatter’s purpose is completely different form the purpose fo Applicant’s compositions. Applicant cites MPEP 2141, 904, and 2111.
Applicant argues that the scope and content of the cited art are inconsistent with the invention disclosed and claimed in view of Applicant’s characterization of Schlatter as being focused on coating plant seeds with a composition to combat phytopathogenic fungi. Applicant argues that Schlatter’s defined deficiencies are not applicable to addressing the problem solved by the instant invention and that even if motivation to cure any deficiency were provided, Glenn teaches away from the claimed combination. 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 parituclarly by reducing heat stress. Nevertheless, Glenn does not exclude or teach away from alternate or additional rationale for including calcium carbonate.
Regarding rejections of claims 20, 21, and 31 under 35 U.S.C. 103, Applicant argues that Hieng does not cure the alleged deficiency. In reply, as noted above, references cited prior to Hieng are maintained as relevant and applicable as in the rejection of record.
Maintained Grounds of Rejection
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 formulatiosn 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.
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. 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.
THIS ACTION IS MADE FINAL. 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 AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/Primary Examiner, Art Unit 1617
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