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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/24/2026 has been entered.
Status of Claims
Receipt of Remarks/Amendments filed on 06/17/2026 is acknowledged. Claims 21 and 26-28 are amended and claims 1-20 and 22-25 are canceled. Claims 21 and 26-28 are currently pending and are examined on the merits herein.
Priority
The instant application filed 04/16/2024, is a Continuation of Application No. 16/942,422, filed 07/29/2020, which claims benefit to Provisional Application Nos. 62/879,812, filed 07/29/2019, and 62/905,040, filed 09/24/2019.
Withdrawn Objections/Rejections
Claims 26-28 were rejected under 35 U.S.C. 112(b) as being indefinite. Applicant’s amendments to claims 26-28 have overcome the rejection and the rejection is withdrawn.
Claims 21 and 26-28 were rejected under 35 U.S.C. 103 as being unpatentable over Mann in view of Levy. Applicant’s amendment to claim 21 has overcome the rejection and the rejection is withdrawn.
Claims 21 and 26-28 were provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 16/942,422 in view of Mann. Applicant’s amendment to claim 21 has overcome the rejection and the rejection is withdrawn.
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 21 and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Sutton, D., et al. (1971). Response of Aquatic Plants to Combinations of Endothall and Copper. Weed Science, Vol. 19, No. 6, pp. 643-646 (IDS dated 12/03/2025), hereinafter Sutton, in view of Levy, R., (US 6337078 B1, 01/08/2002, on record), hereinafter Levy.
Sutton discloses a synergistic effect after treatment of hydrilla with a combination of 5.0 ppmw of endothall plus copper sulfate (i.e., cupric sulfate) pentahydrate (CSP) at 1.0 ppmw of copper. An increase in copper uptake and a reduction in phosphorus levels was associated with those plants treated with the combination (abstract; p. 645, left col., para. 3-4; Tables 3- 4). Combinations of endothall and the copper compounds were added to the nutrient solution used to grow hydrilla cuttings (p. 644, right col., para. 5), which reads on a pesticide composition comprising a blend of a herbicide from (i) (i.e., endothall) and a metal compound from (ii) (i.e., cupric sulfate), as defined in claim 21.
The teachings of Sutton differ from that of the instantly claimed invention in that Sutton does not explicitly teach wherein the blend is coated, as recited in claim 21, nor the forms of claims 26 and 27 and the carrier of claim 28.
Levy discloses controlled release compositions comprising complexes for treating a population of one or more aquatic organisms in a column of water (abstract). The complex comprises at least one bioactive agent for treating a population of one or more aquatic organisms, at least one carrier component, and at least one coating component for regulating the controlled release rate, and release profile of the bioactive agent in water (abstract; col. 5, lines 48-53; claim 1). The coatings are selected so as to act as materials that will regulate the controlled release rate and release profile of bioactive agents over a period of time in an aqueous medium (col. 10, lines 52-56). Such coatings read on the coating of claim 21.
Bioactive agents included in the compositions include copper sulfate, endothall, and more, as well as combinations thereof, such as the two, three or four component combinations (col. 10, lines 9-15). The components of Levy can be homogeneously or heterogeneously combined into the desired controlled delivery compositions or complexes by admixing the individual solid, and/or liquid formulation components in a concentration, and order to effectively impregnate or encapsulate the carrier(s) with the desired concentration of coating agent(s) and bioactive agent(s) (col. 17, lines 30-38).
The composition may also comprise one or more binder component(s) for agglomerating said composition into larger units such as granules, pellets, and briquets (col. 3, lines 39-42). In a specific embodiment, the composition is delivered as a granule or pellet (claim 20), both of which read on the solid forms of claims 26 and 27.
The carrier of Levy can be particulates such as powders, granules, pellets, or briquets (col. 6, lines 64-67). Especially preferred materials comprise silicas and silicates (col. 8, lines 4-5; claims 5-7), which read on the particulate carrier of claim 28.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to formulate the endothall/copper sulfate combination of Sutton according to the formulation of Levy since such formulations are known and routine in the art of aquatic herbicides. One of ordinary skill in the art would have been motivated to combine the blend of endothall and copper sulfate, taught by Sutton, with the carrier and coating of Levy since such a formulation provides controlled release of the bioactive agent in water. Such an effect would be desirable in a composition for controlling aquatic weeds in a body of water such as that of Sutton. One of ordinary skill in the art could have formulated the endothall/copper sulfate blend of Sutton with the carrier and coating component of Levy according to known techniques taught by Levy, to predictably yield a coated herbicidal blend as defined in claim 21.
It would have been further prima facie obvious to one of ordinary skill in the art to formulate the combined composition above in a solid pellet or granule form since these are known and routine forms in the art. One of ordinary skill in the art could have provided the combined composition as a solid pellet or granule by adding a binder and agglomerating the composition according to the known methods of Levy to predictably yield the composition of claims 26 and 27.
Lastly, it would have been prima facie obvious to one of ordinary skill in the art to select a particulate carrier such as silica or silicate as the carrier in the combined composition above, since these are known and routine carriers in the art. One of ordinary skill in the art could have impregnated or encapsulated the endothall/copper sulfate blend of Sutton and the coating component of Levy onto a particulate carrier according to the known methods of Levy to predictably yield the composition of claim 28.
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since both Sutton and Levy teach aquatic herbicide compositions, and the formulation of Levy comprises bioactives that may include endothall, copper sulfate, or combinations thereof.
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.
1. Claims 21 and 26-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 14-16 of copending Application No. 16/942,422 in view of Sutton and Levy. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Mann.
Copending claim 11 recites a process of making a herbicidal solid composition soluble in deionized water containing a herbicide having a carboxyl group, wherein the herbicide is endothall or a salt thereof, and a metal having at least a +2 oxidation state. The process of copending claims ‘422, would necessarily result in a herbicidal solid composition comprising endothall and a metal having at least a +2 oxidation state, which reads partially on instant claim 1. Copending claim 16 further defines the metal as being selected from the group consisting of magnesium, iron, calcium, aluminum, copper, zinc, manganese, molybdenum, cobalt, strontium, barium and lanthanum. The copending claims differ from the instant claims in that the copending claims do not explicitly recite that the metal having at least a +2 oxidation state is provided by a metal containing compound selected from those of instant claim 1, nor wherein the combination (i.e., blend) is coated.
Sutton discloses a synergistic effect after treatment of hydrilla with a combination of 5.0 ppmw of endothall plus copper sulfate (i.e., cupric sulfate) pentahydrate (CSP) at 1.0 ppmw of copper. An increase in copper uptake and a reduction in phosphorus levels was associated with those plants treated with the combination (abstract; p. 645, left col., para. 3-4; Tables 3- 4).
Levy discloses controlled release compositions comprising complexes for treating a population of one or more aquatic organisms in a column of water (abstract). The complex comprises at least one bioactive agent for treating a population of one or more aquatic organisms, at least one carrier component, and at least one coating component for regulating the controlled release rate, and release profile of the bioactive agent in water (abstract; col. 5, lines 48-53; claim 1). The coatings are selected so as to act as materials that will regulate the controlled release rate and release profile of bioactive agents over a period of time in an aqueous medium (col. 10, lines 52-56). Bioactive agents included in the compositions include copper sulfate, endothall, and more, as well as combinations thereof, such as the two, three or four component combinations (col. 10, lines 9-15).
It would have been prima facie obvious to one of ordinary skill in the art to use the copper sulfate of Sutton, as a source of copper 2+ in the copending claims since copper sulfate has a known synergy with endothall. One of ordinary skill in the art would have been motivated to use copper sulfate due to this synergy in addition to its known dissociation into Cu2+ ions, as is required by the copending claims.
It would have been further prima facie obvious to one of ordinary skill in the art to formulate the endothall/copper sulfate combination above according to the formulation of Levy since such formulations are known and routine in the art of aquatic herbicides. One of ordinary skill in the art would have been motivated to combine the mixture of endothall and copper sulfate with the coating of Levy since such a formulation provides controlled release of the bioactive agent in water.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments with respect to the rejection of claims 21 and 26-28 under 35 USC 103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments against Levy, which is still relied upon, are that Levy achieves controlled release by a different mechanism than in the instant invention (p. 6 of Remarks). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., release rate) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 9-5 (Flex).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
Prosecution Insights