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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 and 5-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 10840243 A (CN ‘243).
CN ‘243 discloses an aqueous emulsion comprising an active component A and component B at amounts between 20 and 55%, emulsifier, castor oil polyethyenoxy ether, and water (see Embodiments).
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over CN 10840243 A (CN ‘243).
CN ‘243 is discussed above and further teaches the use of thickening agents and compositions comprising actives at up to 70wt% (see Embodiments).
It would have been obvious to vary the thickening agent based on the intended use. See MPEP 2144.05(II).
Further, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I). Here, the amount of each component appears to overlap the instantly claimed range.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Nagata et al (US2009/0137646).
Nagata et al teaches an aqueous suspension of agrochemical formulations comprising microbial agrochemicals, kraft lignin, and a vegetable oil or higher fatty acid derived from a vegetable oil (claims, ¶¶ 12, 13, 19-27, and Examples). It further teaches the amount of microbial agrochemical is present from 0.1 to 60 wt% (¶¶ 12 and 13). Castor oil can be the vegetable oil which is present from 0.1 to 30 parts by weight with respect to 1 part by weight the active (paragraphs 19-22). The viscosity of the formulation is adjusted by adding thickeners and/or water if necessary (¶ 26) to be used for soaking or spraying rice seed (¶ 27).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I). Here, the amount of each component appears to overlap the instantly claimed range.
Finally, where thickeners and water are taught to modify the viscosity, it would have been obvious to vary the two in order to optimize the intended purpose, i.e. application and adherence to seeds. See MPEP 2144.05(II). As the purpose of the prior art appears to be the same as claimed in instant claim 12, it appears the optimization would result in the same viscosity ranges.
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-12 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims of copending Application No. 18/698,144 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Examiner notes that the active species of ‘144 is within the genus of actives instantly claimed, therefore there is no way to practice the compositions or methods of the ‘144 without reading on the copending claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri (9am-6pm + mid-day flex).
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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612