DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant's election with traverse of Group I, claims 1, 4-5, 8-10, 14, 20, 24, 29-30, 34-35, 42, and 50, and the species mancozeb, glyphosate salt, and isotridecyl polyoxyethyl (6EO) phosphoric acid mono/diester in the reply filed on 15 June 2026, is acknowledged. The traversal is on the ground that the International Search Authority found that claims 1-57 possess unity of invention. This is not found persuasive because the International Search Authority does not examine under the same laws, regulations, and procedures as the USPTO.
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
Claims 1, 4-5, 8-10, 14, 20, 24, 29-30, 34-35, 39, 42, 44-46, and 49-50 are pending in the instant Office Action.
Claims 39, 42-46, and 49 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 15 June 2026.
Claims 1, 4-5, 8-10, 14, 20, 24, 29-30, 34-35, 42, and 50 are under consideration in the instant Office Action, to the extent of the following elected species:
the specific one or more dithiocarbamate fungicides is mancozeb;
the specific one or more acid-based pesticides is glyphosate salt; and
the specific one or more organic phosphoric acid ester-based compatibility agents is isotridecyl polyoxyethyl (6 EO) phosphoric acid mono/diester, referred to as Hostaphat® 1306.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent India Application No. IN 202111052034, filed on 12 November 2021, has been received from the International Bureau.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10 May 2024, was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1, 14, 29-30, and 50 are objected to because of the following informalities:
Claim 1 recites “at least one acid-based pesticide or derivative thereof, and/or derivative thereof in a liquid carrier” in lines 2-3 (bold added for emphasis). The examiner believes the bolded words were included by error and should be removed to avoid unnecessary repetition.
Claim 1 also recites “10 minutes or, 30 minutes” in the final line. The comma is extraneous and should be removed.
Claim 14 recites “acid-based pesticide is carboxylic acid” in line 2. The word “a” should be inserted before “carboxylic” and the resulting phrase should read “acid-based pesticide is a carboxylic acid” (bold added for emphasis).
Claim 29 recites “and acid-based herbicide” in line 4 and “and dithiocarbamate fungicide” in the penultimate line. The phrase “the at least one” appears to have been inadvertently omitted and should follow the conjunction “and” in both phrases (e.g., “and the at least one acid-based herbicide”), consistent with instant claim 1.
Claim 30 recites “and acid-based herbicide” in line 4. The phrase “the at least one” appears to have been inadvertently omitted and should follow the conjunction “and”, mirroring instant claim 1.
Claim 50 recites “(i) mancozeb, and glyphosate salt” in line 2. The comma is extraneous and should be removed.
Claim 50 also recites a compatibility agent “identified by the method as claimed in claim 49” line the final line. Claim 49 has been withdrawn as being drawn to a nonelected invention. Claim 50 should be amended to remove the dependency on claim 49 and either describe the necessary process limitations or include the limitation from instant claim 1 “at least one organic phosphoric acid ester-based compatibility agent”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-5, 14, 20, 29-30, and 34-35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 4-5 and 14 recite “the acid-based pesticide” in line 2 of each claim. There is insufficient antecedent basis for this limitation in the claims because claim 1, from which each of claims 4-5 and 14 depend, recites “the at least one acid-based pesticide”. It is unclear if the limitation in claims 4-5 and 14 is limiting one acid-based pesticide, more than one acid-based pesticide, or all of the acid-based pesticides, rendering the claims indefinite. Applicant may overcome this rejection by amending each recitation of the phrase to recite “the at least one acid-based pesticide”.
Claim 20 recites “the alkyl polyalkylene glycol ether phosphoric acid ester form” in lines 1-2, claim 29 recites the phrase in lines 3-4 and 5-6, claim 30 recites the phrase in lines 3-4, 5-6, and 7-8, and claim 35 recites the phrase in lines 3 and 5-6. There is insufficient antecedent basis for this limitation in the claims because claim 10, from which each of claims 20, 29-30, and 35 depend, recites “the at least one alkyl polyalkylene glycol ether phosphoric acid ester form”. It is unclear if the limitation in claims 20, 29-30, and 35 is limiting one alkyl polyalkylene glycol ether phosphoric acid ester form, more than one alkyl polyalkylene glycol ether phosphoric acid ester form, or all of the alkyl polyalkylene glycol ether phosphoric acid ester forms, rendering the claims indefinite. Applicant may overcome this rejection by amending each recitation of the phrase to recite “the at least one alkyl polyalkylene glycol ether phosphoric acid ester form”.
Claim 29 recites “the organic phosphoric acid ester-based compatibility agent” in lines 2-3 and 5, claim 30 recites the phrase in lines 2-3, 5, and 7, and claim 35 recites the phrase in lines 2-3 and 4-5. There is insufficient antecedent basis for this limitation in the claims because claim 1, from which each of claims 20, 29-30, and 35 depend, recites “the at least one organic phosphoric acid ester-based compatibility agent”. It is unclear if the limitation in claims 29-30 and 35 is limiting one organic phosphoric acid ester-based compatibility agent, more than one organic phosphoric acid ester-based compatibility agent, or all of the organic phosphoric acid ester-based compatibility agents, rendering the claims indefinite. Applicant may overcome this rejection by amending each recitation of the phrase to recite “the at least one organic phosphoric acid ester-based compatibility agent”.
Claim 30 recites “the dithiocarbamate fungicide” in lines 6 and 8 and claim 34 recites the phase in line 2. There is insufficient antecedent basis for this limitation in the claims because claim 1, from which each of claims 30 and 34 depend, recites “the at least one dithiocarbamate fungicide”. It is unclear if the limitation in claims 30 and 34 is limiting one dithiocarbamate fungicide, more than one dithiocarbamate fungicide, or all of the dithiocarbamate fungicides, rendering the claims indefinite. Applicant may overcome this rejection by amending each recitation of the phrase to recite “the at least one dithiocarbamate fungicide”.
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, 4-5, 8-10, 14, 20, 24, 29-30, 34-35, and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Frisch (European Patent No. EP 0257533 A2, published on 2 March 1988, provided by Applicant in the IDS filed on 10 May 2024, references to English translation) in view of Li (Chinese Patent Application Publication No. CN 102388917 A, published on 28 March 2021, references to English translation) and Macom et al. (U.S. Patent No. 12,458,020 B2, priority to 16 January 2020, hereafter referred to as Macom).
Frisch teaches aqueous fungicidal compositions comprising dithiocarbamates and surfactants (Abstract). In one embodiment, the dithiocarbamate fungicide is Mancozeb (claim 2) and the surfactant is a “Hostaphate®” type surfactant, which is interpreted to be equivalent to a Hostaphat® type surfactant, referred to as “Type B” (pg. 2, line 20). The concentration of a Type B surfactant is taught to be 0.1-5% w/w (pg. 2, line 25) and the concentration of all active substances, which is interpreted as all herbicidal compounds, is taught to be 10-70% w/w (pg. 2, line 34). In Example 19, the concentration of mancozeb is 5% w/w (Table 1). This results in a range of ratios between the Hostaphat® surfactant equivalent and the dithiocarbamate fungicide mancozeb of 1:1 to 1:700, and in the embodiment of Example 19, a range of ratios from 1:1 to 1:50, encompassing the ratios recited in instant claims 29-30. The composition is taught to be prepared by combining the components in water to form a “premix” that is subsequently wet-milled and is considered equivalent to the combined tank mix suspension in water recited in instant claim 9 (pg. 2, lines 37-38). Finally, Frisch teaches that additional “combination partners” for the dithiocarbamate fungicides may be in the composition (pg. 2, lines 22-23), which in one embodiment is triphenyltin acetate (TPTA, CAS No. 900-95-8), an acid-based fungicide.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the ratio of Hostaphat® surfactant to mancozeb taught by Frisch, which significantly overlap with or encompass the ranges and values recited in the instant application.
Frisch does not teach the Hostaphat® surfactant to be isotridecyl polyoxyethyl (6 EO) phosphoric acid mono/diester, sold as Hostaphat® 1306, nor the composition to comprise a glyphosate salt. These deficiencies are offset by the teachings of Macom and Li.
Macom teaches synergistic herbicidal compositions comprising triclopyr and one or more phosphate ester adjuvants (Abstract). Macom surprisingly discovered that triclopyr, a commercially available herbicide (col. 1, line 60 - col. 2, line 49), displayed synergy with phosphate ester adjuvants in controlling plant growth in an aqueous composition (col. 6, lines 10-27 and claim 8). The phosphate ester adjuvant is taught to be present in an amount from 0.01-10% w/v (col. 8, lines 42-48). In a preferred embodiment, the phosphate ester adjuvant is Hostaphat® 1306 (col. 7, line 40 and Examples 1-5). Macom found that above 0.25% w/v of Hostaphat® 1306, the mixture displayed synergy in treating Japanese stilt grass (Example 1).
Li teaches a pesticide composition comprising a systemic herbicide and mancozeb (Abstract). Mancozeb is taught to have synergy with many fungicides but Li states that little research has been performed specifically on the combination of mancozeb and glyphosate (pg. 2, lines 7-8). Li teaches that they have surprisingly found synergy between mancozeb and glyphosate and that mancozeb can improve herbicidal effects of glyphosate (pg. 2, lines 9-10), promote the absorption of glyphosate into crops, and provide wide spectrum pesticidal effect (pg. 2, lines 33-34). Finally, Li teaches that glyphosate can be used as a salt, including as a sodium, ammonium, isopropyl ammonium, dimethylamine, or potassium salt (pg. 2, lines 19-20).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Frisch, Macom, and Li to arrive at the invention of claims 1, 4-5, 8-10, 14, 20, 24, 29-30, 34-35, and 50 because combining prior art elements in similar inventions to impart known benefits yields predictable results. Frisch teaches an aqueous fungicidal composition comprising mancozeb and a Hostaphate® surfactant, which is considered equivalent to a Hostaphat® surfactant, in ratios that render obvious the ratio ranges and values recited in instant claims 29-30. Frisch additionally teaches that their composition is prepared by combining the components in water in a container, which is considered equivalent to the combined tank mix suspension in water recited in instant claim 9, and that their composition may comprise additional “combination partners” which in one embodiment is an acid-based fungicide.
In view of the teachings of Macom, one of ordinary skill would be motivated to select the specific Hostaphat® surfactant Hostaphat® 1306 because Macom teaches the surfactant to display synergy with pesticides in an aqueous composition. Frisch did not teach a specific Hostaphat® surfactant and the teachings of Macom provide missing information an ordinary artisan would need to complete their invention. In addition, one or ordinary skill would recognize the teaching of Macom that the species displays synergy with pesticides as beneficial in a pesticidal composition. Further, in view of the teachings of Li a person of ordinary would be motivated to combine a glyphosate salt with the composition taught by Frisch because Li teaches mancozeb and glyphosate salt to display synergy in treating pests, which the ordinary artisan would recognize as desirable.
Frisch, Macom, and Li are silent regarding the rate and/or extent of phase separation and the sedimentation of their compositions as compared to compositions lacking the Hostaphat® surfactant. However, the properties of combined dispersion recited in instant claims 1 and 50 arise from the composition of the combined dispersion. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Additionally, "inherency may supply a missing claim limitation in an obviousness analysis." PAR, 773 F.3d at 1194-1195; see also Endo Pharms. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381, 127 U.S.P.Q.2D (BNA) 1409 (Fed. Cir. 2018). It is long settled that in the context of obviousness, the "mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art." In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981). The Supreme Court explained long ago that "[i]t is not invention to perceive that the product which others had discovered had qualities they failed to detect." Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249, 66 S. Ct. 81, 90 L. Ed. 43, 1946 Dec. Comm'r Pat. 611 (1945).
Inherency, however, is a "high standard," that is "carefully circumscribed in the context of obviousness." PAR, 773 F.3d at 1195. Inherency "may not be established by probabilities or possibilities," and "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient." Oelrich, 666 F.2d at 581 (emphasis added) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 26 C.C.P.A. 937, 1939 Dec. Comm'r Pat. 327 (C.C.P.A. 1939); see also In re Rijckaert, 9 F.3d 1531, 1533-1534 (Fed. Cir. 1993). Rather, inherency renders a claimed limitation obvious only if the limitation is "necessarily present," or is "the natural result of the combination of elements explicitly disclosed by the prior art." PAR, 773 F.3d at 119511-96; see also Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir. 2012).
The combination of the teachings of Frisch, Macom, and Li render obvious a combined dispersion comprising glyphosate salt, mancozeb, and Hostaphat® 1306, with the latter two species present in amounts that render obvious the ranges recited in instant claims 29-30. Therefore, the claimed rate and/or extent of phase separation and sedimentation properties are necessarily present. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1, 4-5, 8-10, 14, 20, 24, 29-30, 34-35, and 50 in view of the teachings of Frisch, Macom, and Li.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Frisch (European Patent No. EP 0257533 A2, published on 2 March 1988, provided by Applicant in the IDS filed on 10 May 2024, references to English translation) in view of Li (Chinese Patent Application Publication No. CN 102388917 A, published on 28 March 2021, references to English translation) and Macom (U.S. Patent No. 12,458,020 B2, priority to 16 January 2020) as applied to claims 1, 4-5, 8-10, 14, 20, 24, 29-30, 34-35, and 50 above, and further in view of Van Der Laan et al. (U.S. Patent No. 11,425,903 B2, priority to 11 May 2018, hereafter referred to as VDL).
Frisch, Macom, and Li teach the above.
Frisch, Macom, and Li do not teach a package or kit for preparing the combined dispersion above. This deficiency is offset by the teachings of VDL.
VDL teaches a pesticidal composition comprising prothioconazole, co-pesticides, and a kit comprising the components of the invention (Abstract). The pesticidal composition is taught to be provided in a kit comprising the components of the invention (col. 7, lines 54-56). VDL teaches that the kit may comprise an instruction manual that instructs users how to mix the components prior to being used (col. 7, lines 57-60).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of VDL with the invention rendered obvious by the teachings of Frisch, Macom, and Li because the combination of prior art elements in similar inventions according to known methods yields predictable results. The teachings of Frisch, Macom, and Li rendered obvious a combined dispersion comprising mancozeb, glyphosate salt, and Hostaphat® 1306 in water, with mancozeb and Hostaphat® 1306 present in a ratio that renders obvious the ratios recited in instant claims 29-30. In view of the teachings of VDL, one of ordinary skill would be motivated to prepare their composition in a kit with instructions for preparing the composition for use because the ordinary artisan would recognize the utility provided to the end user and would desire their product to be useable to customers. As a result, there is a reasonable expectation of success in arriving at the invention of claim 42 in view of the teachings of Frisch, Macom, and Li and further in view of the teachings of VDL.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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