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 .
Election/Restrictions/Status of Claims
Applicant's election with traverse of Group I, claims 1, 4-11, and 22-23 in the reply filed on 31 July is acknowledged. The traversal is on the ground that the general inventive concept that links the claims, the solvent system (A), is not disclosed by Sowa (US2011/0224076). This is not found persuasive because, as explained in the restriction requirement, Sowa discloses a composition comprising a solvent system including up to 35% by weight each of cyclohexanone as solvent A) (i.e. claimed (A1a)) and 2-ethylhexanol as solvent B) (i.e. claimed (A2b)). Together these would provide a solvent system (A) as instantly claimed.
As evidenced by Prof Steven Abbott (“HSP Basics”, https://www.stevenabbott.co.uk/practical-solubility/hsp-basics.php), cyclohexanone has a δd of 17.8, δp of 8.4, and δh of 5.1; and 2-ethyl-hexanol has a δd of 15.9, δp of 3.3, and δh of 11.8. Accordingly, the solubility parameters appear to overlap with the instantly claimed solubility ranges.
Regarding the claimed ratio, as discussed in the restriction requirement, it would have been obvious to one of ordinary skill in the art to have selected an amount of solvent A) and an amount of solvent B) from the disclosed range of up to 35% by weight each. Such amounts selected would have equated to a mole ratio that appears to overlap with the claimed ratio, thus making the claimed ratio obvious.
Applicant has not explained how Sowa does not disclose the instantly claimed solvent system (A), and as such, the requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 12, 15, 18-21, and 24-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The Examiner notes that Applicant has cancelled claims 7-11 and 22-27.
As such, claims 1, 4-6, 12, 15, and 18-21 are pending; claims 12, 15, and 18-21 are withdrawn; claims 1 and 4-6 are examined.
Claim Objections
Claim 1 is objected to because of the following informalities: “(A1) a first component organic keto compound (A1a)” in line 9 of the claim contains grammatical errors and should be corrected to include a transitional phrase. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “(A2) a second component organic acid (A2a)” in line 11 of the claim contains grammatical errors and should be corrected to include a transitional phrase. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “A1” in line 15 should be recited as --- (A1) ---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “A2” in line 15 should be recited as --- (A2) ---. Appropriate correction is required.
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 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sowa (US 2011/0224076 A1, 09/15/2011, IDS reference of 05/20/2024).
Sowa discloses compositions comprising pesticide and solvent system comprising solvents A) cyclohexanone, B) 2-ethylhexanol, and C) fatty acid (abs). Solvent A) and B) may be each up to 35% by weight of the solvent system, and solvent C) may be at least 30% by weight of the solvent system ([0012]). The fatty acid includes linear, saturated, unsubstituted C10 to C34 carboxylic acids ([0013]). The compositions usually comprises 0.1 to 50% by weight of pesticide based on the composition ([0089]). The composition comprises at least 20% by weight of the solvent system based on the composition ([0015]).
Accordingly, Sowa discloses compositions comprising pesticide (i.e. instantly claimed biocide (B)) and solvent system (i.e. instantly claimed (A)) comprising: cyclohexanone (i.e. instantly claimed (A1a)) and fatty acids including a linear, saturated, unsubstituted C12 carboxylic acid (i.e. dodecanoic acid) (i.e. instantly claimed (A2a)). Together these would provide a composition as instantly claimed. The prior art is not anticipatory insofar as this combination must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding claim 1 reciting an amount of solvent system (A) and an amount of at least one biocide (B), the claimed ranges (i.e. 15.0 to 95.0% by weight, and 5.0% to 60.0% by weight, respectively) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. at least 20% by weight, and 0.1 to 50% by weight, respectively). 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). Moreover, in any case, the selection of appropriate weight percentages would appear to require no more than routine testing on the part of the skilled artisan, and so alternatively it would have been obvious to determine workable ranges to arrive at the claimed amounts in percent by weight of the composition. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A).
Regarding claim 1 reciting a total amount of solvent system (A) and at least one biocide (B), it would have been obvious to one of ordinary skill in the art to have selected an amount of solvent system and an amount of pesticide from the disclosed ranges at least 20% by weight, and 0.1 to 50% by weight, respectively. Such amounts selected would have equated to a total amount that appears to overlap with the claimed range (i.e. 20.0 to 100% by weight), thus making the claimed range obvious. 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). Moreover, in any case, the selection of appropriate weight percentages would appear to require no more than routine testing on the part of the skilled artisan, and so alternatively it would have been obvious to determine workable ranges to arrive at the claimed amounts in percent by weight of the composition. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A).
Regarding claim 1 reciting Hansen solubility parameters of component (A1) and component (A2), Sowa does not explicitly disclose Hansen solubility parameters. However, as evidenced by Prof Steven Abbott (“HSP Basics”, https://www.stevenabbott.co.uk/practical-solubility/hsp-basics.php), cyclohexanone (i.e. instantly claimed (A1a suitable as (A1)) has a δd of 17.8, δp of 8.4, and δh of 5.1. Accordingly, the cyclohexanone of Sowa appears to have Hansen solubility parameters that overlap with the instantly claimed solubility ranges, thus making the solubility parameters obvious.
Regarding claim 1 reciting Hansen solubility parameters of component (A2), as noted by p. 40, lines 1-3 of the instant Specification, the organic acids (A2a) each have Hansen solubility parameters in the ranges of δd of 13-25 MPa1/2, δp of 3-15 MPa1/2 and δh of 10-30 MPa1/2; and as noted by p. 38, lines 1-2, dodecanoic acid is an exemplary organic acid (A2a). Accordingly, one of ordinary skill in the art would reasonably conclude the dodecanoic acid of Sowa to possess substantially the same properties as the claimed invention, such as Hansen solubility parameters of δd of 13-25 MPa1/2, δp of 3-15 MPa1/2 and δh of 10-30 MPa1/2.
Regarding claim 1 reciting a mole ratio of total amount of (A1) to the total amount of (A2), Sowa does not explicitly disclose a specific mole ratio. However, it would have been obvious to one of ordinary skill in the art to have selected an amount of solvent A) and an amount of solvent C) from the disclosed ranges of up to 35% by weight and at least 20% by weight, respectively. Such amounts selected would appear to have equated to a mole ratio that overlaps with the claimed ratio (i.e. 1:5 to 5:1), thus making the claimed ratio obvious.
Regarding claim 1 reciting a total amount of components (A1) and (A2), it would have been obvious to one of ordinary skill in the art to have selected an amount of solvent A) and an amount of solvent C) from the disclosed ranges (i.e. up to 35% by weight, and at least 30% by weight of the solvent system, respectively). Such amounts selected would have equated to a total amount that appears to overlap with the claimed ranges (i.e. 60 to 100 wt.%), thus making the claimed ranges obvious. 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). Moreover, in any case, the selection of appropriate weight percentages would appear to require no more than routine testing on the part of the skilled artisan, and so alternatively it would have been obvious to determine workable ranges to arrive at the claimed amounts in percent by weight of the composition. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A).
Regarding claim 4, Sowa further discloses wherein “pesticide” includes insecticides ([0016]).
Regarding claim 5, as discussed above, as evidenced by Prof Steven Abbott (“HSP Basics”, https://www.stevenabbott.co.uk/practical-solubility/hsp-basics.php), cyclohexanone (i.e. instantly claimed (A1a suitable as (A1)) has a δd of 17.8, δp of 8.4, and δh of 5.1. Thus it reasonably appears the Hansen solubility parameters are different from those of a suitable (A2) such as dodecanoic acid.
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.
Claims 1 and 4-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 13, 16, 22, 42-44, 46, 48, 51, 54, 56, 59, 63-64, and 66 of copending Application No. 18/003,380 in view of Sowa (US 2011/0224076 A1, 09/15/2011, IDS reference of 05/20/2024).
The copending claims differ from the pending claims insofar as not explicitly teaching all the features of the claimed invention, such as instantly claimed organic keto compound (A1a).
However, these features are known in the art. As noted in the current rejections, the teachings of Sowa render obvious claims 1 and 4-6.
Therefore, as claims 1, 11, 13, 16, 22, 42-44, 46, 48, 51, 54, 56, 59, 63-64, and 66 of copending Application No. 18/003,380 and Sowa all disclose compositions comprising a solvent system and at least one biocide, it would have been prima facie obvious to one of ordinary skill in the art to have modified the copending application and to include the teachings of Sowa as discussed in the rejections above, because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as instantly claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." See MPEP 2144.06(I).
This is a provisional nonstatutory double patenting rejection.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dal Moro et al. (GB 2050170 A, 04/13/1983, IDS reference filed 05/20/24), directed to pesticidal compositions comprising 0.5-90% pesticide and 99.5-10% organic acid(s) diluted with a solvent including cyclohexanone.
Lindner et al. (US 2018/0125064 A1, 05/10/2018), directed to agrochemical emulsion-type compositions comprising 0.5-30% wt. of agrochemical actives and 10-50% wt. of oils including isophorone, octanoic (caprylic) acid, and methyl ethyl ketone.
Miln et al. (US 2013/0210627 A1, 08/15/2013), directed to pesticidal compositions comprising a pesticide and a solvent system comprising methyl n-amyl ketone and lactic acid.
Myntti (US 2019/0014777 A1, 01/17/2019), directed to compositions comprising fungicide and a solvent component having a δp value less than about 16 MPa1/2, including methyl ethyl ketone, in amounts of up to 60% w/v of solvent component, and organic acids such as acetic acid.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Thursday 8:30 AM - 6:30 PM EST.
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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