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 .
Applicants' arguments, filed 07/01/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Election/Restrictions
Newly submitted claims 17-18 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 17 and 18 are drawn to methods of treating weeds and applying microcapsules to a field, which is distinct from the examined method of encapsulating a substance. Accordingly, the methods of claims 17 and 18 have a materially different design, mode of operation, function, or effect and they are not obvious variants of the examined method.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 17-18 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
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.
1) Claim(s) 1, 3-6, 8-11, 13, 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bristow et al., (WO 2014/169778, cited in IDS). The rejection also applies to newly added claim 21.
Bristow et al. teaches an agrochemical formulation comprising “microencapsulated clomazone”, wherein “the microcapsules wall is formed from a cellulose derivative, for example carboxymethyl cellulose, a natural gum, for example gum Arabic, and gelatin” (Abstract). “The composition of the present invention comprises microcapsules having a wall formed from a material that is very low in toxicity and is biodegradable” (p. 4, lines 1-3). Below are several embodiments (p. 29):
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Here, the prior art teaches an encapsulating an agrochemical, i.e., clomazone, in a biodegradable capsule, i.e., microcapsule, comprising a complex coacervation of gelatin and a carboxylated polysaccharide (sodium carboxymethyl cellulose; clm. 13), as per claim 16. The amount of gelatin, carboxylated polysaccharide, crosslinker, and agrochemical, shown above, fall within the ranges of claims 8-11.
The instant claim is interpreted to cover other arrangements since there is no evidence in the specification demonstrating the criticality of the arrangement of the method steps. The necessity of the arrangement is further negated by the disclosure of a “second embodiment” that combines steps 1 and 2, creating a two-step process (p. 5, lines 8-13; see also instant claim 6). The specification states, “The second embodiment requires a reduced number of steps relative to the first embodiment and thus has the according time efficiencies” (p. 5, lines 15-16).
In regard to claim 4, the prior art teaches a high-shear homogenization step after the addition of the carboxylated polysaccharide, insofar as it teaches “homogenize the emulsion by agitation using an impellor rotating at as speed of from 3000 to 10000 r/min for 5 to 30min to form a stable oil in water emulsion A”, wherein the emulsion comprised “carboxymethyl cellulose” (p. 21, lines 14-18).
The prior art method also includes use of “dispersants” (p. 22, line 13), as per claim 5.
In regard to claim 6, the 4:1 to 1:4 weight ratio of gelatin to carboxylated polysaccharide is prima facie obvious insofar as it overlaps with the prior art range, i.e., “The weight ratio of the cellulose derivative to gelatin is preferably from 0.075 to 0.6, still more preferably from 0.08 to 0.5” (p. 10, lines 10-12).
In regard to claim 15, the prior art teaches, “The composition is highly stable and allows the release rate of the clomazone active ingredient to be accurately controlled” (p. 4, lines 3-4).
The prior art method of productions includes: “a) preparing an aqueous solution of a cellulose derivative and a natural gum [clm. 3]: b) adding clomazone and a liquid carrier to the solution prepared in step (a) and agitating to form an emulsion comprising a water-immiscible phase [oil phase] in water; c) preparing an aqueous solution of gelatin; and d) combining the solution prepared in step (c) with the emulsion prepared in step (b)“ (p. 18, line 24 – p.19, line 18). Further, “the method of the present invention comprises as a further step: e) adding to the resulting mixture a cross-linking agent” (p. 20, lines 9-11).
Here, the method does not comprise an addition emulsifier, as claimed. Emulsifiers are an optional ingredient, and, therefore, may be excluded, insofar as the prior art teaches, “One or more emulsifiers and/or stabilizers may be added to the mixture, as required” [emphasis added] (p. 19, lines 15-16).
In regard to claim 21, it would have been obvious to use only one carboxylated polysaccharide since carboxylated polysaccharides, per se, are not required for the practice of the invention. For instance, the prior art method requires “natural gums”, and locust bean gum is a natural gum, which is not carboxylated. Use of locust bean gum would have provided a method that utilizes only one carboxylated polysaccharide, i.e. CMC.
The prior art is not anticipatory insofar as the sequential arrangement of steps in the prior art method is different from the instant claims. Although arranged differently, the prior art method would have obvious to a person having ordinary skill in the art at the time of applicant’s filing. The artisan would have reasonably been expected to possess the same properties insofar as it teaches complex coacervation of a gelatin and a carboxylated polysaccharide (CMC), forming an emulsion comprising gelatin, an oil phase with the agrochemical (Clomazone), carboxylated polysaccharide, and a crosslinker.
2) Claim(s) 7 remains rejected under 35 U.S.C. 103 as being unpatentable over Bristow et al., (WO 2014/169778, cited in IDS) as applied to claim 1 above, and further in view of David et al., (US 5,051,304).
Bristow et al., which is taught above, differs from claim 7 insofar as it does not teach wherein the crosslinker is selected from polyaldehydes, polyacids, polyphenols or aldose sugars.
David et al. teaches microcapsules based on gelatin and polysaccharides, including “carboxymethylcelluloses” (Abstract). The microparticles therein are used to encapsulate “fertilizers, pesticides and insecticides which will be released more slowly in their medium” (col. 5, lines 4-17).
David et al. further teaches, “in order to solidify the walls of the microcapsules” a crosslinking agent is used “such as formaldehyde, glyoxal or glutaraldehyde or a natural tanning agent such as tannic acid is added to the suspension” (col. 4, lines 26-36). Glutaraldehyde suffices as a polyladehyde and tannic acid suffices as a polyacid or polyphenol.
“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)” (see MPEP 2144.07).
Accordingly, it would have been obvious to use a polyaldehyde (glutaraldehyde) or polyacid/polyphenol (tannic acid) as crosslinking agent in the method of Bristow et al., based on their suitability for their intended use in microcapsules comprising gelatin and polysaccharides, as taught by David et al. The artisan would have reasonably expected success with the combination insofar as the microcapsules of Bristow et al. are comprised of gelatin and polysaccharide.
3) Claim(s) 15 remains rejected under 35 U.S.C. 103 as being unpatentable over Bristow et al., (WO 2014/169778, cited in IDS) as applied to claim 1 above, and further in view of Meredith et al., (Environmental International, 2016). The rejection also applies to newly added claims 22-23.
Bristow et al., which is taught above, differs from claim 15 insofar as it does not teach a particle size for the microcapsules.
Meredith et al. discusses the influence of size on the toxicity of an encapsulated pesticide. “Size is known to influence biological mobility in terms of adsorption, distribution, metabolism and excretion (ADME) . . . Polymeric microspheres between 2 and 3 µm have been shown to exhibit maximal phagocytosis compared to larger and smaller particles of the same composition” (p. 69, left column, 2nd paragraph).
Meredith et al. teaches, “Here, we have identified a CS [capsule suspension] formulation with an average capsule size of approximately 2 µm with some capsules extending into the nanometer scale” (Abstract).
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to modify the diameter of the microparticles of Bristow et al. within the claimed range of less than 15 microns, since microencapsulated pesticides are known to be used having an average capsule size of approximately 2 µm. The artisan would have been motivated to modify the particle diameter for in order to influence biological mobility in terms of adsorption, distribution, metabolism and excretion.
New by Amendment
4) Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Bristow et al., (WO 2014/169778, cited in IDS) as applied to claim 1 above, and further in view of Shakeel et al. (US 2020/0113177).
Bristow et al., which is taught above, differs from claim 20 insofar as it does not teach wherein the agrochemical is lamda-cyhalothrin and/or tefluthrin.
Shakeel et al. teaches “anucleated cell-based platforms for encapsulation and delivery of agricultural compounds” (Abstract), where agricultural compounds include insecticides such as “tefluthrin” and “lamda-cyhalothrin” (p. 19, para. [0189]).
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use (see MPEP 2144.07). Also, established precedent holds that it is generally obvious to add known ingredients to known compositions with the expectation of obtaining their known function (see 2144.06).
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to encapsulate tefluthrin or lamda-cyhalothrin in the method of Bristow et al. since the method of Bristow includes encapsulation of insecticides. Bristow et al. teaches, “Clomazine may be formulated and/or applied together with other compatible active ingredients including . . . insecticides . . .” (p. 23, lines 16-19). It would have been obvious to use tefluthrin or lamda-cyhalothrin in the method of Bristow et al. based on their suitability for their intended use as insecticides.
Response to Arguments
Applicant argues that Bristow requires an additional emulsifier in contrast to the wherein clause of claim 1 stating, “wherein the process does not comprise an additional emulsifier” (p. 6). Applicant notes that Bristow teaches, “’one or more emulsifiers, in particular to facilitate forming an emulsion’” (Id.) and lists emulsifiers in all the examples (Id).
The Examiner disagrees.
The prior art method, as discussed above, used agitation to form an emulsion (see p. 20, lines 9-11) as opposed to adding an additional emulsifier, with the sole emulsifier being gelatin. Accordingly, additional emulsifiers are optional ingredients.
Furthermore, page 11, lines 1-4 of the prior art, states, “The compositions of the present invention may include one or more emulsifiers . . .” [emphasis added]. Legally, the term “may” means an action is optional, discretionary or allowed but not required. The concept of providing “one or more” would also be exclusionary of “additional emulsifier” since one may be enough. Accordingly, emulsifiers are an optional component of the method, and may be limited to one, which satisfies the instantly claimed negative limitation of not having an additional emulsifier.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER E WEBB whose telephone number is (571)270-3287 and fax number is (571) 270-4287. The examiner can normally be reached from Mon-Fri 7-3:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Walter E. Webb
/WALTER E WEBB/Primary Examiner, Art Unit 1612
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