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
Applicant’s election without traverse of Group I (claims 1-20) in the reply filed on 4/20/2026 is acknowledged.
Claims 21 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 4/20/2026.
Specification
The use of terms such as Rhodiasolv Polarclean, Aerosil, and Soporphor, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 6 objected to because of the following informalities:
Claim 6 recites “wherein the wherein the at least one solvent”.
Claim 6 recites “R1, R2 and R3 … are a C1-C6 alkyl” instead of “R1, R2 and R3 … are C1-C6 alkyls”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-20 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.
Claim 1 recites the limitation “at least one rheology modifier, said rheology modifier being”. There is insufficient antecedent basis for this limitation in the claim. It is unclear if “said rheology modifier” refers to the at least one rheology modifier, more than one rheology modifier, or all rheology modifiers present in the liquid carrier concentrate. For purposes of compact prosecution, claim 1 is being interpreted to read, “at least one rheology modifier, the at least one rheology modifier being”.
Claims 2-12 and 14-20 depend from parent claim 1 and do not cure the deficiencies of claim 1, therefore claims 2-12 and 14-20 inherit the deficiencies of parent claim 1.
Claim 13 recites the limitation “at least one solvent, this solvent being” and “at least one rheology modifier, said rheology modifier being”. There is insufficient antecedent basis for these limitations in the claim for the same reasoning discussed in the above rejection of claim 1. For purposes of compact prosecution, claim 13 is being interpreted to read, “at least one solvent, the at least one solvent being” and “at least one rheology modifier, the at least one rheology modifier being”.
Claim 15 recites the limitation “said solvent”. There is insufficient antecedent basis for this limitation in the claim for the same reasoning discussed in the above rejection of claim 1. Claim 15 also recites “the liquid carrier”. It is unclear if this limitation refers to “liquid carrier concentrate” or to “liquid carrier” as referenced in the specification, which are organic solvents conventionally used in such formulations, such as polyethylene glycol, glycerol, ethylene glycol, dipropylene glycol, and propylene carbonate (see specification page 2, line 12). For purposes of compact prosecution, claim 15 is being interpreted to read, “comprising at least 40% of the at least one solvent based on the total weight of the liquid carrier concentrate”.
Claim 16 recites the limitation “said beneficial microorganism agents as described above”. There is insufficient antecedent basis for this limitation in the claim. It is unclear if “said beneficial microorganism agents as described above” refers to at least one beneficial microorganism, more than one beneficial microorganism, or all beneficial microorganism listed in claim 1. It is also unclear what is meant by the phrase “as described above”. In other words, it is unclear if claim 16 fully excludes the presence of any and all microorganisms that are listed in claim 1. For purposes of compact prosecution, claim 16 is interpreted to read, “different from all of the beneficial microorganisms as described in claim 1”.
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.
Claim(s) 1-10, 13-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hilscher et al. (US 2021/0127686 A1, published 5/6/2021, cited on the 7/2/2024 IDS), in view of Proulx et al. (WO 2020/104612 A1, published 5/28/2020, cited on the 7/2/2024 IDS) and Jentzer et al. (US 2014/0221211 A1, published 8/7/2014).
Regarding claims 1 and 18, Hilscher teaches a plant protection composition (reading on concentrate as claimed and agricultural active formulation) comprising fungal spores such as Isaria fumosorosea, Penicillium frequentans, Metarhizium brunneum, Beauveria brogniartii, Trichoderma spp., Beauveria bassiana, and Penicillium bilaii [claim 10], and a rheology modifier comprising fumed silica Aerosil 200 [claim 20]. Hilscher does not explicitly teach a fumed silica surface treated with polydimethylsiloxane. Proulx teaches a plant protection composition comprising beneficial microorganisms, such as fungal and bacterial spores [claims 1 and 14], and Aerosil 200 or Aerosil R 202 (fumed silica surface-treated with polydimethylsiloxane) [claim 19] (See Aerosil R 202 Product Information.) Proulx further teaches that either Aerosil R 202 or Aerosil 200 may be included in the composition to provide additional moisture protection [0025] (reads on rheology modifier, see Hilscher [0021]). Thus, since Aerosil 200 and Aerosil R 202 are taught by Proulx to be functional equivalents, it would be prima facie obvious to substitute Aerosil 200 with Aerosil R 202. See MPEP 2144.06.
Hilscher does not explicitly teach an ester-amide solvent, but discloses that solvents are commonly used additives in such formulations [0003]. Jentzer teaches an ester-amide solvent with the general formula R1OOC-A-CONR2R3 [0031]. R1, R2 and R3 may be methyl groups [0032, 0033] and A may be a group with the formula -CH(CH3)-CH2-CH2- [0095, 0115] See Example 1.3 which shows the structure of this compound, methyl-5-(dimethylamino)-2-methyl-5-oxopentanoate. Jentzer further teaches that such a solvent is suitable for use in phytosanitary/agricultural formulations due to properties such as solubilization of large amounts of active agents, absence of crystallization, and a favorable safety and toxicology profile [0229-0232]. In particular, the absence of crystallization is advantageous because crystals can result in poor distribution of the active product when spread over an agricultural field, and impede product application by clogging spraying devices [0227]. Thus, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the solvent taught by Jentzer for use in the instantly claimed composition for its aforementioned advantages in agricultural applications.
Regarding claims 2 and 3, Hilscher teaches that the microorganism may be Beauveria or Trichoderma [claim 10].
Regarding claims 4 and 5, Proulx teaches that microorganisms suitable and useful in agricultural compositions include Bacillus thuringiensis, Bacillus subtilis, Beauveria bassiana, and Isaria fumosorosea [0023]. It would be prima facie obvious to include Bacillus thuringiensis (reads on instant claim 4) or Beauveria bassiana (reads on instant claim 5) in the composition made obvious above, as these microorganisms are taught in the prior art to provide a beneficial effect to the area to be treated, such as intervening with the life cycle of undesired microorganisms or produce biologically active substances that have pesticidal effects [0023].
Regarding claims 6-10, as discussed above in the rejection of claim 1, Jentzer teaches the ester-amide solvent methyl-5-(dimethylamino)-2-methyl-5-oxopentanoate (also known as RHODIASOLV Polarclean) [0057]. The structure of RHODISOLV Polarclean is shown below:
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As shown, the structure of RHODIASOLV Polarclean meets the requirements of Formula (I): R1OOC-A-CONR2R3, wherein A is a C4 alkylene of the formula -CHMe-CH2-CH2, and R1, R2 and R3 are methyl groups.
Regarding claim 13, claim 13 repeats limitations already made obvious in the rejections above. See rejections for claims 1, 6-10, and 11.
Regarding claim 14, Hilscher teaches that surfactants are commonly used as an additive in agricultural plant protection compositions [0003].
Regarding claim 15, Jentzer teaches that the ester-amide solvent may comprise preferably from 20% to 80% by weight of the agricultural formulation [0262]. This overlaps with the instantly claimed range of at least 40% by weight. Additionally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 16, Hilscher teaches that the composition comprises at least one antioxidant, such as tocopheryl acetate [claim 4]. Under BRI, tocopheryl acetate (also known as Vitamin E acetate) is interpreted to read upon the instantly claimed limitation of “nutrients”.
Regarding claim 19, it is noted that the instant invention is directed to a product. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." MPEP 2113 I. The instant claim recites an agricultural active formulation comprising the composition of claim 1, wherein the liquid carrier concentration is diluted. Since product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps, the instant claim limitations are met by the composition of claim 1, which has been made obvious in a rejection above. Additionally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Claim(s) 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hilscher et al. (US 2021/0127686 A1, published 5/6/2021, cited on the 7/2/2024 IDS), in view of Proulx et al. (WO 2020/104612 A1, published 5/28/2020, cited on the 7/2/2024 IDS) and Jentzer et al. (US 2014/0221211 A1, published 8/7/2014), as evidenced by Evonik Operations, AEROSIL R 202 Product Information Sheet (2021).
Regarding claims 11 and 12, AEROSIL R 202 (made obvious above in the rejection of claim 1) has a BET specific surface area of 80 to 120 [AEROSIL R 202 Product Information Sheet pg. 1]. This range overlaps with the instantly claimed ranges of claims 11 and 12. In the case where the claimed ranges "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). Furthermore, 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.
Claim(s) 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hilscher et al. (US 2021/0127686 A1, published 5/6/2021, cited on the 7/2/2024 IDS), in view of Proulx et al. (WO 2020/104612 A1, published 5/28/2020, cited on the 7/2/2024 IDS) and Jentzer et al. (US 2014/0221211 A1, published 8/7/2014), as evidenced by Ali et al. (2023).
Regarding claims 17 and 20, Hilscher teaches an exemplary composition comprising fungal spores, plant oil, antioxidant, surfactant, emulsifier, and fumed silica [0113]. Hilscher further teaches that the process for formulating the composition comprises suspending the dried fungal spores in a preparation comprising all other ingredients [0076]. While Hilscher does not explicitly address the lack of encapsulation of the fungal spores, the ingredients of the exemplary composition do not indicate that encapsulation would occur when combined in a suspension, nor does the composition include any polymer or hydrogel components, such as alginate, typically used in the art to encapsulate microbial/fungal compositions. See Ali pages 8-13 for discussion of materials conventionally used in encapsulation of biological materials. Furthermore, Hilscher does not disclose additional steps in forming the composition that would comprise an encapsulation step. Thus, the absence of any encapsulating ingredients and encapsulating steps in Hilscher reads on a composition that is not in encapsulated form.
Double Patenting
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20, 22, and 24 of copending Application No. 18/713,589 (reference application) view of Proulx et al. (WO 2020/104612 A1, published 5/28/2020, cited on the 7/2/2024 IDS).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are drawn to a liquid carrier concentrate/agricultural active formulation comprising at least one beneficial organism selected from the group consisting of Bacillus, Streptomyces, Beauveria, Trichoderma, Metarhizium, Paecilomyces, Isaria, Baculovirus, Azospirillum, Penicillium and Rhizobium [ref claims 1, 17, 18]; at least one ester-amide solvent [ref claims 1, 17, 18]; and a rheology modifier [ref claim 14]. Both applications claim an ester-amide solvent with the general formula (I): R1OOC-A-CONR2R3, wherein A is a C2-C5 alkylene, and R1, R2 and R3, identical or different, are C1-C6 alkyls [ref claim 6]. Both applications further narrow the claims such that the ester-amide solvent comprises an A moiety with the formula -CHMe-CH2-CH2 [ref claims 10, 11] and R1, R2, and R3 are methyl groups [ref claims 9, 10, 11]. The compositions may comprise at least 40% of ester amide solvent based on the total weight of the liquid carrier concentrate [ref claim 13]. The compositions of both applications are not in encapsulated form [ref claim 12, 19], and may further comprise an agricultural material chosen from pesticides different from the said beneficial microorganism agents as described above, a nutrient, a biostimulant, or plant growth regulator [ref claim 16].
The liquid carrier concentrate of reference application ‘589 differs from the instant application in that the rheology modifier is not specified to be a fumed silica surface treated with polydimethylsiloxane, nor does reference application ‘589 further comprise at least one surfactant. Proulx teaches a plant protection composition comprising beneficial microorganisms, such as fungal and bacterial spores [claims 1 and 14], and Aerosil R 202 [claim 19]. Aerosil R 202 is a fumed silica surface-treated with polydimethylsiloxane with a BET specific surface area of 80-120 [Aerosil R 202 Product Information pg. 1]. It would be obvious to one of ordinary skill, before the effective filing date of the claimed invention, to select Aerosil R 202 as the rheology modifier taught in reference application ‘589 to provide additional moisture protection to the composition [0025]. Proulx also teaches that the agricultural composition may further comprise surfactants [0027], and that selection of specific surfactants are to alter the properties of such formulations is well known to those skilled in the art. A skilled artisan would be motivated to include a surfactant in the composition of reference application ‘589 to tailor the properties of the composition to better suit agricultural applications [0026].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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