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 .
Claims 1-20 are pending.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Casana 8293733, Burke 9339030, Wang US 20090163582, Rowley 20170290328, Rengan US20210127680 and Appah, Crop Protection (2020), 127, 104961.
Casana 8293733 teaches such as sorbitan derivative (claim 1) such as polyethoxylated sorbitan trioleate or tristearate and at 5th paragraph under Description, surface active ingredients at different wt% for pesticidal compositions. Similarly, Casana teaches ethoxylated alcohols at different wt% in oil dispersion. Casana also teaches lambda-cyhalothrin and imiprothrin as active agents for pesticidal compositions
All the listed components in the base claims 1 are found in the teachings of Casana (other references). The compounds exemplified and disclosed here as killing agent (and knock-down) agent also used in Casana teaching for the same purpose. Further regardless of what they are termed as, the pesticidal properties of these are inherent. Burke 9339030 is also in the same area of endeavor and included the above teachings of ‘733. Further in ‘030 claim 5, the instant claim 10 limitation of piperonyl butoxide (synergist) is included for the pesticide composition. In addition, ‘030 at column 14, line 65 Section under Pesticide Applicator, teaches various spray methods corresponding to the instant claims. Instant claims concentrations of the surface active agents and the viscosity number of the pesticide composition. According to ‘733 viscosity modulators are strongly recommended.
Rengan at column 18, [0051]-[0552] teaches Agrochemical (pesticide) compositions containing carriers including the instantly exemplified liquid carriers (0052] (for example as per limitation of claims 13-14).
The limitations of the claims discussed are also found in the pesticidal compositions of Wang and Rowley. For location of teaching of the terms of the claims, applicant is encouraged to use ‘word search’ technique in HTML version of the cited references. ctrl + F will allow finding of a specific word within a HTML.
All the claimed elements are known in the art. Examiner did take into consideration the comparative study with respect to Tables 9-10, see page 35 penultimate paragraph, as well as repeated iteration of the phrase ‘surprisingly found’ for secondary consideration. These examples are drawn to ‘selective combination’ of previously known routinely used components. One of skill in the art could have combined these components as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art. Further, as per MPEP 2144.05 [R-07.2022] Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature 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). In addition, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
It is also noted that The teachings of Wang and Rowley are concerned about water concentrations and thus modifications of HLB values. Therefore, even though numbers of HLB in the instant independent claims are not found specifically in the cited references, the position taken is that the prior art teachings and one of sill in the art are not oblivious to this factor as a result effective variable. For example, Appah, teaches potential impaction and phytotoxicity of surfactant-plant surface interaction in pesticide application. The Abstract of Appah’s Review article teaches that ‘Surfactant is an important additive in pesticide application due to its antifoaming or foaming, buffering or stabilization, sticking or wetting and toxicity properties. The mol. constituents of surfactants can be categorized into cationic, anionic, non-ionic and amphoteric groups. It coalesces in solution to produce smaller droplet sizes, lower contact angle and enhance uniformity of spray distribution. The extent of surfactant emulsification is determined by its hydrophilic-lipophilic balance (HLB) value. In solution, surfactant aggregates to form micelle above/from the critical micelle concentration (CMC) for interactive effect. An extensive research on surfactant-agrochem. composite spraying is ongoing with much emphasis on conventional spraying than electrostatic spraying of surfactant-pesticide formulations. This paper therefore analyses the potential impaction behavior and phytotoxicity of surfactant-plants surfaces interaction in pesticide application. The surfactant is able to lower surface tension of spray and enhance droplets deposition, spread, retention and phytotoxicity on plant surfaces. In plant cells, surfactant reacts with lipo-proteins of the cuticular layer to attenuate cell membrane. An increasing surfactant concentration in pesticide formulation maximizes spray deposition, wettability and phytotoxicity levels. Hence, understanding surfactant activity will quant. inform the type and concentration needed to enhance droplets characteristics, deposition, spread and phytotoxicity, without superfluously overdosing plant species. The review proposes the superposition of charges on surfactant-pesticide composite spray to localize more droplets on target plants and enhance wraparound surface deposition.
The data in the disclosed Tables relate to specific combination of previously known components in the same area of research. These components are not new inventions. The ‘surprising findings’ (see page 35 penultimate paragraph) is specific to specific organism with the use of specific formulizations. The limitations of the claims are not indicative of such specificity with regards to previously known result-effective variables. Prior art teaches how and why to modify HLB values in making alternate optimized formulations of previously known pesticides and insecticides is within the purview of one of skill in the art. Note that “[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). None of the active ingredients, regardless of how they are called, knockdown or killing are applicants invention.
The selection of one/some among many is prima facie obvious. In re Lemin, 141 USPQ 814 (CCPA, 1964). See also In re Rosicky, 125 USPQ 341 (CCPA, 1960). Applicant made the selections and used them “in precisely the same manner taught by . . . prior art”. In re Lemin, 141 USPQ 814 (1964). “Reading a list and selecting a known compound or [element] to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335, 65 USPQ 297, 301 (1945). It is prima facie obvious to select the constituents of the composition by the prior arts for the same purpose taught in the prior arts in order to form a new composition for the same purpose. In re Kerkheven, 205 USPQ 1069 (CCPA, 1980).
The teachings of Wang, Rowley are concerned about water concentrations and thus modifications of HLB values. Therefore, even though numbers of HLB in the instant independent claims are not found specifically in the cited references, the position taken is that the prior art teachings and one of skill in the art are not oblivious to this factor as a result effective variable. For example, Appah, teaches potential impaction and phytotoxicity of surfactant-plant surface interaction in pesticide application. The Abstract of Appah’s Review article teaches that ‘Surfactant is an important additive in pesticide application due to its antifoaming or foaming, buffering or stabilization, sticking or wetting and toxicity properties. The mol. constituents of surfactants can be categorized into cationic, anionic, non-ionic and amphoteric groups. It coalesces in solution to produce smaller droplet sizes, lower contact angle and enhance uniformity of spray distribution. The extent of surfactant emulsification is determined by its hydrophilic-lipophilic balance (HLB) value. In solution, surfactant aggregates to form micelle above/from the critical micelle concentration (CMC) for interactive effect. An extensive research on surfactant-agrochem. composite spraying is ongoing with much emphasis on conventional spraying than electrostatic spraying of surfactant-pesticide formulations. This paper therefore analyses the potential impaction behavior and phytotoxicity of surfactant-plants surfaces interaction in pesticide application. The surfactant is able to lower surface tension of spray and enhance droplets deposition, spread, retention and phytotoxicity on plant surfaces. In plant cells, surfactant reacts with lipo-proteins of the cuticular layer to attenuate cell membrane. An increasing surfactant concentration in pesticide formulation maximizes spray deposition, wettability and phytotoxicity levels. Hence, understanding surfactant activity will quant. inform the type and concentration needed to enhance droplets characteristics, deposition, spread and phytotoxicity, without superfluously overdosing plant species. The review proposes the superposition of charges on surfactant-pesticide composite spray to localize more droplets on target plants and enhance wraparound surface deposition. Terms such as lingering, sticking, wetting, etc. in the above noted rationale relate to Applicants Remarks bottom of page 6
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Applicant pointed out Tables of 3-7 relate to specific combination of previously known components in the same area of research. None of these components are Applicants invention. The ‘surprising findings’ (see page 35 penultimate paragraph) is specific to specific organism with the use of specific formulizations. The limitations of the claims are not indicative of such specificity with regards to previously known result-effective variables. Prior art teaches how and why to modify HLB values in making alternate optimized formulations of previously known pesticides and insecticides is within the purview of one of skill in the art. Note that “[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). None of the active ingredients, regardless of how they are called, knockdown or killing are applicants invention.
Suggestion:
See Interview summaries filed 08/10/2023 and 08/28/2023 in file wrapper of US 12075781.
Format instant base claim along the lines of base claim of 12075781 (with specific species for active ingredients and % numbers for other excipients.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12075781 further in view of Casana 8293733, Burke 9339030, Wang US 20090163582, Rowley 20170290328, Rengan US20210127680 and Appah, Crop Protection (2020), 127, 104961.. Although the claims at issue are not identical, they are not patentably distinct from each other as explained below:
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The difference is the absence of Killing agent and the presence of Carrier in the instant base claim 1. Otherwise, the instant claims fall under the scope of the claims of US 12075781 in genus (‘781) and species (instant) relationship.
However, one of skill in the art would include the pointed different out different agents to make new variations of known pesticide compositions, as evidenced by the combination of teachings taught in the secondary references, with reasonable expectation of success. The teachings of the secondary references are discussed extensively in section under Claim Rejections - 35 USC § 103 and is/are incorporated in obviousness analysis.
The art made of record and not relied upon is considered pertinent to applicant's
disclosure.
Feldman, Understanding ‘Evergreening’ : Making Minor Modifications Of Existing
Medications To Extend Protections, Health Affairs June 2022 41:6, 801-804
Dwivedi, Evergreening: A deceptive device in patent rights, Technology in Society 32 (2010) 324–330.
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.
Claim 6 is 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.
The terms
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renders the scope of the claim vague. It is not breadth issue, rather the boundaries what these generic terms mean is unclear.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIZAL S CHANDRAKUMAR whose telephone number is (571)272-6202. The examiner can normally be reached M-F 8-5 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIZAL S CHANDRAKUMAR/Primary Examiner, Art Unit 1625
Prosecution Insights