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 . Claims included in the prosecution are claims 1-6.
Election/Restrictions
Applicant’s election without traverse of Group I and a pesticide formulation in the reply filed on 06/14/2026 is acknowledged.
Accordingly, claims 7-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-6 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 wherein R3 may be a C1-C6 linker attached to a second molecule of Formula I, wherein the second molecule is the same or different. The claim is indefinite since it is not clear what the second molecule of Formula I is since all the molecules of Formula I have been defined. Also, it is not clear what compound the second molecule is the same or different from.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Asirvatham (US 2021/0188882, Jun. 24, 2021) in view of Yetter (US 3,624,120, Nov. 30, 1971).
Asirvatham discloses a formulation for a pesticide, comprising: at least one surfactant of Formula I,
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wherein R1 and R2 may be the same or different, and comprise at least one group selected from the group consisting of C1-C6 alkyl, optionally the C1-C6 alkyl may include one or more of oxygen, nitrogen, or sulfur atoms or groups that include at least one of these atoms, and the alkyl chain may be optionally substituted with one or more substituents selected from the group consisting of hydroxyl, amino, amido, sulfonyl, sulfonate, carbonyl, carboxyl, and carboxylate; n is an integer from 1 to 12; the terminal nitrogen is optionally further substituted with R3; an optional counterion associated with the compound which, if present, is selected from the group consisting of chloride, bromide, and iodide; and a pesticide (claim 1). The formulation further comprises a water-insoluble solvent (claim 2). The pesticide is an insecticide (claim 3). The formulation further comprises an antifoaming agent (claim 4), an antifreezing agent (claim 5), and water (claim 6). The surfactant is a siloxane derivative of amino acids (¶ [0002]).
Asirvatham differs from the instant claims insofar as not disclosing wherein R3 is an aryl alkyl.
However, Yetter discloses quaternary ammonium salts of cyclic siloxane polymers useful as cationic surfactants (abstract). The quaternary ammonium salts of cyclic siloxane polymers are represented by the formula:
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wherein R3 may be a phenethyl, R4 may be an alkyl group having from one to three carbon atoms, and R5 may be an alkyl group having from one to 18 carbon atoms (claim 1).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. The surfactant of Asirvatham is siloxane derivative. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have R3 as phenethyl (i.e., aryl alkyl) since this is a known and effective R3 substituent for terminal nitrogen of siloxane surfactants as taught by Yetter.
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,008,348 in view of Asirvatham (US 2021/0188882, Jun. 24, 2021) and Yetter (US 3,624,120, Nov. 30, 1971).
Pending claims differ from the patented claims insofar as reciting for use as a pesticide and wherein R3 is an aryl alkyl.
However, Asirvatham discloses a formulation for a pesticide, comprising: at least one surfactant of Formula I,
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wherein R1 and R2 may be the same or different, and comprise at least one group selected from the group consisting of C1-C6 alkyl, optionally the C1-C6 alkyl may include one or more of oxygen, nitrogen, or sulfur atoms or groups that include at least one of these atoms, and the alkyl chain may be optionally substituted with one or more substituents selected from the group consisting of hydroxyl, amino, amido, sulfonyl, sulfonate, carbonyl, carboxyl, and carboxylate; n is an integer from 1 to 12; the terminal nitrogen is optionally further substituted with R3; an optional counterion associated with the compound which, if present, is selected from the group consisting of chloride, bromide, and iodide; and a pesticide (claim 1). Yetter discloses quaternary ammonium salts of cyclic siloxane polymers useful as cationic surfactants (abstract). The quaternary ammonium salts of cyclic siloxane polymers are represented by the formula:
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wherein R3 may be a phenethyl, R4 may be an alkyl group having from one to three carbon atoms, and R5 may be an alkyl group having from one to 18 carbon atoms (claim 1).
Accordingly, it would have been obvious to have used the patented compound for a pesticide since the patented compound may be used for a pesticide as taught by Asirvatham and it would have been obvious to have R3 as phenethyl (i.e., aryl alkyl) since this is a known and effective R3 substituent for terminal nitrogen of siloxane surfactants as taught by Yetter.
Conclusion
Claims 1-6 are rejected.
Claims 7-17 are withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRACY LIU whose telephone number is (571)270-5115. The examiner can normally be reached Mon-Fri 9 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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