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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 08/12/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claims 1, 9-15, 19-21 are pending and under examination.
Claims Objection
Claims 13-14 are objected for reciting “the phenylamide fungicide” in claim 1, however, claim 1 only recites metalaxyl-M as fungicide component. Although metalaxyl-M is a known phenylamide fungicide, it is recommended to use metalaxyl-M instead of “the phenylamide fungicide” in claims 13-14 for better clarity.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 9-15, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Vadakekuttu et al. (US20180325105).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Vadakekuttu et al. teaches an agricultural water disintegrable granular composition. More particularly, the invention relates to a water disintegrable granular composition, where the granules include at least one water insoluble crop nutrient or algae or pesticidal active ingredient, and one or more agrochemically acceptable excipient, whereby the granules have a bulk density of less than 1.5 gm/ml and hardness of at least 1 Newton. The invention further relates to a water disintegrable granular composition which includes at least one algae and at least one agrochemically acceptable excipient wherein granules have particles in the size range of 0.1 micron-50 microns, granule size is in the range of 0.1 mm to 6 mm and attrition resistance of the granules are at least 50%. Furthermore, the invention relates to a process of preparing the water disintegrable granular composition including one or more water insoluble crop nutrients or algae or the pesticidal active ingredients. The invention further relates to a method of fortification of the plants or the soil or the plant propagation material or locus thereof with the water disintegrable granular composition comprising water insoluble crop nutrients or algae or the pesticidal active ingredients. The invention further relates to a method of crop protection with the water disintegrable granular composition comprising at least one pesticidal active ingredient (abstract). According to an embodiment, the granules comprise particles in a size range of 0.1 microns to 10 microns ([0052]). According to another embodiment, the pesticidal actives include but are not limited to one or more of metalaxyl-M and tribasic copper sulfate and mixture therefore ([0065]). According to an embodiment, the water disintegrable granules have a dispersibility of at least 80% ([0088]). According to an embodiment, the water disintegrable granules have a suspensibility of at least 80% ([0091]). According to an embodiment, the surfactants are present in an amount of 0.1% to 85% w/w of the total composition. According to an embodiment, the surfactants are present in an amount of 0.1% to 40% w/w of the total composition ([0095]). According to an embodiment, the agrochemical excipients include surfactants, diluents, disintegrants and binders or binding agents. According to an embodiment, the agrochemical excipients comprise at least one of surfactants and binders. According to an embodiment, the surfactants include dispersing agents, wetting agents and emulsifiers. However, those skilled in the art will appreciate that it is possible to utilize other surfactants without departing from the scope of the present invention ([0099]). According to an embodiment the dispersants include one or more of alkali metal salt of lignosulfonic acid, sodium salts of sulfonated naphthalene, salts of naphthalene sulfonic acids, and tristyrylphenol ethoxylate phosphate esters ([0104]). According to an embodiment the wetting agents include one or more of phenol naphthalene sulphonates, etc. those skilled in the art will appreciate that it is possible to utilize different wetting agents without departing from the scope of the present invention ([0106]). According to an embodiment, the pesticidal actives which are included in the water disintegrable granular composition of water insoluble nutrients or algal actives include an antifoulant, an attractant, an insecticide, a fungicide, a herbicide, a nematicide, a pheromone, a defoliant, an acaricide, a plant growth regulator, an algicide, an antifeedant, an avicide, a bactericide. According to an embodiment, the pesticidal active is present in a concentration range of 0.1% to 99% by weight of the total composition. According to an embodiment, the pesticidal active is present in a concentration range of 0.1% to 80% by weight of the total composition. According to an embodiment, the pesticidal active is present in a concentration range of 0.1% to 60% by weight of the total composition. According to an embodiment, the pesticidal active is present in a concentration range of 0.1% to 40% by weight of the total composition. According to an embodiment, the pesticidal active is present in a concentration range of 0.1% to 20% by weight of the total composition. According to an embodiment, the pesticidal active is present in a concentration range of 0.1% to 5% by weight of the total composition ([0131]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Vadakekuttu et al. is that Vadakekuttu et al. do not expressly teach all limitation in one embodiment.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Regarding claims 1 and 10-11, Vadakekuttu et al. teaches a granular pesticidal composition comprising pesticidal active such as fungicide comprising one or more of metalaxyl-M and tribasic copper sulfate or mixture thereof at 0.1% to 60%, 0.1% to 40% or 0.1% to 20% by weight, and surfactant at 0.1% to 85% or 0.1% to 40% such as dispersing agents (one or more of alkali metal salt of lignosulfonic acid, sodium salts of sulfonated naphthalene, salts of naphthalene sulfonic acids, and tristyrylphenol ethoxylate phosphate esters) and wetting agents. Thus, Vadakekuttu et al. teaches a granular pesticidal (fungicidal) composition comprising metalaxyl-M, tribasic copper sulfate, sodium salt of lignosulfonic acid (as common alkali metal salt of lignosulfonic acid), sodium salt of naphthalene sulfonic acids (as common salts of naphthalene sulfonic acids) and tristyrylphenol ethoxylate phosphate esters. The ratio of metalaxyl-M and tribasic copper sulfate to anionic surfactant 1:1 to 20:1 is easily obtained according to 0.1% to 60% of metalaxyl-M and tribasic copper sulfate as well as surfactant at 0.1% to 85% or 0.1% to 40%. Since Vadakekuttu et al. teaches the granular pesticidal composition as water disintegrable granules have a dispersibility of at least 80%, it is considered as water dispersible.
It is regarded in the art that tristyrylphenol ethoxylate phosphate esters read on tristyrylphenol phosphate surfactant. In arguendo that tristyrylphenol ethoxylate phosphate esters does not read on tristyrylphenol phosphate surfactant. Tristyrylphenol phosphate surfactant is still obvious according to the discussion in the next 103 rejection.
Regarding claims 9, since Vadakekuttu et al. teaches surfactant sodium salt of lignosulfonic acid (as common alkali metal salt of lignosulfonic acid), sodium salt of naphthalene sulfonic acids (as common salts of naphthalene sulfonic acids) and tristyrylphenol ethoxylate phosphate esters at 0.1% to 40%, thus, each of them is at 0.1% to 40% as long as the total is no more than 40%. For example, when each of them is 5%, their ratio is 1:1:1.
Regarding claims 12-14, Vadakekuttu et al. teaches metalaxyl-M and tribasic copper sulfate or mixture thereof at 0.1% to 40% or 0.1% to 20%; thus, it is obvious to have tribasic copper sulfate at 0.1% to 40% and metalaxyl-M at 0.1% to 20%. When tribasic copper sulfate is 20% and metalaxyl-M is 5%, the ratio is 20:5=4:1.
Regarding claim 15, there is no clear definition of “pre-mix”, according to one embodiment of applicant’ s specification (page 9), “pre-mix” refers to a formulation of more than one component in a ready-mix formulation and intended to be applied onto plants with/without further dilution with water to make a mixture, Vadakekuttu et al. teaches water dispersible granular composition comprising metalaxyl-M and tribasic copper sulfate, and surfactant blend for applying on plant, this meets the limitation of pre-mix. According to applicant’s another embodiment of specification (page 42), the pre-mix is obtained by mixing metalaxyl-M and tribasic copper sulfate and surfactant blend, Vadakekuttu et al. teaches water dispersible granular composition comprising metalaxyl-M and tribasic copper sulfate, and surfactant blend, it is obvious to have a mixture of metalaxyl-M and tribasic copper sulfate, and surfactant blend, which is pre-mix, before adding other ingredients because Selection of any order of mixing ingredients is prima facie obvious. MPEP 2144.04 Iv C.
Regarding claim 19, Vadakekuttu et al. teaches applying granular pesticidal (fungicide) composition comprising metalaxyl-M and tribasic copper sulfate and anionic surfactant blend to plant for crop protection, although prior art is silent about controlling growth of fungal pests, since the same granular pesticidal (fungicide) composition is applied to the same plant, this same process would result in the same controlling growth of fungal pests. In summary, although the reference is silent about all the functional properties instantly claimed, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same crop is being applied the same pesticidal composition by the same mode of administration in the same amount in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, prior art teaches, either expressly or inherently implied, each and every limitation of the instant claims. it remains the Examiner's position that the instantly claimed method is obvious.
Regarding claims 20-21, Vadakekuttu et al. teaches water dispersible granular composition having suspensibility of at least 80%, encompassing at least 85%; and is silent about D50 particle size of 0.5 to 2.5 um, and one artisan in the art would have been motivated to adjust and optimize the particle size to have D50 of 0.5 to 2.5um through routing experimentation. MPEP 2144.05. Especially in the absence of showing criticality of claimed range. Regarding the function properties of D50 particle size of 0.5 to 2.5um and suspensibility of at least 85% after storage at 40C for 3 months, this is regarded as inherency of prior art granular composition. Since prior art teaches the same granular composition, this same prior art granular composition is expected to have the same properties. MPEP 2112.01. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 1, 9-15, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Vadakekuttu et al. (US20180325105), in view of Patei et al. (WO2022018765).
In arguendo that tristyrylphenol ethoxylate phosphate esters does not read on tristyrylphenol phosphate surfactant. Tristyrylphenol phosphate surfactant is still obvious according to the following discussion.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Vadakekuttu et al. teaching has already been discussed in the above 103 rejection and is incorporated herein by reference.
Patei et al. teaches A synergistic agrochemical composition for soil application comprising: a. at least one insecticide (claim 1); wetting agent (claim 5), wetting agent for granule (GR) formulation is seleted from Mono C2-6alkyl ether of a polyC2-4alkylene oxide block copolymer , condensation product of castor oil and polyC2- 4alkylene oxide, alkoxylated castor oil is available under the trade name Agnique CSO- 36, a mono- or di-ester of a C12-24fatty acid and polyC2-4alkylene oxide, carboxylates, sulphates, sulphonates, alcohol ethoxylates, alkyl phenol ethoxylates, fatty acid ethoxylates, sorbitan esters, ethoxylated fats or oils, amine ethoxylates, phosphate esters, ethylene oxide - propylene oxide copolymers, fluorocarbons, alkyd-polyethylene glycol resin, polyalkylene glycol ether, apolyalkoxylated nonyl phenyl, alkoxylated primary alcohol, ethoxylated distyrylphenol, ethoxylated distyrylphenol sulphate, ethoxylated tristyrylphenol phosphate, tristyrylphenol phosphate ester, hydroxylated stearic acid polyalkylene glycol polymer, and their corresponding salts, alkyd-polyethylene glycol resin, polyalkylene glycol ether, ethoxylated distyrylphenol, ethoxylated distyrylphenol sulphate, ethoxylated tristyrylphenol phosphate, tristyrylphenol phosphate ester, tristyrylphenol phosphate potassium salt, dodecysulfate sodium salt (claim 10).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Vadakekuttu et al. is that Vadakekuttu et al. do not expressly teach tristyrylphenol phosphate surfactant. This deficiency in Vadakekuttu et al. is cured by the teachings of Patei et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to Vadakekuttu et al., as suggested by Patei et al., and produce the instant invention.
As discussed in the above 103 rejection, Vadakekuttu et al. teach each limitation of applicant’s claimed invention except tristyrylphenol phosphate surfactant, thus, the following discussion will only address tristyrylphenol phosphate surfactant. All the discussion in the above 103 rejection are incorporated herein by reference.
One of ordinary skill in the art would have been motivated to include tristyrylphenol phosphate because tristyrylphenol phosphate is suitable ingredient in granular pesticidal composition. Under guidance from Vadakekuttu et al., teaching wetting agent in granular composition, and Patei et al. teaching teach tristyrylphenol phosphate as wetting agent in pesticidal composition, it is obvious to include tristyrylphenol phosphate and produce instant claimed invention with reasonable expectation of success.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Argument:
Applicants argue that there is no specific teaching of combination of metalaxyl-M and tribasic copper sulfate as well as the combination of sodium salt of lignosulfonic acid, sodium salt of naphthalene sulfonic acids and tristyrylphenol phosphate surfactant. All related arguments are incorporated herein by reference.
In response to this argument: this is not persuasive. As discussed in the above 103 rejection, Vadakekuttu et al. teaches a granular pesticidal composition comprising a list of pesticidal active such as fungicide comprising one or more of metalaxyl-M and tribasic copper sulfate or mixture thereof at 0.1% to 60%, 0.1% to 40% or 0.1% to 20% by weight, and surfactant at 0.1% to 85% or 0.1% to 40% such as dispersing agents (one or more of alkali metal salt of lignosulfonic acid, sodium salts of sulfonated naphthalene, salts of naphthalene sulfonic acids, and tristyrylphenol ethoxylate phosphate esters) and wetting agents. Thus, Vadakekuttu et al. teaches a granular pesticidal (fungicidal) composition comprising metalaxyl-M, tribasic copper sulfate, sodium salt of lignosulfonic acid (as common alkali metal salt of lignosulfonic acid), sodium salt of naphthalene sulfonic acids (as common salts of naphthalene sulfonic acids) and tristyrylphenol ethoxylate phosphate esters. The ratio of metalaxyl-M and tribasic copper sulfate to anionic surfactant 1:1 to 20:1 is easily obtained according to 0.1% to 60% of metalaxyl-M and tribasic copper sulfate as well as surfactant at 0.1% to 85% or 0.1% to 40%. Regarding the argument there is no particular teaching of specific pesticidal active combination and surfactant combination, it is argued that it was held that “[d]isclos[ure of] a multitude of effective combinations does not render any particular formulation less obvious.” Merk &Co., Inc. v. Biocraft Laboratories, inc., 874 F.2d 804, 807 (Fed. Cir.1989). furthermore, since prior art teaches both metalaxyl-M and tribasic copper sulfate as pesticidal active, "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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06, mixture of two known herbicides held prima facie obvious. Therefore, it is obvious to have mixture of metalaxyl-M and tribasic copper sulfate in the composition. For the same rational, it is obvious to have the combination of sodium salt of lignosulfonic acid, sodium salt of naphthalene sulfonic acids and tristyrylphenol phosphate surfactant. Therefore, the 103 rejection is still proper.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
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, 9-15, 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 16-18 of copending Application No. 18843473 in view of Vadakekuttu et al. (US20180325105). The reference application teaches a granular composition comprising tribasic copper sulfate (claim 3) and anionic surfactant including sodium lignosulfonate (claim 6), but silent about Metalaxyl-M, sodium salt of naphthalene sulfonic acids and tristyrylphenol phosphate esters, in view of Vadakekuttu et al. teaching Metalaxyl-M, sodium salt of naphthalene sulfonic acids and tristyrylphenol phosphate esters, it is obvious to include Metalaxyl-M, sodium salt of naphthalene sulfonic acids and tristyrylphenol phosphate esters and produce applicant’s claimed invention with reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
Response to Argument:
Applicants asked for the provisional rejection be held in abeyance.
In response to this argument: this is not persuasive. Since no TD is filed, the double patenting rejection is maintained for record.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613
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