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 .
Status of the Claims
Claims 1, 2, and 7-21 are pending, presented for examination, and rejected as set forth in greater detail below.
Claim Interpretation
Applicants claims are directed to agricultural compositions combining flometoquin with a solvent and a combination of anionic and non-ionic surfactants. Claims 7-15 narrow the identity of the solvents to be used. Claims 16-19 narrow the surfactants to be used. Claim 20 dilutes the composition of Claim 1 into a “solution,” and Claim 21 sprays either the composition of Claims 1 or 20 diluted in water.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claims 1, 2, and 7-21 are rejected under 35 U.S.C. 103 as being unpatentable over Hori (WO2019/230621)(of record)(machine translation provided; all references are to the machine translation).
Hori describes agrochemical emulsifiable compositions combining an agrochemical active, surfactant, and solvent, which can be diluted with water before use, such as by spraying onto a target location, addressing limitations of Claims 1, 20, and 21. [0002; 0057-58]. Among the possible agrochemical actives are the flometoquin of Claim 1. [0014]. Hori indicates these actives may be present in the compositions in concentrations of between 0.01-20% by weight of the overall composition, addressing limitations of Claim 2. [0017]. Hori indicates that the solvent used to form the emulsifiable concentrate is a combination of a polar solvent and a non-polar solvent system. [0018]. Polar solvents suitable for use in these emulsifiable concentrations include each of the N,N-dimethyloctanamide of Claim 14. [0023]. Hori indicates these polar solvents may be included in any amounts, but suggest that concentrations of up to 50% may be useful. [0028]. Non-polar solvents useful in these compositions include the alkylbenzene of Claim 15, [0029], and esters formed from alcohols including methanol and fatty acids such as lauric acid, suggesting the use of the methyl laurate of Claim 12, addressing the limitations of Claims 7-15. [0029]. The ratio of polar to non-polar solvents preferably falls within the range of 15:85 and 65:35, with the overall content of solvents falls within the range of 45-97.97% of the weight of the composition, a range overlapping and therefore rendering obvious the range of Claim 2. [0030-31]. Hori incorporates surfactants into the emulsifiable concentrates including any or combinations of polyoxyethylene polyoxypropylene block copolymers of Claim 18, polyoxyethylene castor oil of Claim 19, [0033], and alkyl benzene sulfonic acids of Claims 16 and 17. [0039]. Hori indicates that the emulsifiable concentrates incorporate between 2-30% surfactant by mass of the composition, a range overlapping and therefore rendering obvious the limitations of Claim 2. [0054].
The specific combination of features claimed is disclosed within the broad teachings of the reference, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989). Where, as here, the reference does not provide any motivation to select this specific combination of an agrochemical active such as fipronil or flometoquin in concentrations of between 0.01-20% by weight, a solvent system combining N,N-dimethyloctanamide, alkylbenzene, and methyl laurate in concentrations of between 45-97.97%, and a combination of emulsifiers including or polyoxyethylene polyoxypropylene block copolymer, polyoxyethylene castor oil, and alkyl benzene sulfonic acids in concentrations of between 2-30% to provide emulsifiable agrochemical concentrates to be dilutes with water and sprayed, anticipation cannot be found.
That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have selected combinations of an agrochemical active such as fipronil or flometoquin in concentrations of between 0.01-20% by weight, a solvent system combining N,N-dimethyloctanamide, alkylbenzene, and methyl laurate in concentrations of between 45-97.97%, and a combination of emulsifiers including or polyoxyethylene polyoxypropylene block copolymer, polyoxyethylene castor oil, and alkyl benzene sulfonic acids in concentrations of between 2-30% to provide emulsifiable agrochemical concentrates to be dilutes with water and sprayed from within the Hori disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Response to Arguments
Applicant's arguments filed 7 July 2026 have been fully considered.
Applicants discuss the disclosure of Hori and the various problems and issues the prior art, in suggesting the compositions of the instant claims, attempt to address, and then contrast that with the rationale applicants employed in arriving at these suggested compositions. Applicants attempt to distinguish the prior art from the claimed subject matter on these grounds are unpersuasive, as it has long been held that the reason or motivation to modify a prior art reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention). Here, Hori describes each of the active agent, solvents, and emulsifiers applicants combine in their claims as usefully employed to provide agrochemical concentrates in the same manner applicants claims arrange these prior art elements. Nothing more is needed to arrive at a prima facie case of obviousness.
Applicants assert that the claimed agrochemical compositions provide improved chemical stability and that on this basis is distinguishable from the compositions of Hori. As a threshold matter, applicants here argue limitations which are not found in the claims, and cannot therefore serve as a basis for distinguishing the claims from the prior art. See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988) (Various limitations on which appellant relied were not stated in the claims; the specification did not provide evidence indicating these limitations must be read into the claims to give meaning to the disputed terms.). In addition, applicants here provide no evidence tending to compare the claimed invention with the closest prior art to establish any kind of unexpected results, and therefore cannot overcome the examiner’s prima facie case of obviousness on these grounds. See In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)( Establishing that evidence of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness).
Applicants next argue that Hori simply recites each of the active agents, solvents, and emulsifiers among many alternative active agents, solvents, and emulsifiers which a person of ordinary skill in the agrochemical arts may alternatively employ, with no motivation to select the particular active agents, solvents, and emulsifiers recited by applicants claims. Applicants assert that no prima facie case of obviousness can be established over the disclosure of Hori owing to the absence of such specific direction to the active agents, solvents, and emulsifiers claimed. This is not the law. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985). Here, Hori establishes that at the time applicants filed the instant application and their claims, each of the claimed active agents, solvents, and emulsifiers were taught as being combinable to provide agrochemical emulsion concentrates. Insofar as applicants assert the Examiner has engaged in picking and choosing from among various disclosed alternatives to conclude the claimed compositions are little more than applicants combination of old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)), applicants are reminded that “picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness.” In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972). Here, as pointed out above, the record lacks the kind of comparative data required to rebut the Examiner’s conclusion the compositions claimed are prima facie obvious over the Hori disclosure.
For at least these reasons, applicants arguments are unpersuasive.
Conclusion
No Claims are allowable.
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 SEAN M BASQUILL whose telephone number is (571)270-5862. The examiner can normally be reached Monday through Thursday, 5:30 AM to 4 PM.
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, 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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/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
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