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 .
Priority
The present application is a National Stage entry of International application PCT/CN2023/109372 filed 07/26/2023, which claims the benefit of Foreign application PCT/CN2022/108260 filed 07/27/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of the Application
Receipt is acknowledged of Applicant’s claimed invention, filed 12/19/2024, in the matter of Application N° 18/876,949. Said documents have been entered on the record. The Examiner further acknowledges the following:
Claims 1-20 are pending.
Claims 1-20 are presented for examination and rejected as set forth below.
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 1-20 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.
Claims 1 and 12-13 recite “free of or essentially free of”, which represents broad and narrow ranges, and furthermore, the definition of “essentially free of” further contains broad and narrow ranges (see Specification, pg 3). A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For examination purposes, the broadest range is used.
All claims that depend from claim 1 are further rejected.
Claim 15 is rejected for being indefinite, because it recites 60-100 wt% alkyl polyglycoside, leaving no amount available for the herbicide of instant claim 1, that it depends from. The values should be aligned appropriately. For the purpose of examination, the Examiner assumes an alkyl polyglycoside amount above 60 wt%.
Claim 18 recites a method claim that involves the active step of “using” an herbicidal composition. “Using” is an indefinite active method step, because there is no action occurring. The Examiner interprets this claim to bear the typical active step for herbicides of administering, applying, etc. (as found in the Examples of Applicant’s Specification), until further amendment is made.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-13 and 17-20 are rejected as being unpatentable over 35 U.S.C. 102(a1) as anticipated by Malik (H224, 1987 – available at USPTO Patent Public Search).
Applicant’s claims are directed to an herbicidal composition free of or essentially free of C12-C16-alkyl ether sulfates, comprising: a) an herbicide component, and b) an alkyl polyglycoside component containing an alkyl polyglycoside represented by the formula (I). A method of using is found in instant claims 17-18.
Malik teaches glycoside-containing agricultural treatment compositions (abstract).
Regarding claims 1-6, and 18-20: Malik teaches a composition comprising a plant growth regulator such as an herbicide (i.e., control of harmful plants of instant claim 18 is at once envisaged) (Malik – claim 15) and alkyl polyglycoside formula R(OG)x (i.e., reads on the instant formula (I) of R-O-(G1)x-H) (Malik – claim 1).
Furthermore, Malik teaches G is selected from fructoside, glucoside, etc. (Malik – claim 1) and x averages 1 or 1.2-4 (Malik – claims 4-5). Malik further specifies 2-ethylhexyl monoglucoside (Malik – claim 11-14). Thus, the embodiments of instant claims 19 (i.e., R1 = ethyl) and 20 (i.e., 2-ethylhexyl polyglycoside) are at once envisaged (i.e., they read on the formulas of instant claims 1 and 2, because they depend from them).
Regarding claim 7: Malik teaches effective amounts of the glycoside, including any necessary adjuvant, such that it can be at once envisaged to use two glycoside dispersing agents at once (Malik – claim 1), because the glycoside dispersing agent plays a role in improving the efficacy of the herbicidal/agrochemical composition (col 2, ‘summary of invention’; col 5, lines 54-61).
Regarding claims 8-11: Malik teaches carbamates, etc. and/or 2,4-dichlorophenoxyacetic acid (2,4-D), etc. (col 4), as the herbicide (Malik – claim 15).
Regarding claims 12-13: Malik does not require C8-C16 alkyl ether sulfates (Malik – claim 1)
Regarding claim 17: Malik teaches preparation of all herbicidal compositions by mixing, whereby mixing is at once envisaged as the process of making (Examples 1-5).
Therefore, the reference is deemed to anticipate the instant claims above.
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 1-14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Malik (H224, 1987).
As discussed above, Malik teaches the instant composition. However, Malik does not exactly teach the amounts (instant claim 14) and ratios (instant claim 16).
Malik teaches 0.1 to 30 wt% glycoside amount (Malik – claim 10). With regard to the numerical range, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (see 2144.05(I)). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Here, Malik’s 0.1 to 30 wt% overlaps with the instant range of 0.5 to 85 wt% (instant claim 14). Furthermore, when the active is taught as 0.0001 to 30 wt% and the glycoside is taught as 0.1 to 30 wt%, then the instant ratio range of 1:500 to 500:1 (instant claim 16) is obvious.
Thus, the amounts and ratios of instant claims 14 and 16 are obvious, based on the amounts provided in Malik alone.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Malik (H224, 1987), as applied to 1-14 and 16-20, and in further view of Johansson (US5928993A).
As discussed above, Malik teaches the instant composition in certain amounts/ratios. Malik teaches that the glycosides are used in sufficient amount to form an emulsion or dispersion (Malik – claim 1). However, Malik does not teach the instant glycoside range above 60 wt% (instant claim 15).
Johansson teaches alkyl polyglycosides (Johansson – claim 1), that can be used in 2-80 wt% amounts (i.e., “an aqueous composition which comprises an alkyl glycoside, an amphoteric compound and/or a nonionic alkoxylate” from Johansson – claim 1), when used in the form of a concentrate agrochemical formulation (col 2, paragraph 2). A PHOSITA would understand that concentrates are very common formulations in the agrochemical area, that are more easily handled/transported because they do not incorporate the weight and/or volume of a diluent. Thus, Johansson’s amount overlaps with the instant amount of above 60 wt% (reads on instant claim 15). It would further be obvious to create a composition of only alkyl polyglycoside (i.e., in the form of a neat/100% solution) that could be further diluted with water and/or other agrochemical ingredients, that are obvious from the combined Prior Art, as a whole.
Thus, the amount of instant claim 15 is obvious, based on the combined rationale of Malik and Johansson.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over, and in further view of Malik (H224, 1987), and Johansson (US5928993A):
claims 1-18 of Patent No. US9845446
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets teach surface-active alkyl polyglycosides, that have application to stabilizing aqueous formulations, such as dispersions and emulsions. However, ‘446 does not teach incorporation of an herbicide with the surface active polyglycoside, such that the agrochemical formulation benefits from the surface-active property of the alkyl polyglycoside.
This is remedied by Malik and Johansson, who teach alkylpolyglycosides as useful surface active ingredients to stabilize herbicidal formulations for practical application. One of ordinary skill in the art would have been motivated to modify the teachings of ‘446 because the surfactant-active properties of the alkyl polyglycosides in the cleaning formulations of ‘446 translates to the production of stable herbicidal formulations, as demonstrated by Malik and Johansson (see 103 rationale above).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJAN PRAGANI whose telephone number is (703)756-5319. The examiner can normally be reached 7a-5p EST (M-Th).
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/R.P./Examiner, Art Unit 1614 8/6/2026
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
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