DETAILED ACTION
Response to Amendment
Applicant’s amendment has overcome the rejections under 35 USC 112 and 35 USC 102. The following obviousness rejections are maintained.
Claim Rejections - 35 USC § 103
Claims 1, 3 to 9, 11 to 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. 7,081,436.
This rejection is consistent with that noted in the previous office action as it then
applied to claim 2.
Sun et al. teach a method of treating seeds with a seed treating formulation that
contains a polyether modified siloxane. See column 3, lines 1 to 35 and Examples 1 and 2 which show both a polyether modified siloxane and the claimed steps a. and b.
As applicant is aware, the difference between the claimed and prior art methods lies in the difference between the total number of Si atoms in the polyether siloxane of Sun et al. (maximum of 42) and the total number of Si atoms in the polyether of claim 1 (minimum of 43).
The difference between 42 and 43 is extremely small such that the skilled artisan would have expected the siloxanes to have comparable properties. That is, one would not expect the difference between a siloxane having 43 and 42 Si atoms to result in an unobvious difference in the method of Sun et al. As such one having ordinary skill in the art, prior to the effective filing date, would have found a siloxane within the claimed range to have been obvious.
Note that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
In addition to MPEP 2144.05, attention is also directed to MPEP 2144.09 II and II and the teachings regarding close structural similarity and adjacent members of homologs, as this also serves to support the rejection rationale.
For claims 12 and 17 see that Example 4 treats corn (maize) which meets these claims.
For claim 15, while this claim is not considered to be further limiting, note that the polyethers in Silicone 1 and 2 of Table 1 meet this structure.
For claim 3 the claimed “a” value of 31 differs from the prior art “x” value of 30 by one Si atom and the claimed “b” value of 6 differs from the prior art “y” value of 5 by one Si atom. The “close enough that one skilled in the art would have expected them to have the same properties” rationale applies to this claim as well.
The Z group in Sun et al. (column 3, line 58) meets the polyether of Formula (II) in claim 3. This is further evidenced by the specific polyethers shown in Table 1.
For claims 4 to 6 and 9, each of these limitations are shown in the polyether siloxanes found in Table 1.
For claims 7 and 8, the corresponding B unit in Sun et al. can be a mixture of ethylene and propylene oxide (column 4, line 25) such that the skilled artisan would have been motivated to include a mixture as required by these claims. Adjusting the amount of each, in an effort to optimize the properties associated therewith, would have been within routine experimentation. For instance, given the teaching of a mixture of these units, the selection of 50/50 % of such units would have been an obvious starting point, with one adjusting the amount of each unit higher or lower depending on results. Such a 50/50 ratio meets both of these claims.
For claims 11 and 16, see column 8, lines 45 to 47 which teaches the amount of siloxane present in the coating or treating composition. Adjusting the amount of such a siloxane in the final product, then, would correspond to adjusting this amount as well as the amount of the composition on the seed. Determining the optimal amount of siloxane on the seed, in an effort to take advantage of the benefits thereof without applying an unnecessarily large amount that could be detrimental to the seed or be costly, would have been obvious to one having ordinary skill in the art at the time before the effective date of the instant invention.
For claims 13 and 20, see above regarding values that are close to one another but not overlapping, and the expectation that comparable and predictable results will be achieved. This rationale applies to claim 13, as the difference between 42 and 45 is slight such that the skilled artisan would not have expected comparable properties.
For claim 14, see the preferred groups found in the bottom of column 3 through column 4, as well as the polyethers shown in Table 1.
For claim 19, note that it is a common practice in the art to reduce the dust profile compared to untreated seeds. This is evidenced by the fact there is an art recognized, specific test for determining dust value. Given the fact that a lower dust value is prefer-able, the skilled artisan would have been motivated to optimize and/or adjust the coating on the treated seed in an effort to obtain an ideal or commercially useful dust value. As such, before the effective date of the invention, one having ordinary skill in the art would have found it obvious to optimize and/or adjust the coating on the seeds to minimize the dust and result in a value that falls within this claimed range.
For claim 22, this property is inherently associated with the polyether siloxane such that the skilled artisan would have expected it to be necessarily present in the poly ether siloxane of Sun et al.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. in view of Austin et al. 5,159,096.
Austin et al. teach siloxane-oxyalkylene copolymers useful in agricultural applica-
tions. See column 1, lines 6 to 13. Column 1, lines 58 to 60, teaches that cloud point can be important to such copolymers when used in agricultural applications. As can be seen from the working examples, Tables 5 and 6, these copolymers have cloud point values that are well above 30oC.
Given the fact that the copolymers in Austin et al. are used in the agricultural field one having ordinary skill in the art would have found the selection of such copolymers, having a useful and beneficial cloud point, as the copolymer in Sun et al. to have been obvious. Obviousness is emphasized by the fact that the siloxanes in Austin et al. are within the breadth of the siloxanes in Sun et al. (column 3, lines 40 to 67).
In this manner the limitation of claim 10 is rendered obvious.
Response to Arguments
Applicant’s traversal has been considered but is not deemed persuasive. Appli-cant refers to the data in the Table on page 23 but this is not sufficient to establish un-obviousness for the entirety if the claimed method. For instance it compares a siloxane having 50 Si atoms to one with 27.5. This does not show unobviousness for the claim-ed value of 43. This also shows different polyether groups such that one cannot deter-mine what is providing any different results. The compositions are quite specific and a specific amount is used in these methods. This simply is not sufficient to establish an unobvious difference between the claims and that found in the closest prior art.
Applicant also makes many comments regarding the preferred range for the “x”
and “y” values in Sun et al. and conclude that the skilled artisan would not have been motivated to go outside the disclosed range. This is not persuasive.
MPEP 2123 II. states that disclosed examples and preferred embodiments are not a teaching away from a broader disclosure or nonpreferred embodiments. A known or obvious composition does not become patentable simply because it has been des-cribed as somewhat inferior to some other product for the same use.
Finally, applicant is reminded that the prior art need not rely upon the same reason or motivation to modify a reference for obviousness to be established.
In view of each of the above points, the obviousness rationale as it now applies to amended claim 1 and the claims that depend thereon, is maintained.
Conclusion
Claim 21 is objected to as being dependent on a rejected base claim but contain-ing allowable subject matter. The prior art fails to adequately suggest such a polysilox-ane as found in this claim. The difference between 42 (prior art) and 50 (claimed lower limit) is enough that the skilled artisan would not have found such a difference to have been obvious over the teachings in Sun et al.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
8/4/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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