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
It is acknowledged that applicant claims priority to foreign application EP22184761.9 filed 07/13/2022. Further, it is acknowledged that the present application is a 371 of international PCT/EP2023/068228 filed 07/03/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/18/2025 is acknowledged. The information disclosure statement fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-15 and 17-20) in the reply filed on 08/27/2026 is acknowledged. The traversal is on the ground(s) that cited reference Bell does not teach or suggest every claim element, and as such the technical feature linking Groups I and II makes a contribution over Bell and thus is a special technical feature. This is not found persuasive because the shared technical feature of Groups I and II is the formulation of claim 1. .
The requirement is still deemed proper and is therefore made FINAL.
Claim 16 has been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Claims 1-5, 7-9, 13-15, and 17-20 are pending and under current examination.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it uses legal phraseology in line 6, stating “…wherein said one or more pesticide…”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1, 2, and 4 are objected to because of the following informalities: ". Appropriate correction is required.
Claim 1 is objected to because of the following informalities: "dimethanamide" should read as "dimeth. Appropriate correction is required.
Claim 20 objected to because of the following informalities: it reads as "The formulation according to claim 3, the alkyl benzoate is methyl benzoate or benzyl benzoate", should read "The . Appropriate correction is required.
Claim Interpretation
Claims 1, 13, and 19 mention the use of formulation auxiliaries in the composition, but do not explain specific examples of these auxiliaries. Since formulation auxiliaries is a broad term, it is interpreted in instant claims 1, 13, and 19 to mean components that are not active ingredients, but support the formulation or stability of the composition.
Instant claim 17 discloses a seed comprising the liquid formulation as defined in claim 1. Since seed is not defined in instant specification, the broadest reasonable interpretation of seed is a particle that comprises the formulation of instant claims, either on or within the particle.
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 1-5, 8, 14, and 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 1-5 and 14 contain the trademark/trade name indiflin. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the generic name inpyrfluxam and, accordingly, the identification/description is indefinite.
Claim 8 is 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.
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). In the present instance, claim 8 recites the broad recitation “N-alkyl pyrrolidone”, and the claim then recites “especially N-methyl pyrrolidone, N-(n-butyl) pyrrolidone, N-(t-butyl) pyrrolidone or N-(sek-butyl) pyrrolidone”, which is the narrower statement of the range/limitation. Claim 8 recites “N,N-dialkyl lactamide”, further narrowing with “especially N,N-dimethyllactamide”. Claim 8 recites “N,N-dialkyl amide”, further narrowing with “especially N,N-dimethyl octanoic acid amide, N,N-dimethyl decanoic acid amide, N,N-dimethyl capric amide, N,N-dimethyl caprylic amide”. The claim(s) 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.
Regarding claim 20, the claim cites its dependency from claim 3, and has the phrase “…the alkyl benzoate is methyl benzoate or benzyl benzoate”, which lacks antecedent basis. For the purpose of examination, the phrase is best interpreted to read as “…the ester of benzoic acid is methyl benzoate or benzyl benzoate”. The phrasing of “alkyl benzoate” specifically is not recited in amended claim 3 or independent claim 1.
Claim Rejections – 35 U.S.C. 102/102
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.
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.
Claim(s) 1-4, 7-9, 14-15, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over Bell (US 20110190129 A1).
Regarding claims 1, 9, 14-15, and 19-20, Bell describes a composition with an agrochemical that functions as an insecticide, herbicide, fungicide, or plant growth regulator (see claim 8). Bell discloses that the composition can comprise a variety of compounds such as fluopyram, and strobilurins such as azoxystrobin and picoxystrobin (see claim 10). The formulation of Bell further comprises a solvent selected from benzyl benzoate (see claim 18), cyclic hydrocarbons (see claim 4), or alkylated benzenes (i.e. aromatic hydrocarbons, see claim 5). Bell describes that the composition has surfactants (see claim 11), and can comprise adjuvants and humectants (i.e. formulation auxiliaries, see claim 11).
While the claims of Bell are silent regarding the solubility of the pesticides, the pesticides of Bell and those recited in instant claim 1 are the same, and as such would have the same properties. Properties of a compound, such as insolubility in water, are inherent and as such the pesticides of Bell are also water insoluble. Further, the pesticides of Bell would also be completely dissolved in the solvent system at 20º C. This provides a sound basis for the examiner’s positions that Bell anticipates or renders obvious the solubility of the pesticides recited in claim 1 of instant application. The pesticides described in Bell are structurally identical to that of instant invention claim 1. Formulations are not separable from the physical properties, and the burden of production is shifted to Applicant. MPEP § 2112(V) (“once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant”).
In sum, claim 1 is anticipated by or (in the alternative) rendered prima facie obvious by Bell. MPEP § 2112(III) (“Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection.”).
Regarding claims 2 and 4, Bell describes that the composition can comprise azoxystrobin and picoxystrobin (see claim 10).
Regarding claim 3, Bell describes that the composition can comprise strobilurin pesticides (see clam 9).
Regarding claim 7, Bell discloses that the formulation can comprise dimethyl lactamide (DML) and a solvent such as benzyl benzoate (see claims 17 and 18).
Regarding claim 8, Bell describes that the formulation can comprise N,N-dimethyl lactamide (see claim 1).
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.
Claim(s) 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bell (US 20110190129 A1), as applied above to claims 1-4, 7-9, 14-15, and 19-20.
Regarding claim 17, Bell discloses that the composition can be used in microencapsulated formulations, further formulated into granular materials or powders (para. [0034]).
Regarding claim 18, Bell discloses that the composition can comprise surfactants (see claim 11), describing that the surfactants can be anionic or nonionic (para. [0026]).
Bell does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Bell with a reasonable expectation of success to obtain the composition of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[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 v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the method of the instant claims with predictable results.
Claim(s) 5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Bell (US 20110190129 A1) in view of Mertoglu (US 20160021877 A1)
While Bell describes the instant invention as above, it fails to disclose the specific pesticides listed in instant claim 5. Further, while Bell describes the use of nonionic or anionic surfactants, and auxiliaries in the composition, it fails to teach the percent concentration of these components.
Regarding claim 5, Mertoglu teaches a concentrate comprising a water-insoluble pesticide (see claim 16), where the pesticide can be fluxapyroxad (para. [0086]).
Regarding claim 13, Bell describes that the agrochemical in the composition (i.e. pesticides or fungicide, see claim 8) is present in an amount of 0.1-75 wt.% (see claim 13). Bell discloses that the composition comprises a solvent such as methyl benzoate, benzyl benzoate, and butyl benzoate (i.e. benzoic acid ester, para. [0033]) in an amount of 5-95 wt.%, and 5-95 wt.% DML (i.e. one further solvent, para. [0033]). Mertoglu teaches a concentrate with 0.1-60 wt.% pesticides. Mertoglu describes that surfactants and adjuvants act as auxiliaries in the composition (para. [0088]), describing that the composition can comprise an anionic surfactant in an amount of 0.5-30 wt.% (para. [0096]), and at least 5 wt.% nonionic surfactant (see claim 25). The concentration of both the anionic and nonionic surfactants, and the concentration of the auxiliaries described in instant claim 13, overlap with those disclosed in Mertoglu, and as such are obvious. The concentrations of the components in instant claim 13 overlap with those disclosed in both Bell and Mertoglu, and as such are obvious. MPEP § 2144.05(I). The concentrations of components in a solution is an optimizable parameter, inviting one skilled in the art to experiment. As such, one of ordinary skill in the art would be motivated to optimize within the concentrations taught in both Bell and Mertoglu to arrive at the concentrations of instant invention.
Bell and Mertoglu are considered to be analogous to the claimed invention because they are in the same field of agrochemical formulations that comprise pesticides. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the pesticides listed in Bell with the fluxapyroxad taught in Mertoglu. The pesticides of Bell and the fluxapyroxad of Mertoglu are known in the art to be effective pesticides, and both can be used in agrochemical formulations. Simple substitution of one pesticide with another is within the purview of the skilled artisan, and would yield predictable results. MPEP § 2143(I)(b). Further, it would be obvious to one of ordinary skill in the art to incorporate the concentration range of surfactants in Mertoglu into the formulation of Bell, as Mertoglu teaches concentration ranges that are effective in pesticidal compositions. MPEP § 2143(I)(g).
Conclusion
Claims 1-5, 7-9, 13-15, and 17-20 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Makenna Miller whose telephone number is (571)272-9852. The examiner can normally be reached Mon-Fri 7:30-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/M.R.M./Examiner, Art Unit 1611
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