Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claims 194-200, 202-210 and 212-216 are presented for examination.
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.
Claim 203 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.
Claim 203 is indefinite in using improper Markush language. The addition of “the group consisting of” after “from” in line 2 will overcome the rejection.
The claims dependent on claim 203 are also rejected, since they have all the limitations of claim 203.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 194-200, 202-210 and 212-216 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Asrar et al. (US 2023/0022791) in view of Seitz et al. (US 20040137031) and further in view of Nelson et al. (US 20110105327).
The claims are drawn to an herbicidal composition microcapsule, the microcapsule comprising:
microcapsules dispersed in an aqueous liquid, the microcapsules comprising a shell wall comprising a polyurea and containing a core material comprising an acetamide herbicide comprising acetochlor, wherein the polyurea of the shell wall is the polymerization product of a polyisocyanate component comprising a mixture of aliphatic polyisocyanates and a polyamine component comprising a polyamine or mixture of polyamines, and wherein:
the mixture of aliphatic polyisocyanates comprises: a cycloaliphatic diisocyanate of structure (IX):
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and an aliphatic polyisocyanate derived from 1,6-hexamethylene diisocyanate; and the polyamine or the mixture of polyamines comprises triethylene tetramine, wherein the particle size of the microcapsule is about 15 µm.
Asrar et al. teach a method of producing a controlled release form of an agricultural active material includes the provision of an organic liquid composition. The liquid composition is formed into small droplets and the droplets are enclosed by a non-water-soluble shell to provide microcapsules, the shell of which is designed to release the agricultural active at a pre-selected controlled rate when the microcapsule is exposed to natural environmental conditions. See the abstract. The microcapsule has an average size of from about 2um to about 8 um where the weight ratio of the shell to the core is from about 15:100 to about 30:100, and where the amount of active in the core is from about 30% to about 60%, by weight ([0091]). Suitable solvents can be selected from hydrocarbons [0211-0212]. When the first agricultural active (silthiopham) is mixed with a solvent in order to form the liquid composition that will form the core of the microparticles, other agricultural actives in addition to the first active-can also be added to the mixture. The second, or subsequent, agricultural active can be almost any agricultural active, but is preferably a pesticide or herbicide such as choloro acetamides selected from acetochlor, dimetenamid, propachlor, alachlor and metolachlor ({0219-0232 and0257]. Asrar al. teach that a preferred method of forming the shell that encloses the small liquid droplets is by an interfacial polymerization of monomers to forma polyurea shell around each droplet. A method for accomplishing this polymerization is to add one or more types of isocyanate monomers to the organic liquid composition. The organic liquid composition can then be dispersed in the aqueous phase. One or more polyamine monomers can then be added to the aqueous liquid in which the organic liquid composition is dispersed. The polyamines react with the isocyanates at the interfacial surface of the small droplets (the organic/aqueous interface) to form a solid polyurea shell that encloses the droplets ([289]. The isocyanates that are useful in the method include polyisocyanates that can react with polyamines to form polyurea. Polyamines (i.e., polyfunctional amines) that are useful in the method include any polyamine that is capable of reacting with polyisocyanates to form polyurea. Suitable amines include, but are not limited to, diethylene triamine, triethylene tetramine, tetraethylene pentamine, iminobis propylamines, amine epoxy adducts [0297]). It is preferred that the one or more polyamines that are used in the method include at least one triamine and/or at least one tetramine. In fact, it is preferred that two or more polyamines be used and that they be selected from diamines, triamines and tetramines. It is even more preferred that both a triamine and a tetramine are included. Preferred triamines include trimethylolpropane [poly(propylene glycol) amine terminated] ether (available as Jeff amine T-403), and diethylene triamine, and preferred tetramines include triethylenetetramine (TETA) ([0298]. When the total amount of polyisocyanates and the total amount of polyamines that are contacted in the method are considered, it is preferred that the ratio of the total equivalents of polyisocyanates to the total equivalents of polyamines is between about 4:1 and 1:4, more preferred is a ratio of 2:1 to 1:2, and yet more preferred is a ratio of about 1:1 ({0301]), which overlaps with the proportions of claim 210. Lastly, Asrar et al. teach an example wherein the microcapsules are diluted with water to afford a formulation for application (see Example 18, [0372]). Ansar teaches the use of the composition on corn, cereals, wheat, barley, rye, rice, vegetables, clovers, legumes, beans, peas, alfalfa, vegetables, sugar cane, sugar beets, tobacco, cotton, rapeseed, sunflower, safflower, and sorghum. See claim 89.
Asrar al do not expressly teach the particle size of the microcapsule of about 15 um. However, Seitz et al. teach that preferably, the reported median diameter of the microcapsules of the aqueous agricultural dispersion is less than about 15 microns. See Para [0102]. Seitz et al. teach a pesticidal material comprising a substantially water - immiscible core material encapsulated in a shell. The core material comprises a pesticide that comprises an agricultural compound selected from the group consisting of an herbicide, an herbicide safener, and a fungicide. The herbicide is selected from the group consisting of acetochlor, alachlor, and triallate(see claims 1,23 and 25 of Seitz et al.). Seitz teaches the reaction between amine and isocyanate is preferably run with an excess of amines. Preferably, the total amount of amines added to the emulsion is such that the ratio of the amount of added amine equivalents to the amount of amine equivalents required to complete the reaction is between about 1.05 and about 1.3, or about 1.1 and about 1.2 ({0139]. For the preferred polyurea/pesticide combinations paraffinic oils having about 12-28 carbon atoms and alkylated biphenyls or naphthalenes are useful as poor solvents ([0081]). To apply the microcapsule composition to the weeds is taught in Para [0113] of Seitz. Seitz teaches the use of safeners in the core, but does not teach the specific safeners of claim 203. See Para [0106] and [0107].. However, Nelson et al. teach the use of the compounds of claim 203. See Paras [0106] and [0107]. With respect to the polyisocyanate component is a blend of a triisocyanate and a diisocyanate wherein the ratio of the triisocyanate to the diisocyanate, on an isocyanate equivalent basis, is between about 90:10 and about 30:70; core having the pesticide to the shell wall being from about 13:1 to about 6:1, from about 10:1 to about 6:1 and from about 16:1 to about 3:1, absent a showing of unexpected results, it would be obvious to one of ordinary skill in the art to combine specific polyisocynates, vary the concentration amounts of different ingredients depending on the desired result. Determining optimal concentrations is routine experimentation and is readily practiced by one of ordinary skill in the art. Applicant’s attention is drawn to In re Aller 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955),wherein the court states that “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
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(a).
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 194-200, 202-210 and 212-216 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 9,877,478 in view of Seitz et al. (US 20040137031). The claims of the instant application do not teach the use of an emulsifying agent. However, Seitz teaches the use of an emulsifying agent in a pesticidal material comprising a substantially water-immiscible core material, the core material comprising a pesticide and being encapsulated in a shell having a predetermined permeability with respect to the core material, wherein the shell is formed by an interfacial polymerization of a polyisocyanate with other monomers in an encapsulation shell-forming polymerization system, said other monomers comprising a principal amine and an auxiliary amine. The use of an emulsifying agent is taught Para [0015].
Claims 194-200, 202-210 and 213-216 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10-12, 16, 18, 20, 21-25 of U.S. Patent No.10/813,352. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap. The claims of the instant application are drawn to an herbicidal composition microcapsule, the microcapsule comprising:
a shell wall comprising a polyurea and containing a core material comprising an acetamide herbicide comprising acetochlor, wherein the polyurea of the shell wall is the polymerization product of a polyisocyanate component comprising a mixture of aliphatic polyisocyanates and a polyamine component comprising a polyamine or mixture of polyamines, and wherein:
the mixture of aliphatic polyisocyanates comprises: a cycloaliphatic diisocyanate of structure (IX):
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The claims of the U.S. patent are drawn An herbicidal composition comprising: microcapsules dispersed in an aqueous liquid, the microcapsules comprising a shell wall comprising a polyurea and containing a water-immiscible core material comprising an acetamide herbicide, wherein the shell wall is formed in a polymerization medium by a polymerization reaction between a polyisocyanate component comprising a polyisocyanate or mixture of polyisocyanates and a polyamine component comprising a polyamine or mixture of polyamines to form the polyurea, the ratio of amine molar equivalents contained in the polyamine component to isocyanate molar equivalents contained in the polyisocyanate component is from about 1.15:1 to about 1.4:1, and the microcapsules have a mean particle size range from about 7 μm to about 15 μm; and an emulsifying agent. The claims of the instant application and the U.S. Patent are within the scope of each other.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZOHREH A FAY whose telephone number is (703)756-1800. The examiner can normally be reached Monday-Friday 9:30AM-6:00.
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/ZOHREH A FAY/Primary Examiner, Art Unit 1617
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