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 .
DETAILED ACTION
Claims 1-20 are currently pending and the claims as originally filed on 03/18/2025 are acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The two (2) information disclosure statement (IDS) submitted on 03/18/2025 and 08/05/2025 were filed before the mailing date of the instant first action on the merits. The submissions thereof are in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statements have been considered by the examiner, and signed and initialed copies are enclosed herewith.
Claim Objections
Claim 3 is objected to a minor informality.
Claim 3 is not written in a standard Markush-type claim format where the Markush-type claim should recite alternatives in a format such as "selected or chosen from the group consisting of A, B, and C." Alternatively, “selected or chosen from A, B or C” can be used. (see MPEP 2111.03 –II and 2117 and MPEP 2173.05(h)). Appropriate correction is required.
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 3-5 and 9 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.
Each of claims 3-5 and 9 recites “soy group and coco group for R1” (claim 3), “soy group for R1” (claim 4), “coco group for R1” (claim 5), and “coco group for R5” (instant claim 9). However, it is not clear how soy and/or coco belong to alkyl group of base claim 1. It is noted that soy and coco groups contain alkyl chains of fatty acids as one of constituents and also contains glycerol backbone. The specification discloses soy group (C16-C18) and coco group (C12-C14) at [0077]-[0078] of instant publication. Please see MPEP 2145 indicating that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057. First, in claim construction, one must not import limitations from the specification that are not part of the claim. Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012). SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (Limitations not explicit or inherent in the language of a claim cannot be imported from the specification.). Appropriate correction and/or explanation is requested.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hemminghaus et al. (US2019/0141993A1, IDS of 08/05/2025) in view of Forbes et al. (US5,668,085A, IDS of 08/05/2025).
Claim 1 recites a herbicidal composition comprising (a) glyphophate, (b) a first surfactant as claimed, and (c) a second surfactant as claimeded.
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143).
Hemminghaus discloses an aqueous herbicidal composition comprising (a) glyphosate or a derivative thereof which reads on the claimed glyphosate or derivative thereof ([0006]-[0007]) in an amount of at least about 300 grams acid equivalent per liter to about 700 g a.e./L ([0044]) that is identical range to the claimed range, (b) an amidoalkylamine surfactant of formula (1), and (c) a co-surfactant of e.g., formula 3a:
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wherein R31 is a straight or branched chain hydrocarbyl (e.g., alkyl) having an average of from about 5 carbon atoms to about 22 carbon atoms, R30 is H, n=0, or R37 is C-1-4 alkylene oxide, n is 0-3; (e.g., [0083], claims 1 and 26 of prior art) which reads on the claimed first surfactant; and the composition contains water ([0166]) (instant claims 1 and 19, in part and instant claims 2-8 and 15); the amount of co-surfactant is used in an amount of 4.98% (see Table 1A:) which is within the claimed range of about 3%-about 8% (instant claim 12). MPEP2144.05: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”; glyphosate formulations have a cloud point of >85C which overlaps the instant range of at least room temperature (instant claims 14 and 20). MPEP2144.05 noted above; the solid concentration does not require water ([0167]) which overlaps the instant range of less than about 1wt% that embraces absence of water (instant claim 16); the composition is prepared by combining glyphosate, water, surfactant, and co-surfactant ([0166])(instant claim 17, in part); and the composition is applied to foliage of the weed or unwanted vegetation in order to kill or control them ([0028]) (instant claim 18).
However, Hemminghaus does not expressly teach second surfactant of instant claims 1, 9-11, 17 and 19 and its amount of instant claim 13. The deficiencies are cured by Forbes.
Forbes discloses aqueous glyphosate formulations comprising alkoxylated amine surfactants (abstract); the surfactant includes alkoxylated C8-C22 fatty amine surfactants, including ethoxylated tallowamine and ethoxylated cocamine which reads on the claimed second surfactant (col. 7, lines 6-15) as supported by instant publication at [0083] (see Surfactant 7: R5 is a coco group (C12-C14), each of R6 and R7 is ethylene oxide and d+e is about 2), and the surfactant is used in an amount of e.g., 7.80% or 8.18% (Table 2) which is within about 2% about 8% of instant claim 13. MPEP2144.05 noted above (instant claims 1, 9-11 and 13, 17, and 19: second surfactant).
In the field of herbicidal composition containing glyphosate, it would have been obvious to modify the combination of two surfactants of Hemminghaus with the combination of co-surfactant of Hemminghaus and alkoxylated C8-C22 surfactant of Forbes in order to enhance herbicidal activity. That is this rejection is based on the well-established proposition of patent law that no invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients, In re Sussman, 1943 C.D. 518. From MPEP 2143 A: “…all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at ___, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson ’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).” Further, replacing the combination of Hemminghaus with combined combination of Hemminghaus/Forbes would have yielded no more than the predictable results of herbicidal activity, in the absence of evidence to the contrary.
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.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Conclusion
Claims 1-20 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613
