UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`16/614,319
`
`11/15/2019
`
`Gordon Alastair BELL
`
`SYG-0345PA(115479.000269)
`
`2680
`
`153842
`BakerHostetler
`
`7590
`
`04/02/2021
`
`Washington Square, Suite 1100
`Washington, DC 20036-5304
`
`EXAMINER
`
`SAEED, ALIS
`
`ART UNIT
`
`1616
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/02/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`eofficemonitor @bakerlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/614,319
`Examiner
`ALI SAEED
`
`Applicant(s)
`BELL, Gordon Alastair
`Art Unit
`AIA (FITF) Status
`1616
`Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)C) Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3)0) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\() Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`
`
`Disposition of Claims*
`16-26 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`(1) Claim(s)__ is/are allowed.
`(1) Claim(s)___ is/are rejected.
`[) Claim(s)__is/are objectedto.
`Claim(s)
`16-26 are subject to restriction and/or election requirement
`s) 4
`
`) ) ) )
`
`“If any claims have been ee allowable, you may beeligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10)C2 The specification is objected to by the Examiner.
`11)C) The drawing(s) filed on
`is/are: a)(] accepted or b)(_) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12).) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)D) None ofthe:
`b)7) Some**
`a)D All
`1.1) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210327
`
`

`

`Application/Control Number: 16/614,319
`Art Unit: 1616
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Claims Status
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`Claims 16-26 are currently pending in the instant application and are subject to the following
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`restriction requirement.
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`Election/Restrictions
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`REQUIREMENT FOR UNITY OF INVENTION
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`As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or
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`to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of
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`invention”). Where a group of inventions is claimed in a national stage application, the requirement of
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`unity of invention shall be fulfilled only when there is a technical relationship among those inventions
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`involving one or more of the same or corresponding special technical features. The expression “special
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`technical features” shall mean those technical features that define a contribution which each of the
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`claimed inventions, considered as a whole, makes over the prior art.
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`The determination whether a group of inventions is so linked as to form a single general
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`inventive concept shall be made without regard to whether the inventions are claimed in separate
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`claims or as alternatives within a single claim. See 37 CFR 1.475(e).
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`When Claims Are Directed to Multiple Categories of Inventions:
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`As provided in 37 CFR 1.475 (b), a national stage application containing claims to different
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`categories of invention will be considered to have unity of invention if the claims are drawnonly to one
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`of the following combinations of categories:
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`(1) A product and a processspecially adapted for the manufacture of said product; or
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`

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`Application/Control Number: 16/614,319
`Art Unit: 1616
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`Page 3
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`(2) A product and a processof use of said product; or
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`(3) A product, a process specially adapted for the manufacture of the said product, and a use of
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`the said product; or
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`(4) A process and an apparatus or means specifically designed for carrying out the said process;
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`or
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`(5) A product, a process specially adapted for the manufacture of the said product, and an
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`apparatus or means specifically designed for carrying out the said process.
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`Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
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`Restriction is required under 35 U.S.C. 121 and 372.
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`This application contains the following inventions or groups of inventions which are not so
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`linked as to form a single general inventive concept under PCT Rule 13.1.
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`In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single
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`invention to which the claims must be restricted.
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`Group I, claim(s) 16-20, drawn to an agrochemical composition in an emulsion concentrate or emulsion
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`in water comprising an agrochemical and gamma caprolactone or 2-acetyl-gamma-butyrolactone.
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`Group Il, claim 21, drawn to use of gamma caprolactone or 2-acetyl-gamma-butyrolactone as a solvent.
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`Group Ill, claim 22, drawn to a method of making an agrochemical composition which comprises gamma
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`caprolactone or 2-acetyl-gamma-butyrolactone.
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`Group IV, claim 23, drawn to a methodof controlling a pest comprising applying the agrochemical
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`composition.
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`Group V,claim 24, drawn to a method of treatment or prevention of fungal infection in a plant.
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`Group VI, claim 25, drawn to a method for the control of insects in plants.
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`Group VII, claim 26, drawn to a method for the control of unwanted plant growth.
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`

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`Application/Control Number: 16/614,319
`Art Unit: 1616
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`Page 4
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`This application contains claims directed to more than one species of the generic invention.
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`These species are deemed to lack unity of invention because they are not so linked as to form a single
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`general inventive concept under PCT Rule 13.1.
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`The species are as follows:
`
`e
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`The agrochemical active ingredients recited in claims 18 and 19.
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`Applicant is required, in reply to this action, to elect a single species to which the claims shall be
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`restricted if no generic claim is finally held to be allowable. The reply must also identify the claims
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`readable on the elected species, including any claims subsequently added. An argument that a claim is
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`allowable or thatall claims are generic is considered non-responsive unless accompanied byan election.
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`Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to
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`additional species which are written in dependent form or otherwise require all the limitations of an
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`allowed generic claim. Currently, the following claim(s) are generic: Claims 16-26.
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`The groupsof inventions listed above do not relate to a single general inventive concept under
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`PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical
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`featuresfor the following reasons:
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`GroupsI-VIl and the different agrochemical active ingredients recited in claims 18 and 19 lack
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`unity of invention because even though the inventions of these groups require the technical feature of
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`an agrochemical composition comprising gamma caprolactone or 2-acetyl-gamma-butyrolactone, this
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`technical feature is not a special technical feature as it does not make a contribution over the prior art in
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`view of Kobayashi (WO 2009/031621 A1; 12/03/2009). Kobayashi discloses an emulsion in water
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`agrochemical formulation comprising an agrochemical active component, a surfactant and an ester
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`solvent (Abstract). It further teaches that the composition comprises a lactone including gamma
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`caprolactone (Para 0013). It teaches that addition of lactone such as gamma caprolactone makes the
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`composition become clear and uniform microemulsion and storage ability becomesvery good (Para
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`

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`Application/Control Number: 16/614,319
`Art Unit: 1616
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`Page 5
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`0012). Therefore, the prior art teaches the technical feature of an agrochemical composition comprising
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`a gamma caprolactone along with an agrochemical active. As the common technical feature was known
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`in the art at the time of the invention, this cannot be considered a common special technical feature
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`that would otherwise unify the groups. Accordingly, unity of invention is lacking.
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`Applicant is advised that the reply to this requirement to be complete must include (i) an
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`election of a species or invention to be examined even though the requirement may betraversed (37
`
`CFR 1.143) and (ii) identification of the claims encompassing the elected invention. The election of an
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`invention or species may be made with or without traverse. To preserve a right to petition, the election
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`must be made with traverse. If the reply does not distinctly and specifically point out supposed errorsin
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`the restriction requirement, the election shall be treated as an election without traverse. Traversal must
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`be presented at the time of election in order to be considered timely. Failure to timely traverse the
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`requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the
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`election, applicant must indicate which of these claims are readable on the elected invention or species.
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`Should applicant traverse on the ground that the inventions have unity of invention (37 CFR
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`1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidenceor identify
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`such evidence now of record showing the inventions to be obvious variants or clearly admit on the
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`record that this is the case. Where such evidence or admission is provided by applicant, if the examiner
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`finds one of the inventions unpatentable over the prior art, the evidence or admission may be used ina
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`rejection under 35 U.S.C. 103(a) of the other invention.
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`Applicant is reminded that upon the cancellation of claims to a non-elected invention, the
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`inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently
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`namedinventorsis no longer an inventor of at least one claim remaining in the application. A request to
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`correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheetin
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`

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`Application/Control Number: 16/614,319
`Art Unit: 1616
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`Page 6
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`accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing
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`fee required under 37 CFR 1.17(i).
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`The examiner has required restriction between product or apparatus claims and processclaims.
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`Whereapplicant elects claims directed to the product/apparatus, and all product/apparatus claims are
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`subsequently found allowable, withdrawn processclaims that include all the limitations of the allowable
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`product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected
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`process invention mustinclude all the limitations of an allowable product/apparatus claim for that
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`process invention to be rejoined.
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`In the event of rejoinder, the requirementfor restriction between the product/apparatus claims
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`and the rejoined processclaims will be withdrawn, and the rejoined processclaims will be fully
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`examinedfor patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims
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`must meetall criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112.
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`Until all claims to the elected product/apparatus are found allowable, an otherwise properrestriction
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`requirement between product/apparatus claims and process claims may be maintained. Withdrawn
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`process claims that are not commensurate in scope with an allowable product/apparatus claim will not
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`be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that
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`the process claims should be amended during prosecution to require the limitations of the
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`product/apparatus claims. Failure to do so mayresult in no rejoinder. Further, note that the prohibition
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`against double patenting rejections of 35 U.S.C. 121 does not apply wherethe restriction requirementis
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`withdrawnby the examiner before the patent issues. See MPEP § 804.01.
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`

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`Application/Control Number: 16/614,319
`Art Unit: 1616
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`Page 7
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to ALI SAEED whose telephone number is (571)272-2371. The examiner can normally
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`be reached on M-F 8-5 EST.
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`Examiner interviewsare available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SUE
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`X LIU can be reached on 5712725539. The fax phone number for the organization wherethis application
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`or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained
`
`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
`
`through Private PAIR only. For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on accessto the Private PAIR system, contact
`
`the Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information system, call 800-786-
`
`9199 (IN USA OR CANADA)or 571-272-1000.
`
`/A.S/
`Examiner, Art Unit 1616
`
`/ABIGAIL VANHORN/
`Primary Examiner, Art Unit 1616
`
`