DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 20 February 2026 has been entered.
Status of the Claims
Claims 43-48 and 50 are pending in the present application.
Response to Arguments
The objection to claim 48 is withdrawn in view of the claim amendments.
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.
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 43-46 and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Otsubo et al. (US 2006/0223710 A1).
Regarding instant claims 43-45, Otsubo et al. teach herbicidal compositions comprising 5-40 wt.%, preferably 10-30 wt.%, of clethodim, 0.1-10 wt.%, preferably 0.1-5 wt.%, of an anionic surfactant, 0.1-30 wt.%, preferably 1-20 wt.%, of a nonionic surfactant, and 10-89.8 wt.% of an aromatic hydrocarbon ([0007]-[0008], [0010], [0023], [0025]; Claims 2-3). Otsubo et al. teach that the anionic surfactant is a sulfonate surfactant, such as alkylbenzene sulfonates (e.g., dodecylbenzenesulfonate); the nonionic surfactant includes polyoxyalkylene fatty acid esters, such as polyoxyethylene fatty acid esters; and the aromatic hydrocarbon includes xylene, dimethylnaphthalene, alkylbenzene, Aromatic 150 and Aromatic 200 ([0009], [0011], [0015]-[0017], [0024]).
Regarding instant claims 46 and 50, Otsubo et al. teach that the herbicidal composition is utilized as an emulsifiable concentrate, and is applied to weeds, especially graminaceous weeds such as Agropyron tsukushiense, barnyardgrass (Echinochloa crus-galli), green foxtail (Setaria viridis), giant foxtail (Setaria faberi), large crabgrass (Digitaria sanguinalis), annual bluegrass (Poa annua), blackgrass (Alopecurus myosuroides), oats (Avena sativa), wild oats (Avena fatua), johnsongrass (Sorghum halepense), quackgrass (Agropyron repens), downy brome (Bromus tectorum) and bermudagrass (Cynodon dactylon) in broad-leaf crop (e.g. soybean, cotton, sugarbeet, peanut) fields ([0034]).
Otsubo et al. further teach that the herbicidal compositions have good storage stability of clethodim ([0030]).
Otsubo et al. do not explicitly disclose a formulation consisting of clethodim, an alkylbenzene sulfonate, an ethoxylated fatty acid, an aromatic hydrocarbon and optionally at least one additional adjuvant, as instantly claimed.
However, Otsubo et al. clearly teach an herbicidal composition comprising i) clethodim, ii) an anionic surfactant, iii) a nonionic surfactant, and iv) an aromatic hydrocarbon ([0007]). Otsubo et al. that the anionic surfactant is a sulfonate surfactant, such as alkylbenzene sulfonates; and the nonionic surfactant includes polyoxyalkylene fatty acid esters, such as polyoxyethylene fatty acid esters ([0009], [0011], [0015]-[0017]).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare the herbicidal compositions according to Otsubo et al. wherein the sulfonate surfactant is an alkylbenzene sulfonate and the nonionic surfactant is an ethoxylated fatty acid ester. Such would have been obvious because Otsubo et al. teach that alkylbenzene sulfonate surfactants are suitable anionic surfactants, and polyoxyethylene fatty acid esters are suitable nonionic surfactants for use in their invention. A person of ordinary skill in the art would have a reasonable expectation that formulations comprising clethodim, an alkylbenzene sulfonate, an ethoxylated fatty acid and an aromatic hydrocarbon would be effective herbicidal formulations for controlling weeds according to Otsubo et al. as well as providing good storage stability.
Response to Arguments
Applicant's arguments filed 20 February 2026 have been fully considered but they are not persuasive. Applicant asserts that the Office action points to clethodim with an anionic sulfonate and a nonionic surfactant in an aromatic solvent, and asserts good stability is reasonably expected. However, Applicant argues that Otsubo discloses broad open-ended formulations and repeatedly features tristyrylphenol ethoxylates in a nonionic surfactant (e.g., in the examples), not an exclusive two-surfactant system limited to alkylbenzene sulfonate and ethoxylated fatty acids as now claimed. Applicant further argues that the specific two-surfactant system instantly claimed distinguishes the claimed invention from Otsubo's disclosure of multiple alternative surfactant classes without the claimed stability outcome.
Regarding the tristyrylphenol ethoxylates, the examiner respectfully argues that Otsubo et al. teach that the polyoxyethylene polyoxypropylene tristyrylphenyl ether is an optional nonionic surfactant ([0012]). The examiner directs attention to MPEP 2123(I) and (II):
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Therefore, the presence of polyoxyethylene polyoxypropylene tristyrylphenyl ether in the examples of Otsubo et al. does not teach away from compositions wherein the nonionic surfactant is a polyoxyethylene fatty acid ester.
Otsubo et al. teach that a dehydration step wherein the content of water in the herbicidal composition is less than approximately 0.20% by weight provides a good storage stability of the clethodim in the composition (Abstract; [0005], [0030]). Therefore, a person of ordinary skill in the art would have a reasonable expectation that formulations according to Otsubo et al. comprising polyoxyethylene fatty acid esters as the nonionic surfactant and less than approximately 0.20% by weight water would also possess good storage stability.
Regarding the alkylbenzene sulfonate and ethoxylated fatty acid, the examiner respectfully argues that Otsubo et al. teach an herbicidal composition comprising i) clethodim, ii) an anionic surfactant, iii) a nonionic surfactant, and iv) an aromatic hydrocarbon ([0007]). Otsubo et al. that the anionic surfactant is a sulfonate surfactant, such as alkylbenzene sulfonates preferably dodecylbenzenesulfonate; and the nonionic surfactant includes polyoxyalkylene fatty acid esters, such as polyoxyethylene fatty acid esters ([0009], [0011], [0015]-[0017]).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare the herbicidal compositions according to Otsubo et al. wherein the sulfonate surfactant is an alkylbenzene sulfonate and the nonionic surfactant is an ethoxylated fatty acid ester. Such would have been obvious because Otsubo et al. teach that alkylbenzene sulfonate surfactants are suitable anionic surfactants with dodecylbenzenesulfonate being preferably used, and polyoxyethylene fatty acid esters are suitable nonionic surfactants for use in their invention.
Claims 47-48 are rejected under 35 U.S.C. 103 as being unpatentable over Otsubo et al. (US 2006/0223710 A1), as applied to claims 43-46 and 50 above, further in view of Seckinger (US 2011/0015074 A1).
Regarding instant claims 47-48, Otsubo et al. teach application of their compositions to weeds, but they do not explicitly disclose that the weeds are post-emergent.
Seckinger teaches methods for controlling weeds comprising applying clethodim-containing compositions to a weed, a crop, or a habitat area, wherein the composition may be applied as a post-emergence or pre-emergence treatment ([0012], [0015], [0050]-[0053]; and Claims 28-36).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to apply the compositions according to Otsubo et al. to weeds as a post-emergent treatment. Such would have been obvious because Seckinger teaches that clethodim-containing compositions can be applied to weeds pre-emergent and post-emergent. A person of ordinary skill in the art would have a reasonable expectation that applying the compositions of Otsubo et al. to weeds post-emergent would effectively control the weeds since Seckinger teaches that post-emergent application of clethodim is effective for controlling weeds.
Response to Arguments
Applicant's arguments are the same as above. Therefore, the examiner’s responses above are repeated herein.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached on (571) 272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.W.S/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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