DETAILED ACTION
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 .
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn. Applicant's arguments filed 06/06/2025 have been fully considered but they are not persuasive.
Claim Rejections - 35 USC § 103 - maintained
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 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.
Claims 1-5,7,9,11,26,28,29,31,33,37,40-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Groninger et al.#1, Herbicides to control tree roots in sewer-lines, Journal of Arboriculture, (1997) Vol. 23, No. 5, pp. 169-180; Groninger et al.#2, Herbicides to control tree roots in sewer-lines, Proc.South.Weed Sci.Soc. (50 Meet., 139-40, 1997) and Malavenda et al.(USPN 5919731; 07/06/1999). Groninger et al. teach a method of applying glufosinate to tree root in sewer lines to control their growth (See Groninger et al.#1). Groninger et al.#1 do not teach glufosinate as a foam comprising dichlobenil for controlling root growth in sewer lines. However, Groninger et al.#2 teach a foam solution of metham Na and dichlobenil(root growth inhibitor) used to control root growth in sewer lines. Also Groninger et al.#2 teach foam solutions of glufosante being used to control root growth in sewer lines. Thus, the Examiner maintains that it would have been obvious to modify the invention of Groninger et al.#1 to include metham Na and dichlobenil to arrive at a single foam and/or composition comprising glufosante, metham Na and dichlobenil being used to control root growth in sewer lines since both Groninger et al.#1 and Groninger et al.#2 individually teach controlling root growth in sewers and since the presence of glufosinate appears to reduce injury to above ground plant parts while effectively controlling root growth. The invention of Groninger et al.#2 appears to make it obvious to modify the invention of Groninger et al.#1 into a foam since Groninger et al.#2 individual composition of dichlobenil and glufosinate being effective at controlling root growth in sewer lines. The modified Groninger et al.#1 - Groninger et al.#2 invention do not teach the inclusion of surfactants and thickeners. Malavenda et al. in Table 1 at treatment No. 6 teach a combination of Finale(5.8 ml/l) plus Dichlobenil(2.25 g/l) being used to control root growth in sewer lines. Finale(5.8 ml/l) plus Dichlobenil(2.25 g/l) amounts in Table 1 fall within 0.0001 – 5% w/w or 0.001-2% w/w. Malavenda et al. teach combinations/composition existing as foams(Column 7, EXAMPLE). Malavenda et al. at column 4 lines 17-26 suggest that formulations for controlling root growth in sewer lines can comprise surfactants, spreaders(thickeners) and sticking agents(thickeners). Thus it would have been obvious to further modify the modified invention of Groninger et al.#1 - Groninger et al.#2 to include surfactants, spreaders(thickeners) and sticking agents(thickeners) since Malavenda et al. teach the inclusion of include surfactants, spreaders(thickeners) and sticking agents(thickeners) in foams used to control root growth in sewer lines.
Response to Applicant Argument
Applicant argues
“The Examiner asserts (December 6, 2024 Office Action, pp. 7-8) that a "10x application rate" derived from Table 2 of Groninger et al. #1 ("G1") corresponds to a glufosinate concentration of approximately 2.9% w/w, which purportedly falls within the claimed range of 1-5% w/w. This assertion, however, is fundamentally flawed and unsupported by the disclosure in G1. The Examiner's analysis relies on cost data presented in Table 1 of G1, which reflects herbicide cost estimates and solution concentrations on a volume/volume (v/v) basis-not on a weight/weight (w/w) basis as required by the claims. Without information regarding the mass of solute per unit mass of solution, a w/w percentage simply cannot be derived with scientific or legal confidence.”
The Examiner reiterates that G1 and Table 2 below renders 2.9% glufosinate obvious,
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list glufosinate as root growth inhibitor inside and around pipes, “Formulations of eight herbicides were applied at rates equal to 1 to 10 times the cost of methan(Table 1). Treatments were imposed by combining herbicides with 2% rout™ foaming agent”.
A control treatment consisting of Rout Foaming agent and water only was also established” “Following agitation of herbicide solution with a blender, exposed roots were dipped and returned to Leach tube racks.” Based on the Quotations above, the Examiner would like to point out that Table 1 teaches a glufosinate foam formulation being applied to tree roots in sewer lines.
To address Applicant’s present argument in the pre-appeal with respect to Groninger et al.#1, Herbicides to control tree roots in sewer-lines, Journal of Arboriculture, (1997) Vol. 23, No. 5, pp. 169-180 does not teach the application of 1-5 wt % glufosinate as is claimed. The Examiner would like to point out that in the rate column in Table 2 signals 1 application rate glufosinate yielding only 19% root mortality.
Furthermore Groninger et al.#1 at “Results and Discussion teach
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”
Meaning that the effective operational/root application 10X that in Table 2 reciting a rate of 1 for glufosinate(See Table 2). Now turning to Table 1 to the concertation of glufosinate recited in Table 1 effective at controlling root growth in pipes:
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. Applicant argues “Without information regarding the mass of solute per unit mass of solution, a w/w percentage simply cannot be derived with scientific or legal confidence.” Applicant argues that when the prior art disclose or suggest an instantly claimed range, the instantly claimed range is not predictable.
The Examiner reiterates, The 10X application glufosinate rate would yield 2.9% glufosinate falling within the instantly claimed concentration of 1-5% w/w glufosinate.” Again Table 1 above teaches 1X % solution glufosinate is equivalent to 0.29 % glufosinate; therefore !0X % solution glufosinate according to the Table 1 above equates to a 2.9% glufosinate solution falling within the instantly claimed percent range of 1-5 wt% glufosinate. The Examiner argues that within the ratio calculation in Table above the mass of solute per unit mass of solution is inherently present. The 10X application glufosinate rate would yield 2.9% glufosinate falling within the instantly claimed concentration of 1-5% w/w glufosinate. The 2.9% glufosinate is predictable and obtainable based on the Table above.
The Examiner maintains that The Office Action supports that Groninger 1 does not "teach glufosinate as a foam comprising dichlobenil for controlling root growth in sewer lines" (see the first paragraph on p. 3 of the Office Action). Applicant reiterates that both Groninger 1 and Groninger 2 are one in the same document. Applicant reiterate that both Groninger 1 and Groninger teach that the use of metham Na is restricted and therefore would not be combined with glufosinate and/or dichlobenil.
The Examiner reiterates that G1 ABSTRACT of Groninger’s J. of Aboriculture 23(5): September 1997 where it is stated, “The use of metham to control tree roots obstructing municipal sewer lines faces possible restriction by the U.S. EPA.” The above quotation rules out the use of solely metham for controlling roots pipe line. However, next quotation in G1 is “Flooding affected sewer lines with mixtures of metham(methylcarbamadithioc acid) and dichlobenil)2,6-dichlorobenzonitrilein a water based foam solution has proven an effective management tool to control roots and prevent obstructions.
The Examiner maintains even if metham is omitted from G1’s composition, G1 teaches or suggest a foam of glufosinate for controlling root growth in pipelines. In addition, instant claims employ “comprising” language allowing for the inclusion of metham.
Furthermore, G1 teaches dichlobenil(2,6-dichlorobenzonitrile) in a water based foam solution has proven an effective management tool to control roots and prevent obstructions. Thus G1 and G2 renders in method of controlling said root in pipes using glyphosate alone, dichlobenil alone as well as glufosinate and dichlobenil in combination. The instant claims employ comprising language allowing for the method to include glufosinate and dichlobenil even in view Applicant’s argument related to the efficacy,cost/toxicity/restriction of metham Na and dichlobenil neither G1 nor G2 teach absolutely not using metham Na and/or dichlobenil.
The Examiner maintains that directly below G1 Table 2 below:
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list glufosinate as root growth inhibitor inside and around pipes, “Formulations of eight herbicides were applied at rates equal to 1 to 10 times the cost of methan(Table 1). Treatments were imposed by combining herbicides with 2% rout™ foaming agent”.
A control treatment consisting of Rout Foaming agent and water only was also established” “Following agitation of herbicide solution with a blender, exposed roots were dipped and returned to Leach tube racks.” Based on the Quotations above, the Examiner would like to point out that Table 1 teaches a glufosinate foam formulation being applied to tree roots in sewer lines.
To address Applicant’s present argument in the pre-appeal with respect to Groninger et al.#1, Herbicides to control tree roots in sewer-lines, Journal of Arboriculture, (1997) Vol. 23, No. 5, pp. 169-180 does not teach the application of 1-5 wt % glufosinate as is claimed. The Examiner would like to point out that in the rate column in Table 2 signals 1 application rate glufosinate yielding only 19% root mortality.
Furthermore Groninger et al.#1 at “Results and Discussion teach
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”
Meaning that the effective operational/root application 10X that in Table 2 reciting a rate of 1 for glufosinate(See Table 2). Now turning to Table 1 to the concertation of glufosinate recited in Table 1 effective at controlling root growth in pipes:
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”. The 10X application glufosinate rate would yield 2.9% glufosinate falling within the instantly claimed concentration of 1-5% w/w glufosinate.
Groninger #1 and Groninger #2 teach away from using a metham and dichlobenil due to toxic effects and cost in that Groninger #1 states, “a new cost-effective alternative for killing roots in sewer lines must be identified” (see Groninger 1, last sentence, 1‘ paragraph of Introduction section). The Examiner argues that Groninger #2 like Groninger #1 teach a water based foam solution of methan NA and dichlobenil.
The Examiner maintains that neither Groninger #1 nor Groninger #2 make a statement to the dichlobenil being restricted and causing injury to the foliage as stated by the Applicant. The Examiner maintains that Groninger #2 actually states that metham Na causes foliar injury. Groninger #2 does not mention nowhere therein that dichlobenil causes foliar injury. Based on Groninger #2 it would have been obvious try other root controlling agents like glufosinate with dichlobenil as opposed to metham Na further rending the instant combination of dichlobenil and glufosinate obvious for controlling roots in pipes. Groninger #1 nowhere therein mentions dichlobenil so cost comparison with glufosinate is provided in Groninger #1. Groninger #2 makes a cost comparison of glufosinate and metham Na, not dichlobenil.
Applicant argues 1) Groninger #1 does not teach glufosinate as a foam comprising dichlobenenil. The Examiner maintains that it would have been obvious to accomplish this since both Groninger #1 and Groninger #2 teach glufosinate foam being effective in controlling roots in pipe. Groninger #2 gives the extra benefit of the dichlobenenil and glufosinate being applied as individual foams. Being that both glufosinate and dichlobenenil have the same utility of controlling roots in pipes it would have been obvious to try combining the glufosinate and the dichlobenenil into a single foam absent a showing of why not. Note, Groninger #1 doesn’t teach individual foams glufosinate and dichlobenenil.
Groninger #1 and Groninger #2 teach away from using a metham and dichlobenil due to toxic effects and cost in that Groninger #1 states, “a new cost-effective alternative for killing roots in sewer lines must be identified” (see Groninger 1, last sentence, 1‘ paragraph of Introduction section). The Examiner argues that neither Groninger #1 nor Groninger #2 make a statement to the dichlobenil being restricted and causing injury to the foliage. Groninger #2 actually states that metham Na causes foliar injury. Groninger #2 does not mention nowhere therein that dichlobenil causes foliar injury. Based on Groninger #2 it would have been obvious try other root controlling agents like glufosinate with dichlobenil as opposed to metham Na further rending the instant combination of dichlobenil and glufosinate obvious for controlling roots in pipes. Groninger #1 nowhere therein mentions dichlobenil so cost comparison with glufosinate is provided in Groninger #1. Groninger #2 makes a cost comparison of glufosinate and metham Na, not dichlobenil.
Neither Groninger #1 nor Groninger #2 teach a root control composition that includes a glufosinate, a salt thereof, and/or a derivative thereof in said root control composition at a concentration in a range of about 1 % w/w to about 5%. w/w, as recited in Claim 1 or a root control composition that includes a glufosinate, a salt thereof, and/or a derivative thereof in said root control composition at a concentration in a range of about .0001 % w/w to about 5%. w/w, as recited in Claim 26. When the prior art is silent to a concentration range for the actives(glufosinate, dichlobenil) at controlling root growth in sewer pipes, the prior art is suggesting that all concentration ranges(including the concentration ranges instantly claimed) would be effective at controlling root growth in sewer pipes. Therefore, it is significant that Applicant demonstrate the criticality/benefit of the instant concentration ranges over concentrations above and below the instantly claimed concentration ranges.
The Examiner argue that Malavenda et al. in Table 1 at treatment No. 6 teach a combination of Finale(5.8 ml/l) plus Dichlobenil(2.25 g/l) being used to control root growth in sewer lines. Finale(5.8 ml/l) plus Dichlobenil(2.25 g/l) amounts in Table 1 fall within 0.0001 – 5% w/w or 0.001-2% w/w. Malavenda et al. teach combinations/composition existing as foams(Column 7, EXAMPLE). Malavenda et al. at column 4 lines 17-26 suggest that formulations for controlling root growth in sewer lines can comprise surfactants, spreaders(thickeners) and sticking agents(thickeners).
Applicant argues Malavenda only discloses a composition that includes a dilution of a Finale product at 5.8 mL/L (see Fearn Declaration paragraphs 11). Malavenda provides no basis for determined how much glufosinate would be present in a 5.8 mL/L dilution of Finale (see Fearn Declaration paragraphs 11). The concentration of glufosinate cannot be calculated based on the information provided in Malavenda (see Fearn Declaration paragraphs 11). Even if Applicant’s argue that Malavenda does not teach , G1 and G2 teach 10X application glufosinate rate would yield 2.9% glufosinate falling within the instantly claimed concentration of 1-5% w/w glufosinate(see above Examiner’s regarding G1 and G2 supporting 1-5% w/w glufosinate).
Election Status
The elected invention comprising glufosinate and dichlobenil into a single foam formulation for controlling root growth in sewer pipes is not is not allowable. See rejection above.
Allowable Subject Matter
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Telephonic Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALTON NATHANIEL PRYOR whose telephone number is (571)272-0621. The examiner can normally be reached 7-4:00 M-F.
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/ALTON N PRYOR/Primary Examiner, Art Unit 1616