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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/20/2026 has been entered.
Status of Claims
Receipt of Remarks/Amendments filed on 04/20/2026 is acknowledged. Claims 11 and 14 are amended and claims 1-10, 12-13, and 17-20 are canceled. Claims 11 and 14-16 are currently pending and are examined on the merits herein.
Priority
The instant application, filed 07/29/2020, claims priority from Provisional Applications No. 62/879,812, filed 07/29/2019, and 62/905,040, filed 09/24/2019.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/08/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Objections/Rejections
Claims 11 and 14-17 were rejected under 35 U.S.C. 103 as being unpatentable over Kobyłecka. Applicant’s amendments to the claims have overcome the rejection and the rejection is withdrawn.
Claim Objections
Claim 11 is objected to because of the following informalities: The recitation of “the another metal” is grammatically awkward. The phrase “the other metal” or “another metal” would suffice. 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.
1. Claims 11 and 14-16 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.
Claim 11 recites “then substituting the another metal […] for providing the different herbicidal release rate”. Based on this phrasing it is unclear if “the another metal” is being substituted in for the initial metal or if “the another metal” is being substituted out.
The term “desired release rate” in claim 11 is a relative term which renders the claim indefinite. The term “desired” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As such, there is no way of determining what an undesired release rate is which would require the substitution step.
Claims 14-16 are rejected by virtue of their dependency on claim 11.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
1. Claims 11 and 14-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Smith, G., et al. (1991). The preparation and crystal structure of the calcium complex with the herbicide endothall, Catena-[diaqua(7-oxabicyclo-[2.2.1]-Heptane-2,3- dicarboxylato)calcium(II)], Polyhedron, Volume 10, Issue 13, Pages 1569-1572 (PTO-892), hereinafter Smith, or, in the alternative, under 35 U.S.C. 103 as obvious over Smith in view of MacDonald, G., et al. (2003). The influence of formulation, buffering, pH and divalent cations on the activity of endothall on hydrilla, J. Aquat. Plant Manage. 41: 13-18 (PTO-829), hereinafter MacDonald, and Kobyłecka, J., et al. (2009). Phenoxyalkanoic acid complexes: Part II. Complexes of selected bivalent metals with 2,4-dichlorophenoxyacetic acid (2,4D) and 2-(2,4-dichlorophenoxy)propionic acid (2,4DP), Thermochimica Acta, Volume 482, Issues 1–2, Pages 49-56 (IDS dated 01/22/2021), hereinafter Kobylecka.
Smith discloses a calcium complex with the herbicide endothall (abstract).
Regarding claim 11: The herbicide Endothall is also known as 7-oxabicyclo-[2.2.1]-heptane-2,3-dicarboxylic acid (p. 1569, left col., para. 1), therefore reading on a herbicide having a carboxyl group, as claimed. The complex was prepared by combining a 50% aqueous ethanolic solution of Endothall with excess solid calcium carbonate (p. 1569-1570, bridging para.). Calcium carbonate provides a Ca2+ cation, as is known in the art, which reads on a metal having at least a +2 oxidation state. The solution was then filtered and concentrated to give crystals suitable for structural determination (p. 1569-1570, bridging para.). Overall, the preparation reads on a process of making an herbicidal solid composition comprising combining a herbicide as claimed with a metal as claimed. While different calcium salts were used as starting materials, the Calcium-Endothall complex of Smith is the same as the Ca-Endothall complex generated in Example 17 of the instant specification and will therefore also be soluble in deionized water as evidenced by Example 17. "Products of identical chemical composition cannot have mutually exclusive properties." See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 14 and 15: The structure of the title compound [Ca(C8H8O5)(H2O)2], involves oxygens of both carboxylate groups and the bridging ether oxygen of the endothall ligand and two coordinated water molecules, completing an irregular seven-coordination about calcium (Discussion, para. 1). Carboxylate groups are the deprotonated form of a carboxylic acids, as is known in the art.
Regarding claim 16: The complex discussed above comprises calcium. Copper(II)-Endothall complexes are also known in the art (Discussion, para. 1; p. 1571, right col., para. 2).
Regarding the recitation of “wherein the metal can be substituted for another metal […] for providing a different herbicidal release rate”, such a phrase does not specifically define an active step, but states that the metal “can be substituted” for the intended purpose of “providing a different herbicidal release rate”. The MPEP states that "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Regarding the active step of substituting one metal for another, the claim recites “when the herbicidal release rate is not a desired release rate, then substituting the another metal […] for providing the different herbicidal release rate, and repeating the process until another metal provides the desired release rate”. It is within the broadest reasonable interpretation that such a substitution is not required in the case where the herbicidal release rate is already the desired one. Since “desired release rate” is not defined, one of ordinary skill in the art can operate under the assumption that the desired release rate is already met in the disclosure of Smith and there is no requirement for one of ordinary skill in the art to substitute one metal for another. As such, every limitation of the instant claims is met.
In the case, however, that the release rate is not the desired release rate, Smith differs from the instant invention in that Smith does not explicitly teach substituting one metal for another to provide a different release rate and repeating the process until the other metal provides the desired release rate, as recited in claim 11.
McDonald discloses the influence of divalent cations on the activity of endothall on Hydrilla (title). To elucidate the activity of endothall, several endothall formulations were evaluated for their effects on ion leakage, oxygen consumption and photosynthetic oxygen evolution from hydrilla shoot tips (abstract). 2 mM concentrations of monovalent and divalent cations were tested for their effects with all endothall formulations (p. 14, right col., para. 2). Overall, the addition of ammonium sulfate and the divalent cations iron, calcium or magnesium caused a dramatic increase in activity across all formulations of endothall (p. 15, right col., para. 1). Table 4 illustrates that ferrous sulfate, magnesium chloride, and calcium chloride were each added to the treatment solutions of endothall to result in different ion leakage values depending on the divalent cation added (Table 4). While complexation between these divalent cations and endothall is not explicitly taught, it would inherently occur to some degree when the endothall salts are present in the same solution as the divalent cations given the known complexation between endothall and divalent cations taught by Smith above.
Kobylecka discloses the synthesis and water solubility of seven solid complexes: Hg(II), Fe(II), Ca(II) and Mg(II) complexes with 2,4D and Hg(II), Fe(II) and Ca(II) complexes with 2,4DP as well as previously described Cu(II), Zn(II), Cd(II), Pb(II), Mn(II), Co(II) and Ni(II) complexes with both ligands (abstract). 2,4-dichlorophenoxyacetic (2,4D), 2-(2,4-dichlorophenoxy)propionic (2,4DP), 4-chloro-2-methylphenoxyacetic (MCPA) and 4-chloro-2-methylphenoxy-propionic (MCPP) acids are widely used for protection of crops and water plants control. Due to the presence of the carboxylate group in their structure, the compounds can react with metal ions to form complexes which are sparingly soluble in water (Introduction, para. 1).Twenty one solid compounds of the general formula ML2·nH2O, where M = Cu(II), Zn(II), Cd(II), Hg(II), Pb(II), Mn(II), Fe(II), Co(II), Ni(II), Ca(II), Mg(II), L = 2,4D or 2,4DP and n = 0–6 were obtained resulting in the compounds of tables 1-2 (3.1, para. 1). Kobylecka discloses the water solubility of each complex (Tables 1-2; 3.1). Water solubility of the obtained complexes varies considerably (Table 1, Table 2) and according to the increasing S (solubility) value they can be put in the following way:
2,4D Hg < Pb < Cu < Cd < Fe < Co < Ni < Zn < Ca < Mn < Mg
2,4DP Hg < Pb < Fe < Ca < Co < Cu < Ni < Cd < Zn < Mn
It is therefore evidence from Kobylecka that the identity of the divalent metal cation in a metal-carboxylate herbicide complex will impact solubility.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to substitute the calcium cation in the endothall complex of Smith with any of the other known divalent metal cations taught by McDonald or Kobylecka, since these divalent cations are known in the art for modulating the activity of endothall, as taught by McDonald, and impacting the solubility of carboxylate herbicides, as taught by Kobylecka. First, one of ordinary skill in the art could have performed simple substitution of one known divalent cation for another to predictably yield a metal-endothall complex with a different activity and solubility. Given that McDonald teaches different divalent cations to impact endothall activity, and Kobylecka teaches different divalent cations to impact solubility, one of ordinary skill in the art would have found it obvious to optimize the endothall-metal pairing until a composition having the desired properties is reached. The optimization of a result effective parameter, such as activity or solubility, is considered within the skill of the artisan. See, In re Boesch and Slaney (CCPA) 204 USPQ 215. This is what research chemists do, optimization of result-effective variables through routine experimentation (MPEP 2144.05 IIA and B). While McDonald and Kobylecka do not explicitly teach the metal identity to impact release rate, the modification of release rate would naturally flow from performing the above optimization. Substituting the metal, even if motivated by activity or solubility, would necessarily result in a different herbicidal release rate, as evidenced by the instant specification and claimed method.
One of ordinary skill in the art would have had a reasonable expectation of success in performing the above optimization since endothall is known to coordinate to a variety of divalent cations due to the presence of carboxylate groups.
Response to Arguments
Applicant’s arguments with respect to the previous rejection of claims 11 and 14-16 under 35 USC 103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
While Kobylecka is still relied on as a supporting reference, the teaching of “endothall” is found in the newly applied primary reference Smith. Kobylecka is now relied on for a technical teaching of how different divalent metal cations impact the solubility of a carboxylate herbicide.
Conclusion
No claims allowed.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
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