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 .
Status of Claims
Receipt of Remarks filed on 08/08/2025 is acknowledged. Claims 11 and 14-17 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 statements filed on 08/08/2025 fail to comply with 37 CFR 1.97(c) because they lacks the timing fee set forth in 37 CFR 1.17(p) or a timing statement as specified in 37 CFR 1.97(e). It has been placed in the application file, but the information referred to therein has not been considered.
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.
Claims 11 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over 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.
Kobylecka discloses the synthesis and water solubility of seven new 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).
Phenoxyalkanoic acids, containing chlorine and/or methyl group in 2 and 4 position of benzene ring, show herbicidal properties. These compounds are selective herbicides because they destruct effectively broadleaf plants whereas the monocotyledonous plants are resistant to them. 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).
The complexes were prepared by reaction of sodium salts of 2,4D or 2,4DP with metal nitrates in a molar ratio 2:1. The 2,4D and 2,4DP acids are sparingly soluble in water and they were used in the synthesis after transformation into soluble sodium salts (2.2, para. 1). The sodium salts of 2,4D and 2,4DP read on the carboxyl herbicide of claims 11 and 17, wherein the carboxyl is a deprotonated carboxylic acid as recited in claims 14-15. Samples of metal nitrates were dissolved in 20 mL of distilled water and added to Na-2,4D or Na-2,4DP solutions, which caused precipitation of the compounds under study. The precipitates were filtered after 24 h, washed with a small amount of distilled water and dried in air at room temperature (2.2, 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), each reading on a herbicidal solid composition as recited in claim 11. The metals (M) of each solid compound read on a metal having a least a +2 oxidation state, as recited in claim 11, which are further selected from those recited in claim 16. As such, the synthesis method of Kobylecka reads on a process of making a herbicidal solid composition containing a commercial herbicide and a metal having at least a +2 oxidation state.
Regarding the release rate, 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 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
The teachings of Kobylecka differ from that of the instantly claimed invention in that Kobylecka does not explicitly teach a process for providing a desired release rate, wherein if the release rate is not the desired release rate, then substituting another metal having at least a +2 oxidation state for providing a different release rate and repeating the process until the metal provides the desired release rate as recited in claim 11.
Applicant’s own specification teaches solubility profiles much like the ones taught by Kobylecka above. According to the applicant, “These solubility profiles [of 2,4D and metal pairings] provide a variety of avenues to easily modify the solubility of carboxylic acid and carboxylate containing molecules in water and subsequently, their release rates” (Detailed Description, para. 2). Applicant also asserts that “The user of this method [i.e., the instant invention] selects a molecular pairing in which an attractive interaction between the pair enables the user to controllably increase or decrease the solubility and subsequent release rate of the molecule or atom of interest” (Summary). As such, applicant has evidenced that herbicide-metal complexes with different solubilities will inherently possess different release rates.
Kobylecka teaches the process of making metal complexes of 2,4D and 2,4DP, and recognizes the metal cations to be Cu(II), Zn(II), Cd(II), Hg(II), Pb(II), Mn(II), Fe(II), Co(II), Ni(II), Ca(II), Mg(II). Kobylecka further teaches the incremental increase or decrease in solubility of each complex depending on the metal present. Thus, it would have been obvious before the effective filing date of the claimed invention to substitute one metal for another metal in order to adjust solubility since it is a simple substitution of one known element for another to yield predictable results. See MPEP 2143. Each metal gives a herbicide-metal complex with a different solubility, meaning each complex will inherently have a different release rate as evidenced by applicant’s own specification. Kobylecka teaches the starting points to figure out optimal metal-herbicide (2,4D or 2,4DP) combinations depending on the solubility/release rate desired. It would have been obvious to find the most suited combination based on the desired solubility and subsequent release rate, as well as the target plant. The optimization of a result effective parameter 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). One of ordinary skill in the art would have had a reasonable expectation of success since Kobylecka teaches the synthesis of metal-herbicide complexes and their respective solubilities. Adjusting the solubility of the composition and subsequently its release rate by substituting metals would have been well within the skills of the ordinary artisan.
Regarding the solubility of the herbicide-metal composition in deionized water, applicant’s specification discloses tablets containing preformed 2,4D complexes such as Na(2,4D), Cu(2,4D), Ca(2,4D), Mg(2,4D), and Fe2+(2,4D) (p. 14, Ex. 8). Release rates were determined for each formulation by solubilizing the tablets in deionized water (p. 14, Ex. 8). Kobylecka does not explicitly teach its herbicide-metal compounds to be soluble in deionized water, but they are taught to be soluble in water. Given the structural similarities between the preformed 2,4D complexes of applicant’s specification and the 2,4D-metal complexes of Kobylecka (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), the examiner concludes that the compounds of Kobylecka would be inherently soluble in deionized water as evidenced by applicant’s own specification. When the composition made obvious by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Response to Arguments
1. Applicant's arguments filed 08/08/2025 have been fully considered but they are not persuasive:
(1) Applicant argues that the motivation of Kobylecka to calculated metal/2,4D solubility is to determine how much pollution will be produced comprising the complex (p. 5 of Remarks). Applicant asserts that the instant invention describes the process of making the herbicide 2,4D completely bioavailable to aquatic plants over a period of time using herbicide formulations with adjustable release rates. As such, a person having knowledge in the herbicide art who wants to make a bioavailable herbicide aquatic treatment would not consider Kobylecka which teaches the formation of a waste product in the soil (p. 6 of Remarks). Applicant provides a Mirzaei review article and discusses how Mirzaei shows that the accepted teaching at the time of filing was that cations reduce herbicide performance which is in contrast to Applicant’s use of cations. Applicant also cites Purdue University for teaching that hard water cations reduce herbicide efficacy (p. 7 of Remarks).
In response to Applicant’s argument that that disclosure of Kobylecka has a different motivation to calculate solubility as compared to the instant invention, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). It is noted that the motivation found in the prior art is not required to be the same as the motivation for arriving at the instantly claimed invention. In this case, Kobylecka teaches solubility profiles of metal/2,4D complexes. Regardless of what the profiles where calculated for, these solubility profiles teach that solubility can be adjusted by the metal present in a metal-2,4D complex. Thus, it would have been obvious to one of ordinary skill in the art to substitute one metal for another metal in order to adjust the solubility in a 2,4D-metal complex. Kobylecka teaches the starting points to figure out optimal metal-herbicide (2,4D or 2,4DP) combinations depending on the solubility/release rate desired. It would have been obvious to find the most suited combination based on the desired solubility and subsequent release rate, as well as the target plant. The optimization of a result effective parameter is considered within the skill of the artisan. Additionally, the claimed process in and of itself relies on optimization by a person of ordinary skill in the art by reciting “repeating the process until the metal provides the desired release rate”. Thus, if the combination of 2,4D and +2 metals is taught in the prior art along with data for varying solubility/release rate, one of ordinary skill would be required to perform optimization in order to arrive at the claimed invention.
Regarding Applicant’s argument that a person having knowledge in the herbicide art who wants to make a bioavailable herbicide aquatic treatment would not consider Kobylecka, Examiner respectfully disagrees. As described in the instant claims, the invention is drawn to a process of making a herbicide that combines 2,4D with +2 metals until a desired release rate is obtained. The release rate incrementally increases or decreases by substituting the metal. As discussed above, solubility directly translates to release rate, especially in an aquatic treatment. As such, one of ordinary skill in the art would reasonably seek out solubility profiles of 2,4D with +2 metals as taught by Kobylecka.
In response to Applicant’s citation of Mirzaei and Purdue University, it is noted that the claims are not drawn to “increasing herbicide performance” or “increasing bioavailability” they are drawn to “adjusting release rate”. Furthermore, the instant process is a process of making a herbicide, not using one. The structural components of the instant process are combining a metal having a +2 oxidation state with a commercial herbicide, which Kobylecka explicitly teaches, and substituting said metal for another to provide a herbicidal release rate that incrementally increases or decreases, wherein this process is repeated until the metal provides the desired release rate. As discussed above, Kobylecka teaches all the necessary information to perform the optimization of release rate through substituting metals. The desired release rate is not defined by the claims.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 7:30-5 (Flex).
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616