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 .
DETAILED ACTION
This action is in response to Applicant’s amendment filed November 13, 2025 in reply to the Non-final Office Action mailed April 23, 2025. Claims 4, 12, 13, 18, 23, and 24 have been canceled. Claims 5-7, 10, 11, 14-17, and 19-22 have been withdrawn. Claims 1-3, 8, 9, and 25-27 are under examination.
Withdrawal of Prior Claim Objections
Claim 5 has been satisfactorily amended to contain proper status identification. Therefore, the objection to claim 5 presented in the Non-final Office Action mailed April 23, 2025 is hereby withdrawn.
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.
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 1-3, 8, 9, and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Ovalle Orjuela et al. (U.S. Patent Application Pub. No. 2014/0323298), in view of Sixl (U.S. Patent No. 6,479,432).
Applicant Claims
Applicant’s elected subject matter is directed to an emulsifiable concentrate comprising at least 875 g/L haloxyfop-methyl; 10-18 wt% one or more solvents including ethylene glycol ethers; and 1.3-10 wt% one or more nonionic surfactants including polyoxyalkylene fatty alcohol ethers; wherein the viscosity is less than 3 Pa-s at a temperature of -5 C.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Ovalle Orjuela et al. disclose an herbicidal composition, e.g. an emulsifiable concentrate, comprising an active including haloxyfop-methyl preferably in an amount of up to 90% (i.e. 90 g/100 ml, or 900 g/L), and further comprising a carrier which can include e.g. an organic solvent, e.g. diethylene glycol monomethyl ether, and a nonionic surfactant, e.g. tridecyl alcohol-C16 ethoxylate (abstract; paragraphs 0004, 0018, 0046, 0048, 0050, 0053).
Sixl discloses an herbicidal composition comprising an active including e.g. haloxyfop-methyl, and further comprising a carrier which can include preferably 10-90 wt% solvent, including e.g. ethylene glycol monomethyl ether, and preferably 0.5-20 wt% of a nonionic surfactant, e.g. etherified ethoxylated fatty alcohols; wherein the composition is storage-stable (abstract; Col. 1, lines 5-10; Col. 2, lines 47-65; Col. 6, lines 66-67; Col. 7, lines 29-31; Col. 11, lines 40-50; Col. 12, lines 50-59; Col. 13, lines 4-18; Col. 14, lines 7-10).
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Ovalle Orjuela et al. do not explicitly disclose that the solvent is present in the amount of 10-18 wt% and that the nonionic surfactant is present in the amount of 1.3-10 wt%. These deficiencies are cured by the teachings of Sixl.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Ovalle Orjuela et al. and Sixl, outlined supra, to devise Applicant’s claimed emulsifiable concentrate composition.
Ovalle Orjuela et al. disclose an herbicidal composition, e.g. an emulsifiable concentrate, comprising an active including haloxyfop-methyl preferably in an amount of up to 90% (i.e. 90 g/100 ml, or 900 g/L), and further comprising a carrier which can include e.g. an organic solvent, e.g. diethylene glycol monomethyl ether, and a nonionic surfactant, e.g. tridecyl alcohol-C16 ethoxylate, wherein the composition exhibits enhanced control of undesirable vegetation. Since Sixl discloses that an herbicidal concentrate composition comprising e.g. haloxyfop-methyl, preferably 10-90 wt% solvent, including e.g. ethylene glycol monomethyl ether, and preferably 0.5-20 wt% of a nonionic surfactant, e.g. etherified ethoxylated fatty alcohols, is storage-stable in liquid form; one of ordinary skill in the art would thus be motivated to employ the solvent and the nonionic surfactant in the Ovalle Orjuela et al. composition in the amounts of 10-90 wt% and 0.5-20 wt%, respectively, with the reasonable expectation that the resulting composition will be storage-stable in liquid form, and will exhibit upon use enhanced control of undesirable vegetation.
Further, with a concentrated active amount up to 90 wt%, it would be obvious that the amounts of the solvent and the nonionic surfactant employed would need to be set at levels towards the lower end of the ranges 10-90 wt% and 0.5-20 wt%, respectively, e.g. 10-18 wt% and 0.5-10 wt%, respectively.
Since the composition one of ordinary skill in the art, in following the teachings of the cited prior art, would thus arrive at is the same as the claimed composition, with the same requisite elements in the same requisite amounts, the properties of the composition must be the same as well, including the viscosity of less than 6.7 Pa-s at a temperature of -5 C.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed November 13, 2025 have been fully considered but they are not persuasive.
i) Applicant contends that “Ovalle Orjuela is silent regarding the viscosity of the disclosed herbicide compositions” and “Sixl does not cure the deficiencies”; that “the disclosed compositions of Orvalle Orjuela may not inherently have the claimed viscosity”; that “it is well known that solutions containing a solute that is a solid at room temperature typically become more viscous as the concentration of the solute increases, particularly when the solute is an organic molecule”; and that “a skilled artisan, preparing an emulsifiable concentrate containing haloxyfop ester at a concentration of at least 875 g/L according to the combined teachings of Orvalle Orjuela and Sixl, might reasonably expect that such a solution would also have a high viscosity”.
The Examiner, however, would like to point out the following:
1. One of ordinary skill in the art, in view of the cited prior art, could arrive at the claimed composition comprising at least 875 g/L of an haloxyfop ester, 10-18 wt% solvent, e.g. diethylene glycol monomethyl ether, and 1.3-10 wt% of a nonionic surfactant, e.g. tridecyl alcohol-C16 ethoxylate.
2. Hence, the composition one of ordinary skill in the art would thus arrive at contains the same constituents in the same amounts as the claimed composition. The claimed composition is thus prima facie obvious in view of the cited prior art, and this composition is not suddenly deemed a patentable advance simply because Applicant has set a limit on the viscosity.
3. The same constituents in the same amounts must have the same viscosity. For example, 875 g/L haloxyfop-methyl has the same viscosity for Orvalle Orjuela as it does for Applicant. Further, as one of ordinary skill in the art would generally know, pure diethylene glycol monomethyl ether has a viscosity of about 3.9 mPa-s at 20C (i.e. 0.0039 Pa-s), and pure tridecyl alcohol-C16 ethoxylate has a viscosity of about 50-300 mPa-s at 20C (i.e. 0.05-0.3 Pa-s). The only additional agent that Orvalle Orjuela requires is oxyfluorfen, which has a viscosity of about 10 mPa-s (i.e. 0.01 Pa-s). Viscosities of 0.0039 Pa-s, 0.05-0.3 Pa-s, and 0.01 Pa-s all add up to, at most, about 0.3139 Pa-s, which is but a tiny fraction of the claimed viscosity of less than 6.7 Pa-s. Moreover, these agents are present in small amounts in the composition, since the haloxyfop-methyl is the predominant constituent. Hence, Applicant’s assertion that the composition one of ordinary skill in the art would thus arrive at in view of the cited prior art does not have a viscosity of less than 6.7 Pa-s simply doesn’t add up, even with the higher viscosities expected at -5C.
ii) Applicant contends that while the Office alleges that “Ovalle Orjuela discloses herbicide compositions containing haloxyfop-methyl at concentrations up to 90 or 98 percent by weight”, it is noted that “the compositions of Ovalle Orjuela comprise at least two herbicide active ingredients, oxyfluorfen and haloxyfop-methyl” and “that the weight ratio…can be from about 1:3 to about 200:1”; therefore, “when the concentration of the active ingredients in the herbicide composition is 98 weight percent, the maximum concentration of haloxyfop-methylo alone…is 73.5 percent”; and thus, from suitable calculations, it can be determined that “Ovalle Orjuela teaches that the maximum possible concentration of haloxyfop-methyl in the compositions taught therein is 860 g/L”, which is “less than the 875 g/L of the present claims, and also less than the 900 g/L of the present claims and the working examples of the present application”.
The Examiner, however, would like to point out the following:
1. Applicant calculated that for the 900 g/L haloxyfop concentration in claim 2, the equivalent weight percent of haloxyfop-methyl is thus 76-77%, as shown in Tables 1A-1F of the original specification. Further, Applicant has determined that the density of the composition is 1.17 kg/L. Based on Applicant’s assertion that Ovalle Orjuela provides for a maximum haloxyfop-methyl weight percent of 73.5%, Applicant calculated using the same density value of 1.17 kg/L that the equivalent maximum haloxyfop concentration in Ovalle Orjuela is about 860 g/L.
2. However, claims 1, 3, 8, 9, and 25-27 (i.e. in other words, all claims under examination, except claim 2) merely require 875 g/L haloxyfop concentration, which would certainly have an equivalent weight percent of haloxyfop-methyl of less than 76-77% (i.e. which is the equivalent weight percent for the 900 g/L haloxyfop concentration in claim 2). Employing the same density value of 1.17 kg/L, it can be determined that for the 875 g/L haloxyfop concentration, the equivalent weight percent of haloxyfop-methyl is thus about 74-75%. Even if Applicant’s alleged assertion that Ovalle Orjuela provides for a maximum haloxyfop-methyl weight percent of 73.5% (i.e. about 74%), this is not patentably distinct from the claimed 875 g/L haloxyfop concentration, which has an equivalent weight percent of haloxyfop-methyl of about 74-75%.
3. Further, Applicant’s assertion that Ovalle Orjuela provides for a maximum haloxyfop-methyl weight percent of 73.5% is, as Applicant expressly states, rooted in paragraphs [0019]-[0022] of Ovalle Orjuela. Applicant contends that these paragraphs establish that Ovalle Orjuela is strictly limited to an oxyfluorfen to haloxyfop-methyl weight ratio from about 1:3 to about 200:1. However, this does not appear to be the case, since those paragraphs disclose merely “certain embodiments” only. In other words, even though Ovalle Orjuela does require both oxyfluorfen and haloxyfop-methyl, and even if the combination of the two can be present at 98 weight percent, as provided in paragraph [0053], it can only be concluded that the haloxyfop-methyl can be present in amounts that approach 98 weight percent. One of ordinary skill in the art would simply not conclude that the absolute maximum weight percent of haloxyfop-methyl is strictly limited to 73.5%. Indeed, even if haloxyfop-methyl is present at a weight percent of e.g. only 80%, this would meet the claim limitation, in view of Applicant’s showing that for the at “least 900 g/L” haloxyfop concentration in claim 2, the equivalent weight percent of haloxyfop-methyl is thus at least 76-77%.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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/DAVID BROWE/Primary Examiner, Art Unit 1617
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