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 the Claims
Claims 2-5, 7-8 and 10 have been cancelled in a previous communication.
Claims 1, 6, 9, and 11 are pending and currently under examination.
All rejections not reiterated have been withdrawn.
Claim Objections
Claim 11 is objected to because of the following informalities: Claim 15 recites “evinced” in line 7, this appears to be a typographical error. Amending the claim to read “evidenced” would be remedial. Appropriate correction is required.
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 1, 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Nevill et al. (US20020004457A1, Published 01/10/2002).
Applicant’s invention
Applicants claims are drawn to a synergistic combination comprising: (a) sulfentrazone; (b) metribuzin; and, (c) clomazone; and, wherein the combination provides synergistic weed control, as evidenced by an observed percent control that exceeds an expected percent control calculated from the individual components.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1 and 11, Nevill teaches selectively controlling undesirable vegetation in crops of useful plants resistant to protoporphyrinogen oxidase inhibitors, for example maize, sugar beet, soya beans, rape, cotton, sunflowers, cereals, rice and sugar cane (paragraph [0001]). Neville also teaches a novel synergistic composition for selectively controlling weeds in crops of useful plants resistant to protoporphyrinogen oxidase inhibitors (paragraph [0008]), wherein a) a herbicide which inhibits the action of protoporphyrinogen oxidases, and b) at least one further pesticide selected from the group consisting of co-herbicides, fungicides and insecticides/acaricides (paragraphs [0009-0010]); wherein among the imides, particularly preferred protoporphyrinogen oxidase inhibitors are, for example sulfentrazone (paragraph [0014]). Neville continues to teach that the preferred co-herbicides under b) can be clomazone and metribuzin (paragraph [0018]); wherein the following combinations of the compounds under a) with the co-herbicides under b) have been found to be very particularly effective synergistic compositions in crops such as sulfentrazone + clomazone; and sulfentrazone + metribuzin (paragraph [0047]). Neville further teaches the composition according to the invention can be used against a large number of economically important weeds, such as Ipomoea, Amaranthus, and Setaria, wherein the invention is suitable for all economically customary application methods, for example pre-emergent application, post-emergent application and seed dressing; wherein the invention is suitable for controlling weeds in crops useful plants resistant to protoporphyrinogen oxidase inhibitors such as soya beans (paragraph [0031]).
Regarding claim 6, Neville teaches the compositions can also comprise further additives, such as stabilizers, for example epoxidized or non-epoxidized vegetable oils (epoxidized coconut oil, rapeseed oil or soya oil), defoamers, for example silicone oil, preservatives, viscosity regulators, binders, tackifiers and fertilizers (i.e., agrochemically acceptable excipients) (paragraph [0081]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Neville does not disclose a single embodiment or example where every limitation recited in the instant claims is taught.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have a synergistic herbicidal combination comprising sulfentrazone, metribuzin, and clomazone in Nevill’s herbicidal synergistic composition for controlling broad-leaved weeds. The artisan of ordinary skill would have been motivated to do so because Nevill teaches a novel synergistic composition for selectively controlling weeds in crops of useful plants resistant to protoporphyrinogen oxidase inhibitors (paragraph [0008]), wherein among the imides, particularly preferred protoporphyrinogen oxidase inhibitors are, for example sulfentrazone (paragraph [0014]); wherein the following combinations of the compounds under a) with the co-herbicides under b) have been found to be very particularly effective synergistic compositions in crops such as sulfentrazone + clomazone; and sulfentrazone + metribuzin (paragraph [0047]). Neville further teaches the composition can be used against economically important weeds, such as Ipomoea, Amaranthus, and Setaria, wherein the invention is suitable for pre-emergent application, post-emergent application and seed dressing; wherein the invention is suitable for controlling weeds in crops useful plants resistant to protoporphyrinogen oxidase inhibitors such as soya beans (paragraph [0031]). The skilled artisan would have had a reasonable expectation of success because Nevill teaches having the combination of sulfentrazone with clomazone and sulfentrazone with metribuzin, and the prior art directs the artisan of ordinary skill to see synergistic combinations for selectively controlling weeds in crops of useful plants resistant to protoporphyrinogen oxidase inhibitors (paragraph [0008]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nevill et al. (US20020004457A1, Published 01/10/2002) in view of Rowley et al. (US2017/0290328 A1, Published October 12, 2017).
Applicant’s invention
Nevill renders obvious all the limitations of instant claim 1. Applicants claim 9 further adds the limitation of a kit-of-parts comprising: a) a first container comprising sulfentrazone; b) a second container comprising metribuzin and clomazone and c) an instruction manual instructing a user to admix the contents of the first and second containers.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 9, Nevill teaches the formulations, i.e. the compositions, preparations or combinations comprising the protoporphyrinogen oxidase inhibitors a) and the co-herbicides b) and, if appropriate, one or more solid or liquid formulation auxiliaries, are prepared in a manner known per se, for example by intimately mixing and/or grinding the active compounds with the formulation auxiliaries, for example solvents or solid carriers (paragraph [0075]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Neville does not teach a kit-of-parts comprising: a) a first container comprising sulfentrazone; b) a second container comprising metribuzin and clomazone and c) an instruction manual instructing a user to admix the contents of the first and second containers. However this deficiency is cured by Rowley.
In the analogous art of herbicidal combinations, Rowley teaches the use of sulfentrazone, which is a triazolone herbicide (page 2, paragraph [0018]), metribuzin, (page 3, paragraph [0018]), and clomazone (page 3, paragraph [0018]); and also teaches the compositions are provided in a kit or system in combination with a device for applying the composition or dilution thereof (i.e., kit-of-parts) (page 8, paragraph [0051]). It is known in the art that kits of this nature always come with instruction manuals, absent evidence to the contrary.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to put Neville’s herbicidal synergistic composition for controlling broad-leaved weeds into a kit-of-parts. Nevill teaches a novel synergistic composition for selectively controlling weeds in crops of useful plants resistant to protoporphyrinogen oxidase inhibitors (paragraph [0008]), wherein the following combinations of the compounds under a) with the co-herbicides under b) have been found to be very particularly effective synergistic compositions in crops such as sulfentrazone + clomazone; and sulfentrazone + metribuzin (paragraph [0047]); and that are prepared in a manner known per se, for example by intimately mixing and/or grinding the active compounds with the formulation auxiliaries (paragraph [0075]). One would have understood in view of Rowley that a herbicidal combination of sulfentrazone, which is a triazolone herbicide (page 2, paragraph [0018]), metribuzin, (page 3, paragraph [0018]), and clomazone (page 3, paragraph [0018]) can be formulated; and also teaches the compositions are provided in a kit or system in combination with a device for applying the composition or dilution thereof (i.e., kit-of-parts) (page 8, paragraph [0051]). It would have been obvious to one of ordinary skill in the art to put Neville’s herbicidal synergistic composition for controlling broad-leaved weeds into a kit-of-parts because Neville teaches combinations of sulfentrazone + clomazone and sulfentrazone +metribuzin, wherein the formulation can be prepared by mixing or grinding the active compounds and Rowley teaches sulfentrazone, clomazone, and metribuzin and teaches that the composition can be provided in a kit or system.
Response to Arguments
Applicant’s arguments with respect the claims under 35 USC 103 rejection have been considered but are moot because of the new ground of rejection does not apply to the rationale underlying the obviousness conclusion. The new grounds of rejection necessitated by amendment have addressed the arguments. Insomuch as Applicant's are applicable to the new grounds of rejection, they are addressed here:
On pages 3-6 of Applicants remarks, Applicants argue that the art of multi-active herbicide combinations are unpredictable and submits Zhang and Damalas which clearly demonstrate that a person of ordinary skill in the art has no expectations of success even when combining “known active” type ingredients. Applicants also argue that Nevill only evaluates pairwise combinations and does not suggest adding the third herbicide to achieve synergy.
With regards to applicant’s arguments that the prior art does not provide reasonable expectation of success, the examiner considers Nevill to provide an expectation of success because Nevill teaches having the combination of sulfentrazone with clomazone and sulfentrazone with metribuzin, and the prior art directs the artisan of ordinary skill to see synergistic combinations for selectively controlling weeds in crops of useful plants resistant to protoporphyrinogen oxidase inhibitors (paragraph [0008]). "Obviousness does not require absolute predictability of success…all that is required is a reasonable expectation of success." In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009). Neville already directs one of ordinary skill to two of the three claimed substances: sulfentrazone with clomazone and sulfentrazone with metribuzin. The addition of the third herbicide is suggested because the herbicides are known for the same purpose. The examiner points out that it is known in the art that each herbicide interacts with sulfentrazone, therefore, it would have been obvious to one of ordinary skill in the art to expect that the combination of all three herbicides would be successful and at least have an additive effect because the prior arts teach each one of the herbicides being put together in a formulation to work together.
On pages 7-9 of Applicants remarks, Applicants argue that Applicant’s claimed combinations yield unexpected results, as demonstrated by the data of record, wherein Examples 1-3 provides documentation of the synergistic effect of sulfentrazone, metribuzin, and clomazone vis-à-vis effect exhibited by individual herbicides.
Insomuch as this may be an assertion of unexpected results, please refer to MPEP 716.02(b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims. Applicants refer to Examples 1-3 with respect to results observed that the triple combination is not only effective and synergistic in controlling the weeds but also persistent in providing the control for a longer duration of time. The Examiner points out that the Applicants have not provided a side-by-side comparison to the closest prior art wherein Nevill teaches a novel synergistic composition for selectively controlling weeds in crops of useful plants resistant to protoporphyrinogen oxidase inhibitors (paragraph [0008]), wherein the following combinations of the compounds under a) with the co-herbicides under b) have been found to be very particularly effective synergistic compositions in crops such as sulfentrazone + clomazone; and sulfentrazone + metribuzin (paragraph [0047]). Therefore, the synergistic effect of sulfentrazone with other herbicidally active compounds from various classes of substances were known in the art.
Conclusion
No claims are allowed .
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 AFUA BAMFOAA BOATENG whose telephone number is (703)756-1358. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on (571) 272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
AFUA BAMFOAA BOATENG Examiner, Art Unit 1617
/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617
Prosecution Insights