DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Applicants’ amendment filed 1/21/2026 has been entered. Claims 7, 11 and 12 were amended. New claims 35-44 have been added. Claims 1, 3 and 5-44 are pending.
Withdrawn rejections
Applicant's amendments and arguments filed 1/21/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 5-30, 33-38 and 41-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 9,414,593 (herein ‘593). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to emulsifiable concentrates comprising pinoxaden, a solvent selected from benzyl alcohol, 2-methyl-2,4-pentanediol and tetrahydro-2-furyl-methanol (tetrahydrofurfuryl alcohol) with an optional emulsifier and a water-insoluble solvent that is preferably of aromatic hydrocarbons. The patented claims are drawn to a liquid formulation comprising 0.5-50% pinoxaden, 5-40% tris-(2-ethylhexyl) phosphate adjuvant, 0.5-50% emulsifiers, 10-90% solvent, 0-80% water and 0-80% oil which encompassed the present invention. Claim 4 of ‘593 claim solvents selected from tetrahydrofurfuryl alcohol, 2-methyl-2,4-pentanediol and benzyl alcohol. Claim 17 of ‘593 claims further solvents selected from heavy aromatic hydrocarbon blends. Therefore, the present claims are prima facie obvious in view of ‘593.
Claims 1, 3, 5-9, 13-18, 20, 22-26, 35-38 and 41-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10,314,305 (herein ‘305). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to emulsifiable concentrates comprising pinoxaden, 2-methyl-2,4-pentanediol with an optional emulsifier and a water-insoluble solvent that is preferably of aromatic hydrocarbons. The patented claims are drawn to a mixture comprising pinoxaden, cloquintocet-mexyl, emulsifiers, 2-methyl-2,4-pentanediol and a mixture of heavy aromatic hydrocarbons. Claim 4 of ‘305 further specifics 5-50% 2-methyl-2,4-pentanediol. Claim 5 of ‘305 further specifics the mixture is in the form of an emulsifiable concentrate (EC). Therefore, the present claims are prima facie obvious in view of ‘305.
Response to Arguments
Applicant's arguments filed 1/21/2026 have been fully considered but they are not persuasive. Applicant indicates that a terminal disclaimer will be filed when claims are found allowable however this is fails to overcome the double patenting rejections. Therefore the rejections have been maintained.
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.
Claims 10 and 42-44 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 10 recites “one or more herbicides that are compatible with the 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester” which is indefinite. The metes and bounds of what the one or more herbicides encompass cannot be determined. The scope of the claim reads on compounds and combinations of compounds that cannot be deciphered. For the purpose of examination the term has been treated as reading on any agriculturally active compound other than pinoxaden.
Claim 42 recites “an alcohol in an amount sufficient to dissolve and stabilize” the active ingredient which is vague and indefinite. The metes and bounds of what is considered “sufficient to dissolve and stabilize” pinoxaden cannot be deciphered. For the purpose of examination the term has been treated and encompassing the range of from 1-97% by weight. Claims 43 and 44 are rejected for depending on rejected claim 42.
Response to Arguments
Applicant's arguments filed 1/21/2026 have been fully considered but they are not persuasive. With respect to claim 10, Applicant argues that the term “compatible” means that the herbicide combination is chemically stable without antagonism or phytotoxicity. The Examiner does not find this convincing since claims are interpreted in view of the specification without unnecessarily importing limitations from the specification into the claims. For the purpose of examination the term has been treated as reading on any agriculturally active compound other than pinoxaden.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 3, 5-18 and 20-44 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Haesslin et al. (WO 02/34048; published May 2, 2002).
Applicant’s Invention
Applicant claims a composition in the form of an emulsifiable concentrate comprising a) 1-50% by weight 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden); b) 1-97% by weight benzyl alcohol or 2-methyl-2,4-pentanediol; c) an emulsifier; and d) a water-insoluble solvent. (Claim 1)
Applicant claims a composition in the form of an emulsifiable concentrate comprising a) 3-30% by weight 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden); b) 10-30% by weight benzyl alcohol or 2-methyl-2,4-pentanediol; c) 2-30% by weight an emulsifier; and d) 10-70% by weight a water-insoluble solvent. (Claim 22)
Applicant claims an emulsifiable concentrate comprising a) 5-15% by weight pinoxaden, b) 10-30% by weight 2-methyl-2,4-pentanediol and c) 10-70% by weight a water-insoluble solvent of aromatic hydrocarbons. (claim 23)
Applicant claims an emulsifiable concentrate comprising a) 5-15% by weight pinoxaden, b) 10-30% by weight tetrahydro-2-furyl-methanol (tetrahydrofuryl alcohol) and c) 10-70% by weight a water-insoluble solvent of aromatic hydrocarbons. (claim 27)
Applicant claims an emulsifiable concentrate comprising a) 1-50% by weight pinoxaden, b)10-30% by weight diacetone alcohol and c) a water-insoluble solvent. (claim 31)
Applicant claims an emulsifiable concentrate comprising a) 1-50% by weight pinoxaden, b) a stabilizing alcohol component comprising tetrahydro-2-furyl-methanol (tetrahydrofuryl alcohol) and 2-methyl-2,4-pentanediol; and c) a water-insoluble solvent. (claim 33)
Applicant claims a method of controlling undesired plant growth comprising applying a herbicidally effective amount of the composition of claim 1 to plants or to the locus. (claim 21)
Applicant claims a composition in the form of an emulsifiable concentrate comprising a) 1-50% by weight 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden); b) 1-97% by weight alcohol; c) an emulsifier; and d) a water-insoluble solvent. (Claim 35)
Applicant claims a method of improving storage stability of pinoxaden comprising dissolving a composition comprising pinoxaden in an alcohol to form an emulsifiable concentrate (claim 40)
Applicant claims the composition prepared by the method of claim 40. (Claim 41)
Applicant claims a composition comprising a) 30-60% by weight water-insoluble solvent, b) 5-15% by weight 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden); and c) alcohol in an amount sufficient to dissolve and stabilize pinoxaden. (Claim 42)
Claims 16-18, 32, 43 and 44 are drawn to inherent properties of the formulations.
With respect to claims 1, 22, 23, 27, 31 and 33-42 of the instant application, Haesslin et al. teach agrochemical compositions in the form of a concentrate comprising a quinoline safener (abstract). Herbicides suitable for combination with the safeners include sulfonylureas, aryloxyphenoxypropionates, cyclohexanediones, arylcarboxylic acids and aryloxycarboxylic acids (page 4, paragraph 2). Particularly suitable herbicides include triasulfuron, tribenuron, and oxopyrazolin derivatives (page 4, paragraph 3). Suitable solvents mixed with the herbicides and safeners include aromatic hydrocarbons with boiling point from 180-210 degrees Celsius (Solvesso 150), hexylene glycol (2-methyl-2,4-pentanediol), and alcohols such as tetrahydrofuryl alcohol (tetrahydro-2-furyl-methanol) and diacetone alcohol (page 5, paragraph 2). Emulsifiable concentrates comprising 1-90%, preferably 5-20% active substances (herbicide and safener), 1-30%, preferably 10-20% surfactant and 5-94, preferably 70-85% liquid carrier (page 12, paragraph 7 through page 13, paragraph 1). Emulsion concentrates comprising a mixture of solvents 20% cyclohexanone and 16% aromatic hydrocarbon mixture C9-12; 4% castor oil polyglycol ether (emulsifier) and 50% active substances are disclosed (page 14, paragraph 1). The most preferred herbicide is pinoxaden (2,2-dimethylpropionic acid 8-(2,6-diethyl-4-methylphenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo[1,2-d][1,4,5]oxadiazepine-7-yl ester) and can be combined with a the safener cloquintocet-mexyl (page 18, Table 1, paragraph 3).
With respect to claim 21 Haesslin teach methods of controlling weeds in crops of useful plant comprising treating the useful plants or the area on which they are grown with a herbicidally effective amount of the herbicide (page 8, paragraphs 3 & 4).
Haesslin teach hexylene glycol (2-methyl-2,4-pentanediol), tetrahydrofuryl alcohol (tetrahydro-2-furyl-methanol) and diacetone alcohol are suitable solvents along with Solvesso 150, an aromatic hydrocarbon mixture with boiling point from 180-210 degrees Celsius. Haesslin also teach mixtures of solvents to prepare emulsifiable concentrates along with additional emulsifier and adjuvants.
Therefore, it would have been prima facie obvious to one of ordinary skill to use the teachings of Haesslin to formulate an emulsifiable concentrate comprising pinoxaden, a solvent selected from hexylene glycol (2-methyl-2,4-pentanediol), tetrahydrofuryl alcohol (tetrahydro-2-furyl-methanol), diacetone alcohol and mixtures thereof and water insoluble aromatic hydrocarbon solvent with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of the invention to combine the teachings of Haesslin to form emulsifiable concentrates comprising 5-20% Pinoxden, 10-20% surfactant and liquid carrier comprising a mixture of solvents selected from hexylene glycol (2-methyl-2,4-pentanediol), tetrahydrofuryl alcohol (tetrahydro-2-furyl-methanol), diacetone alcohol and mixtures thereof and water insoluble aromatic hydrocarbon solvent because Haesslin teach hexylene glycol (2-methyl-2,4-pentanediol), tetrahydrofuryl alcohol (tetrahydro-2-furyl-methanol), diacetone alcohol are suitable solvents and mixtures of solvents that are used to prepare emulsifiable concentrates of pinoxaden.
Response to Arguments
Applicant's arguments filed 1/21/2026 have been fully considered but they are not persuasive.
Applicant argues that claims 1, 31 and 33 require 1-50% pinoxaden, preferably 3-30% pinoxaden and more preferably 5-15% pinoxaden which has not been addressed by the examiner The Examiner is not persuaded by his argument because Haesslin teach emulsifiable concentrates comprising 1-90%, preferably 5-20% active substances (herbicide and safener), 1-30%, preferably 10-20% surfactant (emulsifiers) and 5-94, preferably 70-85% liquid carrier (water soluble solvents or alcohol) (page 12, paragraph 7 through page 13, paragraph 1). . In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 [R-5].
Applicant further argues that Haesslin discloses compositions which include quinoline safeners, not emulsifiable concentrates. The Examiner has maintained the 103 rejection in view of Haesslin because Haesslin teach hexylene glycol (2-methyl-2,4-pentanediol), tetrahydrofuryl alcohol (tetrahydro-2-furyl-methanol) and diacetone alcohol are suitable solvents combined with pinoxaden. Haesslin teach emulsion concentrates comprising a mixture of solvents 20% cyclohexanone and 16% aromatic hydrocarbon mixture C9-12; 4% castor oil polyglycol ether (emulsifier) and 50% active substances are disclosed (page 14, paragraph 1). Therefore the rejection has been maintained.
Claim 19 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Haesslin et al. (WO 02/34048; published May 2, 2002), as applied to claims 1, 3, 5-18 and 20-44, in view of Grayson (EP0520585; published December 30, 1992).
Applicant’s Invention
Applicant claims a composition in the form of an emulsifiable concentrate comprising a) 1-50% by weight 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden); b) 1-97% by weight benzyl alcohol or 2-methyl-2,4-pentanediol; c) an emulsifier; and d) a water-insoluble solvent. (Claim 1)
Haesslin et al. teach alcohol solvents but does not specify benzyl alcohol. It is for this reason that Grayson is joined.
Grayson teach fungicidal compositions which are applied to agricultural plants subject to fungal attack (page 2, lines 29-40). The formulations are applied with herbicides and the liquid formulations comprise benzyl alcohol as a suitable solvent (page 3, lines 20-32). Example 1 teaches an emulsifiable concentrate formulations comprising dimethomorph, surfactants, Solvesso and benzyl alcohol as a solvent (page 4, lines 15-47).
Both Haesslin and Grayson are drawn to agricultural emulsifiable concentrates comprising alcohol solvents. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Haesslin and Grayson to formulate an emulsifiable concentrate comprising benzyl alcohol as a solvent with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of the invention to combine the teachings of Haesslin and Grayson to include benzyl alcohol because Grayson teach that benzyl alcohol is a preferred solvent for formulating emulsifiable concentrates.
Claims 1, 3, 5-19, 21, 22 and 35-44 are rejected under 35 U.S.C. 103(a) as being unpatentable over Aven et al. (EP 0933025; published January 19, 1999) in view of Muhlebach et al. (WO 99/47525; effective date September 23, 1999).
Applicant’s Invention
Applicant claims a composition in the form of an emulsifiable concentrate comprising a) 1-50% by weight 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden); b) 1-97% by weight benzyl alcohol or 2-methyl-2,4-pentanediol; c) an emulsifier; and d) a water-insoluble solvent. (Claim 1)
Applicant claims a composition in the form of an emulsifiable concentrate comprising a) 3-30% by weight 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden); b) 10-30% by weight benzyl alcohol or 2-methyl-2,4-pentanediol; c) 2-30% by weight an emulsifier; and d) 10-70% by weight a water-insoluble solvent. (Claim 22)
Applicant claims a method of controlling undesired plant growth comprising applying a herbicidally effective amount of the composition of claim 1 to plants or to the locus. (claim 21)
Applicant claims a composition in the form of an emulsifiable concentrate comprising a) 1-50% by weight 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden); b) 1-97% by weight alcohol; c) an emulsifier; and d) a water-insoluble solvent. (Claim 35)
Applicant claims a method of improving storage stability of pinoxaden comprising dissolving a composition comprising pinoxaden in an alcohol to form an emulsifiable concentrate (claim 40)
Applicant claims the composition prepared by the method of claim 40. (Claim 41)
Applicant claims a composition comprising a) 30-60% by weight water-insoluble solvent, b) 5-15% by weight 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden); and c) alcohol in an amount sufficient to dissolve and stabilize pinoxaden. (Claim 42)
Claims 16-18, 43 and 44 are drawn to inherent properties of the formulations.
With respect to claims 1, 3, 5-12, 15-19, 21, 22 and 35-44, Aven et al. teach an emulsifiable concentrate (EC) containing one or more pesticides (component a), a solvent consisting of esters of plant oils (component c), a cosolvent selected from water-miscible polar aprotic solvent (component b), and an emulsifying surfactant system (component c)(abstract). EC formulations typically include xylene or Solvesso 200 (water-insoluble solvent d) [0001; limitation of claim 7]. The EC formulations can be improved by the addition of a solvent essentially consisting of one or more esters of plant oils, a cosolvent that is a water-miscible polar aprotic solvent and the emulsifying surfactant system [0010]. The preferred herbicides include sulfonylureas such as metsulfron, chlorsulfuron and other active compounds [0024-27; limitation of claims 10-12]. Benzyl alcohol is a preferred water-miscible polar aprotic solvent (component b) [0032; limitation of claim 19]. The formulation comprises further adjuvants that include non-ionic surfactants [0035; limitation of claim 15]. The EC comprises 1-50% pesticide, 20-80% solvent, 1-40% cosolvent and 5-30% emulsifier [0042; limitation of claims 2-6, 8 and 9].
Aven et al. fail to teach the specific pesticide is the herbicide pinoxaden. With respect to claims to claims 13 and 14, Aven fails to teach the addition of a safener, preferably selected from cloquintocet-mexyl, mefenpyr-diethyl or isoxadifen-ethyl. It is for this reason that Muhlebach et al. is joined.
Muhlebach et al. teach the claimed herbicide pinoxaden as compound 1.008 (Table 1, page 62). Solvents and carriers include alcohols and glycols (page 15, paragraph 2). Formulations include emulsifiable concentrates (page 15, paragraph 1). The herbicidal emulsified concentrate formulations comprise 0.1 to 90% by weight of herbicide, 1-99.9% auxiliary by weight (carrier) and 0-25% surfactant by weight (page 18, paragraph 1; page 47, paragraph 3). Suitable safeners are known and include cloquintocet-mexyl as in formula (X; Compound 9.01) for mixture with the herbicidal compositions to protect plants from phytotoxic effect (page 19, paragraph 1). Safeners include those that encompass mefenpyr-diethyl (page 20, formula (XII)). Solvents also include cyclohexanone, a water-immiscible solvent and surfactants as emulsifiers (Example F.1 page 84). Pinoxaden shows the best herbicidal effect when applied pre-emergence on Avena, Lolium and Setaria (Example and Table B3).)
Both Aven and Muhlebach are drawn to herbicidal emulsion concentrate formulations. Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to combine the teachings of Aven et al. and Muhlebach et al. and an make an emulsifiable concentrate comprising pinoxaden with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of invention to select pinoxaden as an herbicide because Muhlebach et al. teach that pinoxaden shows the best herbicidal effect when applied pre-emergence on Avena, Lolium and Setaria.
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to combine the teachings of Aven et al. and Muhlebach et al. and an make an emulsifiable concentrate comprising pinoxaden with cloquintocet-mexyl or mefenpyr-diethyl as a safener with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of invention to combine pinoxaden with a safener selected from cloquintocet-mexyl or mefenpyr-diethyl because Muhlebach et al. teach that combining pinoxaden with safener protects plants from phytotoxic effect.
Response to Arguments
Applicant's arguments filed 1/21/2026 have been fully considered but they are not persuasive. Applicant argues that a person of ordinary skill would not have been more directed by Aven to use cyclohexanone rather than benzyl alcohol or 2-methyl-2,4-pentandiol. The Examiner is not persuaded by this argument because the rejection is based on the teachings of Aven in view of Muhlebach and Aven teach EC formulations can be improved by the addition of a cosolvent that is a water-miscible polar aprotic solvent [0010]. Benzyl alcohol is a preferred water-miscible polar aprotic solvent (component b) [0032; limitation of claim 19]. Therefore, the rejection has been maintained.
Applicant maintains that claims 23-26 are commensurate in scope with the comparative data in the specification. The Examiner has maintained the 103 rejection in view of Aven and Muhlebach because Applicant has not demonstrated an unexpected result. Aven teach emulsifiable concentrates comprising benzyl alcohol as the preferred water-miscible polar aprotic solvent [0032] and Muhlebach et al. teach pinoxaden as compound 1.008 (is combined with solvents and carriers selected from alcohols and glycols to form emulsifiable concentrates (page 15, paragraphs 1 & 2). Example 6 only details a formulation comprising 60 grams pinoxaden, 15 grams cloquintocet-mexyl, 20 gram Nansa EVM63/B, 50 gram Servirox OEG 59E, 675 gram Solvesso 200 ND and 200 grams of benzyl alcohol as only having 3% pinoxaden loss. Therefore, the showing is not commensurate in scope with the claims which require the safener cloquintocet-mexyl. Therefore the rejection has been maintained.
Claim 20 and 23-26 is rejected under 35 U.S.C. 103(a) as being unpatentable over Aven et al. (EP 0933025; published January 19 1999) in view of Muhlebach et al. (WO 99/47525; effective date September 23, 1999), as applied to claims 1, 3, 5-19, 21, 22 and 35-44 in further view of Fowler (WO 02/45507; published June 13, 2002).
Applicant’s Invention
Applicant claims a composition in the form of an emulsifiable concentrate comprising a) 1-50% by weight 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden); b) 1-97% by weight benzyl alcohol or 2-methyl-2,4-pentanediol; c) an emulsifier; and d) a water-insoluble solvent. (Claim 1)
Applicant claims an emulsifiable concentrate comprising a) 5-15% by weight pinoxaden, b) 10-30% by weight 2-methyl-2,4-pentanediol and c) 10-70% by weight a water-insoluble solvent of aromatic hydrocarbons. (claim 23)
The teachings of Aven et al. and Muhlebach et al. are addressed in a previous 103 rejection.
Aven et al. and Muhlebach et al. fail to teach the specific cosolvent is 2-methyl-2,4-pentanediol. It is for this reason that Fowler is joined.
Fowler teaches microemulsifiable hydrophobic agrochemical concentrates comprising polyhydric alcohol which are storage stable and have good biological efficacy (abstract). The polyhydric alcohol includes hexylene glycol (2-methyl-2,4-pentanediol) (page 5, paragraph 3).
Aven, Muhlebach and Fowler are drawn to herbicidal emulsion concentrate formulations. Therefore, it would have been prima facie obvious to one of ordinary skill in the art to combine the teachings of Aven et al. Muhlebach et al. and Fowler and make an emulsifiable concentrate comprising 2-methyl-2,4-pentanediol with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of invention to make an emulsified concentrate comprising 2-methyl-2,4-pentanediol as a solvent because Aven et al. teach the addition of glycols and Fowler teach that hexylene glycol (2-methyl-2,4-pentanediol) is known as a polyhydric solvent that is used in micro emulsified concentrates.
Conclusion
No claims 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 DANIELLE SULLIVAN whose telephone number is (571)270-3285. The examiner can normally be reached on 10:00am to 6:30pm Monday through Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Johann Richter can be reached on 571-272-0646. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Isis A Ghali/Primary Examiner, Art Unit 1611
Danielle Johnson
Patent Examiner
Art Unit 1617
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