DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Receipt and consideration of Applicant’s amended claim set and Applicant’s arguments/remarks submitted on July 24, 2025 are acknowledged.
All rejections/objections not explicitly maintained in the instant office action have been withdrawn per Applicant’s claim amendments and/or persuasive arguments. Applicant’s claim amendments have necessitated new grounds of rejections set forth below.
Status of the Claims
Claims 1, 2, 5, 8, 11, 12, 15, 16, 19, 21, 22, 24, 30-34, 36-38, 42-46, 49, 51, 53, and 55 are pending. Claims 3, 4, 6, 7, 9, 10, 13, 14, 17, 18, 20, 23, 25-29, 35, 39-41, 47, 48, 50, 52, and 54 are cancelled. Claims 31, 32, 45, 46, 49, 51, and 53 are withdrawn. Claims 1, 2, 5, 8, 11, 12, 15, 16, 19, 21, 22, 24, 30, 33, 34, 36-38, 42-44, and 55 are under consideration in this action.
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-3, 5, 8, 11, 12, 15-17, 19, 21, 22, 24, 30, 33, 34, 36-38, 42-44, and 55) and the following species in the reply filed on November 14, 2023 is acknowledged:
Organic non-polar solvent: N,N-dimethyloctanamide
Acetamide herbicide: acetochlor
Polymeric shell wall material: polyurea
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With regards to Claim 15, the claim recites “wherein the total weight of the microencapsulated herbicides is in the range of from about 15 wt.% to about 60 wt.% of the microcapsule.” Claim 1 has been amended to recite that the total weight of the two required microencapsulated herbicides (acetamide and diflufenican) is at least about 25 wt.%. Thus, the aforementioned limitation of claim 15 broadens the scope of the claim upon which is depends (i.e., claim 1) because claim 15 now allows for amounts lower than that of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 2, 5, 8, 11, 12, 15, 16, 19, 21, 22, 24, 30, 33, 34, 36-38, and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Hemminghaus et al. (Hemminghaus) (WO 2018/231913 A1; of record), Hechavarria Fonseca et al. (Hechavarria Fonseca) (US 2011/0015072 A1; of record), and Krause et al. (Krause) (US 2021/0120811 A1; of record).
With regards to Claims 1, 2, 8, 24, and 55, Hemminghaus discloses herbicidal microcapsules comprising a core material comprising an acetamide herbicide and a second herbicide and a shell wall encapsulating the core material, wherein the shell wall comprises a polyurea (para.0001, 0007, 0021).
The acetamide herbicide comprises acetochlor (par.0022, 0180).
A suitable second herbicide comprises diflufenican (par.0029, 0187).
Typically, the acetamide herbicide is in excess of the second herbicide. The weight ratio of the acetamide herbicide to the second herbicide in the core material is at least about 4:1, such as from about 4:1 to about 9:1 (para.0032).
Typically, the acetamide herbicide constitutes a large percentage of the microcapsule weight. In various embodiments, the acetamide herbicide constitutes at least 30 wt.% of the microcapsule, and in various embodiments, the acetamide herbicide constitutes from about 30 wt.% to about 40 wt.% (para.0034). Because the acetamide herbicide (acetochlor) is in excess of the second herbicide (diflufenican), and the acetochlor is present in an amount of at least 30 wt.% of the microcapsule, the total weight of the acetochlor and diflufenican will necessarily be at least 25 wt.% of the microcapsule (Claims 1 and 8) and at least 30 wt.% of the microcapsule (Claim 2).
The core also further comprises a diluent, such as a solvent. A solvent may be added to change the solubility parameter characteristics of the core material to increase or decrease the release rate of the herbicides from the microcapsule once release has been initiated (para.0036-0037). The core material may comprise from 0-35 wt.% diluent. The weight ratio of total herbicide (acetamide herbicide and second herbicide) to diluent can be, for example, 2:1 to about 100:1 (para.0038).
With regards to Claim 5, generally, the microcapsules have a mean particle size of at least about 2 micron, such as from about 4-7 micron (para.0054).
With regards to Claim 11, Hemminghaus discloses that herbicides from various classes are suitable for co-encapsulation with the acetamide herbicide (acetochlor). Among the suitable classes include photosystem II inhibitors (e.g., metribuzin) and hydroxyphenylpyruvate dioxygenase (HPPD) inhibitors (e.g., diflufenican) (para.0026, 0028, 0029, 0184, 0187). Hemminghaus also encompasses herbicidal microcapsules having a combination of acetochlor, at least one photosystem II inhibitor, and at least one HPPD inhibitor (e.g., para. 0187, Embodiments A12 – an herbicidal microcapsule of embodiment A5+A9). Although Hemminghaus does not appear to explicitly exemplify the combination of acetochlor, photosystem II inhibitors (e.g., metribuzin), and hydroxyphenylpyruvate dioxygenase inhibitors (e.g., diflufenican), one of ordinary skill in the art would have found it prima facie obvious before the effective filing date to try the co-encapsulation of the aforementioned three types of herbicides. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. In the instant case, all are herbicides Hemminghaus discloses as being suitable for co-encapsulation in their microcapsule with the acetamide herbicide. Furthermore, one of ordinary skill in the art would have been motivated to do so in order to have multiple mechanisms of actions for herbicidal action, thus widening the scope of weeds controlled by a single formulation.
With regards to Claim 12, in some embodiments, Hemminghaus discloses the inclusion of a photosystem II inhibitor, such as metribuzin, as the second herbicide in the core material with acetochlor (para.0028). As discussed above, Hemminghaus also encompasses herbicidal microcapsules having a combination of acetochlor, at least one photosystem II inhibitor, and at least one HPPD inhibitor (e.g., para. 0187, Embodiments A12 – an herbicidal microcapsule of embodiment A5+A9), where the photosystem II inhibitor and HPPD inhibitor are both the second herbicide. Typically, the acetamide herbicide is in excess of the second herbicide. The weight ratio of the acetamide herbicide to the second herbicide in the core material is at least about 4:1, such as from about 4:1 to about 9:1 (para.0032). Typically, the acetamide herbicide constitutes a large percentage of the microcapsule weight. In various embodiments, the acetamide herbicide constitutes at least 30 wt.% of the microcapsule, such as from about 30 wt.% to about 35 wt.% of the microcapsule (para.0034).
Thus, in the case that the microcapsule contains about 35 wt.% of the acetamide herbicide (acetochlor), and the ratio of acetochlor to the second herbicide is 7:1, and metribuzin and diflufenican are considered Hemminghaus’s second herbicide, the total amount of metribuzin and diflufenican (second herbicide component) would be present in an amount of about 5 wt.% of the microcapsule. With regards to the specific amounts of each herbicide, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. In particular, it would have been obvious to one of ordinary skill in the art before the effective filing date to determine the optimal amount of acetochlor, diflufenican, and metribuzin (photosystem II inhibitor) to contain as the core material within the prior art disclosed ratios and ranges based on art recognized factors such as the weeds to be controlled (e.g., optimizing based on the mechanism of action that will best address the target weeds) and the extent of the infestation of the types of weeds to be controlled. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
With regards to Claim 15, as discussed above, typically, the acetamide herbicide is in excess of the second herbicide. The weight ratio of the acetamide herbicide to the second herbicide in the core material is at least about 4:1, such as from about 4:1 to about 9:1 (para.0032). Typically, the acetamide herbicide constitutes a large percentage of the microcapsule weight. In various embodiments, the acetamide herbicide constitutes at least 30 wt.% of the microcapsule, such as from about 30 wt.% to about 35 wt.% of the microcapsule (para.0034).
Thus, in the case that the microcapsule contains about 35 wt.% of the acetamide herbicide (acetochlor), and the ratio of acetochlor to the second herbicide (diflufenican) is 7:1, the total weight of the microencapsulated herbicides (acetochlor and diflufenican) is about 40 wt.% of the microcapsule.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. In particular, it would have been obvious to one of ordinary skill in the art before the effective filing date to determine the optimal amount of herbicides (acetochlor and diflufenican) to contain as the core material within the prior art disclosed ratios and ranges based on art recognized factors such as the weeds to be controlled (e.g., optimizing based on the mechanism of action that will best address the target weeds) and the extent of the infestation of the types of weeds to be controlled. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
With regards to Claim 16, the core material can further include one or more safeners, such as a safener. Among the suitable safeners include furilazole (para.0035).
With regards to Claim 22, as discussed above, typically, the acetamide herbicide constitutes a large percentage of the microcapsule weight. In various embodiments, the acetamide herbicide constitutes at least 30 wt.% of the microcapsule, such as from about 30 wt.% to about 35 wt.% of the microcapsule (para.0034). The core material may comprise from 0% to about 35 wt.% of a diluent (solvent), such as 10 wt.%. The weight ratio of total herbicide (acetamide herbicide and second herbicide) to diluent can be, for example, from about 2:1 to about 100:1 (para.0038).
Thus, in the case that the acetamide herbicide constitutes about 30 wt.% of the microcapsule and the solvent constitutes about 10 wt.%, the total weight of the acetamide herbicide and solvent is about 40 wt.% of the microcapsule (reading on the ratio by weight of the total weight of the acetamide herbicide to the total weight of solvent being about 3:1).
With regards to Claim 30, in general, the polyurea shell wall of the microcapsules is formed in a polymerization medium by a polymerization reaction between a polyisocyanate component comprising a polyisocyanate or mixture of polyisocyanates and a polyamine component comprising a polyamine or mixture of polyamines to form the polyurea (para.0043). Generally, a sufficient amount of polyamine component is provided to the reaction medium such that the polyisocyanate is completely reacted. The molar equivalents ratio of amine equivalents to isocyanate equivalents used in preparation of the shell wall of the microcapsules is typically 1:1 or greater (e.g., at least about 1.01:1) (par.0052).
With regards to Claims 33, 34, 36, and 37, Hemminghaus also discloses various herbicidal compositions comprising the herbicidal microcapsules discussed above. Generally, the herbicidal microcapsules will be dispersed in a liquid medium, preferably aqueous liquid medium (e.g., water), after preparation to form liquid herbicidal compositions. The herbicide loading in the liquid herbicidal compositions range depending on the form of the compositions (i.e., concentrate or dilute application mixtures) (para.0056).
With regards to Claim 38, the liquid herbicidal compositions may be further formulated with additives, such as an antifreeze (para.0090). The liquid herbicidal compositions containing the dispersion of microcapsules can be formulated to further optimize its shelf stability and safe use. Dispersants, stabilizers, and thickeners are useful to inhibit the agglomeration and settling of the microcapsules (para.0091).
Hemminghaus does not appear to explicitly disclose (i) wherein the solvent comprises N,N-dimethyloctanamide (elected species). Hechavarria Fonseca and Krause are relied upon for this disclosure. Their teachings are set forth herein below.
Hechavarria Fonseca discloses microcapsules with a capsule wall and a capsule core comprising active ingredients such as herbicides (abstract; para.0023, 0038). Hechavarria Fonseca discloses suitable core materials for the microcapsules are substances that are insoluble to essentially insoluble in water (i.e., a solubility of the core material in water of < 25 g/l, preferably ≤5 g/l, at 25oC. Examples of suitable material include N-dimethyloctanamide (also known as N,N-dimethyloctanamide, a fatty acid dimethylamide) and N-dimethyldecanamide (also known as N,N-dimethyldecanamide) (para.0023, 0030).
Krause discloses aqueous capsule suspension concentrates and their use as an agrochemical formulation (abstract). Krause discloses that in such formulations, useful organic solvents include customary organic solvents that on the one hand have low miscibility with water, but on the other hand dissolve the active agrochemical ingredients used with good solubility. Among such organic solvents include alkanecarboxamides such as N,N-dimethyloctanamide and N,N-dimethyldecanamide (para.0065).
Krause’s formulations include one or more preferably herbicidal active ingredients. Among the typical herbicidal include acetochlor and diflufenican (para.0083-0090).
With regards to the elected species of organic non-polar solvent (Claims 19 and 21), as discussed above, Hemminghaus discloses that their core also further comprises a diluent, such as a solvent. A solvent may be added to change the solubility parameter characteristics of the core material to increase or decrease the release rate of the herbicides from the microcapsule once release has been initiated. The diluent is a water-insoluble organic solvent having a solubility of less than 10 g/l at 25oC (para.0036-0037). In light of Hechavarria Fonseca’s disclosure that N-dimethyloctanamide and N-dimethyldecanamide, as a known water insoluble core material and Krause’s disclosure that N,N-dimethyloctanamide and N,N-dimethyldecanamide are customary organic solvents known to be used with herbicidal active ingredients such as acetochlor and diflufenican, it would have been obvious to one of ordinary skill in the art to combine the teachings of Hemminghaus with the teachings of Hechavarria Fonseca and Krause before the effective filing date of the instant invention and try using N-dimethyloctanamide and/or N-dimethyldecanamide as a diluent in Hemminghaus’s microcapsules as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have been motivated with a reasonable expectation of success in doing so as N-dimethyloctanamide and N-dimethyldecanamide are known as a core material in core-shell microcapsules, are water insoluble as defined by Hemminghaus, and known to be used with herbicidal active ingredients such as acetochlor and diflufenican. Furthermore, as a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. In the present case, N-dimethyloctanamide and N-dimethyldecanamide are each useful for the same purpose (solvent for use with acetochlor and diflufenican), and are being combined for the very same purpose.
With regards to the ratio by weight of the total weight of the (i) acetamide herbicide to the total weight of the (iii) organic non-polar solvents in the microcapsule as recited in the instant Claim 1, as discussed above, Hemminghaus discloses that the acetamide herbicide (acetochlor) is in excess of the second herbicide (diflufenican), with the weight ratio of the acetamide herbicide to the second herbicide in the core material being at least 4:1, such as from 4:1 to about 9:1, and that the acetochlor is present in an amount of at least 30 wt.% of the microcapsule. Hemminghaus further discloses that the core material may comprise from 0-35 wt.% of diluent (e.g., solvent, N-dimethyloctanamide in the case of the combined teachings of the cited prior art references), and the weight ratio of total herbicide (acetamide herbicide and second herbicide) to diluent can be, for example 2:1 to about 100:1.
Acetochlor may be present in an amount of 30 wt.%, diflufenican would be present in an amount of 5 wt.% (weight ratio of acetochlor to diflufenican = 7:1), and the solvent would be present in an amount of about 17.5 wt.% (weight ratio of acetochlor and diflufenican to solvent = 2:1), thus resulting in a weight ratio of acetochlor to solvent of about 30:17.5 (1.7:1). Thus, the combined teachings of the cited prior art references discloses that the weight ratio of acetochlor to N-dimethyloctanamide is at least 5:3 (1.67:1) as Hemminghaus discloses that the amount of acetochlor is always in excess of diflufenican, and the amount of herbicides is always in excess of the solvent. 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].
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results. In the present case, in light of Hemminghaus’s disclosure that the solvent is added to change the solubility parameter characteristics of the core material (herbicides) to increase or decrease the release rate of the herbicides from the microcapsule once release has been initiated, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to optimize the amount of solvent added within the prior art disclosed range and ratio range to optimize and best achieve the desired release rate of the herbicides. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Response to Arguments
Applicant's arguments filed July 24, 2025 have been fully considered but they are not persuasive.
(1) Applicant argues that favorable results are reported throughout the specification for Formulations 7406-7 (ACC + DEF) and 7406-9 (ACC + DEF) described in Table 1A as including a total acetochlor (ACC) and diflufenican (DEF) concentration, ACC/DEF ratio, and weight ratio of acetamide herbicide to organic non-polar solvent within the claimed ranges. Applicant points to, for example, paragraphs 0223 and 0227 detailing testing results for the 2-way premix formulation of the present disclosure. Applicant argues that such compositions have been shown to provide excellent herbicidal performance, including excellent control of both multiple resistant AMAPA species.
With regards to Applicant’s argument (1), the traversal argument is not found persuasive. The comparative data shown in, for examples Tables 3A (discussed in para.0223) and 3C (discussed in para.0227), do not demonstrate the criticality of the selection of the combination of acetochlor and diflufenican for the microcapsules. Applicant’s data in Tables 3A and 3C appear to demonstrate the criticality of the microencapsulation of the combination of acetochlor and diflufenican. However, that is already demonstrated by Hemminghaus.
As discussed above, Hemminghaus discloses herbicidal microcapsules comprising (a) a core material comprising an acetamide herbicide (acetochlor) and a second herbicide (e.g., diflufenican) and (b) a shell wall encapsulating the core material (par.0021). Hemminghaus explicitly discloses that the acetamide herbicide comprises acetochlor (para.0022, 0180), and explicitly discloses that in further embodiments, the second herbicide comprises a HPPD inhibitor, explicitly discloses 17 specific suitable HPPD inhibitors, one of which is diflufenican (para.0029, 0187). While Hemminghaus may not explicitly exemplify the use of acetochlor and diflufenican, the prior art disclosure is not limited to the exemplified embodiments or those reduced to working examples. As Hemminghaus explicitly discloses acetochlor as the acetamide herbicide and discloses diflufenican among a limited list of suitable second herbicides, one of ordinary skill in the art would have been able to clearly envisage the combination of acetochlor and diflufenican, and had a reasonable expectation of success in their combination.
With regards to Applicant’s arguments regarding the claimed microcapsules providing advantageous performance, Applicant does not appear to have established the criticality of the claimed features such as the specific combination of the herbicidal ingredients and/or the claimed amounts and ratios. With regards to the specific combination of herbicides, Applicant’s data in the instant Specification appears to only show the performance of the combination of acetochlor and diflufenican. As discussed above, Hemminghaus discloses the combination of acetochlor and HPPD inhibitors, and discloses a limited list of 17 specific suitable HPPD inhibitors for use with acetochlor, one of which is diflufenican. Applicant has not established the criticality of the combination of acetochlor and diflufenican, i.e., that the combination of acetochlor and diflufenican provides unexpected results over acetochlor in combination the other 16 HPPD inhibitors disclosed by Hemminghaus.
(2) Applicant argues that the cited references do not teach a minimum total weight of the (i) acetamide herbicide and (ii) diflufenican of at least about 25 wt.% of the microcapsule; and wherein the ratio by weight of the total amount of (i) acetamide herbicide to the total amount of (ii) diflufenican is in the range of from about 7:1 to about 9:1.
Applicant argues that Hemminghaus simply represent the possibility of selecting these features, and there are no specific teachings on this combination or working examples of in Hemminghaus. Applicant argues that only through impermissible hindsight reasoning could there be a reason to select combining acetochlor and diflufenican, and then select combining the specific concentration ranges/ratios selected by the Office from the lengthy list of each feature in paragraphs 0032 and 0034 of Hemminghaus. Thus, Applicant argues that it would not have been obvious to try diflufenican as the second herbicide at the required concentration and ratios based on the extensive disclosure of Hemminghaus on these features in the absence of any direction in the reference to make the selections required to arrive at the claimed microcapsules.
With regards to Applicant’s argument (2), the traversal argument is not found persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
As discussed above, Hemminghaus discloses herbicidal microcapsules comprising (a) a core material comprising an acetamide herbicide and a second herbicide and (b) a shell wall encapsulating the core material (par.0021). Hemminghaus explicitly discloses that the acetamide herbicide comprises acetochlor (para.0022, 0180), and explicitly discloses that in further embodiments, the second herbicide comprises a HPPD inhibitor, explicitly discloses 17 specific suitable HPPD inhibitors, one of which is diflufenican (para.0029, 0187). While Hemminghaus may not explicitly exemplify the use of acetochlor and diflufenican, the prior art disclosure is not limited to the exemplified embodiments or those reduced to working examples. As Hemminghaus explicitly discloses acetochlor as the acetamide herbicide and discloses diflufenican among a limited list of suitable second herbicides, one of ordinary skill in the art would have been able to clearly envisage the combination of acetochlor and diflufenican, and had a reasonable expectation of success in their combination.
With regards to the ratios between the two herbicides, as discussed above in detail, Hemminghaus discloses that typically, the acetamide herbicide is in excess of the second herbicide. The weight ratio of the acetamide herbicide to the second herbicide in the core material is at least about 4:1, such as from about 4:1 to about 9:1 (para.0032). Typically, the acetamide herbicide constitutes a large percentage of the microcapsule weight. In various embodiments, the acetamide herbicide constitutes at least 30 wt.% of the microcapsule, such as from about 30 wt.% to about 35 wt.% of the microcapsule (para.0034).
Furthermore, it is noted that the disclosure is not limited to only working examples, nor is the prior art disclosure required to disclose working examples of the claimed embodiments to read on the claims. The combined teachings of the cited prior art references read on the instant claims for the reasons set forth in the rejection above.
(3) Applicant argues that the cited references do not teach a total weight of the (i) acetamide herbicide to the total weight of the (iii) organic non-polar solvents in the microcapsule is in the range of 5:3 to 12:1 in microcapsules as defined in claim 1.
Applicant argues that while Hemminghaus refers to a weight ratio of herbicide to diluent of from about 2:1 to about 100:1, among others, in paragraph 0038, there is no reason to select this range for acetamide herbicide to solvent ratio in connection with the microcapsules defined in claim 1 having the required total weight of (i) acetamide and (ii) diflufenican and the ratio highlighted above.
Applicant notes that Hemminghaus does not include any specific teachings (e.g., working examples) for this combination of actives and does not include any specific direction to select the required ratio.
With regards to Applicant’s argument (3), the traversal argument is not found persuasive. With regards to the ratio by weight of the total weight of the (i) acetamide herbicide to the total weight of the (iii) organic non-polar solvents in the microcapsule as recited in the instant Claim 1, as discussed above, Hemminghaus discloses that the acetamide herbicide (acetochlor) is in excess of the second herbicide (diflufenican), with the weight ratio of the acetamide herbicide to the second herbicide in the core material being at least 4:1, and that the acetochlor is present in an amount of at least 30 wt.% of the microcapsule. Hemminghaus further discloses that the core material may comprise from 0-35 wt.% of diluent (e.g., solvent, N-dimethyloctanamide in the case of the combined teachings of the cited prior art references), and the weight ratio of total herbicide (acetamide herbicide and second herbicide) to diluent can be, for example 2:1 to about 100:1.
Acetochlor may be present in an amount of 30 wt.%, diflufenican would be present in an amount of 5 wt.% (weight ratio of acetochlor to diflufenican = 7:1), and the solvent would be present in an amount of about 17.5 wt.% (weight ratio of acetochlor and diflufenican to solvent = 2:1), thus resulting in a weight ratio of acetochlor to solvent of about 30:17.5 (1.7:1). Thus, the combined teachings of the cited prior art references discloses that the weight ratio of acetochlor to N-dimethyloctanamide is at least 5:3 (1.67:1) as Hemminghaus discloses that the amount of acetochlor is always in excess of diflufenican, and the amount of herbicides is always in excess of the solvent. 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.
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results. In the present case, in light of Hemminghaus’s disclosure that the solvent is added to change the solubility parameter characteristics of the core material (herbicides) to increase or decrease the release rate of the herbicides from the microcapsule once release has been initiated, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to optimize the amount of solvent added within the prior art disclosed range and ratio range to optimize and best achieve the desired release rate of the herbicides. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
With regards to the claimed ranges and ratios, 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 has not established the criticality of the claimed ranges. Note MPEP 716.02(d): “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Furthermore, as noted above, the disclosure is not limited to only working examples.
(4) Applicant argues that with regards to the specific solvent (N,N-dimethyloctanamide), Hechavarria Fonseca does not provide any specific considerations regarding formulation with herbicidal active ingredients and notes that no specific herbicidal active ingredients are listed in Hechavarria Fonseca. Applicant thus argues that there is no reason from the teachings of Hechavarria Fonseca to apply their teachings to compositions combining an acetamide herbicide and diflufenican. Applicant argues that the claimed microcapsules combine components in a manner not taught or directed by the primary reference Hemminghaus, and the claimed microcapsules provide advantageous performance.
With regards to Applicant’s argument (4), the traversal argument is not found persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the present case, Hemminghaus was relied upon for the disclosure of the combination of the herbicides, acetochlor and diflufenican. As discussed above, Hemminghaus discloses herbicidal microcapsules comprising (a) a core material comprising an acetamide herbicide and a second herbicide and (b) a shell wall encapsulating the core material (par.0021). Hechavarria Fonseca discloses microcapsules with a capsule wall and a capsule core comprising active ingredients such as herbicides (abstract; para.0023, 0038). With regards to the specific solvent, N,N-dimethyloctanamide, as discussed above in detail, Hemminghaus discloses their core also further comprises a diluent, such as a solvent. A solvent may be added to change the solubility parameter characteristics of the core material to increase or decrease the release rate of the herbicides from the microcapsule once release has been initiated. The diluent is a water-insoluble organic solvent having a solubility of less than 10 g/l at 25oC (para.0036-0037). Hechavarria Fonseca explicitly discloses N,N-dimethyloctanamide as a solvent within Hemminghaus’s parameters for their solvent, and Krause additionally evidences that N,N-dimethyloctanamide is customary organic solvent known to be used with herbicidal active ingredients such as acetochlor and diflufenican.
Claims 42-44 are rejected under 35 U.S.C. 103 as being unpatentable over Hemminghaus et al. (Hemminghaus) (WO 2018/231913 A1; of record), Hechavarria Fonseca et al. (Hechavarria Fonseca) (US 2011/0015072 A1; of record), and Krause et al. (Krause) (US 2021/0120811 A1; of record) as applied to claims 1, 2, 5, 8, 11, 12, 15, 16, 19, 21, 22, 24, 30, 33, 34, 36-38, and 55 set forth above, further in view of Fishel (Tank-Mixing Pesticides without Disasters; of record).
The combined teachings of Hemminghaus, Hechavarria Fonseca, and Krause and the motivation for their combination as they apply to Claims 1, 2, 5, 8, 11, 12, 15, 16, 19, 21, 22, 24, 30, 33, 34, 36-38, and 55 are set forth above and incorporated herein. Additional relevant teachings of Hemminghaus are set forth herein below.
With regards to Claim 42, the application mixture can be prepared from the aqueous herbicidal compositions, such as by diluting an aqueous herbicidal concentrate composition comprising the herbicidal microcapsules with water (para.0103). Hemminghaus also discloses that encapsulation of the herbicides in the microcapsules provide greater compatibility when tank mixed because the encapsulated herbicides are not, at least initially, in significant contact with other formulation chemicals or herbicides (para.0016).
With regards to Claims 43 and 44, application mixtures where prepared by diluting microcapsule dispersions (having, for example a total actives amount of 44 wt.%) prepared with deionized water at 25oC to an acetochlor concentration of 1% by weight of the microencapsulated acetochlor herbicide active ingredient (par.0141, Table 1-1).
Furthermore, with regards to the ratio of water to concentrate, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. In particular, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to optimize the water to concentrate ratio to arrive at the desired concentrations of active ingredients based on art recognized parameter such as the extent of weed control needed or desired. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
The combined teachings of Hemminghaus, Hechavarria Fonseca, and Krause do not appear to explicitly disclose the steps of pouring a concentrate of the composition of claim 33 into a water contained vessel under agitation. Fishel is relied upon for this disclosure. The teachings of Fishel are set forth herein below.
Fishel discloses the general steps of making a tank mix when water is the carrier. Generally, a tank (vessel) is filled with 50% of the total volume of water to be used; agitation is started before adding the first product and continued throughout the mixing process; then the product (e.g., dispersed liquid formulations such as suspension concentrates) is added; and the remaining water is added (pg.2).
As discussed above, Hemminghaus discloses the application mixture can be prepared from the aqueous herbicidal compositions, such as by diluting an aqueous herbicidal concentrate composition comprising the herbicidal microcapsules with water (para.0103). Hemminghaus also discloses that encapsulation of the herbicides in the microcapsules provide greater compatibility when tank mixed because the encapsulated herbicides are not, at least initially, in significant contact with other formulation chemicals or herbicides (para.0016). With regards to formulating the tank mix, i.e., the application mixture, it would have been obvious to one of ordinary skill in the art to further combine the teachings of Hemminghaus, Hechavarria Fonseca, and Krause with the teachings of Fishel and try Fishel’s steps discussed above to formulate the tank mix (i.e., application mixture) of the herbicidal composition of the combined teachings of Hemminghaus, Hechavarria Fonseca, and Krause discussed above as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have been motivated with a reasonable expectation of success in doing so as Hemminghaus disclose that their formulations are suitable as a tank mix formulated with water, and Fishel discloses art recognized and conventional steps for making a tank mix when water is the carrier.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Response to Arguments
Applicant's arguments filed July 24, 2025 have been fully considered but they are not persuasive.
(4) Applicant argues that Fishel does not cure the deficiencies of Hemminghaus and Hechavarria Fonseca regarding claim 1 discussed above.
With regards to Applicant’s argument (4), the traversal argument is not found persuasive. The teachings and rebuttal regarding Hemminghaus, Hechavarria Fonseca, and Krause, and the motivation for their combination are set forth above and incorporated herein.
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, 2, 5, 8, 11, 12, 15, 16, 19, 21, 22, 24, 30, 33, 34, 36-38, 42-44, and 55 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 54-61 of copending Application No. 18/021,841 (Copending 841).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping microcapsules, herbicidal compositions comprising the microcapsules, and composition used as the core material of the microcapsules comprising acetochlor, diflufenican, and N,N-dimethyloctanamide.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 5, 8, 11, 12, 15, 16, 19, 21, 22, 24, 30, 33, 34, 36-38, 42-44, and 55 are rejected on the ground of nonstatutory double patenting as being unpatentable over (i) claims 1-9 and 13-21 of U.S. Patent No. 11,129,381 B2 (USPN 381) and (ii) claims 1-12 and 16-21 of U.S. Patent No. 11,937,599 B2 (USPN 599), each in view of Hemminghaus et al. (Hemminghaus) (WO 2018/231913 A1; of record), Hechavarria Fonseca et al. (Hechavarria Fonseca) (US 2011/0015072 A1; of record), Krause et al. (Krause) (US 2021/0120811 A1; of record), and Fishel (Tank-Mixing Pesticides without Disasters; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar substantially similar and overlapping microcapsules, herbicidal compositions comprising the microcapsules, and composition used as the core material of the microcapsules comprising acetochlor, diflufenican, and N,N-dimethyloctanamide.
The primary differences between the instant claims and the claims of USPN 381/USPN 599 are: (i) the claims of USPN 381/USPN 599 do not appear to explicitly disclose a combination of acetochlor, diflufenican, and a photosystem II inhibitor; (ii) the claims of USPN 381/USPN 599 do not appear to explicitly disclose wherein the solvent comprises N,N-dimethyloctanamide (elected species); and (iii) the claims of USPN 381/USPN 599 do not appear to explicitly disclose the steps of pouring a concentrate of the composition of claim 33 into a water contained vessel under agitation. Hemminghaus, Hechavarria Fonseca, Krause, and Fishel are relied upon for these disclosures. Their teachings are set forth above and incorporated herein.
With regards to difference (i), Hemminghaus discloses that herbicides from various classes are suitable for co-encapsulation with the acetamide herbicide (acetochlor). Among the suitable classes include photosystem II inhibitors (e.g., metribuzin) and hydroxyphenylpyruvate dioxygenase inhibitors (e.g., diflufenican) (para.0026, 0028, 0029). Although Hemminghaus does not appear to explicitly exemplify the combination of acetochlor, photosystem II inhibitors (e.g., metribuzin), and hydroxyphenylpyruvate dioxygenase inhibitors (e.g., diflufenican), one of ordinary skill in the art would have found it prima facie obvious before the effective filing date to try the co-encapsulation of the aforementioned three types of herbicides for the microcapsule of USPN 381/USPN 599. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the pr