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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submissions filed on 08 June 2026 and 06 May 2026 have been entered.
Status
Applicant’s responses dated 08 June 2026 and 06 May 2026 to the previous Office action dated 09 March 2026 are acknowledged. Pursuant to amendments therein, claims 3, 5-8, 10, and 13-21 are pending in the application.
The rejection under 35 U.S.C. 112 made in the previous Office action is withdrawn in view of applicant’s claim amendments.
The rejection under 35 U.S.C. 103 made in the previous Office action is maintained herein as set forth below.
Election/Restrictions
Claims 10 and 17-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 24 September 2024.
Applicant’s election of Compound A2 as species of active ingredient A in the reply filed on 24 September 2024 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the species election has been treated as an election without traverse (MPEP § 818.01(a)).
Active ingredient A species other than Compound A2 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species. Election was made without traverse in the reply filed on 24 September 2024.
Applicant’s election of glufosinate ammonium as species of active ingredient B in the reply filed on 24 September 2024 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the species election has been treated as an election without traverse (MPEP § 818.01(a)).
Active ingredient B species other than glufosinate ammonium are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species. Election was made without traverse in the reply filed on 24 September 2024.
Claims 3, 5-8, and 13-16 are under current consideration.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 3, 5-8, and 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lian et al. ‘070 (CN 109535070 A; published 29 March 2019; of record; English machine translation made 28 December 2024; of record).
Lian et al. ‘070 discloses an herbicidal composition comprising an herbicidally effective amount (claim 9 of translation) of a compound of formula I (claim 1 of translation) wherein additional herbicide can be mixed therewith (claim 8 of translation) such as glufosinate ammonium (pages 14-15 of translation) wherein the compound of formula I can be compound 68 (i.e., corresponds to instant compound A2) (pages of 21-22 and 25 of original document) wherein the active material or compound of formula I may be 0.1-99 wt% of the formulation (page 14 of translation) wherein the formulation may be dispersible oil suspension, water suspension, wettable powder, emulsifiable concentrate (page 13 of translation) wherein safener and/or auxiliary agents can be mixed therewith (claim 8 of translation) wherein mefenpyrdiethyl or furilazole can be mixed therewith (page 15 of translation) wherein surfactant can be mixed therein (page 13 of translation) wherein carrier can be mixed therein (page 14 of translation).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Lian et al. ‘070 as discussed above and to make the herbicidal composition thereof with an herbicidally effective amount of compound 68 (i.e., corresponds to instant compound A2) and glufosinate ammonium therein in amounts of 0.1-99 wt% of the formulation, and including safener, auxiliary agents, carrier, surfactant, mefenpyrdiethyl, and/or furilazole therein, wherein the formulation is a dispersible oil suspension, water suspension, wettable powder, or emulsifiable concentrate, with a reasonable expectation of success. Such active ingredient amounts of 0.1-99 wt% is presumed to be synergistic per MPEP 2112(V) and 2112.01(I) given that the composition of Lian et al. ‘070 is substantially identical to that of the claims, and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Although Lian et al. ‘070 does not specifically disclose the R enantiomer/optical isomer form of compound 68, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the herbicidal composition of Lian et al. ‘070 as discussed above wherein the compound 68 therein is the R enantiomer/optical isomer form (i.e., a type of stereoisomer) of compound 68, with a reasonable expectation of success, given that stereoisomers are prima facie obvious and stereoisomers are prima facie obvious over prior art mixtures of stereoisomers per MPEP 2144.09(II).
Although Lian et al. ‘070 does not disclose such claimed weight ratios of ingredient A to ingredient B as set forth in claims 3 and 13, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to optimize herbicidal effectiveness of the herbicidal composition of Lian et al. ‘070 as discussed above by varying the amounts of compound 68 (i.e., corresponds to instant compound A2) and glufosinate ammonium therein through routine experimentation per MPEP 2144.05(II), with a reasonable expectation of success, given that compound 68 (i.e., corresponds to instant compound A2) and glufosinate ammonium are both known herbicide active ingredients and thus both known result-effective variables, and also given that differences in concentration will generally not support patentability per MPEP 2144.05(II)(A).
Regarding claims 5 and 14, the amount of 0.1-99 wt% active material as discussed above overlaps the claimed ranges of 1-95% and 10-80%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Response to Declaration
The declaration under 37 CFR 1.132 filed 08 June 2026 is insufficient to overcome the obviousness rejection as set forth in the previous Office action because: although the declaration alleges unexpected results, it fails to clearly set forth the nature of the tested compositions (e.g., all components and concentrations thereof) such that it can be determined whether the asserted unexpected results are commensurate in scope with the claimed invention and whether the asserted unexpected results are truly unexpected. The burden is on applicant to establish that results are in fact unexpected and unobvious and of both statistical and practical significance, per MPEP 716.02(b). Such evidence of unexpected results must be commensurate in scope with the claimed invention per MPEP 716.02(d), and must compare the claimed subject matter with the closest prior art (or closer) per MPEP 716.02(e).
Specifically, paragraph 8 of the declaration indicates that the tested compounds were dissolved in acetone and diluted with an aqueous solution containing 0.1% emulsifier Tween-80, such that concentrations of A2 were 0.17-0.33 g/kg and concentrations of glufosinate ammonium were 0.17-1.33 g/kg. Thus, the resulting/final concentrations of acetone, emulsifier Tween-80, water, and any other compounds in the tested formulations have not been provided. It is noted that the declaration states that the aqueous solution contains 0.1% emulsifier Tween-80, but does not definitively state that no other compounds were present, given that “contains” is synonymous with the open-ended “comprises” per MPEP 2111.03(I). The declaration also states that the impact of the solvent and the emulsifier had been eliminated by providing a blank control, but the solvent and emulsifier are adjuvants (see, e.g., instant specification at page 24 third to fifth full paragraphs), which are known to be capable of greatly enhancing the activity of herbicides (see, e.g., Kirkwood, Pesticide Science, Vol 38, 1993, pages 93-102, at title, abstract), and thus the impact of the solvent and emulsifier has not been shown to be eliminated merely by testing a blank control since one or both of the solvent and emulsifier may be necessary to achieve the asserted unexpected results, notwithstanding declarant’s bare assertion otherwise. In sum, the asserted unexpected results are limited the tested formulations, but applicant has failed to provide the exact nature of the tested compositions (e.g., all components and concentrations thereof) such that it can be determined whether the asserted unexpected results are commensurate in scope with the claimed invention and whether the asserted unexpected results are truly unexpected.
Response to Arguments
Applicant's arguments filed 08 June 2026 have been fully considered but they are not persuasive, in that they rely upon the declaration which is insufficient as discussed above.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached on (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
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