DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Application
Applicants' arguments/remarks filed 03/18/2026 are acknowledged. Claims 1, 4, 13-14 and 16 are currently pending and are examined on the merits within.
Maintained Rejections
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 non-obviousness.
Claims 1, 4, 13-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Long
(U.S. 20100022392 Al) in view of Sakamoto et al. (US 5,308,827 A) and Dayan et al. (WO 2021151733 Al).
Claim 1: Long teaches preparation of (0046) a liquid (0004) herbicidal composition
comprising: a water-soluble herbicidal ingredient; glufosinate salt (0002), an organic solvent;
and a surfactant (abs). The L enantiomer has been observed to be the biologically active isomer. The composition is intended to encompass all the biologically active enantiomer, the L enantiomer of glufosinate and its ammonium salt or other salts such as potassium, sodium, in each case (0019). The composition comprises an organic solvent including glycerol or propylene glycol (0023).
Long does not teach a liquid surfactant selected from alcohol ethoxylate, alkyl ether phosphate, alkyl aryl ether phosphate, sulfosuccinate and its derivative, or mixtures thereof and Long does not prepare a dispersion in the absence of water and admixing the dispersion with water to produce a clear homogenous liquid herbicidal composition.
Sakamoto et al. teach Glufosinate herbicidal composition comprising an nonionic surfactant(s), a solvent, and a surfactant. (Abs). The solvent can be 1-methoxy-2-propanol (Col. 3, line 29). The surfactants can be an alkaline salt of alkyl sulfosuccinic acid, (Col. 2, line 50), or polyoxyethylene sorbitan fatty acid ester (Col. 3, line 6-7). The Examples are preparations of herbicidal compositions applied by an aerosol container. A herbicide and a surfactant
were mixed to give a homogeneous solution or a suspension an antifreeze and a stabilizer. The mixture became a uniform liquid or a suspension. A diluent (water) was added thereto to obtain a uniform emulsion. (Col. 5, line 55-65).
Long teaches the ingredients were mixed together in a suitable vessel at room temperature and were observed at room temperature. (0046).
Long and Sakamoto et al. do not teach the processing time required for said admixing to obtain the liquid herbicidal composition is less than 2 hours.
Dayan et al. teach methods producing specific herbicide combinations comprising L-glufosinate and/or salts thereof and comprises another active ingredient, a second herbicide, an
organic solvent, a surfactant, and water. This mixture is stirred for 1 h to produce spontaneously
a thermodynamically stable microemulsion (Example 9th. Microemulsion, pg. 20).
It would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention to produce a liquid herbicidal composition comprising:
comprises single isomer of glufosinate salt; with organic solvents like glycerol or propylene glycol or a liquid surfactant taught by Long, and the solvent can be 1-methoxy-2-propanol and the surfactant can be an alkaline salt of alkyl sulfosuccinic acid, or polyoxyethylene sorbitan fatty acid ester and the composition is prepared by mixing surfactant and glufosinate, then adding water, taught by Sakamoto et al., and with the processing time taught by Dayan since it would be more suitable and informative to do so.
With Regard to Claim 4,
Long teaches the L enantiomer has been observed to be the biologically active isomer. The formula therefore is intended to encompass the biologically active enantiomer
in each case, the L enantiomer of glufosinate and its ammonium salt or other salts such as
potassium or sodium (0019).
With Regard to Claims 13-14,
Long does not teach composition according to claim 1, further comprises another active ingredient/s selected from fungicides, insecticides, herbicides, plant regulators, defoliants, desiccants, biostimulants and nitrogen stabilizers, or mixtures thereof.
Sakamoto et al. teach another herbicide can be included like Glyphosate or Bialaphos. (Abs).
Dayan et al. teach various types of further pesticides (e.g., herbicides, insecticides,
fungicides, growth regulators) may be added to specific herbicide combinations comprising L-glufosinate and/or salts thereof and comprises another active ingredient, a second herbicide, an
organic solvent, a surfactant, and water (The invention also relates to an herbicidal formulation,
which comprises a herbicidally active mixture as defined herein and at least one carrier material,
including liquid and/or solid carrier materials., par. 2).
Dayan et al. teach the present invention further relates to a method of producing said specific herbicide combinations and compositions comprising said specific herbicide combinations saflufenacil (Abs. and Description par. 1).
With Regard to Claim 16,
Long teaches the preparation process of various herbicidal compositions (0046), which comprises a liquid (0004) herbicidal composition comprising: a water-soluble herbicidal ingredient; glufosinate salt (0002), especially the biologically active L enantiomer
(0019), an organic solvent, (0023), or a surfactant, (0002), and water. (0020).
Sakamoto et al. teach Glufosinate herbicidal composition comprising, a solvent, and/or a surfactant, and water is added as a diluent. (Abs)
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.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 6, 7, 8, 10 and 11 of copending Application No. 18869876 (US 20250320239 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because they have similar ideas, herbicidal glufosinate, solvents and excipients.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Claim Rejections Under 35 U.S.C. § 103
Claim 1,
Applicant argues that Claims 1, 4, 13, 14 and 16 stand rejected under 35 U.S.C. § 103, as allegedly being unpatentable over Long (US 2010/0022392) ("Long") in view of Sakamato (US 5,308,827)
("Sakamato") and Dayan (WO 2021151733) ("Dayan"). Applicant disagrees. The Office action has not met its prima facie burden because neither Long nor Sakamato nor Dayan discloses, suggests, or provides a reasoned motivation to implement the claimed water-free dispersion step for an L-glufosinate salt using the particularly recited solvent and surfactant choices. Moreover, a skilled artisan would have had no expectation that this specific sequence of making the liquid herbicidal composition would reliably yield a clear homogeneous liquid in less than 2 hours. Instead the cited references address different formulation goals. Long is directed to phase-stable concentrates at low temperature. Sakamato is directed to aerosol foam systems. Long is directed to stable, sprayable glufosinate formulations and discloses solvents, surfactants, and mixing, but it does not teach first preparing, in the absence of water, a dispersion comprising an L-glufosinate salt and the recited solvent(s) or liquid surfactant(s), then admixing with water to obtain a clear homogeneous liquid in less than 2 hours. Long also does not recognize the underlying problem, which is initial water contact with L-glufosinate salt that can cause rock-solid lump formation. Accordingly, Long does not suggest a water-free pre-dispersion step to avoid that problem. In response to the Office action asserting that Long's room-temperature mixing inherently produces the claimed composition, Long always begins with glufosinate in a 50% aqueous solution, whereas the pending claims require forming a water-free dispersion, making the processes fundamentally different. Moreover, the Office action's characterization ignores that Long's own examples show phase separation, proving that simple aqueous mixing does not inherently yield the clear homogeneous liquid required by the claims.
Sakamato does not supply the missing teaching. Sakamato states that an herbicide and a surfactant were mixed to give a homogeneous solution or a suspension, and that a diluent (water) was added thereto to obtain a uniform emulsion or a suspension. However, Sakamato is directed to aerosol foam herbicides, not a liquid herbicidal composition. Further, Sakamato does not teach a water-free dispersion of an L-glufosinate salt for avoiding rock-solid lump formation or for producing a clear homogeneous liquid within less than 2 hours. In response to the Office action suggesting that Sakamato teaches a similar sequence of mixing herbicide, surfactant, and then water, Sakamato' s system is an aerosol foam formulation requiring up to 90% water and liquefied petroleum gas. Such a formulation and form are technologically unrelated to the claimed (non-foam) liquid composition. Sakamato never addresses the rock-solid lump problem that is unique to L-glufosinate, so Sakamato cannot suggest the claimed water-free dispersion process. Dayan likewise does not cure these defects. Dayan teaches that a mixture is "stirred for 1 h to produce spontaneously a thermodynamically stable microemulsion,"
Applicant's arguments have been fully considered and they are not persuasive because the basis for 103 rejection is that no one reference has to teach all the claim limitations for an obviousness rejection and therefore several references are combined to render the claims obvious. One with ordinary skill in the art can learn from and select specific parts of several prior arts’ teachings before the effective filing date of the invention to achieve better outcome results even though some prior arts may teach more and may teach different things. Applicant lists different aspects Long, Sakamoto or Dayan’s teachings, agreeing that they teach more and some of their teachings are different from what applicant recites in the application but one with skill in the art, is known for solving the same problem, is represented with design choices, may modify the teachings of the prior arts until they can achieve better outcome results. Long teaches preparation of a liquid herbicidal composition comprising: a water-soluble herbicidal ingredient; glufosinate salt, an organic solvent; and a surfactant. The L enantiomer has been observed to be the biologically active isomer. The composition is intended to encompass all the biologically active enantiomer, the L enantiomer of glufosinate and its ammonium salt or other salts such as potassium, sodium. The composition comprises an organic solvent including glycerol or propylene glycol. The preparation is taught by Sakamoto, who teaches Glufosinate herbicidal composition comprising a nonionic surfactant(s), a solvent, and a surfactant; the solvent can be 1-methoxy-2-propanol, the surfactants of alkyl sulfosuccinic acid, or polyoxyethylene sorbitan fatty acid ester and the preparations of herbicidal compositions: Sakamoto does not use Glufosinate 50% in water. shown in Tables 1 and 2. A herbicide and a surfactant were mixed to give a homogeneous solution or a suspension an antifreeze and a stabilizer. The mixture became a uniform liquid or a suspension. A diluent (water) was added thereto to obtain a uniform emulsion. Water is added later. Sakamato does teach a water-free dispersion. Sakamoto also teaches examples 1-5, and provides which formulation is a transparent homogeneous liquid. (Col. 5, line 60-64 and Col. 6, lines 44-54). The foam is some additional step Sakamoto teaches and it does not affect preparation of a homogeneous solution, which is not different from “applicant’s true homogenous solution” (REM, pg. 6). Also, Sakamoto also teaches some not successful formulations to avoid. (Col. 6, line 44-54). One with skill in the art knows general knowledge that time to obtain the liquid herbicidal composition depending on the total volume, the mixer type according to the prepared volume, the speed, and viscosity and ingredients.). Applicant claim 2hrs limitation admixing to obtain the liquid herbicidal composition, without prepared volume, the speed, mixer types and viscosity, is not a complete picture. Also, Dayan et al. teach methods producing specific herbicide combinations comprising L-glufosinate and/or salts thereof and comprises another active ingredient, a second herbicide, an organic solvent, a surfactant, and water. This mixture is stirred for 1 h to produce spontaneously a thermodynamically stable microemulsion. One with skill in the art can learn from Long, Sakamoto and Dylan to prepare Herbicide combinations comprising glufosinate and saflufenacil with some variations of time, equipment and temperature.
Conclusion
Applicants' 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 extension fee 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 date of this final action.
Correspondence
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NGOC-ANH THI NGUYEN whose telephone number is (571)270-0867. The examiner can normally be reached Monday - Friday 8:00 am.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A Wax can be reached on 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NGOC-ANH THI NGUYENExaminer, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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