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 .
Claim Objections
Claim 1 is objected to because of the following informalities: Crystalline should be lower case as it is not a proper noun. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 5, 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (WO2021002484, with priority to 10/31/2019 with US20230012374 used solely as an English translation for citation purposes), and further in view of Yerkes et al. (US20130310256) and Online Labs (https://web.archive.org/web/20160902082152/https://www.amrita.olabs.edu.in/?sub=73&brch=7&sim=110&cnt=1).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-3, Uchida teaches forming pyroxasulfone via the same and/or very similar methods which are instantly disclosed comprising the oxidation of 4 to form 5/5-a with sodium tungstate and hydrogen peroxide and the same solvents that are instantly claimed and Uchida teaches wherein the solid/crystalline pyroxasulfone product can be crystallized/recrystallized and as the pyroxasulfone in Uchida is being made by the same processes instantly disclosed it would obviously have the same XRPD peaks that are instantly claimed (see entire parts of document having priority to 10/31/2019; e.g. [0538-0553 which corresponds to [0469-0482 in priority document]; Claims 11-30 (correspond to claims 11-30 in priority document); [0429-0443] (corresponds to [0417-0430, in priority document])).
Regarding claims 9-10, Uchida teaches that their crystallized pyroxasulfone which is made via the same/very similar methods that are instantly disclosed with the same reagents and the same solvents can be recrystallized using the same solvents as are instantly claimed, specifically the instantly claimed methanol, THF, etc. ([0538-0553 which corresponds to [0469-0482 in priority document]; [0547]; Claims 11-30 (correspond to claims 11-30 in priority document); see also entire parts of document having priority to 10/31/2019).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claim 5, Uchida does not teach wherein their pyroxasulfone crystalline form which is the same as is instantly claimed is formulated into a composition with at least one agrochemically acceptable carrier. Further, Uchida appears to be teaching forming their crystalline pyroxasulfone via the same/overlapping method as is instantly claimed and the same solvents instantly claimed. This deficiency in Uchida is addressed by Yerkes.
Regarding claims 11-12, Uchida also does not specifically teach the claimed methods wherein the crystalline pyroxasulfone is used to selectively control grasses and broadleaf weeds in crops by applying an agrochemical composition comprising the claimed crystalline pyroxasulfone pre-emergently. Though Uchida does teach forming their very similar and/or obviously the same crystalline pyroxasulfone to that instantly claimed and teach that it was known to use pyroxasulfone as a herbicide ([0001-0003]). However, this deficiency in Uchida is also addressed by Yerkes.
Yerkes teaches that it was known to form compositions comprising agrochemically acceptable carriers and pyroxasulfone ([0005; points 1, 5, 21, 40, 43, 45-46]; Claims; [0006]; [0008-0009]; [0038-0039]; [0051]; [0055]; [0087]; examples, e.g. Table 25, etc.). Yerkes also teaches at [0039] that pyroxasulfone was known in the art to provide pre-emergent control of annual grasses and broadleaf weeds in crops, e.g. maize, wheat, etc.
Uchida does not specifically teach subjecting their pyroxasulfone to the claimed steps of recrystallization, e.g. subjecting the pyroxasulfone to a solvent system, precipitation, decanting and drying of their crystalline pyroxasulfone. Though as discussed above Uchida does teach wherein their crystalline pyroxasulfone which is made by the same/very similar methods to those instantly disclosed and as such is obviously the same form of pyroxasulfone instantly claimed can be recrystallized. However, this deficiency is addressed by Online labs.
Online labs teaches that in purification by crystallization/recrystallization that it is known to perform the claimed steps of subjecting the crystalline material to a solvent system followed by precipitation, then decanting, then drying the crystals providing pure material (see entire document, Let us discuss the basic steps…section).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art that the instantly claimed crystalline pyroxasulfone appears to obviously be the same and/or very similar crystalline pyroxasulfone made via the same/similar method instantly disclosed with sodium tungstate, hydrogen peroxide which is taught by Uchida as discussed above and as such one of ordinary skill in the art would have obviously formed the claimed crystalline pyroxasulfone because Uchida teaches that their pyroxasulfone can be subjected to crystallization/recrystallization which is commonly done using the same steps as is taught by Online Labs and Uchida teaches wherein the crystallization/recrystallization can be done using the same solvents that are instantly claimed. Thus, one of ordinary skill in the art would be led to make the claimed pyroxasulfone when following the method steps taught by Uchida and performing the claimed recrystallization/crystallization steps of Online labs with the solvents disclosed by Uchida since Uchida teaches this is a known method of purifying and isolating pyroxasulfone.
It also would have been obvious to crystallize/recrystallize the pyroxasulfone produced from the oxidation step and synthesis of Uchida to form a purified crystalline pyroxasulfone having the claimed properties because Uchida teaches that their pyroxasulfone which appears to be formed by the same/very similar/overlapping process to that instantly disclosed can be crystallized/recrystallized for purification using the claimed solvents and Online Labs teaches that the claimed recrystallization/crystallization process is the standard process used to recrystallize/crystallize products and as such would have been the obvious steps that one of ordinary skill in the art would have performed when crystallizing/recrystallizing the pyroxasulfone which is a known work up for providing isolated pure pyroxasulfone as is taught by Uchida.
It also would have been obvious to use the crystalline form of Uchida which is the same and/or very similar crystalline pyroxasulfone to that instantly claimed to develop the claimed method because it was already known in the art to use pyroxasulfone which is a known herbicide in methods of selectively controlling broadleaved weeds and annual grasses, e.g. a cross-spectrum method as claimed, in crops via application of pyroxasulfone wherein the pyroxasulfone is in composition with the appropriate agrochemically acceptable excipients as is taught by Yerkes. Thus, it would be obvious to use the crystalline forms of pyroxasulfone, such as that taught by Uchida to form herbicidal compositions and methods as are claimed and taught by Yerkes in order to form the instantly claimed compositions and methods since pyroxasulfone is already known to be formulated in such compositions and used in such methods in the prior art.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
An additional typographical/grammatical error has been noted in the new claim objection above as this is not a new grounds of rejection, the examiner has added it herein as it was inadvertently missed with the other capitalization issues last time.
Applicant’s arguments with respect to Uchida, specifically that Uchida does not specifically teach in the prior art the claimed crystalline form and that to be a proper 103 rejection using Uchida the examiner must identify the specific teachings of the prior art that would have led a person of ordinary skill in the art to the claimed invention with a reasonable expectation of success. Applicants argue that the examiner’s conclusion that Uchida uses a similar and/or the same process for forming pyroxasulfone, specifically similar reagents and solvents and that this process would necessarily yield the claimed crystalline form
is unsupported and contrary to well-established principles of crystallography. The examiner respectfully disagrees. Uchida is making their crystalline form of pyroxasulfone by substantially the same process being used by applicants in their disclosure to make the claimed crystalline form of pyroxasulfone and/or recrystallizing their solid pyroxasulfone using the same solvents as are instantly disclosed and discussed above and the same temperatures which are instantly disclosed as cited above and as it appears from applicants disclosure the method making the crystalline form is not completely particular to specific temperatures or solvents or specific concentrations, etc. as asserted and argued by applicants because for instance from the instant disclosure it appears that any form of pyroxasulfone when recrystallized in various solvents at various temperatures and various concentrations has been demonstrated to yield the claimed pyroxasulfone as per applicant’s disclosure. Thus, in the absence of evidence to the contrary one of ordinary skill in the art would conclude that the crystalline form of pyroxasulfone made by the processes of and/or recrystallized by the processes disclosed in Uchida is substantially the same and/or would result in the same crystalline form of pyroxasulfone that is instantly claimed because the steps are the same and the reagents are the same and/or the solvents and temperatures for recrystallization are the same as those which are instantly claimed and disclosed in the instant specification as leading to the claimed crystalline form of pyroxasulfone. Thus, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Thus, in the instant case, the examiner has explained/discussed above how the method being used to form the crystalline/solid pyroxasulfone of Uchida is substantially the same as the instantly disclosed method that is used to make the claimed crystalline form of pyroxasulfone and/or that Uchida teaches forming the claimed crystalline form of pyroxasulfone by recrystallization with the claimed disclosed solvents over the claimed temperature ranges as is discussed above, and as such one of ordinary skill in the art would obviously conclude that the crystalline/solid pyroxasulfone made via the methods/reactions and/or recrystallization processes/methods of Uchida is the same/substantially the same as the claimed crystalline form in the absence of evidence to the contrary since the same reagents and same solvents are being used to perform the same reactions and the same solvents are being used to recrystallize the obtained solid pyroxasulfone and wherein the temperatures of the reactions are the same/overlap, e.g. [0469], in priority document cited above corresponds to [0537 in US20230012374] and Uchida further teaches wherein their recrystallization methods are performed at the same temperatures and with the same solvents as per the citations above as the instantly claimed recrystallizations which yield pyroxasulfone A. Thus, the examiner respectfully disagrees with applicant’s assertion that the only similarities between the method of Uchida and the instantly disclosed method are the solvents and reactants used to make the claimed crystalline pyroxasulfone. Thus, clearly the methods of forming pyroxasulfone and/or recrystallizing pyroxasulfone which are disclosed in Uchida are substantially the same as the instantly disclosed method for the reasons discussed above and herein, and one of ordinary skill in the art would obviously conclude that the product formed in Uchida’s earlier disclosed synthesis and/or recrystallization methods is/are substantially the same/the same as the crystalline pyroxasulfone instantly claimed especially in the absence of evidence to the contrary.
Applicants then argue that the secondary references do not overcome the deficiencies with respect to Uchida because they do not teach the claimed crystalline form. The examiner respectfully disagrees for the reasons which are discussed above and incorporated herein.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 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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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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