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 .
Response to Amendment
The Applicant's amendments and/or arguments filed 03 November 2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 03 November 2025, it is noted that claims 1, 7-10, 15, 22, 23, 25 and 30 were amended and claims 2, 17, 24 and 32 were cancelled. No new matter has been added.
Applicant’s amendment to claim 1 narrows the scope of the invention by incorporating the specific dispersant, a substantially water-immiscible organic solvent, and the inorganic halides as a water-soluble inorganic stabilizing agent, each of which was separately recited in previously presented claims 2, 22, and 24, as well as the new limitation that “at least a portion of compound (A) is present in the oil phase and at least a portion of compound (B) is present in the aqueous phase.” This amendment necessitates a new ground of rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15 and 30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 15 and 30 recite that “compound (B) comprises or consists of the monoethanolamine salt of dicamba and/or the monoethanolamine salt of 2,4-D.” The use of both the open-ended transitional term “comprising” and the closed transitional term “consisting of” in the same phrase creates ambiguity as to whether the claim scope is open to additional ingredients or unrecited components, or closed to such components. Similar to the analysis required when a claim includes both narrow and broader ranges or limitations, the boundaries of the claim are not clearly discernible.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-12, 14-15, 19-23, 25-27 and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0254277A1 (Jin Y., hereinafter “Jin) in view of WO 2019/126713 A1 (Gao et al., hereinafter “Gao”) and further in view of US 6,713,433 B2 (Jimoh, hereinafter “Jimoh”).
Jin teaches herbicidal compositions comprising one or more Group A herbicides selected from saflufenacil, trifludimoxazin, flumioxazin, or ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate, hereinafter referred to as compound A, either alone or in combination with one or more Group B herbicides, including auxin herbicides such as dicamba or dicamba salts, for example salts of choline, BAPMA, trolamine, diolamine, isopropylammonium, diglycolamine, olamine, sodium, potassium, and the like (Abstract; [0010]-[0012]; [0028]; [0187]-[0189]). Jin discloses a combination of compound X, which is ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate, and dicamba as a preferred embodiment ([0118]; [0195]; Examples 577-864). This herbicidal composition reads on the composition comprising compound A and B except the monoethanolamine salt form of dicamba as recited in instant claim 1. Jin also teaches that the weight ratio of compound X to the one or more different herbicide is usually 0.01 to 100 times, preferably 0.1 to 100 times, and more preferably 1 to 10 times ([0194]); that the composition can be formulated with adjuvants/surfactants such as oil-type Agri-Dex or MSO, nonionic types (esters or ethers of polyoxyethylene), anionic types, and cationic types ([0121]); that the pH and hardness of the spray dilution when applying the Group A compound are usually in the pH range of 5 to 9 and a hardness range of 9 to 500 ([0122]); and that the composition can be formulated in various forms including aqueous emulsion, oil-based emulsion, and emulsifiable concentrate ([0119]).
The ratio range taught or suggested by Jin, namely 0.01 to 100 times, preferably 0.1 to 100 times, and more preferably 1 to 10 times, encompasses the weight ratio range recited in instant claim 3. Jin also discloses glyphosate or a salt thereof as an additional herbicide ([0188]-[0189]; [0192]; Examples 289-576). This reads on the composition further comprising one or more constituents selected from herbicidal active compounds, specifically glyphosate and salts thereof, as recited in instant claims 5, 6, 20, and 21.
Jin primarily differs from the instant claimed invention in that it does not expressly teach:
that the dicamba salt is one or more monoethanolamine salts of auxin herbicides, a recited in instant claims 1, 14, 15, 29, and 30;
and that the composition is in the form of an oil-in-water microemulsion comprising an aqueous phase and an oil phase, wherein at least a portion of compound A is present in the oil phase and at least a portion of compound B is present in the aqueous phase, and the composition further comprises at least one dispersant selected from phosphate esters and/or alkylpolyglucosides, a substantially water-immiscible organic solvent, and one or more water-soluble inorganic stabilizing agents selected from inorganic halides.
Jin further fails to expressly teach:
(iii) that compound B is present in the composition in a total concentration of up to about 65 wt%, or more specifically about 10 wt% to about 65 wt%, based on the total weight of the composition, as recited in instant claims 4 and 19;
(iv) that the herbicide composition further comprises a substantially water-immiscible organic solvent, preferably one selected such that compound A has an organic solvent/water partition coefficient, expressed as a logarithm, of about 4 or greater or about 5 or greater, as recited in instant claims 8 and 23;
(v) that the one or more water-soluble inorganic stabilizing agents are selected from ammonium halides, alkali metal halides, and/or alkaline earth halides, and that the concentration of the one or more water-soluble stabilizing agents is sufficient to provide a concentration of halide ions of from about 0.5 wt% to about 2.5 wt%, based on the total weight of the composition, as recited in instant claims 9-10 and 25;
(vi) that the composition further comprises one or more monocarboxylic acids or salts thereof, particularly a C1-C4 alkyl monocarboxylic acid or salt thereof, as recited in instant claims 11 and 26; and
(vii) that the pH value of a diluted composition is less than 7, more specifically between about 4.5 and about 6, when the composition is diluted with water such that the concentration of the auxin herbicide monoethanolamine salt corresponds to 1.2 wt%, calculated as auxin herbicide acid and measured at 25°C and 1013 mbar, as recited in instant claims 12 and 27.
Regarding item (i) above, the combination of components A and B, Gao teaches an aqueous herbicidal composition comprising an auxin herbicide such as dicamba and/or a salt thereof in combination with glufosinate (Abstract). Examples of dicamba salts include monoethanolamine, tetrabutylamine, dimethylamine, isopropylamine, diglycolamine, potassium, and sodium salts ([0017]). Gao further teaches that monoethanolamine salts of dicamba have been found to be especially suitable for providing stable herbicide concentrate compositions with reduced dicamba volatility ([0018]). Monoethanolamine dicamba is the Applicant’s elected species for compound B as recited in instant claim 1.
It would have been obvious to one of ordinary skill in the art to combine Jin and Gao and substitute Jin’s dicamba salt with Gao’s monoethanolamine dicamba salt. Gao expressly teaches monoethanolamine dicamba as a suitable dicamba salt and teaches its use in herbicidal compositions to enhance stability. A POSITA would have recognized monoethanolamine dicamba as a known dicamba salt and would have had a reasonable expectation that replacing Jin’s dicamba salt with monoethanolamine dicamba would preserve the expected herbicidal performance without deleterious effect. Because Jin and Gao are directed to similar herbicidal compositions and each achieves successful results, the proposed substitution would have been a routine and predictable modification.
Regarding item (ii) above, formulation of the combination into an oil-in-water microemulsion, Jimoh teaches that liquid concentrate coformulations of water-soluble and oil-soluble herbicides are known in the art in the form of emulsions, most commonly oil-in-water emulsions having a discontinuous oil phase and a continuous aqueous phase with the aid of one or more emulsifying agents (Col. 2, lines 22-27). Jimoh further teaches that herbicidal microemulsions offer a number of practical advantages, including remaining homogeneous without agitation for long periods of time; in this respect, a microemulsion can be handled with the same ease and convenience as a simple aqueous solution (Col. 2, lines 37-43).
Jimoh teaches that the physical stability of oil-in-water emulsions can be enhanced by including a non-surfactant stabilizing agent (Col. 16, lines 60-62). Examples include ammonium chloride and alkali metal chlorides such as sodium chloride or potassium chloride (Col. 16, lines 64-67 through Col. 17, lines 1-2). Jimoh also teaches that the solvent for the oil-soluble herbicide must be substantially immiscible with water, and that the affinity of the solvent for the oil-soluble herbicide must be such that substantially all of the oil-soluble herbicide partitions into the oil phase and substantially none partitions into the aqueous phase; one skilled in the art can determine whether a particular organic solvent meets this criterion using standard partition-testing procedures (Col. 13, lines 42-55).
Jimoh further teaches formulation of a liquid herbicidal microemulsion composition including a stabilizing amount of water-soluble chlorides, an oil-soluble herbicide such as flumioxazin, and water-soluble dicamba salt (Col. 4, line 29 through Col. 5, line 4; Col. 10, lines 1-24; Claims 6, 55, and 59), and that the formulation may further contain one or more dispersing agents or surfactants known to be effective as dispersing agents (Col. 17, lines 15-27; Claims 82, 106, 109, and 130). Jimoh teaches that the water-soluble chloride stabilizing agent is present in a concentration sufficient to provide chloride ions in an amount of from about 0.5 wt% to about 2.5 wt%, and that the stabilizing agent comprises ammonium chloride, sodium chloride, hydrochloric acid, or combinations thereof (Claims 73 and 74). Jimoh teaches that the microemulsion comprises a substantially water-immiscible organic solvent in the oil phase, wherein the solvent is selected such that the oil-soluble herbicide has an organic solvent/water partition coefficient, expressed as a logarithm, of about 4 or greater, and more specifically about 5 or greater (Claims 67 and 72). Jimoh also teaches that the solvent may be an aromatic solvent (Claim 71).
Jimoh further teaches that selecting application rates to provide a desired level of herbicidal activity for a composition containing a specific water-soluble herbicide and a specific oil-soluble herbicide is within the skill of the ordinary agricultural technician. One skilled in the art would recognize that plant conditions, weather, growing conditions, and the specific exogenous chemical substance selected can affect the results achieved in using the composition (Col. 19, line 66 through Col. 20, line 18).
It would have been obvious to one of ordinary skill in the art to formulate the herbicidal composition of Jin and Gao as an oil-in-water microemulsion in view of Jimoh. Jimoh teaches that herbicidal microemulsions provide practical advantages and remain homogeneous without agitation for extended periods of time, thereby facilitating convenient handling and application. Jimoh further teaches that oil-in-water emulsions are suitable for co-formulating water-soluble and oil-soluble herbicides, with the oil-soluble herbicide present in the oil phase and the water-soluble herbicide present in the aqueous phase. Jin teaches that saflufenacil, trifludimoxazin, flumioxazin, and ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate are oil-soluble herbicides ([0121]). Accordingly, one of ordinary skill in the art would have been motivated to formulate the combination such that compound A is present in the oil phase and compound B is present in the aqueous phase, as taught by Jimoh, to obtain a stable and homogeneous herbicidal mixture formulation.
Regarding the incorporation of ii) the one or more water-soluble stabilizing agents at iv) the instantly claimed concentration, it would have been prima facie obvious to one of ordinary skill in the art to add one of the chloride stabilizing agents taught by Jimoh at the taught concentration, when generating the microemulsion. The ordinarily skilled artisan would have been motivated to add the chloride stabilizing agent based on Jimoh’s teaching that physical stability of oil-in-water emulsions can be enhanced by including a non-surfactant stabilizing agent such as ammonium chloride. The ordinarily skilled artisan would find a reasonable expectation of success incorporating this stabilizing agent into the oil-in-water microemulsion composition rendered obvious by Jin and Gao because Jimoh teaches a similar dicamba-containing emulsion which benefits from incorporation of chloride stabilizing agent wherein the ion concentration is 0.5% to about 2.5% by weight of the composition.
Regarding the inclusion of (ii) a dispersant, iii) the specific concentration of compound (B), and (vi) monocarboxylic acid or salt thereof, Gao teaches a formulation of monoethanolammonium (aka monoethanolamine) dicamba and subsequent use of the monoethanolamine dicamba at 34.02 wt % in formulations combining the monoethanolamine dicamba salt with secondary herbicide, water, potassium acetate and surfactant; said formulations are referred to in Gao’s Example 7 ([0092] Table 2; [0099] Table 7). Gao teaches formulations of Example 7 remain stable and don’t produce precipitate when being subject to a range of temperatures, from -20 ºC to 55 ºC, for a duration of 11 weeks ([0107] Table 15.1 columns “10053200-4,” “10053200-8” and “10053200-9”). Gao teaches specific surfactants in the formulations of Example 7 include C-6178, which is a blended ethoxylated tallowamine and phosphate ester, and AL-2559, which is an alkylpolyglycoside ([0099] Table 7 “10053200-2” and “10053200-9”; [0123] Table 19.1 “10050629-10” and “10050629-15”). Gao teaches that certain surfactants provide for herbicidal concentrate compositions exhibiting enhanced stability ([0029]). Gao also teaches that the use of monocarboxylic acids and/or salts thereof in herbicidal compositions control or reduce potential herbicide volatility ([0024]). Gao teaches the preferred salt is potassium acetate ([0026]).
Gao teaches the humidome volatility of the formulations of Example 7 after all formulations were diluted to 1.2% acid equivalent of the dicamba (Example 17 [0120]; Table 17). When sprayed on soil at 35 ºC, the specific formulation of Example 7 which uses C-6178 as surfactant (Formulation 10053200-2) demonstrates a pH of 6.8 and a low amount of dicamba in air (0.064 ng/L) relative to the other formulations tested ([0099] Table 7 “10053200-2”; [0120] Table 17 “10053200-2”). The examiner notes that it is apparent from Table 17 that the variations on formulation ingredients, particularly surfactant used and corresponding wt %, slightly impact pH while more drastically impacting the amount of dicamba in the air (see all formulations labeled “10053200” in Table 17 and their corresponding compositional makeups in Table 7).
It would have been prima facie obvious for an ordinarily skilled artisan to also incorporate potassium acetate (a C1-C4 alkyl monocarboxylic acid) and one of Gao’s surfactants (particularly C-6178, which comprises a phosphate ester) into the herbicide composition of Jin and arrive at the instantly claimed invention. The ordinarily skilled artisan would have been motivated to incorporate these ingredients into Jin’s composition based on Gao’s teachings that surfactants and monocarboxylic acids enhance herbicide stability and reduce volatility, and this combination of specific surfactant (C-6178) and C1-C4 alkyl monocarboxylic acid (potassium acetate) demonstrates increased stability of herbicide compositions in Gao’s Example 7 Formulation 10053200-2. The ordinarily skilled artisan would have a reasonable expectation of success adding these ingredients to the composition of Jin because Gao and Jin are written towards similar herbicidal compositions which individually demonstrate success, and a simple addition of Gao’s dispersing agent/surfactant and C1-C4 alkyl monocarboxylic acid to the composition of Jin would not be expected to have deleterious effects towards the success of Jin’s herbicide composition.
Regarding the incorporation of (iv) the substantially water-immiscible organic solvent, it would have been prima facie obvious to one of ordinary skill in the art to include an organic solvent in the microemulsion which follows the parameters taught by Jimoh regarding the partition coefficient of compound A. The ordinarily skilled artisan would have been motivated to do so upon formulation of the oil-in-water microemulsion rendered obvious by the combined teachings because, during formulation, it would become apparent that compound A is inherently an oil-soluble herbicide (see Jin ([0121]) whereas monoethanolamine dicamba salt is inherently water-soluble, as evidenced by the instant specification (see instant specification [0012]) as well as Jimoh (Col. 4, line 29 through Col. 5, line 4; Col. 10, lines 1-24; Claims 6, 55, and 59). Thus, the ordinarily skilled artisan would seek appropriate solvents to successfully incorporate the oil-soluble herbicide component, compound A, into the microemulsion, and would use the teachings of Jimoh to work within the list of known aromatic solvents and perform routine optimization to determine solvents that can provide Jimoh’s taught partition coefficient for the oil-soluble herbicide compound A. The ordinarily skilled artisan would have a reasonable expectation of success performing this optimization based on the teaching of Jimoh that one skilled in the art will readily be able to determine whether a particular organic solvent meets the aforementioned criteria by following any standard test procedure for determining partition of a compound between water and the organic solvent.
Regarding (vii) the pH-value of a diluted composition being less than 7, more specifically between about 4.5 to about 6, when the composition is diluted with water such that the concentration of the auxin herbicide monoethanolamine salt corresponds to 1.2% by weight calculated as auxin herbicide acid and measured at 25°C and 1013 mbar, it would have been prima facie obvious for the ordinarily skilled artisan to perform routine optimization on the amount of C-6178 surfactant incorporated into the composition of Jin in order to optimize the reduction of herbicide volatility in standard application conditions. Gao establishes the surfactant used and its concentration in herbicide compositions corresponds to variations in volatility of the dicamba in the composition; thus, the surfactant identity and concentration is a results-effective variable. The ordinarily skilled artisan would have noted the concentration of C-6178 surfactant of Formulation 10053200-2 in Example 7, and would use this as a starting point to perform optimization with the goal of minimizing dicamba volatility upon application of the diluted composition in standard conditions of 25°C and 1013 mbar; upon performing this optimization, one would have naturally come upon the instantly claimed conditions for pH in standard application conditions. The ordinarily skilled artisan would have pursued this optimization with a reasonable expectation of success based on the fact that the choice and amount of surfactant corresponds to an herbicide with pH around 6-7 with improvement of volatility in herbicide compositions. Additionally, it is noted that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical (see MPEP 2144.05 II(A)). There is no apparent evidence in the instant disclosure that the pH within the instantly claimed range for the composition when diluted with water and at 25°C and 1013 mbar is critical for the herbicide composition as claimed.
Claims 13 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0254277A1 (Jin Y., hereinafter “Jin) and WO 2019/126713 A1 (Gao et al. hereinafter “Gao”) as applied to claims 1, 3-12, 14-15, 19-23, 25-27 and 29-30 above, and further in view of US 6,713,433 B2 (Jimoh, G. A., hereinafter “Jimoh”) and WO 2019/092158 A1 (Moity et al., hereinafter “Moity”).
The modified teachings of Jin (Jin, Gao and Jimoh) are addressed supra.
The combined references differ from the instantly claimed invention in that they fail to teach the herbicide composition further comprises a drift retardant agent, particularly one comprising one or more fatty oils in a total amount in the range of about 1 wt % to about 10 wt % based on the total weight of the composition, as recited in instant claims 13 and 28 respectively.
Moity teaches that spray drift is a problem frequently faced when using the auxin class of herbicides (p. 1. Lines 11-16). Moity teaches there remains a need for new drift control agents making it possible to prepare stable concentrated compositions of at least one water-soluble salt of an auxin herbicide, especially in the presence of a relatively high amount of a water-soluble salt, without a need for a suspending agent (p. 4 lines 11-14). Moity teaches the use of a specific drift control agent in a pesticide composition comprising water-soluble salt of auxin herbicide (p. 4 lines 31-16). Moity teaches the auxin of the pesticide composition comprises dicamba salt, wherein the salt is monoethanolamine (p. 6 lines 4-7). Moity teaches the drift control agent comprises at least one fatty deposition control agent comprising one or more fatty acids, and at least one surfactant (p. 8 lines 23-25). The fatty deposition agent is tall oil fatty acid, which reads on a broad interpretation of a “fatty oil” (p. 8 lines 35-36). Furthermore, fatty deposition control agent soybean oil was exemplified in the composition, which is another example of a “fatty oil” (p. 15 lines 27-30). Moity teaches the composition comprises the drift control agent in an amount ranging from 1% to 50% by weight, more particularly 5% to 30% by weight, of the composition (Claim 5). Moity teaches that an aqueous spray composition comprising the tall oil fatty acid drift control retardant exhibited a comparatively smaller amount of spray droplets susceptible to spray drift than those exhibited in the commercially available aqueous spray EngeniaTM (p. 17 lines 16-18; Table II).
It would have been prima facie obvious to one of ordinary skill in the art to add the drift control agent tall oil fatty acid in the taught concentration range of Moity into the herbicide composition rendered obvious by the combined teachings of Sada and Gao, and arrive at the instant invention. The ordinarily skilled artisan would have been motivated to do so based on Moity’s teachings that auxin herbicides are susceptible to drift; the ordinarily skilled artisan would have been impressed with the reduced susceptibility of the particles formed in Moity’s composition comprising auxin herbicide and the tall oil fatty acid drift control agent, and would seek to incorporate these effects into the composition rendered obvious by Sada and Gao. The ordinarily skilled artisan would have a reasonable expectation of success incorporating Moity’s drift control agent into the monoethanolamine dicamba salt-containing composition based on the success demonstrated when using this drift control agent in herbicide compositions, and due to the fact that Moity’s similar herbicide composition also comprises dicamba salt of monoethanolamine; and a simple addition of Moity’s drift control agent to the composition would not be expected to have deleterious effects towards the success of the herbicide composition.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d
1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d
438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA
1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159.
See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-12, 14-15, 23, 19-23, 25-27 and 29-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, 16, 18-22, 25-28 and 30 of copending Application No. 17/792,611 in view of US 6,713,433 B2 (Jimoh, G.) published 20 March 2004 (cited in IDS 07/13/2022).
App’611 claims an herbicide composition in the form of an oil-in-water microemulsion comprising compounds (A) and (B), wherein: (A) denotes ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate; and (B) denotes one or more dicamba salts “selected from the group consisting of the tetrabutylamine salt of dicamba consisting of the tetrabutylamine salt of dicamba, the dimethylamine salt of dicamba, the isopropylamine salt of dicamba, the diglycolamine salt of dicamba, the N,N-bis-(3- aminopropyl)methylamine salt of dicamba, the choline salt of dicamba, the diethanolamine salt of dicamba, the triethanolamine salt of dicamba, the potassium salt of dicamba, and the sodium salt of dicamba, and wherein: the oil-in-water microemulsion comprises an aqueous phase and an oil phase, wherein at least a portion of compound (A) is present in the oil phase and at least a portion of compound (B) is present in the aqueous phase; and the composition further comprises: a dispersant selected from the group consisting of phosphate esters and alkvlpolyglucosides (APG); a substantially water-immiscible organic solvent; and one or more water-soluble inorganic stabilizing agents selected from the group consisting of inorganic halides” (Claim 1). App’611 claims compound (B) is selected from a group that includes the monoethanolamine salt of dicamba (Claim 1). Instant claims 1, 14, and 15 recite the exact limitation for compound A, a dispersant, a water-immiscible organic solvent and one or more water-soluble inorganic stabilizing agents, and recite limitations that are generic to (broader than) the limitations of the herbicide composition and compound B recited in App’611 claim 1. Thus, claim 1 of App’611 anticipates instant claims 1, 14 and 15. Similarly, App’611 claims the herbicide composition of claim 1 comprising compound (B) in a total amount in the range from about 10 wt % to about 65 wt % based on the total weight of the composition (Claim 18). App’611 claims the herbicide composition in claim 18 wherein compound (B) is selected from a group that includes monoethanolamine salt of dicamba (Claim 28). Instant claims 19, 29 and 30 recite the exact limitation for compound A as well as the amount for compound B, and recite limitations that are generic to (broader than) the limitations of the herbicide composition and compound B recited in App’611 claim 28. Thus, claim 28 of App’611 anticipates instant claims 19, 29 and 30.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Additionally, App’611 claims the herbicide composition of claim 1 (in which compound B is defined only as “one or more dicamba salts”) wherein the ratio by weight of the total amount of compound (A) and the total amount of compound (B) is in the range of from about 1:1 to 1:100 (Claim 3). This reads on the range of instant claim 3. App’611 claims the following about the herbicide composition of claim 1: it comprises compound (B) in a total amount of up to about 65 wt. % (Claim 4); it further comprises one or more constituents selected from the group consisting of other herbicidal active compounds, herbicide safeners, formulation auxiliaries and additives customary in crop protection, said herbicidal active compound selected from the group consisting of glyphosate and salts thereof (Claims 5 and 6); it further comprises at least one dispersant, preferably one or more dispersants selected from the group consisting of phosphate esters and/or one or more alkylpolyglucosides (Claim 7); it further comprises a substantially water-immiscible organic solvent, wherein the organic solvent is preferably selected such that compound (A) has an organic solvent/water partition coefficient, expressed as a logarithm, of about 4 or greater (Claim 8); it further comprises one or more water-soluble stabilizing agents selected from the group consisting of inorganic halides, wherein the stabilizing agent is present in a concentration sufficient to provide a concentration of halide ions, preferably of chloride ions, of from about 0.5% to about 2.5% by weight, based on the total weight of the composition (Claims 9, 10 and 24); it further comprises one or more mono carboxylic acids and/or salts thereof (Claim 11); the pH-value of a diluted composition is less than 7, when diluted with water such that the concentration of the dicamba salt corresponds to 1.2% by weight calculated as dicamba acid and measured at 25°C and 1013 mbar (Claim 12); it further comprises a drift retardant agent (Claim 13); it is used for controlling harmful plants (Claim 16); it further comprises one or more C1-C4-alkyl mono carboxylic acids and/or salts thereof (Claim 25); the pH-value of a diluted composition is in the range of about 4.5 to about 6, when the composition is diluted with water such that the concentration of the dicamba salt corresponds to 1.2% by weight calculated as dicamba acid and measured at 25°C and 1013 mbar (Claim 26); and it further comprises a drift retardant agent selected from one or more fatty oils in a total amount in the range of about 1 wt. % to about 10 wt. % based on the total weight of the composition (Claim 27).
Additionally, App’611 further limits claim 1 (which, once again, only defines compound
(B) as “one or more dicamba salts”) that it comprises compound (B) in a total amount in the range from about 10 wt % to about 65 wt % based on the total weight of the composition (Claim 18). App’611 claims the following about the herbicide composition of claim 18; it further comprises one or more constituents selected from the group consisting of other herbicidal active compounds, herbicide safeners, formulation auxiliaries and additives customary in crop protection, said herbicidal active compound selected from the group consisting of glyphosate and salts thereof (Claims 19 and 20); wherein the organic solvent is preferably selected such that compound (A) has an organic solvent/water partition coefficient, expressed as a logarithm, of about 4 or greater (Claim 22); and it is used for controlling harmful plants (Claim 30).
App’611 claims substantially identical subject matter to instant claims 1, 3-12, 14-15, 19-23, 25-27 and 29-30. Therefore, it would have been prima facie obvious for the ordinarily skilled artisan to use the teachings of App’611 and choose the monoethanolamine salt dicamba to be the salt of dicamba, and arrive at the instant invention. The ordinarily skilled artisan would have done so, with a reasonable expectation of success, due to the fact that App’611 claims monoethanolamine salt of dicamba to be one of the choices for salts of dicamba used in the herbicide composition.
Additionally, App’611 differs from the instantly claimed invention in that it fails to claim the inorganic halides of the one or more water-soluble stabilizing agents is preferably selected from the group consisting of ammonium halides, alkali metal halides, and alkaline earth halides, as recited in instant claim 9.
Jimoh teaches that physical stability of oil-in-water emulsions can be enhanced by including a non-surfactant stabilizing agent (Col. 16 lines 60-62). Examples include ammonium chloride and alkali metal chlorides such as sodium chloride or potassium chloride (Col. 16 lines 64-67 through Col. 17 lines 1-2). Jimoh teaches formulation of a liquid herbicidal microemulsion composition including a stabilizing amount of water-soluble chlorides, an oil-soluble herbicide and water-soluble dicamba (Claims 55 and 59). Jimoh teaches the water-soluble chloride stabilizing agent is present in a concentration sufficient to provide a concentration of chloride ions of from about 0.5% to about 2.5% by weight, and the stabilizing agent comprises ammonium chloride, sodium chloride, hydrochloric acid or a combination thereof (Claims 73 and 74).
It would have been prima facie obvious to one of ordinary skill in the art to choose one of the chloride stabilizing agents taught by Jimoh when generating the oil-in-water microemulsion of App’611. The ordinarily skilled artisan would have been motivated to add one of the specific chloride stabilizing agents based on Jimoh’s teaching that physical stability of oil-in-water emulsions can be enhanced by including a non-surfactant stabilizing agent such as the ones specifically listed. The ordinarily skilled artisan would find a reasonable expectation of success incorporating this stabilizing agent into the oil-in-water microemulsion composition of App’611 because Jimoh teaches these to be examples of chloride-based stabilizing agents that are effective in similar dicamba-containing oil-in-water microemulsion herbicide formulations.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3-12, 14-15 19-27 and 29-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-13, 17-22 and 24-26 of copending Application No. 17/792,607 in view of WO 2017/007873 A1 (Jones, R. S.) published 01 December 2017 and US 6,713,433 B2 (Jimoh, G.) published 20 March 2004 (both cited in IDS 07/13/2022).
App’607 claims a herbicide composition comprising compounds (A) and (B), wherein: (A) denotes one or more protoporphyrinogen oxidase (PPO) inhibitor herbicides; and (B) denotes dicamba monoethanolamine salt, wherein the composition is in the form of an oil-in-water emulsion and further comprising: at least one dispersant; a substantially water-immiscible organic solvent; and one or more water-soluble stabilizing agents (Claim 1); the composition is in the form of an oil-in-water microemulsion (Claim 2); the ratio by weight of the total amount of compound (A) and the total amount of compound (B) is in the range of from about 1:1 to 1:75 (Claim 3); compound (B) is present in a total amount of up to about 65 wt.% based on the total weight of the herbicide composition (Claim 4); the composition further comprises one or more constituents selected from the group consisting of other herbicidal active compounds, herbicide safeners, formulation auxiliaries and additives customary in crop protection, said herbicidal active compound is selected from the group consisting of glyphosate and salts thereof (Claim 5 and 6); the at least one dispersant is at least one phosphate ester (Claim 7); the substantially water-immiscible organic solvent is selected such that compound (A) has an organic solvent/water partition coefficient, expressed as a logarithm, of about 4 or greater (Claim 8); the one or more water-soluble stabilizing agents are selected from the group consisting of inorganic halides, wherein the stabilizing agent is present in a concentration sufficient to provide a concentration of halide ions of from about 0.5% to about 2.5% by weight, based on the total weight of the composition (Claim 10); the composition further comprises one or more mono carboxylic acids and/or salts thereof (Claim 11); the pH-value of a diluted composition is less than 7, when the composition is diluted with water such that the concentration of the dicamba monoethanolamine salt corresponds to 1.2% by weight calculated as dicamba acid and measured at 25°C and 1013 mbar (Claim 12); the composition further comprises a drift retardant agent, in a total amount in the range of about 1 wt.-% to about 10 wt.-%, based on the total weight of the composition (Claim 13); the composition comprises compound (B) in a total amount in the range from about 10 wt.% to about 65 wt.%, based on the total weight of the herbicide composition, and further comprises the herbicidal active compound selected from the group including glyphosate and salts thereof (Claims 17-19); the at least one dispersant is selected from the group consisting of phosphate esters and/or one or more alkylpolyglucosides (Claim 20); the substantially water-immiscible organic solvent is selected such that compound (A) has an organic solvent/water partition coefficient, expressed as a logarithm, of about 5 or greater (Claim 21); the one or more water-soluble stabilizing agents are selected from the group consisting of inorganic halides (Claim 22); the composition further comprises one or more C1-C4-alkyl mono carboxylic acids and/or salts thereof (Claim 24); the pH-value of a diluted composition is in the range of about 4.5 to about 6.0, when the composition is diluted with water such that the concentration of the dicamba monoethanolamine salt corresponds to 1.2% by weight calculated as dicamba acid and measured at 25°C and 1013 mbar (Claim 25); and the composition further comprises a drift retardant agent, wherein the drift retardant agent comprises one or more fatty oils, in a total amount in the range of about 1 wt.% to about 10 wt.% based on the total weight of the composition (Claim 26).
App’607 claims substantially identical subject matter to instant claims 1, 3-12, 14-15, 19-23, 25-27 and 29-30 except for the fact that App’607 doesn’t claim that compound (A) is ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo- 1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate, as recited in instant claim 1. Additionally, App’607 differs from the instantly claimed invention in that it fails to claim the inorganic halides of the one or more water-soluble stabilizing agents are preferably selected from the group consisting of ammonium halides, alkali metal halides, and alkaline earth halides, as recited in instant claim 9.
Jones teaches that ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate is a PPO inhibitor ([[00011]). Jones teaches that when ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate is applied in combination with glyphosate, the glyphosate unexpectedly enhances the activity of ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo- 1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and is highly effective at controlling emerged volunteer corn resistant to glyphosate ([00012]).
Jimoh teaches that physical stability of oil-in-water emulsions can be enhanced by including a non-surfactant stabilizing agent (Col. 16 lines 60-62). Examples include ammonium chloride and alkali metal chlorides such as sodium chloride or potassium chloride (Col. 16 lines 64-67 through Col. 17 lines 1-2). Jimoh teaches formulation of a liquid herbicidal microemulsion composition including a stabilizing amount of water-soluble chlorides, an oil-soluble herbicide and water-soluble dicamba (Claims 55 and 59). Jimoh teaches the water-soluble chloride stabilizing agent is present in a concentration sufficient to provide a concentration of chloride ions of from about 0.5% to about 2.5% by weight, and the stabilizing agent comprises ammonium chloride, sodium chloride, hydrochloric acid or a combination thereof (Claims 73 and 74).
Regarding compound (A), it would have been prima facie obvious to one of ordinary skill in the art to choose to use ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate as PPO-inhibitor in the composition of App’611 and arrive at the instant invention. One of ordinary skill in the art would have been motivated to do so based on Jones’ teachings that the PPO-inhibitor ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo- 1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate, when combined with glyphosate (which is present in the composition of App’611) exerts unexpected herbicidal effects on emerged volunteer corn that isotherwise resistant to glyphosate. One of ordinary skill in the art would find a reasonable expectation of success to use ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate because it is a known effective PPO-inhibitor in herbicide compositions, and App’611 claims the genus of “PPO-inhibitor” (therefore, any species of PPO inhibitor) is appropriate in its composition. Because the limitation of compound (A) is rendered obvious, the intended use of the resulting herbicide compound is rendered obvious.
Regarding the stabilizing agent, it would have been prima facie obvious to one of ordinary skill in the art to choose one of the chloride stabilizing agents taught by Jimoh when generating the oil-in-water microemulsion of App’611. The ordinarily skilled artisan would have been motivated to add one of the specific chloride stabilizing agents based on Jimoh’s teaching that physical stability of oil-in-water emulsions can be enhanced by including a non-surfactant stabilizing agent such as the ones specifically listed. The ordinarily skilled artisan would find a reasonable expectation of success incorporating this stabilizing agent into the oil-in-water microemulsion composition of App’611 because Jimoh teaches these to be examples of chloride-based stabilizing agents that are effective in similar dicamba-containing oil-in-water microemulsion herbicide formulations.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3-5, 7-8, 13-15, 19-20, 22 and 29-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 8 and 15 of copending Application No. 18/034,447 (allowed on 3/11/2026 but yet published as a patent) in view of WO 2019/126713 A1 (Gao, J.; Macinnes, A.) published 27 June 2019 (cited in IDS 07/13/2022).
App’447 claims a herbicide composition comprising compounds (A) and (B), wherein: (A) denotes ethyl [3-[2-chloro-4-fluoro-5-( 1-methyl-6-trifluoromethyl-2,4-dioxo- 1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy] -2-pyridyloxyj acetate (epyrifenacil); and (B) denotes thetriethanolamine (TEA) salt of 2,4-D (2,4-dichlorophenoxyacetic acid) wherein the composition is in the form of an oil-in-water microemulsion, and the composition further comprises “a phosphate ester dispersant, one or more drift retardant agents selected from…” (Claim 1) ; a ratio by weight of a total amount of compound (A) and a total amount of compound (B) is in a range of from about 1:10 to about 1:150 (Claim 4); the herbicide composition comprises compound (B) in a total amount of up to about 75 wt.% based on the total weight of the herbicide composition (Claim 5); the composition further comprises one or more constituents selected from the group consisting of other herbicidal active compounds, herbicide safeners, formulation auxiliaries and additives customary in crop protection (Claim 6); the composition further comprises at least one dispersant, and preferably one or more dispersants selected from the group consisting of phosphate esters (Claim 7); the composition further comprises a substantially water-immiscible organic solvent, wherein the water-immiscible organic solvent preferably is selected such that compound (A) has an organic solvent/water partition coefficient, expressed as a logarithm, of about 4 or greater (Claim 8); and the composition further comprises a drift retardant agent, preferably one or more fatty oils, in a total amount in a range of about 1 wt.% to about 10 wt.% based on a total weight of the composition (Claim 15).
These claims of App’447 render obvious the limitations of instant claims 1, 3-5, 7-8, 13-15, 19-20, 22 and 29-30 except for the limitation of instant claim 1 reciting that compound (B) denotes one or more monoethanolamine salts of auxin herbicides. The examiner notes that 2,4-D (2,4-dichlorophenoxyacetic acid) is an auxin herbicide.
Gao teaches monoethanolamine salts of dicamba have been found to be especially suitable for providing stable herbicide concentrate compositions with reduced dicamba volatility ([0018]). The examiner notes that dicamba is an auxin herbicide, as is 2,4-D (2,4-dichlorophenoxyacetic acid).
It would have been prima facie obvious to one of ordinary skill in the art to combine the teachings of App’447 and Gao and substitute the triethanolamine (TEA) salt of 2,4-D (2,4-dichlorophenoxyacetic acid) in the herbicide composition of App’447 with the monoethanolamine dicamba salt taught by Gao and arrive at the instantly claimed invention. The ordinarily skilled artisan would have been motivated to use monoethanolamine dicamba in the taught concentration in order to replicate Gao’s enhanced stability of and reduced volatility of auxin herbicide (dicamba) within the herbicidal composition of App’447. The ordinarily skilled artisan would have a reasonable expectation of success substituting triethanolamine (TEA) salt of 2,4-D (2,4-dichlorophenoxyacetic acid) with monoethanolamine salt of dicamba because both are auxin herbicides which individually demonstrate success, and a simple substitution of App’447’s TEA salt of 2,4-D with Gao’s monoethanolamine salt of dicamba would not be expected to have deleterious effects towards the success of App’447’s herbicide composition.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 11/03/2025 have been fully considered but they are not persuasive.
Applicant argues that “the cited references particularly Sada and Gao fails to teach or disclose compositions combining the required components in the manner required in the present claim and therefore do not reach or direct one skilled in the art to prepare composition providing these advantageous effects and/or performance…” (page 10 of the argument filed 11/03/25).
Even though the instant rejection is not relied on Sada, Sada was cited as a reference to establish the obviousness of combination of compound (A) and dicamba in salt form. As discussed in the previous rejection, the addition of dispersants, solvent and stabilizing agent as now required in the instant claim 1 while preparing an oil-in-water microemulsion as defined in the pending claims are obvious in light of Gao and Jimoh.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references (page 11 of the argument filed 11/03/2025), the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Gao and Jimoh teach that the phosphate esters, inorganic halides, water-immiscible organic solvent are well known excipients in formulating O/W micro-emulsion for various herbicides including compound (A) and/or (B). Thus, the ordinarily skilled artisan would have been motivated to do so with a reasonable expectation of success to incorporate these phosphate esters, water-immiscible organic solvents and the stabilizing agents into the oil-in-water microemulsion composition to enhance herbicide stability and reduce volatility.
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).
With respect to the provisional double patenting rejections, Applicant’s arguments have been considered gut are not persuasive, and substantial argument is lacking. Accordingly, the rejections are maintained for the reasons set forth in the record.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/BRIAN-YONG S KWON/Supervisory Patent Examiner, Art Unit 1613
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