DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-6, 11-14, 16-21, 24-27 and 30-35 are pending.
Withdrawn Rejections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Instant claim 1 states, “the at least one dispersant is at least one phosphate ester”. Claim 20 depends from claim 1 and states, “the at least one dispersant is selected from the group consisting of phosphate esters and/or one or more alkylpolyglucosides”. Thus, claim 20 more broadly states that the dispersant may be an alkylpolyglucoside, which is not within the scope of dispersants in instant claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6, 12-14, 16-21, 25, 27 and 30-35 are rejected under 35 U.S.C. 103 as being unpatentable over Jimoh (US 6,713,433) in view of Wright et al. (US 2012/0142532 A1).
Regarding instant claim 1, Jimoh teaches a liquid concentrate herbicidal emulsion composition comprising a water-soluble herbicide in water and an oil-soluble herbicide (Abstract; col. 3, ln. 21-24; col. 4, ln. 14-17; col. 8, ln. 47-56; Claims 1, 28, 55, 82). Water-soluble herbicides suitable for use in compositions of the invention include dicamba and water-soluble salts thereof (col. 10, ln. 1-16; Claims 5, 33, 59, 86). A class of preferred oil-soluble herbicides are protoporphyrinogen oxidase inhibitor (PPO) herbicides, including azafenidin, benzfendizone, bifenox, butafenacil, carfentrazone-ethyl, chlomethoxyfen, cinidon-ethyl, flumiclorac-pentyl, flumioxazin, fluoroglycofen-ethyl, fomesafen, lactofen, and sulfentrazone (col. 3, ln. 39, 41, 43-44, 47-48, 57; col. 4, ln. 8, 30, 32, 34-35, 38-39, 48, 66; col. 5, ln. 20, 22, 24-25, 29, 38, 57; col. 6, ln. 15, 17-19, 23, 33, 51; col. 7, ln. 14, 16, 18-19, 23, 62, 51, 57-52; col. 8, ln. 15-20; col. 12, ln. 12 to col. 13, ln. 25, and other places; Examples 1-14; Claims 13, 40, 66, 93).
Regarding the composition being an oil-in-water emulsion, Jimoh teaches that liquid concentrate coformulations of two herbicidal active ingredients, one of which is water-soluble and the other of which is oil-soluble, are known in the art in the form of emulsions, most commonly oil-in-water type emulsions having a discontinuous oil phase dispersed in a continuous aqueous phase with the aid of one or more emulsifying agents (col. 2, ln. 22-28; col. 8, ln. 47-56). Jimoh further teaches that the coformulation is in the form of a microemulsion (Claims 2, 29, 55, 82, 109).
Regarding the at least one dispersant, Jimoh teaches that surfactants are important to the microemulsion composition, functioning as dispersants to prevent aggregation of oil particles when the microemulsion is diluted in water for application to plants (col. 2, ln. 61-65). Jimoh teaches that the compositions comprise one or more dispersing agents present in a concentration sufficient to provide acceptable dispersion of the microemulsion upon dilution thereof in a suitable volume of water for application to plants, but not sufficient to destabilize the microemulsion prior to such dilution (col. 7, ln. 4-8; col. 8, ln. 4-9; col. 14, ln. 62-64; col. 15, ln. 7-14; col. 17, ln. 15-16).
Regarding the substantially water-immiscible organic solvent, Jimoh teaches that the coformulation comprise a substantially water-immiscible solvent (col. 4, ln. 21-22; col. 6, ln. 66-67; col. 8, ln. 1; col. 13, ln. 42-46; col. 14, ln. 25; Claims 14, 28, 67, 82, 109).
Regarding the one or more water-soluble stabilizing agents, Jimoh teaches that it has been found that physical stability can be enhanced by including a non-surfactant stabilizing agent that is substantially dispersed in and associated with the aqueous phase of compositions of the invention. Alkali metal halides, preferably alkali metal chlorides such as sodium chloride or potassium chloride are also effective (col. 16, ln. 60 to col. 17, ln. 3). Jimoh teaches a stabilizing amount of one or more water-soluble chlorides selected from hydrochloric acid, alkali metal chlorides, ammonium chloride, low molecular weight organic ammonium chlorides and quaternary ammonium chloride surfactants sufficient to inhibit substantial degradation of the oil-soluble herbicide (Claims 1, 20-21, 28, 47-48, 55, 73-74, 99, 123).
Jimoh does not explicitly disclose an example comprising one or more PPO inhibitor and dicamba monoethanolamide salt, as instantly claimed. However, Jimoh teaches that the liquid concentrate herbicidal emulsion composition comprises a water-soluble herbicide and an oil-soluble herbicide, wherein the water-soluble herbicide includes dicamba and salts thereof, and the oil-soluble herbicide includes PPO herbicides, including azafenidin, benzfendizone, bifenox, butafenacil, carfentrazone-ethyl, chlomethoxyfen, cinidon-ethyl, flumiclorac-pentyl, flumioxazin, fluoroglycofen-ethyl, fomesafen, lactofen, and sulfentrazone.
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare compositions according to Jimoh wherein the water-soluble herbicide is a dicamba salt and the oil-soluble herbicide is a PPO inhibitor as instantly claimed, and the composition is in the form of an oil-in-water emulsion and further comprises at least one dispersant, a substantially water-immiscible organic solvent, and one or more water-soluble stabilizing agents. Such would have been obvious because Jimoh specifically teaches that these compounds are suitable for use in their invention.
Regarding the dicamba salt being dicamba monoethanolamine, Wright et al. teach that in the case of dicamba, low volatility can be achieved by formulating dicamba as the monoethanolamine or diethanolamine salt. It has been discovered that the MEA and diethanolamine (DEA) salts of dicamba are less volatile than other dicamba salts, such as the DMA and IPA salts, known in the art. In particular, the concentration of volatilized dicamba in the vapor phase surrounding the aqueous dicamba MEA or DEA concentrate formulation is less than the concentration of volatilized dicamba in the vapor phase surrounding a reference formulation formulated from dicamba salts known in the art such as dimethylamine dicamba, isopropylamine dicamba, or mixtures thereof, but otherwise having the same composition as the dicamba MEA concentrate formulation ([0035]). In accordance with the present invention, and based on experimental evidence, it has been further discovered that the monoethanolamine (MEA) salt of dicamba provides higher aqueous solubility and lower viscosity as compared to dicamba acid and other dicamba salts known in the art, such as the dimethylamine (DMA) and isopropylamine (IPA) salts ([0037]). Wright et al. further teach concentrate formulations comprising dicamba monoethanolamine salt (Abstract; [0007]-[0008]; Claims 1-3); and at least one co-herbicide, including protoporphyrinogen oxidase (PPO) inhibitors ([0109], [0111]; Claim 20).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare formulations according to Jimoh wherein the water-soluble salt of dicamba is the monoethanolamine salt. Such would have been obvious because Wright et al. teach that the monoethanolamine salt of dicamba is less volatile, provides higher aqueous solubility and lower viscosity, and thus has less physical drift ([0006], [0019]).
Regarding the dispersant being at least one phosphate ester, Wright et al. teach herbicidal formulations comprising dicamba monoethanolamine salt and a co-herbicide such as PPO inhibitor, wherein the formulations further comprise at least one surfactant, such as phosphate esters and alkyl polysaccharides ([0091]-[0095]; Tables C, D, 1, 1b and 11a; Claim 18).
Regarding the substantially water-immiscible organic solvent being selected such that compound (A) has an organic solvent/water partition coefficient, expressed as a logarithm, of about 5 or greater, Jimoh teaches the organic 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, preferably about 4 or greater (col. 7, ln. 8-12; col. 8, ln. 9-13; col. 14, ln. 16-25; Claims 14, 19, 41, 46, 67, 72, 82, 98).
Regarding the one or more water-soluble stabilizing agents being selected from the group consisting of inorganic halides, and 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, Jimoh teaches a stabilizing amount of one or more water-soluble chlorides selected from hydrochloric acid, alkali metal chlorides, ammonium chloride (Claims 1, 28, 55, 99). The water-soluble chloride stabilizing agent is present in a concentration sufficient to provide a concentration of chloride ion of from about 0.5% to about 2.5% by weight (Claims 20, 47, 73, 100).
Regarding instant claim 2, Jimoh teaches that microemulsions offer a number of practical advantages, one of the most important being that they typically remain homogeneous without agitation for long periods of time. In this respect, a microemulsion formulation can be handled by an agricultural technician or other user with the same ease and convenience as a simple aqueous solution (col. 2, ln. 37-43). Jimoh teaches that the present invention is further directed to a liquid concentrate herbicidal microemulsion composition having a continuous aqueous phase and a discontinuous oil phase (col. 5, ln. 5-7, 63-65; col. 6, ln. 57-59; and additional paragraphs).
Regarding instant claim 3, Jimoh teaches that the oil-soluble herbicide is present in a concentration such that the weight ratio of water-soluble herbicide to oil-soluble herbicide ranges from about 190:1 to about 1:1. For example, when the oil-soluble herbicide is a PPO herbicide such as a triazolinone, the weight ratio of triazolinone to water-soluble herbicide ranges from about 190:1 to about 19:1 (col. 13, ln. 31-37; Claims 5, 32, 58, 85).
Regarding instant claims 4 and 17, Jimoh teaches that in any case, the concentration of the oil-soluble herbicide in the composition as a whole is about 0.1% to about 25% by weight. In preferred compositions, the concentration of the oil-soluble herbicide is about 0.1% to about 5% by weight, for example about 0.2% to about 2%, by weight (col. 13, ln. 37-42). The combined concentration of the water-soluble herbicide and the oil-soluble herbicide ranges from about 5% to about 50% by weight of the composition (Claims 3-4, 30-31, 56-57, 83-84).
Regarding instant claims 5-6 and 18-19, Jimoh teaches that the water-soluble herbicides suitable for use in compositions of the invention include glyphosate (col. 10, ln. 8, 17, 22, 28-44).
Regarding instant claim 20, Wright et al. teach herbicidal formulations comprising dicamba monoethanolamine salt and a co-herbicide such as PPO inhibitor, wherein the formulations further comprise at least one surfactant, such as phosphate esters and alkyl polysaccharides ([0091]-[0095]; Tables C, D, 1, 1b and 11a; Claim 18).
Regarding instant claim 21, Jimoh teaches the organic 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, preferably about 5 or greater (col. 7, ln. 8-12; col. 8, ln. 9-13; col. 14, ln. 16-25; Claims 14, 19, 41, 46, 67, 72, 82, 98).
Regarding instant claims 12 and 25, Jimoh teaches that the aqueous phase has a pH in a range that is minimally conducive to chemical degradation of the water-soluble herbicide (col. 18, ln. 23-35; Claims 81, 108). The effect of pH on degradation of the particular oil-soluble herbicide of choice can be determined by empirical testing (col. 18, ln. 30-35).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to determine through routine experimentation the desired pH for the composition to reduce degradation.
Regarding instant claim 13, Jimoh does not explicitly disclose compositions comprising a drift retardant agent.
Wright et al. teach that the formulations of the invention may further comprise other additives such as conventional drift control agents, safeners, thickeners, flow enhancers, antifoaming agents, freeze protectants and/or UV protectants. Suitable drift control agents are known to those skilled in the art and include the commercial products Gardian®, Gardian Plus®, Dri-Gard®, Pro-One XLTM, ArrayTM, CompadreTM, In-Place®, Bronc® Max EDT, EDT ConcentrateTM, Coverage® and Bronc® Plus Dry EDT ([0108]). Wright et al. also teach that polybasic polymers are effective auxin herbicide drift control agents because these polymers, when utilized in aqueous auxin formulations, can reduce the number of spray drops having a diameter of less than about 200 microns, 150 microns, or even 100 microns ([0030]). In some embodiments of the present invention, formulations contain from about 1% to about 10% v/v total polybasic polyamine ([0032]).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to include a drift retardant agent in the formulations according to Jimoh in order to reduce the physical drift of the formulation, as reasonably suggested by Wright et al.
Regarding instant claims 14 and 27, Jimoh teaches a process for controlling the growth of or killing unwanted plants comprising diluting a liquid concentrate herbicidal composition comprising at least two or more herbicidal active ingredients, one of which is an oil-soluble herbicide and the other of which is a water-soluble herbicide, in a suitable volume of water to form a plant treatment composition; and, applying said plant treatment composition to the foliage of the unwanted plants (col. 8, ln. 21-29; Claim 133).
Regarding instant claim 16, Jimoh teaches a process of preparing a composition of the invention comprises mixing the various ingredients in a suitable vessel. It is important to note that mixing is not critical to the invention and any order of addition of ingredients is suitable. However, experience to date suggests that certain orders of addition in preparing compositions of the invention require less reaction time. Therefore, a presently preferred order of addition of the ingredients involves adding all required surfactants to a concentrated aqueous solution of the water soluble herbicide along with an acid or base for pH adjustment, if desired, to form a first mixture. The oil soluble herbicide is added to the organic solvent with agitation to form a second mixture. The second mixture is then added to the first mixture with agitation to form the finished composition. An alternative order of addition involves mixing a concentrated aqueous solution of the water-soluble herbicide together with other, optional, water-soluble ingredients including an acid or base for pH adjustment, with agitation to form a first mixture. The oil-soluble herbicide is then added to the organic solvent with agitation to form a second mixture. The second mixture is added to the first mixture with agitation, then the surfactants are added. Agitation is continued until a physically stable composition is formed (col. 18, ln. 46 to col. 19, ln. 2).
Regarding instant claims 30-31 and 35, Jimoh teaches compositions that exhibit substantially no crystallization or phase separation when stored at a temperature of from about 10 to about 30 °C for a period of about 30 days. More preferably, a composition of the invention shows substantially no crystallization or phase separation for a period of at least about 180 days when stored at a temperature of about 10 to about 30 °C. More preferably, substantially no crystallization or phase change occurs in a composition of the invention when stored for a period of at least about 30 days at storage temperatures of from about -10 to about 40 °C; most preferably for a period of at least about 180 days (col. 8, ln. 33-36; col. 9, ln. 24-35; col. 17, ln. 28-41).
In the absence of evidence to the contrary, the compositions according to Jimoh would also exhibit physical stability after storage at 54 °C for 2 weeks and storage at 40 °C for 8 weeks, and the composition would allow recovery of up to 97% of compound (a) after storage at 54 °C for 2 weeks. It is noted that recovery of up to 97% includes recovery of 0%, 1%, etc.
Regarding instant claims 32-35, Jimoh teaches that a class of preferred oil-soluble herbicides are protoporphyrinogen oxidase inhibitor (PPO) herbicides, including azafenidin, benzfendizone, bifenox, butafenacil, carfentrazone-ethyl, chlomethoxyfen, cinidon-ethyl, flumiclorac-pentyl, flumioxazin, fluoroglycofen-ethyl, fomesafen, lactofen, and sulfentrazone (col. 12, ln. 12 to col. 13, ln. 25; Claims 1, 13, 28, 40, 55, 66, etc.). Jimoh also teaches that the composition is in the form of an oil-in-water microemulsion (col. 5, ln. 5-19; col. 5, ln. 63 to col. 6, ln. 14; col. 6, ln. 57 to col. 7, ln. 14; col. 7, ln. 57 to col. 8, ln. 20; col. 8, ln. 49-56; etc.; Claims 55, 82, 109).
Response to Arguments
Applicant's arguments filed 1 June 2026 have been fully considered but they are not persuasive. Applicant argues that the cited references do not teach or direct one skilled in the art to preparing herbicidal compositions comprising compounds (A) a PPO inhibitor selected from the prescribed group, and (B) dicamba monoethanolamine (MEA) salt. Applicant asserts that formulating such compounds in the form of an oil-in-water emulsion is not necessarily straightforward or easy.
The examiner respectfully argues that Jimoh teaches that water-soluble herbicides suitable for use in compositions of the invention include dicamba and water-soluble salts thereof (col. 10, ln. 1-16; Claims 5, 33, 59, 86); and a class of preferred oil-soluble herbicides are protoporphyrinogen oxidase inhibitor (PPO) herbicides (col. 12, ln. 12 to col. 13, ln. 25; Claims 13, 40, 66, 93).
The examiner also respectfully argues that Jimoh teaches that liquid concentrate coformulations of two herbicidal active ingredients, one of which is water-soluble and the other of which is oil-soluble, are known in the art in the form of emulsions, most commonly oil-in-water type emulsions having a discontinuous oil phase dispersed in a continuous aqueous phase with the aid of one or more emulsifying agents. The water-soluble active ingredient is contained predominantly in the aqueous phase and the oil-soluble active ingredient is contained predominantly in the oil phase (col. 2, ln. 22-31). Jimoh further teaches that it is important to note that although the description of the preferred embodiments are directed to stable microemulsions of the present invention, the principles disclosed herein are equally applicable to the preparation of stable oil-in-water emulsions, water-in-oil emulsions, macroemulsions, suspensions or suspoemulsions wherein at least two herbicidal active ingredients, one of which is a water-soluble herbicide and the other of which is an oil soluble herbicide, are co-formulated in a stable herbicidal composition. Thus, liquid concentrate compositions of the present invention can be oil-in-water macroemulsions or microemulsions, water-in-oil emulsions or water-in-oil-in water multiple emulsions (col. 8, ln. 59 to col. 9, ln. 4).
Therefore, a person of ordinary skill in the art would have been reasonably able to prepare an oil-in-water emulsion comprising the water-soluble herbicide and the oil-soluble herbicide as taught by Jimoh.
Regarding the selection of herbicides, Jimoh teaches that water-soluble herbicides suitable for use in compositions of the invention include dicamba and water-soluble salts thereof (col. 10, ln. 1-16; Claims 6, 33, 59, 86); and a class of preferred oil-soluble herbicides are protoporphyrinogen oxidase inhibitor (PPO) herbicides (col. 12, ln. 12 to col. 13, ln. 25; Claims 13, 40, 66, 93). Jimoh specifically claims compositions wherein the water-soluble herbicide is selected from a group comprising dicamba (Claims 6, 33, 59, 86); and the oil-soluble herbicide is a PPO inhibitor selected from the group consisting of azafenidin, benzfendizone, butafenacil, cinidon-ethyl, fluazolate, flumiclorac-pentyl, flumioxazin, fluthiacet-methyl, oxadiargyl, oxadiazon, pentoxazone, profluazol, pyraflufen-ethyl, pyrazogyl, sulfentrazone and thidiazimin (Claims 13, 40, 66 and 93). Therefore, it would have been obvious to combine a water-soluble salt of dicamba with a PPO inhibitor, as reasonably taught by Jimoh.
Wright et al. teach that in the case of dicamba, low volatility can be achieved by formulating dicamba as the monoethanolamine or diethanolamine salt. It has been discovered that the MEA and diethanolamine (DEA) salts of dicamba are less volatile than other dicamba salts, such as the DMA and IPA salts, known in the art. In particular, the concentration of volatilized dicamba in the vapor phase surrounding the aqueous dicamba MEA or DEA concentrate formulation is less than the concentration of volatilized dicamba in the vapor phase surrounding a reference formulation formulated from dicamba salts known in the art such as dimethylamine dicamba, isopropylamine dicamba, or mixtures thereof, but otherwise having the same composition as the dicamba MEA concentrate formulation ([0035]). In accordance with the present invention, and based on experimental evidence, it has been further discovered that the monoethanolamine (MEA) salt of dicamba provides higher aqueous solubility and lower viscosity as compared to dicamba acid and other dicamba salts known in the art, such as the dimethylamine (DMA) and isopropylamine (IPA) salts ([0037]). Wright et al. further teach concentrate formulations comprising dicamba monoethanolamine salt (Abstract; [0007]-[0008]; Claims 1-3); and at least one co-herbicide, including protoporphyrinogen oxidase (PPO) inhibitors such as azafenidin, bifenox, butafenacil, carfentrazone-ethyl, flumiclorac-pentyl, flumioxazin, fluoroglycofen, fomesafen, oxyfluorfen, sulfentrazone, etc. ([0109], [0111]; Claims 20-21).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare formulations according to Jimoh wherein the water-soluble salt of dicamba is the monoethanolamine salt. Such would have been obvious because Wright et al. teach that the monoethanolamine salt of dicamba is less volatile, provides higher aqueous solubility and lower viscosity, and thus has less physical drift ([0006], [0019]). Also, Wright et al. teach compositions comprising dicamba monoethanolamine and a co-herbicide, such as a PPO inhibitor (Claims 20-21).
The examiner also directs attention to MPEP 2123(I) and (II):
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Therefore, Jimoh teaches that the water-soluble herbicides suitable for use in their compositions include dicamba and water-soluble salts thereof, and it would have been prima facie obvious for a person of ordinary skill in the art to prepare herbicidal compositions according to Jimoh wherein the water-soluble herbicide is a water-soluble salt of dicamba.
Applicant also argues that the disclosure of Jimoh does not include any direction or teaching for selecting dicamba over any of the other water-soluble herbicides listed. Moreover, Jimoh does not include working examples involving dicamba.
The examiner respectfully argues that Jimoh specifically claims compositions wherein the water-soluble herbicide is selected from a group that includes dicamba (Claims 6, 33, 59, 86). Therefore, a person of ordinary skill in the art would have been motivated to prepare compositions according to Jimoh wherein the water-soluble herbicide is dicamba. Regarding the examples, as noted above, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.
Applicant further argues that numerous suitable oil-soluble herbicides are listed in Jimoh, and myriad candidate oil-soluble herbicides are listed spanning approximately 100 lines of text.
The examiner respectfully argues that Jimoh specifically claims compositions wherein the oil-soluble herbicide is a PPO inhibitor selected from the group consisting of azafenidin, benzfendizone, butafenacil, cinidon-ethyl, fluazolate, flumiclorac-pentyl, flumioxazin, fluthiacet-methyl, oxadiargyl, oxadiazon, pentoxazone, profluazol, pyraflufen-ethyl, pyrazogyl, sulfentrazone and thidiazimin (Claims 13, 40, 66 and 93). Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to select a PPO inhibitor as the oil-soluble herbicide, as reasonably taught and claimed by Jimoh.
Applicant argues that Jimoh does not include any teaching or direction to incorporate dicamba MEA salt. While dicamba is mentioned as a candidate water- soluble herbicide among many others, it is not specifically referred to or mentioned as particularly preferred. More specifically, the MEA salt of dicamba is not listed in Jimoh. Accordingly, while the compositions of Jimoh may be in the form of a microemulsion composition there is nothing in this disclosure or teaching of Jimoh regarding such compositions incorporating the dicamba MEA salt.
The examiner respectfully argues, as discussed above, that it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare formulations according to Jimoh wherein the water-soluble salt of dicamba is the monoethanolamine salt. Such would have been obvious because Wright et al. teach that the monoethanolamine salt of dicamba is less volatile, provides higher aqueous solubility and lower viscosity, and thus has less physical drift ([0006], [0019]). Also, Wright et al. teach compositions comprising dicamba monoethanolamine and a co-herbicide, such as a PPO inhibitor (Claims 20-21).
Applicant further argues that there is no teaching or directive in Jimoh regarding incorporating a PPO inhibitor from the list required in claim 1 along with the dicamba MEA salt. Where Jimoh does mention the possibility of incorporating a PPO inhibitor it is in combination with N (phosphonomethyl)glycine or a salt thereof. In fact, the only combination of herbicides specifically described in Jimoh in the working examples is glyphosate (the IPA or potassium salt) and the PPO inhibitor, carfentrazone-ethyl. Thus, to the extent Jimoh would direct one skilled in the art to selecting a PPO inhibitor as the oil-soluble herbicide, it would be in combination with glyphosate, i.e., not dicamba or its MEA salt.
The examiner respectfully directs attention to MPEP 2123(I) and (II):
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Therefore, the examples and preferred embodiments taught by Jimoh do not teach away from compositions comprising non-preferred embodiments, including the combination of dicamba and a PPO inhibitor, as instantly claimed.
Applicant further argues that Wright describes low volatility herbicidal formulations comprising a dicamba salt(s) that may include dicamba MEA salt, dicamba potassium salt, or mixed dicamba salts, and PPO inhibitors are mentioned as possible co-herbicides, along with various other classes of herbicides. Applicant asserts that no preference for PPO inhibitors as co-herbicide is listed in Wright. In fact, none of the working examples of Wright incorporate co-herbicide, PPO inhibitor or otherwise. As an initial matter, applicant respectfully submits Wright does not direct one skilled in the art to incorporating dicamba MEA salt into the herbicidal microemulsion compositions as defined in the pending claims. The compositions of Wright are described as combinations of a water soluble herbicide (e.g., dicamba) along with a polybasic polymer. Furthermore, the teachings of Wright do not direct one skilled in the art to combining dicamba MEA salt with a PPO inhibitor. In fact, although Wright mentions the possibility of a PPO inhibitor being included in the composition no specific examples combining the MEA salt of dicamba and a PPO inhibitor are included in Wright.
The examiner respectfully argues that Wright et al. provides motivation to select the monoethanolamine salt of dicamba, as discussed above. Wright et al. further teach that the dicamba salt may be combined with a co-herbicide, such as PPO inhibitors, including the herbicides instantly claimed. Therefore, Wright et al. teach that the monoethanolamine salt of dicamba can be effectively combined with a PPO inhibitor, and a person of ordinary skill in the art would have a reasonable expectation that the monoethanolamine salt of dicamba can be combined with a PPO inhibitor in the oil-in-water emulsions according to Jimoh and result in an herbicidal formulation having a broader weed control spectrum.
Applicant also argues that Wright does not include any specific examples combining the MEA salt of dicamba and a PPO inhibitor, accordingly these teachings regarding phosphate ester surfactants for dicamba formulations would not have been considered relevant to compositions combining components (A) and (B) as required in claim 1.
The examiner respectfully argues that Jimoh teaches that microemulsions must contain surfactants, and their compositions comprise one or more surfactants present in a concentration sufficient to provide acceptable physical stability of the emulsion and provide acceptable dispersion of the emulsion upon dilution thereof in a suitable volume of water for application to plants. Jimoh further teaches that surfactants can function as emulsifying agents, dispersing agents and/or adjuvants for enhancing herbicidal efficacy. Wright et al. teach in some embodiments of the present invention, surfactants can optionally be used in auxin herbicide formulations to effectively enhance herbicidal effectiveness ([0066]). Surfactants are optionally included in auxin (dicamba) formulations to facilitate dicamba retention, uptake and translocation into the plant foliage and thereby enhance herbicidal effectiveness ([0067]). In some embodiments of the present invention, one or more herbicidal efficacy enhancing surfactants known in the art can optionally be formulated with dicamba. It has been discovered that MEA dicamba formulations are compatible with most water soluble surfactants ([0068]). Wright et al. teach phosphate esters as suitable surfactants for use with dicamba salts ([0091]-[0094], [0097]; Claim 18).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to select phosphate esters for use in the compositions according to Jimoh in order to provide acceptable physical stability of the emulsion and provide acceptable dispersion of the emulsion upon dilution thereof, as well as function as emulsifying agents, dispersing agents and/or adjuvants for enhancing herbicidal efficacy, as reasonably suggested by Wright et al.
Claims 11 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Jimoh (US 6,713,433) in view of Wright et al. (US 2012/0142532 A1) as applied to claims 1-6, 12-14, 16-21, 25, 27 and 30-35 above, further in view of Hemminghaus et al. (US 9,743,664).
Regarding instant claims 11 and 24, Jimoh and Wright et al. do not explicitly disclose one or more C1-C4 alkyl mono carboxylic acids and/or salts thereof.
Hemminghaus et al. teach low volatility herbicidal compositions comprising at least one auxin herbicide and at least one monocarboxylic acid, or monocarboxylate thereof (col. 1, ln. 17-20; Claim 1). The present invention provides herbicidal compositions comprising at least one auxin herbicide; at least one monocarboxylic acid, or agriculturally acceptable monocarboxylate thereof; and, optionally, a non-auxin herbicide; wherein the compositions exhibit reduced volatility relative to an otherwise identical composition lacking the monocarboxylic acid or monocarboxylate thereof. In one embodiment, the auxin herbicide is selected from dicamba (col. 1, ln. 65 to col. 2, ln. 5). The invention provides methods of reducing the volatility of an auxin herbicide, wherein the methods comprise the step of contacting an auxin herbicide with a volatility-lowering effective amount of a monocarboxylic acid, or a monocarboxylate thereof, thereby reducing the volatility of the auxin herbicide (col. 2, ln. 17-22). In one embodiment, the monocarboxylic acid is selected from the group consisting of formic acid, acetic acid, propionic acid, and benzoic acid (col. 4, ln. 67 to col. 5, ln. 2). In further embodiments, the herbicidal composition concentrate comprises a C1-C6-alkanoic acid, or an agriculturally acceptable salt thereof. In other embodiments, the herbicidal composition concentrate comprises a C1-C5-alkanoic acid, or an agriculturally acceptable salt thereof. In other embodiments, the herbicidal composition concentrate comprises a C1-C4-alkanoic acid, or an agriculturally acceptable salt thereof. In other embodiments, the herbicidal composition concentrate comprises a C1-C3-alkanoic acid, or an agriculturally acceptable salt thereof. In other embodiments, the herbicidal composition concentrate comprises acetic acid, or an agriculturally acceptable salt thereof. In other embodiments, the herbicidal composition concentrate comprises formic acid, or an agriculturally acceptable salt thereof (col. 11, ln. 40-54).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare formulations according to Jimoh further comprising mono carboxylic acids or salts thereof, such as acetic and formic acids, to thereby reduce the volatility of the herbicidal composition, as reasonably suggested by Hemminghaus et al.
Response to Arguments
Applicant's arguments are the same as above. Therefore, the examiner’s response is repeated here as well.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Jimoh (US 6,713,433) in view of Wright et al. (US 2012/0142532 A1) as applied to claims 1-6, 12-14, 16-21, 25, 27 and 30-35 above, further in view of Liu et al. (US 2019/0133116 A1).
Regarding instant claim 26, Jimoh and Wright et al. do not explicitly disclose drift retardant agents comprising one or more fatty oils. However, Wright et al. teach a need persists for low volatility auxin herbicide formulations that are efficacious, yet non-phytotoxic to sensitive crops located in areas adjacent to the target site, and for auxin formulations that are less prone to volatility and physical drift ([0006]).
Liu et al. teach a pesticide composition comprising, by total weight of the composition: a pesticide comprising at least one water-soluble salt of an auxin herbicide; and greater than about 0.5 wt % of a drift control agent comprising (a) at least one fatty deposition control agent that comprises one or more fatty acids, and (b) at least one surfactant ([0039], [0235]-[0245]).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare compositions according to Jimoh and Wright et al. wherein the drift control agent is a fatty oil, as reasonably suggested by Liu et al. Such would have been obvious because Wright et al. and Liu et al. teach the need in the art for auxin-containing herbicides with reduced drift, and Liu et al. teach addition of fatty oils to herbicide compositions to reduce the drift of said compositions.
Response to Arguments
Applicant's arguments are the same as above. Therefore, the examiner’s response is repeated here as well.
Conclusion
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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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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/N.W.S/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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