DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant’s election without traverse of Group 1, claims 1-14 and 18-28, in the reply filed on 6 August 2025, is acknowledged.
Status of Claims
The preliminary amendment, filed on 13 July 2022, is acknowledged.
Claims 3-5, 7-19, and 21-31 are amended.
Claims 1-31 are pending in the instant Office Action.
Claims 15-17 and 29-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6 August 2025.
Claims 1-14 and 18-28 are under consideration in the instant Office Action.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent European Application No. EP 20157938.0, filed on 18 February 2020, has been received from the International Bureau.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 13 July 2022, was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner except for reference WO 2017/007873 A1, which was not submitted along with the IDS. Instead, WO 2019/126713 A1 was submitted, which does not appear on the IDS.
Claim Objections
Claims 1, 5, 10, 19, and 21 are objected to because of the following informalities:
Claim 1 recites “A herbicide composition” in line 1. The article should be “an” and the phrase should recite “An herbicide composition” (bold added for emphasis).
Claim 5 recites “further comprising one or more further constituents” in line 2. The second occurrence of the word “further” should be removed because no constituents have previously been recited.
Claim 10 recites “of from about 0.5%...” in lines 4-5. One of the two prepositions should be removed – it is suggested “of” be removed so the phrase recites “from about 0.5%...”.
Claim 19 recites “further comprising one or more further constituents” in line 2. The second occurrence of the word “further” should be removed because no constituents have previously been recited.
Applicant is advised that should claim 7 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Appropriate correction is required.
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 7-8, 10, and 24 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 7 recites the broad recitation “comprising at least one dispersant” in line 2, and the claim also recites “preferably one or more dispersants selected from the group…” in lines 2-3, which is the narrower statement of the range/limitation. Additionally, Claim 8 recites the broad recitation “comprising a substantially water-immiscible organic solvent” in line 2, and the claim also recites “the organic solvent is preferably selected such that…”, which is the narrower statement of the range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Applicant may overcome these rejections by removing the phrase “preferably…selected”, e.g. amending claim 7 to recite “comprising at least one dispersant selected from the group consisting of…”
Claim 10 recites the limitation "the stabilizing agent" in line 3. There is insufficient antecedent basis for this limitation in the claim because line 2 recites “one or more water-soluble stabilizing agents”. Applicant may overcome this rejection by amending line 3 to recite “the one or more water-soluble stabilizing agents”.
Claim 24 recites the limitation "the stabilizing agent" in line 3. There is insufficient antecedent basis for this limitation in the claim because line 2 recites “one or more water-soluble stabilizing agents”. Applicant may overcome this rejection by amending line 3 to recite “the one or more water-soluble stabilizing agents”.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-8, 13-14, 18-22, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Winter et al. (WIPO International Publication No. WO 2019/030095 A2, published on 14 February 2019, provided by Applicant in IDS filed on 13 July 2022, hereafter referred to as Winter).
Winter teaches herbicidal mixtures and their use in controlling undesirable vegetation in corn crops (Abstract). The herbicidal mixtures comprise L-glufosinate and “at least one herbicidal compound” (II) selected from a group which contains glyphosate, dicamba and its salts and esters, and ethyl [3-2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenyoxy]-2-pyridyloxy]acetate (CAS No. 353292-31-6, Ref: S-3100, commonly known as epyrifenacil, referred to by Winter as “II-83”) (pg. 3, lines 6-28). Specific salts of dicamba are taught to include the ethanolamine salt, the diglycolamine salt, and the N,N-bis-(3-aminopropyl)methylamine (BAPMA) salt (pg. 26, lines 18-20). The mixtures may be in the “customary types of agrochemical mixtures”, including an EW, EO, and/or ME emulsion, which is interpreted as being equivalent to an oil-in-water microemulsion (pg. 15, lines 18-21 and pg. 18, lines 8-12).
The ratio of glufosinate to the other herbicides (II) is taught to be preferably be from 50:1 to 1:5 (pg. 4, lines 33-35). When the herbicidal mixture in the form of a microemulsion, the mixture of herbicides is taught to be present in an amount of 5-20% w/w (pg. 18, lines 8-12). When a dicamba salt is the other herbicide (II), this results in a dicamba salt accounting for 0.1-16.7% w/w of the composition, overlapping with the ranges recited in instant claims 4 and 18.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the recited ranges of dicamba salt(s) in the herbicide composition - in both instant claims 4 and 18, there is significant overlap with the teachings of Winter, rendering the ranges prima facie obvious.
Winter further teaches the mixtures to comprise suitable auxiliaries including solvents, emulsifiers, surfactants, solubilizers, compatibilizers, and other adjuvants (pg. 15, lines 30-33). The solvents are taught to include water and organic solvents such as mineral oils, vegetable oils, aliphatic, cyclic, and aromatic hydrocarbons, alcohols, and ketones (pg. 15, lines 34-40). Suitable surfactants, which are taught to be capable of acting as dispersants, include phosphate esters and alkylpolyglucosides (pg. 16, lines 3-26). Winter is silent regarding the organic solvent/water partition coefficient of herbicide II-83. However, the organic solvents taught by Winter include those disclosed in the instant specification, and an ordinary artisan would be capable of selecting the optimal organic solvent in their composition via routine optimization. See MPEP § 2144.05.II.A.
Winter teaches that adjuvants may be included which “have a neglectable or even no pesticidal activity themselves, and which improve the biological performance of the inventive mixtures”, and teaches one example to be vegetable oils, which is interpreted as equivalent to the fatty oils recited in instant claim 27 (pg. 16, lines 36-40). While Winter does not teach the fatty oils to be drift retardant agents, “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”. See MPEP § 2145.II. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Therefore, because Winter has taught the inclusion of one or more fatty oils in their composition, they have necessarily also taught the inclusion of one or more drift retardant agents.
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Addressing the issue of obviousness, the Supreme Court noted that analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007)). The Court further emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton” (Id. at 1742).
The only difference between Winter and the instant claims is that Winter does not teach the specific combination of components as claimed in a single embodiment (e.g., one composition with epyrifenacil, one or more dicamba salts, glyphosate, an organic solvent, and a dispersant that is a phosphate ester or alkylpolyglucoside), or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Winter, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP § 2141.I. Consistent with this reasoning, it would have been prima facie obvious to a person having ordinary skill in the art, prior to the effective filing date of the instant application, to have selected various combinations of the various disclosed ingredients from within the teachings of Winter, to arrive at an invention such as the one being sought in instant claims 1-2, 4-8, 13-14, 18-22, and 28.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Winter (WIPO International Publication No. WO 2019/030095 A2, published on 14 February 2019, provided by Applicant in IDS filed on 13 July 2022) as applied to claims 1-2, 4-8, 13-14, 18-22, and 28 above, and further in view of Sada (U.S. Patent No. 10,624,346 B2, priority to 22 July 2016).
Winter teaches the above.
Winter does not teach the ratio of epyrifenacil to dicamba salt(s) in their composition. These deficiencies are offset by the teachings of Sada.
Sada teaches an herbicidal composition comprising epyrifenacil and one or more dicamba salts (Abstract). Sada teaches that, when used together, the herbicides in the composition can “exert a synergistic herbicidal effect on a broad range of weeds compared to the effect that is expected from the effects obtained when each…is applied alone” (column 3, lines 12-15). To achieve this synergistic effect, Sada teaches epyrifenacil and the dicamba salts to be present in a weight ratio of 1:1 to 1:200, preferably 1:5 to 1:100 (column 3, lines 9-11 and claim 1).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the recited ratio of epyrifenacil to dicamba salt(s) in the herbicide composition. There is significant overlap between the range of ratios taught by Sada and the ratio recited in instant claim 3, rendering the range of ratios prima facie obvious.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Sada to use epyrifenacil and dicamba salts in a ratio of 1:5 to 1:100 in the invention of Winter because applying a known technique to improve a similar product yields predictable results. Winter teaches herbicidal compositions containing more than one herbicide which in some embodiments are epyrifenacil and one or more dicamba salts. An ordinary artisan would be motivated to provide the herbicides in the ratio taught by Sada in the composition of Winter because Sada teaches this ratio to provide a synergistic herbicidal effect, when the ordinary artisan would find desirable. Further, Winter did not teach the ratio of epyrifenacil to dicamba salts in their invention, and the teachings of Sada would provide the artisan missing information to produce the invention. As a result, there is a reasonable expectation of success in arriving at the invention of instant claim 3 in view of the teachings of Winter and Sada.
Claims 9-10 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Winter (WIPO International Publication No. WO 2019/030095 A2, published on 14 February 2019, provided by Applicant in IDS filed on 13 July 2022) as applied to claims 1-2, 4-8, 13-14, 18-22, and 28 above, and further in view of Jimoh (U.S. Patent No. 6,713,433 B2, published on 30 March 2004, provided by Applicant in IDS filed on 13 July 2022).
Winter teaches the above.
Winter does not teach the composition to comprise one or more water-soluble stabilizing agents, the water-soluble stabilizing agent to be an inorganic halide, nor the quantity of the water-soluble stabilizing agent. These deficiencies are offset by the teachings of Jimoh.
Jimoh teaches a stable, liquid concentrate herbicidal composition containing two or more herbicides, some soluble in water and others soluble in oil, and components that maintain stability during prolonged storage (Summary of the invention). To overcome issues with stability without using quaternary alkylammonium chloride surfactants, which are effective emulsifiers but promote chemical degradation of some herbicides, Jimoh teaches that water-soluble chloride surfactants act as stabilizing agents (column 15, lines 37-42). Examples of such chloride-containing stabilizers include sodium and potassium chloride, which should be in compositions such that the resulting chloride ion concentration is 0.5-2.5% by weight (column 17, lines 1-14 and claims 20-21, 47-48, 73-74, 99-101, and 123-125).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the recited quantity of inorganic chloride salts in the herbicide composition. The ranges recited in instant claims 10 and 24 are identical to the ranges taught by Jimoh, rendering the range prima facie obvious.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Jimoh to use an inorganic halide as a stabilizing agent in the invention of Winter because combining prior art elements in similar inventions to impart a known benefit yields predictable results. Winter teaches herbicidal compositions containing more than one herbicide which in some embodiments contain an emulsion of oil and water. An ordinary artisan would be motivated to use an inorganic chloride to stabilize the composition of Winter because Jimoh teaches the salts to stabilize such oil and water emulsions while avoiding chemical degradation of herbicides. The person of ordinary skill would be motivated to use the inorganic chloride in an amount of 0.2-2.5% by weight because Jimoh teaches this quantity to be suitable for providing stability. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 9-10 and 23-24 in view of the teachings of Winter and Jimoh.
Claims 11-12 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Winter (WIPO International Publication No. WO 2019/030095 A2, published on 14 February 2019, provided by Applicant in IDS filed on 13 July 2022) as applied to claims 1-2, 4-8, 13-14, 18-22, and 28 above, and further in view of Killick et al. (WIPO International Publication No. WO 2003/094613 A1, published on 20 November 2003, hereafter referred to as Killick).
Winter teaches the above.
Winter does not teach the composition to comprise one or more mono carboxylic acids, the quantity of the one or more mono carboxylic acids, nor the pH of their composition. These deficiencies are offset by the teachings of Killick.
Killick teaches a composition comprising C1-6 organic carboxylic acids, boric acid, organic amines, and lipophilic solvents and/or surfactants which can be used for pH adjustment of agrochemicals (pg. 2, Summary of the Invention). In one embodiment, the organic carboxylic acids are present in an amount of 0.1-10% w/w (pg. 3, lines 1-2 and claim 1) and may be acetic and/or propionic acid (pg. 5, lines 18-21 and claims 11-12). Preferred pH values for pesticidal compositions are taught to be 5-7, though Killick teaches that values outside this range are observed (pg. 1, lines 27-30). To achieve this range, Killick teaches their composition to be capable of adjusting pesticidal compositions via the addition of the pH adjusting composition in a range of pH 3.5-9 (pg. 4, lines 3-7 and claims 3 and 31).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the pH range taught by Killick. The ranges recited in instant claims 12 and 25 significantly overlaps with the range taught by Killick, rendering the ranges prima facie obvious.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to use the pH adjusting composition taught by Killick in the invention of Winter because using a known composition for its intended purpose to improve a similar composition produces predictable results. Winter teaches an herbicidal composition that comprises epyrifenacil and dicamba salts in the quantity recited in instant claim 18. One of ordinary skill would be motivated to use the pH adjusting composition taught by Killick to adjust the pH of the composition to pH 5-7 because Killick teaches this range to be preferrable for pesticidal compositions and Winter does not teach a preferred pH, providing missing information to the ordinary artisan. Further, Killick teaches their composition to comprise acetic and/or propionic acid, so the resulting composition would necessarily comprise one or more C1-4 mono carboxylic acids.
While Killick is silent regarding the temperature and pressure at which pH is measured, the process by which the pH is obtained does not lend patentability to claims 12 and 26 because “determination of patentability is based on the product itself”. See MPEP § 2113.I. The teachings of Killick render obvious the diluted herbicidal composition at a pH of 5-7, regardless of the process steps used to measure the pH. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 11-12 and 25-26 in view of the teachings of Winter and Killick.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Winter (WIPO International Publication No. WO 2019/030095 A2, published on 14 February 2019, provided by Applicant in IDS filed on 13 July 2022) as applied to claims 1-2, 4-8, 13-14, 18-22, and 28 above, and further in view of Shao et al. (U.S. Patent Application Publication No. US 2013/0252817 A1, published on 26 September 2013, hereafter referred to as Shao).
Winter teaches the above.
Winter does not teach the quantity of fatty oils in their composition. This deficiency is offset by the teachings of Shao.
Shao teaches aqueous herbicidal concentrates which form stable emulsions when diluted for spraying (para. [0004-0006]). The compositions are additionally taught to reduce the amount of driftable fines following aerial and ground spray applications, potentially by reducing the production of fine (<150 mm diameter) spray droplets and increasing the volume median diameter of the droplets (para. [0007] and [0021]). One of the components of the composition that achieves this goal is triglyceride fatty acid alkyl ester, which may be soybean, rapeseed, olive, castor, sunflower peanut, and/or palm oil, and is considered equivalent to the fatty oil recited in instant claim 27 (para. [0019] and [0027] and claims 1-2). Shao teaches these components to have the additional benefit of acting as auxinic herbicides (para. [0019] and [0027]). The fatty oils are present in the composition from 0.1-20% w/w and the composition is taught to be used in a dilution with water from 1-2,000 fold, which results in a concentration of fatty oils from 5x10-5-10% w/w (para. [0015] and claim 1).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the recited quantity of fatty oils in the herbicide composition. The range recited in instant claim 27 is nearly identical to the range taught by Shao, rendering the range prima facie obvious.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Shao to include fatty oils in the quantity of 5x10-5-10% w/w in the invention of Winter because applying a known technique to improve a similar product yields predictable results. Winter teaches herbicidal compositions containing fatty oils. An ordinary artisan would add the fatty oils in an amount of 5x10-5-10% w/w in view of the teachings of Shao because Shao teaches the quantity to be stable, act as an auxinic herbicide, and to reduce drift, which a person of ordinary skill would recognize as beneficial. In addition, while Winter teaches the inclusion of fatty oils, they do not teach a quantity and the teachings of Shao provide missing information that is useful in producing the invention. As a result, there is a reasonable expectation of success in arriving at the invention of claim 27 in view of the teachings of Winter and Shao.
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 1-14 and 18-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-14, 19-23, and 25-30 of copending Application No. 17/792,604 (reference application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 17/792,604 recites an herbicide composition comprising (A) epyrifenacil, (B) one or more monoethanolamine salts of auxin herbicides, which in one embodiment is a dicamba monoethanolamine salt (claims 14 and 29-30), a dispersant that is a phosphate ester or alkylpolyglucoside, a water-immiscible organic solvent, and one or more water-soluble stabilizing agents which are inorganic halides in the form of an oil-in-water emulsion (claims 1, 7, 9, and 22). The dicamba monoethanolamine salt is present in an amount up to 65% w/w (claim 4) or from 10-65% w/w (claim 19). The ratio of compound (A):(B) is recited as from 1:1 to 1:100 (claim 3).
The composition is further recited to comprise “one or more further constituents selected from the group consisting of other herbicidal active compounds, herbicide safeners, formulation auxiliaries and additives customary in crop protection” (claims 5 and 20). In some embodiments, the additional herbicidal active compound is glyphosate (claims 6 and 21), the organic solvent provides an organic solvent/water partition coefficient for compound (A) of ≥4 or ≥5 (claims 8 and 23), and the one or more inorganic halides are present in an amount from 0.5-2.5% w/w (claims 10 and 25). Finally, Application ‘604 recites the composition to comprise one or more mono carboxylic acids, which may be C1-4 alkyl mono carboxylic acids (claims 11 and 26) and a drift retardant agent, which may be one or more fatty oils in an amount from 1-10% w/w (claims 13 and 28), and to have a pH less than 7, in some embodiments 4.5-6 (claims 12 and 27).
Claims 1-14 and 18-28 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 Winter (WIPO International Publication No. WO 2019/030095 A2, published on 14 February 2019, provided by Applicant in IDS filed on 13 July 2022).
This is a provisional nonstatutory double patenting rejection.
Copending Application No. 17/792,607 recites an herbicide composition comprising (A) one or more protoporphyrinogen oxidase (PPO) inhibitor herbicides, (B) a dicamba monoethanolamine salt, one or more dispersants, a water-immiscible organic solvent, and one or more water-soluble stabilizing agents in the form of an oil-in-water emulsion (claims 1-2). Compound (B) is present in an amount up to 65% w/w (claim 4) or from 10-65% w/w (claim 17). The ratio of compound (A):(B) is recited as from 1:1 to 1:75 (claim 3).
The composition is further recited to comprise “one or more further constituents selected from the group consisting of other herbicidal active compounds, herbicide safeners, formulation auxiliaries and additives customary in crop protection” (claims 5 and 18). In some embodiments, the additional herbicidal active compound is glyphosate (claims 6 and 19), the at least one dispersant is one or more phosphate esters and/or alkylpolyglucosides (claims 7 and 20), the organic solvent provides an organic solvent/water partition coefficient for compound (A) of ≥4 (claims 8 and 21), and the one or more water-soluble stabilizing agents are inorganic halides present in an amount from 0.5-2.5% w/w (claims 10 and 22). Finally, Application ‘607 recites the composition to comprise one or more mono carboxylic acids, which may be C1-4 alkyl mono carboxylic acids (claims 11 and 24) and a drift retardant agent, which may be one or more fatty oils in an amount from 1-10% w/w (claims 13 and 26), and to have a pH less than 7, in some embodiments 4.5-6 (claims 12 and 25).
Copending Application No. 17/792,607 does not recite compound (A) to be epyrifenacil. This deficiency is offset by the teachings of Winter.
Winter is described above.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to modify the invention recited in copending Application No. 17/792,607 in view of the teachings of Winter to arrive at the claimed invention because simple substitution of one known element for another yields predictable results. Application ‘607 recites an herbicidal composition comprising a PPO inhibitor and a dicamba monoethanolamine salt, in the same quantity and ratios as the instant application, with a dispersant which may be phosphate esters and/or alkylpolyglucosides, a water-immiscible organic solvent, one or more water-soluble stabilizing agents which are inorganic halides and present in the same quantity as the instant application, in the form of an oil-in-water emulsion. The composition further comprises glyphosate, one or more C1-4 alkyl mono carboxylic acids and a drift retardant agent, which may be one or more fatty oils, in the same amount as the instant application.
In view of the teachings of Winter, one of ordinary skill would be motivated to substitute the recited PPO inhibitor with epyrifenacil because Winter teaches the herbicide to have synergistic herbicidal effects in compositions alongside dicamba salts and glyphosate. The ordinary artisan would recognize that similar synergistic effects could be observed in the composition recited by Application ‘607 because it comprises a dicamba salt and glyphosate and would therefore be motivated to try substituting epyrifenacil into the composition. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-14 and 18-28 in view of claims 1-8, 10-13, 17-22, and 24-26 recited by copending Application No. 17/792,607 and in view of the teachings of Winter.
Claims 1-14 and 18-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 8, 13-15, 18-20, and 23-25 of copending Application No. 18/034,447 in view of Winter (WIPO International Publication No. WO 2019/030095 A2, published on 14 February 2019, provided by Applicant in IDS filed on 13 July 2022), Jimoh (U.S. Patent No. 6,713,433 B2, published on 30 March 2004, provided by Applicant in IDS filed on 13 July 2022), and Killick (WIPO International Publication No. WO 2003/094613 A1, published on 20 November 2003).
This is a provisional nonstatutory double patenting rejection.
Copending Application No. 18/034,447 recites an herbicide composition comprising (A) epyrifenacil, (B) a triethanolamine (TEA) salt of 2,4-D, a phosphate ester dispersant, and one or more drift retardant agents, which may be triglycerides or esters of fatty vegetable oils, in the form of an oil-in-water emulsion (claim 1). Compound (B) is present in an amount up to 75% w/w (claims 5 and 19). The ratio of compound (A):(B) is recited as from 1:10 to 1:150 (claims 4 and 18).
The composition is further recited to comprise “one or more further constituents selected from the group consisting of other herbicidal active compounds, herbicide safeners, formulation auxiliaries and additives customary in crop protection” (claim 6). In some embodiments, the organic solvent provides an organic solvent/water partition coefficient for compound (A) of ≥4 (claims 8 and 20). Application ‘447 also recites the composition to comprise one or more water-soluble stabilizing agents in an amount from 1-20% w/w (claims 13 and 23). Finally, Application ‘607 recites the composition to comprise the drift retardant agent in an amount from 1-10% w/w or 2-8% w/w (claims 15 and 25), and to have a pH less than 7 (claims 14 and 24).
Copending Application No. 17/792,607 does not recite compound (B) to be dicamba or a salt thereof, the other herbicidal active compound to be glyphosate, the water-soluble stabilizing agents to be inorganic halides, nor the composition to comprise C1-4 alkyl mono carboxylic acids. These deficiencies are offset by the teachings of Winter, Jimoh, and Killick.
Winter, Jimoh, and Killick are described above.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to modify the invention recited in copending Application No. 18/034,447 in view of the teachings of Winter, Jimoh, and Killick to arrive at the claimed invention because combining elements from related inventions to impart known benefits yields predictable results. Application ‘447 recites an herbicidal composition comprising epyrifenacil and a TEA salt of 2,4-D, in the same quantity and ratios as the instant application, with a dispersant which may be a phosphate ester, a water-immiscible organic solvent, one or more water-soluble stabilizing agents which are present in the same quantity as the instant application, in the form of an oil-in-water emulsion. The composition further comprises a drift retardant agent, which may be one or more fatty oils, in the same amount as the instant application.
In view of the teachings of Winter, one of ordinary skill would be motivated to substitute the recited TEA salt of 2,4-D with a diglycolamine and/or BAPMA salt of dicamba because Winter teaches the herbicide to have synergistic herbicidal effects in compositions alongside epyrifenacil. The ordinary artisan would recognize that similar synergistic effects could be observed in the composition recited by Application ‘447 because it comprises epyrifenacil and would therefore be motivated to try substituting the dicamba salt into the composition. In addition, the artisan would be motivated in view of the teachings of Winter to select glyphosate as the other herbicidal active component in the composition recited in ‘447 because Winter teaches epyrifenacil, dicamba salts, and glyphosate to possess synergistic herbicidal activity.
In view of the teachings of Jimoh, an ordinary artisan would be motivated to use an inorganic chloride to stabilize the composition of Winter because Jimoh teaches the salts to stabilize such oil and water emulsions while avoiding chemical degradation of herbicides associated with stabilizers such as quaternary alkylammonium chlorides. Finally, one of ordinary skill in the art would be motivated to add a pH adjusting composition containing acetic and/or propionic acid to the composition recited by Application ‘447 in view of the teachings of Killick because ‘447 recites an optimal pH range of <7 and Killick teaches that their composition can be added to herbicidal compositions to maintain pH values in this range, which the ordinary artisan would desire in their invention. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-14 and 18-28 in view of claims 1-8, 10-13, 17-22, and 24-26 recited by copending Application No. 17/792,607 and in view of the teachings of Winter.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean J. Steinke, whose telephone number is (571) 272-3396. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard, can be reached at (571) 272-0827. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619