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 Amendments
Status of Claims
The amendment, filed on 27 April 2026, is acknowledged.
Claims 1-2, 5, 7-10, 14, 19-22, and 28 have been amended.
Claims 23-24 have been cancelled.
Claims 1-14, 18-22, and 25-28 are pending and under consideration in the instant Office Action.
Objections Withdrawn
Objections to Claims
Applicant’s amendments to claims 1, 5, 10, 19, and 21, submitted on 27 April 2026, have overcome the objections to the claims set forth in the Office Action mailed on 29 December 2025. Accordingly, the relevant objections are withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejections of claims 7-8 and 10 under 35 U.S.C. § 112 are withdrawn in view of Applicant’s amendments to the claims. The rejection of claim 24 under 35 U.S.C. § 112 has been rendered moot in view of Applicant’s cancellation of the claim.
Rejections pursuant to 35 U.S.C. § 103
The rejections of claims 1-14, 18-22, and 25-28 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments to claim 1 and in favor of the new grounds of rejection below. The rejection of claims 23-24 under 35 U.S.C. § 103 has been rendered moot in view of Applicant’s cancellation of the claims.
Double patenting rejections
The non-statutory double patenting rejections of claims 1-14, 18-22, and 25-28 are withdrawn in view of Applicant’s amendments to claim 1 and in favor of the new grounds of rejection below. The non-statutory double patenting rejections of claims 23-24 have been rendered moot in view of Applicant’s cancellation of the claims.
New Grounds of Objection
Claim Objections
Claims 7 and 20 are objected to because of the following informalities:
Claim 7 was amended to recite “the composition” in line 2. While it is clear “the composition” refers to the herbicide composition recited earlier in the claim, clarity and consistency would be improved if the limitation were also written as “the herbicide composition”.
Claim 20 recites “the composition comprises an other herbicidal active compound”. The phrase should instead recite “the composition comprises another herbicidal active compound” (bold added for emphasis).
Appropriate correction is required.
New Grounds 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 7-8, 10, and 21 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.
Claim 7 recites “comprising a phosphate ester dispersant” in line 2. Instant claim 1, from which claim 7 depends, was amended to recite the composition comprising “a dispersant selected from the group consisting of phosphate esters and alkylpolyglucosides”. It is unclear if the limitation in claim 7 further limits the dispersant recited in claim 1 or if claim 7 is reciting a different phosphate ester dispersant, rendering the claim indefinite.
Claim 8 recites “further comprising a substantially water-immiscible organic solvent selected…”. Instant claim 1, from which claim 8 depends, was amended to recite the claimed herbicide composition comprising “a substantially water-immiscible organic solvent”. It is unclear if the recited limitation in claim 8 further limits the substantially water-immiscible organic solvent recited in claim 1 or if claim 8 is reciting a different substantially water-immiscible organic solvent, rendering the claim indefinite.
Claim 10 recites “further comprising one or more water-soluble inorganic stabilizing agents”. Instant claim 1, from which claim 10 depends, was amended to recite the claimed herbicide composition comprising “one or more water-soluble inorganic stabilizing agents”. It is unclear if the recited limitation in claim 10 further limits the one or more water-soluble inorganic stabilizing agents recited in claim 1 or if claim 10 is reciting different one or more water-soluble inorganic stabilizing agents, rendering the claim indefinite.
Claim 21 recites “further comprising at least one alkylpolyglucoside dispersant”. Instant claim 1, from which claim 21 depends, recites the herbicide composition to comprise “a dispersant selected from the group consisting of phosphate esters and alkylpolyglucosides”. It is unclear if the “at least one alkylpolyglucoside dispersant” recited in claim 21 is intended to further limit the Markush group of dispersants recited in instant claim 1 or if claim 21 is reciting different alkylpolyglucoside dispersants, rendering the claim indefinite.
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, 4-10, 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) 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 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 (instant spec. para. [0071-0074]) and they therefore inherently possess the solvent/water partition coefficient recited in the instant claims. See MPEP § 2112.01. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. Therefore, because Winter teaches many of the same solvents disclosed in the instant specification as being organic solvents with the claimed properties, said properties are necessarily present.
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). As evidenced by para. [0088] and [0094] of the instant spec., vegetable oils such soybean oil, canola oil, corn oil, etc. are drift retardant agents. 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.
Winter does not teach their 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 0.5-2.5% 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 1-2, 4-10, 13-14, 18-24, and 28 in view of the teachings of Winter and Jimoh.
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) 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) as applied to claims 1-2, 4-10, 13-14, 18-24, and 28 above, and further in view of Sada (U.S. Patent No. 10,624,346 B2, priority to 22 July 2016).
Winter and Jimoh teach the above.
Winter and Jimoh do not teach the ratio of epyrifenacil to dicamba salt(s) in their composition. This deficiency is 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 rendered obvious by the teachings of Winter and Jimoh because applying a known technique to improve a similar product yields predictable results. Winter and Jimoh render obvious herbicidal compositions containing more than one herbicide which in some embodiments are epyrifenacil, glyphosate, and one or more dicamba salts, wherein the dicamba salts may be the ethanolamine salt, the diglycolamine salt, or the BAPMA salt, a dispersant that is a phosphate ester or alkylpolyglucoside, an organic solvent, and inorganic halides as inorganic stabilizing agents.
An ordinary artisan would be motivated to provide the herbicides in the ratio taught by Sada in the composition rendered obvious above 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 Jimoh and further in view of the teachings of Sada.
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) 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) as applied to claims 1-2, 4-10, 13-14, 18-24, 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 and Jimoh teach the above.
Winter and Jimoh do 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 rendered obvious by the teachings of Winter and Jimoh because using a known composition for its intended purpose to improve a similar composition produces predictable results. Winter and Jimoh render obvious herbicidal compositions containing more than one herbicide which in some embodiments are epyrifenacil, glyphosate, and one or more dicamba salts, wherein the dicamba salts may be the ethanolamine salt, the diglycolamine salt, or the BAPMA salt, a dispersant that is a phosphate ester or alkylpolyglucoside, an organic solvent, and inorganic halides as inorganic stabilizing agents.
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 and Jimoh do 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 Jimoh and further in view of the teachings of 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) 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) as applied to claims 1-2, 4-10, 13-14, 18-24, 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 and Jimoh teach the above.
Winter and Jimoh do 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 rendered obvious by the teachings of Winter and Jimoh because applying a known technique to improve a similar product yields predictable results. Winter and Jimoh render obvious herbicidal compositions containing more than one herbicide which in some embodiments are epyrifenacil, glyphosate, and one or more dicamba salts, wherein the dicamba salts may be the ethanolamine salt, the diglycolamine salt, or the BAPMA salt, a dispersant that is a phosphate ester or alkylpolyglucoside, an organic solvent, and inorganic halides as inorganic stabilizing agents.
An ordinary artisan would be motivated to 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 herbicidal compositions. 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 Jimoh and further in view of the teachings of Shao.
Response to Arguments
The Applicant’s arguments, filed on 27 April 2026, have been fully considered but are not persuasive.
In the penultimate para. of pg. 10, Applicant argues that “nowhere does Winter teach or direct one skilled in the art to combine epyrifenacil along with a salt of dicamba”. The Examiner disagrees and directs Applicant to pg. 3, lines 6-28 of Winter where it is taught that their herbicidal mixtures comprise “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”) (). 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).
In the final para. of pg. 10, Applicant argues that Winter does not include “any specific direction” to create emulsion compositions or to include (i) a dispersant that is a phosphate ester or alkylpolyglucoside, (ii) a substantially water-immiscible organic solvent, or (iii) one or more inorganic halides. Regarding the “specific direction” argument, as stated in the non-final Office Action mailed on 29 December 2025, and repeated here in brief, while the Winter reference does not teach all of the limitations of instant claim 1 as recited at the time of writing, all of the claimed features were disclosed within the teachings of Winter and simply arranging 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. Regarding the argument directed to a composition comprising “components (i) - (iii)”, this is considered mood in view of the new grounds of rejection presented above.
In para. 3 of the section titled “Winter and Sada” on pg. 11, Applicant argues that the Sada reference does not motivate the addition of a dispersant, solvent and stabilizing agent to an oil-in-water microemulsion. The non-final Office Action mailed on 29 December 2025, did not make this argument, but instead argued that such a composition would be obvious in view of the teachings of Winter and Sada. As a result, the argument is found to be unpersuasive.
In the final para. of pg. 11, Applicant argues that the Jimoh reference does not teach the dicamba salts recited in the instant application nor their combination with epyrifenacil. The non-final Office Action mailed on 29 December 2025, did not make this argument, but instead argued that such a composition would be obvious in view of the teachings of Winter and Jimoh. As a result, the argument is found to be unpersuasive.
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning in para. 1 of pg. 12, 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). The Jimoh reference was used for its teachings that inorganic halides can add stability to oil-in-water emulsions which were taught by Winter. Both herbicidal compositions formulated as oil-in-water microemulsions and the addition of inorganic halides to herbicidal compositions were known at the time the claimed invention was made and no knowledge from the Applicant’s disclosure was needed. Therefore the argument asserting impermissible hindsight is not found to be persuasive.
Finally, in the sections titled “Winter and Killick” and “Winter and Shao” on pg. 12, Applicant argues that regardless of any teachings regarding incorporation of carboxylic acids and fatty oils, respectively, the references do “not cure the deficiencies of Winter”. This has been addressed above and the argument is found to be unpersuasive.
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, 18-22, and 25-28 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 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. 17/792,604 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).
Copending Application No. 17/792,604 does not recite the counterion in the dicamba salt to be diglycolamine or BAPMA. This deficiency is offset by the teachings of Winter.
Winter has been described above.
The instant application is an obvious variation of the invention recited in copending Application No. 17/792,604 because simple substitution of one known element for another produces predictable results. 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 Winter to substitute diglycolamine or BAPMA as the counterion in the monoethanolamine dicamba salt recited in the invention of Application ’604 because Winter teaches that the monoethanolamine, diglycolamine, and BAPMA salts of dicamba are all suitable for use in herbicidal compositions. “Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious." In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP § 2143.B. As a result, there is reasonable expectation of success in arriving at the invention of instant claims 1-14, 18-22, and 25-28 in view of the invention recited in claims 1, 3-14, 19-23, and 25-30 of copending Application No. 17/792,604 and the teachings of Winter.
Claims 1-14, 18-22, and 25-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 11-13, 17-21, 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 at least one of which is a phosphate ester, 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 microemulsion (claims 1-2). The inorganic halides are taught to be present in an amount from 0.5-2.5% w/w (claim 1). 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 (claim 20), and the organic solvent provides an organic solvent/water partition coefficient for compound (A) of ≥4 (claims 1 and 21). 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 nor the counterion in the dicamba salt to be diglycolamine or BAPMA. These deficiencies are 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. Further, Winter teaches that monoethanolamine, diglycolamine, and BAPMA salts of dicamba are all suitable for use in herbicidal compositions, and simple substitution of the counterions would be obvious. See MPEP § 2143.B. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-14, 18-22, and 25-28 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, 18-22, and 25-28 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, 18-22, and 25-28 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.
Response to Arguments
The Applicant’s response to the NSDP rejections, filed on 27 April 2026, is acknowledged. In para. 3 of pg. 13 of the remarks, Applicant stated that they “will consider the possibility of a Terminal Disclaimer if/when they are the only remaining rejection(s) and/or of any claims of the reference applications are in fact patented”. A complete response to a nonstatutory double patenting rejection is either a reply by the Applicant showing that the claims subject to the restriction are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
Conclusion
No claims are 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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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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