And Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s amendment filed 11/20/2025 has been entered. Claims 1, 4 and 7 was amended. Claim 5 was cancelled. Claims 1, 3, 4 and 6-10 are pending.
Withdrawn rejections
Applicant's amendments and arguments filed 8/4/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.
Maintained Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 4 and 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,464,226 (herein 226’) in view of Smith et al. (CA 2600605; published September 8, 2006). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent is drawn to a suspension concentrate whereas the present claims are drawn to a method of improving performance of an agrochemical by combining the agrochemical with a composition in the form of a soluble liquid. However, 226’ teach suspension concentrates and soluble liquid formulations (page 6, lines 4-7). Furthermore, the formulations demonstrate improved biological performance when used as an adjuvant (page 6, lines 28-34). It is proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting rejection. Therefore, the method of improving biological performance would have been prima facie obvious because 226’ teach soluble liquid formulations which have improved biological performance.
226’ does not specify the non-ionic surfactant is selected from CAS 146340-16-1 alcohols, C12-C18, ethers with polyethylene glycol mono-butyl ether, CAS 111905-53-4 alcohols, C13-15-branched and linear, butoxylated, ethoxylated and CAS 68131-39-5 fatty alcohol ethoxylate. It is for this reason that Smith et al. is joined.
Smith et al. teach compositions for killing, controlling or suppressing a plant by administering to the plant an herbicide composition comprising limonene and an emulsifying agent in an aqueous emulsion (abstract). Example 4 discloses a formulation comprising the emulsifying agent alcohol ethoxylated (BIO-SOFT N25-7) (page 34, lines 31-37). Table IV shows combining BIO-SOFT N25-7 with limonene and Toximul 8242 provides slightly more herbicidal effect than formulations comprising BIO-SOFT N25-7 alone (page 35, lines 1-20). The data show improved herbicide performance when BIO-SOFT N25-7 is added to limonene formulations (page 37, lines 1-27). As evidenced by BIO-SOFT N25-7 the CAS no. is 68131-39-5.
One of ordinary skill would have been motivated at the time of filing to combine the teachings of 226’ and Smith et al. and formulate an improved soluble liquid because Smith et al. teach that BIOS-SOFT N25-7 improves herbicide performance when used alone or with other non-ionic surfactants.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
Applicant argues the rejection is improper because of the current application is a proper divisional of the ‘226 patent. The Examiner is not persuaded by this argument because the present application was filed as a continuation on 8/18/2022 and the resubmitted Application Data sheet referenced by applicant on 06/10/2024 improperly lines out this and inserts “division of”. There is no petition of record to show that the application status properly changed from a continuation to a divisional. Applicants should request a corrected filing receipt to get the corrected ADS entered. Therefore, the double patenting rejection has been maintained.
Maintained Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 3 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Krapp et al. (US 2011/0172101; published July 14, 2011) in view of Smith et al. (CA 2600605; published September 8, 2006).
Applicant’s Invention
Applicant claims a method of improving biological performance of an agrochemical comprising combining and agrochemical having solubility of less than 300 g/l with (i) an alkyl polyglucoside of formula I and (ii) a non-ionic surfactant which is not an alkyl polyglucoside with an HLB greater than or equal to 12 and selected from CAS 146340-16-1 alcohols, C12-C18, ethers with polyethylene glycol mono-butyl ether, CAS 111905-53-4 alcohols, C13-15-branched and linear, butoxylated, ethoxylated and CAS 68131-39-5 fatty alcohol ethoxylate; wherein (i) is greater than or equal to (ii).
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Determination of the scope and the content of the prior art
(MPEP 2141.01)
Krapp et al. teach concentrates comprising 100-400 g/l herbicidal dinitroaniline, 20-100 g/l water, 5-100 g/l nonionic surfactant which has at least one polyethylene oxide group and at least one radical selected from poly-C3-C4-alkylene oxide group and 50-250 g/l nonionic surfactant selected from alkyl polyglucosides (abstract). The dinitroaniline herbicides are compounds having solubility of less than 5 g/L selected from benfluralin, pendimethalin and trifluralin [0023; limitation of claims 1 and 11]. The nonionic surfactant which has at least one polyethylene oxide group and at least one radical selected from poly-C3-C4-alkylene oxide group has a HLB value according to the Griffin scale in the range of 5-20, preferably 8-18 [0048]. Preferred surfactants are those with HLB of 14 selected from Antarox B500 and Witconol NS 500K [0079-80]. As a further constituent f) the composition comprises at least one nonionic surfactant selected from ethoxylated C8-C22 alkanols [0052]. The alkyl polyglucosides have the following structure where x is on average 1.1 to 2 and R is a linear or branched alkyl the is preferably 8 to 22 carbon atoms [0056].
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The ethoxylated C8-C22 alkanols preferably have a degree of ethoxylates from 2-40 and ethoxylated C10-C18 alkanols such ethoxylated lauryl alcohol [0058].
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Krapp et al. teach soluble liquid or suspension concentrate formulations however at the time of invention preparing suspension concentrates of pendimethalin and imidazolinone herbicides was known to have crystallization from settling [0006]. Krapp et al. teach forming liquids which appear homogeneous by mixing ingredients [0067]. Krapp et al. teach that the nonionic surfactants adjuvant aid in adding high dilution stability [0009]. Therefore, it would have been obvious for one of ordinary skill to combine active ingredients with alkyl polyglucosides to form a soluble liquid by adding nonionic surfactants with HLB of 8-18.
Krapp et al. do not specify the non-ionic surfactant is selected from CAS 146340-16-1 alcohols, C12-C18, ethers with polyethylene glycol mono-butyl ether, CAS 111905-53-4 alcohols, C13-15-branched and linear, butoxylated, ethoxylated and CAS 68131-39-5 fatty alcohol ethoxylate. It is for this reason that Smith et al. is joined.
Smith et al. teach compositions for killing, controlling or suppressing a plant by administering to the plant an herbicide composition comprising limonene and an emulsifying agent in an aqueous emulsion (abstract). Example 4 discloses a formulation comprising the emulsifying agent alcohol ethoxylated (BIO-SOFT N25-7) (page 34, lines 31-37). Table IV shows combining BIO-SOFT N25-7 with limonene and Toximul 8242 provides slightly more herbicidal effect than formulations comprising BIO-SOFT N25-7 alone (page 35, lines 1-20). The data show improved herbicide performance when BIO-SOFT N25-7 is added to limonene formulations (page 37, lines 1-27). As evidenced by BIO-SOFT N25-7 the CAS no. is 68131-39-5.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Both Knapp et al. and Smith et al. teach herbicidal formulations comprising alkoxylated alcohol surfactants. Therefore, it would have been prima facie obvious to one of ordinary skill at the time of invention to combine the teachings of Knapp et al. and Smith and formulate a soluble liquid comprising BIO-SOFT N25-7 and alkyl polyglycosides with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of filing to formulate an improved soluble liquid because Krapp et al. teach that the adjuvant comprising non-ionic surfactants with an HLB of 14 improved the stability of the formulation and Smith et al. teach that BIOS-SOFT N25-7 improves herbicide performance when used alone or with other non-ionic surfactants.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Krapp et al. (US 2011/0172101; published July 14, 2011) in view of Smith et al. (CA 2600605; published September 8, 2006) , as applied to claims 1, 3 and 6-8 in further view of Hopkinson et al. (EP 1423001; published June 2, 2004).
Applicant’s Invention
Applicant claims a method of improving biological performance of an agrochemical comprising combining and agrochemical having solubility of less than 300 g/l with (i) an alkyl polyglucoside of formula I and (ii) a non-ionic surfactant which is not an alkyl polyglucoside with an HLB greater than or equal to 12 and selected from CAS 146340-16-1 alcohols, C12-C18, ethers with polyethylene glycol mono-butyl ether, CAS 111905-53-4 alcohols, C13-15-branched and linear, butoxylated, ethoxylated and CAS 68131-39-5 fatty alcohol ethoxylate; wherein (i) is greater than or equal to (ii).
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Determination of the scope and the content of the prior art
(MPEP 2141.01)
The teachings of Krapp et al. and Smith et al. are addressed in the above 103 rejection.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Krapp et al. and Smith et al. do not specify the agrochemical is selected from mesotrione. It is for this reason that Hopkinson et al. is joined.
Hopkinson et al. teach herbicidal compositions comprising a surfactant system and one or more herbicides along with alkyl polyglycosides and nonionic surfactants [0001]. The herbicide is selected from mesotrione [0005]. The nonionic surfactants are different from the alkyl polyglycosides, preferably butyl ether derivative of EO/PO block copolymers [0023].
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Knapp et al., Smith et al. and Hopkinson et al. teach herbicidal formulations comprising nonionic surfactants. Therefore, it would have been prima facie obvious to one of ordinary skill at the time of invention to combine the teachings of Knapp et al., Smith et al. and Hopkinson et al. and formulate a soluble liquid comprising mesotrione, BIO-SOFT N25-7 and alkyl polyglycosides with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of filing to formulate an improved soluble liquid comprising mesotrione because Hopkinson et al. teach it is a preferred herbicide that can be combined with alkyl polyglycosides and nonionic surfactants to form stable herbicidal formulations.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive. Applicant argues that Krapp and Smith do not render claim 1 obvious because the weight ratio of component (i) to component (ii) is from 1:1 to 10:1 and the range makes the claims commensurate in scope with the unexpected results. The examiner is not persuaded by this argument because Krapp et al. encompasses combinations of alkyl polyglucoside (i) to nonionic surfactants (ii) in the claimed ratio. Krapp et al. teach concentrates comprising 5-100 g/l nonionic surfactant which has at least one polyethylene oxide group and at least one radical selected from poly-C3-C4-alkylene oxide group and 50-250 g/l nonionic surfactant selected from alkyl polyglucosides (abstract). Smith et al. teach compositions for killing, controlling or suppressing a plant by administering to the plant an herbicide composition comprising limonene and an emulsifying agent in an aqueous emulsion (abstract). Smith shows that combining BIO-SOFT N25-7 (CAS no. 68131-39-5 fatty alcohol ethoxylate) with limonene and Toximul 8242 provides slightly more herbicidal effect than formulations comprising BIO-SOFT N25-7 alone (page 35, lines 1-20). The data shows improved herbicide performance when BIO-SOFT N25-7 is added to pesticide formulations (page 37, lines 1-27). Therefore, one of ordinary skill would have been motivated to combine the teachings of Krapp et al. and Smith to combine alkyl polyglucosides with nonionic surfactant CAS no. 68131-39-5 to improve biological performance of the active ingredient.
Conclusion
No claims 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached on Monday-Friday 9:00 am-5:30 pm.
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, Bethany Barham can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1617