DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 11/14/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112, Second Paragraph
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 1-9 and 12 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 1 recites the limitation “the acetamide herbicide" in lines 11-12. There is insufficient antecedent basis for the limitation “the acetamide herbicide” in the claim. To overcome this rejection, the term can be changed to “the acetamide pesticide” as introduced in line 3. In the interest of compact prosecution, the Examiner is interpreting the claim limitation to be the acetamide pesticide, however, correction of the claim is required. Claim 12 also recites “acetamide herbicide” in line 2.
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
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 1-3 and 6-9 are rejected under 35 U.S.C. 103 as being as being obvious over Sohm et al. (WO 2008/135854 A2) and as evidenced by “Dimethenamid-P”.
Regarding claim 1, Sohm discloses a composition which is used to control plants or plant growth (pg. 7, lines 16-29) comprising a 2-benzoyl-1 ,3-cyclohexanedione herbicide, such as mesotrione (Col 3, line 13), water, oil, and additional active ingredients (Claim 1), where the additional active ingredients include dimethenamid-P (pg. 5, line 27). Sohm discloses dispersing the oil dispersion in water results in a suspoemulsion (Abstract). The oil phase can include the active ingredient (e.g., dimethenamid-P) and triglycerides (vegetable oil) (pg. 4, line 7; pg. 7, lines 9-10; pg. 5, line 27). Sohm discloses that mesotrione is combined with water and the aqueous solvent comprises 100 wt.% water (i.e., no other solvents besides water are used within the aqueous component) (pg. 3, lines 27-30; claim 1; claim 5). Sohm teaches that that mesotrione is insoluble in water (pg. 1, lines 14-15).
Sohm is not believed to be anticipatory because Sohm could be construed as not clearly and unequivocally disclosing the claimed invention or directing those skilled in the art to the claimed invention without any need for picking, choosing and combining various disclosures not directly related to each other by the teachings of the cited reference. Namely, one skilled in the art would need to choose mesotrione as the 2-benzoyl-l ,3-cyclohexanedione herbicide, dimethenamid-P as the additional active ingredient, and vegetable oil as the oil to form the suspoemulsion.
Nevertheless, claim 1 is rendered prima facie obvious over the teachings Sohm, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., dimethenamid-P and vegetable oil in an oil phase; mesotrione in water) were known in the prior art (e.g., Sohm) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a suspoemulsion) to one of ordinary skill in the art. MPEP 2143.A.
Further regarding claim 1, while it is not explicitly disclosed by Sohm that the aqueous phase comprises mesotrione as suspended solid particles, a chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because Sohm discloses that mesotrione is combined with water (pg. 3, lines 27-28; Claim 1; Claim 5) and mesotrione is insoluble in water (pg. 1, lines 14-15), the properties the applicant discloses and/or claims (mesotrione as suspended solid particles) are necessarily present.
Furthermore, while it is not explicitly disclosed by Sohm that the acetamide herbicide is at 21°C completely dissolved in the oil, as evidence by “dimethenamid-P”, dimethenamid-P is highly soluble in nonpolar organic solvents such as hexane, heptane, and toluene at 20°C (pg. 5, top). It would be reasonably be expected that using the acetamide herbicide, dimethenamid-P, and triglycerides (largely nonpolar), as taught by Sohm would result in the acetamide herbicide being completely dissolved in the solvent at 21°C. A chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because Sohm discloses the oil phase includes the active ingredient (e.g., dimethenamid-P) and triglycerides (vegetable oil) (pg. 4, line 7; pg. 7, lines 9-10; pg. 5, line 27)., the properties the applicant discloses and/or claims (the acetamide herbicide being completely dissolved) are necessarily present.
Claims 2-3 are rendered prima facie obvious because Sohm discloses dimethenamid-P (pg. 5, line 27).
Claim 6 is rendered prima facie obvious because mesotrione is not present in the disclosure of Sohm as a metal chelate (Claim 1).
Claim 7 is rendered prima facie obvious because Sohm discloses the oil is present in an amount of 40-90 % by weight based on the weight of the formulation (Claim 1). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Claim 8 is rendered prima facie obvious because Sohm discloses the oil is a triglyceride (vegetable oil) (pg. 4, line 7).
Claim 9 is rendered prima facie obvious because Sohm discloses diluting the oil dispersion in water produces an aqueous composition and results in a suspoemulsion (pg. 7, lines 17-21) (reads on continuous aqueous phase and dispersed oil phase). As previously discussed, because Sohm discloses that mesotrione is combined with water (pg. 3, lines 27-28; Claim 1) and mesotrione is insoluble in water (pg. 1, lines 14-15), the properties the applicant discloses and/or claims (mesotrione as suspended solid particles) are necessarily present (reads on suspended solid phase).
Response to Arguments
Applicant's arguments filed 11/14/2025 have been fully considered but they are not persuasive.
Applicant argues at the bottom of pg. 4 that the solvent system according to Sohm cannot be considered an aqueous solvent system because claim 1 now recites that the solvent system S2 comprises at least 70 wt.% water.
The Examiner disagrees. While Sohm discloses the composition as a whole contains from 0.5 to 20% water by weight, the aqueous solvent component comprises 100 wt.% water (i.e., no other solvents besides water are used within the aqueous component) (pg. 3, lines 27-30; claim 1; claim 5). The instant claim 1 recites “the aqueous solvent S2 comprises at least 70 wt.% water”. Sohm discloses this feature of the instant claim 1.
Applicant argues at pg. 5 that the pesticides taught by Sohm are preferably present in suspended form (pg. 7, lines 9-16), that dimethenamid-P is included in a long list of pesticides, and that Sohm discloses a long list of suitable oils with the preferred oil being rape seed oil methyl ester, therefore, Sohm does not lead a person skilled in the art to the claimed invention.
The Examiner disagrees. Patents are relevant as prior art for all that they contain and nonpreferred or alternative embodiments constitute prior art. See MPEP 2123. Therefore, although Sohm has many teachings, the large number of teachings does not detract from teaching the claimed components (i.e. dimethenamid-P and triglycerides). In regards to the argument of the “suspended form” being preferred by Sohm, as evidence by “dimethenamid-P”, dimethenamid-P is highly soluble in nonpolar organic solvents such as hexane, heptane, and toluene at 20°C (pg. 5, top). It would be reasonably be expected that using the acetamide herbicide, dimethenamid-P, and triglycerides (largely nonpolar), as taught by Sohm would result in the acetamide herbicide being completely dissolved in the solvent at 21°C. A chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because Sohm discloses the oil phase includes the active ingredient (e.g., dimethenamid-P) and triglycerides (vegetable oil) (pg. 4, line 7; pg. 7, lines 9-10; pg. 5, line 27)., the properties the applicant discloses and/or claims (the acetamide herbicide being completely dissolved) are necessarily present.
Analysis of Alleged Unexpected Results
The applicant argues at pg. 6 that the beneficial effects provided by the claimed invention are shown in the examples and comparative examples at pg. 10 of the specification including the inferior results detailed when rape seed oil methyl ester is used as solvent S1.
The Examiner has fully reviewed and considered the unexpected results alleged by the applicant at pg. 10 of the specification.
In the inventive examples, 75 g mesotrione acid, 90 g 1,2-propylene glycol, 30 g nonionic surfactant A (detailed on pg. 9), 25 g anionic surfactant A (detailed on pg. 9), 5 g antifoam A (silicone antifoam emulsion), 2 g citric acid, and 362 g water were processed. To 15.9 g of this suspension premix was added a blend of 11.7 g Dimethenamid-P (96%), 11.7 g hydrocarbon solvent A (mixture of C14-C16 alkanes) (Inventive Example 1) or 5.85 g soybean oil and 5.85 g hydrocarbon solvent B (paraffin oil) (Inventive Example 2) and 0.9 g nonionic surfactant B (detailed on pg. 9), followed by emulsification with a stirrer at 5000 rpm to form a suspoemulsion. Then, 50 mg xanthan gum, and 30 mg each of Biocide A (detailed on pg. 9) and Biocide B (detailed on pg. 9) were added upon gentle stirring. Finally, the pH of the suspoemulsion was adjusted to pH = 3 with aqueous NaOH.
In Inventive Example 1 (S1 = mixture of C14-C16 alkanes) the loss of mesotrione was 5% of the initial content. In Inventive Example 2 (S1 = mixture soybean oil and paraffin oil) the loss of mesotrione was 4% of the initial content. These results were compared to compositions like the inventive examples but where S1 was omitted and not replaced (Reference Example 1), where polypropylene oxide was used as S1 (Reference Example 2), and where rape seed oil methyl ester was used as S1 (Reference Example 3). The omission of S1 resulted in 15% loss of mesotrione, the use of polypropylene oxide as S1 resulted in 12% loss of mesotrione, and the used of rape seed oil methyl ester resulted in 12% loss of mesotrione.
The use of a mixture of C14-C16 alkanes or a soybean oil/paraffin oil as S1 compared to when the solvent is not used, polypropylene oxide is used as S1, or rape seed oil methyl ester is used as S1 results in greater retention of mesotrione in the composition.
These results are unexpected over the prior art.
However, the claims are not be “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has only demonstrated unexpected results over the prior art with the specific combination and amounts of mesotrione, a specific acetamide pesticide (dimethenamid-P), specific hydrocarbons/triglycerides, and a specific combination of solvents as S2 (water and 1,2-propylene glycol). It is unclear that a comparative composition containing these specific components and in these specific percentages would be reasonably representative of compositions containing other acetamide pesticides (e.g., other than dimethenamid-P), other hydrocarbons or triglycerides (e.g., other than C14-C16 alkanes or a soybean oil/paraffin oil), other solvents S2, etc. and in differing amounts, falling within the broader scope currently claimed.
Claim 4 is rejected under 35 U.S.C. 103 as being as being obvious over Sohm et al. (WO 2008/135854 A2) as evidenced by “Dimethenamid-P” and further in view of Li (US 2015/0105254 A1).
The 35 U.S.C. 103 rejection over Sohm as evidenced by Dimethenamid-P was previously discussed.
Sohm does not disclose mesotrione is comprised in the formulation in an amount of 1 to 250 g/L, as recited in claim 4.
Li discloses an herbicidal composition to control undesired vegetation with 0.1 g/L to 400 g/L of mesotrione. Li teaches this as an herbicidally effective amount of the herbicide [0029]-[0031].
Since Sohm generally teaches a composition which is used to control plants or plant growth with mesotrione, it would have been prima facie obvious to one of ordinary skill in the art to include 0.1 g/L to 400 g/L of mesotrione, within the teachings of Sohm, because Li teaches this amount of mesotrione within an herbicidal composition. An ordinarily skilled artisan would be motivated to use this amount of mesotrione because Li teaches that it is an herbicidally effective of mesotrione to control undesired vegetation [0029]-[0031]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments
Applicant's arguments filed 11/14/2025 have been fully considered but they are not persuasive.
Applicant argues that Li does not overcome the deficiencies of Sohm.
The Examiner disagrees because Sohm is not deficient except where Li teaches the amount of mesotrione.
Claim 5 is rejected under 35 U.S.C. 103 as being as being obvious over Sohm et al. (WO 2008/135854 A2) as evidenced by “Dimethenamid-P” and further in view of Koltzenburg et al. (US 7,994.227 B2).
The 35 U.S.C. 103 rejection over Sohm as evidenced by Dimethenamid-P was previously discussed.
Sohm does not disclose the pH of the aqueous phase is from 1 to 5, as recited in claim 5.
Koltzenburg discloses an aqueous dispersion comprising active compounds such as mesotrione to combat undesired vegetation (Col 15, lines 51-63; Col 10, line 52; Col 7, lines 34-39). The pH of the aqueous system is particularly preferred to be from pH 4 to 10 (Col 15, lines 60-63).
Since Sohm generally teaches a composition which is used to control plants or plant growth with mesotrione, it would have been prima facie obvious to one of ordinary skill in the art to formulate the composition to have a pH from 4 to 10, within the teachings of Sohm, because Koltzenburg teaches this pH for a composition comprising active compounds such as mesotrione. An ordinarily skilled artisan would be motivated to use this pH for the aqueous phase because Koltzenburg teaches this as a particularly preferred pH of the aqueous system for combatting undesired vegetation (Col 15, lines 51-63). A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments
Applicant's arguments filed 11/14/2025 have been fully considered but they are not persuasive.
Applicant argues that Koltzenburg does not overcome the deficiencies of Sohm.
The Examiner disagrees because Sohm is not deficient except where Koltzenburg teaches the claimed pH.
Claim 12 is rejected under 35 U.S.C. 103 as being as being obvious over Sohm et al. (WO 2008/135854 A2) as evidenced by “Dimethenamid-P” and further in view of Li (US 2015/0105254 A1) and Bremer et al. (WO 2013/026811 A1).
The 35 U.S.C. 103 rejection over Sohm as evidenced by Dimethenamid-P was previously discussed.
Sohm does not disclose the composition comprises 1 to 250 g/I of mesotrione and 10 to 600 g/I of acetamide herbicide, as recited in claim 12.
Li discloses an herbicidal composition to control undesired vegetation with 0.1 g/L to 400 g/L of mesotrione. Li teaches this as an herbicidally effective amount of the herbicide [0029]-[0031].
Since Sohm generally teaches a composition which is used to control plants or plant growth with mesotrione, it would have been prima facie obvious to one of ordinary skill in the art to include 0.1 g/L to 400 g/L of mesotrione, within the teachings of Sohm, because Li teaches this amount of mesotrione within an herbicidal composition. An ordinarily skilled artisan would be motivated to use this amount of mesotrione because Li teaches that it is an herbicidally effective of mesotrione to control undesired vegetation [0029]-[0031]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Bremer teaches dimethenamid-P in an herbicidal composition in an amount of 200 g/L (pg. 28, lines 9-11). Bremer teaches that this is an herbicidally effective amount to have activity against a variety of undesirable weed species (pg. 24, lines 25-34; pg 2, top).
Since Sohm generally teaches an herbicidal composition with dimethenamid-P, it would have been prima facie obvious to one of ordinary skill in the art to include 200 g/L of dimethenamid-P, within the teachings of Sohm, because Bremer teaches this amount of dimethenamid-P within an herbicidal composition. An ordinarily skilled artisan would be motivated to use this amount of dimethenamid-P because Bremer teaches that this is an herbicidally effective amount to have activity against a variety of undesirable weed species (pg. 24, lines 25-34; pg 2, top). A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments
The rejection of claim 12 over Sohm as evidenced by “Dimethenamid-P” and further in view of Li and Bremer is newly applied and has not been traversed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612