DETAILED ACTION
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 .
This Office Action is in response to Applicant’s amendment filed January 16, 2026. Claims 1-15 are pending in the application. Claims 1 and 10 have been amended. Claims 3, 4, 14, and 15 have been withdrawn. Claims 1, 2, and 5-13 will be examined to the extent they read on the elected subject matter of record.
Status of the Claims
The objection to the specification is withdrawn due to Applicant’s amendment to the specification.
The rejection of claim 1 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to Applicant’s amendment of the claim to cancel the term “preferably”.
The rejection of Claim 10 for the recitation of the limitation "dicamba-K" in line 2 is withdrawn due to Applicant’s amendment to the claim to recite “potassium salt of dicamba.
The rejection of claim 10 which recites “The agrochemical composition according to claim 1 containing a side product of dicamba -K selected from the group consisting of 3,5-dichloro-2-methoxybenzoic acid…and/or 3,5-dichloro-4-methoxybenzoic acid, and a potassium salt of any of them. It is unclear if the side product of dicamba-K, as claimed, is an additional herbicide or if the side products, claimed, are the herbicides used in the composition is maintained.
The rejection of claim 12 which recites the limitation "dicamba-K" in line 2 for insufficient antecedent basis is maintained.
Claims 1, 2, 6, 7, 8, 9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Miln et al. (US 9,839,218) in view of Vandeputte et al. (EP 2,804,949) is maintained.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Miln et al. (US 9,839,218) in view of Vandeputte et al. (EP 2,804,949) as applied to claims 1, 2, 6, 7, 8, 9, 12, and 13 above, and further in view of Zhang et al. (US 2010/0331182) is maintained.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Miln et al. (US 9,839,218) in view of Vandeputte et al. (EP 2,804,949) as applied to claims 1, 2, 6, 7, 8, 9, 12, and 13 above, and further in view of Bhatte et al. (US 2009/0105077) is maintained.
Claim Rejections - 35 USC § 112
Claims 10 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 10 recites “The agrochemical composition according to claim 1 containing a side product of dicamba -K selected from the group consisting of 3,5-dichloro-2-methoxybenzoic acid…and/or 3,5-dichloro-4-methoxybenzoic acid, and a potassium salt of any of them. It is unclear if the side product of dicamba-K, as claimed, is an additional herbicide or if the side products, claimed, are the herbicides used in the composition. To advance prosecution of the application claim 10 will interpreted as the side product is an additional herbicide.
Response to Arguments
Applicant's arguments filed January 16, 2026 have been fully considered but they are not persuasive. Applicant argues the examiner’s interpretation that claim 10 requires the side product as being an additional herbicide component is incorrect. Applicant argues that it is submitted that the term “side product of dicamba K” is clear when read in light of the specification. Applicant further argues that a person would readily understand “side product of dicamba K” to denote process-related byproducts/impurities present in dicamba K technical material due to its manufacture and carried into the formulation with dicamba K, not an additional herbicide intentionally added as a separate active ingredient. In response to Applicant’s arguments, while the specification can be used to help interpret claim language, claims should stand on their own. The “metes and bounds” of the claims should be understood without having to read the specification. While the specification does indicate dicamba-K contains several side products, including the side products claimed, the claim, as written, is unclear. The examiner recommends the claim be amended as “The agrochemical composition according to claim 1 wherein the potassium salt of dicamba contains a side product selected from the group consisting of 3,5-dichloro-2-methoxybenzoic acid…and/or 3,5-dichloro-4-methoxybenzoic acid, and a potassium salt of any of them” to clarify the interpretation of the claim.
Claim 12 recites the limitation "dicamba-K" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 12 is dependent from claim 1, which recites “potassium salt of dicamba”. While dicamba-K is the abbreviated version for the potassium salt of dicamba, the abbreviated version of potassium salt of dicamba, dicamba-K, is not recited in claim 1.
Response to Arguments
Applicant's arguments filed January 16, 2026 have been fully considered but they are not persuasive. Applicant indicates that “potassium salt of dicamba” is substituted for “dicamba-K”. While Applicant amended claim 10, claim 12 was not amended. As such, the rejection of claim 12 is maintained for lack of antecedent basis.
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.
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.
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, 6, 7, 8, 9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Miln et al. (US 9,839,218) in view of Vandeputte et al. (EP 2,804,949).
Applicant’s Invention
Applicant claims an aqueous agrochemical composition comprising the potassium salt of dicamba, and an additive selected from the group consisting of a) a polyalkylene oxide block-copolymer of formula (I)
PNG
media_image1.png
37
218
media_image1.png
Greyscale
; b) a hyperbranched polycarbonate, which is connected to a linear polymer comprising polyethylene oxide; and c) a solvent selected from C1-C6-alkyl lactate, C3-C6-lactone, and N-C1-C15-alkyl pyrrolidone, wherein the potassium salt of dicamba is present in an amount of at least 30 wt.% based on the total weight of the agrochemical composition.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Miln et al. teach stable, single-phase pesticidal emulsifiable concentrates are provided which comprise (a) a pesticide mixture comprising a major amount of a water-insoluble pesticide and a minor amount of a water-soluble pesticidal salt; (b) a solvent system comprising (i) a major amount of an organic solvent comprising at least one non aqueous polar solvent; and (ii) a minor amount of water; and, optionally, (c) an emulsifying surfactant system enabling an oil in water emulsion to be formed when the concentrate formulation is diluted upon addition to water (Abstract).
Regarding claim 1, Miln et al. teach the water-soluble pesticide salt is a potassium salt of dicamba (col. 4, lines 6-10).
Regarding claim 1, Miln et al. teach the examples of non-aqueous, polar solvents include ethyl lactate, butyrolactone, N-octylpyrrolidone, N-methylpyrrolidone, and dodecyl pyrrolidone (col. 4, lines 45-66).
Miln et al. teach the emulsifying system (c) comprises a mixture of at least one alkyl polyglycoside and at least one propylene-oxide/ethylene-oxide copolymer (col. 5, lines 63-65). Suitable co-polymers of ethylene oxide and propylene oxide can be di- and tri-block copolymers, such as ABA or BAB block copolymer or BA block copolymers. Examples include the PLURONIC series (BASF), the SYNPERONIC PE series (UNIQEMA), or the TOXIMUL series (STEPAN). Suitable examples include Pluronic L10, Pluronic L44, Pluronic L63, Pluronic L64, Pluronic P84, Pluronic P104, Pluronic P105, Step-Flow 26, Toximul 8323, and Toximul 8320 (col. 5, lines 66-67-col. 6, lines 1-13).
Regarding claim 7, Miln et al. teach in example 18 a composition comprising Dicamba-DGA, Fluroxypyr meptyl ester, Ethyl lactate (solvent, C1-C6-alkyl lactate), APG 8107U/Pluronic P105 (a polyalkylene oxide block-copolymer of formula (I) (cols. 13 and 14, Table 6).
Regarding claim 12, Miln et al. teach the emulsifiable concentrates can be prepared by combining an aqueous solution of the water-soluble herbicide salt with a non-aqueous solution of the water-insoluble herbicide and, optionally, at least a portion of the emulsifying surfactant system (col. 9, lines 14-29).
Regarding claim 13, Miln et al. teach a method for preventing or controlling weeds in crops of useful plants, said method comprising treating the plants, plant parts or locus thereof with a herbicidally effective amount of the inventive EC or dilute herbicidal spray compositions as described herein (col. 7, lines 38-52).
Miln et al. teach other active ingredients such as herbicides may be present in the emulsifiable concentrate (col. 8, line 37).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Miln et al. do not specifically disclose a composition comprising the potassium salt of dicamba and one of the claimed additives, the solvent is the elected solvent n-butylpyrrolidone, the amount of potassium salt of dicamba is present in an amount of at least 55%, as claimed in claim 6, water is at least 22% of the agrochemical composition, as claimed in claim 8, or the concentration of a sum of all additives a), b), and c) is from 1 to 35% based on the total weight of the agrochemical composition, as claimed in claim 9. It is for this reason Vandeputte et al. is added as a secondary reference.
Vandeputte et al. teach the use of N-n-butylpyrrolidone (page 3, paragraph [0026]. Vandeputte et al. teach N-n-butylpyrrolidone may be used as an effective solvent or co-solvent acting as a dissolution, dilution or dispersion agent for herbicides which may often be insoluble in other liquids and which often require polar solvents. N-n-butylpyrrolidone may be used on growing crops because of their favorable toxicological profile (page 5, paragraph [0045 (i)]. Vandeputte et al. teach the alternative solvents should have similar physical propertied (page 3, paragraph 24). Vandeputte et al. teach the use of N-n-butylpyrrolidone as a non-reprotoxic solvent (page 10, claim 1). Vandeputte et al. teach the use of N-n-butylpyrrolidone as a replacement solvent for N-methylpyrrolidone and N-ethyl-2-pyrrolidone (page 10, claim 2).
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Miln et al. and use the potassium salt of dicamba in the compositions. Miln et al. teach stable, single-phase pesticidal emulsifiable concentrates are provided which comprise (a) a pesticide mixture comprising a major amount of a water-insoluble pesticide and a minor amount of a water-soluble pesticidal salt; (b) a solvent system comprising (i) a major amount of an organic solvent comprising at least one non aqueous polar solvent; and (ii) a minor amount of water; and, optionally, (c) an emulsifying surfactant system enabling an oil in water emulsion to be formed when the concentrate formulation is diluted upon addition to water. Miln et al. teach in example 18 a composition comprising Dicamba-DGA, Fluroxypyr meptyl ester, Ethyl lactate (solvent, C1-C6-alkyl lactate), APG 8107U/Pluronic P105 (a polyalkylene oxide block-copolymer of formula (I). One of ordinary skill in the art would have been motivated to use or substitute the potassium salt of dicamba in the examples because Miln et al. specifically teach that the potassium salt of dicamba is one of the preferred water soluble pesticides. Miln et al. also provides examples containing Dicamba-K aqueous solution. Therefore, it would have been obvious to use the potassium salt of dicamba with a reasonable expectation of success.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Miln et al. and Vandeputte et al. and substitute N-n-butylpyrrolidone as the polar solvent in the compositions taught by Miln et al. Miln et al. teach the examples of non-aqueous, polar solvents include ethyl lactate, butyrolactone, N-octylpyrrolidone, N-methylpyrrolidone, and dodecyl pyrrolidone. One of ordinary skill in the art would have been motivated to substitute N-n-butylpyrrolidone for any of the solvents that can be used in the compositions taught by Miln et al. since Vandeputte et al. teach that N-n-butylpyrrolidone is a non-reprotoxic solvent, has similar physical properties, and has a favorable toxicological profile in growing crops.
One of ordinary skill in the art would have been motivated to use the concentration of dicamba, as claimed in claims 1 and 6, water, as claimed in 8, and the concentration of the sum of all the additives a), b), and c), as claimed in claim 9, as a matter of experimentation and optimization. Miln et al. teach the dicamba diglycolamine aqueous salt is approximately 38.5% w/w Dicamba AE and 56.8% Dicamba-DGA salt. Miln et al. teach in the example the polar solvent is 24.1% of the composition and surfactant is 10% of the composition. In example 66 that comprises Dicamba-K contains 36% AE of the potassium salt of dicamba. One of ordinary skill in the art would have been motivated to use the examples as a guide to determine the weight percentages of the components of the composition to formulate an effective herbicidal composition. This includes the potassium salt of dicamba present in an amount of at least 55 wt.% based on the total weight of the agrochemical composition. This also includes the amount of water to add to the composition to prepare the emulsion, as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007). The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made because every element of the invention has been fairly suggested by the cited references.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Miln et al. (US 9,839,218) in view of Vandeputte et al. (EP 2,804,949) as applied to claims 1, 2, 6, 7, 8, 9, 12, and 13 above, and further in view of Zhang et al. (US 2010/0331182).
Applicant’s Invention
Applicant claims an aqueous agrochemical composition comprising the potassium salt of dicamba, and an additive selected from the group consisting of a) a polyalkylene oxide block-copolymer of formula (I)
PNG
media_image1.png
37
218
media_image1.png
Greyscale
; b) a hyperbranched polycarbonate, which is connected to a linear polymer comprising polyethylene oxide; and c) a solvent selected from C1-C6-alkyl lactate, C3-C6-lactone, and N-C1-C15-alkyl pyrrolidone. Applicant claims the composition comprising glyphosate and/or glufosinate and/or pyroxasulfone.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Miln et al. and Vandeputte et al. with respect to the 35 U.S.C. 103 rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Miln et al. and Vandeputte et al. do not specifically disclose the composition comprising glyphosate and/or glufosinate and/or pyroxasulfone. It is for this reason Zhang et al. is added as a secondary reference.
Zhang et al. teach the mixture of potassium or certain amine salts of glyphosate and dicamba allows the preparation of high-strength liquid compositions (Abstract). Zhang et al. teach a high-strength aqueous herbicidal concentrate composition comprising water, a glyphosate potassium or amine salt, and a dicamba potassium salt (page 1, paragraphs 9-12). Zhang et al. teach the high-strength herbicidal composition include one or more cosolvent and/or an efficacy-enhancing amount of a surfactant or surfactant mixture (page 2, paragraph 20). Zhang et al. teach a method of controlling undesirable vegetation in crops that are resistant or tolerant to both glyphosate and dicamba (page 6, claim 10).
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Miln et al., Vandeputte et al., and Zhang et al. and add glyphosate to the composition. Miln et al. teach stable, single-phase pesticidal emulsifiable concentrates are provided which comprise (a) a pesticide mixture comprising a major amount of a water-insoluble pesticide and a minor amount of a water-soluble pesticidal salt; (b) a solvent system comprising (i) a major amount of an organic solvent comprising at least one non aqueous polar solvent; and (ii) a minor amount of water; and, optionally, (c) an emulsifying surfactant system enabling an oil in water emulsion to be formed when the concentrate formulation is diluted upon addition to water. Miln et al. teach one of the preferred herbicides is the potassium salt of dicamba. Miln et al. teach other active ingredients such as herbicides may be present in the emulsifiable concentrate. One of ordinary skill in the art would have been motivated to add glyphosate to the composition taught by Miln et al. because Miln et al. teach that other herbicides can be added to the composition. In addition, Zhang et al. teach that compositions comprising potassium or amine salts of glyphosate and potassium salts of dicamba to prepare high-strength liquid compositions. In addition, in view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional herbicides set forth prima facie obvious subject matter.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made because every element of the invention has been fairly suggested by the cited references.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Miln et al. (US 9,839,218) in view of Vandeputte et al. (EP 2,804,949) as applied to claims 1, 2, 6, 7, 8, 9, 12, and 13 above, and further in view of Bhatte et al. (US 2009/0105077).
Applicant’s Invention
Applicant claims an aqueous agrochemical composition comprising the potassium salt of dicamba, and an additive selected from the group consisting of a) a polyalkylene oxide block-copolymer of formula (I)
PNG
media_image1.png
37
218
media_image1.png
Greyscale
; b) a hyperbranched polycarbonate, which is connected to a linear polymer comprising polyethylene oxide; and c) a solvent selected from C1-C6-alkyl lactate, C3-C6-lactone, and N-C1-C15-alkyl pyrrolidone. Applicant claims the composition containing a side product of dicamba-K
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Miln et al. and Vandeputte et al. with respect to the 35 U.S.C. 103 rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Miln et al. and Vandeputte et al. do not specifically disclose the composition comprising containing a side produce of dicamba-K selected from the group consisting of 3,5-dichloro-2-methoxybenzoic acid, 3,5-dichloro-2-hydroxybenzoic acid…and/or 3,5-dichloro-4-methoxybenzoic acid and a potassium salt of any of them or the concentration of the side product. It is for this reason Bhatti et al. is added as a secondary reference.
Bhatte et al. teach a method of enhancing the yield of a plant comprising contacting the plant with an amount of dicamba, or a product of DMO-mediated metabolism of dicamba, effective to increase the yield of the plant relative to a plant of the same genotype grown under the same conditions but not contacted with the dicamba product. The method further comprises contacting a population of plants with the dicamba or a product of DMO-mediated metabolism. The product of DMO-mediated metabolism may be 3,6-DCSA, 3,5-DCSA or 3-CSA (page 2, paragraph 21). Bhatte et al. teach the dicamba refers to 3,6-dichloro-2-methoxy benzoic acid and its salts, including potassium (page 4, paragraph 49).
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Miln et al., Vandeputte et al., and Bhatte et al. and the composition contains a side product of dicamba K. Miln et al. teach stable, single-phase pesticidal emulsifiable concentrates are provided which comprise (a) a pesticide mixture comprising a major amount of a water-insoluble pesticide and a minor amount of a water-soluble pesticidal salt; (b) a solvent system comprising (i) a major amount of an organic solvent comprising at least one non aqueous polar solvent; and (ii) a minor amount of water; and, optionally, (c) an emulsifying surfactant system enabling an oil in water emulsion to be formed when the concentrate formulation is diluted upon addition to water. Miln et al. teach one of the preferred herbicides is the potassium salt of dicamba. One of ordinary skill in the art would have been motivated to formulate a composition that contains a side produce of dicamba-K because Bhatti et al. teach a method of enhancing the yield of a plant comprising contacting the plant with an amount of dicamba, or a product of DMO-mediated metabolism of dicamba, effective to increase the yield of the plant relative to a plant of the same genotype grown under the same conditions but not contacted with the dicamba product. The product of DMO-mediated metabolism may be 3,6-DCSA, 3,5-DCSA or 3-CSA. Based on these teachings one of ordinary skill in the art would have been motivated to use 3,6-DCSA, which is 3,6-dichloro-hydroxybenzoic acid and 3,5-DCSA is 3,5-dichloro-2-hydroxybenzoic acid, that yields increased tolerance to oxidative stress and increases germination rate of seed. As such, one of ordinary skill in the art would have been motivated to use the side product of potassium K, with a reasonable expectation of success.
One of ordinary skill in the art would have been motivated to use at least 1% wt.% based on the total weight of the agrochemical composition as a matter of experimentation and optimization. It would have been obvious to one of ordinary skill in the art to use experimentation to optimize the amount of side product present in the composition to improve the health of plant. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made because every element of the invention has been fairly suggested by the cited references.
Response to Arguments
Applicant's arguments filed January 16, 2026 have been fully considered but they are not persuasive. Applicant argues amended claim 1 is directed to an aqueous agrochemical composition comprising dicamba K and one of the additives a)-c), wherein dicamba K is present in an amount of at least 30 wt.%. Applicant indicates that the presently-claimed subject matter provides a solution to the stability issue because the claimed aqueous compositions exhibit improved physical stability, in particular under low-temperature conditions where instability would normally be expected.
Applicant argues that Examples 9 and 10 were stored for four weeks at 0˚C and 10˚C, respectively. Under these low-temperature conditions, these concentrates in particular SL-12, SL-14 to SL16, SL-18, SL-19, SL21-SL22, and SL28 to SL-36, remained clear and homogeneous. Applicant argues that these results demonstrate that the claimed aqueous dicamba K compositions comprising at least one additive selected from (a) to (c), exhibit enhanced physical stability at low temperatures, confirming that the presence of the required additive system effectively suppresses precipitation and crystallization of dicamba K during cold storage. In response to Applicant’s argument, Applicant is asserting unexpected results. Applicant asserts that solutions SL-12, SL-14, SL-15, SL-16, SL-18, SL-19. SL-21, SL-22, SL29, SL-30, SL-31, SL-32, SL-33, SL-34, SL-35 and SL-36 form clear solutions at 0˚C and 10˚C for four weeks. These solutions comprise Dicamba K-A (potassium salt of dicamba, 95.3% purity), water, solvent A (n-propyl lactate) and polymer C (hyperbranched polycarbonate connected to methyl polyethylene glycol, prepared as described in Synthesis example 5 in WO2010130599). Applicant claims an aqueous agrochemical composition comprising the potassium salt of dicamba, and an additive selected from the group consisting of a) a polyalkylene oxide block-copolymer of formula (I)
PNG
media_image1.png
37
218
media_image1.png
Greyscale
; b) a hyperbranched polycarbonate, which is connected to a linear polymer comprising polyethylene oxide; and c) a solvent selected from C1-C6-alkyl lactate, C3-C6-lactone, and N-C1-C15-alkyl pyrrolidone. While the data indicates that the solutions cited are stable at cold temperatures, the data is not commensurate in scope with the claimed invention. It cannot be determined if the data for solvent A (n-propyl lactate) combined with dicamba-K-A and polymer C is demonstrative of combinations of dicamba K, a polyalkylene oxide block-copolymer of formula (I) and a C3-C6-lactone or a N-C1-C15-alkyl pyrrolidone. The claims are also interpreted as a potassium salt of dicamba and a) a polyalkylene oxide block-copolymer of formula (I)
PNG
media_image1.png
37
218
media_image1.png
Greyscale
OR potassium salt of dicamba and b) a hyperbranched polycarbonate, which is connected to a linear polymer comprising polyethylene oxide OR potassium salt of dicamba and a solvent selected from C1-C6-alkyl lactate, C3-C6-lactone, and N-C1-C15-alkyl pyrrolidone. The data confirms that a composition that comprises the potassium salt of dicamba, water, and polymer C (SL-17) forms a cloudy mixture or form crystals or precipitated solids (SL-20). This indicates that compositions that form clear solutions require all of the components including potassium salt of dicamba, water, a polymer A or polymer B, and a solvent. The data also indicates that specific weight percentages of the components are necessary to form the clear solutions. Evidence of nonobviousness must be commensurate in scope with that of the claimed subject matter. Applicant has not established nonobvious evidence that is commensurate in scope with that of the claimed subject matter.
Applicant argues that in the ‘218 patent the concentration of dicamba salts in these formulations is at most 12% by weight. Applicant argues that the ‘218 patent fails to teach or suggest an aqueous composition containing dicamba K and one of the claimed additives and that the skilled person could not reasonably expect from the ‘218 patent that the additives a)-c) are suitable for providing physically stable aqueous compositions of dicamba K having a high load of dicamba K. In response to Applicant’s argument, the examiner maintains that one of ordinary skill in the art would have been motivated to use the concentration of dicamba, as claimed in claims 1 and 6 as a matter of experimentation and optimization. Miln et al. teach the dicamba diglycolamine aqueous salt is approximately 38.5% w/w Dicamba AE and 56.8% Dicamba-DGA salt. Miln et al. teach in the example the polar solvent is 24.1% of the composition and surfactant is 10% of the composition. In example 66 the composition comprises Dicamba-K contains 36% AE of the potassium salt of dicamba, which falls within the amended percentages of dicamba-K, currently amended. As such, one of ordinary skill in the art would have been motivated to use the examples as a guide to determine the weight percentages of the components of the composition to formulate an effective herbicidal composition. This includes the potassium salt of dicamba present in an amount of at least 55 wt.% based on the total weight of the agrochemical composition. This also includes the amount of water to add to the composition to prepare the emulsion, as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007). The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Applicant argues that it should be noted that the teaching of the ‘218 patent provides pesticidal emulsifiable concentrates containing only a very small amount of water. Applicant argues, in contrast, the concentrates contain the active ingredient dissolved in organic solvents, requiring emulsifiers to form emulsions when mixed with water. In response to Applicant’s argument, independent claim 1 does not claim water as a component necessary for the composition. Dependent claim 8 indicates that the composition comprises at least 22 wt.% of water. One of ordinary skill in the art would have been motivated to use the examples as a guide to determine the weight percentages of the components of the composition to formulate an effective herbicidal composition. This includes the amount of water to add to the composition to prepare the emulsion, as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007). The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Applicant argues that substitution of one salt form for another is not a trivial or routine substitution in the aqueous formulation art and that the ‘218 patent contains no teaching that dicamba K can be incorporated into an aqueous composition in an amount of at least 30 wt.%, while maintaining storage stability, especially at reduced temperatures. In response to Applicant’s argument, one of ordinary skill in the art would have been motivated to use or substitute the potassium salt of dicamba in the examples because Miln et al. specifically teach that the potassium salt of dicamba is one of the preferred water soluble pesticides. Miln et al. also provides examples containing Dicamba-K aqueous solution. As such, it would have been prima facie obvious to use the potassium salt of dicamba as the dicamba salt since the prior art establishes that Dicamba-DGA salt and Dicamba-K are functional equivalents. Thus, it would be readily envisaged by one skilled in the art that Dicamba-K can be used as the dicamba salt in the composition.
Applicant argues that EP ‘949 fails to overcome the deficiencies of the ‘281 patent. Applicant argues that EP ‘949 does not teach or suggest that n-butylpyrrolidione may increase the solubility of pesticides, let alone dicamba K. Vandeputte et al. (EP ‘949) was added to teach the use of N-n-butylpyrrolidone, the elected solvent. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Miln et al. and Vandeputte et al. and substitute N-n-butylpyrrolidone as the polar solvent in the compositions taught by Miln et al. Miln et al. teach the examples of non-aqueous, polar solvents include ethyl lactate, butyrolactone, N-octylpyrrolidone, N-methylpyrrolidone, and dodecyl pyrrolidone. One of ordinary skill in the art would have been motivated to substitute N-n-butylpyrrolidone for any of the solvents that can be used in the compositions taught by Miln et al. since Vandeputte et al. teach that N-n-butylpyrrolidone is a non-reprotoxic solvent, has similar physical properties, and has a favorable toxicological profile in growing crops. The reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. While there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention.
Applicant further argues the secondary references, Zhang et al. (‘182 publication) and Bhatti et al. (‘077 publication), do not overcome the deficiencies of ‘281 patent and Vandeputte et al. (EP ‘949). Zhang et al. was added to provide a motivation of add glyphosate to the composition. Miln et al. teach stable, single-phase pesticidal emulsifiable concentrates are provided which comprise (a) a pesticide mixture comprising a major amount of a water-insoluble pesticide and a minor amount of a water-soluble pesticidal salt; (b) a solvent system comprising (i) a major amount of an organic solvent comprising at least one non aqueous polar solvent; and (ii) a minor amount of water; and, optionally, (c) an emulsifying surfactant system enabling an oil in water emulsion to be formed when the concentrate formulation is diluted upon addition to water. Miln et al. teach one of the preferred herbicides is the potassium salt of dicamba. Miln et al. teach other active ingredients such as herbicides may be present in the emulsifiable concentrate. One of ordinary skill in the art would have been motivated to add glyphosate to the composition taught by Miln et al. because Miln et al. teach that other herbicides can be added to the composition. In addition, Zhang et al. teach that compositions comprising potassium or amine salts of glyphosate and potassium salts of dicamba to prepare high-strength liquid compositions. In addition, in view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional herbicides set forth prima facie obvious subject matter.
Bhatte et al. was added to provide a motivation for the addition of or to teach side products of dicamba K. Miln et al. teach stable, single-phase pesticidal emulsifiable concentrates are provided which comprise (a) a pesticide mixture comprising a major amount of a water-insoluble pesticide and a minor amount of a water-soluble pesticidal salt; (b) a solvent system comprising (i) a major amount of an organic solvent comprising at least one non aqueous polar solvent; and (ii) a minor amount of water; and, optionally, (c) an emulsifying surfactant system enabling an oil in water emulsion to be formed when the concentrate formulation is diluted upon addition to water. Miln et al. teach one of the preferred herbicides is the potassium salt of dicamba. One of ordinary skill in the art would have been motivated to formulate a composition that contains a side produce of dicamba-K because Bhatti et al. teach a method of enhancing the yield of a plant comprising contacting the plant with an amount of dicamba, or a product of DMO-mediated metabolism of dicamba, effective to increase the yield of the plant relative to a plant of the same genotype grown under the same conditions but not contacted with the dicamba product. The product of DMO-mediated metabolism may be 3,6-DCSA, 3,5-DCSA or 3-CSA. Based on these teachings one of ordinary skill in the art would have been motivated to use 3,6-DCSA, which is 3,6-dichloro-hydroxybenzoic acid and 3,5-DCSA is 3,5-dichloro-2-hydroxybenzoic acid, that yields increased tolerance to oxidative stress and increases germination rate of seed. As such, one of ordinary skill in the art would have been motivated to use the side product of potassium K, with a reasonable expectation of success. The reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. While there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention.
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, 2, 5, 7, 8, 9, 10, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 5, 6, and 15-17 and 20-26 of copending Application No. 17/915,587 (‘587). Although the claims at issue are not identical, they are not patentably distinct from each other because each is directed to an aqueous composition comprising the potassium salt of dicamba, and an additive selected from the group consisting of a polyalkylene oxide block-copolymer of formula (I), a hyperbranched polycarbonate, and a solvent selected from C3-C6-lactone and N-C1-C15-alkyl pyrrolidone (claim 1, instant invention; claims 1, 2, 3, 15, 16, 20, 21, copending Application No. ‘587). Each claims regarding the polyalkylene oxide block-copolymer of formula, the ratio of (n=p)/m in formula I is 1:1 to 10:1 (claim 2, instant invention; claim 17, copending Application No. ‘587). Each claims the composition comprising glyphosate and/or glufosinate and/or pyroxasulfone (claim 5, instant application; claim 23, copending Application No. ‘587). Each claims the composition contains at least 22 wt.% of water (claim 8, instant invention; claim 1, copending Application No. ‘587). Each claims the concentration of the sum of all additives is from 1 to 35 wt.% based on the total weight of the composition (claim 9, instant invention, claim 22, copending Application No. ‘587). Each claims the composition further comprises at least one secondary component of dicamba selected from the group consisting of 3,5-dichloro-2-methoxybenzoic acid…and/or 3,5-dichloro-4-methoxybenzoic acid (claim 10, instant invention; claims 5 and 7, copending Application No. ‘587). Each claims the concentration of the secondary side product (secondary component) is at least 1 wt.% (claim 11, instant invention; claim 6, copending Application No. ‘587). For these reasons, one of ordinary skill in the art would conclude that the invention defined in the instant claims are obvious over the invention defined in the claims of copending application ‘587.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The examiner notes applicants request to hold the double patenting rejection in abeyance. The rejection of claims 1, 2, 5, 7, 8, 9, 10, and 11 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 2, 3, 5, 6, and 15-17 and 20-26 of copending Application No. 17/915,587 (‘587) is maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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, Ali Soroush can be reached at 571-272-9925. 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.
/ANDRIAE M HOLT/ Examiner, Art Unit 1614
/ALI SOROUSH/ Supervisory Patent Examiner, Art Unit 1614