DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant’s election without traverse of the species isobornyl acetate as a non-aqueous solvent, iodosulfuron as a sulfonylurea herbicide, calcium dodecyl benzene sulfonate and sorbitan hexaoleate as surfactants, sodium phosphate as an inorganic salt, and oil dispersion as a form in the reply filed on 17 September 2025, is acknowledged.
In the penultimate paragraph of the remarks filed on 17 September 2025, Applicant stated “it is not clear to us why the examiner requires an election of an inorganic salt. None of the claims require the presence of an inorganic salt”. Applicant is directed to instant claim 4, which recites “further comprising an inorganic salt” (bold added for emphasis).
Status of Claims
The preliminary amendment, filed on 21 October 2022, is acknowledged.
Claims 3-18 are amended.
Claims 1-18 are pending in the instant Office Action.
Claims 10-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, specifically the sulfonylurea herbicide, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 September 2025.
Claims 1-9 are under consideration in the instant Office Action, to the extent of the following elected species:
the solvent isobornyl acetate;
the sulfonylurea herbicide iodosulfuron;
the surfactants calcium dodecyl benzene sulfonate and sorbitan hexaoleate;
the inorganic salt sodium phosphate: and
the form oil dispersion.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent European Patent Application No. EP 20171375.7, filed on 24 April 2020, has been received.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 21 October 2022, 23 October 2024, and 22 November 2024, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 1-6 and 8-9 are objected to because of the following informalities:
Claims 1-6 and 8-9 recite both “the liquid composition” (e.g., line 7 of claim 1, line 3 of claim 2, etc.) and “the herbicidal composition” (e.g., line 1 of claim 8, line 1 of claim 9, etc.). While it is clear that both phrases are referring to “the liquid herbicidal composition” recited in instant claim 1, clarity would be improved if each claim referred to the composition with the same phrase – that is, “the liquid herbicidal composition”.
Claim 1 recites on line 3 “one or more sulfonylurea herbicides, provided that at least one sulfonylurea herbicide”. Claims 2-3, which depend from claim 1, recite “wherein at least one sulfonylurea herbicide” in lines 1-2 of each claim. The phrases should be amended to recite “wherein the at least one sulfonylurea herbicide” (bold added for emphasis).
Claim 1 also recites on line 5 “two or more surfactants”. However, claim 1 on lines 7, 9-10, and 11-14 recites “the total amount of surfactant”. For clarity purposes the claim should recite “the total amount of the two or more surfactants”. Similar amendments are recommended on claim 5.
Claim 3 recites “according to claims 1” in the first line. The phrase should instead read “according to claim 1” (bold added for emphasis).
Claim 4 recites “according to any one of claims 1” in the first line. The phrase should instead read “according to claim 1”.
Claim 7 recites “wherein the sulfonylurea” in line 2. This recitation is inconsistent with the recitations in claim 1 as described above, and the phrase should be amended to recite “the at least one sulfonylurea herbicide”.
The alternatives listed in claim 7 are acceptable the way Applicant recited - however, it appears the compounds all share the same core sulfonylurea moiety. The recitation would be clearer if Applicant used a Markush type of recitation such as “selected from the group consisting of iodosulfuron, halosulfuron,…and salts or esters thereof.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 5-7, and 9 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 “two or more surfactants” in line 5. However, in lines 7, 9-10, and 11-14 the claim recites “the total amount of surfactant”, which lacks antecedent basis. Claim 5 also lacks antecedent basis in reciting “the total amount of surfactant” in line 2. These rejections may be overcome by amending lines 7, 9-10, and 11-14 of claim 1 and line 2 of claim 5 to recite “the two or more surfactants”.
Claim 6 recites “the total amount of sulfonylurea herbicide” in line 2. There is insufficient antecedent basis for this limitation because claim 1, upon which claim 6 depends, recites “one or more sulfonylurea herbicides” and “at least one sulfonylurea herbicide” in line 3 and it is unclear which phrase claim 6 is referencing.
Claim 7 recites the limitation "the sulfonylurea" in line 2. There is insufficient antecedent basis for this limitation in the claim because claim 1, upon which claim 7 depends, recites “one or more sulfonylurea herbicides” and “at least one sulfonylurea herbicide” in line 3. This rejection may be overcome by amending claim 7 to recite “the one or more sulfonylurea herbicides”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites a broad recitation in lines 4 and 10-11 of section (i), line 6 of section (ii), lines 7-8 of section (iv), line 4 of section (v), lines 4 and 12 of section (vi), line 9-10 of section (ix), line 4 of section (xi), line 4 of section (xii), line 5 of section (xiii), and lines 4 and 6 of section (xiv), and the claim also recites a narrower range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. This rejection may be overcome by amending each instance to recite only one limitation.
Claim 9 recites a limitation followed by “preferably” or “more preferably” in lines 4 and 10-11 of section (i), line 6 of section (ii), lines 7-8 of section (iv), line 4 of section (v), lines 4 and 12 of section (vi), line 9-10 of section (ix), line 4 of section (xi), line 4 of section (xii), line 5 of section (xiii), and lines 4 and 6 of section (xiv). These phrases render the claim indefinite because, in each instance, it is unclear if the limitation preceding “preferably” or “more preferably” limits the claim and the following phrases are exemplary, or if the claim is intended to be limited by the phrases following “preferably” or “more preferably”. This rejection may be overcome by amending each instance to recite only one limitation.
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 1-3 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Krüger et al. (WIPO International Patent Publication No. WO 2000/025586 A1, published on 11 May 2000, provided by Applicant in the IDS filed on 21 October 2022, hereafter referred to as Krüger) in view of Goldsmith et al. (WIPO International Patent Publication No. WO 2017/220680 A1, published on 28 December 2017, provided by Applicant in the IDS filed on 21 October 2022, hereafter referred to as Goldsmith).
Krüger teaches a liquid herbicidal composition comprising a grass herbicide, a sulfonylurea herbicide, and one or more surfactants in a non-aqueous liquid (Abstract). The combination of a grass and sulfonylurea herbicide is taught to have the advantage that “they may contain the herbicidal active ingredients in high concentrations…[and] remain protected from decomposition over a longer period of time”, as well allowing combination with other additives for increasing biological activity “without problems” (pg. 4, para. 3). Krüger teaches that the compositions of their invention are “preferably suitable for the control of weeds in flooded paddy fields” (pg. 4, penultimate para.).
The concentration of sulfonylurea herbicides in example formulations F1-F10 ranges from 2.4-5.1% w/w of the composition. In formulation F6, the sulfonylurea herbicide azimsulfuron is present in the amount 0.6% w/w of the composition. In example formulation F2, three surfactants are present: ethoxylated tristyrylphenol sulfate (Class 12) at 13.3% of all surfactants, dodecylbenzene sulfonate (Class 2) at 26.7% of all surfactants, and oleyl polyglycol ether (Class 1) at 60% of all surfactants (pg. 6). The total amount of surfactants in example formulations F1-F10 ranges from 10-15% w/w of the composition.
Krüger does not teach the specific sulfonylurea herbicide iodosulfuron, the specific non-aqueous solvent isobornyl acetate, the ethoxylated sorbitan ester surfactant sorbitan hexaoleate, nor the form of the liquid composition. These deficiencies are offset by the teachings of Goldsmith.
Goldsmith teaches a liquid herbicidal composition comprising a non-aqueous solvent system, one or more sulfonylurea herbicides, and one or more inorganic lithium salt, as well as a method of using said salt to improve the chemical stabilization of a liquid herbicidal composition (Abstract). In one embodiment, the non-aqueous solvent system is taught to comprise isobornyl acetate (pg. 6, line 27, pg. 26, line 28, pg. 29, line 27, Examples OD1, OD6-10, OD16-18, and OD22-26). The sulfonylurea herbicide is taught, in some embodiments, to be iodosulfuron (pg. 17, lines 9-31, pg. 35, line 4, pg. 43, line 31 - pg. 45, line 9, claims 7 and 13) and/or its methyl derivative. The quantity of the sulfonylurea herbicide is taught to be 0.1-60% w/w of the composition and the lithium salt is taught to preferably be 0.1-20% w/w (pg. 14, lines 6-19 and pg. 24, lines 6-14).
Goldsmith further teaches that their composition may comprise “co-formulants such as surfactants”, which can be one or more species and may be cationic, anionic, or non-ionic (pg. 5, lines 20-22 and pg. 39, lines 5-7). In Examples 1-2 and 4-7, the surfactants are Atlas G1086, which is sorbitan hexaoleate and falls within Class 9 as recited in instant claim 1 and evidenced by para. [0258] in the instant specification, and Nansa EVM 70/2 E, which is calcium linear dodecyl benzene sulfonate and falls within Class 2 as recited in instant claim 1 and evidenced by para. [0165] of the instant specification. The quantity of surfactants in the composition is taught to be 1-60% w/w (pg. 40, lines 23-32). In Example 3, Soprophor BSU, a surfactant that falls within Class 11, is present in an amount of 50% w/w of all surfactants, Atlas G1086, a surfactant that falls within Class 9, is present in an amount of 35% w/w of all surfactants, and Nansa EVM 70/2 E, a surfactant that falls within Class 2, is present in an amount of 15% w/w of all surfactants.
In Examples 2 and 11, Goldsmith teaches that lithium salts are more effective than their sodium counterparts at stabilizing compositions comprising sulfonylurea herbicides. The anions in the compared salts of Example 2 are carbonate, chloride, and sulfate, and in Example 11 Goldsmith concludes that “[w]hile lithium carbonate and lithium phosphate salts can be used for the purpose of this invention, it is also envisioned that the invention can be worked with lithium salts other than [Li2CO3 and Li3PO4]” (pg. 63, lines 14-16). Finally, Goldsmith teaches that the composition may be formulated as an oil dispersion (pg. 5, line 8, pg. 7, lines 13-14, Examples 1-10, and claims 4-5).
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 quantities of sulfonylurea herbicide and surfactants present in the composition recited in instant claims 1-3 and 5-7. In each instance, the range recited in the instant application either significantly overlaps with or is encompassed by the ranges taught by Krüger and/or Goldsmith.
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 Goldsmith to selected iodosulfuron as the specific sulfonylurea herbicide use isobornyl acetate as a non-aqueous solvent, and use sorbitan hexaoleate as an additional surfactant in the liquid herbicidal composition taught by Krüger, and to formulate the composition taught by Krüger as an oil dispersion because using known techniques and prior art elements to improve a similar product in a known manner yields predictable results. Krüger teaches a liquid herbicidal composition comprising a grass herbicide, one or more sulfonylurea herbicides in a total amount of ~2-5% w/w, with individual sulfonyl herbicides comprising 0.6-5.1% w/w, and one or more surfactants in a non-aqueous liquid. The surfactants include ethoxylated tristyrylphenol sulfate, dodecylbenzene sulfonate, and oleyl polyglycol ether, among others, in amounts ranging from 10-15% w/w of the composition.
In view of the teachings of Goldsmith, one of ordinary skill would be motivated to try using iodosulfuron as the sulfonylurea herbicide because Goldsmith teaches it to be a preferred sulfonylurea herbicide for controlling “a range of annual and perennial broad-leaved weeds and grasses” in a variety of environments (pg. 1, lines 20-23 and Examples OD1-21, 32, 34, 65-70, etc.), which achieves a similar goal to the invention of Krüger. The ordinary artisan would further be motivated to use isobornyl acetate and sorbitan hexaoleate in the composition comprising iodosulfuron because Goldsmith teaches these components to enhance the chemical stability of the sulfonylurea herbicide. Finally, a person of ordinary skill would be motivated to formulate the composition as an oil dispersion because Krüger teaches their composition to be liquid, but not the form, and the teachings of Goldsmith provide missing information that would allow the ordinary artisan to produce a complete product that may be applied agriculturally. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1-3 and 5-9 in view of the teachings of Krüger and Goldsmith.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Goldsmith (WIPO International Patent Publication No. WO 2017/220680 A1, published on 28 December 2017, provided by Applicant in the IDS filed on 21 October 2022) in view of Krüger (WIPO International Patent Publication No. WO 2000/025586 A1, published on 11 May 2000, provided by Applicant in the IDS filed on 21 October 2022) as applied to claims 1-3 and 5-9 above, and further in view of Egan et al. (U.S. Patent No. 11,071,296 B2, priority to 21 December 2015, hereafter referred to as Egan).
Goldsmith and Krüger teach the above.
Goldsmith and Krüger do not teach the inorganic salt in their composition to be sodium phosphate. This deficiency is offset by the teachings of Egan.
Egan teaches liquid herbicidal compositions comprising a non-aqueous solvent system, one or more sulfonylurea herbicides, and one or more inorganic salts, as well as the stabilizing effect of said salts on the liquid herbicidal compositions (Abstract). In some embodiments, the sulfonylurea herbicide is iodosulfuron or its methyl counterpart (column 21, lines 59-63, column 22, line 18, column 29, lines 22-34, etc.), the non-aqueous solvent system is taught to include isobornyl acetate (column 4, line 41, column 18, line 49, and Oil Dispersion examples OD1-36), and the surfactants may include Atlas G1086, sorbitan hexaoleate (Examples OD 70-76). Preferred inorganic salts in the liquid herbicidal composition of Egan are taught to be sodium phosphate and sodium carbonate (column 12, lines 61-63). As taught by Egan, “sodium phosphate” can include the various forms, both anhydrous and hydrated, and when used by Egan the term includes monosodium phosphate (anhydrous, monohydrate, or dihydrate), disodium phosphate (anhydrous, dihydrate, heptahydrate, octahydrate, or dodecahydrate), trisodium phosphate (anhydrous - hexagonal, anhydrous - cubic, hemihydrate, hexahydrate, octahydrate, or dodecahydrate), monosodium diphosphate (anhydrous), disodium diphosphate (anhydrous or hexahydrate), trisodium diphosphate (anhydrous, hydrate, or nonahydrate), tetrasodium phosphate (anhydrous), tetrasodium diphosphate (decahydrate), sodium triphosphate, and sodium tetraphosphate (column 13, lines 1-20). Surprisingly, Egan found that “trisodium phosphate and tripotassium phosphate provide for a sulfonylurea with superior chemical stability than many of the other salts mentioned herein, particularly with respect to those sulfonylureas that are more prone to hydrolysis in liquid compositions” (column 13, lines 25-29).
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 Egan to try using sodium phosphate as the inorganic salt in the liquid herbicidal composition rendered obvious by the teachings of Krüger and Goldsmith because simple substitution of a known element for another in a similar product to yield a known benefit produces predictable results. The teachings of Krüger and Goldsmith rendered obvious a liquid herbicidal composition comprising isobornyl acetate as a non-aqueous solvent, iodosulfuron as a sulfonylurea herbicide, calcium dodecyl benzene sulfonate and sorbitan hexaoleate as surfactants, and oil dispersion as a form, in quantities that either overlap with or encompass the ranges that are recited in the instant application. In view of the teachings of Egan, the ordinary artisan would be motivated to use sodium phosphate as an inorganic salt in the composition above because Egan teaches sodium phosphate to provide “superior chemical stability” to sulfonylurea herbicides, which would be desirable to one of ordinary skill. While Goldsmith teaches the inclusion of inorganic salts and teaches that lithium salts are superior to sodium salts, they do not test sodium phosphate in their compositions. A person of ordinary skill would be motivated to try sodium phosphate in the above composition in an attempt to improve the chemical stability of the herbicidal compounds contained within. As a result, there is a reasonable expectation of success in arriving at the invention of instant claim 4 in view of the teachings of Krüger and Goldsmith and further in view of the teachings of Egan.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619