DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Status of Claims
The amendment, filed on 30 April 2026, is acknowledged.
Claims 1-9 have been amended.
Claims 1-9 are pending and under consideration in the instant Office Action, to the extent of the following previously 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.
Objections Withdrawn
Objections to Claims
Applicant’s amendments to claims 1-6 and 8-9 have overcome the objections to claims 2, 4-6, and 8-9 set forth in the Office Action mailed on 5 November 2025. Accordingly, the relevant objections are withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejections of claims 1, 5-7, and 9 under 35 U.S.C. § 112 are withdrawn in view of Applicant’s amendments to the claims.
Rejections pursuant to 35 U.S.C. § 103
The rejections of claims 1-9 under 35 U.S.C. § 103 are withdrawn in view of Applicants argument and the new grounds of rejection below.
Response to Arguments
Applicant’s arguments, see para. 2 of pg. 16 to the antepenultimate para. of pg. 19 of the remarks filed on 30 April 2026, with respect to the rejection of claims 1-3 and 5-9 under 35 U.S.C. § 013 over the teachings of Krüger et al. (WO 2000/025586 A1) in view of Goldsmith et al. (WO 2017/220680 A1) have been fully considered and are persuasive due to the misclassification of oleyl polyglycol ether as an alkyl end-capped fatty alcohol alkoxylate rather than being appropriately classified as a fatty alcohol alkoxylate. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of a different interpretation of the previously applied reference Goldsmith et al. (vide infra).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 13 March 2026, was filed after the mailing date of the non-final Office action on 5 November 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Maintained Objections
Claims
Claims 1 and 3 are objected to because of the following informalities:
Claim 1 recites “[a] liquid herbicidal composition” in line 1 and “the liquid composition” in lines 4 and 11. While it is clear that the latter phrase is referring to the “liquid herbicidal composition” recited in line 1, clarity would be improved if each instance referred to the composition with the same phrase – that is, “the liquid herbicidal composition”.
Claim 3 recites “according to claims 1” in the first line. The phrase should instead read “according to claim 1” (bold added for emphasis).
Appropriate correction is required.
Response to Remarks
The Applicant’s remarks, filed on 30 April 2026, regarding the objections to the claims are acknowledged.
Applicant’s amendment to claim 1 did not resolve the objectionable phrase “the liquid composition” and remains objected. To overcome this objection, both lines 4 and 11 should be amended to recite “the liquid herbicidal composition” instead of “the liquid composition” (bold added for emphasis).
Applicant’s amendment to claim 3 did not resolve the issue with pluralism in line 1 and the claim still recites “according to claims 1”. To overcome this objection, Applicant should amend line 1 of claim 3 to recite “according to claim 1”.
New Grounds of Objection
Claim Objections
Claim 9 is objected to because of the following informalities:
Claim 9 has been amended to recite in line 8 of subsection (ix) on pg. 8 “10 to 40 ( such that10 ≤ w+x+y+z ≤ 40”. The phrase should be amended to recite ”10 to 40 such that 10 ≤ w+x+y+z ≤ 40”.
Appropriate correction is required.
New Grounds of Rejection
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over 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).
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). Goldsmith teaches that their invention is “concerned with improving chemical stability of a sulfonylurea herbicide in liquid composition comprising a non-aqueous solvent system” (pg. 41-42, 4.9 Chemical stability) to address the recognized instability of sulfonylurea herbicides (pg. 1, lines 20-30 and pg. 4, lines 22-25). 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 (pg. 16, lines 6-19), which compasses the ranges recited in instant claims 2-3 and 6-7.
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 the embodiments taught 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 all surfactants in the composition is taught to be 1-60% w/w and when more than one surfactant is present, quantities of each surfactant fall within this total such as 10-30% w/w or 2-40% w/w (pg. 40, line 23 - pg. 41, line 2), which encompasses the ranges recited in instant claims 1 and 5. The invention is further taught to comprise at least one inorganic salt, which in one embodiment is sodium phosphate (claim 17). 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 Goldsmith.
Also provided in MPEP § 2144.05 are guidelines regarding optimization within a range. Quoting from In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Further, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions" (bold added for emphasis). In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929).
Goldsmith teaches that the total quantity of surfactants in their composition is 1-60% w/w and that each surfactant may be present in an amount that falls within this range such that the sum of all surfactants is within 1-60% w/w. Example OD 100 (Table 10-2, pg. 61-62) is a composition formulated as an oil dispersion comprising the methyl derivative of the elected sulfonylurea herbicide iodosulfuron, the elected surfactants calcium dodecyl benzene sulfonate and sorbitan hexaoleate, and the elected solvent isobornyl acetate. Calcium dodecyl benzene sulfonate and sorbitan hexaoleate are the only surfactants present and are in amounts of 40% w/w and 60% w/w of all surfactants, respectively. It would be within the capabilities of a person of ordinary skill in the art to optimize the quantities of calcium dodecyl benzene sulfonate and sorbitan hexaoleate, using the Example OD 100 as a starting point, to arrive at the ratio of surfactants as recited in instant claim 1. Further, the ordinary artisan would be motivated to optimize the quantities and ratios of surfactants because Goldsmith teaches that sulfonylurea herbicides are unstable and, as quoted above, it is a “normal desire of scientists or artisans to improve upon what is already generally known”. In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Goldsmith teaches a weight range of surfactants that encompasses the claimed weight ranges and one of ordinary skill would have “motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Id. at 1382. Therefore, the weight range and proportion of elected surfactants would be obvious in view of the teachings of Goldsmith.
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Addressing the issue of obviousness, the Supreme Court noted that analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007)). The Court further emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton” (Id. at 1742).
The only difference between Goldsmith and the instant claims is that Goldsmith does not teach the specific combination of components as claimed in a single embodiment (e.g., one oil dispersion comprising isobornyl acetate, iodosulfuron, calcium dodecyl benzenesulfonate, sorbitan hexaoleate, and sodium phosphate), or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Goldsmith, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP § 2141.I. Consistent with this reasoning, it would have been prima facie obvious to a person having ordinary skill in the art, prior to the effective filing date of the instant application, to have selected various combinations of the various disclosed ingredients from within the teachings of Goldsmith, to arrive at an invention such as the one being sought.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Beestman et al. (U.S. Patent Application No. US 2009/0131257 A1, published on 21 May 2009) teaches liquid-phase herbicidal compositions comprising one or more sulfonylurea herbicides, one or more other biologically active agents, and other components including surfactants (Abstract and para. [0126]). Preferred surfactants are taught to include the elected species calcium dodecyl benzenesulfonate and sorbitol hexaoleate (para. [0127]). Beestman et al. teach that combining surfactants can help with “optimizing the [hydrophilic-lipophilic balance] value of the surfactant to obtain the highest quality emulsion”, which typically leads to “optimal herbicidal performance” (para. [0127]).
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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