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 .
DETAILED ACTION
Status of Claims
The amendments and arguments filed on 03/18/2026 are acknowledged and have been fully considered. Claims 1-4 and 6-18 are now pending. Claim 5 is canceled; claims 1, 7-8, 11-12, 14-15, 17 are amended; claims 6, 13, 16, and 18 are withdrawn.
Claims 1-4, 7-12, 14-15, and 17 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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, and constitute the complete set presently being applied to the instant application.
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.
Claims 1-4, 7-12, 14-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20110065579 A1 (Sievernich, 2011) in view WO 2016186198 A1 (Ishibashi, 2016; machine translation provided by PE2E via FIT) and US PGPUB 20030148887 A1 (Bratz, 2003).
In regards to claims 1, 15, and 17, Sievernich teaches various aqueous herbicidal compositions (see Sievernich, abstract, paragraph 0580). Specifically, composition 629 (from the table following paragraph 0506 of Sievernich) teaches a composition comprising metribuzin and flumioxazin along with an herbicide B, which is pyroxasulfone (see Sievernich, paragraph 0507). Further, composition 649 teaches a composition comprising flumioxazin, metribuzin, dicamba and herbicide B (see table following paragraph 0506 of Sievernich). The composition is taught to comprises a surfactant such as napthalenesulfonic acids, specifically Morwet® and condensates of sulfonated naphthalene and its derivatives with formaldehyde (i.e., sodium alkyl naphthalene sulfonate condensate) (see Sievernich, paragraph 0583). It is also taught that the composition comprises antifreeze agents, such as glycerol (see Sievernich, paragraphs 0581 and 0587). Further, Sievernich teaches that the composition comprises propylene glycol, glycerol, and silicone emulsion (see Sievernich, paragraphs 0587 and 0585).
In regards to claims 2-3, the composition comprises a thickener, such as Veegum® and xanthan gum (see Sievernich, paragraph 0584). Veegum® is taught as a magnesium aluminum silicate in the composition (see instant specification as filed, paragraph 0059). It is also taught that the composition comprises antifoams and antifreeze agents, such as glycerol (see Sievernich, paragraphs 0581 and 0587).
In regards to claims 7-8, Sievernich further teaches that the w/w ratio of herbicide B to herbicide C1 (flumioxazin) is from 450:1-1:450 and the ratio of B to C2 (metribuzin) is 450:1-1:450 as well. The ratios of the art overlap with the ranges of the instant claims. For example, a w/w ratio of B:C1 like 7:5 and a ratio of B:C2 like 7:16 would be within the teachings of the art, while also overlapping with the ranges of the instant claims. Further this would still be within the teachings of a w/w ratio of B:C as taught in the same table of Sievernich. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Sievernich is silent on the amount of the sodium alkyl naphthalene sulfonate condensate, propylene glycol, glycerin, silicone emulsion, the magnesium aluminum silicate, and xanthan gum in the composition as well as teaching that magnesium aluminum silicate and xanthan gum are used together in the composition.
In regards to claims 1 and 7, Ishibashi teaches an aqueous herbicidal composition comprising a sulfonate (see Ishibashi, page 2, paragraph 3). The composition is taught to comprise herbicides such as metribuzin (see Ishibashi, page 4, paragraph 4), flumioxazin (see Ishibashi, paragraph 7), and pyroxasulfone (see Ishibashi, page 6, paragraph 2). The composition further comprises sodium salt of alkylnaphthelene acid formalin condensate (Morwet® D425) (see Ishibashi, page 16, comparative formulation example 1). Ishibashi teaches that alkyl aryl sulfonate formalin condensate or aryl sulfonate formalin condensate (i.e., the Morwet® D425) is a surfactant in aqueous herbicidal composition (see Ishibashi, page 10, paragraph 2) that is used in an amount of 0.01 to 20 parts by weight, preferably 0.1 to 5 parts by weight (see Ishibashi, page 10, paragraph 4). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Further, Ishibashi teaches an aqueous herbicidal composition comprising a sulfonate (see Ishibashi, page 2, paragraph 3).
In regards to claims 4 and 9-10, the composition is taught to comprise 0.5 parts by weight of Veegum® and 0.15 parts by weight of xanthan gum out of 100 parts by weight (see Ishibashi, page 16, comparative formulation example 2). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 11-12, Ishibashi teaches that the composition comprises benzisothiazolin-3-one (i.e., Proxel® GXL) in an amount of 0.1 parts by weight (see Ishibashi, page 16, comparative formulation example 2). Proxel® GXL is taught as the 19.3% 1, 2-benzisothiazolin-3-one used in the instant specification (see paragraph 0058 of instant specification as filed). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 15, specifically to the amount of 19.3% 1, 2-benzisothiazolin-3-one, “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” One with ordinary skill in the art would reasonably expect that a composition comprising 19.3% 1, 2-benzisothiazolin-3-one in the amount of about 0.2% by weight plus or minus 10% (i.e., 0.18-0.22% by weight) (as the definition of about is defined in the instant specification, paragraph 0048) would have the same properties as a composition comprising 19.3% 1, 2-benzisothiazolin-3-one in the amount of 0.1% by weight.
Bratz teaches an aqueous composition (see Bratz, paragraph 0076) comprising metribuzin, flumioxazin (see Bratz, paragraph 0098), Veegum®, and xanthan gum (see Bratz, paragraph 0053), bactericides such as Proxel® (see Bratz, paragraph 0055), antifreeze agents like propylene glycol and glycerin (see Bratz, paragraph 0056), and antifoaming agents like silicone emulsion (i.e., Silikon® SRE) (see Bratz, paragraph 0054).
In regards to claims 1, 11-12 and 14-15, it is taught that the antifoam agents are used in an amount of 0.1 to 5% by weight, bactericides are taught to be used in an amount of 0.1 to 1% by weight, and the antifreeze agents are used in an amount of 1.0 to 20% by weight (see Bratz, paragraph 0044). Further, in the examples, such as Example 4 and 5, the amount of silicon emulsion (i.e., Silikon®SRE) used is about 0.3% by weight (40g in a total of 11369g for example 4) (see Bratz, example 4, paragraphs 0139-0140). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 1-4, 7-12, 14-15, and 17, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Sievernich with Ishibashi and Bratz to formulate a composition as instantly claimed as both references teach aqueous herbicidal compositions comprising similar compounds. Further, Sievernich teaches that the composition comprises compounds like Veegum®, xanthan gum, and Morwet® surfactants but is silent on the amounts used and Ishibashi gives one with ordinary skill in the art an idea of what amounts these compounds are used in a similar composition. Similarly, Sievernich teaches that the composition comprises compounds like propylene glycol, glycerol, and silicone emulsion but is silent on the amounts used and Bratz gives one with ordinary skill in the art an idea of what amounts these compounds are used in a similar composition. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of Sievernich with the amounts of Ishibashi and Bratz according to the known method of making aqueous herbicidal compositions (see Sievernich, paragraphs 0596-0603) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Further in regards to claim 14, specifically to that amount of xanthan gum “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” One with ordinary skill in the art would reasonably expect that a composition comprising xanthan gum in an amount of about 0.13% by weight plus or minus 10% (i.e., 0.117-0.143% by weight) (as the definition of about is defined in the instant specification, paragraph 0048) would have the same properties as a composition comprising xanthan gum in an amount of 0.15% by weight.
Response to Arguments
Applicant's arguments filed 03/18/2026 have been fully considered but they are not persuasive.
In regards to applicant’s arguments of unexpected results, applicant is reminded that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, the data presented by applicant is not enough to establish unexpected results. Applicant presents the data of tables 7 and 8 in order to show that there are unexpected results, however the data is drawn to very specific amounts of the sodium alkyl naphthalene sulfonate condensate and glycerol, while the claims, particularly independent claim 1, does not give any guidance to the amounts of these compounds or of any of the other required compounds. It is not clear from the data presented that the unexpected results that are discussed by applicant would be present in any and all amounts of the compounds (e.g., would 1% of the sodium alkyl naphthalene sulfonate condensate be enough to exhibit these unexpected results?). This is of particular importance as glycerol is only used in an amount of 10% by weight of the composition but the claim recites a broader range of from about 8 to about 12% by weight. A similar issue with sodium alkyl naphthalene sulfonate condensate, where claim 1 recites an amount of from 4 to about 6% by weight of the composition but the successful examples as pointed out by applicant have use sodium alkyl naphthalene sulfonate condensate 4 or 5% by weight of the compound. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). See In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974) and In re Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433 (CCPA 1971) for examples of cases where indirect comparative testing was found sufficient to rebut a prima facie case of obviousness. While it is appreciated that the amendment adds the amounts of the compounds to the independent claim, it is unfortunately not enough to establish unexpected results. Another issue is that example Z is taught to be an example of a successful composition (see instant specification as filed, paragraph 0090) however it does use an amount of ligan, alkali, reaction product with formaldehyde and sodium bisulfite, contrary to the applicant’s arguments. As such, the data is not commensurate in scope with the claims and is not enough to overcome the rejection.
In regards to applicant’s arguments that the Morwet® D425 and the polyoxyethylene alkyl sulfates are not taught to provide superior stability in the art, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
For these reasons, the obviousness rejections of record are maintained.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./ Examiner, Art Unit 1611
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