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 .
Applicant’s election without traverse of Group I, claims 1-3, in the reply filed on 09/17/2025 is acknowledged.
Applicant’s election without traverse of compound 1.68 (Icafolin-Methyl) for the species of formula(I), in the reply filed on 09/17/2025 is acknowledged.
Claims 4-10 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/17/2025.
Claim Objections
Claim 1 is objected to because of the following informalities: “a” is missing prior to “substituted isoxazolincarboxamide” at the beginning of line 2. Claim 1 is also objected to because “an” is missing between “or” and “agrochemical” at the end of line 2. Claim 1 is also objected to because “substituted” is misspelled as “substitued” in the descriptions of R3, R4, R5, R6, R7, R8, X3, and X5. Claim 1 is also objected to because “atom” is misspelled as “atoam”. The claim also recites “whereas the arrow” and should recite “wherein the arrow”. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: “the” is missing following “wherein” in line 2. Claim 2 is also objected to because “Z means…”, “Z-4a means…”, and “Z-8a means…” should read “Z represents…”, “Z-4a represents…”, and “Z-8a represents…”, respectively. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claim 3 is 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 3 recites the application rates are “adapted to be” the claimed application rate range, and it is unclear how the compositions are to be adapted to be between the claimed ranges. For purposes of examination, the claim will be interpreted as simply “wherein the application rates… are between…”
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 3 recites the broad recitation “between 0.1 and 1000 g per ha,” and the claim also recites “optionally between 0.1 and 10 g per ha” which is the narrower statement of the range/limitation.
Claim 3 also recites the broad recitation “optionally between 1 and 100 g per ha,” and the claim also recites “optionally between 10 and 200 g per ha” which is the narrower statement of the range/limitation.
The claim(s) are 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.
Claim Rejections - 35 USC § 103
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.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Peters et al (WO 2018228985 A1, cited on IDS dated 11/29/2022).
Peters et al teaches herbicidal compositions comprising substituted isoxazolincarboxamides of formula I.27:
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160
334
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wherein Z, W, and R4 are defined in Table 2.1 (pg 94). From Table 2.1, 2.1-2 defines the group:
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55
155
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(Table 2.1). Z is a fully saturated or partially saturated furan ring represented by:
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151
162
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wherein Z-1 comprises the structure:
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106
99
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(pp 5, 12, claims 1, 6). The arrow represents a bond to the group C=W (pg 2). Stereoisomers of formula (I) are present, and formula (I) relates to all stereoisomers and mixtures thereof (pp. 10-11). Safeners are used in combination with the compounds of formula (I) (pp. 31, 41, 43, claim 16). Particularly preferred safeners are cloquintocet-mexyl (pg 40, claim 17). The application rate can vary between 0.001 and 1.0 kg/ha, depending on external conditions such as temperature, humidity, the type of herbicide used, etc. (pg 41).
Regarding the substituted isoxazolincarboxamide of formula (I) of claims 1 and 2, it would have been obvious to formulate formula (I) of Peters et al comprising Formula I.27 in combination with the 2.1-2 group, which appears to read on the elected species of formula (I) as instantly claimed.
Further, it appears that the Z-1 group reads on the elected Z group as instantly claimed. Even if not, it would have been obvious to formulate the Z group as taught by Peters et al, which appears to include the instantly claimed Z group.
Regarding cloquintocet-mexyl of claims 1 and 2, where Peters et al teach safeners are used in combination with the compounds of formula (I), it would have been obvious to include cloquintocet-mexyl, a preferred safener as taught by Peters et al.
Regarding claim 3, the examiner notes that the claimed application rate is simply an intended use limitation of the combination, and where the compositions made obvious above are herbicidal compositions, the compositions appear to be capable of being applied at any rate. Nevertheless, it would have been obvious to apply the composition made obvious above at a rate between 0.001 and 1.0 kg/ha, or between 1 and 1000 g/ha, as taught by Peters et al, falling within the claimed range. Further, where the composition can be applied from between 0.001 and 1.0 kg/ha and cloquintocet-mexyl is made obvious above, it would have been well within the relative skills of the skilled artisan to determine the optimal application rate of the preferred safener in order to achieve desired plant protection properties for particular plants, applications, etc. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144(II)(A).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Peters et al (WO 2018228985 A1, cited on IDS dated 11/29/2022), as applied to claim 1 above, and further in view of Almsick et al (US 20150264933 A1).
Peters et al are discussed above, and while the application rates of claim 3 are intended use for the reasons discussed above, if for the sake of argument the application rates are interpreted to imply a particular ratio of herbicide to safener in the combination, then the following applies.
Almsick et al teach herbicidal compositions against harmful plants in crops of useful plants, where it was known to include a safener in combination with the herbicide, such as cloquintocet-mexyl, in order to reduce the phytotoxic effect of herbicides on crop plants (abs, ¶¶ 16, 117). Herbicide-safener combinations are particularly preferred (¶ 116). The application rate of safeners is usually from 1-500 g per hectare, preferably 2 to 400 g per hectare, and the application rate of herbicides are is usually from 1-500 g per hectare (¶ 115).
While the application rates of the herbicide and safener of instant claim 3 are an intended use limitation of the combination for the reasons discussed above, if the application rates are interpreted to imply a ratio of herbicide to safener in the combination instantly claimed, it would have been obvious to use known application rates for cloquintocet-mexyl used in combination with herbicides, such as from 1-500 g per ha, as taught by Almsick et al.
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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/000,345 (reference application), hereinafter ‘345, in view of Peters et al (WO 2018228985 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘345 disclose a combination comprising the same compounds of formula (I) in combination with cyprosulfamide (safener) (claims 1-2). The application rate of formula (I) is between 0.1 and 1000 g per ha, and the application rate of cyprosulfamide is between 1 and 1000 g per ha (claims 11-14).
The claims of ‘345 do not disclose cloquintocet-mexyl.
Peters et al are discussed above and further teach preferred safeners include cyprosulfamide, cloquintocet-mexyl, etc. (pg 40, claim 17).
It would have been obvious to substitute cloquintocet-mexyl for cyprosulfamide, where Peters et al teaches both are preferred safeners used for combinations of formula (I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/000,368 (reference application), hereinafter ‘368, in view of Peters et al (WO 2018228985 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘368 disclose a combination comprising the same compound of formula (I) in combination with isoxadifen-ethyl (safener) (claims 1-2). The application rate of formula (I) is between 0.1 and 1000 g per ha, and the application rate of isoxadifen-ethyl is between 1 and 1000 g per ha (claims 11-14).
The claims of ‘368 do not disclose cloquintocet-mexyl.
Peters et al are discussed above and further teach preferred safeners include isoxadifen-ethyl, cloquintocet-mexyl, etc. (pg 40, claim 17).
It would have been obvious to substitute cloquintocet-mexyl for isoxadifen-ethyl, where Peters et al teaches both are preferred safeners used for combinations of formula (I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/000,223 (reference application), hereinafter ‘223, in view of Peters et al (WO 2018228985 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘223 disclose a combination comprising the same compound of formula (I) in combination with furilazole (safener) (claims 1-2). The application rate of formula (I) is between 0.1 and 1000 g per ha, and the application rate of furilazole is between 1 and 1000 g per ha (claims 11-14).
The claims of ‘223 do not disclose cloquintocet-mexyl.
Peters et al are discussed above and teach other suitable safeners include furilazole (pg 34).
It would have been obvious to substitute cloquintocet-mexyl for furilazole, where Peters et al teaches both are safeners and cloquintocet-mexyl is a preferred safener for use in combinations of formula (I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/000,370 (reference application), hereinafter ‘370, in view of Peters et al (WO 2018228985 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘370 disclose a combination comprising the same compound of formula (I) in combination with mefenpyr-diethyl (safener) (claims 1-2). The application rate of formula (I) is between 0.1 and 1000 g per ha, and the application rate of mefenpyr-diethyl is between 1 and 1000 g per ha (claim 3).
The claims of ‘370 do not disclose cloquintocet-mexyl.
Peters et al are discussed above and further teach preferred safeners include mefenpyr-diethyl, cloquintocet-mexyl, etc. (pg 40, claim 17).
It would have been obvious to substitute cloquintocet-mexyl for mefenpyr-diethyl, where Peters et al teaches both are preferred safeners used for combinations of formula (I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/000,365 (reference application), hereinafter ‘365, in view of Peters et al (WO 2018228985 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘365 disclose a combination comprising the same compound of formula (I) in combination with benoxacor (safener) (claims 1-2). The application rate of formula (I) is between 0.1 and 1000 g per ha, and the application rate of benoxacor is between 1 and 1000 g per ha (claims 11-14).
The claims of ‘365 do not disclose cloquintocet-mexyl.
Peters et al are discussed above and teach other suitable safeners include benoxacor (pg 34).
It would have been obvious to substitute cloquintocet-mexyl for benoxacor, where Peters et al teaches both are safeners and cloquintocet-mexyl is a preferred safener for use in combinations of formula (I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/000,361 (reference application), hereinafter ‘361, in view of Peters et al (WO 2018228985 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘361 disclose a combination comprising the same compound of formula (I) in combination with metcamifen (safener) (claims 1-2). The application rate of formula (I) is between 0.1 and 1000 g per ha, and the application rate of metcamifen is between 1 and 1000 g per ha (claims 11-14).
The claims of ‘361 do not disclose cloquintocet-mexyl.
Peters et al are discussed above.
It would have been obvious to substitute cloquintocet-mexyl for metcamifen, where Peters et al teaches cloquintocet-mexyl is a preferred safener for use in combinations of formula (I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,597,724 B2, hereinafter ‘724, in view of Peters et al (WO 2018228985 A1, cited on IDS dated 11/29/2022) and Almsick et al (US 20150264933 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘724 disclose a combination comprising the same compound of formula (I) and a safener, including cloquintocet-mexyl (claims 1, 17).
The claims of ‘724 do not disclose the application rates of instant claim 3.
Peters et al and Almsick et al are discussed above.
The application rates of instant claim 3 are simply an intended use limitation of the combination for the same reasons discussed above. Nevertheless, it would have been obvious to apply the composition made obvious above at a rate between 0.001 and 1.0 kg/ha, or between 1 and 1000 g/ha, as taught by Peters et al, falling within the claimed range. Further, where the composition can be applied from between 0.001 and 1.0 kg/ha and cloquintocet-mexyl is made obvious above, it would have been well within the relative skills of the skilled artisan to determine the optimal application rate for the same reasons discussed above.
While the application rates of the herbicide and safener of instant claim 3 are an intended use limitation of the combination, if the application rates imply a ratio of herbicide to safener in the combination instantly claimed, it would have been obvious to use known application rates for cloquintocet-mexyl used in combination with herbicides, such as from 1-500 g per ha, as taught by Almsick et al.
Claims 1-3 rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,319,664 B2, hereinafter ‘664, in view of Peters et al (WO 2018228985 A1, cited on IDS dated 11/29/2022) and Almsick et al (US 20150264933 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘664 disclose a combination comprising the same compound of formula (I) and a safener, including cloquintocet-mexyl (claims 1, 9).
The claims of ‘664 do not disclose the application rates of instant claim 3.
Peters et al and Almsick et al are discussed above.
The application rates of instant claim 3 are simply an intended use limitation of the combination for the same reasons discussed above. Nevertheless, it would have been obvious to apply the composition made obvious above at a rate between 0.001 and 1.0 kg/ha, or between 1 and 1000 g/ha, as taught by Peters et al, falling within the claimed range. Further, where the composition can be applied from between 0.001 and 1.0 kg/ha and cloquintocet-mexyl is made obvious above, it would have been well within the relative skills of the skilled artisan to determine the optimal application rate for the same reasons discussed above.
While the application rates of the herbicide and safener of instant claim 3 are an intended use limitation of the combination, if the application rates imply a ratio of herbicide to safener in the combination instantly claimed, it would have been obvious to use known application rates for cloquintocet-mexyl used in combination with herbicides, such as from 1-500 g per ha, as taught by Almsick et al.
Claims 1-3 rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,613,522 B2, hereinafter ‘522, in view of Peters et al (WO 2018228985 A1, cited on IDS dated 11/29/2022) and Almsick et al (US 20150264933 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘522 disclose a combination comprising a formula (I) overlapping the instantly claimed formula (I) and a safener, including cloquintocet-mexyl (claims 1, 6).
The claims of ‘522 do not disclose the application rates of instant claim 3.
Peters et al and Almsick et al are discussed above.
The application rates of instant claim 3 are simply an intended use limitation of the combination for the same reasons discussed above. Nevertheless, it would have been obvious to apply the composition made obvious above at a rate between 0.001 and 1.0 kg/ha, or between 1 and 1000 g/ha, as taught by Peters et al, falling within the claimed range. Further, where the composition can be applied from between 0.001 and 1.0 kg/ha and cloquintocet-mexyl is made obvious above, it would have been well within the relative skills of the skilled artisan to determine the optimal application rate for the same reasons discussed above.
While the application rates of the herbicide and safener of instant claim 3 are an intended use limitation of the combination, if the application rates imply a ratio of herbicide to safener in the combination instantly claimed, it would have been obvious to use known application rates for cloquintocet-mexyl used in combination with herbicides, such as from 1-500 g per ha, as taught by Almsick et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA A ATKINSON whose telephone number is (571)270-0877. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM + Flex.
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/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/MARIANNE C SEIDEL/Primary Examiner, Art Unit 1600