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 .
Applicants’ arguments, filed 11/26/2025, have been fully considered. Rejections and/or objections not reiterated from previous office action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103 – Maintained
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.
1) Claims 1-4 and 6-16 stand rejected under 35 U.S.C. 103 as being unpatentable over Yerkes et al. (WO 2014/018398 A1, publication date 01/30/2014) in view of Webb (Webb, D., Weed Management Handbook, 2002, p. 171, 178-9).
Regarding instant claims 1-4, 7-9, and 12-14 Yerkes discloses a method for preventing the emergence of vegetation (i.e., applied pre-emergence of undesirable vegetation) by applying a composition comprising pendimethalin to water, such as water on a rice paddy [p. 5, line 5], at a rate of 140-1680 g ai/ha (i.e., 0.014-1.68 kg ai/ha) [p. 24, lines 20-24]. Yerkes also discloses the composition may be applied post emergently to the crop [p. 5, lines 8-9]. In one set of tests, Yerkes discloses rice seedlings at the second or third leaf stage were transplanted 4 days prior to herbicide application [p. 46, line 9-11]. The herbicide was applied into the aqueous layer of the paddy [p. 48, lines 5-6]. The specific herbicide compositions comprise pendimethalin, supplied as suspension concentrate (SC) [p. 46, lines 22-23], and was used to control ECHG [p. 48-49, Table 11]. ECHG being Echinochloa crusgalli (L.) (i.e., limitation of instant claims 12-14) [p. 45, line 9].
Yerkes does not disclose a microcapsule or capsule suspension formulation of pendimethalin.
Webb teaches that herbicidal formulations that are less toxic and safer to handle include microcapsules (CS; i.e., capsule suspensions) [p. 178, last paragraph and p. 179, second paragraph]
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have modified the methods disclosed by Yerkes to formulate the pendimethalin as a microcapsule suspension to achieve the improved safety disclosed by Webb. One would have been motivated to, and had an expectation of success in, applying a microencapsulated suspension of pendimethalin because Webb discloses was a known herbicidal formulation. Furthermore, Yerkes appears to teach applying the herbicide pre-emergence of the undesirable vegetation and post emergence of the desirable vegetation (i.e., rice). This can be seen in the seen the tests cited above, wherein the composition is applied to recently transplanted rice. Additionally, one of ordinary skill in the art would have appreciated that a composition to prevent the emergence of vegetation would best be applied pre-emergence of the undesirable vegetation and post emergence of the desirable vegetation (i.e., rice). One would have had an expectation of success in applying the composition post emergently to the crop because Yerkes discloses it as an option.
In the present case both the instantly claimed ranges for application rate (instant claim 8) and leaf growth stage (instant claim 7; 0.1-10kg ai/ha and 2-leaf to 6-leaf growth stage, respectively) overlap with the ranges of the prior art. Therefore, a prima facie case of obviousness exists for both because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
A prima facie case of obviousness also exists for the instantly claimed range of applying pendimethalin 5-15 days after the rice has been transplanted because “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”. See MPEP 2144.05 I.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have to have applied an herbicidally effective amount of microcapsule pendimethalin as a capsule suspension to the water of a rice paddy pre-emergence of undesirable vegetation but post emergence of rice (i.e., after germination). Wherein the undesirable vegetation is being Echinochloa crusgalli (ECHG).
Regarding instant claim 6, Yerkes discloses the composition may be used in water-seeded and transplanted rice [p. 12, line 20].
Regarding instant claim 10 and 11, Yerkes discloses the composition may be applied to weeds tolerant or resistant to acetolactate synthase inhibitors [p. 5, lines 31-32].
Regarding instant claim 15 and 16, Yerkes discloses "[s]ome of the herbicides that can be employed in conjunction with the compositions and methods described herein include, but are not limited to: … bromobutide" [p. 27, lines 11-12 and 23]. Yerkes also discloses that the composition may be employed in combination with one or more herbicide safeners, such as … benoxacor [p. 30, lines 28-29]. Given the disclosure of each component individually, it would have been prima facie obvious to a person having ordinary skill in the art at a time prior to the filing of the present patent application and following the teachings of Yerkes to have selected and combined known components for their established functions with predictable results. MPEP 2143 and 2144.06(I). Therefore it, would have been obvious for one of ordinary skill in the art, at the time of filling, to have applied the composition taught by Yerkes and Shiroff in combination with an herbicide such as bromobutide and a safener such as benoxacor.
2) Claim 5 stands rejected under 35 U.S.C. 103 as being unpatentable over Yerkes et al. (WO 2014/018398 A1, publication date 01/30/2014) in view of Webb (Webb, D., Weed Management Handbook, 2002, p. 171, 178-9) as applied to claims 1-4 and 6-16 above, and further in view of Shiroff et al. (WO 2017/125786 A1, publication date 07/27/2017).
Yerkes and Webb, which are taught above, differ from the instant claims insofar as they do not teach the size of the capsules.
Shiroff discloses a capsule suspension of pendimethalin [p. 14, line 16] with a capsule size between 2 and 50 microns [p. 21, lines 7-8]. One of ordinary skill would have been motivate to, and had an expectation of success in using capsule of this size because Shiroff teaches it is suitable for encapsulated pendimethalin. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case the range of the prior art (2-50 microns) overlaps with the instantly claimed range (1-100 microns) and therefore a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the pendimethalin capsule suspension taught by Yerkes and Webb such that the capsules would have been within the instantly claimed range.
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, 4, 5, 10, 12 and 15 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,897,898 B2 in view of Shiroff et al. (WO 2017/125786 A1, publication date 07/27/2017).
The claims of ‘898 disclose a method of controlling undesirable vegetation which comprises applying an herbicidal composition, which may comprise pendimethalin [claim 16] and dazomet [claim 4], to water to prevent to emergence of the undesirable vegetation [claim 7]. The vegetation to be controlled includes vegetation of the genera Avena [claim 9] in crops such as rice [claim 8]. The undesirable vegetation may be herbicide resistant or tolerant [claim 11].
The claims of ‘898 do not discloses a microcapsule or capsule suspension formulation, nor do they discloses applying the composition after germination of the rice.
Shiroff discloses that encapsulated pendimethalin physico-chemically stabilizes a suspension concentrate of an herbicidal mixture [p. 5, lines 2-4]. The capsule size disclosed by Shiroff is between 2 and 50 microns [[p. 21, lines 7-8].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have modified the methods disclosed in the claims of ‘898 to reach the instantly claimed methods because they disclose the method to control undesirable vegetation prevents emergence. As a result, one of ordinary skill in the art would have been motivated to apply the herbicide pre-emergence of the undesirable vegetation but post emergence of the desirable vegetation (i.e., rice). Additionally, one would have been motivated to and had an expectation of success in applying a microencapsulated suspension of pendimethalin because Shiroff discloses it stabilizes the composition. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have to have applied an herbicidally effective amount of dazomet and microcapsule suspension pendimethalin (within the instantly claimed particle size) to the water of rice pre-emergence of undesirable vegetation but post emergence of rice (i.e., after germination). Wherein the undesirable vegetation may be of the genera Avena and may be herbicide resistant or tolerant.
Response to Arguments
1) On page 7 of their remarks, Applicant argues none of the cited references (alone or in combination) teach or suggests pendimethalin in the form of microcapsules.
This argument is not persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the present case, Yerkes does not disclose microcapsules of pendimethalin, however, as discussed above, Webb cures this deficiency. Namely, Webb discloses “Controlled-release, or delayed-release, formulations aim to bind the a.i. so that it is released by an external trigger. Their main aim is either to increase the amount of a.i. reaching the biological target or to extend the duration of a.i. activity by not releasing all the a.i. at once. In addition, the formulation should be less toxic and safer to handle, and it should reduce environmental contamination” [p. 178, last para.] and that microcapsules are a liquid controlled release formulation [p. 179, para. 2]. Thus, one of ordinary skill in the art would have been motivated to formulate the pendimethalin Yerkes as a microcapsule formulation for the desirable effect of improved safety.
2) On page 7 of their remarks, Applicant argues that Yerkes teaches away from the claimed invention. Namely, Applicant asserts none of the in-water applications of pendimethalin alone in Example II achieved a noticeable control of the weeds (see, e.g., Tables 11, 12, and 13 of Yerkes).
This argument is not persuasive. The independent claim recites “a composition comprising pendimethalin” and therefore does not exclude additional active agents. In fact, additional active agents are desired by the instant claims at claim 15 “wherein the composition comprising pendimethalin is applied in combination with at least one further herbicide … ” Accordingly, the synergistic compositions of Yerkes, formulated as microcapsules as motivated by Webb, read on the instant compositions.
As a note, the Examiner respectfully disagrees with applicant’s assertion that Tables 11-13 of Yerkes demonstrate no noticeable weed control when pendimethalin is applied alone. Table 11 (“Synergistic Activity of In-Water Applications of Compound A Acid and Pendimethalin Herbicidal Compositions on Weed Control in a Rice Cropping System”) discloses 40% “observed” visual control of LEFCH (i.e., Leptochloa chinensis (L.) Nees; a rice paddy weed [p. 45, lines 12]) when pendimethalin was applied alone (see Table 11, page 50, reproduced below).
PNG
media_image1.png
343
440
media_image1.png
Greyscale
3) On page 8 of their remarks, Applicant argues the claimed invention has surprising and unexpected results in producing higher yields of rice and lower rice injury than the emulsifiable concentrate (EC) while also providing weed control.
This argument is not persuasive. The specification discloses that “[s]urprisingly, it has been found that pendimethalin provides effective pre-emergence weed control when applied to an aquatic environment in which rice plants are cultivated” [p. 4, lines 6-8]. However, the specification does not disclose that the that the results of the microcapsule formulations were unexpected.
Furthermore, while the Examiner agrees Table 1 [pages 53-55] of the instant specification demonstrate microcapsule formulates can provide higher yields of rice and lower rice injury than the emulsifiable concentrate (EC), this result does not appear to be unexpected in view of the prior art. In the examples disclosed in the specification the capsule suspension (CS) pendimethalin formulations were provided as Prowl H2O and the emulsifiable concentrate (EC) formulations where provided as Prowl 3.3 [p. 53, lines 25-28]. According to Zandstra (Vegetable Growers News, 04/29/2015 [retrieved 02/05/2026], https://vegetablegrowersnews.com/news/pre-emergence-weed-control-tips-for-michigan-onions/) at the third paragraph: “Prowl 3.3 EC is still available, as well as several generic pendimethalin 3.3 EC products. The difference between the EC and H2O formulations is the carrier. Prowl H2O uses a water-based carrier whereas the EC uses a petroleum-based solvent system. The solvent-based carrier is potentially more toxic to plants than the water carrier.” Therefore, one of ordinary skill in the art would have appreciated that a composition of Prowl H20 would result in less crop injury than compositions of Prowl 3.3 due to the different solvent systems.
Additionally, the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (MPEP 716.02(b)). In the present case it appears the differences in the results from CS and EC formulations are not always statistically significant. See, for example, the selected rows 5-6 of page 53 and row 8-9 of page 54, reproduced below (row numbers added).
PNG
media_image2.png
452
1041
media_image2.png
Greyscale
Here, the difference in injury rate (stand reduction) of rows 5 and 8, and the difference in yield of rows 6 and 9 do not appear to be statically significant.
Finally, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support" (see MPEP 716.02(d) quoting In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)). In the present case, application timing appears to affect the results. For example comparing rows 5 and 6 above, there is a statistically significant difference in the injury rate (stand reduction) between application 10 days after seeding (DAS) and 15 days after seeding (DAS). See also, the stand reduction of CS 3lb ai/a at 5 and 15 days after seeding [rows 1 and 3 on page 54].
4) on page 8 of their remarks, Applicant argues double patenting rejections should be withdrawn because the instant formulations demonstrate unexpected results.
This argument is not persuasive for the reasons discussed above. The instant claims continue to read on the copending claims for the reasons above and of record.
Conclusion
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 COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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, Frederick Krass can be reached at 571-272-0580. 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.
/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612