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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, drawn to a composition comprising an effective amount of constituent (A), in the reply filed on 12/01/2025 is acknowledged.
Applicant’s election of the species of composition where optional component (C) and optional component (D) are not present in the reply filed on 12/01/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/01/2025.
Claims 3 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/01/2025.
Claims 1-2, 4-6, and 8-9 are under current examination.
Priority
This application is a national stage entry of PCT/EP2021/083411, filed 11/29/2021. Foreign
priority has been claimed to EP 20211007.8, filed 12/01/2020. Receipt is acknowledged of
certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/31/2023 is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the
Examiner.
Claim Objections
Claim 1 objected to because of the following informalities: it is suggested that “Composition comprising…” in line 1 should read “A composition comprising…”. Further, for consistency in the claim language, “constituents (C) and constituent (D)” should read “constituent (C) and constituent (D)” in line 5; that is, “constituent” should be singular in both instances.
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.
Claims 1-2, 4-6, and 8-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites the limitation "(B) denotes tris(2-ethylhexyl) phosphate (TEHP)" in line 3. There is insufficient antecedent basis for this limitation in the claim, as the claim previously recites “Composition comprising an effective amount of constituent (A)…” with no constituent (B) recited. It is suggested that Applicant can recite “A composition comprising an effective amount of constituent (A) and constituent (B), wherein…”.
Claims 2, 4-6, and 8-9 are rejected under 35 U.S.C. 112(b) by virtue of their dependency on indefinite claim 1.
Regarding claims 2 and 8, the term "preferably" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination and applying prior art, the limitations following the term “preferably” are interpreted as optional and not required by the claims.
Claim 8 recites the limitation “further formulation auxiliaries and additives customary in crop protection” which renders the scope of the claim indefinite. The term “customary” is not defined by the claim or the specification, and one of ordinary skill in the art would not be reasonably apprised of the scope of the auxiliaries and additives that meet the limitation of “customary in crop protection”.
Claim 9 recites “other herbicides (constituent (C))” and “safeners (constituent D))”. This is indefinite as claim 1, from which claim 9 depends, recites that constituent (C) is defined as “one or more further herbicides…” and constituent (D) is defined as “one or more safeners”. It is unclear if claim 9 requires the presence of multiple other herbicides and multiple safeners as constituents (C) and (D), respectively. It is suggested that Applicant can recite “one or more further herbicides (constituent (C)) in a total amount of from 0.5% to 12% by weight, one or more safeners (constituent (D)) in a total amount of from 0.75% to 15% by weight”, consistent with the language of claim 1.
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 1-2, 4-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Schneider et al. (US 2015/0264923 A1, published September 24, 2015), hereafter “Schneider”.
Regarding instant claim 1, Schneider teaches a liquid agrochemical composition comprising one or more agrochemically active ingredients (Abstract; claim 1). Preferably, the one or more agrochemically active ingredients comprise one or more herbicides selected from those including mesosulfuron (e.g. mesosulfuron-methyl) (paragraph [0163]). Preferably, the composition comprises a built-in phosphate or phosphonate adjuvant which most preferably comprises (e.g. consists essentially of) tris-(2-ethylhexyl) phosphate, abbreviated TEHP (paragraphs [0151]-[0158]).
Schneider further teaches that the composition comprises from 0.05% to 30% and most preferably from 0.5% to 12% of the total weight of the one or more agrochemically active ingredients by weight of the agrochemical composition (paragraph [0159]). The built-in phosphate adjuvant is present from 5% to 70% by weight of the composition, and most preferably from 20% to 40% (paragraph [0158]). Using the most preferable weight% ranges, Schneider contemplates a ratio of mesosulfuron-methyl to TEHP in a range of 1:1.67 to 1:80, overlapping the claimed range. Per MPEP 2144.05 I, “In the case where the claimed ranges "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)”.
Regarding instant claim 2, as noted above, Schneider teaches a liquid agrochemical composition comprising one or more agrochemically active ingredients (Abstract; claim 1). Preferably, the one or more agrochemically active ingredients comprise one or more herbicides selected from those including mesosulfuron (e.g. mesosulfuron-methyl) (paragraph [0163]). Thus, Schneider contemplates a composition where a single herbicide of mesosulfuron-methyl is the only herbicide present, and does not require the presence of pinoxaden.
Regarding instant claims 4-5, as noted above, using the most preferable weight% ranges of agrochemically active ingredient and built-in phosphate adjuvant, Schneider contemplates a ratio of mesosulfuron-methyl to TEHP in a range of 1:1.67 to 1:80, overlapping the claimed ranges. Per MPEP 2144.05 I, “In the case where the claimed ranges "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)”.
Regarding instant claim 6, as noted above, Schneider teaches a built-in phosphate adjuvant of TEHP, and that the built-in phosphate adjuvant is present from 5% to 70% by weight of the composition, and most preferably from 20% to 40% (see paragraphs [0151]-[0158]), overlapping the claimed range. Per MPEP 2144.05 I, “In the case where the claimed ranges "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)”.
Regarding instant claim 8, the composition of Schneider further comprises an alcohol solvent and heavy aromatic hydrocarbon solvent (claim 1). The compositions of Schneider are taught to be used for controlling and/or inhibiting the growth of weeds and are typically applied to crops of useful plants (paragraphs [0209]-[0213]). The alcohol and heavy aromatic hydrocarbon solvents of Schneider are therefore interpreted to meet the limitation of organic solvents customary in crop protection.
Regarding instant claim 9, as noted above, Schneider teaches the inclusion of an agrochemically active ingredient of mesosulfuron-methyl present most preferably from 0.5% to 12% of the total weight of the composition and a built-in phosphate adjuvant of TEHP, present most preferably from 20% to 40%, overlapping the claimed ranges. Schneider further teaches that the composition comprises emulsifiers and/or surfactants present in a total of from 0.5% to 35% by weight of the composition (claim 21), less than 1% w/w of water (paragraph [0028]), alcohol solvent from 5% to 50% by weight (paragraph [0014]), and heavy aromatic hydrocarbon solvent from 8% to 50% by weight (paragraph [0118]), overlapping the claimed ranges of surfactant, water, and organic solvents. Per MPEP 2144.05 I, “In the case where the claimed ranges "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)”.
Schneider does not teach the combination of mesosulfuron-methyl and TEHP with sufficient specificity to anticipate, but rather renders obvious the instant claims. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to combine the prior art elements of an herbicide of mesosulfuron-methyl and adjuvant of TEHP taught by Schneider according to known methods to yield predictable results. Schneider teaches that the disclosed agrochemical compositions are useful in controlling and/or inhibiting weeds (see paragraphs [0001], [0067]-[0073], and [0209]-[0213]), that mesosulfuron-methyl is a suitable herbicide for use in the agrochemical compositions (paragraph [0163]), and that TEHP is a preferred adjuvant in such formulations (paragraphs [0151]-[0158]). Rearrangement of the prior art elements taught by Schneider to reach the formulation of the instant claims is within the purview of a person of ordinary skill in the art who is not an automaton and would predictably result in a composition with herbicidal activity that is effective in controlling and/or inhibiting weeds. Further, from MPEP 2141 I., "[I]n Sakraida v. AG Pro, Inc., the Court derived . . . the conclusion that when 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." Id. at 417, 82 USPQ2d at 1395-96 (Internal quotations omitted.)”.
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 1-2, 4-6, and 8-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-10, and 12 of copending Application No. 17/615,815 in view of Schneider et al. (US 2015/0264923 A1, published September 24, 2015), hereafter “Schneider”.
Claims 1-2, 4-6, and 8-9 are directed to an invention not patentably distinct from claims 1, 9-10, and 12 of commonly assigned copending Application No. 17/615,815.
Both the instant claims and those of copending Application No. 17/615,815 are directed to compositions comprising tris(2-ethylhexyl) phosphate (TEHP) and an active agrochemical ingredient. The claims of copending Application No. 17/615,815 recite ratios consistent with those instantly claimed (e.g., 8 g/l of a 50% TEHP adjuvant combination and 0.1 g/l of active agrochemical ingredient, resulting in a 0.1:4 or 1:40 weight ratio). The composition recited in the claims of copending Application No. 17/615,815 further comprises additional formulation adjuvants (see copending claim 1, components b-e, and claim 9), interpreted as customary in crop protection, as the claims of copending Application No. 17/615,815 recite an herbicidal composition. The claims of copending Application No. 17/615,815 do not require the presence of pinoxaden.
The claims of copending Application No. 17/615,815 recite that the active agrochemical ingredient is selected from the group consisting of tembotrione, isoxaflutole, bixlozone, pyroxasulfone, XDE-848, thiafenacil, prohexadione-Ca, mefenpyr-diethyl and cyprosulfamide, while the instant claims require mesosulfuron-methyl or a salt thereof.
Schneider teaches a liquid agrochemical composition comprising one or more agrochemically active ingredients (Abstract; claim 1). The agrochemical compositions are useful in controlling and/or inhibiting weeds (see paragraphs [0001],[0067]-[0073], and [0209]-[0213]). Schneider further teaches that the one or more agrochemically active ingredients comprise one or more herbicides selected from those including mesosulfuron (e.g. mesosulfuron-methyl) and pyroxasulfone (paragraph [0163]). Preferably, the composition comprises a built-in phosphate or phosphonate adjuvant which most preferably comprises (e.g. consists essentially of) tris-(2-ethylhexyl) phosphate (paragraphs [0151]-[0158]). Schneider teaches that the composition comprises from 0.05% to 30% and most preferably from 0.5% to 12% of the total weight of the one or more agrochemically active ingredients by weight of the agrochemical composition (paragraph [0159]). The built-in phosphate adjuvant is present from 5% to 70% by weight of the composition, and most preferably from 20% to 40% (paragraph [0158]). Schneider further teaches that the composition comprises emulsifiers and/or surfactant present in a total of from 0.5% to 35% by weight of the composition (claim 21), less than 1% w/w of water (paragraph [0028]), alcohol solvent from 5% to 50% by weight (paragraph [0014]), and heavy aromatic hydrocarbon solvent from 8% to 50% by weight (paragraph [0118]).
It would have been prima facie obvious to one of ordinary skill in the art to substitute the pyroxasulfone claimed in copending Application No. 17/615,815 with the mesosulfuron-methyl of Schneider. Simple substitution of one herbicide known in the art for use in agrochemical compositions in combination with a TEHP adjuvant for another such herbicide is within the purview of the skilled artisan and would yield predictable results (see MPEP 2143 B).
Regarding the claimed weight% ranges, claim 12 of copending Application No. 17/615,815 suggests that the amounts of active agrochemical ingredient, TEHP, and additional adjuvants can be adjusted, and the prior art of Schneider teaches overlapping weight% ranges of mesosulfuron-methyl, TEHP, and further ingredients such as surfactants and organic solvents in effective herbicidal compositions. Per MPEP 2144.05 I, “In the case where the claimed ranges "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)”. Further, per MPEP 2144.05 II. A, “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”.
This is a provisional nonstatutory double patenting rejection.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly
assigned copending Application No. 17/615,815, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a
statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing
date of the claimed invention, and the claimed invention was made as a result of activities undertaken
within the scope of the joint research agreement; the application must also be amended to disclose the
names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUDITH M KAMM whose telephone number is (703)756-4575. The examiner can normally be reached M-F 8:00 am-4:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/J.M.K./Examiner, Art Unit 1611