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 .
Withdrawn Objections/Rejections
The objections to claim 1 are withdrawn in view of the claim amendments.
The previous rejections of claims 1-2, 4-6, and 8-9 under 35 U.S.C. § 112(b) are withdrawn in view of the claim amendments.
The previous rejections of claims 1-2, 4-6, and 8-9 under 35 U.S.C. § 103 are withdrawn in view of the claim amendments.
The rejections of claims 1-2, 4-6, and 8-9 on the ground on nonstatutory double patenting as unpatentable over the claims of copending Application No. 17/615,815 in view of Schneider et al. are withdrawn in view of the claim amendments.
Election/Restriction
In the response to restriction requirement filed 12/01/2025, Applicant elected the species of a composition where previously optional component (C) and component (D) are not present. Independent claim 1 has been amended to recite “A composition comprising…one or more further compounds selected from the group consisting of constituent (C) and constituent (D)”.
In view of these amendments, the elected species is being rejoined with compositions comprising (D) one or more safeners. Previously withdrawn claim 7, which recites “wherein the safener of constituent (D) is selected from the group consisting of…” is therefore also rejoined.
Claim Status
Applicants' amendments and arguments filed on 04/14/2026 have been fully considered.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. They constitute the
complete set presently being applied to the instant application.
Claims 3 and 10-19 are withdrawn.
Claim 20 is newly added.
Claims 1-2, 4-9, and 20 are under current examination.
Claim Objections
Claim 9 is objected to because of the following informalities: in line 8, it is suggested that “one or more safeners (constituent D))” should read “one or more safeners (constituent (D))” with closed parentheses around the letter “D”.
Appropriate correction is required.
Claim Interpretation
The instant specification does not set forth a definition of the term “about”. Herein, the Examiner interprets that values modified by the term “about” are inclusive of that value ± 10%.
New Rejections Necessitated by Claim Rejections
Claim Rejections - 35 USC § 112(a)-Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-2, 4-5, 7-8, and 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitations “constituent (A) in a total amount of from about 0.5% to about 5% by weight” and “constituent (B) in a total amount of from about 10% to about 50% by weight”. The specification at pg. 4, lines 16-29 provides for an amount of constituent (A) from 0.5% to 6% by weight and an amount of constituent (B) from 10% to 50%. The specification does not support an amount of constituent (A) of “about 0.5%” which would include values lower than 0.5%. The specification does not support an amount of constituent (B) of “about 10% to about 50% by weight” which would include values outside the range.
It is suggested that Applicant can rewrite claim 1 to recite “constituent (A) in a total amount of 0.5% to 5% by weight” and “constituent (B) in a total amount of 10% to 50% by weight”.
Claims 2, 4-5, 7-8, and 20 are dependent on claim 1, and do not limit the amounts of constituent (A) and (B) to amounts supported by the specification, and thus also fail to comply with the written description requirement.
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, 4-9, and 20 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 "in each base based on the total weight of the composition" in the final line. There is insufficient antecedent basis for this limitation in the claim as no “base” is previously recited, and it is unclear what “each base” is intended to refer to. It is suggested that Applicant can recite “
Claim 1 further recites the limitation “a constituent (H) formulation adjuvant comprising a methyl ester of a C16-C22 fatty acid in a total amount of from 10% to 50% by weight, in each base based on the total weight of the composition”. It is unclear if the claim requires a) that the formulation adjuvant is present in an amount of from 10% to 50% by weight of the composition, b) that the formulation adjuvant comprises 10% to 50% by weight of a methyl ester of a C16-C22 fatty acid, or c) that the composition comprises 10% to 50% by weight of a methyl ester of a C16-C22 fatty acid based on the total weight of the composition. For purposes of examination and applying prior art, it is interpreted that c) the composition comprises 10% to 50% by weight of a methyl ester of a C16-C22 fatty acid based on the total weight of the composition.
Claims 2-3, 4-9, and 20 are rejected under 35 U.S.C. 112(b) by virtue of their dependency on indefinite claim 1 and failure to cure the deficiencies noted above.
Regarding claim 7, the term "preferably" in parentheses, for example “mefenpyr, its esters and/or salts thereof (preferably mefenpyr-diethyl)” renders the claims indefinite because it is unclear whether the limitations following the phrase, or the limitations recited in parentheses, 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” in parentheses are interpreted as optional and not required by the claims.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 recites, “The composition as claimed in claim 1, comprising constituent (A) in a total amount of from 0.5% to 6% by weight”. Claim 1, from which claim 9 depends, recites “A composition comprising…constituent (A) in a total amount of from about 0.5 to about 5% by weight”. The upper limit of 6% by weight recited in claim 9 is broader than the upper limit of about 5% by weight recited in claim 1, and thus claim 9 fails to further limit the subject matter of claim 1.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements. It is suggested that Applicant can recite “constituent (A) in a total amount of 0.5 to 5% by weight” in claim 9.
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, 4-8, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Egan et al. (US 2018/0000069 A1, published January 4th, 2018), hereafter “Egan”.
Regarding instant claim 1, Egan teaches a liquid herbicidal composition comprising a non-aqueous solvent system, at least one sulfonylurea herbicide, and at least one inorganic salt (see entire document, particularly abstract and claim 1). The at least one sulfonylurea herbicide is selected from the group including mesosulfuron-methyl (claims 8-9). The sulfonylurea is preferably comprised in an amount of at least 0.1 wt.% and in an amount of 60 wt.% or less, exemplary ranges include 0.2 to 5 wt.%, 0.5 to 2 wt.%, and 0.5 to 1 wt. % (paragraph [0104]), 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)”.
Egan further teaches that the sulfonylurea and inorganic salts are dissolved, dispersed, suspended, or otherwise contained in the non-aqueous solvent system (paragraphs [0133]-[0134]), and suitable aprotic organic solvents include tris-2-ethylhexyl phosphate (paragraph [0140]). Egan exemplifies an oil dispersion comprising TEHP as a solvent (Table 6-1 at paragraph [0246]). Egan teaches that the non-aqueous solvent is present in an amount such that it can act as a liquid carrier, preferably in an amount of at least 5 wt.% and 95 wt.% or less, with an exemplary range including 30 to 60 wt.% (paragraph [0148]), overlapping the claimed range. Egan therefore suggests a ratio of mesosulfuron-methyl to TEHP consistent with those instantly claimed. As just one example, using the exemplary sulfonylurea range of 0.5 to 2 wt.% and the exemplary solvent range of 30 to 60 wt.%, Egan arrives at a ratio of 1:15 to 1:120, overlapping the claimed range.
Egan further teaches that the composition can comprise one or more safeners (paragraphs [0163]-[0182]), with exemplary combinations of sulfonylurea and safener including mesosulfuron methyl and mefenpyr-diethyl (paragraph [0182]).
Egan further suggests that the compositions can comprise co-formulants that act as an adjuvant (paragraph [0184]), and that the non-aqueous solvent can include fatty acid esters of unsaturated or saturated C10-C22 fatty acids, in particular C18-fatty acids such as oleic acid (paragraph [0141]); preferred fatty acid alkyl esters are methyl esters (paragraph [0142]). As noted above, Egan teaches that the non-aqueous solvent is present in an amount such that it can dissolve, disperse, suspend, or otherwise contain the sulfonylurea and inorganic salt, preferably in an amount of at least 5 wt.% and 95 wt.% or less (paragraph [0148]), overlapping the claimed range.
Regarding instant claim 2, the compositions of Egan do not require the presences of pinoxaden or a C1-C6 alkyl methacrylate.
Regarding instant claims 4-5, as noted above, Egan suggests a ratio of mesosulfuron-methyl to TEHP consistent with those instantly claimed. As just one example, using the exemplary sulfonylurea range of 0.5 to 2 wt.% and the exemplary solvent range of 30 to 60 wt.%, Egan arrives at a ratio of 1:15 to 1:120, overlapping the claimed ranges.
Regarding instant claim 6, as noted above, Egan teaches suitable aprotic organic solvents include tris-2-ethylhexyl phosphate (paragraph [0140]) and that the non-aqueous solvent is present in an amount such that it can dissolve, disperse, suspend, or otherwise contain the sulfonylurea and inorganic salt, preferably in an amount of at least 5 wt.% and 95 wt.% or less, with an exemplary range including 30 to 60 wt.% (paragraph [0148]), overlapping the claimed range.
Regarding instant claim 7, as noted above, Egan teaches that the composition can comprise one or more safeners (paragraphs [0163]-[0182]), with exemplary combinations of sulfonylurea and safener including mesosulfuron methyl and mefenpyr-diethyl (paragraph [0182]).
Regarding instant claim 8, Egan teaches that the invention may comprise one or more additional co-formulants such as surfactants (paragraph [0184]). Egan further teaches that the composition can comprise trace water in an amount of 5 wt.% or less, and that one or more solvents other than water (e.g. organic solvents) are used as the liquid carrier (paragraph [0133]).
Regarding instant claim 20, as noted above, Egan teaches that the non-aqueous solvent can include fatty acid esters of unsaturated or saturated C10-C22 fatty acids, in particular C18-fatty acids such as oleic acid (paragraph [0141]); preferred fatty acid alkyl esters are methyl esters (paragraph [0142]).
Egan does not teach the combination of mesosulfuron-methyl, TEHP, safener, and methyl oleate in the claimed amounts and ratios 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 a sulfonylurea herbicide of mesosulfuron-methyl, safener, and non-aqueous solvents of TEHP and methyl oleate taught by Egan according to known methods to yield predictable results.
Egan teaches that the disclosed liquid herbicidal compositions reliably deliver improved chemical stability for a broad range of sulfonylureas which are used for controlling a range of broad-leaved weeds in a variety of agricultural and horticultural crops (see paragraphs [0001]-[0003] and [0015]-[0016]). Egan teaches that mesosulfuron-methyl is a suitable herbicide for use in the compositions (claims 8-9), particularly in combination with a mefenpyr-diethyl safener (paragraph [0182]), and that TEHP and methyl oleate are suitable non-aqueous solvents (paragraphs [0133]-[0134] and [0140]-[0142]), exemplifying a dispersion comprising TEHP (Table 6-1 at paragraph [0246]). Rearrangement of the prior art elements taught by Egan 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 chemically stable liquid composition with herbicidal activity that is effective in controlling a range of 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.)”.
Egan further suggests amounts and ratios of components consistent with the instant claims, and that the amounts of non-aqueous solvents can be adjusted to dissolve, disperse, suspend, or otherwise contain the sulfonylurea and inorganic salt and improve the stability of the sulfonylurea (paragraphs [0134] and [0148]). It would have been prima facie obvious to one of ordinary skill to routinely optimize the amounts and ratios of sulfonylurea and non-aqueous solvents in order to achieve a formulation comprising an effective carrier of stable sulfonylurea for herbicidal applications. 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)” and 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. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Egan as applied to claims 1-2, 4-8, and 20 above, and further in view of Reap (US 2011/0021350 A1, published January 27th, 2011).
The teachings of Egan are set forth above. Further, as noted above, Egan teaches amounts of mesosulfuron-methyl and TEHP consistent with those of instant claim 9. Egan further teaches that the composition can comprise trace water in an amount of 5 wt.% or less (paragraph [0133]) and one or more surfactants in an amount of at least 1 wt.% and 60 wt.% or less (paragraph [0189]), overlapping the ranges of instant claim 9.
Egan does not teach the limitation that the one or more safeners are in a total amount of from 0.75% to 15% by weight based on the total weight of the composition.
Reap teaches a liquid-phase herbicide composition comprising one or more sulfonylurea herbicides selected from those including mesosulfuron-methyl and from 0 to 30% by weight of one or more herbicide safeners (see entire document, particularly Abstract and claims 1-2). In an embodiment, the one or more safeners are at least about 0.1% of the composition by weight, and the safener comprises mefenpyr-diethyl (paragraphs [0050] and [0052]). Reap teaches that herbicide safeners reduce plant injury caused by herbicides such as sulfonylureas, and are most typically used to selectively protect crop plants from herbicides applied to agricultural fields (paragraph [0266]).
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 modify the amount of safener in the composition of Egan within the range of about 0.1 to 30% by weight suggested by Reap, overlapping the claimed range. One of ordinary skill in the art would have been motivated to do so in order to incorporate an amount of safener that reduces plant injury caused by a sulfonylurea herbicide such as mesosulfuron-methyl, as suggested by Reap. There is a reasonable expectation of success Egan similarly teaches liquid herbicidal compositions which comprise mesosulfuron-methyl and a safener, with an exemplary combinations including mesosulfuron methyl and mefenpyr-diethyl (paragraph [0182]), and are used for application to plant foliage (paragraph [0201]).
Response to Arguments
Applicant’s arguments filed 04/14/2026 have been fully considered.
Regarding the claim rejections under 35 U.S.C. § 103, Applicant argues that the overall teachings of Schneider would not direct one skilled in the art to the claimed combination of mesosulfuron-methyl and TEHP where mesosulfuron-methyl is the only herbicide or where it is used in combination with another herbicide, but rather to selecting pinoxaden. Applicant argues that Schneider does not teach the amended claim limitation of a constituent (H) formulation adjuvant comprising a methyl ester of a C16-C22 fatty acid in a total amount of from 10% to 50% by weight. Applicant argues that, as amended, claim 1 requires the presence of both constituent (C) and constituent (D), which were previously optional, and Schneider also does not direct one skilled in the art to compositions comprising these along with constituents (A), (B), and (H).
Applicant’s arguments with respect to Schneider have been considered but are moot because the new ground of rejection does not rely on Schneider for any teaching or matter specifically challenged in the argument. New grounds of rejection, necessitated by claim amendments, are set forth above.
However, the Examiner respectfully disagrees with the assertion that claim 1 requires the presence of both constituent (C) and constituent (D). Amended claim 1 recites, emphasis added, “one or more further compounds selected from the group consisting of constituent (C) and constituent (D)”, and thus only requires the presence of one of (C) or (D).
Regarding the provisional non-patenting rejections over copending Application No. 17/615,815 (now issued as U.S. Patent No. 12,568,960) in view of Schneider, Applicant argues that the claims do not teach or direct on skilled in the art to the compositions claimed; for example, they do not mention mesosulfuron-methyl or a formulation adjuvant comprising a methyl ester of a C16-C22 fatty acid, and Schneider does not teach or direct one skilled in the art to compositions as defined in claim 1.
In response, the Examiner notes that, as set forth above, the nonstatutory double patenting rejections have been withdrawn in view of the claim amendments.
Conclusion
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.
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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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/J.M.K./Examiner, Art Unit 1611
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