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 10/08/2025, 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 Rejections and/or objections not reiterated from previous office action are hereby withdrawn.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.
Status of Claims
In their amendment filed 10/08/2025 applicant as cancelled claims 1-28, added new claims 29-40 and withdrawn the newly added claims 28-40.
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.
1) Claims 29, 31, and 33-37 rejected under 35 U.S.C. 103 as being unpatentable over Armbruster et al. (US 6,849,579 B2, date of publication 02/01/2005) and Dickess et al. (WO 2020/043470 A1, publication date 03/05/2020).
Regarding instant claims 29, 31 and 36, Armbruster discloses: “A selective synergistic postemergent herbicide composition is provided for the control of undesired broadleaf vegetation and grassyweeds comprising the combination of quinclorac and a selective herbicidal protox inhibitor” (abstract). Armbruster discloses the composition may comprises 1% to about 11.5% quinclorac, 1.7% to about 22.2% of the auxinic herbicide and about 0.005% to about 0.06% sulfentrazone (col. 4, 38-46), however some examples comprise 0.3% sulfentrazone (col. 4, Examples 1-3). Armbruster discloses the auxinic herbicide may comprise one or more compounds selected from a group comprising a 2,4-dichlorophenoxyacetic acid (2,4-D; col. 3 lines 49-50) and 3,6-dichloro-2-methoxybenzoic acid (dicamba; col. 3, lines 55-56). Finally, Armbruster discloses the composition contains water as the solvent for the active ingredients (i.e., aqueous herbicidal composition; col. 31, claim 22). Armbruster does not require volatile organic compounds.
Armbruster et al. does not teach topramezone and a nonionic surfactant.
Dickess discloses an aqueous herbicidal composition comprising topramezone which is used for postemergence control mainly of broadleaf weeds as well as some grasses (paragraph 24). Dickess discloses the composition comprises 0.1 wt.% to 1.0 wt.% of topramezone (paragraph 9). Dickess also discloses the formulation comprises 0.1 to 10% w/w nonionic surfactants (paragraphs 12-13). Suitable nonionic surfactants include an alkoxylated natural oil and in some embodiments “the alkoxylated natural oil is ethoxylated castor oil” (i.e., castor oil ethoxylate; paragraphs 13 and 62). Additionally, Dickess discloses examples with no cosolvents and no volatile organic compounds (i.e., less than 20% volatile organic compounds; paragraph 99, Table 1, A). Finally, Dickess teaches aqueous solutions of topramezone provide improved effectiveness over previously formulated water dispersible topramezone because the disclosed aqueous solutions are readily amenable for use and are readily bioavailable (paragraphs 6-7).
Table 1. Claimed and prior art ranges for the components recited in instant claim 29.
Component
Instant Claim 29 (wt%)
1:2 Dilution of Instant Claim 37 (wt%)
Prior Art (wt%)
Prior Art Citation
2,4-dichlorophenoxyacetic acid
4.68-12
1.56-4
1.7-22.2
Armbruster, col. 4, 38-46 and col. 3, lines 49-50
Quinclorac
2.5-7.5
0.83-2.5
1-11.5
Armbruster, col. 4, 38-46
Dicamba
0.5-1.5
0.16-0.5
1.7-22.2
Armbruster, col. 4, 38-46 and col. 3, lines 55-56
Sulfentrazone
0.16-1
0.053-0.3
0.3
Armbruster, col. 4, Examples 1-3
Topramezone
0.05-0.5
0.017-0.17
0.1-1
Dickess, paragraph 9
Castor oil ethoxylate
1-5
0.3-1.67
0.1-10
Dickess, paragraphs 12-13 and 62
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06 I.
It would have been obvious for one of ordinary skill in the art, at the time of filling, to have combined the synergistic composition of quinclorac, sulfentrazone, 2,4-dichlorophenoxyacetic acid and dicamba taught by Armbruster, with the topramezone composition disclosed by Dickess into a single aqueous composition because they were both taught for the same purpose; postemergent control of broadleaf and grassy weeds. One would have been motivated to make this combination for the synergistic effects taught by Armbruster and the improved effectiveness of aqueous topramezone, as taught by Dickess. One would have had an expectation of success because both compositions were intended for the same purpose and were provided as aqueous formulations. Additionally, neither Armbruster or Dickess require a volatile organic compound.
With respect to the claimed ranges, 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 claimed ranges for 2,4-dichlorophenoxyacetic acid, quinclorac, sulfentrazone, topramezone and castor oil ethoxylate all overlap or lie inside the ranges taught by the prior art (see Table 1), and so a prima facie case of obviousness exists for each.
“Similarly, 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). In the cases of dicamba, the claimed range (0.5-1.5 wt%) approaches the range in the prior art (1.7-22.2 wt%) and a prima facie case of obviousness exist.
"[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" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the cases of the dicamba the claimed range would have also been obvious, at the time of filling, by routine optimization. One would have been motivated to optimize these ranges because “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. One would have had an expectation of success because the disclosed range is a cumulative range of the auxinic herbicide and therefore adjusting the amounts of one specific auxinic herbicide (e.g., dicamba) is within the scope of the disclosure as long as the cumulative amount remains within the scope of the disclosure. In other words, one would have expected success when reducing the amount one auxinic herbicide (i.e., dicamba) because another auxinic herbicide can fill the deficit.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated an aqueous composition comprising 2,4-dichlorophenoxyacetic acid, quinclorac, dicamba, sulfentrazone, topramezone and castor oil ethoxylated, wherein each component is present in amounts as instantly claimed and dissolved within the aqueous medium. Wherein the composition does not comprise volatile organic compounds (i.e., instant claim 36) or a cosolvent for topramezone (i.e., instant claims 31).
Regarding instant claims 33-35, because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e., storage stable for at least 3 months at 25°C, capable of being subjected to at least one or six cycles of exposure to a temperature of about -15°C for 12 hours then exposure to a temperature of about 25°C for 12 hours without forming precipitates.
While instant claims 33-35 are obvious because the prior art contains substantially the same components as instantly claimed, they are also obvious over Dickess. Dickess discloses the composition is stable at room temperature (i.e., 25°C) for at least 119 days (paragraph 101, Table 2). Dickess also discloses the composition is generally stable for 7 freeze thaw cycles (paragraph 101, Table 2). According to Dickess “[t]he term ‘stable’ as used herein refers to an aqueous composition comprising topramezone wherein the formulation remains unchanged i.e. without any precipitation or turbidity or phase separation” (paragraph 22).
The three-month stability at 25°C required by instant claim 33 overlaps with the range disclosed in the prior art and therefore a prima facie case of obviousness exist. See MPEP 2144.05(I).
Stability over six of the exact cycles of instant claims 34 and 35, exposure to 12 hours of -15°C then 12 hours of 25°C, would have been obvious through routine optimization. "[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" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). One would have a normal desire to improve upon the known stability. One would have had an expectation of success because Dickess discloses anti-freezing agents may be used. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have to formulated the composition taught by Armbruster and Dickess such that it is stable over at least one or six cycles of exposure to 12 hours of exposure to -15°C then 12 hours of 25°C.
Instant claim 37 recites a dilution that reads on a composition of instant claim 29, wherein the components are present in a third of the amount recited by instant claim 29 (i.e., a 1:2 dilution of instant claim 29 to water; see Table 1).
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 claimed ranges of 2,4-dichlorophenoxyacetic acid, quinclorac, sulfentrazone, topramezone and castor oil ethoxylate all overlap or lie inside the ranges taught by the prior art (see Table 1), and so a prima facie case of obviousness exists for each.
Furthermore, "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 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the cases of the dicamba the claimed range would have been obvious, at the time of filling, by routine optimization. One would have been motivated to optimize these ranges because “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. One would have had an expectation of success because the disclosed range is a cumulative range of the auxinic herbicide and therefore adjusting the amounts of one specific auxinic herbicide (e.g., dicamba) is within the scope of the disclosure as long as the cumulative amount remains within the scope of the disclosure. In other words, one would have expected success when reducing the amount one auxinic herbicide (i.e., dicamba) because another auxinic herbicide can fill the deficit.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated an aqueous composition comprising 2,4-dichlorophenoxyacetic acid, quinclorac, dicamba, sulfentrazone, topramezone and castor oil ethoxylated wherein each component is present in a third of the amounts of instant claim 29. Such a composition reads on the 1:2 (instant claim 29 to water) dilution recited by instant claim 37.
2) Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Armbruster et al. (US 6,849,579 B2, date of publication 02/01/2005) and Dickess et al. (WO 2020/043470 A1, publication date 03/05/2020) as applied to claims 29, 31, and 33-37 above, and further in view of EPA (Memorandum, 09/21/2020, PC code 123009, Decision No. 564424).
Armbruster and Dickess, which are taught above, differ from the instant claims insofar as they do not teach a pH from 8 to 9. Dickess does discloses the pH of the composition to be between 6.5 and 7.5 (paragraph 8). Dickess also teaches that aqueous solutions of topramezone provide improved effectiveness over previously formulated water dispersible topramezone because the disclosed aqueous solutions are readily amenable for use and are readily bioavailable (paragraphs 6-7).
EPA discloses the solubility of topramezone is 0.06 g/L at a pH of 3, 0.98 g/L at a pH of 5, 15 g/L at a pH of 7 and 23.4 g/L at a pH of 9 (p. 30, Table A 1).
[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" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)).
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition taught by Ambruster and Dickess with a pH within the instantly claimed range through routine optimization. One of ordinary skill in the art would have been motivated to optimize the composition taught by Ambruster and Dickess to improve the solubility of topramezone, as desired by Dickess. One would have had an expectation of success because EPA discloses that the solubility of topramezone increases as pH increases.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to formulated a composition according to Ambruster and Dickess, wherein the pH is from 8 to 9.
3) Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Armbruster et al. (US 6,849,579 B2, date of publication 02/01/2005) and Dickess et al. (WO 2020/043470 A1, publication date 03/05/2020) as applied to claims 29, 31, and 33-37 above, and further in view of Formstone et al. (WO 2020/043470 A1, publication date 03/05/2020).
Armbruster and Dickess, which are taught above, differ from instant claim 32 insofar as they do not teach the claimed pH adjusters. Dickess, however, discloses that “[w]here necessary, acid or base may be added to make adjustments to the final pH” (paragraph 38). Dickess also discloses the pH of the composition to be between 6.5 and 7.5 (paragraph 8).
Formstone discloses an aqueous herbicide which includes a pH adjuster (abstract) and in one embodiment topramezone (p. 5, line 1). Formstone discloses that in preferred embodiments the pH of the composition is between 6 and 8 (p. 2, line 21-22) and that diethylamine is a suitable pH adjuster (p. 10, line 4).
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
It would have been obvious for one of ordinary skill in the art, at the time of filling, to have used the diethylamine disclosed by Formstone to adjust the pH of the composition taught by Armbruster and Dickess because one would have recognized that it is suitable for use as a pH adjuster in herbicidal compositions. One would have had an expectation of success because Formstone teaches it may be used in compositions which may include topramezone and have overlapping pH ranges.
4) Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Armbruster et al. (US 6,849,579 B2, date of publication 02/01/2005) and Dickess et al. (WO 2020/043470 A1, publication date 03/05/2020) as applied to claims 29, 31, and 33-37 above, and further in view of Freed (US 6,387,850, date of patent 05/14/2002).
While Armbruster and Dickess teach a composition which reads on instant claim 37, purely arguendo the examiner will show that instant claim would have also been obvious over Ambruster and Dickess in view of Freed.
Freed discloses an invention which is “directed to the use of purified water having low total dissolved solids for preparing application-ready pesticide compositions from pesticide concentrates” (col. 1, line 6-9). According to Freed pesticides include herbicides (col. 1, line 19). Freed discloses that pesticides (i.e., herbicides) can be diluted up to four times the volume of water (col. 2, lines 36-37). Finally, Freed discloses that “[m]ost, if not all, commercial agriculture pesticides are provided as pesticide concentrates having label or package insert instructions for dilution with water to a prescribed concentration” (col. 2, lines 8-11).
It would have been obvious for one of ordinary skill in the art, at the time of filling, to have combined the method of diluting herbicides disclosed by Freed with the composition taught by Armbruster and Dickess to yield nothing more than predictable results. One would have motivated to, and had an expectation of success in providing concentrated herbicidal compositions, which are then to be diluted with water, because it was known in the prior art and a common practice. With respect the dilution ratio, one would have been able to achieve them through routine optimization using Freed’s disclosure of four times the volume of water as a starting point. See MPEP 2144.05 IIA. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition taught by Armbruster and Dickess such that it may be diluted at a ratio of 1 part by weight herbicidal composition to 2 to 100 parts by weight water.
Response to Arguments
1) Applicant argues unexpected results and points to Example V of the instant specification wherein instant compositions (Formulations 1, 2, and 3; see p. 16-18), and solo topramezone compositions were compared for their efficacy in controlling Nimblewill in red fescue. Specifically, applicant asserts that “[i]t was discovered that all three of Formulations 1, 2, and 3 controlled Nimblewill just as well as the solo topramezone formulation. However, it was surprising that Formulations 1, 2, and 3 utilized roughly half the amount of topramezone to do so” [applicant remarks, p. 5, lines 2-4]. The allegedly unexpected results of Example V are disclosed on pages 27-30 of the instant specification as originally filed.
This argument is not persuasive. Overcoming a rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope, and the results must truly be unexpected. MPEP §716.02. The burden rests with Applicant to establish results are unexpected and significant. MPEP §716.02(b). Applicant's showing of allegedly unexpected results does not satisfy any of these requirements.
To begin, applicant has not compared the instant formulations to the closest prior art. See MPEP 716.02(e). The closest prior art appears to be Example 1 in column 4 of Armbruster which does not comprise topramezone.
Furthermore, the instant specification does not actually discloses the amount topramezone applied in the “solo topramezone” treatment. Rather, the instant specification discloses “[t]he solo topramezone treatment comprised applying 1.5 fl oz/acre of Pylex brand SC along with 0.5 % v/v of methylated seed oil (MSO) as an adjuvant according to the second application scheme (A+ B)” [p. 27, para. 1, last three lines] wherein “the second scheme involved the same single application A followed by a second application B applied days after application A” [p. 27, para. 1, lines 6-7]. Therefore, it is unclear if the amount of topramezone applied in the “solo treatment” is truly double that of the treatments employing the formulations according to the instant disclosure and so one cannot accurately compare the results.
Additionally, attorney statements regarding unexpected results, commercial success, long-felt need, inoperability of the prior art, skepticism of experts, and copying are not evidence without the support of objective evidence or a supporting declaration. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 716.01(c). In the present case, the attorney statement that none of the actives in the present formulations, besides topramezone, “are known to control Nimblewill” [p. 5, lines 5-6] is not supported by the evidence of record. According to Armbruster the compositions disclosed therein, which comprise quinclorac, are useful in controlling grassy weeds (abstract). Therefore, a skilled artisan would have expected that quinclorac would have controlled grassy weeds, e.g., Nimblewill. Accordingly, one would have expected the addition of compositions disclosed by Armbruster (i.e., quinclorac) to have improved control over grassy weeds (e.g., Nimblewill).
Finally, applicant must explain the “manner in which the specific compositions illustrated are considered to be commensurate in scope with the claimed invention”; see Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992); see also MPEP 716.02 and 716.02(b) I-II. In the present case the claims are not commensurate in scope to the showing of unexpected results. Formulations 1, 2 and 3 comprise Marasperse CBOS-4, propylene glycol, and Acticide B20 (see pages 16-18, Tables 1-3, respectively). According to the instant specification Marasperse CBOS-4, propylene glycol, and Acticide B20 are all considered “[o]ther inert ingredients included to improve the herbicidal effectiveness (see page 11, line 1). It is unclear what role these ingredients play in the improved effectiveness applicant asserts is shown by Example V. Therefore, the claims are not commensurate in scope because they do not recite Marasperse CBOS-4, propylene glycol, and Acticide B20.
2) Applicant argues unexpected results and points to Example V of the instant specification wherein instant compositions (Formulations 1, 2, and 3; see p. 16-18), and solo topramezone compositions were compared for their safety for the desirable red fescue. Specifically, applicant asserts that it was further discovered that Formulations 1, 2, and 3 resulted in less injury to the fescue, particularly between 14 to 28 days following initial application” [applicant remarks, p. 5, lines 8-10]. The allegedly unexpected results of Example V are disclosed on pages 27-30 of the instant specification as originally filed.
This argument is not persuasive. Applicant has not compared the instant formulations to the closest prior art. See MPEP 716.02(e). The closest prior art appears to be Example 1 in column 4 of Armbruster.
Furthermore, the specification does not disclose that a reduction in injury rate/bleaching rate would have been unexpected when applying the instant formulations. In fact, it does not appear that a reduced injury/bleaching rates would have been unexpected. The instant compositions are compared to compositions comprising more topramezone. Cox et al. (Crop Science, 2017, vol. 57, p. S-310 to S-321) relates to topramezone as a control for goosegrass in bermudagrass and discloses that “[b]ermudagrass injury DOT30 following the first treatment [with topramezone] ranged from 11.1 to 17.8 d, depending on variety” [abstract]. “DOT30” represents the “number of days over a threshold of 30% injury or stunting (DOT30)” [abstract]. In other words, topramezone is known to injure the desirable grass for 11 to about 18 days when applied. Therefore, one ordinary skill in the art would have expected a concomitant reduction in the transient injury/bleaching of the desirable species with a reduction of topramezone. As a result, applicants showing of reduced injury/bleaching for a composition comprising less topramezone does not appear to be unexpected.
Furthermore, 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, Formulations 1, 2 and 3 comprise Marasperse CBOS-4, propylene glycol, and Acticide B20 (see pages 16-18, Tables 1-3, respectively). According to the instant specification Marasperse CBOS-4, propylene glycol, and Acticide B20 are all considered “[o]ther inert ingredients included to improve the herbicidal effectiveness (see page 11, line 1). The claims are not commensurate in scope because they do not recite Marasperse CBOS-4, propylene glycol, and Acticide B20.
3) Applicant argues that the instant composition demonstrates unexpected results in controlling post-emergent crabgrass as compared to a composition labeled “Q-4-Plus.” The Q-4-Plus composition is formulated according to the closest prior art, i.e., Armbruster et al.
This argument is not persuasive. While Example IV demonstrates the instant composition provides improved post-emergent control of crabgrass, "[a] greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue." In re Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). In Corkhill, the claimed combination showed an additive result when a diminished result would have been expected. This result was persuasive of nonobviousness even though the result was equal to that of one component alone. Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately (i.e., demonstrating "synergism"). Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). However, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991).
In the present case, topramezone is known to be effective for controlling post-emergent crabgrass at low doses. See, for example, Brewer (Virginia Polytechnic Institute and State University Dissertation, 03/04/2021) discloses: “Goosegrass [Eleusine indica (L.) Gaertn.] and smooth crabgrass [Digitaria ischaemum (Schreb.) Schreb. ex Muhl.] are problematic weeds in bermudagrass and creeping bentgrass turf. Increased incidences of herbicide resistant weed populations and severe use restrictions on formerly available herbicides have increased need for selective, postemergence control options for these weeds in creeping bentgrass and bermudagrass turf. This weed management exigency has led turf managers to utilize less effective, more expensive, and more injurious options to manage goosegrass and smooth crabgrass. Although potentially injurious, topramezone can control these weeds, especially goosegrass, at low doses” [p. 2, Abstract]. Thus, one would have expected improved post-emergent crabgrass control with the addition of low doses of topramezone, as demonstrated by applicant in Example IV. See MPEP 716.02(a).I.
Finally, applicant must explain the “manner in which the specific compositions illustrated are considered to be commensurate in scope with the claimed invention”; see Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992); see also MPEP 716.02 and 716.02(b) I-II. In the present case the claims are not commensurate in scope to the showing of unexpected results. Formulation 4 comprises Marasperse CBOS-4, propylene glycol, and Acticide B20 (see pages 16-18, Tables 1-3, respectively). According to the instant specification Marasperse CBOS-4, propylene glycol, and Acticide B20 are all considered “[o]ther inert ingredients included to improve the herbicidal effectiveness (see page 11, line 1). It is unclear what role these ingredients play in the improved effectiveness applicant asserts is shown by Example IV. Therefore, the claims are not commensurate in scope because they do not recite Marasperse CBOS-4, propylene glycol, and Acticide B20.
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 COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612