DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Applicants’ amendment filed 9/16/2025 has been entered. Claims 4 and 5 were cancelled. New claims 17-34 were added. Claims 1-3 and 6-34 are pending examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/16/2025 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 6-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-18 of U.S. Patent No. 9,414,593 (herein ‘593). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to emulsifiable concentrates comprising pinoxaden, a solvent selected from and alcohol that is not tetrahydrofurfuryl alcohol with an optional emulsifier and a water-insoluble solvent that is preferably of aromatic hydrocarbons. The patented claims are drawn to a liquid formulation comprising 0.5-50% pinoxaden, 5-40% tris-(2-ethylhexyl) phosphate adjuvant, 0.5-50% emulsifiers, 10-90% solvent, 0-80% water and 0-80% oil which encompassed the present invention. Claim 4 of ‘593 claim solvents selected from 2-ethylhexanol, n-octanol, 4-hydroxy-4-methyl-2-pentanone, cyclohexanol, methyl lactate, methyl lactate (lactic acid methyl ester), butyl lactate (lactic acid butyl ester), 2-methyl-2,4-pentanediol and benzyl alcohol. Therefore, the present claims are prima facie obvious in view of ‘593.
Claims 1-3, 8-10, 12-14, 20 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10,314,305 (herein ‘305). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to emulsifiable concentrates comprising pinoxaden, a solvent selected from and alcohol that is not tetrahydrofurfuryl alcohol with an optional emulsifier and a water-insoluble solvent. The patented claims are drawn to a mixture comprising pinoxaden, cloquintocet-mexyl, emulsifiers, 2-methyl-2,4-pentanediol and a mixture of heavy aromatic hydrocarbons. Claim 4 of ‘305 further specifics 5-50% 2-methyl-2,4-pentanediol. Claim 5 of ‘305 further specifics the mixture is in the form of an emulsifiable concentrate (EC). Claim 7 of ‘305 specify the mixture does not comprise tetrahydrofurfuryl alcohol. Therefore, the present claims are prima facie obvious in view of ‘305.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 24 and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites “the herbicide is a member from the group of the sulfonylureas… and pyridinecarboxamides” which is indefinite. A Markush claim requires the members are selected from a closed group “consisting of” the alternative members (See MPEP 2117). Therefore, the Markush grouping is improper and indefinite.
Claim 24 recites the alcohol is ‘methyl lactate butyl lactate’ which is indefinite. It is unclear if applicant is trying to list two different compounds or one compound. However the specification does not support a compound methyl lactate butyl lactate. For the purpose of examination the claim as been treated as the alcohol being methyl lactate or butyl lactate.
Claim 25 recites “an alcohol in an amount sufficient to dissolve and stabilize” which is indefinite. The metes and bounds of what amount is required to stabilize and dissolve pinoxaden is unclear.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-3, 6-18, 20-22 and 24-34 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Haesslin et al. (WO 02/34048; published May 2, 2002).
Applicant’s Invention
Applicant claims a storage stable composition in the form of an emulsifiable concentrate comprising a) 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden) in an amount from 1-50% by weight; b) an alcohol that is not tetrahydrofurfuryl in an amount from 1-97% by weight; c) an emulsifier; and d) a water-insoluble solvent. (Claim 1)
Applicant claims a method of controlling undesirable plant growth comprising applying an herbicidally effective amount of a composition of claim 1 to plants or a locus thereof. (Claim 11)
Applicant claims a storage stable composition in the form of an emulsifiable concentrate consisting essentially of a) 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden) in an amount from 1-50% by weight; b) an alcohol that is not tetrahydrofurfuryl in an amount from 1-97% by weight; c) an emulsifier; and d) a water-insoluble solvent. (Claim 12)
Applicant claims a storage stable composition in the form of an emulsifiable concentrate consisting of a) 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden) in an amount from 1-50% by weight; b) an alcohol that is not tetrahydrofurfuryl in an amount from 1-97% by weight; c) an emulsifier; and d) a water-insoluble solvent; optionally one or more adjuvants and optionally one or more safeners. (Claim 14)
Applicant further claims a method of improving storage stability of pinoxaden comprising dissolving a composition comprising pinoxaden in an amount from 1-50% by weight dissolved in an alcohol that is not tetrahydrofurfuryl alcohol in an amount from 1-97% by weight. (claim 15)
Applicant claims the composition prepared by the method of claim 15. (claim 16)
Applicant claims a composition comprising at least one water-insoluble solvent in an amount from 30-60% by weight, 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden) in an amount from 5-15% by weight; and an alcohol that is not tetrahydrofurfuryl in an amount sufficient to dissolve and stabilize pinoxaden. (Claim 25)
Claims 33 and 34 are drawn to inherent properties of the formulation.
With respect to claims 1-3, 6-18, 20-22 and 24-30 of the instant application, Haesslin et al. teach agrochemical compositions in the form of a concentrate comprising a quinoline safener (abstract). Herbicides suitable for combination with the safeners include sulfonylureas, aryloxyphenoxypropionates, cyclohexanediones, arylcarboxylic acids and aryloxycarboxylic acids (page 4, paragraph 2; limitation of claim 7). Particularly suitable herbicides include triasulfuron, tribenuron, and oxopyrazolin derivatives (page 4, paragraph 3). Suitable solvents mixed with the herbicides and safeners include alcohols such as n-octanol, cyclohexanol, glycols such as hexylene glycol (2-methyl-2,4-pentanediol), ketones such as diacetone alcohol (4-hydroxy-4-methyl-2-pentanone) and esters such as butyl lactate (page 5, paragraph 2). Emulsifiable concentrates comprising 1-90%, preferably 5-20% active substances (herbicide and safener), 1-30%, preferably 10-20% surfactant and 5-94, preferably 70-85% liquid carrier (page 12, paragraph 7 through page 13, paragraph 1; limitation of claims 4, 5 and 13). Emulsion concentrates comprising a mixture of solvents 20% cyclohexanone and 16% aromatic hydrocarbon mixture C9-12; 4% castor oil polyglycol ether (emulsifier) and 50% active substances are disclosed (page 14, paragraph 1). The most preferred herbicide is pinoxaden (2,2-dimethylpropionic acid 8-(2,6-diethyl-4-methylphenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo[1,2-d][1,4,5]oxadiazepine-7-yl ester) and can be combined with the safener cloquintocet-mexyl (page 18, Table 1, paragraph 3; limitation of claim 9).
With respect to claim 11, Haesslin et al. teach methods of controlling undesired plant growth comprising applying the compositions comprising quinoline safeners to the crop plants or their environment (claim 8).
With respect to claim 15 and 16, Haesslin et al. teach preparing emulsifiable concentrates comprising mixing the active ingredients with suitable solvents which include in alcohol solvents selected n-octanol, cyclohexanol, hexylene glycol (2-methyl-2,4-pentanediol) and diacetone alcohol (page 5, paragraph 2). Suitable surfactants are also included which have good emulsifying, dispersing and wetting properties (page 6, paragraph 2).
With respect to claims 31 and 32 the ratio of pinoxaden to cloquintocet-mexyl is not specified as from 1:1 to 10:1, preferably about 4:1, however Haesslin teach emulsifiable concentrates comprising 1-90%, active substances and 1-90% safener (page 8, lines 1-5 and page 12). Therefore, one of ordinary skill would have been able to optimize the amounts to obtain an emulsifiable concentrate comprising pinoxaden and cloquintocet-mexyl in a ratio of 4:1 with a reasonable expectation of success.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Haesslin teach 2-ethylhexanol, n-octanol, hexylene glycol, diacetone glycol and butyl lactate are suitable solvents along with Solvesso 150, an aromatic hydrocarbon mixture with boiling point from 180-210 degrees Celsius. Haesslin also teach mixtures of solvents to prepare emulsifiable concentrates along with additional emulsifier and adjuvants. Therefore, it would have been prima facie obvious to combine pinoxaden, water-insoluble aromatic hydrocarbons and solvents selected from 2-ethylhexanol, n-octanol, hexylene glycol, diacetone glycol and butyl lactate with a reasonable expectation of success.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Therefore, it would have been prima facie obvious to one of ordinary skill to use the teachings of Haesslin to formulate an emulsifiable concentrate comprising pinoxaden, a solvent selected from 2-ethylhexanol, n-octanol, hexylene glycol, diacetone glycol and butyl lactate and water insoluble aromatic hydrocarbon solvent with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of the invention to combine the teachings of Haesslin to form emulsifiable concentrates comprising 5-20% pinoxden, 10-20% surfactant and liquid carrier comprising a mixture of solvents selected from 2-ethylhexanol, n-octanol, hexylene glycol, diacetone glycol and butyl lactate with water insoluble aromatic hydrocarbon solvent because Haesslin teach they are suitable solvents and mixtures of solvents used to prepare emulsifiable concentrates of pinoxaden.
Response to Arguments
Applicant's arguments filed 9/16/2025 have been fully considered but they are not persuasive.
In view of the interview conducted July 30, 2025, Applicant pointed to Examples 2-6 in the specification a demonstrating unexpected improved results and that amendments should be presented that are commensurate in scope with the data presented. The Examiner has maintained the rejection because the showing is still not commensurate in scope with the claims. Examples 2 & 3 only detail formulations comprising 107 grams pinoxaden, 26 grams cloquintocet-mexyl, 10 gram Atlas G-5000, 10 gram Soprophor TS/10, 524 grams Solvesso 200 ND, 10 gram Rhodacal 60/B-E and 300 grams of alcohol selected from 2-methyl-2,4-pentandiol or diacetone alcohol as having only a 2% loss of pinoxaden. Example 6 only details a formulation comprising 60 grams pinoxaden, 15 grams cloquintocet-mexyl, 20 gram Nansa EVM63/B, 50 gram Servirox OEG 59E, 675 gram Solvesso 200 ND and 200 grams of benzyl alcohol. The claims must be amended to the scope demonstrated as unexpected to be allowable.
Claims 19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Haesslin et al. (WO 02/34048; published May 2, 2002), as applied to claims 1-18, 20-22 and 24-34 in view of Grayson (EP 0520585; published December 30, 1992).
Applicant’s Invention
Applicant claims a storage stable composition in the form of an emulsifiable concentrate comprising a) 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden) in an amount from 1-50% by weight; b) an alcohol that is not tetrahydrofurfuryl in an amount from 1-97% by weight; c) an emulsifier; and d) a water-insoluble solvent. (Claim 1)
Haesslin et al. teach alcohol solvents but does not specify benzyl alcohol. It is for this reason that Grayson is joined.
Grayson teach fungicidal compositions which are applied to agricultural plants subject to fungal attack (page 2, lines 29-40). The formulations are applied with herbicides and the liquid formulation comprises benzyl alcohol as a suitable solvent (page 3, lines 20-32). Example 1 teaches an emulsifiable concentrate formulations comprising dimethomorph, surfactants, Solvesso and benzyl alcohol as a solvent (page 4, lines 15-47).
Both Haesslin and Grayson are drawn to agricultural emulsifiable concentrates comprising alcohol solvents. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Haesslin and Grayson to formulate an emulsifiable concentrate comprising benzyl alcohol as a solvent with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of invention to combine the teachings of Haesslin and Grayson to include benzyl alcohol because Grayson teach that benzyl alcohol is a preferred solvent for formulating emulsifiable concentrates.
Claims 23 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Haesslin et al. (WO 02/34048; published May 2, 2002), as applied to claims 1-18, 20-22 and 24-34 in view of Laimbock et al. (EP 0763510; published March 19, 1997).
Applicant’s Invention
Applicant claims a storage stable composition in the form of an emulsifiable concentrate comprising a) 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo [1,2-d][1,4,5]oxadiazepin-7-yl ester (pinoxaden) in an amount from 1-50% by weight; b) an alcohol that is not tetrahydrofurfuryl in an amount from 1-97% by weight; c) an emulsifier; and d) a water-insoluble solvent. (Claim 1)
Haesslin et al. teach esters such as butyl lactate as a solvent but does not specify methyl lactate. It is for this reason that Laimbock is joined.
Laimbock et al. teach a new system for controlled release of agrochemicals into the soil (abstract). The lower alkyl lactates, methyl lactate, ethyl lactate, propyl lactate and butyl lactate are preferred solvents because they are biodegradable (page 4, lines 6-10).
Both Haesslin and Laimbock are drawn to agricultural formulations comprising alkyl lactate solvents. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Haesslin and Laimbock to use methyl lactate in place of butyl lactate with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of invention to combine the teachings of Haesslin and Laimbock to include methyl lactate because Laimbock teaches that methyl lactate and butyl lactate are both lower alkyl lactate solvents which have the same biodegradable properties. Therefore, substituting methyl lactate in place of butyl lactate as a solvent would have been prima facie obvious.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE SULLIVAN whose telephone number is (571)270-3285. The examiner can normally be reached on 10:00am to 6:30pm Monday through Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Johann Richter can be reached on 571-272-0646. 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
Danielle Johnson
Patent Examiner
Art Unit 1617