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 .
Status of Claims
Receipt of Remarks/Amendments filed on 12/08/2025 is acknowledged. Claims 1 and 15-17 are amended and claims 2-5, 8-11, 14, and 18-21 are cancelled. Claims 16-17 remain withdrawn as being directed to a non-elected invention. Claims 1, 6-7, 12-13, and 15 are examined on the merits herein.
Priority
The instant application filed 03/21/2023, is a 371 filing of PCT/GB21/52426, filed 09/20/2021, which claims foreign priority to GB2014872.2, filed 09/21/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted 12/08/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Objections/Rejections
Claim 9 was objected to because an informality. Applicant’s cancellation of claim 9 has rendered the objection moot and the objection is withdrawn.
Claim 9 was rejected under 35 U.S.C. 112(b). Applicant’s cancellation of claim 9 has rendered the rejection moot and the rejection is withdrawn.
The following rejections are necessitated by amendment:
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.
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 1, 6-7, 12, 13, and 15 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.
Applicant has amended claim 1 to recite “a recovery promoting agent comprising an alkyl ester of a dicarboxylic acid and methyl esters of a C5 to C20 fatty acid, a mixture of C16-18 unsaturated fatty acid methyl ester and C18 unsaturated fatty acid methyl ester as a solvent or a combination thereof”. Due to the punctuation and phrasing of this amendment, it is extremely unclear what the recovery promoting agent is versus what the solvent is. As best interpreted given Applicant’s previous species election, the solvent is “methyl esters of a C5 to C20 fatty acid, a mixture of C16-18 unsaturated fatty acid methyl ester and C18 unsaturated fatty acid methyl ester”. However, this is also unclear since C18 unsaturated FA-MEs falls within C16-C18 unsaturated FA-MEs which further falls within C5-C20 FA-MEs. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Claim 1 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the sake of compact prosecution the Examiner has selected methyl esters of a C5-C20 fatty acid since it includes both C16-C18 and C18 unsaturated FA-MEs.
The remaining claims are rejected by virtue of their dependency on claim 1.
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.
Claims 1, 6-7, 12-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hazen, J., et al. (US 20100087318 A1, 04/08/2010, on record), hereinafter Hazen, in view of Kober, R., et al. (US 20040097374 A1, 05/20/2004, IDS dated 03/21/2023), hereinafter Kober, Zoschke, A., et al. (DE 19915013 A1, ip.com translation used, 08/26/1999, on record), hereinafter Zoschke, and Hu, K., et al. (CN 108338169 A, 07/31/2018, IDS dated 03/21/2023), hereinafter Hu, as evidenced by DBE Solvent (n.d.) Cornell University MSDS, Hazardous Technical Information Services (on record), hereinafter Cornell University.
Hazen discloses an herbicidal composition comprising (a) 10 to 30% by weight of clethodim, as recited in instant claim 1; (b) 20 to 50% by weight of a mixture of methyl esters of C16-C18 fatty acids, which reads on the methyl ester solvent of instant claim 1; and additional ingredients ([0009]). It is known that herbicidal compositions containing cyclohexanedione oxime compounds, such as clethodim, are difficult to formulate, since the active ingredients are sensitive to chemical instability. Many adjuvant materials, surfactants, and even water, for example, can lead to significant chemical degradation. Because chemical stability is commercially desirable, as well as required by the Environmental Protection Agency, it is common in the agricultural chemical industry to formulate cyclohexanedione oxime compounds with an emphasis on chemical stability and good mixing characteristics, rather than on optimization of herbicidal efficacy ([0003]). The herbicidal compositions of Hazen are typically utilized as emulsifiable concentrates, namely they are diluted with water to give an emulsion and applied to weeds, especially in broad-leaf crops (e.g. soybean, cotton, sugarbeet, peanut, alfalfa, potatoes, flax, canola, sunflowers, fruiting vegetables, legume crops, cranberries, cucurbit crops, head and stem brassica crops, leafy brassica crops, lettuce crops, mustard seed, onion, garlic, shallots, leaks, root vegetables, rhubarb, spinach, strawberry, sweet potato, and many other crops) fields. ([0034]). In addition, under practical conditions it can be desirable to mix herbicides to achieve a broader spectrum of weed control, for example to prevent the need to make two separate applications of individual herbicides, such as one to control grass weeds and a second to control broadleaf weeds ([0037]). Clethodim is known to provide excellent control of a wide array of grassy weeds ([0057]).
The teachings of Hazen differ from those of the instantly claimed invention in the Hazen does not explicitly teach 1 to 10% w/w of carfentrazone-ethyl nor a recovery promoting agent comprising an alkyl ester of a dicarboxylic acid and the ratio of claim 1.
Kober discloses oil suspension concentrates based on a cyclohexenone oxime ether lithium salt and their use as crop protection compositions ([0001]). Formulation has a considerable effect on the stability of a crop protection composition. This is particularly important in cases where, owing to instabilities of the active compounds or unfavorable storage conditions, the relevant requirements that a crop protection composition has to meet are particularly high ([0004]). Cyclohexenone oxime ethers (which includes clethodim) and their metal salts are generally known as useful crop protection agents, especially as grass herbicides ([0008]). However, it is also known that herbicides from the substance class of the cyclohexenone oxime ethers (i.e., clethodim) tend to decompose. Particularly critical in this respect is the storage of corresponding crop protection formulations at elevated temperatures for a prolonged period of time ([0009]). Kober found that stability can be achieved in oil suspension concentrates which are based on certain carboxylic esters ([0013]). Accordingly, the oil suspension concentrate of Kober comprises at least one component selected from at least one mono- and/or dicarboxylic ester of the formula (IIa) or (IIb) ([0014]-[0019]). The proportion of mono- and dicarboxylic esters of the formula (IIa) and (IIb) is from 20 to 50% by weight, based on the total weight of the oil suspension concentrate ([0092]). Kober specifically teaches oil suspension concentrates comprising a cyclohexanone oxime ether as an active compound along with DBE-6 or DBE as dicarboxylic esters of formula (IIb) (p. 11, table 2, Ex. 7-9). DBE-6 is dimethyl adipate while DBE is dicarboxylic acid ester mixture (p. 12, table 2), which comprises a mixture of dimethyl glutarate, dimethyl succinate, and dimethyl adipate as evidenced by Cornell University. The oil suspension concentrates comprising DBE-6 and DBE (i.e., Ex. 7-9) were > 98% stable and exhibited the best emulsifying properties (p. 12, table 3).
Zoschke teaches a novel herbicidal synergistic agent which contains a herbicidal active ingredient combination which is suitable for the selective control of undesired plant growth in crops resistant to protoporphyrinogen oxidase inhibitors, such as, maize, sugar beet, soybeans, rapeseed, cotton, sunflowers, cereals, rice and sugar cane. ([0001]). The active ingredients are a) a herbicide that inhibits the action of protoporphyrinogen oxidases in plants, and b) at least one other pesticide selected from the group consisting of herbicides, fungicides and insecticides/acaricides ([0003]). The mixtures of the protoporphyrinogen oxidase inhibitors a) with the co-herbicides b) can be used in unchanged form, however, they are preferably processed in the usual way with the auxiliaries commonly used in formulation technology, such as solvents, solid carriers or surfactants, e.g. into emulsifiable concentrates ([00053]). Specifically, the combination of Carfentrazone-ethyl + Clethodim has proven to be a particularly effective synergistic agent in sugar beet, soybean, rapeseed, cotton, and sunflower crops ([0039]-[0043]).
Hu discloses a paddy field herbicide composition, comprising an active substance clefoxydim and carfentrazone-ethyl. The herbicide composition has an obvious synergistic effect (abstract). The examples of Hu comprise various concentrations of clefoxydim and carfentrazone-ethyl. Examples 1-3 teach 2% carfentrazone-ethyl, examples 4 teaches 8% carfentrazone-ethyl, example 5 teaches 10% carfentrazone-ethyl, and example 6 teaches 1% of carfentrazone-ethyl.
First, it would have been obvious to one of ordinary skill in the art to combine the compositions of Hazen and Kober before the effective filing date of the claimed invention by providing the clethodim herbicide of Hazen with the dicarboxylic esters of Kober to yield the instantly claimed “recovery promoting agent” of claim 1. It would have been prima facie obvious to incorporate the dicarboxylic esters, specifically the DBE, of Kober into the composition of Hazen since these esters are known and routine in the art and such a combination would entail no more than combining prior art elements according to known methods to predictably yield the instant invention. See MPEP 2143. Additionally, cyclohexanedione oxime compounds, such as clethodim, are known to be chemically unstable and difficult to formulate as taught by Hazen and Kober. As such, one of ordinary skill in the art would have been motivated to incorporate the dicarboxylic ester of Kober, specifically DBE, into the composition of Hazen since DBE is taught by Kober to improve formulation stability and emulsifying properties of herbicidal concentrates comprising a cyclohexanedione oxime compound. One of ordinary skill in the art would have had a reasonable expectation of success in combining the compositions of Hazen and Kober since both Hazen and Kober teach herbicidal concentrates containing cyclohexanedione oxime compounds. Regarding the ability of the DBE to serve as a “recovery promoting agent”, since DBE is the same as the recovery promoting agent as instantly claimed, it would inherently possess the recited properties. "Products of identical chemical composition cannot have mutually exclusive properties." See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Secondly, it would have been obvious to further modify the combined composition of Hazen and Kober with the composition of Zoschke before the effective filing date of the claimed invention by adding the carfentrazone-ethyl of Zoschke into the combined herbicide of Hazen and Kober to yield the instantly claimed second herbicide of claim 1. One of ordinary skill in the art would have been motivated to add the carfentrazone-ethyl of Zoschke into the combined herbicide containing clethodim since carfentrazone-ethyl and clethodim are known to have synergistic effects when used together. Additionally, such a combination would entail no more than combining prior art elements according to known methods to predictably yield the instant invention. See MPEP 2143. Hazen teaches that the herbicide composition comprising just clethodim is useful in broad-leaf crop fields, such as sugar beet, soybean, cotton, and sunflowers and Zoschke teaches that clethodim and carfentrazone-ethyl are especially synergetic when used in sugar beet, soybean, rapeseed, cotton, and sunflower crops. One of ordinary skill in the art would have had a reasonable expectation of success in adding carfentrazone-ethyl into the clethodim herbicide of Hazen and Kober since Hazen welcomes the addition of other herbicides to achieve a broader spectrum of weed control and Zoschke teaches using its synergistic mixtures in emulsifiable concentrates with auxiliaries such as solvents and surfactants.
Lastly, it would have been obvious to modify the combined composition of Hazen, Kober, and Zoschke with the teachings of Hu before the effective filing date of the claimed invention to provide carfentrazone-ethyl at the instantly claimed concentration of claim 1. The combined composition of Hazen, Kober, and Zoschke does not specify the amount of carfentrazone-ethyl to include in the herbicidal composition. Hu remedies this by teaching concentrations of carfentrazone-ethyl to include in herbicidal compositions comprising mixtures of carfentrazone-ethyl and a cyclohexenedione oxime. It would have been obvious to incorporate carfentrazone-ethyl at a concentration taught by Hu (i.e., 1%, 2%, 8%, or 10%) in the combined composition of Hazen, Kober, and Zoschke since the combined composition already contains carfentrazone-ethyl as discussed above, and the concentrations taught by Hu are known and effective amounts of carfentrazone-ethyl for use in a herbicide composition, specifically in combination with a cyclohexenedione oxime. Combining prior art elements according to known methods to yield predictable results is considered prima facie obvious. See MPEP 2143. One of ordinary skill in the art would have had a reasonable expectation of success in incorporating carfentrazone-ethyl at a concentration taught by Hu since adjusting the concentration of an active ingredient is known in the art and it would have required no more than routine experimentation to arrive at the taught concentrations. The concentrations of carfentrazone-ethyl taught by Hu (i.e., 1%, 2%, 8%, or 10%) fall within the instantly claimed range of claims 1 (i.e., 1-10%).
Regarding the ratio of the recovery promoting agent and the solvent, as recited in claims 1 and 12, Kober teaches 20 to 50% by weight of the dicarboxylic esters (i.e., the recovery promoting agent) and Hazen teaches 20 to 50% by weight of the methyl esters of C16-C18 fatty acid (i.e., the solvent). It would have been obvious when combining components to incorporate each in their respective amounts taught by the individual references since the components are known and effective at such amounts. Thus, the combined composition would comprise 20 to 50% by weight of the dicarboxylic esters (i.e., a recovery promoting agent) and 20 to 50% by weight of a mixture of the methyl esters of C16-C18 fatty acid (i.e., a solvent). Since the combined composition comprises the solvent and recovery agent at identical range amounts, one would reasonably arrive at a ratio of 1:1 between the two which reads on the ratio of claims 1 and 12. Even in the case where the amount of solvent and/or recovery agent varies within the range of 20 to 50% to give other ratios, one of ordinary skill in the art could have arrived at the instantly claimed ratio of 1:1 through no more than routine experimentation since it is well within the abilities of an ordinary artisan to optimize the ratio of these components in the composition depending on the desired properties of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed ratio of 1:1 through no more than routine experimentation. 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). Furthermore, the amount of dicarboxylic ester (i.e., a recovery promoting agent) influences the stability of the final product as taught by Kober. Stability is considered a results effective parameter and the optimization of a result effective parameter is considered within the skill of the artisan. See, In re Boesch and Slaney (CCPA) 204 USPQ 215. This is what research chemists do, optimization of result-effective variables through routine experimentation (MPEP 2144.05 IIA and B).
The DBE of the combined composition reads on the mixture of dibasic esters of dicarboxylic acid as defined in claims 6-7. The combined composition is an emulsifiable concentrate as taught by Hazen, which reads on claim 13. As discussed above, Kober teaches 20 to 50% by weight of the dicarboxylic esters (i.e., the DBE mixture) and Hazen teaches 20 to 50% by weight of the methyl esters of C16-C18 fatty acid (i.e., the solvent). Both of these amounts fall within or overlap with the ranges of claim 15. 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.
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.
1. Claims 1, 6-7, 12-13, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 9 of copending Application No. 18/013,639 in view of Hazen and Kober. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Hazen, Kober, and Hu.
Copending claims 1 and 7 recite a synergistic herbicidal combination for controlling weeds and undesirable vegetation from non-agricultural land, amenities, orchards, vines, and fruit trees, said combination comprising clethodim and at least one other herbicide selected from the group consisting ofcarfentrazone, carfentrazone-ethyl, pyraflufen and pyraflufen-ethyl. The composition further comprises at least one agrochemically acceptable carrier (copending claim 9).
The copending claims differ from the instant claims in that the copending claims do not recite a recovery promoting agent which comprises an alkyl ester of a dicarboxylic acid nor a solvent as instantly claimed.
Hazen discloses an herbicidal composition comprises (a) 10 to 30% by weight of clethodim; (b) 20 to 50% by weight of a mixture of the methyl esters of C16-C18 fatty acids; (c) 1 to 5% by weight of polyoxyethylene castor oil and/or polyoxyethylene sorbitan monotallate; (d) 0.5 to 3% by weight of calcium dodecylbenzenesulfonate; and (e) 10 to 60% by weight of the aromatic hydrocarbon solvent ([0009]).
Kober discloses oil suspension concentrates based on a cyclohexenone oxime ether lithium salt and their use as crop protection compositions ([0001]). Formulation has a considerable effect on the stability of a crop protection composition. This is particularly important in cases where, owing to instabilities of the active compounds or unfavorable storage conditions, the relevant requirements that a crop protection composition has to meet are particularly high ([0004]). Cyclohexenone oxime ethers and their metal salts are generally known as useful crop protection agents, especially as grass herbicides ([0008]). However, it is also known that herbicides from the substance class of the cyclohexenone oxime ethers tend to decompose. Particularly critical in this respect is the storage of corresponding crop protection formulations at elevated temperatures for a prolonged period of time ([0009]). Kober found that stability can be achieved in oil suspension concentrates which are based on certain carboxylic esters ([0013]), specifically dicarboxylic esters of the formula (IIb) ([0014]-[0019]). Kober specifically teaches oil suspension concentrates comprising a cyclohexanone oxime ether as an active compound along with DBE-6 or DBE as dicarboxylic esters of formula (IIb) (p. 11, table 2, Ex. 7-9). DBE-6 is dimethyl adipate while DBE is dicarboxylic acid ester mixture (p. 12, table 2), which comprises a mixture of dimethyl glutarate, dimethyl succinate, and dimethyl adipate as evidenced by Cornell University. The oil suspension concentrates comprising DBE-6 and DBE (i.e., Ex. 7-9) were > 98% stable and exhibited the best emulsifying properties (p. 12, table 3).
Hu discloses a paddy field herbicide composition, comprising an active substance clefoxydim and carfentrazone-ethyl. The herbicide composition has an obvious synergistic effect (abstract). The examples of Hu comprise various concentrations of clefoxydim and carfentrazone-ethyl. Examples 1-3 teach 2% carfentrazone-ethyl, examples 4 teaches 8% carfentrazone-ethyl, example 5 teaches 10% carfentrazone-ethyl, and example 6 teaches 1% of carfentrazone-ethyl.
It would have been obvious to combine the composition of the copending claims with the compositions of Hazen and Kober to yield a composition comprising clethodim and carfentrazone-ethyl as taught by the copending claims along with the methyl esters of C16-C18 fatty acids of Hazen and the dicarboxylic acid esters of Kober to yield the instantly claimed invention. The copending claims in combination with the prior art teach all the components of the composition as claimed. Therefore, all of the claimed elements were known and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have had a reasonable expectation of success in combining the copending composition with the elements of the prior art since the copending claims welcome the addition of agrochemically acceptable carriers.
It would have also been obvious to modify the combined composition above with the teachings of Hu before the effective filing date of the claimed invention to provide carfentrazone-ethyl at the concentration of Hu (i.e., 1%, 2%, 8%, or 10%). It would have been obvious to incorporate carfentrazone-ethyl at a concentration taught by Hu in the combined composition since the combined composition already contains carfentrazone-ethyl as discussed above, and the concentrations taught by Hu are known and effective amounts of carfentrazone-ethyl for use in a herbicide composition, specifically in combination with a cyclohexenedione oxime. Combining prior art elements according to known methods to yield predictable results is considered prima facie obvious. See MPEP 2143. One of ordinary skill in the art would have had a reasonable expectation of success in incorporating carfentrazone-ethyl at a concentration taught by Hu since adjusting the concentration of an active ingredient is known in the art and it would have required no more than routine experimentation to arrive at the taught concentrations.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive:
(1) Applicant argues against Hazen, Kober, and Zoschke individually, stating that alone none teach or suggest the claimed two-active composition with carfentrazone-ethyl at the recited concentration nor the required solvent systems and ratios (p. 5-7 of Remarks).
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, the combination of clethodim and carfentrazone-ethyl is taught by Zoschke, the amount of carfentrazone-ethyl is taught by Hu, the “recovery promoting agent” is taught by Kober, and the solvent system ratio is suggested by the combination of Hazen and Kober, with one of ordinary skill in the art having the ability to optimize it through no more than routine experimentation. See rejection above.
(2) Applicant argues that Hazen does not teach replacing the explicit aromatic hydrocarbon solvent component with only fatty acid methyl esters. Applicant further argues that Hazen’s required 10-60% aromatic hydrocarbon solvent directly departs from the present claims’ solvent limitations and provides no teaching or suggestion of the claimed solvent/recovery-agent ratio (p. 6 of Remarks).
In response to the above argument, the prior art rejection above does not require replacing all of the hydrocarbon solvent taught by Hazen. The fatty acid methyl ester solvent and the hydrocarbon could both been present and still read on the instantly claimed composition. The ratio as defined by instant claim 1 recites a ratio between “the recovery promoting agent and the solvent”, wherein the composition is previously defined to comprise a “fatty acid methyl ester as a solvent”. Thus, the recitation of “the solvent”, specifically refers to the “fatty acid methyl ester” regardless of other solvents that may be present. Therefore, the fatty acid methyl ester solvent and the hydrocarbon solvent of Hazen could both be present and still read on the instantly claimed composition. Regarding Applicants assertion that Hazen’s teaching of 10-60% aromatic hydrocarbon is required and directly departs from the present claims’ solvent limitation, Examiner disagrees. Hazen teaches that an aromatic hydrocarbon solvent may be used as an additional, optional, component ([0006]). Thus, there is no teaching that such a solvent is required. Additionally, the instant claim uses the term “comprising” which is inclusive of other components.
(3) Applicant argues that a person of ordinary skill in the art, would not have been motivated to import Kober’s OSC stability system into Hazen’s aromatic-solvent EC, and then add carfentrazone-ethyl, in view of Hazen’s explicit caution that mixing herbicides can be problematic due to antagonism between active ingredients. Applicant further argues that simply transplanting Kober’s dibasic esters into Hazen’s emulsifiable concentrate, while also removing Hazen’s aromatic hydrocarbon solvent and selecting only fatty acid methyl esters as the solvent, is not suggested and requires significant reformulation choices that the art does not guide (p. 7-8 of Remarks).
Regarding Applicant’s assertion that a POSITA would not be motivated to import Kober’s OSC stability system into Hazen’s aromatic-solvent EC, Examiner disagrees. The entirety of Hazen revolves around stability improvement and different components used to achieve this. Thus, one of ordinary skill in the art would have been motivated to incorporate any known and effective stabilizing auxiliary, such as the dicarboxylic esters of Kober, with the goal of improving the stability of any agrochemical formulation that seeks this effect.
In response to Applicant’s arguments that a POSITA would not be motivated to add carfentrazone-ethyl since Hazen warns against mixing herbicides with antagonistic effects, the Zoschke reference specifically teaches that clethodim and carfentrazone-ethyl demonstrate synergistic effects, which overcomes any hesitation one would have over potential antagonism.
Furthermore, Applicants assertion that the rejection suggests transplanting the DBEs of Kober while also removing Hazen’s aromatic hydrocarbon solvent and selecting only fatty acid methyl esters as the solvent is an incorrect characterization of the prior art rejection. The prior art rejection above, does not define the substitution or replacement of the hydrocarbon solvent of Hazen with the DBEs of Kober. Additionally, Hazen teaches an aromatic hydrocarbon solvent may be used as an additional, optional, component ([0006]). Thus, there is no teaching that such a solvent is required in the composition of Hazen nor do the instant claims prohibit additional components such as hydrocarbons. The ratio as defined by instant claim 1 recites a ratio between “the recovery promoting agent and the solvent”, wherein the composition is previously defined to comprise a “fatty acid methyl ester as a solvent”. Thus, the recitation of “the solvent” in regards to the ratio, specifically refers to the “fatty acid methyl ester” regardless of other solvents that may be present. Therefore, the fatty acid methyl ester solvent and the hydrocarbon solvent of Hazen could both be present and still read on the instantly claimed composition. As such, the combination of Hazen and Kober does not require significant reformulation as asserted by the Applicant. One of ordinary skill in the art would have understood how to simply add in the DBE of Kober to the composition of Hazen to reach the instantly claimed composition via no more than routine experimentation and the knowledge generally available to one of ordinary skill in the art.
(4) Applicant argues that Hazen, Kober, nor Zoschke teach the 1-10% w/w of carfentrazone-ethyl nor the explicit ratio between the recovery agent and the solvent. Applicant argues that the references do not identify any “results-effective” relationship for a recovery-agent/solvent ratio in the context of clethodim + carfentrazone-ethyl mixtures. Applicant also argues that Hazen nor Zoschke teach the 10-50% w/w of dimethyl glutamate, dimethyl succinate, and dimethyl adipate nor 30-80% w/w of a methyl ester solvent (p. 8 of Remarks).
As discussed in the prior art rejection above, Hu is relied on for teaching the 1-10% w/w of carfentrazone-ethyl. Regarding Applicant’s arguments against the ratio between the recovery-agent and solvent, the amounts of each element are taught by Kober and Hazen, respectively. One of ordinary skill in the art would have therefore arrived at the instantly claimed ratio between the two through no more than routine experimentation. 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). Applicant has not pointed to any evidence that such a ratio is critical, nor that it results in some unexpected improvement. Regarding the “results-effective” nature of the ratio, both Hazen and Kober disclose their respective fatty acid methyl esters as important for stability. Thus, one of ordinary skill in the art would have understood from the general disclosures that the amount of these components would impact stability. Kober teaches its dicarboxylic esters (i.e., DBE, dimethyl glutamate, dimethyl succinate, and dimethyl adipate) at an amount of 20-50% which falls within the above range while Hazen teaches 20-50% of a mixture of methyl esters of C16-C18 fatty acids (i.e., a methyl ester solvent), which overlaps with the above range.
(5) Applicant argues against Hu, stating that Hu discloses carfentrazone-ethyl with clefoxydim rather than instantly claimed clethodim. Applicant further argues that Hu does not teach the recovery promoting agent, solvent, and ratio as instantly claimed (p. 9-10 of Remarks).
As discussed above, Applicant's arguments against Hu individually cannot show nonobviousness when the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Regarding the fact that Hu teaches clefoxydim rather than clethodim, Hu is relied on for teaching known and effective concentrations at which carfentrazone-ethyl is routinely used. Regardless of the second active taught by Hu, carfentrazone-ethyl is known and effective at concentrations between 1 and 10%. Thus, one of ordinary skill in the art would have been reasonably informed to used it at such a concentration in the combined composition. It happens to be a further benefit that this is a known and effective amount when used in combination with an herbicide from the cyclohexanedione oxime class.
Conclusion
No claims are allowed.
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.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616