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 .
Claims 1, 6-7, 10, 12-14, 17-18, and 24 are pending in this application.
Withdrawn grounds of rejection
The outstanding ground of rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the amendment to the claims filed on 11/20/2025.
The outstanding ground of rejection under 35 U.S.C. 102(a)(1) over WO 2016/196130 is withdrawn, because WO 2016/196130 does not disclose a specific composition embodiment that comprises clethodim and a stabilizer system that contains “sorbitan fatty acid ester” as required by the amendment to the claims filed on 11/20/2025.
The outstanding ground of rejection under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hazen et al. (US 5,084,087; hereinafter, Hazen) is withdrawn, because Hazen et al. do not disclose a specific composition embodiment that comprises clethodim and a stabilizer system that contains “sorbitan fatty acid ester” as required by the amendment to the claims filed on 11/20/2025.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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.
Claim 1 is 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.
Second to the last line of claim 1 recites “the cyclohexenedione oxime herbicide” (emphasis added). This is clearly incorrect and lacks antecedent basis because the previous recitation of the herbicide in claim 1 was “cyclohexanedione” (emphasis added).
35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 17 and 18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
(1) Dependent claim 17 encompasses about 0.01% w/w to about 50% w/w of dialkyl metal sulfosuccinate and about 0.01% w/w to about 50% w/w of the non-ionic surfactant. However, independent claim 1 requires at least 0.1% w/w of the stabilizer system, so 0.01% w/w of the dependent claim 17 is broader than the independent claim.
Consequently, claim 17 fails to include all the limitations of the claim upon which it depends.
(2) Independent claim 1 was amended to require 0.1-60% stabilizer system, wherein ratio of dialkyl metal sulfosuccinate to the non-ionic surfactant is in a ratio of 1:5 to 5:1. Dependent claim 18 is directed to a process of preparing the stable herbicidal composition of claim 1, but the process fails to recite sufficient steps that would obtain said percentage of the stabilizer system and said ratio of dialkyl metal sulfosuccinate to non-ionic surfactant. Consequently, claim 18 fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
35 U.S.C. 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.
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, 10, 12-14, 17-18, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/196130 in view of Da Silva et al. (US 2022/0030858; hereinafter, Da Silva).
WO 2016/196130 discloses herbicidal compositions having improved storage stability comprising 0.1-95 wt%, including 10-70 wt%, of cyclohexanedione oxime herbicide such as clethodim, 0.1-30 wt%, including 0.1-15 wt%, of a stabilizing surfactant that can be a nonionic surfactant, and one or more adjuvants such as an emulsifier type of surfactant that keeps an emulsion well dispersed, e.g., aerosol OT-100 (paragraphs 2-8, 20, 27-31; claims 1-3). Aerosol OT-100 is sodium dioctyl sulfosuccinate (Table 1 on page 19, reproduced in part with markings below):
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Surfactants of WO 2016/196130 are disclosed as “stabilizing surfactant,” which confer stabilizing effects on the cyclohexanedione oxime (paragraphs 6, 16), and they include ethoxylated sorbitan fatty acid esters (claim 15; paragraphs 8, 29). The herbicidal composition can be formulated as an emulsifiable concentrate (paragraph 33). The formulation can be produced by mixing stabilizers with diluent, solvent, and adjuvants, to which the cyclohexanedione oxime herbicide is added at the end and blended until the formulation is homogeneous (paragraphs 40-41).
WO 2016/196130 further discloses emulsifiable concentrates in Tables 2 and 3 (pages 20-21) that have the following ingredients (see page 16: “other formulations were prepared in a similar way but changed surfactants …”):
E-2
(%)
E-3
(%)
E-4
(%)
E-5
(%)
E-13
(%)
E-14
(%)
E-15
(%)
E-16
(%)
Clethodim
36
36
36
36
36
36
36
36
Aromatic solvent
54
54
54
54
54
54
54
54
Genapol XM060
8
7
6
5
Aerosol OT-100
2
3
4
5
2
3
4
2
Soprophor BSU
8
7
6
9.6
Ratio of
Aerosol OT-100 to Genapol XM060
1:4
1:2.3
1:1.5
1:1
Ratio of
Aerosol OT-100 to Soprophor BSU
1:4
1:2.3
1:1.5
1:4.8
* Genapol is a methyl end capped fatty alcohol polyglycol ether, a nonionic surfactant
* Aerosol OT-100 is sodium dioctyl sulfosuccinate
* Soprophor BSU is tristyrylphenol ethoxylate, a nonionic surfactant
See also E-23 in Table 5, wherein the nonionic surfactant is Synperonic A20, which is a polyoxyethylene C12-15 alcohol, i.e., an alcohol ethoxylate (page 21). The surfactants of WO 2016/196130 are disclosed as “stabilizing surfactant,” which confer stabilizing effects on the cyclohexanedione oxime (paragraphs 6, 16).
Da Silva (US 2022/0030858) discloses stable compositions of cyclohexanedione oxime herbicides such as clethodim comprising 1-20 wt%, including 5 wt%, of nonionic surfactant such as sorbitan ester ethoxylates, polyoxyethylene sorbitan monooleate, wherein ethoxylation comprises at least 20 EO, e.g., polysorbate 80 (paragraphs 20, 118-120, 137, 148, 200-201, 247-248, 291, 321, 441-442). 1-5 wt% polysorbate 80 is disclosed (claim 22).
WO 2016/196130 does not explicitly exemplify the claimed emulsifiable concentrate composition comprising clethodim and stabilizer system comprising a dialkyl metal sulfosuccinate and sorbitan fatty acid ester (1:5 to 5:1 ratio), as claimed. However, for the reasons set forth below, such composition and method of preparing would have been obvious to the ordinary skilled artisan.
(1) 0.1-60% w/w stabilizer system comprising dialkyl metal sulfosuccinate + sorbitan fatty acid ester in a ratio of 1:5 to 5:1
(a) Dialkyl metal sulfosuccinate: WO 2016/196130 discloses Aerosol OT-100, which is sodium dioctyl sulfosuccinate, as discussed above. Examples show Aerosol OT-100 used at 2 to 5% (E-2 to E-5, E-13 to E16 in Tables 2-3).
(b) Sorbitan fatty acid ester:
(i) Scope of “sorbitan fatty acid ester”: Applicant’s specification discloses the following about the scope of “sorbitan fatty acid ester” (page 11, lines 12-21) –
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727
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Also, specification page 24 discusses the effect of various ratios of dialkyl metal sulfosuccinate to sorbitan fatty ester, wherein the tested sorbitan fatty acid ester is polysorbate 80. Additionally, original claim 10 is further evidence that “sorbitan fatty acid ester” encompasses polysorbates. Clearly and without a doubt, when Applicant recites “fatty acid ester,” one having ordinary skill in the art would have understood its scope to include ethoxylated or polyoxyethylene sorbitan fatty acid esters, e.g., polysorbates.
(ii) Prior art teachings of sorbitan fatty acid ester: WO 2016/196130 teaches ethoxylated sorbitan fatty acid esters as suitable nonionic surfactants for formulating stable compositions of cyclohexanedione oxime herbicides such as clethodim, and Da Silva is evidence of prior art formulations of cyclohexanedione oxime herbicides such as clethodim with polysorbates (which are ethoxylated sorbitan fatty acid esters) such as polysorbate 80.
(iii) 1:5 to 5:1 ratio, including 1:1, 2:1, 1:1: Regarding the claimed ratios of dialkyl metal sulfosuccinate to sorbitan fatty acid ester, the ordinary skilled artisan would have found such ratios obvious from 1-5 wt% of the emulsifier type of surfactant aerosol OT-100 (sodium dioctyl sulfosuccinate) taught by WO 2016/196130, taken with similar amounts taught by WO 2016/196130 for nonionic surfactants (compositions E-2 to E-5 and E-13 to E-16) and Da Silva for nonionic surfactants, including sorbitan fatty acid esters such as polysorbate 80. Also, WO 2016/196130 discloses 3:7 ratio (~1:2.33) of ionic to nonionic surfactants achieved the best emulsion stability, which is additionally suggestive of the claimed ratio (Page 17, Examples 2 and 3).
(2) A “stable” herbicidal emulsifiable concentrate (EC) composition
Applicant’s specification defines “stable” as follows (page 5, lines 25-26):
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54
716
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Thus, “stable” means chemically stable, physically stable, or chemically and physically stable.
WO 2016/196130 teaches emulsifiable concentrate (EC) form (paragraphs 10, 33; claim 26), and Tables 2, 3, and 5 exemplify EC form.
WO 2016/196130 teaches and exemplifies emulsion stability, i.e., physical stability (see e.g., Tables 2, 3, and 5). Chemical and/or physical stability is also disclosed by WO 2016/196130 (abstract; paragraphs 22). Reduced degradation as compared to unstabilized composition is disclosed (paragraph 22).
Regarding claim 18, which is directed to a process of preparing a stable herbicidal composition, WO 2016/196130 does not provide an example that explicitly recites the claimed steps. However, WO 2016/196130 teaches mixing its stabilizer surfactants such as ethoxylated sorbitan fatty acid esters with diluent, solvent, and adjuvants, to which the cyclohexanedione oxime herbicide such as clethodim is added at the end and blended until the formulation is homogeneous (paragraphs 40-41). Thus, the claimed process of preparing would have been obvious to the ordinary skilled artisan.
Regarding claim 24, which is directed to the composition of claim 1 for controlling weeds, WO 2016/196130 teaches controlling weeds by applying to a weed, crop, or habitat area (paragraphs 11, 14, 42, 45-50).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Specification data
Results disclosed in specification Tables 1 to 6 and discussions relative thereto set forth on specification pages 21-25 are noted. These results are not sufficient to outweigh the evidence of obviousness, supra, and they are not commensurate in scope with that of the claimed subject matter for the following reasons.
(1) All the inventive compositions contain a polysorbate, which is a polyoxyethylene sorbitan fatty acid ester. The claims are not so limited. Evidence of nonobviousness, if any, must be commensurate in scope with that of the claimed subject matter. In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Lindner, 173 USPQ 356, 358 (CCPA 1972).
(2) All the inventive compositions contain at least 2.5% w/w and no more than 8.33% w/w dialkyl metal sulfosuccinate. Claim 1 recites 0.1-60% w/w stabilizer system, so dialkyl sulfosuccinate can be present from 0.1 to 50% w/w, given the ratio requirement. Results obtained with approximately 12-14% clethodim + 2.5 to 8.33% dialkyl metal sulfosuccinate, as here, are not predictive of results for much greater quantity of clethodim (more to stabilize) such as 90% clethodim or much lesser quantity of dialkyl metal sulfosuccinate (much less for stabilizing) such as 0.1%. Evidence of nonobviousness, if any, must be commensurate in scope with that of the claimed subject matter. Kulling, 14 USPQ2d at 1058 (Fed. Cir. 1990); Lindner, 173 USPQ at 358 (CCPA 1972).
(3) Table 6, which purports to show optimization of stabilization system, shows all the compositions to contain significant amount of solvent + a substance identified only as “Agent 2416-21.” Together, they make up more than 75% of the composition. The claims fail to recite these ingredients. Evidence of nonobviousness, if any, must be commensurate in scope with that of the claimed subject matter. Kulling, 14 USPQ2d at 1058 (Fed. Cir. 1990); Lindner, 173 USPQ at 358 (CCPA 1972).
Response to Applicant’s arguments:
Applicant’s arguments filed on 11/20/2025 have been given due consideration but they were deemed unpersuasive for the following reasons.
Applicant argues that WO 2016/196130 discloses Aerosol OT-100 as an emulsifier but does not “identify any of these emulsifiers in the reference as a ‘dialkyl metal sulfosuccinate,’ nor does it disclose using any sulfosuccinate at all within a stabilizer system.” This is clearly erroneous. WO 2016/196130 explicitly identifies Aerosol OT-100 as sodium dioctyl sulfosuccinate on its page 19. See the above reproduced portion of page 19 of WO 2016/196130. Further, WO 2016/196130 teaches that emulsifiers are used to “keep emulsion well dispersed” (paragraph 31), which amply suggests stabilizing functionality. Prior art is not required to use the same terminology as Applicant when it teaches the same exact ingredient.
Applicant also argues that the claims require a sorbitan fatty acid ester, whereas WO 2016/196130 discloses ethoxylated sorbitan fatty acid ester. Thus, Applicant reasons, WO 2016/196130 “does not directly and unambiguously disclose non-ethoxylated sorbitan fatty acid esters.” The Examiner cannot agree for the reasons already detailed above. First, the claims do not require non-ethoxylated sorbitan fatty acid esters. Second, Applicant defines and uses the term “sorbitan fatty acid ester” as including ethoxylated sorbitan fatty acid ester, e.g., polysorbates (specification page 11, lines 12-21; page 24; original claim 10). Third, the only experimental data in the specification are directed to composition that used ethoxylated sorbitan fatty acid esters. Clearly Applicant has failed to appreciate the actual scope of claim terminology.
Applicant argues that Da Silva (US 2022/0030858) “affirmatively counsels away from incorporating any ionic surfactant—such as a dialkyl metal sulfosuccinate—into the stability-conferring system at all, must less pairing it with a sorbitan fatty acid ester” at the claimed ratios. According to Applicant, Da Silva repeatedly emphasizes embodiments that are “substantially free of ionic surfactant” or “free of ionic surfactant.” The Examiner maintains that Da Silva teaches many other embodiments that are not limited as characterized by Applicant. For example, Da Silva’s first embodiment is as follows, which does not exclude anionic surfactants:
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Disclosed specific embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 169 USPQ 423 (CCPA 1971).
For these reasons, Applicants’ arguments are deemed unpersuasive, and this ground of rejection must be applied again. No claim is 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699