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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/04/2026 has been entered.
Status of Claims
Amendment filed on 06/04/2026 is acknowledged.
Claims 1 and 5 are amended. Claim 4 remains cancelled. Claim 8 is new.
Claims 1-3 and 5-8 are pending and being examined on merits herein.
Priority
This instant application 18254805, filed on 05/26/2023, is a 371 of PCT/JP2021043748, filed on 11/30/2021, which claims foreign priority to Japan 2020199850, filed on 12/01/2020.
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 1-3 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tohyama et al. (US6537948, 03/25/2003, IDS of 05/26/2023), in view of Bayer (EP3415007, 12/19/2018, translation relied upon below; in record of 02/05/2026).
Tohyama throughout the reference teaches the herbicidal uracil compounds that often exhibit enhancement of herbicidal activity when used in admixture with other herbicides, and in admixture with insecticides, acaricides, nematocides, fungicides, bactericides, plant growth regulators, fertilizers, and soil conditioners (Pg. 50, Lines 45-50).
For claim 1, Tohyama teaches the exact compound as recited in instant claim 1(a) as compound No. 7-8 (Table 7, Column 101, Lines 40-60, at Line 60 No. 7-8) with the method of its production and analysis in production example 23 (Col. 74 bottom-Col. 75 top). Tohyama teaches that the compound is formulated into liquid spray for herbicidal activity (Col. 107, test example 1, lines 19-33), corresponding to liquid pesticidal composition in instant claim 1a.
Tohyama teaches organic solvents can be used, e.g., aliphatic hydrocarbons such as n-hexane, n-heptane; aromatic hydrocarbons such as alkylbenzene (e.g., xylene); ethers such as diethyl ether; ketones such as acetone; esters such as ethyl acetate, butyl acetate; alcohols such as isopropanol, ethylene glycol, and 2-ethoxyethanol; oils; and many others (e.g., Col. 9, Lines 9-24; Col. 13, Lines 15-28; Col. 50, Lines 16-24).
For claims 2-3, Tohyama teaches that surfactant used for emulsification, dispersing, or spreading may include surfactants of the anionic type (corresponding to ionic surfactant), such as alkylsulfates, alkylsulfonates, etc.; and surfactants of the nonionic type, such as polyoxyethylene alkyl ethers, polyoxyethylene alkyl aryl ethers, etc. (Column 50, Lines 25-33). Tohyama exemplifies using polyoxyethylenestyryl phenyl ether and calcium dodecylbenzene-sulfonate as surfactants, xylene and cyclohexanone as organic solvents to make emulsifiable concentrates (Example 2, Col. 106, Lines 45-54), and polyvinyl alcohol (as organic solvent) and water to make flowables, as liquid pesticidal composition (Example 4, Col. 106 bottom – Col. 107 top).
Tohyama does not teach the specific organic solvent species selected from butyl propionate, methyl benzoate, ethyl benzoate, butyl benzoate, benzyl benzoate, dimethyl isosorbide, 2-heptanone, benzyl acetate and butylbiphenyl, as recited in instant claim 1(b) and 5-8.
Bayer throughout the reference teaches liquid pesticide and/or fungicide formulations (e.g., [0002], [0041]-[0044]) containing water-insoluble active ingredients (e.g., [0039]).
Bayer teaches suitable organic solvents including ethyl acetate, benzyl acetate, benzyl benzoate, butyl benzoate ([0046], Pg. 16 top)(corresponding to instant claims 1, 5 and 8), ethers such as dimethyl isosorbide ([0046], Pg. 15, bottom) (corresponding to instant claim 6), ketones such as 2-heptanone ([0046], Pg. 16, bottom)(corresponding to instant claim 7).
Bayer teaches the formulation can contain surfactants to improve biological efficacy (e.g., [0030] such as anionic surfactants (e.g., [0036])(corresponding to ionic surfactant) and nonionic surfactant [0093] (corresponding to instant claims 2-3).
It would have been prima facie obvious for one with ordinary skills in the art prior to filing date to incorporate the teaching from Bayer to select proper solvents to the composition comprising compound No. 7-8 taught by Tohyama to arrive at current invention. Because both Bayer and Tohyama are herbicidal or pesticidal compositions, not only it is routine practice for scientists in the field to do solvent surveys and formulate actives with various solvents, but also Tohyama teaches proper categories of solvents for the composition, e.g., esters, ethers, and ketones for the composition, while Bayer teaches specific solvents from those categories of compounds as proper solvents for water-insoluble actives, it would have provided reasonable expectation of success for an artisan in the field to select proper solvents based the combined teachings of Bayer with Tohyama. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
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 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-4, 6, 9 and 12 of copending Application No. 18254340 in view of Bayer (EP3415007, 12/19/2018, translation relied upon below; in record of 02/05/2026).
Application No. 18254340 recites a solid pesticidal composition comprising a compound represented by the following formula (I), an organic solvent, a surfactant, and a solid carrier (Claim 1), with amounts (Claim 12), wherein the compound is the same as that in instant invention (corresponding to instant claims 1-3).
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It also recites relative content amounts of the compound and solvent in the composition (Claim 2), and the compound represented by the formula (I) is dissolved in the organic solvent (Claims 3 and 6), or surfactant is dissolved in organic solvent (claim 9), wherein the organic solvent comprises one or more solvents selected from the following group A consisting of butyl benzoate, benzyl acetate, dimethyl 2- methylglutarate, tributyl acetylcitrate, diisobutyl adipate, aromatic hydrocarbons, and N,N- dimethyl fatty acid amides (Claim 4) (corresponding to solvent species in instant claims 1, 5 and 8).
Application No. 18254340 doesn’t recite organic solvent species as recited in instant claims 6-7.
Bayer throughout the reference teaches liquid pesticide formulations (e.g., [0002], [0041]-[0044]) containing water-insoluble active ingredients (e.g., [0039]), using organic solvents, esters such as, benzyl acetate, benzyl benzoate, butyl benzoate ([0046], Pg. 16 top)(corresponding to instant claim 5), ethers such as dimethyl isosorbide ([0046], Pg. 15, bottom) (corresponding to instant claim 6), ketones such as 2-heptanone ([0046], Pg. 16, bottom)(corresponding to instant claim 7).
It is prima facie obvious for an artisan in the field to incorporate Bayer’s teaching and select organic solvent species with the composition in application No. 18254340 to arrive at current invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 2 and 18-20 of copending Application No. 18255334 in view of Bayer (EP3415007, 12/19/2018, translation relied upon below; in record of 02/05/2026).
Application No. 18255334 recites a pesticidal composition comprising a compound represented by the formula (I) (the same compound as in instant claim 1), an organic solvent (Claims 2 and 18), a surfactant and water (Claim 2) (corresponding to in instant claim 1), the organic solvent comprises an aromatic hydrocarbon (Claim 19), and the surfactant comprises a nonionic surfactant (Claim 20) (corresponding to instant claims 1-3)
Application No. 18255334 does not recite the organic solvent species as recited in instant claims 1 and 5-8.
Bayer throughout the reference teaches liquid pesticide formulations (e.g., [0002], [0041]-[0044]) containing water-insoluble active ingredients (e.g., [0039]), using organic solvents, esters such as, benzyl acetate, benzyl benzoate, butyl benzoate ([0046], Pg. 16 top)(corresponding to instant claims 1, 5 and 8), ethers such as dimethyl isosorbide ([0046], Pg. 15, bottom) (corresponding to instant claim 6), ketones such as 2-heptanone ([0046], Pg. 16, bottom)(corresponding to instant claim 7).
It is prima facie obvious for an artisan in the field to incorporate Bayer’s teaching and select organic solvent species with the composition in application No. 18255334 to arrive at current invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-2 of copending Application No. 18254321 in view of Bayer (EP3415007, 12/19/2018, translation relied upon below; in record of 02/05/2026).
Application No. 18254321 recites a pesticidal composition comprising a compound represented by the formula (I), a surfactant and a solid carrier (Claim 1) (corresponding to in instant claims 1-3). It also recites that the composition comprises an anionic surfactant (Claim 2).
Application No. 18254321 does not recite organic solvent as recited in instant claims 1 and 5-8.
Bayer throughout the reference teaches liquid pesticide formulations (e.g., [0002], [0041]-[0044]) containing water-insoluble active ingredients (e.g., [0039]), using organic solvents, esters such as, benzyl acetate, benzyl benzoate, butyl benzoate ([0046], Pg. 16 top)(corresponding to instant claims 1, 5 and 8), ethers such as dimethyl isosorbide ([0046], Pg. 15, bottom) (corresponding to instant claim 6), ketones such as 2-heptanone ([0046], Pg. 16, bottom)(corresponding to instant claim 7).
It is prima facie obvious for an artisan in the field to incorporate Bayer’s teaching and select organic solvent species with the composition in application No. 18254321 to arrive at current invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 4, and 6-7 of copending Application No. 18255005 in view of Bayer (EP3415007, 12/19/2018, translation relied upon below; in record of 02/05/2026).
Application No. 18255005 recites a pesticidal composition comprising two or more pesticidal active compounds including a compound represented by the formula (I) (the same compound as in instant claim 1), a hydrophobic organic solvent, a first surfactant and water (Claim 1) (corresponding to in instant claims 1-3). It also recites that the organic solvent can be benzyl acetate (Claim 4) (corresponding to instant claims 1 and 8 ). It recites one or more surfactants can be included in the composition (Claims 5 and 7) (corresponding to instant claims 2-3). The ingredient is dissolved in hydrophobic organic solvent (Claim 6).
Application No. 18255005 does not recite organic solvent species as in instant claims 1 and 5-7.
Bayer throughout the reference teaches liquid pesticide formulations (e.g., [0002], [0041]-[0044]) containing water-insoluble active ingredients (e.g., [0039]), using organic solvents, esters such as, benzyl acetate, benzyl benzoate, butyl benzoate ([0046], Pg. 16 top)(corresponding to instant claims 1, 5 and 8), ethers such as dimethyl isosorbide ([0046], Pg. 15, bottom) (corresponding to instant claim 6), ketones such as 2-heptanone ([0046], Pg. 16, bottom)(corresponding to instant claim 7).
It is prima facie obvious for an artisan in the field to incorporate Bayer’s teaching and select organic solvent species with the composition in application No. 18255005 to arrive at current invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1 and 7-9 of copending Application No. 18255000 in view of Bayer (EP3415007, 12/19/2018, translation relied upon below; in record of 02/05/2026).
Application No. 18255000 recites a pesticidal composition comprising a compound represented by the formula (I) (the same compound as in instant claim 1), a herbicidal active salt, a surfactant, an organic solvent and water, wherein the surfactant comprises nonionic surfactants (Claim 1) (corresponding to in instant claims 1-3). It recites one or more nonionic surfactants can be included in the composition (Claim 7) (corresponding to instant claims 2-3), and the composition can contain organic solvent (claim 8) and organic solvent comprises an aromatic hydrocarbon (Claim 9).
Application No. 18255000 does not recite organic solvent species as in instant claims 1 and 5-8.
Bayer throughout the reference teaches liquid pesticide formulations (e.g., [0002], [0041]-[0044]) containing water-insoluble active ingredients (e.g., [0039]), using organic solvents, esters such as, benzyl acetate, benzyl benzoate, butyl benzoate ([0046], Pg. 16 top)(corresponding to instant claims 1, 5 and 8), ethers such as dimethyl isosorbide ([0046], Pg. 15, bottom) (corresponding to instant claim 6), ketones such as 2-heptanone ([0046], Pg. 16, bottom)(corresponding to instant claim 7).
It is prima facie obvious for an artisan in the field to incorporate Bayer’s teaching and select organic solvent species with the composition in application No. 18255000 to arrive at current invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-3 and 9 of copending Application No. 18255080 in view of Bayer (EP3415007, 12/19/2018, translation relied upon below; in record of 02/05/2026).
Application No. 18255080 recites a pesticidal composition comprising a compound represented by the formula (I) (the same compound as in instant claim 1), a herbicidal active salt, a surfactant, an organic solvent and water, wherein the surfactant comprises nonionic surfactants (Claims 1 and 2) (corresponding to in instant claims 1-3), the organic solvent comprises an aromatic hydrocarbon (Claim 3), compound of formula (I) dissolved in the organic solvent (Claim 9).
Application No. 18255080 does not recite organic solvent species as in instant claims 1 and 5-8.
Bayer throughout the reference teaches liquid pesticide formulations (e.g., [0002], [0041]-[0044]) containing water-insoluble active ingredients (e.g., [0039]), using organic solvents, esters such as, benzyl acetate, benzyl benzoate, butyl benzoate ([0046], Pg. 16 top)(corresponding to instant claims 1, 5 and 8), ethers such as dimethyl isosorbide ([0046], Pg. 15, bottom) (corresponding to instant claim 6), ketones such as 2-heptanone ([0046], Pg. 16, bottom)(corresponding to instant claim 7).
It is prima facie obvious for an artisan in the field to incorporate Bayer’s teaching and select organic solvent species with the composition in application No. 18255080 to arrive at current invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 3, 6 and 9 of copending Application No. 18255035 in view of Bayer (EP3415007, 12/19/2018, translation relied upon below; in record of 02/05/2026).
Application No. 18255035 recites a pesticidal composition comprising a compound represented by the formula (I) (the same compound as in instant claim 1), a herbicidal active salt, surfactants, an organic solvent and water (Claim 1) and surfactant species (Claims 1 and 3) (corresponding to in instant claims 1-3); the organic solvent comprises at least one of an aromatic hydrocarbon and butyl benzoate (Claim 6) (corresponding to organic solvent species in instant claims 1 and 5).
Application No. 18255035 does not recite organic solvent species as in instant claims 6-7 and 8.
Bayer throughout the reference teaches liquid pesticide formulations (e.g., [0002], [0041]-[0044]) containing water-insoluble active ingredients (e.g., [0039]), using organic solvents, esters such as, benzyl acetate, benzyl benzoate, butyl benzoate ([0046], Pg. 16 top)(corresponding to instant claims 1, 5 and 8), ethers such as dimethyl isosorbide ([0046], Pg. 15, bottom) (corresponding to instant claim 6), ketones such as 2-heptanone ([0046], Pg. 16, bottom)(corresponding to instant claim 7).
It is prima facie obvious for an artisan in the field to incorporate Bayer’s teaching and select organic solvent species with the composition in application No. 18255035 to arrive at current invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-3 and 5 of copending Application No. 18254828 in view of Bayer (EP3415007, 12/19/2018, translation relied upon below; in record of 02/05/2026).
Application No. 18254828 recites a liquid pesticidal composition comprising a compound represented by the formula (I) (the same compound as in instant claim 1), at least one surfactant, a solvent having a water solubility of 10 mass% or less at 25 C, and water (Claim 1) and surfactant species (Claims 1 and 3); the solvent comprises an aromatic hydrocarbon (Claim 2), surfactant can be anionic, nonionic or combination thereof (Claims 3 and 5), corresponding to in instant claims 1-3.
Application No. 18254828 does not recite organic solvent species as in instant claims 1 and 5-8.
Bayer throughout the reference teaches liquid pesticide formulations (e.g., [0002], [0041]-[0044]) containing water-insoluble active ingredients (e.g., [0039]), using organic solvents, esters such as, benzyl acetate, benzyl benzoate, butyl benzoate ([0046], Pg. 16 top)(corresponding to instant claims 1, 5 and 8), ethers such as dimethyl isosorbide ([0046], Pg. 15, bottom) (corresponding to instant claim 6), ketones such as 2-heptanone ([0046], Pg. 16, bottom)(corresponding to instant claim 7).
It is prima facie obvious for an artisan in the field to incorporate Bayer’s teaching and select organic solvent species with the composition in application No. 18254828 to arrive at current invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s Remarks/Arguments filed on 06/04/2026 have been fully considered. Rejections have been updated based on prior art Tohyama and Bayer as presented above, and prior art Zen (US20040063583) is removed from this office action, therefore, the arguments related to Zen are moot.
Applicant asserts that the present composition in an emulsifiable concentrate shows unexpected results as attached Declaration of Ai Rusu, while Zen and Bayer provide no teaching or suggestion of their herbicidal efficacy when used in the composition of present claim 1.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. present composition as emulsifiable concentrate, herbicidal efficacy) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Bayer teaches using organic solvents in order to dissolve the water insoluble active ingredients (e.g., [0039]), which would naturally and logically improve the pesticidal or herbicidal activity in liquid compositions. The unexpected results in Declaration of Ai Rusu is responded below in separate session.
Applicant asserts that Zen teaches isoamyl benzoate, Bayer teaches tetrahydrofuran and methyl ethyl ketone as preferred solvents (Pg. 15-16), as shown in Declaration of Ai Rusu, when compared to claimed solvent, the claimed solvent shows surprising effect in performance of the inventive composition in herbicidal efficacy, and thus, the claims are not obvious over the combination of cited prior art references.
Regarding the two selected solvents from Bayer, e.g., tetrahydrofuran and methyl ethyl ketone, there is no evidence to show in Bayer that they are not listed as preferred solvents. All the solvents, including the instantly claimed solvents, e.g., benzyl acetate, benzyl benzoate, butyl benzoate ([0046], Pg. 16 top), dimethyl isosorbide ([0046], Pg. 15, bottom) and 2-heptanone ([0046], Pg. 16 bottom), are listed as suitable solvents for the pesticidal or herbicidal composition. Therefore, the solvents have same weight for artisans in the field to experiment, explore, and select as equal alternatives. Since it is routine practice in the field to experiment and choose proper solvents for water insoluble active agrochemical compounds, it would be obvious to select suitable solvents from the list to test taught by Bayer for reasonable expectation of success. Bayer provides teaching that the organic solvents, such as benzyl acetate, benzyl benzoate, butyl benzoate (which are in instant claims) are suitable organic solvents for the pesticidal or herbicidal composition, and there is no evidence these solvents would not work; on the contrary, these suitable solvents from Bayer work properly for the composition, as evidenced by the applicant’s Declaration. Response to the Declaration is presented below in separate session.
Applicant asserts that double patenting rejections should be withdrawn because the art rejections should be withdrawn.
Art rejections are updated, and they are not withdrawn. The previous double patenting rejections are maintained. In addition, extended searches discover some more pending applications that require nonstatutory double patenting rejections.
Please refer to the entire office action as a complete response to remarks/arguments.
Declarations Under 37 CFR 1.132
Ai Rusu provided a declaration under 37 CFR 1.132, filed on 06/04/2026.
The declaration meets the formal requirements.
A declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations:
1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)),
Examiner has fully considered the declaration and acknowledges that the declaration presents side-by-side comparisons of the organic solvent species as single variable comparison for the compositions.
2) whether the Declaration presents a comparison to the closest art,
The comparison in the declaration presents organic solvent species benzyl acetate (Composition I for instant application, hereafter “IA”), isoamyl benzoate (Comparative Composition I, hereafter “Com I”), tetrahydrofuran (Comparative Composition II, hereafter “Com II”), methyl ethyl ketone (Comparative Composition III, hereafter “Com III”). Applicant states that the benzyl acetate as the instantly claimed organic solvent, while the other three solvents are the preferrable organic solvents taken as comparable species from prior art, such as, isoamyl benzoate from Zen, tetrahydrofuran and methyl ethyl ketone from Bayer are the preferred organic solvents taught by prior art (as presented in applicant’s remarks/arguments filed on 06/04/2026). Because Zen is no longer used in the art rejections as presented in this office action, the focus is on Com II, III with IA. Firstly, as discussed above, Bayer does not indicate these two, tetrahydrofuran and methyl ethyl ketone, are the preferrable organic solvents among the suitable organic solvents. Secondly, Bayer also discloses the organic solvent benzyl acetate ([0046], pg. 16 top) along with benzyl benzoate, butyl benzoate, dimethyl isosorbide, as well as 2-heptanone. All of these instantly claimed organic solvents are present as suitable organic solvents in Bayer. Therefore, the comparison between IA using benzyl acetate as instantly claimed agent, while indicating tetrahydrofuran and methyl ethyl ketone as the comparable agents from Bayer in Com II and III, cannot differentiate instant claim from prior art, because the instantly claimed organic solvent which being tested belongs to the suitable organic solvent taught by Bayer. Consequently, the comparison does not present a comparison between current invention to closest prior art.
3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)),
The tested organic solvent is benzyl acetate, while the claimed organic solvents include methyl benzoate, ethyl benzoate, butyl benzoate, benzyl benzoate, dimethyl isosorbide, 2-heptanone, benzyl acetate, and butyl biphenyl. The only tested organic solvent species in claim is benzyl acetate, therefore, the declaration is not commensurate in scope with the scope of the claims. Moreover, there is discrepancy in the composition format, current composition is a liquid pesticidal composition, while the tested is a herbicidal emulsifiable concentrate.
4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)).
The result of the declaration shows a herbicidal efficacy difference between IA and Com II/III, as 65 vs. 53/38, 58 vs. 30/38 to barnyardgrass and ryegrass respectively. There is no statistical analysis to show significance. After all, the results also confirm that benzyl acetate, which is also taught by Bayer, is suitable for the composition to generate good efficacy.
In conclusion, the Declaration fails to differentiate instantly claimed organic solvents from prior art, and fails to demonstrate the instantly claimed organic solvents provide unexpected results.
Conclusion
No claims are allowed.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
