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 .
DETAILED ACTION
The office acknowledges Applicants filing of the claim amendments and arguments on 12/17/2025 in response to the office action dated 11/3/2025.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. Arguments, which are directed to withdrawn rejections, are thus rendered moot. The arguments in regards to the reiterated rejections/references from the previous office action have been fully considered and are addressed below. In view of Applicant's claim amendments, the following rejections are either reiterated or newly applied. Accordingly the actin is made final. Claims 4, 6-8 has been cancelled. Claims 1-3, 5 are pending and are examined based on the merits herein.
Response to Applicants Arguments
Tohyama (JP4797296B2)
Applicants argue that “The Examiner has also noted that the emulsion was disclosed to be diluted with water for application to plants but noted that the amount of water in the diluted emulsion to be applied to plants was far from the range of 0.05-3.14 mass% as in amended claim 1”.
In response, Applicants have not provided any data or evidence showing that the diluted emulsion of Tohyama to be applied was far from the range of 0.05-3.14. Further the instant claims are to a liquid pesticidal composition that can be in the form of concentrate emulsion. Tohyama is explicit in teaching compositions comprising the active ingredient as emulsions, wettable powders, suspensions, concentrated emulsions, granulated wettable powders which can be diluted for spraying. As to the amount of water, it is noted that the emulsion or concentrated emulsions or wettable powders has no or minimal amount of water (from the solvents or surfactants), which may be between 0.05%- 3.3 % mass before any dilution. Applicants have not provided any data or evidence to show that these forms contain water above 3.3%. Further depending on the amounts of the components in the composition, the nature of the solvent and surfactant the amount of water can be adjusted and it is routine. It is within the skill of an artisan to prepare a concentrate emulsion with little or no water initially and arrive at the claimed liquid composition. Thus the claims would have been obvious over Tohyama’s teachings.
As to Applicants arguments in regards to the examples 1-15 showing results with no precipitate when the water amount ranged from 0.05-3,14 mass %, it is noted that the examples are to very specific solvent (aromatic 200 ND fluid) and surfactants (Phenylsulfonate CAL and Emulsogen TS 290) in the examples. However the instant claims are not limited to those agents but includes any surfactant and a solvent with a water solubility at 25 degrees C of 10% mass or above. The solvent(s) or the surfactant(s) may contain negligible amount of water, e.g. 0.05% or it is within the skilled artisan to adjust the amount of water in a composition and it is routine.
Sada (WO 2018016635)
Applicants argue that “Similar to Tohyama, Sada also does not disclose or suggest adjusting the amount of water in the composition by adding water to an EC containing compound (I).Therefore, it is not obvious to arrive at the claimed invention from the teachings of Sada for the similar reasons as set forth above in regard to the rejection over Tohyama.
Sada teach herbicidal composition comprising compound 1 and the formulations include emulsions, wettable powder, wettable granules etc. The instant claims are to a liquid pesticidal composition that can be in the form of concentrate emulsion or wettable powder or wettable granules as taught by Sada. As to the amount of water, it is noted that the emulsion or concentrated emulsions or wettable powders or wettable granules has no or minimal amount of water (from the solvents or surfactants), which may be between 0.05%- 3.3 % mass before any dilution. Applicants have not provided any data or evidence to show that these forms contain water above 3.3%. Further depending on the amounts of the components in the composition, the nature of the solvent and surfactant the amount of water can be adjusted and it is routine. It is within the skill of an artisan to prepare a concentrate emulsion with little or no water initially and arrive at the claimed liquid composition. Thus the claims would have been obvious over Sada’s teachings.
ODP rejections:
Applicants argue that the claims of applications 18/255,343; 18/255,000; 18/255,334; 18/255,035; and 18/255,005 are different from the present claims and do not recite, for example, the claimed content of water in a composition. As explained above, the claimed composition provides advantageous effects which are not foreseeable based on the claims of co-pending applications.
In response, the reference claims of the co-pending applications recite the limitation of ‘water’ in the liquid pesticidal composition comprising the same active agent, surfactant and solvent. Though the range is not explicitly taught it can range from 0-100% and the range of 0.05-3.3% mass of water (as instantly claimed) falls within that range. It is within the skill of an artisan to routinely adjust the amount of water based on the ingredients in a composition and to arrive at highly concentrated or diluted formulations. Hence the instantly claimed composition would have been obvious over the reference claims.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3, 5 are rejected under 35 U.S.C. 103 as being unpatentable over
Tohyama (JP4797296B2, and JP4797296B2 English Translation).
Tohyama teach pyridone compounds and its compositions comprising the following formula:
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wherein R3=R4= halogen (F, Cl) and R6 is C1-C6 alkoxy (See English translation, page 1, para 1, technical field),
It is noted that the reference teaches the compound of formula I of the instant claims in page 29, compound 3 (original JP document).
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(compound of the instant claims)
It is further taught in Example 2 of the reference, the composition comprises 10 parts of the compound (1-84, example compound 3), 14 parts of polyoxyethylene styrylphenyl ether, 6 parts of calcium dodecylbenzenesulfonate, 35 parts of xylene and 35 parts of cyclohexanone are mixed well to obtain each emulsion and predetermined water added to the emulsion; the emulsion can be diluted with water for spraying to plants (See p 13, last para of the translation or p 32-33 of the original document). The reference teaches that the novel pyridine compound [e] having excellent herbicidal activity (see p1, para 1, English translation).
Tohyama explicitly teach that “When the pyridine compound [e] and the pyridone compound [a] are used as the active ingredients of the herbicide, the treatment amount varies depending on weather conditions, formulation form, treatment time, treatment method, soil condition, target crop, target weed. The amount is usually 0.01 g to 20000 g, preferably 1 g to 12000 g per hectare. Emulsions, wettable powders, suspensions, concentrated emulsions, granulated wettable powders, etc. (See p , lines 34-36, p 10 of the translation, p 24 of the original document)
A person skilled in the art before the effective filing date of the invention would have found it obvious to arrive at the instantly claimed liquid claimed composition from the teachings of the prior art because the reference teaches comprising the compound of formula I, solvent (xylene and cyclohexane, aromatic hydrocarbon solvent) and a surfactant, calcium dodecylbenzenesulfonate. In regards to solvent, the claims have been examined based on the definition that the solvent, with water solubility at 25*C of 10 mass% or less is ‘hydrophobic solvent’ (e.g. xylene) (See Specification, [0012]. [0013], [0015]). As to the amount of water, it is noted that the emulsion has no or minimal amount of water (from the solvents), which may be less than 3.3 % mass. It is within the skill of an artisan to adjust the amount of water in the composition. Also, the reference teaches adding water for dilution before spraying to plants. Tohyama explicitly teach that active ingredient can be in the amount of 0.01 g to 20000 g in the composition of emulsions, wettable powders, suspensions, concentrated emulsions, granulated wettable powders, etc. and the solution is diluted with 10 to 1000 liters of water. Depending on the amounts of the components in the composition, the nature of the solvent and surfactant the amount of water can be adjusted and it is routine. As to the surfactant calcium dodecylbenzene sulfonate, it is an anionic surfactant (see Specification [0023], examples of the anionic surfactant include, dodecylbenzene sulfonate). A person skilled in the art would have been motivated to arrive at the claimed pesticidal composition with a reasonable amount of success and to use the same in controlling pests. Thus claims 1-3, 5 are addressed.
Claim(s) 1-3, 5 are rejected under 35 U.S.C. 103 as being unpatentable over Sada (WO 2018016635, English translation), Zen (EP0839448A1) and Solvesso (Safety Data sheet, 14 Aug 2020).
Sada teach the following compound has excellent weed control effect, its use as a herbicidal composition (See claims 1-5).
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The reference teach adding adjuvants to the composition. The type of adjuvant is not particularly limited, but is oil-based such as Agri-Dex and MSO, nonionic (such as ester or ether of polyoxyethylene) such as Induce, anionic (such as substituted sulfonate) such as Gramein S, Genamine T Examples thereof include cationic systems such as 200BM (polyoxyethylene amine) and organic silicon systems such as Silwett L77 (p 3 of English translation, para 6). In example 5, it is taught that formulation containing Compound X (Compound X 5 parts by weight, Geronol FF / 4-E (manufactured by Rhodia) 2 parts by weight, Geronol FF / 6-E (manufactured by Rhodia) 8 parts by weight, Solvesso 200 (manufactured by Exxon Mobile). The formulations include wettable granules, wettable granule powders, emulsion (p 2, para 7 of English translation) The wettable granule is mixed with water for spraying the herbicidal composition (See page 7 of English translation).
Zen has been cited to teach that Geronol FF-4-E is a surfactant containing 50 wt% calcium dodecylbenzenesulfonate, (manufactured by Rhone Poulenc) (See Formulation Example 1, p 5). It is noted that surfactant, Geronol FF-4-E and Solvesso 150 solvent are used in formulation of the pesticidal composition (See Example 1).
Solvesso document has been cited to teach that Solvesso 200 is an aromatic hydrocarbon solvent (See p 1, Section 1).
A person skilled in the art before the effective filing date of the invention would have found it obvious to arrive at the instantly claimed liquid claimed composition from the teachings of the prior art because the reference teaches comprising the compound of formula I, solvent (Solvesso 200) and a surfactant, Geronol FF-4-E (calcium dodecylbenzenesulfonate). In regards to solvent, the claims have been examined based on the definition that the solvent, with water solubility at 25*C of 10 mass% or less is ‘hydrophobic solvent’ (See Specification, [0012]). As to the amount of water, it is noted that the wettable granules or wettable powder or emulsion has no or minimal amount of water (from the solvents), which may be less than 3.3 % mass. It is within the skill of an artisan to adjust the amount of water in the composition. Further depending on the amounts of the components in the composition, the nature of the solvent and surfactant the amount of water can be adjusted and it is routine. Further reference teaches adding water for dilution before spraying to plants. As to the surfactant calcium dodecylbenzene sulfonate, it is an anionic surfactant (see Specification [0023], examples of the anionic surfactant include, dodecylbenzenesulfonate). A person skilled in the art would have been motivated to arrive at the claimed pesticidal composition with a reasonable amount of success and to use the same in controlling pests. Thus claims 1-8 are addressed. For the sake of compact prosecution claims 3, 5 has been examined based on the interpretation that the surfactant is selected from the group consisting of anionic and nonionic surfactants.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of co-pending Application No. 18255343 (‘343) or claims 1-9 of co-pending Application No. 18255000 (‘000) or claims 1-9, 12-17 of co-pending Application No. 18255334 (‘334) or claims 1-6 of co-pending Application No. 18255035 (‘035) or claims 1-5 of co-pending Application No. 18255005 (‘005).
The instant claims are directed to a liquid pesticidal composition comprising: (a) a compound represented by the following formula (I):
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(b) a solvent having a water solubility at 250C of 10 mass% or less, (c) at least one surfactant, and (d) from 0.05 mass% to 3.14 mass% of water.
‘343 reference claims are directed to:
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The dependent claims are limited to specific particle size, solvent being aromatic hydrocarbon, and specific types of surfactants.
‘000 reference claims are directed to:
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The dependent claims are limited to specific salt(s) of the herbicidal active, surfactants, e.g. nonionic surfactant, oil phase comprising organic solvent, e.g. aromatic hydrocarbon.
‘334 reference claims are directed to:
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The dependent claims are limited to specific pH, herbicidal active salts, surfactant is limited to nonionic surfactant, oil phase comprises organic solvent, e.g. aromatic hydrocarbon.
‘035 reference claims are directed to:
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The dependent claims are limited to specific surfactants, pesticidal actives and organic solvent is at least one of an aromatic hydrocarbon and butyl benzoate.
‘005 reference claims are directed to:
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The dependent claims are limited to specific second pesticidal active agents, specific surfactants.
The instantly claimed liquid pesticidal composition would have been obvious over the reference claims because the reference claims teaches a pesticidal composition comprising the same compound, formula I, solvent (water solubility at 25 deg of 10 mass % or less, a surfactant, e.g. anionic, ionic and water. Though the amount of water is not explicitly taught it is within the skill of an artisan to adjust the amount and it is routine. Thus claims 1-8 are addressed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMAMAHESWARI RAMACHANDRAN whose telephone number is (571)272-9926. The examiner can normally be reached M-F- 8:30-5:00 PM (PST).
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/Umamaheswari Ramachandran/Primary Examiner, Art Unit 1627