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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the formula (I)" in line. There is insufficient antecedent basis for this limitation in the claim. Claims 2-9 are rejected due to their dependence on claim 1.
For examination purposes claim 1 is interpreted as “A pesticidal composition comprising a compound represented by
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.
Claims 1-2 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fowler (US 2010/0234230) in view of Li (US 2015/0105254) as evidenced by ExxonMobil (“ISOPAR V SDS”) and Summers et al. (Fuel, 2022, Vol. 324, 124817).
Claim 1 is drawn to a pesticidal composition comprising a compound represented by formula (I), an herbicidal active salt, an organic solvent having a water solubility at 25°C of 10 mass% or less, a surfactant, and water, wherein
the surfactant comprises one or more nonionic surfactants selected from a group (A),
[Formula I]
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200
400
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Greyscale
group (A): the group including polyoxyethylene fatty acid esters having the number of added EO exceeding 8.
Claim 2 is drawn to the pesticidal composition of claim 1, wherein the herbicidal active salt comprises an herbicidal active carboxylate.
Claim 7 is drawn to the pesticidal composition of claim 1, wherein the surfactant is one or more nonionic surfactants selected from the group (A)
Fowler teaches pesticidal compositions (Abstract) including composition G (Table 1 on pg. 12) which comprises K glyphosate (i.e., an herbicidal active carboxylate salt); the organic solvent IsoparTM V; herbicide (I), corresponding to a compound of instantly claimed formula (I); and water. As evidenced by ExxonMobil, IsoparTM V has negligible solubility in water (Sec. 9 on pg. 6), overlapping with the instantly claimed range of 10 mass% or less.
As such, Fowler teaches a pesticidal composition comprising a compound represented by formula (I), an herbicidal active carboxylate salt, an organic solvent having a water solubility at 25°C of 10mass% or less, and water.
The composition of Fowler differs from the instantly claimed composition in the following ways:
the composition of Fowler does not comprise a non-ionic surfactant of instantly claimed group (A).
Yet, as to 1: Fowler further teaches the compositions further comprising surfactants at higher levels to maximize the biological efficacy of the pesticides (Par. [0085]), indicating that a surfactant can improve the efficacy of the pesticides.
Li teaches similar pesticide compositions comprising a water-soluble salt of an herbicide and a water-insoluble pesticide (Abstract). Li further teaches the compositions comprising a surfactant (Par. [0012]), preferably AtloxTM 4912 (Par. [0072]).
And as evidenced by Summers et al. in Fig. 1 (pg. 2), AtloxTM 4912 comprises a polyoxyethylene fatty acid ester having 34 ethylene oxide units, overlapping with the instantly claimed range of more than 8.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Fowler to include the surfactant AtloxTM 4912. It would have been obvious to combine the known pesticide composition with the known surfactant suitable for use in similar pesticide compositions to yield the predictable result of a pesticidal composition with higher efficacy, with a reasonable expectation of success.
Based on all of the foregoing, claims 1-2 and 7 are rejected as prima facie obvious.
Claim 8 is drawn to the pesticidal composition of claim 1, wherein the pesticidal composition contains an aqueous phase and particles of an oil phase dispersed in the aqueous phase, wherein
the oil phase contains the organic solvent and the compound represented by the formula (I) dissolved or suspended in the organic solvent.
Fowler further teach in Example 5 (Par. [0138]) dispersing the herbicide of formula (I) in the organic solvent IsoparTM V and forming an emulsion of the organic solvent in water.
As such, Fowler teaches the composition comprising an aqueous phase and particles of an oil phase dispersed in the aqueous phase, wherein the oil phase contains the organic solvent and the compound represented by the formula (I) suspended in the organic solvent.
As such, claim 8 is rejected as prima facie obvious.
Claim 9 is drawn to the pesticidal composition of claim 1, wherein the organic solvent comprises an aromatic hydrocarbon.
Fowler further teaches the organic solvent comprising an aromatic solvent such as including toluene and xylene (Par. [0041]).
As such, claim 9 is rejected as prima facie obvious.
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fowler and Li as applied to claims 1-2 and 7-9 above, and further in view of Sada (US 2019/0142005 cited on Applicant’s IDS filed 30 May 2023).
The teachings of Fowler and Li have been set forth above.
Claims 3-6 are drawn to the composition of claim 1, wherein the herbicidal active salt comprises dicamba diglycolamine.
Fowler and Li do not teach the herbicidal active salt comprising dicamba diglycolamine.
However, Sada teaches herbicidal compositions comprising ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (i.e., the compound of instantly claimed formula (I); Abstract, Par. [0019])). Sada further teaches the compound of formula (I) having excellent control efficacy on weeds when combined with dicamba diglycolamine salt (Par. [0006]).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have modified the composition of Fowler and Li to comprise dicamba diglycolamine salt. It would have been obvious to combine the known composition with the known combination of ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and dicamba diglycolamine to yield the predictable result of a composition with excellent control efficacy on weeds, with a reasonable expectation of success.
As such, claims 3-6 are rejected as prima facie obvious.
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 18/254,828 in view of Li (US 2015/0105254) and Sada (US 2019/0142005 cited on Applicant’s IDS filed 30 May 2023) as evidenced by Summers et al. (Fuel, 2022, Vol. 324, 124817).
Claim 1 of Application No. ‘828 recites a liquid pesticidal composition comprising a compound of formula (I), a solvent having a water solubility at 25°C of 10 mass% or less, at least one surfactant, and from 0.05 mass% to 3.14 mass% of water. Application No. ‘828 does not teach the surfactant belonging to group (A) or the composition comprising an additional herbicidal salt.
However, Li teaches similar pesticidal compositions (Abstract) comprising a surfactant (Par. [0012]), preferably AtloxTM 4912 (Par. [0072]). As evidenced by Summers et al. in Fig. 1 (pg. 2), AtloxTM 4912 comprises a polyoxyethylene fatty acid ester having 34 ethylene oxide units, overlapping with the instantly claimed range of more than 8. Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Application No. ‘828 to include AtloxTM 4912 as taught by Li. It would have been obvious to substitute the surfactant of Application No. ‘828 for the surfactant AtloxTM 4912 taught to be suitable for similar compositions, with a reasonable expectation of success.
Sada teaches herbicidal compositions comprising ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (i.e., the compound of instantly claimed formula (I); Abstract, Par. [0019])). Sada further teaches the compound of formula (I) having excellent control efficacy on weeds when combined with dicamba diglycolamine salt (Par. [0006]). Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have modified the composition of Application No. ‘828 to include dicamba diglycolamine as taught by Sada. It would have been obvious to combine the known composition with the known combination of ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and dicamba diglycolamine to yield a composition with excellent control efficacy on weeds, with a reasonable expectation of success.
Based on all of the foregoing, instant claims 1-8 are obvious over claim 1 of Application No. ‘828 in view of Li and Sada.
Claim 2 of Application No. ‘828 recites the composition of claim 1, wherein the solvent comprises an aromatic hydrocarbon, rendering instant claim 9 obvious.
This is a provisional nonstatutory double patenting rejection.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/255,080 in view of Li. (US 2015/0105254) as evidenced by Summers et al. (Fuel, 2022, Vol. 324, 124817).
Claim 1 of Application No. ‘080 recites a composition comprising a compound represented by formula (I), an herbicidal active salt, an organic solvent having a water solubility at 25°C of 10 max% or less, a surfactant, and water. Claim 2 of Application No. ‘080 recites the composition of claim 1, wherein the surfactant comprises a nonionic surfactant. Application No. ‘080 does not teach the surfactant belonging to group (A).
However, Li teaches similar pesticidal compositions (Abstract) comprising a surfactant (Par. [0012]), preferably AtloxTM 4912 (Par. [0072]). As evidenced by Summers et al. in Fig. 1 (pg. 2), AtloxTM 4912 comprises a polyoxyethylene fatty acid ester having 34 ethylene oxide units, overlapping with the instantly claimed range of more than 8. Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Application No. ‘080 to include AtloxTM 4912 as taught by Li. It would have been obvious to substitute the surfactant of Application No. ‘080 for the surfactant AtloxTM 4912 taught to be suitable for similar compositions, with a reasonable expectation of success.
Based on all of the foregoing, instant claims 1 and 7 are obvious over claims 1-2 of Application No. ‘080 in view of Li.
Claims 4-8 of Application No. ‘080 are drawn to the composition of claim 1, wherein the herbicidal salt comprises dicamba diglycolamine, rendering instant claims 2-6 obvious.
Claim 9 of Application No. ‘080 recites the composition of claim 1, wherein the composition contains an aqueous phase and particles of an oil phase dispersed in the aqueous phase, and wherein the oil phase contains the organic solvent and the compound represented by formula (I) dissolved in the organic solvent, rendering instant claim 8 obvious.
Claim 3 of Application No. ‘080 recites the composition of claim 1, wherein the organic solvent comprises an aromatic hydrocarbon, rendering instant claim 9 obvious.
This is a provisional nonstatutory double patenting rejection.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 13-20 of copending Application No. 18/255,334 in view of Li. (US 2015/0105254) as evidenced by Summers et al. (Fuel, 2022, Vol. 324, 124817).
Claim 2 of Application No. ‘334 recites a composition comprising a compound of instant formula (I), an herbicidal active salt, an organic solvent having a water solubility at 25°C of 10 max% or less, a surfactant, and water. Claim 20 of Application No. ‘334 recites the composition of claim 2, wherein the surfactant comprises a nonionic surfactant. Application No. ‘334 does not teach the surfactant belonging to group (A).
However, Li teaches similar pesticidal compositions (Abstract) comprising a surfactant (Par. [0012]), preferably AtloxTM 4912 (Par. [0072]). As evidenced by Summers et al. in Fig. 1 (pg. 2), AtloxTM 4912 comprises a polyoxyethylene fatty acid ester having 34 ethylene oxide units, overlapping with the instantly claimed range of more than 8. Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Application No. ‘334 to include AtloxTM 4912 as taught by Li. It would have been obvious to substitute the surfactant of Application No. ‘334 for the surfactant AtloxTM 4912 taught to be suitable for similar compositions, with a reasonable expectation of success.
Based on all of the foregoing, instant claims 1 and 7 are obvious over claims 2 and 20 of Application No. ‘334 in view of Li.
Claims 13-17 of Application No. ‘334 recite the composition of claim 2, wherein the herbicidal active salt comprises dicamba diglycolamine, rendering instant claims 2-6 obvious.
Claim 18 of Application No. ‘334 recites the composition of claim 2, wherein the composition contains an aqueous phase and particles of an oil phase dispersed in the aqueous phase, and wherein the oil phase contains the organic solvent and the compound represented by formula (I) dissolved in the organic solvent, rendering instant claim 8 obvious.
Claim 19 of Application No. ‘334 recites the composition of claim 2, wherein the organic solvent comprises an aromatic hydrocarbon, rendering instant claim 9 obvious.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/PAUL HOERNER/Examiner, Art Unit 1611
/CRAIG D RICCI/Primary Examiner, Art Unit 1611
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