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 .
Claim Interpretation
The “poorly water-insoluble” pesticidal active compound herein refers to a pesticidal active compound having a solubility of 1 g or less per 1 L of water at a temperature of 25°C as per applicant’s specification.
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, 3-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18255035 (‘035). ‘035 teaches/claims suspoemulsions comprising the same first active agent of formula (I) and the same second active ingredient which is solid at 25 °C and is poorly water soluble, hydrophobic organic solvents, water, and the claimed polyoxyethylene/polyoxypropylene block copolymer(s) surfactant, and lignin sulfonate surfactants and wherein the poorly water soluble active agent that is a solid is dispersed in water and the active of formula I is dissolved or suspended in the same organic solvents instantly claimed, specifically aromatic hydrocarbons. ‘035 merely requires an additional/different surfactant as their first surfactant, specifically at least one of polyvinyl alcohol or polyoxyalkylene vegetable or at least one of polyvinyl alcohol and polyoxyethylene castor oil. However, the instant claims use comprising language and as such these surfactants are not excluded from the claimed compositions and as such one of ordinary skill in the art would conclude that the liquid compositions of ‘035, which are suspoemulsions, are obvious variants of the instantly claimed compositions which are also suspoemulsions.
This is a provisional nonstatutory double patenting rejection.
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.
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.
Claim(s) 1, 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (US 20150111860, from IDS), and further in view of Fowler (US20100234230).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 3, and 5-6, Tanaka teaches suspoemulsions of agrochemicals which comprise a poorly water soluble liquid agrochemical active; a poorly water soluble at room-temperature solid agrochemical active, which can be the claimed flumioxazin or mesotrione; a polyoxyalkylene block copolymer, specifically the claimed polyoxyethylene polyoxypropylene block copolymer (applicants first surfactant); ligninsulfonates (applicant’s second surfactant), water, hydrophobic organic solvent, etc. and wherein the first ingredient is dissolved or suspended in the hydrophobic organic solvent which is dispersed in the water, and wherein one or more of the poorly water soluble at room-temperature solid agrochemical active is dispersed/suspended in the water (Abstract; claims; [0037-0040]; [0048-0052]; [0005-0011]; [0029]; [0032]; [0035]; [0068]). Tanaka also does not teach wherein the a poorly water soluble agrochemical active (ingredient 1) is particularly limited in scope as long as it is poorly water soluble ([0015-0017]; [0068])).
Tanaka teaches wherein the a poorly water soluble at room-temperature solid agrochemical active, which can be the claimed flumioxazin or mesotrione, is suspended in the water, because for instance in production examples 2 and 3 Tanaka teaches suspending the poorly water soluble at room-temperature solid agrochemical active, clothianidin, in water/aqueous phase and specifically teaches suspending ingredient 2 which is the poorly water soluble at room-temperature solid agrochemical active into ingredient 6 which is water (production examples 2-3, [0032]; Abstract; [0068]).
Regarding claim 4, Tanaka teaches wherein the hydrophobic organic solvent can be the claimed aromatic hydrocarbons ([0024]; [0078-0079]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1, 3-6, Tanaka does not teach wherein the poorly water soluble agrochemical active is/comprises applicant’s formula (I). However, this deficiency in Tanaka is addressed by Fowler.
Fowler teaches that it was known in the art to formulate applicant’s compound of formula (I) as an emulsion and that the compound of formula I is dissolved/solubilized in a hydrophobic organic solvent and as such would be a compound which can readily be ingredient (1) in Tanaka (See claim 14; example 5; [0043]; [0002]).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill at the time of the instant filing to have selected applicant’s formula I as taught by Fowler for the ingredient (1) in the suspoemulsions of Tanaka since the compound of formula (I) is poorly water soluble and is soluble in hydrophobic organic solvents. One of ordinary skill in the art would have been motivated to do this in order to form effective herbicidal combinations with other poorly water soluble active agents which are solids at room temperature, as suspoemulsions are a known effective formulation type which allows the combination of poorly soluble liquids and solids together to be used for herbicidal or other pesticidal applications. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to form the claimed suspoemulsion when looking to the combined references because firstly Tanaka teaches that the claimed first and second surfactants are effective for formulating suspoemulsions with various pesticidal and/or herbicidal active agents with the claimed hydrophobic solvents and water and wherein the solid active agents which are dispersed in water can be the claimed mesotrione or flumioxazin, and they teach wherein the first active agent which is solubilized in the hydrophobic liquid is not particularly limited and as such it would have been obvious to select applicants formula I as discussed above for the reasons discussed above because, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
Applicants amendments to the claims and new claims have prompted the new/revised grounds of rejection herein. Applicant’s arguments with respect to the 103 rejections have been fully considered but are not persuasive at this time. Applicant’s arguments insofar as they pertain to the revised grounds of rejection are addressed herein at this time.
Applicants first argue that Tanaka and Fowler cannot be combined because Tanaka is to a suspoemulsion whereas Fowler is to a Pickering emulsion. The examiner respectfully disagrees because Fowler is merely used to teach that applicant’s first ingredient of formula (I) is soluble in organic solvents and as such would be soluble in the solvents of Tanaka and as such would be a compound which can readily be ingredient (1) in Tanaka. Especially since Tanaka teaches at [0016]: “Examples of the ingredient (1) include those in which a low water-soluble pesticidal active ingredient is dissolved in a hydrophobic liquid, namely, those obtained by dissolving a low water-soluble pesticidal active ingredient in a hydrophobic liquid (emphasis added by examiner). Thus, the low-water soluble active ingredient may be either solid or liquid at normal temperature as long as it is dissolved in a hydrophobic liquid…”. Thus, the examiner never argued combining the pickering emulsion of Fowler into the suspoemulsion of Tanaka, and merely used Fowler to teach the solubility of applicant’s formula (I) and that the active of formula (I) would be an ingredient (1) in the compositions of Tanaka. Thus, applicants are misreading what the rejection actually teaches and as such this argument is not persuasive and the combination of the prior art Tanaka and Fowler are appropriate for the reasons of record and the reasons discussed herein.
Applicants then argue that the compound of formula (I) cannot be the ingredient (1) in Tanaka because Tanaka requires this ingredient to be a liquid a normal temperature. Again respectfully it appears that applicants are disregarding the express teachings of Tanaka at [0016] which expressly states, “Examples of the ingredient (1) include those in which a low water-soluble pesticidal active ingredient is dissolved in a hydrophobic liquid, namely, those obtained by dissolving a low water-soluble pesticidal active ingredient in a hydrophobic liquid” (emphasis added by examiner). Thus, the low-water soluble active ingredient may be either solid or liquid at normal temperature as long as it is dissolved in a hydrophobic liquid…”. Thus, this argument is also not persuasive at this time because it appears that applicants are disregarding clear teachings of Tanaka which are expressly stated by the reference with respect to the specific low water-soluble active ingredients which are effective as ingredient (1) which are not limited to liquid pesticidal ingredients at normal temperature.
Applicants then argue that one of ordinary skill in the art would not have been taught or motivated to arrive at the claimed subject matter when looking to Tanaka and Fowler. The examiner respectfully disagrees for the reasons discussed above and herein.
Applicants then argue that the office’s proposed combination of Fowler and Tanaka is in appropriate because Fowler is a pickering emulsion with the pesticidal active agent in solid form which remains dispersed in the oil phase. The examiner respectfully disagrees with this characterization of the combination because as discussed above Fowler is merely used to teach that applicant’s first ingredient of formula (I) is soluble in organic solvents and as such would be soluble in the solvents of Tanaka and as such would be a compound which can readily be ingredient (1) in Tanaka. The examiner never suggested combining the formulations of Fowler and Tanaka contrary to applicants arguments as Fowler is clearly only used in the rejection to teach that applicant’s first ingredient of formula (I) is soluble in organic solvents and as such would be soluble in the solvents of Tanaka and as such would be a compound which can readily be ingredient (1) in Tanaka.
Applicants then argue the double patenting rejection to be withdrawn or held in abeyance if not withdrawn.
Applicant’s request for the double patenting rejection of record to be held in abeyance is acknowledged. However, this request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the rejection will be maintained until a terminal disclaimer is filed or claims are amended to obviate the rejection.
Conclusion
No claims are allowed.
Applicant's amendments/new claims necessitated the revised/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 Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616