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 1-9 and 12-20 are pending in this application.
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.
Claims 1-9 and 12-20 are 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.
Claims are indefinite because inconsistent and confusing formula numbers or digits are used. For example, in claim 1, the Roman numeral I is used and then Arabic digit is used:
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In claim 2, there is even more confusion because “2” is used instead as shown below. Formula 2 was not previously recited, so in claim 2 and claims dependent thereon, “formula (I)” appears to be undefined or at the very least there is lack of clarity as to what is being claimed.
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Consistent and accurate formula numbers must be used to clearly set forth the intended compound without any ambiguity. Claims are indefinite for the reasons set forth herein.
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 1-9 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sada (US 2019/0142005) in view of Viertelhaus et al. (US 2021/0137112; hereinafter, Viertelhaus), Mueller et al. (hereinafter, Mueller), CLARITY safety data sheet, and Isopar G safety data sheet.
Sada discloses and exemplifies the herbicidal combination of Applicant’s formula (I) compound1 (hereinafter referred to as “epyrifenacil”) and dicamba salts. See Examples 1-6, Example 202 (Tables 1-2 in particular), Example 203 (Tables 3-4 in particular), and claims 1-20. Applicant’s formula (I) compound as recited in instant claim 1 is Sada’s “compound X,” which is known as epyrifenacil. Sada’s dicamba salts include dicamba diglycolamine salt and dicamba BAPMA salt, i.e., dicamba N,N-bis(3-aminopropyl)methylamine salt (paragraphs 19-20; Examples 1-6, 202-203, claims 1-20). Sada used the commercial product known as CLARITY® for dicamba diglycolamine salt (Examples 1-4). Formulation with a liquid carrier is disclosed; suspension formulation type is disclosed (paragraphs 22-23). Spraying or dilution/formulation with water is disclosed (Examples 1-6; paragraphs 138, 141).
Viertelhaus (US 2021/0137112) discloses a “compound of formula (I),” which is the same as Applicant’s compound of formula (I); this compound has the common name epyrifenacil. See paragraphs 1-3; claim 21. Formulation of epyrifenacil as suspensions (e.g., OD) with surfactants, anti-foaming agents, rheology modifier, solvents and stabilizer is disclosed (paragraphs 524-527, 555-558; claims 21-22, 24). OD, or oil-dispersion, is in the form of a non-aqueous suspension concentrate, wherein epyrifenacil is suspended in the non-aqueous phase (paragraph 555). Non-aqueous solvents include aliphatic, cyclic and aromatic hydrocarbons, e.g., paraffin, and fatty acid esters (paragraph 527). Suitable surfactants include nonionic surfactants such as ethoxylated or propoxylated alcohols, ethoxylated or propoxylated fatty acid esters, and ethoxylated or propoxylated fatty acid glucamides (paragraph 531). Dilution with water gives a stable suspension of the active substance (paragraph 570). “To widen the spectrum of action and to achieve synergistic effects,” epyrifenacil is mixed with one or more herbicides such as 2,4-D salts and dicamba salts, e.g., dicamba diglycolamine (paragraph 256. 390-395). 2,4-D salts and dicamba diglycolamine are disclosed (page 22, Table B, B. 147, B.148, B.158). Following compositions from Table 3 (page 27) disclose these specific herbicidal combinations:
Composition no.
Herbicidal combination
1.147
epyrifenacil + 2,4-D dimethylammonium
1.148
epyrifenacil + 2,4-D N,N,N-trimethylethanolammonium
1.158
epyrifenacil + dicamba diglycolamine
Muller is cited to establish the following facts about dicamba and pH:
(1) pH of spray mixture of dicamba has been implicated as an important factor in potential off-target movement (page 547, first paragraph);
(2) solutions lower than pH 5.0 are associated with more off-target dicamba movement (page 547, first paragraph);
(3) dicamba is often applied in combination with several products to increase efficacy or broaden weed control spectrum (page 547, last paragraph);
(4) dicamba volatilizes at lower pHs (page 548, left column, first full paragraph); and
(5) pH of dicamba diglycolamine in deionized water was 7.06, and pH of dicamba BAPMA in deionized water was 6.46; and their pHs were slightly higher or lower depending on pH of the water source (page 549, Table 2, in view of page 548, Study 1).
CLARITY safety data sheet discloses that it contains dicamba, and its pH is approximately 8.0 (sections 3 and 9).
Isopar G safety data sheet is cited to establish that it is a known, C9-12 alkane solvent that is insoluble in water (page 3).
Sada does not disclose explicitly disclose a composition comprising epyrifenacil, herbicidal salt such as a dicamba salt (which is a benzoate salt), surfactant, water, wherein pH is specified. However, in several embodiments Sada used CLARITY®, a dicamba diglycolamine product having pH of approximately 8.0, with epyrifenacil (Examples 1, 2, 3; Muller); and Sada also mixed epyrifenacil and dicamba diglycolamine salt (Example 202). The ordinary skilled artisan would have recognized that higher pH is important for dicamba-containing compositions because pH lower than 5.0 is associated with more off-target movement of dicamba. Given the known pH range of 5.13 to 7.85 of dicamba salts in different water sources (Table 2 of Muller), it would have been obvious to formulate epyrifenacil and dicamba at 3.5 < pH < 8.8 or
4.2 < pH < 8.6, as claimed, in order to control the undesirable off-target movement of dicamba.
Independent claim 2 requires an organic solvent having a water solubility at 25 °C of 10 mass% or less. Viertelhaus discloses formulation of epyrifenacil as suspensions (e.g., OD) with surfactants, anti-foaming agents, rheology modifier, solvents and stabilizer, wherein solvents include aliphatic and aromatic hydrocarbons, which suspensions are diluted with water to give stable suspension. Isopar G Safety Data Sheet is evidence that aliphatic hydrocarbons have “negligible” solubility in water, i.e., aliphatic hydrocarbons have a water solubility at 25 °C of 10 mass% or less, as claimed. Thus, incorporation of the claimed solvent would have been obvious.
Claim 18 requires particles of an oil phase dispersed in the aqueous phase, wherein the oil phase contains the organic solvent and epyrifenacil (compound of formula (I)), is dissolved or suspended in the organic solvent. This is a description of an OD formulation that is mixed with water, as taught by Viertelhaus.
Claim 19 requires an aromatic hydrocarbon as the organic solvent. Viertelhaus teaches aliphatic and aromatic hydrocarbons as suitable solvents. Hydrocarbons are not soluble in water, so the ordinary skilled artisan would have found it obvious that aromatic hydrocarbons have a water solubility at 25 °C of 10 mass% or less, as claimed.
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.
For these reasons, all claims are rejected at this time. No claim is allowed.
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
1 For the purpose of this ground of rejection, the compound of formula (I) is assumed to have the chemical structure set forth in claims 1 and 2.