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 2, 4, and 13-20 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 2, 4, and 13-20 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.
Claim 2 has been rewritten as an independent claim. The percentage features of claim 2 are indefinite. 0.2 mass% to 20 mass% of compound of formula (I) is recited in claim 2. However, the mass ratio of said compound to the organic solvent must be at least 1:5, so this would mean 100 mass% of the organic solvent would be needed for 20 mass% of compound of formula (I), which is clearly erroneous and also fails to satisfy, inter alia, the herbicidal active salt mass% range of 2-50, organic solvent mass% range of 3-45, and water mass% range of 30-87. Stated another way, the claimed composition cannot contain 20 mass% of compound of formula (I) AND satisfy several other compositional requirements of claim 2. In another example, 12 mass% of compound of formula (I) would require at least 60 mass% of organic solvent, which would fail to satisfy the requirement of 3-45 mass% of organic solvent and at least 30 mass% of water. For these reasons, the claims, including all the dependent claims which fail to cure the deficiency of claim 2, are indefinite for failing to clearly set forth the metes and bounds of the claimed invention.
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 2, 4, and 13-20 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 (US 2019/0142005) 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 2 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 and emulsion formulation type are 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 in customary types of agrochemical compositions is disclosed, including suspensions and dispersions (paragraph 524, 567-570). Suitable auxiliaries include solvents, surfactants, emulsifiers, anti-foaming agents, rheology modifier, and stabilizer (paragraphs 524-527, 554; claims 21). Non-aqueous solvents include aliphatic, cyclic and aromatic hydrocarbons, e.g., paraffin, toluene (which is an alkylbenzene), alkylated naphthalenes, 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). pH adjustment is disclosed (paragraph 550). “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
Quantity of the epyrifenacil and other active substances can be in the range of 1-98 wt% (paragraph 522), and epyrifenacil can be applied from 0.001 to 3 kg/ha, preferably 0.005 to 0.25 kg/ha (paragraph 584). In suspension concentrates, quantity of surface active substances can range from 1-50 wt%, or 2-30 wt% (paragraph 551).
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 explicitly disclose a composition comprising 0.02-20 mass% of epyrifenacil, 2-50 mass% of a herbicidal salt such as a dicamba salt (which is a benzoate salt), 3-45 mass% of an organic solvent, 1.5-30 mass% of a surfactant, 30-87 mass% of water, wherein pH value at 25° C is greater than 3.5 to 6.9, and mass ratio of epyrifenacil to organic solvent is 1:5 to 1:15. However, the ordinary skilled artisan in this field would have found it obvious to formulate known agricultural compounds such as epyrifenacil and dicamba salts, which are already known to be used together, with solvents, water, and surfactant at the claim recited mass percentages, as suggested by Sada and Viertelhaus.
As for the pH, the ordinary skilled artisan would have recognized that 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 < 6.9 or 4.2 ≤ pH < 6.9, as claimed, in order to control the undesirable off-target movement of dicamba.
Claim 2 further requires an organic solvent having a water solubility at 25 °C of 10 mass% or less. Viertelhaus discloses solvents, which include aliphatic and aromatic hydrocarbons. 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. Viertelhaus is suggestive of the claimed features by disclosing use of aliphatic hydrocarbon solvents and other non-aqueous solvents with epyrifenacil, in further formulation with additive such as surfactants, emulsifiers, and water (paragraphs 524-527, 554, 567-570, 582). Dispersed oil phase in the aqueous phase would be obtained by adjusting the quantity of the non-aqueous solvent, surfactant, water, and active agents.
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.
Applicant’s arguments filed on 6/9/2026 have been given due consideration but they were deemed unpersuasive for the following reasons.
Applicant argues that, assuming a spray volume of 200 L/ha to deliver 20 to 80 g/ha of epyrifenacil, as disclosed or suggested by Sada’s Example 1, the concentration range of epyrifenacil would be too low at approximately 0.01-0.04 mass%. Similar argument is made with respect to dicamba, i.e., the resulting dicamba salt concentration is argued as being too low, below the 2-50 mass% required by the instant claims.
The Examiner cannot agree with Applicants’ comparisons and conclusions. Applicant is comparing the diluted use-composition of the prior art with the claimed undiluted composition. This is an important distinction, because even Applicant’s invention is diluted prior to use or at the point of use – specification paragraph 54 discloses up to 2,000 liters of spray volume per hectare. The last sentence of paragraph 54 establishes that the inventive suspension concentrates or emulsion is diluted from 2 to 10,000 times with water, preferably 10 to 8,000 times with water, and most preferably 15 to 6,000 times with water. Therefore, it is clear that Applicant’s point misses the mark in comparing the prior art’s diluted use composition with Applicant’s undiluted composition that must also be diluted prior to or at use.
Applicant argues further that one of ordinary skill in the art “would not produce the composition described by the present claims without undue experimentation” and “[n]o information regarding the amount of the herbicidal active salt is provided.” The Examiner cannot agree. Both epyrifenacil and dicamba salts are known herbicides with known effective amount ranges that are also known to be used together, and Sada teaches suspension and emulsion formulations (paragraphs 22-23). In Sada’s Example 1 (the example that Applicant used to erroneously argue concentrations), the ratio of epyrifenacil to dicamba glycolamine salt is 20 g to 561.12 g (1169 x
480
1000
). This is approximately 1:28. Sada’s example 1 shows dicamba glycolamine salt at 480 g/L, so this would suggest a concentration that is well within the 0.2-20 mass% claimed in Applicant’s claim 2.
Also, the claims are open to a very broad range of organic solvents and surfactants (see claim 2). The ordinary skilled artisan would have obviously recognized that epyrifenacil and dicamba salts have different solubilities in water, so it would have been obvious that a formulation that contains both epyrifenacil and dicamba salt would require suitable amounts of organic solvent, surfactant, and water, in effective amounts of the herbicides. Viertelhaus teaches “customary types of agrochemical compositions” (paragraph 524), which are prepared “in known manner” such as described by textbooks standard in the art (paragraph 525). In sum, it would have been well with the skill of the ordinary skilled artisan to formulate epyrifenacil and dicamba salt with the formulation ingredients as set forth in the instant claims.
For these reasons, all claims are rejected at this time. No claim is allowed.
THIS ACTION IS MADE FINAL. 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 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.
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