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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/22/2026 has been entered.
Applicants’ arguments, filed 06/22/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 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.
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.
Claims 1-2 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (JP 2020-00723 1A, publication date 01/16/2020; citing English machine translation) in view of Ueda et al. (EP 1283009A1, publication date 02/12/2003; cited in PTO-892 of 06/27/2025 and copy provided with Non-Final Office Action 06/27/2025) as evidenced by Webb (Chapter 9: Herbicide Formulations and Delivery, Weed Management Handbook, 2002, p. 171, 178-9).
Sato discloses a compound with the structure described by “Compound(I)” (see Figure 1; i.e., compound of instant claim 1, formula (I); hereinafter “epyrifenacil”) having pest control activity [p. 3, para. 1].
Figure 1. Pesticide structure according to Sato at page 3 (Compound(I)).
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The compound is provided in a pesticidal composition which may include formulations such as milk suspensions (EW) (i.e., oil-in-water emulsion according to Webb at page 177, second full paragraph) and emulsions [p. 10, second full paragraph]. Suitable liquid carriers for the pesticidal composition include toluene and xylene (i.e., aromatic organic solvents with water solubility of 10 mass% at 25°C, according to instant specification at paragraph 17) [p. 13, para. 1]. Sato also discloses “[s]urfactants suitable for use in the present invention can be any known in the art” and include vegetable oil nonionic surfactants [p. 10, last para.], such as polyoxyethylene castor oil [p. 10, para. 1, lines 4-5] and “alkylphenol type nonionic surfactant include polyoxyethylene alkyl phenyl ether” [p. 10, para. 1, lines 13-14]. In the examples, Sato discloses an emulsion comprising compound (I) (i.e., epyrifenacil), xylene and polyoxyethylene alkyl phenyl ether [p. 59, first two paragraphs]. Finally, Sato discloses antifreezing agents (i.e., instant claims 9 and 10) [p. 14, para. 3].
Sato does not teach the oil phase particle size of the emulsion nor the instantly claimed amounts.
Ueda discloses an insecticidal (i.e., pesticidal) composition comprising a dihaloprpene compound (i.e., active agent; referred to by Sato as “present compound” according to paragraph [0005]), a dispersant (i.e., surfactant), an organic liquid and water [abstract]. The organic liquid is the solvent [p.3 line 43] and includes aromatic solvents such as xylene [p. 4, lines 21-22]. The composition may be formulated as an emulsion wherein the droplets of organic solvent contain “the present compound [active agent] and the present solvent [organic liquid] are emulsified in an aqueous phase” [p. 5, line 35-36]. The diameter of the emulsified solvent droplets is usually 0.1-50 µm [p. 5, lines 47-49]. Suitable dispersants (surfactants) include “nonionic surfactant[s] includ[ing] polyoxyethylene castor oil” [0023]. According to Ueda suitable compositions comprise 0.1-40% by weight of the active agent [0008] and the solvent in amounts from “1.5 to 10 parts by weight based on 1 part by weight of the present compound [active compound]” [0012]. Additionally, all the compositions exemplified by Sato comprise about 19.9% w/w solvent and about 69.6% w/w water (see Examples 1-6 on pages 8-10).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated the emulsions comprising epyrifenacil desired by Sato according to the guidance provided by Ueda. One would have been motivated the combine the prior art elements in this way because where Sato lacks guidance for emulsions comprising the oil soluble pesticide, e.g., acceptable component ranges, Ueda provides specific formulation parameters. One would have had an expectation of success because the emulsions of Ueda are intended for oil soluble pesticides and may employ components deemed suitable by Sato, e.g., polyoxyethylene castor oil and xylene.
Similarly, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated the emulsions taught by Sato and Ueda to have an oil phase droplet size of 0.1-50 µm because Ueda discloses that is a suitable oil phase droplet size for a composition comprising a pesticide dissolved in an aromatic solvent (xylene), dispersed in an aqueous phase which further comprises a surfactant.
In combining the prior art elements as discussed above one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed ranges for organic solvent (3-30% w/w), water (40-90% w/w), mass ratio of organic solvent to active agent (5:1 to 10:1) and droplet size (i.e., 0.10-11 µm and 0.15-9 µm; instant claims 1 and 2) overlap with the ranges taught by the prior art for organic solvent (about 19.9% w/w), water (about 69.6% w/w), mass ratio of organic solvent to active agent (1.5:1 to 10:1) and droplet size (i.e., 0.10-50) and so a prima facie case of obviousness exists for each range.
Finally, Sato teaches the components of the instantly recited pesticide composition and uses each component of their established function in the art but does not explicitly combine the components together into a single embodiment. However, given the disclosure of each component individually, it would have been prima facie obvious to combine them. MPEP 2143 and 2144.06(I). Specifically, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the polyoxyethylene castor oil, xylene and anti-freezing agents of Sato with the compositions disclosed therein.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a pesticidal composition comprising an organic aromatic solvent having a water solubility at 25°C of 10 mass% or less (xylene), a nonionic polyoxyethylene castor oil surfactant and water within the presently claimed amounts, wherein the compound of formula (I) (i.e., Compound(I) of Sato; epyrifenacil) is dissolved in the organic solvent and the organic solvent is dispersed in an aqueous phase (emulsion). Where the weight ratio of organic solvent to the compound of formula (I) is within the presently claimed range. Wherein the median diameter of the oil phase particles is within the instantly claimed ranges. Wherein the compositions further comprise an antifreezing agent.
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.
1) Claim 1-2, and 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18255000 (US20240057601A1). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim an emulsion comprising the instantly claimed active agent (formula (I)), the same surfactants (e.g., polyoxyethylene castor oil), the same organic aromatic solvents, and antifreezing agents [claims 1, 9 and 14]. Wherein the oil and water phase are present in overlapping amounts and the droplet sizes overlap [claims 10, 13 and 20]. See MPEP 2144.05(I).
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). The amount of active agent would have been optimizable for pesticidal efficacy.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2) Claim 1-2, and 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2, 4, and 13-20 of copending Application No. 18255334 (US20240000081A1) in view of Ueda et al. (EP 1283009A1, publication date 02/12/2003; cited in PTO-892 of 06/27/2025 and copy provided with Non-Final Office Action 06/27/2025).
The conflicting claims disclose an emulsion comprising the instantly claims compound (formula I), aromatic organic solvent, nonionic surfactants and water in overlapping amounts and overlapping weight ratios [claim 1, 19 and 20]. See MPEP 2144.05(I).
The conflicting claims do not disclose a droplet diameter.
Ueda suggests the diameter of the emulsified solvent droplets is usually 0.1-50 µm [p. 5, lines 47-49].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection.
3) Claim1-2, and 9-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of copending Application No. 18255035 in view of Ueda et al. (EP 1283009A1, publication date 02/12/2003; cited in PTO-892 of 06/27/2025 and copy provided with Non-Final Office Action 06/27/2025).
The copending claims recite an oil in water emulsion [claim 4] comprising the instantly claimed compound (formula (I)), aromatic organic solvents, polyvinyl alcohol surfactant [claim 1 and 6].
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). The exact amounts would have been optimizable to form a stable emulsion.
The copending claims do not recite a droplet size.
Ueda suggests the diameter of the emulsified solvent droplets is usually 0.1-50 µm [p. 5, lines 47-49].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection.
4) Claim1-2, and 9-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3, and 5-7 of copending Application No. 18255005 in view of Ueda et al. (EP 1283009A1, publication date 02/12/2003; cited in PTO-892 of 06/27/2025 and copy provided with Non-Final Office Action 06/27/2025).
The copending claims recite an oil in water emulsion [claim 6] comprising the instantly claimed compound (formula (I)), aromatic organic solvents, polyoxyethylene polyoxypropylene block copolymer surfactant [claim 1 and 6].
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). The exact amounts would have been optimizable to form a stable emulsion.
The copending claims do not recite a droplet size.
Ueda suggests the diameter of the emulsified solvent droplets is usually 0.1-50 µm [p. 5, lines 47-49].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection.
5) Claims 1-2, and 9-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-11 of copending Application No. 18255080 in view of Ueda et al. (EP 1283009A1, publication date 02/12/2003; cited in PTO-892 of 06/27/2025 and copy provided with Non-Final Office Action 06/27/2025).
The copending claims recite an oil in water emulsion [claim 9] comprising the instantly claimed compound (formula (I)), aromatic organic solvents, water and a nonionic surfactant [claim 1-3].
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). The exact amounts would have been optimizable to form a stable emulsion.
The copending claims do not recite a droplet size or specific surfactant.
Ueda suggests the diameter of the emulsified solvent droplets is usually 0.1-50 µm [p. 5, lines 47-49] and suitable “nonionic surfactant include polyoxyethylene castor oil” [0023].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
1) On page 4 of their Remarks, Applicant argues there is no motivation to deviate from the teachings of Sato to produce a composition that has a content of the organic solvent that is 5 to 10 times a content of the compound represented by formula (I) by mass.
This argument is moot in view of the new rejections set forth above.
2) On pages 4-5 of their Remarks, Applicant argues the Declaration under 3 7 C.F.R. § 1.132 by Tomoko Sumita filed 06/22/2026 (hereinafter “the Declaration”) demonstrates the claimed ratio of organic solvent to the compound of formula (I) unexpectedly improves herbicidal efficacy.
This argument is not persuasive. The Examiner respectfully notes that the application as originally filed does not disclose that compositions having a content of the organic solvent that is 5 to 10 times a content of the compound represented by formula (I) by mass demonstrate unexpected herbicidal efficacy. In fact, the application as originally filed does not disclose herbicidal efficacy is affected by the ratio of organic solvent to the compound of formula (I). While the application as originally filed discloses the mass ratio of active to solvent can be adjusted to effect emulsion stability [0021], there is no mention of unexpected results.
Furthermore, overcoming a rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the results must truly be unexpected and the claims must be commensurate in scope. MPEP §716.02. The burden rests with Applicant to establish results are unexpected and significant. MPEP §716.02(b).
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). (MPEP 716.02(d)). In the present case, Applicant has only provided the herbicidal efficacy of one instantly claimed ratio, i.e., 10:1 solvent:active, and has not provided any data for ratios below the claimed range. Additionally, Applicant has not explained why the criticality of the upper limit, 10:1 solvent:active, is established by comparing ratios of 10:1 and 16:1. That is to say, it is unclear if the claimed upper limit, 10:1 solvent:active, is truly critical because there is no information regarding herbicidal efficacy between 10:1 and 16:1.
Accordingly, the Examiner is not able to determine if the claimed ranges are truly critical to the function of the invention.
The "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support" (see MPEP 716.02(d) quoting In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)). In the present case, the claims are not commensurate in scope with the evidence. One of ordinary skill in the art would not have expected the specific concentrations non-ionic surfactants in the Declaration to reasonably represent any amount of the surfactants as instantly claimed. The Declaration does not explain how Solvesso 200ND (containing C10~C13 alkylnaphthalene as its main aromatic hydrocarbon) reasonably represents all aromatic organic solvents having a water solubility at 25 deg C of 10%mass or less. Finally, every example composition in the Declaration comprises a water soluble active agent, 2,4-D dimethylamine salt, which is not recited in the instant claims. Therefore, the claims are not commensurate in scope with the showing of objective evidence.
Technological Background
The prior art made of record is considered pertinent to applicant's disclosure. Vogt et al. (WO2018019758A1, publication date 02/01/2018) . Vogt is pertinent for teaching general emulsion formulations of herbicidal pyridine compounds at page 90, lines 17-22:
“iv) Emulsions (EW, EO, ES)
5-40 wt% of a pyridine of formula (I) according to the invention and 1 -10 wt% emulsifiers (e.g. calcium dodecylbenzenesulfonate and castor oil ethoxylate) are dissolved in 20-40 wt% water- insoluble organic solvent (e.g. aromatic hydrocarbon). This mixture is introduced into water ad 100 wt% by means of an emulsifying machine and made into a homogeneous emulsion. Dilution with water gives an emulsion.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612
