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 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.
Claim 9 is 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 9 has been amended to recite “type of clay rock” which is indefinite. See MPEP 2173.05 (b) III E. The addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parteCopenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955) because it is unclear what type of clay rocks primarily composed of montmorillonite are included in the scope being claimed and which are excluded in applicant’s claim scope. Amending the claim to recite: “…wherein the organic bentonite is isolated from natural sources.”, would overcome this 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) 2, 4, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN108207997B (‘997) and further in view of CN110692643 and CN110786323.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claim 2, ’997 teaches and claims herbicidal combinations/compositions comprising the claimed benzylazole, specifically 3-(2-chloro-4-fluoro-5-(3-methyl- 2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylate ethyl ester, which is ‘997’s compound A-6 from Table 1 and which is called A1 in the formulation/preparation examples, and which they expressly teach in combination with their component B1 which is glyphosate isopropylamine salt, which is a salt form of the claimed glyphosate, in weight ratios of 1:40 to 1:1 of benzylazole:glyphosate which read on the claimed weight ratios (see entire document; Table 1: A-6; claims 1-5, specifically 1 and 3; see paragraph/statement: The weight ratio of the component A to the component B is 1:40-1:1; Table 2 example 7). ‘997 also teaches wherein the glyphosate can be glyphosate or salts or esters thereof (see paragraph beginning: In order to achieve the purpose, the technical scheme of the invention is as follows: a herbicide comprising a component A and a Component B as active components,…”;). ‘997 also expressly teaches wherein the composition is combined with an acceptable excipient which reads on the claimed herbicidal composition preparation (see formulation example 1; claims; Table 2 example 7; paragraph immediately following table 1 which was cited below). ‘997 further teaches wherein their composition can take any form known for agricultural compositions (any forms which are effective/allowable for formulating pesticides) and further teach wherein their compositions can comprise excipients such as wetting agents/surfactants (see paragraph just after the end of table 1, begins with: The herbicide composition provided by the invention also comprises an auxiliary agent…; examples 1-2; formulation example 1; claims; Table 2 example 7). ‘997 teaches applying their very similar herbicidal composition to control weeds which are not cultivated, specifically ‘997’s herbicidal composition/combination only differs in that their glyphosate is a glyphosate salt which is a different form of glyphosate than is claimed in claim 2 (claims; formulation example 1; claims; Table 2 example 7; Tables 2-3 the paragraph below table 3).
Regarding claim 4, ‘997 specifically teaches wherein the total weight of the herbicidal composition to the herbicidal composition preparation is 16.2% of the total weight of the herbicidal composition preparation which reads on the claimed range (Example 1).
Regarding claim 9, the examiner notes that claim 9 does not actually require the presence of a viscosity regulator as claim 2 states this is not necessarily a required component (the claim now states agropharmaceutical acceptable excipient comprises at least one selected from the group consisting of….). Claim 9 merely further defines the viscosity regulator when it is present (in the composition preparation).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 2, 4, and 9, ‘997 does not specifically teach wherein their formulation is the claimed dispersible oil suspension agent. However, this deficiency in ‘997 is addressed by CN110692643 and CN110786323.
CN110692643 teaches dispersible oil suspension agents comprising the claimed benzylazole, specifically 3-(2-chloro-4-fluoro-5-(3-methyl- 2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl) phenyl)-5-methyl- 4,5-dihydroisoxazole-5-carboxylate ethyl ester and wherein these formulations comprise a wetting dispersant, a thickener, and a carrier (see embodiments/examples 3-4).
CN110786323 teaches dispersible oil suspension agents comprising the claimed glyphosate and wherein these formulations comprise an emulsifier, a dispersant, a thickener, and a dispersion medium (abstract; claims).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the clamed herbicidal composition by combining glyphosate with applicant’s benzylazole, which the specification states/defines as 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl) phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylate ethyl ester because ‘997 clearly teaches wherein their glyphosate can be glyphosate or salts and esters thereof and as such it would be obvious to substitute glyphosate for the glyphosate salt in ‘997’s examples which would lead to the claimed herbicidal composition.
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the herbicidal compositions into the claimed dispersible oil suspension agent because firstly ‘997 teaches that their formulation types are not particularly limited and can take any form known for agricultural/pesticidal compositions, and as discussed above CN110692643 and CN110786323 together teach that it was known to form dispersible oil suspension agent formulations with glyphosate and with the claimed 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl) phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylate ethyl ester (applicant’s benzylazole) which can be combined with at least one of the claimed excipients of applicant’s claim 2 (e.g. wetting agent, thickener, etc.). One of ordinary skill in the art would want to do this in order to form additional formulation types for herbicidal use by the end user because different formulation types are useful in different environments, climates, etc. and as such it would have been obvious to form known effective herbicide formulation types, specifically dispersible oil suspension agent with the combination of ‘997 because it was already known that the claimed active agents can be formulated into dispersible oil suspension agents for herbicidal use.
It would have been obvious to one of ordinary skill in the art to have optimized the ratio of benzylazole and glyphosate to read on the newly claimed ratios of 1:20 to 1:60 in the herbicidal composition in the form of the newly required dispersible oil suspension agent which is taught by ‘997 in view of CN110692643 and CN110786323 as discussed above because ‘997 teaches forming synergistic combinations of the claimed benzylazole with glyphosate in overlapping ratios to those instantly claimed as is discussed above and it is known, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[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.’” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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.
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 2, 4, and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8-10 of copending Application No. 18228687 (‘687) in view of CN108207997B (‘997).
‘687 teaches herbicidal compositions comprising applicants benzylazole and another herbicide selected from their component B in specific ratios, and wherein the composition can be the claimed formulation types, e.g. dispersible oil suspension, and wherein the compositions can comprise the same excipients, e.g. solvent, thickener, etc. ‘687 does not teach wherein the composition comprises glyphosate or is applied to control weeds. However, this deficiency in ‘687 is addressed by ‘997.
Regarding claim 2, ’997 teaches and claims herbicidal combinations/compositions comprising the claimed benzylazole, specifically 3-(2-chloro-4-fluoro-5-(3-methyl- 2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylate ethyl ester, which is ‘997’s compound A-6 from Table 1 and which is called A1 in the formulation/preparation examples, and which they expressly teach in combination with their component B1 which is glyphosate isopropylamine salt, which is a salt form of the claimed glyphosate, in weight ratios of 1:40 to 1:1, of benzylazole:glyphosate which read on the claimed weight ratios (see entire document; Table 1: A-6; claims 1-5, specifically 1 and 3; see paragraph/statement: The weight ratio of the component A to the component B is 1:40-1:1; Table 2 example 7). ‘997 also teaches wherein the glyphosate can be glyphosate or salts or esters thereof (see paragraph beginning: In order to achieve the purpose, the technical scheme of the invention is as follows: a herbicide comprising a component A and a Component B as active components,…”;). ‘997 also expressly teaches wherein the composition is combined with an acceptable excipient which reads on the claimed herbicidal composition preparation (see formulation example 1; claims; Table 2 example 7; paragraph immediately following table 1 which was cited below). ‘997 further teaches wherein their composition can take any form known for agricultural compositions (any forms which are effective/allowable for formulating pesticides) and further teach wherein their compositions can comprise excipients such as wetting agents/surfactants (see paragraph just after the end of table 1, begins with: The herbicide composition provided by the invention also comprises an auxiliary agent…; examples 1-2; formulation example 1; claims; Table 2 example 7). ‘997 teaches applying their very similar herbicidal composition to control weeds which are not cultivated, specifically ‘997’s herbicidal composition/combination only differs in that their glyphosate is a glyphosate salt which is a different form of glyphosate than is claimed in claim 2 (claims; formulation example 1; claims; Table 2 example 7; Tables 2-3 the paragraph below table 3).
Regarding claim 4, ‘997 specifically teaches wherein the total weight of the herbicidal composition to the herbicidal composition preparation is 16.2% of the total weight of the herbicidal composition preparation which reads on the claimed range (Example 1).
Regarding claim 9, the examiner notes that claim 9 does not actually require the presence of a viscosity regulator as claim 2 states this is not necessarily a required component (the claim now states agropharmaceutical acceptable excipient comprises at least one selected from the group consisting of….). Claim 9 merely further defines the viscosity regulator when it is present (in the composition preparation).
It would have been obvious to one of ordinary skill in the art to form the claimed composition by adding glyphosate in the claimed ratios to the dispersible oil suspension agent of ‘687 because ‘997 teaches that glyphosate salts and glyphosate are known to be used with the claimed benzylazole in the claimed ratios and it also would have been obvious to one of ordinary skill in the art to use these compositions to control weeds in the claimed method because glyphosate/glyphosate salts and applicant’s claimed benzylazole/3-(2-chloro-4-fluoro-5-(3-methyl- 2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl) phenyl)-5-methyl- 4,5-dihydroisoxazole-5-carboxylate ethyl ester are already known in the art to be used in combinations in the claimed/overlapping weight ratios to control weeds as that is the common use of known herbicides which is what applicant’s benzylazole and glyphosate are. Further, it is known to combine multiple herbicides together in order to form new herbicidal combinations for the same purpose of controlling weeds. Thus, one of ordinary skill in the art would conclude that the instantly claimed inventions are obvious variants of copending ‘687 when taken in view of ‘997.
This is a provisional nonstatutory double patenting rejection.
Claims 2, 4, 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/818345 (‘345) in view of CN108207997B (‘997).
‘345 teaches herbicidal compositions comprising applicant’s claimed 3-(2-chloro-4-fluoro-5-(3-methyl- 2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl) phenyl)-5-methyl- 4,5-dihydroisoxazole-5-carboxylate ethyl ester/benzylazole and glufosinate-P in the form of dispersible oil suspensions, and can comprise the same types of excipients, e.g. emulsifiers, dispersants, etc. and be applied to control weeds which includes weeds not cultivated as is instantly claimed. ‘345 does not teach wherein their composition contains glyphosate in the claimed ratios. This deficiency is addressed by ‘997.
Regarding claim 2, ’997 teaches and claims herbicidal combinations/compositions comprising the claimed benzylazole, specifically 3-(2-chloro-4-fluoro-5-(3-methyl- 2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylate ethyl ester, which is ‘997’s compound A-6 from Table 1 and which is called A1 in the formulation/preparation examples, and which they expressly teach in combination with their component B1 which is glyphosate isopropylamine salt, which is a salt form of the claimed glyphosate, in weight ratios of 1:40 to 1:1, of benzylazole:glyphosate which read on the claimed weight ratios (see entire document; Table 1: A-6; claims 1-5, specifically 1 and 3; see paragraph/statement: The weight ratio of the component A to the component B is 1:40-1:1; Table 2 example 7). ‘997 also teaches wherein the glyphosate can be glyphosate or salts or esters thereof (see paragraph beginning: In order to achieve the purpose, the technical scheme of the invention is as follows: a herbicide comprising a component A and a Component B as active components,…”;). ‘997 also expressly teaches wherein the composition is combined with an acceptable excipient which reads on the claimed herbicidal composition preparation (see formulation example 1; claims; Table 2 example 7; paragraph immediately following table 1 which was cited below). ‘997 further teaches wherein their composition can take any form known for agricultural compositions (any forms which are effective/allowable for formulating pesticides) and further teach wherein their compositions can comprise excipients such as wetting agents/surfactants (see paragraph just after the end of table 1, begins with: The herbicide composition provided by the invention also comprises an auxiliary agent…; examples 1-2; formulation example 1; claims; Table 2 example 7). ‘997 teaches applying their very similar herbicidal composition to control weeds which are not cultivated, specifically ‘997’s herbicidal composition/combination only differs in that their glyphosate is a glyphosate salt which is a different form of glyphosate than is claimed in claim 2 (claims; formulation example 1; claims; Table 2 example 7; Tables 2-3 the paragraph below table 3).
Regarding claim 4, ‘997 specifically teaches wherein the total weight of the herbicidal composition to the herbicidal composition preparation is 16.2% of the total weight of the herbicidal composition preparation which reads on the claimed range (Example 1).
Regarding claim 9, the examiner notes that claim 9 does not actually require the presence of a viscosity regulator as claim 2 states this is not necessarily a required component (the claim now states agropharmaceutical acceptable excipient comprises at least one selected from the group consisting of….). Claim 9 merely further defines the viscosity regulator when it is present (in the composition preparation).
It would have been obvious to one of ordinary skill in the art to form the claimed composition by combining glyphosate in the claimed ratios into the herbicidal formulations of ‘345 specifically the dispersible oil suspension agent of ‘345 because ‘997 teaches that glyphosate salts and glyphosate are known to be used with the claimed benzylazole in the claimed ratios and it also would have been obvious to one of ordinary skill in the art to use these compositions to control weeds in the claimed method because glyphosate/glyphosate salts and applicant’s claimed benzylazole/3-(2-chloro-4-fluoro-5-(3-methyl- 2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl) phenyl)-5-methyl- 4,5-dihydroisoxazole-5-carboxylate ethyl ester are already known in the art to be used in combinations in the claimed/overlapping weight ratios to control weeds as that is the common use of known herbicides which is what applicant’s benzylazole and glyphosate are. Thus, one of ordinary skill in the art would conclude that the instantly claimed inventions are obvious variants of copending ‘345 when taken in view of ‘997.
This is a provisional nonstatutory double patenting rejection.
Claims 2, 4, and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of US Patent No. 11758908 (‘908) in view of CN108207997B (‘997), CN110692643 and CN110786323.
‘908 teaches/claims herbicidal compositions comprising applicant’s benzylazole which is ‘908’s component A, and as component B glufosinate, specifically in the form of glufosinate ammonium in mass ratios of 1:1.5-1:2 of component A to component B which is different from the claimed ratios. ‘908 does not teach wherein the glyphosate ammonium can just be glyphosate and is present in the claimed ratios or wherein the composition is also in the form of dispersible oil suspensions. However, these deficiencies in ‘908 are addressed by ‘997, CN110692643 and CN110786323.
Regarding claim 2, ’997 teaches and claims herbicidal combinations/compositions comprising the claimed benzylazole, specifically 3-(2-chloro-4-fluoro-5-(3-methyl- 2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylate ethyl ester, which is ‘997’s compound A-6 from Table 1 and which is called A1 in the formulation/preparation examples, and which they expressly teach in combination with their component B1 which is glyphosate isopropylamine salt, which is a salt form of the claimed glyphosate, in weight ratios of 1:40 to 1:1, of benzylazole:glyphosate which read on the claimed weight ratios (see entire document; Table 1: A-6; claims 1-5, specifically 1 and 3; see paragraph/statement: The weight ratio of the component A to the component B is 1:40-1:1; Table 2 example 7). ‘997 also teaches wherein the glyphosate can be glyphosate or salts or esters thereof (see paragraph beginning: In order to achieve the purpose, the technical scheme of the invention is as follows: a herbicide comprising a component A and a Component B as active components,…”;). ‘997 also expressly teaches wherein the composition is combined with an acceptable excipient which reads on the claimed herbicidal composition preparation (see formulation example 1; claims; Table 2 example 7; paragraph immediately following table 1 which was cited below). ‘997 further teaches wherein their composition can take any form known for agricultural compositions (any forms which are effective/allowable for formulating pesticides) and further teach wherein their compositions can comprise excipients such as wetting agents/surfactants (see paragraph just after the end of table 1, begins with: The herbicide composition provided by the invention also comprises an auxiliary agent…; examples 1-2; formulation example 1; claims; Table 2 example 7). ‘997 teaches applying their very similar herbicidal composition to control weeds which are not cultivated, specifically ‘997’s herbicidal composition/combination only differs in that their glyphosate is a glyphosate salt which is a different form of glyphosate than is claimed in claim 2 (claims; formulation example 1; claims; Table 2 example 7; Tables 2-3 the paragraph below table 3).
Regarding claim 4, ‘997 specifically teaches wherein the total weight of the herbicidal composition to the herbicidal composition preparation is 16.2% of the total weight of the herbicidal composition preparation which reads on the claimed range (Example 1).
Regarding claim 9, the examiner notes that claim 9 does not actually require the presence of a viscosity regulator as claim 2 states this is not necessarily a required component (the claim now states agropharmaceutical acceptable excipient comprises at least one selected from the group consisting of….). Claim 9 merely further defines the viscosity regulator when it is present (in the composition preparation).
CN110692643 teaches dispersible oil suspension agents comprising the claimed benzylazole, specifically 3-(2-chloro-4-fluoro-5-(3-methyl- 2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl) phenyl)-5-methyl- 4,5-dihydroisoxazole-5-carboxylate ethyl ester and wherein these formulations c comprise a wetting dispersant, a thickener, and a carrier (see embodiments 3-4; ).
CN110786323 teaches dispersible oil suspension agents comprising the claimed glyphosate and wherein these formulations comprise an emulsifier, a dispersant, a thickener, and a dispersion medium (description; [0056-0057]; [0074]).
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the clamed herbicidal composition by combining glyphosate with applicant’s benzylazole, which the specification states/defines as 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl) phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylate ethyl ester because‘’908 clearly teaches it was known to combine glyphosate salts with the claimed benzylazole and ‘997 teaches that it is known to combine glyphosate or salts or esters thereof with the claimed benzylazole active compound in the claimed ratios and as such it would be obvious to substitute glyphosate in the claimed ratios with applicant’s benzylazole in ‘908 in order to form additional effective glyphosate and benzylazole herbicidal combinations.
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the herbicidal compositions of ‘908 and the combined references as discussed above wherein the glyphosate and benzylazole are in the claimed ratios, into the claimed dispersible oil suspension agent with the claimed wetting agents, thickeners, etc. because ‘908 does not limit their formulation type in their claims 1-2 and ‘997 teaches that their formulation types are not particularly limited and can take any form known for agricultural/pesticidal compositions, and as discussed above CN110692643 and CN110786323 together teach that it was known to form dispersible oil suspension agent formulations with glyphosate and with the claimed 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1-(2H)-yl) phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylate ethyl ester (applicant’s benzylazole) which can be combined with at least one of the claimed excipients of applicant’s claim 2. One of ordinary skill in the art would want to do this in order to form additional formulation types for herbicidal use by the end user because different formulation types are useful in different environments, climates, etc. and as such it would have been obvious to form known effective herbicide formulation types, specifically dispersible oil suspension agent with the combination of ‘908, ‘997, and CN110692643 and CN110786323 because it was already known that the claimed active agents can be formulated into dispersible oil suspension agents, water dispersible granules, etc. for herbicidal use as instantly claimed. Thus, one of ordinary skill in the art would conclude that the instantly claimed invention is an obvious variant of the invention disclosed in US Patent No. 11758908 when taken in view of the combined references as discussed above.
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the previous claim objections, 101, 112, and 103 rejections, and the double patenting rejection over copending 18743186 which are hereby withdrawn.
Applicant’s amendments to the claims have completely changed the scope of the composition to require a much narrower weight ratio of benzylazole and glyphosate together in the form of a dispersible oil suspension agent and which comprise agricultural excipients selected from at least one of the listed types, and wherein the dispersant and emulsifiers when present are selected from those specifically claimed in the specifically claimed ratios which again in the case of the dispersant is also narrower in scope/different from previously claimed, and as such these amendments to the claims have prompted the new grounds of rejection presented in this office action.
The examiner will address the arguments with respect to the prior art rejections under 103 first. Applicant’s arguments insofar as they pertain to the new grounds of rejection under 103 prompted by applicant’s amendments are addressed herein. Applicants first argue that their claim 2 now requires that the composition be in the form of a dispersible oil suspension agent, and that the composition contain and emulsifier wherein the emulsifiers is a combination of castor oil polyoxyethylene ether and phenylethylphenol polyoxyethylene ether sulfonate in a weight ratio of 1:0.1 to 1:0.5 and contains a dispersant, wherein the dispersant is combination of sulfonates and phosphate esters in a weight ratio of 1:0.1 to 1:1.5 wherein the sulfonates and phosphate esters are specifically defined. The examiner respectfully disagrees that the dispersant and emulsifiers are specifically required because claim 2 as amended states that the agropharmaceutical acceptable excipient comprises at least one selected from the group consisting of an emulsifier, a wetting agent, a dispersant, a stabilizer, a defoamer, a viscosity regulator and a base oil. Thus, dispersants and emulsifiers are still not actually required by applicant’s amended claims, the claims as written are further limiting the dispersants and emulsifiers when they are selected as the at least one agropharmaceutical acceptable excipient.
If applicants actually are trying to require the presence of the claimed dispersants and/or emulsifiers, then the claim should read: “…and the agrochemical acceptable excipient comprises at least one selected from the group consisting of an emulsifier and a dispersant; wherein the emulsifier is a combination of…; wherein the dispersant is a combination of sulfonates…”
Applicants further argue that CN108207997 (‘997) provides for a water-based herbicidal formulation preparation and point to paragraph 0050 whereas the instantly claimed composition is directed to a dispersible oil suspension agent and as such this prior art is not relevant to applicant’s claims. The examiner respectfully disagrees that ‘997 is limited to only water-based formulations because ‘997 actually states “The herbicide composition provided by the invention also comprises an auxiliary agent…which is allowable on pesticides, so that any one formulation which is allowable on pesticides can be prepared, such as an aqueous solution…” Thus, paragraph 0050 does not actually limit the formulation types to only aqueous formulation types, it actually states that any one formulation which is allowable on pesticides can be prepared using their active combinations and as such would broadly include the claimed dispersible oil suspension agent formulation type. Especially since, the courts have previously stated, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Thus, contrary to applicant’s assertion ‘997 is not limited to only the specifically exemplified composition types, e.g. aqueous composition types, as ‘997 is actually prior art for all it teaches and it teaches that any one formulation which is allowable on (with) pesticides can be prepared and the claimed composition type, dispersible oil suspension agent, is a formulation type which is known in the art to be allowable on/with pesticides and as such would be included within the formulation types which can be made with the active combinations of ‘997 especially in view of the secondary references cited above which teach that it was known to form each of the claimed active agents as dispersible oil suspension agents for effectively delivering the claimed benzylazole and glyphosate. Thus, it would be obvious to form the claimed dispersible oil suspension agent comprising both benzylazole and glyphosate in effective ratios because it is known, "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).
Applicants then argue that the prior art does not address applicants technical problem. In response to applicant's argument that the prior art does not address applicant’s technical problem, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Especially since applicant’s amended claims do not actually require the specific dispersants and the specific emulsifiers as the composition contains an agropharmaceutical acceptable excipient, and the agropharmaceutical acceptable excipient comprises at least one selected from the group consisting of those listed in the claims. Thus, nowhere in the claims are the specific emulsifiers and dispersants actually required to be selected as the at least one agropharmaceutical acceptable excipient as the claim is currently written and as such applicant’s argued technical problem actually does not even have to be addressed with applicants claimed compositions which are actually much broader in scope than the exemplified stable herbicidal dispersible oil suspension agents in applicants specification, further applicants claimed composition as currently written does not actually require the necessary components to achieve their argued stability or even require that the claimed herbicidal dispersible oil suspension agents have any stability. Thus, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., stable herbicidal dispersible oil suspension agents) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants then argue technical features 2) and 3) which as discussed above are not actually required to be present in applicants claimed composition based on the amended language of claim 2 as it is currently written. Applicants argue that these components can prevent flocculation of the herbicidal composition particles and improve the stability of the preparation/composition. Again the examiner respectfully points out that these components are not required by applicants claims as they are currently written for the reasons which are detailed above and further stability or the prevention of flocculation, etc. is also not required by applicants composition as currently claimed. Thus, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., stable herbicidal dispersible oil suspension agents comprising applicant’s technical features 2 and 3) are recited in the rejected claim(s) but not actually required to be present in the claims as they are currently written and as such if these components are actually required and/or a critical/important component of applicants composition in order to achieve their argued technical effects/benefits then applicants should consider potentially amending their claims to use language which requires the presence of these critical components.
Applicants then argue the CN110692643 and CN110786323 references and that they only teach single herbicidal active agent containing dispersible oil suspension agents rather than combinations of actives in dispersible oil suspension agents and as such do not recognize applicants synergistic effects. The examiner respectfully firstly points out that applicants firstly have not clearly demonstrated that their combinations achieve synergy as the examiner does not see any clear calculations demonstrating that the combined effects of glyphosate and the claimed benzylazole in the claimed ratios achieve a greater than the expected additive result when applied only at the instantly claimed ratios, e.g. that the effects are truly unexpected. Additonally, it appears that even if applicants are able to demonstrate that they have achieved synergy with their combinations, this effect is not unexpected as CN108207997B clearly teaches that the combinations of applicants benzylazole and glyphosate and glyphosate salts thereof were known to be synergistic when combined in ratios which overlap those instantly claimed (See entire document; paragraph/section starting with: The composition provided by the invention has the following advantages: 1. the herbicide has very obvious synergistic effect between two active ingredients…; claims; abstract; 1st paragraph after the heading Detailed Description; Table 1 and paragraph immediately after Table 1; Tables 2 and 3 and paragraph immediately following tables; last paragraph of disclosure). Wherein A1 in the examples is compound A-6 in table 1 which is applicant’s benzylazole and B1, B2 and B3 are all forms of glyphosate/glyphosate salts. Thus, it is a property of applicant’s benzylazole and glyphosate when combined in the ratios taught by the prior art which encompass the claimed ratios that the combinations are synergistic/do exhibit synergy and as such applicant’s argued unexpected synergy is not in fact unexpected based on the teachings/evidence provided by ‘997 and ‘997 teaches that these synergistic combinations can be formulated into any formulation type suitable for pesticides which would include the claimed formulation type especially since it was known to formulate both glyphosate and the claimed benzyazole as dispersible oil suspension agents and as such their combination together into a dispersible oil suspension agent would have been obvious to do especially since the combination of benzylazole and glyphosate is known to be synergistic as taught by ‘997 and as such would provide motivation to combine these actives into all known effective delivery formulation types for pesticide applications including the claimed, dispersible oil suspension agents. Applicants then argue that it would be impossible to directly deduce the technical means to achieve suspension stability. The examiner respectfully points out that nothing in the instant claims as currently written require suspension stability or actually requires the specific dispersant or emulsifiers that applicants prefer which has been discussed above at length and is incorporated herein at this time.
Applicants then argue the double patenting rejections and argue that the key solution/invention of the instant claims lies in the specific combination of emulsifier and dispersants in the defined weight ratios which applicants data does appear to show is critical to their invention and that other emulsifiers/dispersants do not work for stability. The examiner respectfully points out that the instant claims as currently written do not actually require the key feature of applicants invention as has been discussed above at length. Thus, because this key feature is not actually required by applicant’s amended claims the prior art in view of the cited double patenting documents does still render the instant claims obvious at this time, especially since the argued enhanced stability, etc. is not required by applicants claimed composition for the reasons which have already been discussed above at length and are now incorporated herein. The examiner does note that compositions which utilize different emulsifiers/dispersants from those which are instantly claimed when present have been overcome by applicants amendments (because applicants data does show that other dispersants and emulsifiers do not work in their compositions (See Table 1) and these rejections have been withdrawn as discussed above.
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.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the 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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/ERIN E HIRT/Primary Examiner, Art Unit 1616