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 .
Detailed Action
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 28 March 2024 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner. See attached copy of PTO-1449.
Status of Application
2. The instant application is a national stage entry of PCT/IL2022/050246 filed 4 March 2022. Claims 1-2, 7, 16, 22, 25, 28, 31, 34, 37, 40, 44-45, 50, 54-55, 59, and 71 are currently pending and examined on the merits within.
Claim Rejections – 35 U.S.C. 112(b)
3. 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.
4. Claims 7, 16, 22, 25, 28, 31, 34, 37, 40, 44, 50, 54, 59, and 71 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.
5. Claim 7 recites the limitation "the solid form" in lines 1, 10, 19, 27 and 36. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-sodium, there is no recitation of solid form.
6. Claim 16 recites the limitation "the solid form" in lines 1, 9, 17, and 25. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-sodium, there is no recitation of solid form.
7. Claim 22 recites the limitation "the solid form" in lines 1 and 10. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-sodium, there is no recitation of solid form.
8. Claim 25 recites the limitation "the solid form" in lines 1 and 9. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-sodium, there is no recitation of solid form.
9. Claim 28 recites the limitation "the solid form" in lines 1 and 8. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-sodium, there is no recitation of solid form.
10. Claim 31 recites the limitation "the solid form" in lines 1 and 11. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-sodium, there is no recitation of solid form.
11. Claim 34 recites the limitation "the solid form" in lines 1 and 12. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-sodium, there is no recitation of solid form.
12. Claim 37 recites the limitation "the solid form" in lines 1 and 9. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-sodium, there is no recitation of solid form.
13. Claim 40 recites the limitation "the solid form" in lines 1 and 9. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-sodium, there is no recitation of solid form.
14. Claim 44 recites the limitation "the solid form" in line 1. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-sodium, there is no recitation of solid form.
15. Claim 50 recites the limitation "the solid form" in lines 1 and 10. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-potassium, there is no recitation of solid form.
16. Claim 54 recites the limitation "the solid form" in line 1. There is insufficient antecedent basis for this limitation in the claim. Although claim 1 recites saflufenacil-potassium, there is no recitation of solid form.
17. Claim 59 recites the limitation "to the conversion of the solid form of Saflufenacil-sodium to saflufenacil" in line 2. There is insufficient antecedent basis for this limitation in the claim. There is no mention in claim 44 of “a conversion” of Saflufenacil-sodium. In addition, the claim is directed to a method of making Saflufenacil-sodium, not Saflufenacil. It is unclear why a method of making Saflufenacil-sodium includes a step of converting to Saflufenacil after the salt is formed, when the preamble is directed to making the Saflufenacil-sodium as the final product. Clarification is requested.
18. Claim 71 recites the limitation "to the conversion of the solid form of Saflufenacil-potassium to saflufenacil" in line 2. There is insufficient antecedent basis for this limitation in the claim. There is no mention in claim 54 of “a conversion” of Saflufenacil-potassium. In addition, the claim is directed to a method of making Saflufenacil-potassium, not Saflufenacil. It is unclear why a method of making Saflufenacil-potassium includes a step of converting to Saflufenacil after the salt is formed, when the preamble is directed to making the Saflufenacil-potassium as the final product. Clarification is requested.
Claim Rejections – 35 U.S.C. 102
19. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
20. Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hajime (BR102012030667).
Regarding instant claims 1-2, Hajime disclose Saflufenacil potassium salt. See Table 1.
Thus the instant claims are anticipated by Hajime.
Claim Rejections – 35 U.S.C. 103
21. 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.
22. Claim(s) 1-2, 7, 16, 22, 25, 28, 31, 34, 37, 40, 44-45, 50, 54-55, 59, and 71 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hajime (BR102012030667) in view of Gebhardt et al. (U.S. Patent No. 7,847,097).
Hajime teach Saflufenacil potassium salt. See Table 1.
Hajime do not teach adding saflufenacil to solvent followed by addition of a base.
Gebhardt et al. teach a process for making a phenyluracil or herbicidally acceptable salt thereof. See claim 1. The reaction is carried out in an aqueous/organic multiphase system. See claim 8. The aqueous phase is a solution of at least on alkali metal or alkaline earth metal hydroxide, carbonate, or bicarbonate. See claim 10. Suitable bases include sodium hydroxide, potassium hydroxide, sodium carbonate, potassium carbonate and sodium bicarbonate. See column 13, lines 4-10. Solvents include toluene, chlorobenzene, methanol, etc. See column 10, lines 63-67 and column 11, lines 1-18. Acid addition salts can be achieved through the use of chlorides. See column 3, lines 30-35.
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to use a solvent and base to formulate the potassium or sodium salt of Saflufenacil because using solvents such as chlorobenzene, toluene, and methanol and bases such as sodium or potassium hydroxide are known to be used in reactions to form similar solid herbicidal compounds with a phenyluracil structure. It would have been well within the purview of the skilled artisan to add hydrochloric acid to the process in the conversion of the final product because Gebhardt et al. teach the use of both acids and bases in conversion of phenyluracils to arrive at a desired salt form. It would have been expected for the salt form of Saflufenacil to have the same properties when analyzed under X-ray powder diffraction.
Conclusion
23. No claims are allowed at this time.
24. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WORSHAM whose telephone number is (571)270-7434. The examiner can normally be reached Monday-Friday (8-5).
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/JESSICA WORSHAM/Primary Examiner, Art Unit 1615
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