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 .
Acknowledgement is made to Applicant’s preliminary amendment to the claims filed 01/29/2024.
Claims 1-16 are pending and are currently under consideration.
Claims 3-10 and 12-14 are currently amended.
Claim 16 is newly added.
Claim interpretation
Claims 1-9, 14, and 15 are directed to “use” claims, which are not a statutory class. For the sake of compact prosecution, said claims are being interpreted as if they had been properly formatted as method claims, though notably, several of said claims do not comprise an active method step, wherein if they were simply reformed to make them a method, they would be deficient in their failure to recite an active method step.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9, 14, and 15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because they are directed to “use” claims which are not a statutory class. See MPEP 2173.05(q)(I)).
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.
Claims 1-9, 14, and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-9, 14, and 15 are directed to “use claims”, and said claims are therefore deemed to be indefinite.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 2, 5-7, 14, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Auler et al (WO 2020/078874) (IDS Reference).
Claim interpretation note: due to the nature of the “use” claims, it is unclear if the limitation directed to “for protection of wheat crop plants” in claim 1 is an intended use or an active method step. This equally applies to the “use” in claims 14 and 15. If said limitations are intended uses, the claims are properly rejected under 102.
Auler teaches a method of controlling weed plants in crops, and specifically cereal crops, comprising a composition which comprises ethofumesate, 2-[(2,4-dichlorophenyl)methyl]-4,4-dimethyl-isoxazolidin-3-one, and a safener (see entire document, for instance, claims 1, 8, and 9). The safener is taught as being mefenpyr-diethyl or cloquintocet-mexyl (see entire document, for instance, claims 2 and 3). The ethofumesate and 2-[(2,4-dichlorophenyl)methyl]-4,4-dimethyl-isoxazolidin-3-one are taught as being in a ratio of 1:20 to 20:1, and exemplifies the use of 2.5:1 and 1.25:1 (see entire document, for instance, claim 6, the second table on page 22, and the second table on page 21). The ethofumesate and 2-[(2,4-dichlorophenyl)methyl]-4,4-dimethyl-isoxazolidin-3-one are further taught as being present in amounts of 200-600 g/ha (with an exemplified amount of 250) and 100-400 g/ha (with an exemplified amount of 200), respectively (see entire document, for instance, page 13, Table 1, and the second table on page 21). The composition is further taught as comprising auxiliaries (see entire document, for instance, claim 7).
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.
Claim(s) 1-16 (all claims currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable Auler et al (WO 2020/078874) and Lockett et al (WO 2008/075065) (both IDS references).
Auler teaches a method of controlling weed plants in crops, and specifically cereal crops, comprising a composition which comprises ethofumesate, 2-[(2,4-dichlorophenyl)methyl]-4,4-dimethyl-isoxazolidin-3-one, and a safener (see entire document, for instance, claims 1, 8, and 9). The composition is taught as being applied pre-emergence, early post-emergence, or post emergence (see entire document, for instance, page 12, last paragraph). The safener is taught as being mefenpyr-diethyl or cloquintocet-mexyl (see entire document, for instance, claims 2 and 3). The ethofumesate and 2-[(2,4-dichlorophenyl)methyl]-4,4-dimethyl-isoxazolidin-3-one are taught as being in a ratio of 1:20 to 20:1, and exemplifies the use of 2.5:1 and 1.25:1 (see entire document, for instance, claim 6, the second table on page 22, and the second table on page 21). The ethofumesate and 2-[(2,4-dichlorophenyl)methyl]-4,4-dimethyl-isoxazolidin-3-one are further taught as being present in amounts of 200-600 g/ha (with an exemplified amount of 250) and 100-400 g/ha (with an exemplified amount of 200), respectively (see entire document, for instance, page 13, Table 1, and the second table on page 21). The composition is further taught as comprising auxiliaries (see entire document, for instance, claim 7). Auler further teaches that the active agent is present between 10-95% for wettable powders, 5-80% for emulsifiable concentrates, 5-20% for dust formulations, 0.2-25% for sprayable solutions, and 10-90% for water-dispersible granules, with the remainder being the customary formulation constituents, which includes the safeners (see entire document, for instance, page 17, lines 20-27).
Auler, while teaching the instantly claimed components and teaching that the composition is preferably utilized for controlling undesirable vegetation in fields in which cereal crops are grown, does not directly indicate that the cereal crop is wheat. Further, Auler, while teaching overlapping ranges for the additives, such as safeners, does not exemplify the instantly claimed amount.
Lockett teaches that compositions comprising ethofumesate are particularly useful for the protection of wheat crops (see entire document, for instance, Abstract). The wheat crops are taught as including Duram wheat (T. durum), and particularly preferably common wheat (T. aestivum) (see entire document, for instance, page 2, lines 19-23).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention to utilize the composition of Auler for protection of the cereal crop common wheat as taught by Lockett. One would have been motivated to do so since Auler teaches that the composition of Auler is useful for cereal crops, wherein Lockett teaches that one of the main active agents is particularly useful for common wheat. There would be a reasonable expectation of success since both Auler and Lockett are directed to protecting cereal crops utilizing ethofumesate.
It further would have been obvious to optimize the amount of safener in the composition. One would have been motivated to do so since Auler teaches that the amount of active varies, depending on the intended form of the composition, wherein Auler expressly teaches that safeners should be present. Further, since safeners are understood to have a specific role in the composition, one would have been motivated to optimize the safener in Auler in order to arrive at a composition with optimized safener properties. It is further noted that MPEP 2144.05 states: "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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611