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 .
Status of the Claims
Claims 7-16 are pending and under current examination. Claims 1-6 are cancelled.
Withdrawn Claim Rejections
All rejections pertaining to claims 1-6 are moot because the claims are cancelled in the amendments to the claims filed 4/15/2026.
All double patenting rejections over U.S. Patent No. 11,684,068 are withdrawn in view of the terminal disclaimer filed and approved 4/21/2026.
All rejections not reiterated have been withdrawn.
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.
Claims 7-16 are rejected under 35 U.S.C. 103 as being unpatentable over Patel (IN202021052425, publication date: 3/6/2022, cited in the IDS filed 2/14/2024, of record).
Regarding claims 7 and 14, Patel discloses an herbicidal composition comprising an effective amount of 4-amino-6-tert-butyl-3-methylsulfanyl-1,2,4-triazin-5-one (metribuzin), an effective amount of [5-(difluoromethoxy)-1-methyl-3-(trifluoromethyl)-1Hpyrazol-4-yl]methyl 4,5-dihydro-5,5-dimethylisoxazol-3-yl sulfone (pyroxasulfone), at least one additional herbicidal compound, and, optionally, agriculturally acceptable excipients [0013]. The additional herbicide may be flumioxazin [0014]. The agriculturally acceptable excipient is selected from wetting agents, dispersing agents, suspending agents, anti-foaming agents, anti-freezing agents, preservatives, thickeners, solvents, emulsifiers, stabilizers, buffering agents, solid carriers, humectants, disintegrating agents, fillers, colorants, fertilizers, surfactants, tackifiers, pH regulators, and a combination thereof [0015]. Patel also teaches that sodium alkyl naphthalene sulfonate blend may be included in the composition as a wetting agent [00147-00148]. The solvent may be water [00102]. Patel teaches that the thickener is selected from xanthan gum, magnesium aluminum silicate, and hydroxyethyl cellulose [00101]. Glycerol may be present as a humectant [00109].
Regarding claims 7, 8, and 14, Patel teaches that the metribuzin may be present in an amount from 0.01-50% by weight of the composition [0017] and pyroxasulfone may be present in an amount from 0.01-50% by weight of the composition [0016]. The additional herbicidal compound may be present in an amount from 0.01-50% by weight of the composition [0018]. Sodium alkyl naphthalene sulfonate blend is present at 2% by weight in a wettable granule composition [00147]. Xanthan gum is present at 0.15% by weight in a suspension concentrate composition [00145]. Glycerol may be present as a humectant [00109]. The agriculturally acceptable excipients are present from 0-80% by weight [0019].
Regarding claims 13 and 16, Patel teaches that the composition may be used in a method of controlling growth of undesired plants by application of a herbicidally effective amount of the composition [00130].
Regarding claims 9, 10, and 14, Patel teaches that the thickener is selected from xanthan gum, magnesium aluminum silicate, and hydroxyethyl cellulose [00101]. Xanthan gum is present at 0.15% by weight in a suspension concentrate composition [00145]. Glycerol may be present as a humectant [00109]. The agriculturally acceptable excipients are present from 0-80% by weight [0019].
Regarding claims 11, 12 and 15, Patel teaches that propylene glycol may be included as a solvent in combination with water [00102] or as an anti-freezing agent at 5% by weight [00140]. The anti-foaming agent may be a silicone antifoam emulsion [0098]. The preservative present in the composition may be 1,2,-benzisothiazolin-3-one [00100]. 1,2-benzisothiazoline-3-one is present at 0.15% by weight in a suspension concentrate composition [00145]. The agriculturally acceptable excipients are present from 0-80% by weight [0019].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 7, 8, and 14, Patel does not teach the specific weight percentage ranges of herbicides present in the composition.
Regarding claims 7, 8, 9, 11, 12, 14, and 15, Patel does not teach the specific weight percentage ranges of magnesium aluminum silicate, glycerol, or silicone emulsion present in the composition.
Regarding claims 11, 12, and 15, Patel does not specify that the 1,2-benzisothiazolin-3-one present in the composition is 19.3% 1,2-benzisothiazolin-3-one.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding the weight percentages of metribuzin, flumioxazin, and pyroxasulfone as specified in claims 7, 8, and 14, 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).
Furthermore, Patel teaches that the composition comprises a synergistic combination of herbicide compounds for effective control for a wide array of weeds [0043] and that the effective amount of herbicide present may be dependent on the time, soil, target weeds, crops and environmental conditions at the time of application [0041]. The Applicants' specification provides no evidence that the selected weight percentage ranges in claims 7, 8, and 14 were not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the synergistic effect of the herbicides present in the composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentages of herbicides present in the composition. One of ordinary skill in the art would have been motivated to change the weight percentage as this could be expected to be advantageous for targeting a specific weed population under different environmental conditions.
Regarding the weight percentages of magnesium aluminum silicate, glycerol, and silicone antifoam emulsion as specified in claims 7, 9, 10, 11, 12, 14, and 15, 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).
Furthermore, Patel teaches that magnesium aluminum silicate may act as a suspending agent [0097] or thickener [00101], glycerol may act as a humectant [00109], and the silicone antifoam emulsion may act as an anti-foaming agent [0098]. The Applicants' specification provides no evidence that the selected weight percentages in claims 7, 9, 10, 11, 12, 14, and 15 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effects of the excipients on the formulation of the composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentages of the excipients present in the composition. One of ordinary skill in the art would have been motivated to change the weight percentage range as this could be expected to be advantageous to optimize the desired formulation of the herbicidal composition.
Regarding claims 11, 12, and 15, the percentage of 1,2-benzisothiazolin-3-one used in the herbicidal composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentage in order to best achieve the desired results as such would provide advantageous preservative effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Patel teaches that 1,2-benzisothiazolin-3-one may be present in the composition as a preservative [00100]. The Examiner considers it prima facie obvious to optimize the percentage of preservative used in the herbicidal composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the percentage of preservative present in the composition would have a direct effect on the stability of the composition and therefore be an optimizable variable.
Response to Arguments
Applicant's arguments filed 4/15/2026 have been fully considered but they are not persuasive.
On page 4, Applicant argues that a formulation containing glycerol unexpectedly results in a formulation that is chemically stable. Applicant argues that the unexpected result is that only compositions T-AE have acceptable levels for all of the stability parameters. This is not found persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected results amounts to an increased stability of aqueous herbicide compositions following storage at high temperatures and freeze/thaw cycles. However, The compositions that have acceptable levels of for all stability parameters, T-AE, do not contain the 35% graft copolymer, alkylphenol ethoxylate free nonionic wetter and dispersant package, and PVA that is present in all of the unacceptable formulations, X and A-R. Therefore, the Applicant has not clearly demonstrated that the increased stability observed for compositions T-AE is due to the presence of glycerol and not the absence of the 35% graft copolymer, alkylphenol ethoxylate free nonionic wetter and dispersant package, and PVA that is present in formulations X and A-R.
Differences are of both practical and statistical significance: The differences presented in Example 1, Table 2, amount to increased stability of the herbicide formulation with the inclusion of glycerol, therefore the differences are of practical significance. The Applicant provides no statistical analysis of the data contained within Table 2. Therefore, the differences are not of statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The claims embrace an herbicidal composition that contains 5 to 15% w/w glycerol. Therefore, the evidence of unexpected properties must demonstrate increased stability at glycerol concentrations from 5 to 15% w/w. However, the evidence provided in Table 2 pertains only to glycerol concentrations of 10% w/w. Therefore, the evidence of unexpected properties is in commensurate scope with the claims.
Additionally, no side-by-side comparison to the closest prior art is provided to establish unexpectedly superior performance. There is no nexus between the purportedly unexpected property and the differences between the instant invention, as claimed, and the closest prior art. Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
On page 4, Applicant argues that because Patel lists glycerol among many other compounds, a skilled artisan would understand that based on this teaching, other compounds such as urea would suffice and that the Applicant has demonstrated that the inclusion of glycerol is required. This is not found persuasive. In response, as described in the response to arguments above, the Applicant has not established that the inclusion of glycerol is essential to the stability of the composition. Furthermore, simply because the prior art “discloses a multitude of effective combinations does not render any particular formulation less obvious." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). "[P]icking and choosing may be entirely proper in the making of a 103, obviousness rejection." In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
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 7-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,369,587 in view of Patel (IN202021052425, publication date: 3/6/2022, cited in the IDS filed 2/14/2024).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘587 patent embrace an aqueous composition comprising epyrifenacil, flumioxazin, and pyroxasulfone. Pyroxasulfone may be present from about 1-10% w/w and flumioxazin may be present from about 1-10% w/w. The composition may comprise one or more thickeners chosen from a group including aluminum magnesium silicate and xanthan gum. The one or more thickeners is at a concentration from about 0.1-1% w/w/ and xanthan gum may be present at 0.19% w/w. Magnesium aluminum silicate may present at a concentration of about 0.4% w/w. A silicone-based antifoaming agent may be present at a concentration from 0.2-0.3% w/w and 19.3% 1,2-benzisothiazolin-3-one may be present at 0.2% w/w. The composition may be used in a method of controlling a week comprising applying the composition of claim 1 to the weed or an area in need of weed control.
The claims of the ‘587 patent do not embrace metribuzin, propylene glycol, glycerol, or sodium alkyl naphthalene sulfonate condensate in the herbicidal composition. However, this deficiency is cured by Patel. Patel discloses an herbicidal composition comprising an effective amount of 4-amino-6-tert-butyl-3-methylsulfanyl-1,2,4-triazin-5-one (metribuzin), an effective amount of [5-(difluoromethoxy)-1-methyl-3-(trifluoromethyl)-1Hpyrazol-4-yl]methyl 4,5-dihydro-5,5-dimethylisoxazol-3-yl sulfone (pyroxasulfone), at least one additional herbicidal compound, and, optionally, agriculturally acceptable excipients [0013]. The additional herbicide may be flumioxazin [0014]. Metribuzin may be present in an amount from 0.01-50% by weight of the composition [0017]. The agriculturally acceptable excipient is selected from wetting agents, dispersing agents, suspending agents, anti-foaming agents, anti-freezing agents, preservatives, thickeners, solvents, emulsifiers, stabilizers, buffering agents, solid carriers, humectants, disintegrating agents, fillers, colorants, fertilizers, surfactants, tackifiers, pH regulators, and a combination thereof [0015]. Patel also teaches that sodium alkyl naphthalene sulfonate blend may be included in the composition as a wetting agent [00147-00148]. The solvent may be water [00102]. Patel also teaches that propylene glycol may be included as a solvent in combination with water [00102] or as an anti-freezing agent at 5% by weight [00140]. and that glycerol may be present as a humectant [00109]. Xanthan gum is present at 0.15% by weight in a suspension concentrate composition [00145], sodium alkyl naphthalene sulfonate blend is present at 2% by weight in a wettable granule composition [00147], and the agriculturally acceptable excipients are present from 0-80% by weight [0019].
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (metribuzin, flumioxazin, and pyroxasulfone for the purpose of forming an herbicidal composition), in order to form a third composition to be used for the very same purpose. See MPEP 2144.06 (I).
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional anti-freezing agents, wetters, and humectants used in herbicidal compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
The weight percentage of metribuzin present in to herbicidal composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentage of metribuzin in order to best achieve the desired results as such would provide advantageous herbicidal effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Patel teaches that the composition comprises a synergistic combination of herbicide compounds for effective control for a wide array of weeds [0043] and that the effective amount of herbicide present may be dependent on the time, soil, target weeds, crops and environmental conditions at the time of application [0041]. The Examiner considers it prima facie obvious to optimize the weight percentage of metribuzin present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the weight percentage of metribuzin would have a direct effect on the herbicidal activity of the composition and therefore be an optimizable variable.
Claims 7-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-14 of copending Application No. 17/698,165 in view of Patel (IN202021052425, publication date: 3/6/2022, cited in the IDS filed 2/14/2024).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘165 application embrace an aqueous herbicidal solution comprising about 10-20% w/w metribuzin and about 1-30% w/w flumioxazin. The solution may also contain about 1% w/w magnesium aluminum silicate, about 4% w/w propylene glycol, and about 0.1% w/w of a silicone emulsion. The solution may be used in a method of controlling a weed comprising applying the solution to the weed or an area in need of weed control.
The claims of the ‘165 application do not embrace the inclusion of pyroxasulfone, xanthan gum, sodium alkyl naphthalene sulfonate condensate, glycerol, or 1,2-benzisothiazolin-3-one in the herbicidal solution. However, this deficiency is cured by Patel. Patel discloses an herbicidal composition comprising an effective amount of 4-amino-6-tert-butyl-3-methylsulfanyl-1,2,4-triazin-5-one (metribuzin), an effective amount of [5-(difluoromethoxy)-1-methyl-3-(trifluoromethyl)-1Hpyrazol-4-yl]methyl 4,5-dihydro-5,5-dimethylisoxazol-3-yl sulfone (pyroxasulfone), at least one additional herbicidal compound, and, optionally, agriculturally acceptable excipients [0013]. The additional herbicide may be flumioxazin [0014]. Pyroxasulfone may be present in an amount from 0.01-50% by weight of the composition [0016]. The agriculturally acceptable excipient is selected from wetting agents, dispersing agents, suspending agents, anti-foaming agents, anti-freezing agents, preservatives, thickeners, solvents, emulsifiers, stabilizers, buffering agents, solid carriers, humectants, disintegrating agents, fillers, colorants, fertilizers, surfactants, tackifiers, pH regulators, and a combination thereof [0015]. Patel also teaches that sodium alkyl naphthalene sulfonate blend may be included in the composition as a wetting agent [00147-00148]. The solvent may be water [00102]. The preservative present in the composition may be 1,2,-benzisothiazolin-3-one [00100] at 0.15% by weight in a suspension concentrate composition [00145] and glycerol may be present as a humectant [00109]. Xanthan gum is present at 0.15% by weight in a suspension concentrate composition [00145], sodium alkyl naphthalene sulfonate blend is present at 2% by weight in a wettable granule composition [00147], and the agriculturally acceptable excipients are present from 0-80% by weight [0019].
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (metribuzin, flumioxazin, and pyroxasulfone for the purpose of forming an herbicidal composition), in order to form a third composition to be used for the very same purpose. See MPEP 2144.06 (I).
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional thickeners, wetters, preservatives, and humectants used in herbicidal compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
The weight percentage of pyroxasulfone present in to herbicidal composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentage of pyroxasulfone in order to best achieve the desired results as such would provide advantageous herbicidal effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Patel teaches that the composition comprises a synergistic combination of herbicide compounds for effective control for a wide array of weeds [0043] and that the effective amount of herbicide present may be dependent on the time, soil, target weeds, crops and environmental conditions at the time of application [0041]. The Examiner considers it prima facie obvious to optimize the weight percentage of pyroxasulfone present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the weight percentage of pyroxasulfone would directly affect the herbicidal activity of the composition and therefore be an optimizable variable.
Regarding the weight percentages of excipients in the composition as specified the instant claims, 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).
Furthermore, Patel teaches that magnesium aluminum silicate may act as a suspending agent [0097] or thickener [00101] and the silicone antifoam emulsion may act as an anti-foaming agent [0098]. The Applicants' specification provides no evidence that the selected weight percentages in the instant claims was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effects of the excipients on the formulation of the composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentages of the excipients present in the composition. One of ordinary skill in the art would have been motivated to change the weight percentage range as this could be expected to be advantageous to optimize the desired formulation of the herbicidal composition.
This is a provisional nonstatutory double patenting rejection because the copending claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 4/15/2026 have been fully considered but they are not persuasive.
Applicant’s arguments filed 4/15/2026 with respect to the provisional nonstatutory double patenting rejection over claims 1-3 and 10-14 of copending application no. 17/698,165 have been fully considered but they are not persuasive because there is no valid terminal disclaimer on file for the co-pending claims.
On page 5, Applicant argues that a skilled artisan would not be motivated to combine the claims of the ‘587 patent with Patel to arrive at the instant invention because the only overlap between the ‘587 patent and Patel is the teaching of flumioxazin, xanthan gum, and 1,2-benzisothiazoline-3-one. This is not found persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, based on the teachings of the claims of the ‘587 patent in view of Patel, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (metribuzin, flumioxazin, and pyroxasulfone for the purpose of forming an herbicidal composition), in order to form a third composition to be used for the very same purpose. See MPEP 2144.06 (I).
On page 5, Applicant argues that the instant claims are patentable distinct over the ‘587 patent in view of Patel because Applicant has demonstrated that the addition of glycerol provides unexpected results. This is not found persuasive. As described in the response to arguments against the obviousness rejections above, the Applicant has not clearly demonstrated the criticality of glycerol to the stability of the composition, has provided no statistical analysis of the data, and has not compared the data to the closest prior art; therefore, the evidence of unexpected results is not persuasive.
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 ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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