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 Application
Claims 1-15 are pending
Claims 1-15 are under consideration in the instant office action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/09/2023, 12/16/2025, and 05/12/2026 comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, it has been placed in the application file and the information therein has been considered as to the merits. See attached copy of the PTO-1449.
Priority
This application claims benefit of European Application No. EP21173152.6 filed on 05/10/2021 and PCT Application No. PCT/EP2022/061733 filed on 05/02/2022.
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 10 and 13 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.
The term “unwanted” in claim 10 is a relative term which renders the claim indefinite. The term “unwanted” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to what would constitute unwanted plant growth or .
Claim 10 recites the limitation "the unwanted plants" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim 13 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility.
The claimed invention is not supported by a well established utility since claim 13 does not recite a specific method of using a composition comprising a compound of formula (I) and a compound of formula (II)
Claim 13 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Satterfield (WO 2015/084796, as disclosed in IDS) and further in view of Nakaya (EP 3,006,444, as disclosed in IDS).
Satterfield teaches compound of Formula I for use in controlling undesired vegetation (see abstract). Satterfield teaches N-(2-fluorophenyl)-2-oxo-4-[ 4-(trifluoromethyl)phenyl]-3-pyrrolidine carboxamide (i.e. compound of formula (I); Tetflupyrolimet) as a specific embodiment of Formula I (pg. 23, lines 29-34). Satterfield teaches such compounds formulated with surfactants or diluents, and in combination with other herbicides, herbicide safeners, or pesticides (pg. 5, lines 5-10; pg. 158, lines 7-15). Satterfield teaches “a herbicidally effective amount of compounds of this invention is about 0.005 to 20 kg/ha with a preferred range of about 0.01 to 1 kg/ha.” (pg. 151, lines 25-27). Satterfield teaches compositions wherein the active agent is present in an amount of 10.0%, propylene glycol (i.e. surfactant) in an amount of 5.0%, and water in an amount of 53.7% (pg. 150, Example J).
Satterfield does not teach a composition further comprising a compound of formula (II).
Nakaya is drawn towards compounds of Formula (1) as an herbicide in an agricultural composition (see abstract). Nakaya teaches the following compound (pg. 30, line 45):
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wherein R1a is CH2S(O)2Pr-I (Table 4, pg. 47, line 24). Nakaya teaches “Although the application amount of the compound of the present invention varies depending on the application situation, the application time, the application method, the cultivated crop and the like, the appropriate application amount is generally 0.005 kg/ha to 50 kg/ha as the amount of the active component” (paragraph 0103), which can result in a weight ratio with Tetflupyrolimet of 1:1.
It would have been obvious to one of ordinary skill in the art to formulate a composition further comprising a compound of formula (II), as suggested by Nakaya, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do so since it is prima facie obvious to combine components known for the same purpose for their combined additive effects, with a reasonable expectation of success absent evidence of criticality of the particular formulation. Additionally, “[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).
Therefore, it would have been prima facie obvious to combine a compound of formula (I) and a compound of formula (II) cojointly in a formulation to treat undesired vegetation.
Even though the range for weight ratios and concentrations as taught by Satterfield and Nakaya is not the same as the claimed ratios and concentrations, Satterfield and Nakaya do teach an overlapping range of ratios and concentrations, and it has been held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05(I). Furthermore, the determination of ratios and concentrations is well within the purview of those skilled in the art through routine experimentation, and it has been held that “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). See MPEP § 2144.05(II). It would have been obvious to one of ordinary skill in the art to optimize the amounts of compounds of formulas (I) and (II) in order to increase the efficacy of the combination.
The amounts of active agents to be used, the pharmaceutical forms, e.g., tablets, etc; mode of administration, flavors, surfactant are all deemed obvious since they are all within the knowledge of the skilled pharmacologist and represent conventional formulations and modes of administration.
Furthermore, no unobviousness is seen in the ratio claimed because once the usefulness of a compound is known to treat a condition, it is within the skill of the artisan to determine the optimum ratio.
Conclusion
Claims 1-15 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW P LEE whose telephone number is (571)270-1016. The examiner can normally be reached Monday-Friday 9am-5pm.
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/ANDREW P LEE/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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