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
Filing Receipt and Priority
The filing receipt mailed 06/13/2024 states that the instant application is a 371 of PCT?EP2022/067838, filed 06/29/2022. The filing receipt also states that the instant application may claim foreign benefit to EPO 21183506.1, filed 07/02/2021.
The certified copy provided supports the instant claims. Therefore, the effective filing date is 07/02/2021.
Information Disclosure Statement
The information disclosure statement submitted 12/29/2023 has been considered.
Species Election
Applicant’s election with traverse of the following species is acknowledged.
Applicant has elected i) alkyl ester phosphate-based adjuvant, ii) metcamifen, and iii) silver whitefly (Bemesia tabaci).
Applicant traverses the species election stating that “Applicant first notes that the International Search Authority for this national stage application found that claims 1-15 contain unity…Second, the Examiner merely alleges that the claimed species are not ‘so linked as to form a single general inventive concept…”but fails to articulate any reasons.”
The PTO makes its own determination as to whether Rule 13 was complied with.
Applicant points to the Preliminary Report on Patentability as the only evidence to support unity of invention. This is not sufficient, in view of the statement above, and in view of Sondhia (Pesticide Research Journal, Vol. 19, Iss. 2, 2007, p. 248-250). See art rejection below. Applicant has not provided evidence to indicate how the species are obvious variants of each other or clearly admits on the record that this is the case.
Claim Objection
Claim 5, dependent upon claim 4, states “wherein the safener is selected from…”.
Claim 4 states “The method according to claim 1, further comprising the use of at least one herbicide safener.”
It is clear that claim 5 refers to the herbicide safener of claim 4. For consistency, claim 5 should state “herbicide safener”.
Rejections
Claim Rejections - 35 USC § 101 – Use Claim
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 15 is 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.
Claim Rejections - 35 USC § 112(b)
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 15 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 15 states “The use of fluazifop-P-butyl…”. The MPEP section 2173.05(q) states:
I. A "USE" CLAIM MAY BE REJECTED UNDER 35 U.S.C 101 AND/OR 112
It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections. For failure to recite a claim within one of the statutory classes under 35 U.S.C. 101, the appropriate form paragraph is 7.05.01. For indefiniteness under 35 U.S.C. 112(b), the appropriate form paragraph is 7.34.01.
II. BOARD HELD STEP OF "UTILIZING" WAS NOT INDEFINITE
It is often difficult to draw a fine line between what is permissible, and what is objectionable from the perspective of whether a claim is definite. In the case of Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992), the Board held that a claim which clearly recited the step of "utilizing" was not indefinite under 35 U.S.C. 112, second paragraph. (Claim was to "A method for unloading nonpacked, nonbridging and packed, bridging flowable particle catalyst and bead material from the opened end of a reactor tube which comprises utilizing the nozzle of claim 7").
As the claim does not list a step, claim 15 is rejected under 101 and 112(b) as a use claim.
Additionally, claim 15 is rejected under 112(b) indefiniteness because, although the claim is not dependent upon any other claim, the claim states “The use” where it should state “A [method]…”.
Claim Rejections - 35 USC § 112(b)
Claims 3 and 5 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 3 states “The method according to claim 1, wherein the adjuvant is selected from mineral oil…or an alkyl ester phosphate-based adjuvant and preferably, an alkyl ester phosphate-based adjuvant.”
The use of preferably here is indefinite because it is not clear if applicant is claiming the limitation or simply stating a preferred embodiment. Examiner suggests removing “preferably”.
Claim 5 claims a number of herbicide safeners including cloquintocet, fenchlorazole, isoxadifen, and mefenpyr. The claim appears to be further claim safeners cloquintocet-mexyl, fenchlorazole-ethyl, isoxadifen ethyl, and mefenpyr-diethyl. However, the claim languages uses the following notation:
PNG
media_image1.png
144
610
media_image1.png
Greyscale
The use of “including…” makes it unclear if the safener following “including” is a derivative or a separate and distinct compound. Essentially, it is not clear if the cloquintocet-mexyl, fenchlorazole-ethyl, isoxadifen ethyl, and mefenpyr-diethyl are species under the genera cloquintocet, fenchlorazole, isoxadifen, and mefenpyr or if the species are distinct compounds separate from the cloquintocet, fenchlorazole, isoxadifen, and mefenpyr. Examiner suggests amending the claim to remove all instances of “including”.
Applicant has elected “metcamifen”. This rejection is raised on formal matters and the other species in claim 5 have not been searched or examined to the extent of “metcamifen”.
Claim Rejections - 35 USC § 102
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, 8-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sondhia (Pesticide Research Journal, Vol. 19, Iss. 2, 2007, p. 248-250).
Claim 1 states “A method for controlling a whitefly pest on a crop plant by applying an insecticidally effective amount of the active ingredient fluazifop-P-butyl, or a composition thereof, to the pest, to a locust of the pest, to a crop plant susceptible to attack by the pest, or to a plant propagation material thereof.”
Sondhia in its abstract discloses the application of fluazifop-p-butyl to soybean material in doses of 125-500 g*ai*ha-1.
While this disclosure does not discuss whitefly infestation, the method of claim 1 in certain embodiments does not inherently require that the plant or plant propagation material is actively infested at the time of application. See bolded wording above. Because of this, the disclosure found in Sondhia embraces the instant claims.
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.
KSR Guidelines
The MPEP in section 2143, subsection I gives examples of Rationales for supporting a conclusion of obvious. These rationales are non-exhaustive and include (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sondhia (cited above) in view of Syngenta FUSILADE FORTE (Syngenta, FUSILADE FORTE, dated 03/08/2021, herein after FUSILADE), Syngenta (Syngenta, Ochima Product Page, url= https://www.syngenta.com.br/product/crop-protection/ochima, last updated 2022, accessed 09/02/2026, machine translation provided), Umetsu (J. Pestic. Sci. 45(2), 54-74, 2020), Rokich (Biological Conservation, 142, 2009, 850-869), and Yoshi (WO 01/52650, of the record) as evidenced by Syngenta MSDS (OCHIMA MSDS sheet, dated 01/09/2020, machine translation provided, herein after MSDS).
Regarding claims, 1, 8-13, discussion of Sondhia from the 102 rejection above is incorporated here.
Sondhia does not discuss adjuvants, the herbicide safener metcamifen, the form of the composition as claimed in claim 6, or additional active ingredients. This is addressed by the combination of FUSILADE, Syngenta, Umetsu, Rokich, and Yoshi.
Regarding claim 2, FUSILADE on p. 2 teaches the ingredient list, shown below, of FUSILADE FORTE which includes fluazifop-p-butyl and petroleum-based carriers.
PNG
media_image2.png
236
676
media_image2.png
Greyscale
Regarding claim 3, Syngenta teaches the alkyl phosphate ester adjuvant Ochima®. Syngenta on p. 2 states “OCHIMA is an exclusively adjuvant product and is sold over the counter…It is can adjuvant that increases the efficiency of different pesticides due to increased absorption of active ingredients through the leaf cuticle and better distribution of the active ingredient on the plants leaves.”
Note: While Syngenta is dated for 2026, MSDS shows that the OCHIMA was a commercially available product in 2020.
Regarding claims 4-5, Umetsu on p. 71, left col., para. 3 states “As an herbicide safener, only one compound, metcamifen, can be mentioned. Metcamifen prevented an herbicide, clodinafop-propargyl, from damaging rice seedlings, and this was associated with the enhanced detoxication of the herbicide.”
Regarding claim 6, Rokich sec. 2.3 teaches experiments where FUSILADE was applied via a spraying action. Rokich, sec. 2.3, para 1 states “Thirteen native species and an introduced species…were selected for Experiment 1. Fusilade® and Fusilade Forte ® were each employed at the aforementioned four concentrations. A ninth treatment, the control, was water applied at the same volume as the test herbicides+water solution.”
Regarding claim 14, Rokich in sec. 2.4, para 2 states “The amount of herbicide provided to each seedling trays was calibrated to be equivalent to that applied on a per hectare basis in field applications. This amount, together with approximately 55 ml of water, was applied to each seedling tray with a Hills® hand sprayer.”
Regarding claim 7, Yoshi is drawn to microemulsions containing at least one herbicidal active ingredient selected from phenoxyphenoxy carboxylic acids, nonionic surfactants, and water (abstract). Yoshi on p. 5 states “Among the phenoxyphenoxy carboxylic acids…particularly preferred are heteroaryloxyphenoxy carboxylic acids…and above all fluazifop and its alkyl esters are preferable. Further among them, fluazifop-butyl, in particular fluazifop-p-butyl…is preferred.” This at least indicates that fluazifop-p-butyl is a component among the microemulsions contemplated in Yoshi. Yoshi on p. 7, l. 4-21 states “In the present invention, one or more other herbicidal active ingredients may be contained to heighten the herbicidal effect.”
The art teaches that adjuvants such as Ochima®, safeners such as metcamifen, other carriers, spray application and mixtures of emulsifiable concentrates in aqueous mediums were well known within the art at the time of the effective filing date. Additionally, the art gives motives for adding the Ochima® and metcamifen to a composition comprising fluazifop-p-butyl.
Therefore, it would have been prima facie obvious at the time of the effective filing date for one of ordinary skill in the art to modify the fluazifop-p-butyl of Sondhia via the teachings of FUSILADE, Syngenta, Umetsu, Rokich, and Yoshi to arrive at the instant claims. One of ordinary skill would find motivation to make the combination to increase the efficacy of fluazifop-p-butyl and to protect a crop plant from the use of fluazifop-p-butyl.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUISALBERTO GONZALEZ whose telephone number is (571)272-1154. The examiner can normally be reached M-F 8:30-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LUISALBERTO GONZALEZ/Examiner, Art Unit 1624
Prosecution Insights