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 1 and 3-20 are pending and under current examination. Claim 2 is cancelled.
Withdrawn Claim Objections and Rejections
All rejections pertaining to claim 2 are moot because the claim is cancelled in the amendments to the claims filed 6/23/2026.
All objections to claims 4, 16, and 19 are withdrawn in view of the amendments to the claims filed 6/23/2026.
The objection to claim 18 in the office action dated 2/24/2026 was made in error and has been withdrawn.
All rejections not reiterated have been withdrawn.
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 13 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.
Regarding claim 13, the phrase "preferably is in the range of…” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Response to Arguments
Applicant's arguments filed 6/23/2026 with regard to the rejection of claim 13 under 35 U.S.C. 112(b) have been fully considered but they are not persuasive. As described in the rejection above, the amended claim 13 recites the phrase "preferably is in the range of…”, which renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Claim Rejections - 35 USC § 103
Applicant’s amendments to the claims filed 6/23/2026 have necessitated the new grounds of rejection.
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 1, 3-12, 17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) in view of Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Nelson teaches an herbicide formulation comprising an aqueous phase, an HPPD inhibitor in suspension in the aqueous phase, and an encapsulated chloroacetamide herbicide in suspension in the aqueous phase [0010-0014]. The HPPD inhibitor may be mesotrione [0097] and may be present in its acid or chelate form [0102]. The preferred metal ions for chelation are divalent metal ions, such as Cu2+ [0102]. The chloroacetamide is contained within a discreet barrier of polyurea [0105]. Nelson also teaches that chloroacetamide is water immiscible [0008]. Nelson teaches a chloroacetamide capsule suspension prepared by mixing 2.1 g Toximul 3465 F, 7.8 g Reax 105M, and 332.6 g water [0143]. In a separate vessel 445.5 g chloroacetamide is combined with 26.5 g Rubinate M, and 8.8. g Luprinate T80 [0144]. The latter organic solution is then added to the aqueous solution and an emulsion is formed. The emulsion is heated to 70oC and held for 4 hours to allow for the formation of microcapsules [0145]. Hence, the total weight of the microcapsules is 823.3 g and the weight percentage of chloroacetamide in the microcapsule is 445.5/823.3, or 54.11%. Nelson teaches an herbicide formulation in which an aqueous solution of choroacetamide capsules are mixed with and aqueous solution of mesotrione millbase [0148]. The instant specification defines a ZC formulation to be a mixed formulation of capsule suspension and suspension concentrate and is a stable aqueous suspension of microcapsules and solid fine particles [0029 instant specification]; the Examiner therefore considers the teachings of Nelson to read on the limitations of the instant claim 1. Nelson also teaches that the final pH of the composition is adjusted to about 4.2 [0149].
Regarding claims 1 and 11, Nelson teaches a chloroacetamide capsule suspension prepared by mixing 2.1 g Toximul 3465 F, 7.8 g Reax 105M, and 332.6 g water [0143]. Thus, the chloroacetamide capsule suspension contains 332.6g/823.3g, or 40.4% water. The mesotrione millbase contains 64.6g/362.9g, or 17.8 wt. % water [0146]. The final formulation is prepared by 134.4g of S-metolachlor CS with 22.9 g of water and 15.2 g of mesotrione millbase [0148]. Therefore, the final formulation contains 79.9g/172.5g, or 46.3% water.
Regarding claims 1 and 8, Nelson teaches that mesotrione makes up 298.3g/362.9g, or 82.2 wt. % of the mesotrione millbase [0146]. The final formulation is prepared by 134.4g of S-metolachlor CS with 22.9 g of water and 15.2 g of mesotrione millbase [0148]. Therefore, 12.29g of mesotrione is added to the formulation. Hence, the weight percentage of mesotrione in the formulation is 12.29g/172.5g, or 7.1%. Nelson also teaches that the herbicide formulation may contain 10-600g/l HPPD inhibitor in the aqueous phase [0018]. Nelson also teaches that agricultural pesticide manufactures have identified the need for broad-spectrum, long-lasting pesticidal products. Single active ingredient formulations rarely meet such requirements, and thus combination products, perhaps, containing up to four complementary biologically active ingredients, have been developed [0008].
Regarding claim 3, Nelson teaches a chloroacetamide capsule suspension prepared by mixing 2.1 g Toximul 3465 F, 7.8 g Reax 105M, and 332.6 g water [0143]. In a separate vessel 445.5 g chloroacetamide is combined with 26.5 g Rubinate M, and 8.8. g Luprinate T80 [0144]. The latter organic solution is then added to the aqueous solution and an emulsion is formed. The emulsion is heated to 70oC and held for 4 hours to allow for the formation of microcapsules [0145]. Hence, the total weight of the microcapsules is 823.3 g and the weight percentage of chloroacetamide in the microcapsule is 445.5/823.3, or 54.11%.
Regarding claim 4, Nelson teaches that the chloroacetamide may be selected from acetochlor, alachlor, butachlor, dimethachlor, dimethenamid, metazachlor, metolachlor, S-metolachlor, pethoxamid, pretilachlor, propachlor and thenylchlor [0104].
Regarding claim 5, Nelson teaches that the particles size that can range from about 1 µm to about 100µm in diameter [0107].
Regarding claim 6, Nelson teaches that the final formulation is prepared by 134.4g of S-metolachlor CS with 22.9 g of water and 15.2 g of mesotrione millbase [0148]. The weight percentage of chloroacetamide in the microcapsules is 54.11%, therefore 72.72 g of chloroacetamide is added to the formulation. Hence, the weight percentage of chloroacetamide in the formulation is 72.77g/172.5g, or 42.2%.
Regarding claim 7, Nelson teaches the relevant limitations of claim 1 above.
Regarding claim 9, Nelson teaches that the mesotrione mill base is milled in an attritor mill to a fine particle size [0146].
Regarding claim 10, Nelson teaches that the preferred chelating divalent metal ions include Cu2+ [0102]. Claim 10 is a product-by-process claims. According to MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art” therefore the Examiner considers the teaching of Nelson to read on the limitations of the instant claim 10.
Regarding claim 12, Nelson teaches that the final pH of the composition is adjusted to about 4.2 [0149].
Regarding claim 17, Nelson teaches that application is generally made by spraying the composition [0135] and that before use, the concentrate formulation is suitably first diluted, preferably with water, by between 2 and 500 times [0128].
Regarding claims 19 and 20, Nelson teaches that the herbicide composition may be used on crops including barley, wheat, cotton, oilseed, rape, maize, rice, soybeans, sugar beet, and sugar cane [0136]. The composition can be used to control unwanted plants including grasses [0142].
Nelson does not disclose the temperature and pressure conditions under which the pH was measured as recited in claims 1 and 12. However, the invention as claimed is not structurally distinguishable from the disclosure of Nelson and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1 and 7, Nelson does not teach a molar ratio of mesotrione to divalent transition metal ion. However, this deficiency is cured by Reynolds.
Reynolds teaches that for divalent metals, the stoichiometric molar ratio of 2-(2-nitro 4'-methylsulphonylbenzoyl)-1,3-cyclohexanedione to metal ion is 2:1. Amounts in excess of the stoichiometric amount may enhance the chemical stability of mesotrione [0023]. Reynolds also teaches that the strength of the metal chelate complex is directly related to the release rate of mesotrione from the metal chelate complex, which is in turn related to the stability of the metal chelate within granular pesticidal compositions [0020].
Regarding claims 1 and 8, Nelson does not teach a weight percentage of mesotrione within the range embraced by the instant claims.
Regarding claim 9, Nelson does not teach a particle size of mesotrione granules present in the composition. However, this deficiency is cured by Reynolds.
Reynolds teaches that the use of a smaller particle size of chelated mesotrione particle can provide herbicidal results that are comparable to that obtained using liquid spray application [0060].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1 and 7, the molar ratio of mesotrione to divalent metal ion 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 molar ratio in order to best achieve the desired results as such would provide advantageous stabilization 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, Reynolds teaches that the strength of the metal chelate complex is directly related to the release rate of mesotrione from the metal chelate complex, which is in turn related to the stability of the metal chelate within granular pesticidal compositions [0020]. The Examiner considers it prima facie obvious to optimize the molar ratio of mesotrione: divalent metal ion, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the molar ratio of mesotrione to divalent metal ion would have a direct effect on the stability of mesotrione and therefore the release rate of mesotrione from the granular composition and therefore be an optimizable variable.
Regarding the weight percentage of mesotrione as specified in claims 1 and 8, 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, Nelson teaches the herbicide formulation may contain 10-600g/l HPPD inhibitor in the aqueous phase [0018] and that complementary biologically active ingredients can work together to form broad-spectrum, long-lasting pesticidal products [0008]. The Applicants' specification provides no evidence that the selected weight percentage range in claim 8 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the pesticidal action of HPPD along and in cooperation with the other ingredients 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 percentage. 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 the desired pesticidal effect rendered in combination with the other ingredients present in the composition.
Regarding claim 9, the particle size of chelated mesotrione 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 particle 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, Reynolds teaches that a smaller particle size of chelated mesotrione can provide a higher percentage of weed control [0060]. The Examiner considers it prima facie obvious to optimize the particle size of chelated mesotrione, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the particle sizer would have a direct effect on the percentage of weed control rendered by the composition and therefore be an optimizable variable.
Claims 13-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) in view of Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record), as applied to claims 1, 3-12, 17, and 19-20 above, and further in view of Hopkinson (U.S. Patent No. 8,563,471, issue year: 2013, cited in the IDS filed 1/17/2024, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Nelson, in view of Reynolds, renders obvious the relevant limitations of claims 1 and 17 above.
Regarding claims 13 and 14, Nelson teaches that the herbicide formulation may further comprise one or more additional pesticides or herbicides [0112].
Regarding claim 16, Nelson also teaches that the final formulation may be made by mixing S-metolachlor CS with water and then adding the mesotrione millbase under agitation [0148].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 13 and 14, Nelson does not teach the inclusion of an auxin herbicide, an additional HPPD inhibitor herbicide, or carotenoid biosynthesis inhibitor herbicides. However, this deficiency is cured by Hopkinson.
Hopkinson teaches a suspo-emulsion comprising a continuous aqueous phase, a dispersed emulsion phase comprising at least one liquid, water-insoluble active ingredient, and mesotrione (col. 1 line 65-col. 2 line 5). The suspension concentrates and suspo-emulsion formulations may further comprise additional active ingredients that are soluble in the aqueous phase (col. 4 line2 62-64), including 2,4-D (col. 5 line 3) and amitrole (col. 4 line 66).
Regarding claim 16, all of the limitations have been rendered obvious as set forth above except the addition of a salt of a divalent transition metal ion. Nelson does not teach the addition of a divalent transition metal ion. However, this deficiency is cured by Hopkinson.
Hopkinson teaches a method of preparation of mesotrione millbase in which water, acetic acid, non-ionic surfactant, and mesotrione are mixed together. Copper hydroxide is added, followed by an antifoaming agent and xanthan gum. The mixture is then mixed and milled to the desired particle size before mixing with S-metolachlor EW and other components of the final herbicidal composition (col. 12, Example 3). Copper hydroxide acts as a stabilizing salt (col. 9 line 59).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 13 and 14, 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 herbicides used in suspo-emulsion herbicide formulations comprising mesotrione particles. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding claim 16, it would have been prima facie obvious to one of ordinary skill in the art of filing to include a salt of a divalent transition metal ion in the method of manufacturing taught by Nelson. One would have understood in view of Hopkinson that copper hydroxide may be added when manufacturing a mesotrione millbase. It would have been obvious to include copper hydroxide when manufacturing the mesotrione millbase taught by Nelson. One of ordinary skill in the art of filing would have been motivated to include a copper hydroxide salt in the method of manufacture in order to provide copper as a stabilizing chelate for the mesotrione present in the composition. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Nelson teaches that mesotrione may be present in its acid or chelate form [0102] and Hopkinson teaches that copper hydroxide may be added during manufacture of a mesotrione millbase (col. 12, Example 3).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) in view of Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record), as applied to claims 1, 3-12, 17, and 19-20 above, and further in view of Hemminghaus (U.S. Patent Application No. 2020/0163331, publication date: 5/28/2020, cited in the IDS filed 1/17/2024, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Nelson, in view of Reynolds, renders obvious the relevant limitations of claim 1 above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Nelson does not teach the inclusion of a C1-C4 monocarboxylic acid in the composition. However, this deficiency is cured by Hemminghaus.
Hemminghaus teaches herbicidal microcapsules containing a combination of herbicides [0015], including acetamide herbicides [0024], PS II inhibitors, PPO inhibitors, and HPPD inhibitors [0028]. The compositions can include an additive to control or reduce potential herbicide volatility, such as formic acid, acetic acid, sodium acetate and potassium acetate [0107].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to include a monocarboxylic acid such as formic acid in the composition taught by Nelson. One would have understood in view of Hemminghaus that a monocarboxylic acid may be added to an herbicide formulation to control or reduce herbicide volatility. It would have been obvious to include such an additive in the composition taught by Nelson. One of ordinary skill in the art of filing would have been motivated to include a monocarboxylic acid in the composition taught by Nelson in order to control or reduce the volatility of the herbicides. The artisan of ordinary skill would have had reasonable expectation of success because Hemminghaus teaches that a monocarboxylic acid such a formic acid may be an additive in compositions comprising an herbicide microcapsule.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) in view of Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record), as applied to claims 1, 3-12, 17, and 19-20 above, and further in view of Purdue Extension (Avoid Tank Mixing Errors, available 9/2018, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Nelson, in view of Reynolds, renders obvious the relevant limitations of claims 1 and 17 above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Nelson does not teach that the spray application mixture may be made by pouring the concentrate and any further additives into a water containing vessel under agitation. However, this deficiency is cured by Purdue Extension.
Purdue Extension teaches that when you use water as a tank-mix carrier, the tank should first be filled with 50% of the required water volume. Agitation should start before addition of the first product and continue through the mixing process. The products should then be added to the tank in order (pg. 16, General Mixing Steps-Water as a Carrier). Purdue Extension also teaches that if a tank mixture is not agitated, then products with dispersed active ingredients will settle out over time (pg. 13, Agitate Properly). If there is less than a minimum amount of water present in the tank before adding the first product, this can create a very concentrated mixture that completely saturates the water (pg. 11, Use the Right Water Volume).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art of filing to add the herbicide concentrate of Nelson to a water containing vessel under agitation when diluting to form a spray application mixture. One would have understood in view of Purdue Extension that herbicide products should be added to a mix tank with agitation and with a sufficient volume of water already in the mix tank. One of ordinary skill in the art of filing would have been motivated to add the concentrate composition to water under agitation in a mix tank in order to avoid over saturating the water and the settling of the dispersed ingredients. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Purdue Extension teaches that these are the typical steps for mixing an herbicide for spray application.
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive.
At page 7 of the response, Applicant set forth a request for an interview with the Examiner in the event that the application was not found to be in condition for allowance. This request was attached to an amendment which must be acted on by the Office in a timely fashion. In the future, Applicant is invited to contact the Examiner and/or her supervisor directly to arrange any interviews prior to the submission of amendments, so that any remaining issues can be discussed in a timely fashion.
On pages 9-10, Applicant argues that the inventive composition exhibits good chemical and physical stability under challenging storage conditions while at the same time exhibiting lower phytotoxicity when applied to useful crops. This is not found persuasive. 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 good chemical and physical stability of the instant herbicide composition under challenging storage conditions while at the same time exhibiting lower phytotoxicity when applied to useful crops. However, Nelson teaches that the inventive compositions demonstrate increased stability of mesotrione at 80oC for 5 hours (Figures 1 and 2 and [0151]). Nelson also teaches that the invention relates to a method for the selective control of unwanted plants in areas where crops or other useful plants are growing [0133]. Similarly, Reynolds teaches that the mesotrione chelates demonstrate decreased mesotrione loss when compared to the free acid form after storage at 50oC for 28 days (Table 1 and [0079]) and showed improved control of large crabgrass over the unchelated (acid) form of the active ingredient [0084]. Therefore, one of ordinary skill in the art of filing would have reasonably concluded that the instantly claimed composition would have increased stability at challenging storage conditions while demonstrating decreased phytotoxicity to useful crops. Therefore, the evidence of unexpected results is not unexpected or unobvious over the teachings of the prior art.
Differences are of both practical and statistical significance: The evidence of unexpected results is of practical and statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The instant claim 1 embraces any amount of particulate microcapsule which comprises any acetamide herbicide within the polymeric shell wall. In order to be in commensurate scope with the claims, the evidence must demonstrate the unexpected results for each and every acetamide herbicide at each and every concentration. However, the evidence of unexpected results is limited to 5 concentrations of acetochlor. Therefore, the evidence of unexpected results is not 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 10, Applicant argues that Nelson does not describe a composition as defined in claim 1. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2123 (I), which states: “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments”. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As described in the obviousness rejection above, Nelson, in view of Reynolds, teaches the relevant limitations, including a pH of about 4.2, Cu2+ ions. The amount of acetamide herbicide, mesotrione, and molar ratio of mesotrione to divalent transition metal ions are result effective parameters that one of ordinary skill in the art would routinely optimize. Therefore, the argument is not persuasive and the rejection is maintained.
On page 10, Applicant argues that Reynolds does not describe a composition combining an acetamide herbicide and a chelate of mesotrione where the total amount of mesotrione is from about 1.0 wt.% to about 5.0 wt.% and defined by the pH limitation defined in claim 1. This is not found persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 1, 3-14, 17, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-45 of U.S. Patent No. 9,877,478,
claims 1-44 of U.S. Patent No. 9,913,469,
claims 1-28 of U.S. Patent No. 10,813,352,
claims 1-21 of U.S. Patent No. 11,129,381,
claims 1-19 of U.S. Patent No. 12,256,730,
and claims 1-24 of U.S. Patent No. 12,550,896;
in view of Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) and Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the pending claims.
Inter alia, the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents embrace an herbicidal composition comprising a microencapsulated acetamide herbicide dispersed in an aqueous liquid. The particulate microencapsulated acetamide herbicide comprises a water-immiscible core material comprising acetochlor and a polyurea shell wall. The microcapsules have a mean particle size within the range embrace by the instant claims. The aqueous mixture may contain one or more co-herbicides including auxins such as salts of 2,4-D and dicamba and carotenoid biosynthesis inhibitors or HPPD inhibitors such as mesotrione. The instant specification defines a ZC formulation to be a mixed formulation of capsule suspension and suspension concentrate and is a stable aqueous suspension of microcapsules and solid fine particles [0029 instant specification]; the Examiner therefore considers the claims of the ‘352 patent to read on the limitations of the instant claim 2.
The specification of the ‘478 patent teaches that carotenoid biosynthesis inhibitors include mesotrione and acifluorfen (col. 37 lines 42-45) and that auxin herbicides includes salts of 2,4-D and dicamba (col. 37 lines 6-9). The specification of the ’469 patent teaches that synthetic auxin herbicides include salts of 2,4-D and dicamba (col. 34 lines 63-66) and carotenoid biosynthesis inhibitors include aclonifen, amitrole, beflubutamid, and clomazone (col. 35 lines 37-42). The specification of the ‘381 patent teaches that HPPD inhibitors include mesotrione and acifluorfen (col. 15 lines 29-36). The specification of the ‘730 patent teaches that HPPD inhibitors include mesotrione and acifluorfen (col. 15 lines 43-50). The Examiner has relied upon the specification to delineate the scope of the invention embraced by the claims of the ‘478, ‘469, ‘381, and ‘730 patents, consistent with the decision in Sun Pharmaceutical Industries Ltd. v. Eli Lilly and Co. U.S. Court of Appeals Federal Circuit, 95 USPQ2d 1797.
The claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents do not embrace a chelate of mesotrione, a specific water content, a pH value of the concentrate composition, or a weight percentage of auxin herbicide or acetochlor present in the composition, a spray application mixture, or a method for controlling undesired vegetation. The claims of the ‘478 patent also do not embrace a method of making or using the herbicide composition. However, these deficiencies are cured by Nelson and Reynolds.
Nelson teaches an herbicide formulation comprising an aqueous phase, an HPPD inhibitor in suspension in the aqueous phase, and an encapsulated chloroacetamide herbicide in suspension in the aqueous phase [0010-0014]. The HPPD inhibitor may be mesotrione [0097] and may be present in its acid or chelate form [0102]. The preferred metal ions for chelation are divalent metal ions including Cu2+ [0102]. Nelson teaches an herbicide formulation in which an aqueous solution of choroacetamide capsules are mixed with and aqueous solution of mesotrione millbase [0148]. Nelson also teaches that the pH of the herbicide composition is from about 3 to about 7 and that and that preferred pH adjusters phosphoric acid or toluene sulfonic acid provide extremely good stability of the HPPD inhibitor in the formulation [0114]. Reynolds teaches that for divalent metals, the stoichiometric molar ratio of 2-(2-nitro 4'-methylsulphonylbenzoyl)-1,3-cyclohexanedione to metal ion is 2:1. Amounts in excess of the stoichiometric amount may enhance the chemical stability of mesotrione [0023]. Nelson teaches that application is generally made by spraying the composition [0135] and that before use, the concentrate formulation is suitably first diluted, preferably with water, by between 2 and 500 times [0128]. The composition may be used on crops including barley, wheat, cotton, oilseed, rape, maize, rice, soybeans, sugar beet, and sugar cane [0136]. The composition can be used to control unwanted plants including grasses [0142]. Reynolds also teaches that the strength of the metal chelate complex is directly related to the release rate of mesotrione from the metal chelate complex, which is in turn related to the stability of the metal chelate within granular pesticidal compositions [0020]. Reynolds teaches that the use of a smaller particle size of chelated mesotrione particle can provide herbicidal results that are comparable to that obtained using liquid spray application [0060].
It would have been prima facie obvious to one of ordinary skill in the art of filing to include a chelated mesotrione in the composition embraced by the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents. One would have understood in view of Reynolds that for divalent metals, the stoichiometric molar ratio of 2-(2-nitro 4'-methylsulphonylbenzoyl)-1,3-cyclohexanedione to metal ion is 2:1. Amounts in excess of the stoichiometric amount may enhance the chemical stability of mesotrione [0023]. Reynolds also teaches that the strength of the metal chelate complex is directly related to the release rate of mesotrione from the metal chelate complex, which is in turn related to the stability of the metal chelate within granular pesticidal compositions [0020]. It would have been obvious to include a chelate of mesotrione in the composition embraced by the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents. One of ordinary skill in the art of filing would have been motivated to include a chelate of mesotrione in order to enhance the chemical stability of the mesotrione present in the composition. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Nelson teaches a nearly identical herbicide formulation comprising chelated mesotrione.
The molar ratio of mesotrione to divalent metal ion 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 molar ratio in order to best achieve the desired results as such would provide advantageous stabilization 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, Reynolds teaches that the strength of the metal chelate complex is directly related to the release rate of mesotrione from the metal chelate complex, which is in turn related to the stability of the metal chelate within granular pesticidal compositions [0020]. The Examiner considers it prima facie obvious to optimize the molar ratio of mesotrione: divalent metal ion, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the molar ratio of mesotrione to divalent metal ion would have a direct effect on the stability of mesotrione and therefore the release rate of mesotrione from the granular composition and therefore be an optimizable variable.
The weight percentages of mesotrione, auxin, and acetamide herbicide present in the 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 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, Nelson teaches that herbicidal formulations containing up to four complementary biologically active ingredients may satisfy the need for broad-spectrum, long-lasting pesticidal products [0008]. The Examiner considers it prima facie obvious to optimize the amounts of herbicides present in the formulation, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of mesotrione and auxin herbicide present in the composition would have a direct effect on the broad-spectrum activity of the herbicide composition and therefore be an optimizable variable.
The particle size of chelated mesotrione 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 particle 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, Reynolds teaches that a smaller particle size of chelated mesotrione can provide a higher percentage of weed control [0060]. The Examiner considers it prima facie obvious to optimize the particle size of chelated mesotrione, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the particle sizer would have a direct effect on the percentage of weed control rendered by the composition and therefore be an optimizable variable.
The weight percentage of water present in the 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 particle 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, the claims of the ‘478 patent teach that the aqueous mixture may be in the form of a diluted spray application mixture. The Examiner considers it prima facie obvious to optimize the weight percentage of water, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that weight percentage of water would have a direct effect on the herbicidal strength of the composition and therefore be an optimizable variable.
The pH of the 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 pH in order to best achieve the desired results as such would provide advantageous stabilization 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, teaches that the pH of the herbicide composition is from about 3 to about 7 and that and that preferred pH adjusters phosphoric acid or toluene sulfonic acid provide extremely good stability of the HPPD inhibitor in the formulation [0114]. The Examiner considers it prima facie obvious to optimize the pH of 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 pH would have a direct effect on the HPPD inhibitor and therefore be an optimizable variable.
It would have been prima facie obvious to one of ordinary skill in the art of filing to include the herbicidal composition embraced by the claims of the ‘352 patent in a spray application. One would have understood in view of Nelson that application of a nearly identical composition is generally made by spraying the composition [0135] and that before use, the concentrate formulation is suitably first diluted, preferably with water, by between 2 and 500 times [0128]. It would have been obvious to use the herbicidal composition embraced by the claims of the ‘352 patent in a spray application. One of ordinary skill in the art of filing would have been motivated to utilize the herbicidal composition embraced by the claims of the ‘352 patent in a spray application in order to facilitate application to crops. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Nelson teaches that a nearly identical composition may be used in a spray application obtained by diluting the concentrated composition with water.
It would have been prima facie obvious to one of ordinary skill in the art of filing to use the herbicidal composition embraced by the claims of the ‘352 patent in a method of controlled undesired vegetation. One would have understood in view of Nelson that application of a nearly identical composition is generally made by spraying the composition [0135] and that that the herbicide composition may be used on crops including barley, wheat, cotton, oilseed, rape, maize, rice, soybeans, sugar beet, and sugar cane [0136]. The composition can be used to control unwanted plants including grasses [0142]. It would have been obvious to use the herbicidal composition embraced by the claims of the ‘352 patent in a method of controlling undesired vegetation in a field of a crop plant. One of ordinary skill in the art of filing would have been motivated to utilize the herbicidal composition embraced by the claims of the ‘352 patent in such a method in order to utilize the herbicidal properties of the composition on undesired vegetation present in a field of a crop plant. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Nelson teaches that a nearly identical composition may be used in a spray application on crops to control unwanted plants.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-45 of U.S. Patent No. 9,877,478,
claims 1-44 of U.S. Patent No. 9,913,469,
claims 1-28 of U.S. Patent No. 10,813,352,
claims 1-21 of U.S. Patent No. 11,129,381,
claims 1-19 of U.S. Patent No. 12,256,730,
and claims 1-24 of U.S. Patent No. 12,550,896;
in view of Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) and Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record), as applied to claims 1, 3-14, 17, and 19-20 above, and further in view of Hemminghaus (U.S. Patent Application No. 2020/0163331, publication date: 5/28/2020, cited in the IDS filed 1/17/2024, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the pending claims.
Inter alia, the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents embrace the relevant limitations as described above. The claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents do not teach a C1-C4 monocarboxylic acid present in the composition. However, this deficiency is cured by Hemminghaus. Hemminghaus teaches herbicidal microcapsules containing a combination of herbicides [0015], including acetamide herbicides [0024], PS II inhibitors, PPO inhibitors, and HPPD inhibitors [0028]. The compositions can include an additive to control or reduce potential herbicide volatility, such as formic acid, acetic acid, sodium acetate and potassium acetate [0107].
It would have been prima facie obvious to include a monocarboxylic acid such as formic acid in the composition embraced by the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents. One would have understood in view of Hemminghaus that a monocarboxylic acid may be added to an herbicide formulation to control or reduce herbicide volatility. It would have been obvious to include such an additive in the composition taught by the claims of the ‘352 patent. One of ordinary skill in the art of filing would have been motivated to include a monocarboxylic acid in the composition taught by the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents in order to control or reduce the volatility of the herbicides. The artisan of ordinary skill would have had reasonable expectation of success because Hemminghaus teaches that a monocarboxylic acid such a formic acid may be an additive in compositions comprising an herbicide microcapsule.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-45 of U.S. Patent No. 9,877,478,
claims 1-44 of U.S. Patent No. 9,913,469,
claims 1-28 of U.S. Patent No. 10,813,352,
claims 1-21 of U.S. Patent No. 11,129,381,
claims 1-19 of U.S. Patent No. 12,256,730,
and claims 1-24 of U.S. Patent No. 12,550,896;
in view of Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) and Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record), as applied to claims 1, 3-14, 17, and 19-20 above, and further in view of Hopkinson (U.S. Patent No. 8,563,471, issue year: 2013, cited in the IDS filed 1/17/2024, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the pending claims.
Inter alia, the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents embrace the relevant limitations as described above. The claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents do not teach a method of manufacturing an herbicide concentrate composition. However, this deficiency is cured by Nelson and Hopkinson. Nelson also teaches that the final formulation may be made by mixing S-metolachlor CS with water and then adding the mesotrione millbase under agitation [0148]. Hopkinson teaches a method of preparation of mesotrione millbase in which water, acetic acid, non-ionic surfactant, and mesotrione are mixed together. Copper hydroxide is added, followed by an antifoaming agent and xanthan gum. The mixture is then mixed and milled to the desired particle size before mixing with S-metolachlor EW and other components of the final herbicidal composition (col. 12, Example 3). Copper hydroxide acts as a stabilizing salt (col. 9 line 59).
It would have been prima facie obvious to one of ordinary skill in the art of filing to manufacture the herbicide composition embraced by the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents via the method taught by Nelson. One would have understood in view of Nelson that an herbicide composition comprising a microencapsulated acetamide herbicide, mesotrione, and water, may be prepared by mixing the components together and in view of Hopkinson that copper hydroxide may be added to mesotrione to manufacture a mesotrione chelate before adding to S-metolachlor EW in an herbicide composition. It would have been obvious to mix the components to form an herbicide composition. One of ordinary skill in the art of filing would have been motivated to manufacture the herbicide composition via the method embraced by Nelson, in view of Hopkinson, in order to form the concentrate composition. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because the composition taught by Nelson is nearly identical to the composition embraced by the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents.
Furthermore, it would have been prima facie obvious to one of ordinary skill in the art of filing to include a salt of a divalent transition metal ion in the method of manufacturing taught by Nelson. One would have understood in view of Hopkinson that copper hydroxide may be added when manufacturing a mesotrione millbase. It would have been obvious to include copper hydroxide when manufacturing the mesotrione millbase taught by Nelson. One of ordinary skill in the art of filing would have been motivated to include a copper hydroxide salt in the method of manufacture in order to provide copper as a stabilizing chelate for the mesotrione present in the composition. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Nelson teaches that mesotrione may be present in its acid or chelate form [0102] and Hopkinson teaches that copper hydroxide may be added during manufacture of a mesotrione millbase (col. 12, Example 3).
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-45 of U.S. Patent No. 9,877,478,
claims 1-44 of U.S. Patent No. 9,913,469,
claims 1-28 of U.S. Patent No. 10,813,352,
claims 1-21 of U.S. Patent No. 11,129,381,
claims 1-19 of U.S. Patent No. 12,256,730,
and claims 1-24 of U.S. Patent No. 12,550,896;
in view of Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) and Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record), as applied to claims 1, 3-14, 17, and 19-20 above, and further in view of Purdue Extension (Avoid Tank Mixing Errors, available 9/2018, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the pending claims.
Inter alia, the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents embrace the relevant limitations as described above. The claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents do not teach that the spray application mixture may be made by pouring the concentrate and any further additives into a water containing vessel under agitation. However, this deficiency is cured by Purdue Extension. Purdue Extension teaches that when you use water as a tank-mix carrier, the tank should first be filled with 50% of the required water volume. Agitation should start before addition of the first product and continue through the mixing process. The products should then be added to the tank in order (pg. 16, General Mixing Steps-Water as a Carrier). Purdue Extension also teaches that if a tank mixture is not agitated, then products with dispersed active ingredients will settle out over time (pg. 13, Agitate Properly). If there is less than a minimum amount of water present in the tank before adding the first product, this can create a very concentrated mixture that completely saturates the water (pg. 11, Use the Right Water Volume).
It would have been prima facie obvious to one of ordinary skill in the art of filing to add the herbicide concentrate of the claims of the ‘478, ‘469, ‘352, ‘381, ‘730, and ‘896 patents to a water containing vessel under agitation when diluting to form a spray application mixture. One would have understood in view of Purdue Extension that herbicide products should be added to a mix tank with agitation and with a sufficient volume of water already in the mix tank. One of ordinary skill in the art of filing would have been motivated to add the concentrate composition to water under agitation in a mix tank in order to avoid over saturating the water and the settling of the dispersed ingredients. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Purdue Extension teaches that these are the typical steps for mixing an herbicide for spray application.
Claims 1, 3-15, 17, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,419,331 in view of Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) and Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the pending claims.
Inter alia, the claims of the ‘331 patent embrace a stable herbicidal concentrate composition comprising microcapsules dispersed in an aqueous liquid medium. The microcapsules comprise a chloroacetanilide herbicide and a polyurea shell wall encapsulating the chloroacetanilide herbicide. The chloroacetanilide herbicide is present in a concentration of 42-60 wt.%. The chloroacetanilide herbicide may comprise acetochlor. The composition also comprises at least one co-herbicide including salts of 2,4-D and dicamba, HPPD inhibitors, and carotenoid biosynthesis inhibitors such as mesotrione. The microcapsules have a mean particle size from 4 to about 15µm. The composition may include a monocarboxylic acid such as formic acid or acetic acid. The claims of the ‘331 patent also embrace a method for controlling weeds in a field of a crop plant, the method comprising applying to the field an application mixture comprising the aqueous herbicidal composition or a dilution thereof. The instant specification defines a ZC formulation to be a mixed formulation of capsule suspension and suspension concentrate and is a stable aqueous suspension of microcapsules and solid fine particles [0029 instant specification]; the Examiner therefore considers the claims of the ‘331 patent to read on the limitations of the instant claim 2.
The claims of the ‘331 patent do not embrace a chelate of mesotrione, a specific water content, a pH value of the concentrate composition, or a weight percentage of auxin herbicide present in the composition. The claims of the ‘331 patent also do not embrace a method of making the spray application mixture. However, these deficiencies are cured by Nelson and Reynolds.
Nelson teaches an herbicide formulation comprising an aqueous phase, an HPPD inhibitor in suspension in the aqueous phase, and an encapsulated chloroacetamide herbicide in suspension in the aqueous phase [0010-0014]. The HPPD inhibitor may be mesotrione [0097] and may be present in its acid or chelate form [0102]. The preferred metal ions for chelation are divalent metal ions including Cu2+ [0102]. Nelson teaches an herbicide formulation in which an aqueous solution of choroacetamide capsules are mixed with and aqueous solution of mesotrione millbase [0148]. Nelson also teaches that the pH of the herbicide composition is from about 3 to about 7 and that and that preferred pH adjusters phosphoric acid or toluene sulfonic acid provide extremely good stability of the HPPD inhibitor in the formulation [0114]. Reynolds teaches that for divalent metals, the stoichiometric molar ratio of 2-(2-nitro 4'-methylsulphonylbenzoyl)-1,3-cyclohexanedione to metal ion is 2:1. Amounts in excess of the stoichiometric amount may enhance the chemical stability of mesotrione [0023]. Reynolds also teaches that the strength of the metal chelate complex is directly related to the release rate of mesotrione from the metal chelate complex, which is in turn related to the stability of the metal chelate within granular pesticidal compositions [0020]. Reynolds teaches that the use of a smaller particle size of chelated mesotrione particle can provide herbicidal results that are comparable to that obtained using liquid spray application [0060].
It would have been prima facie obvious to one of ordinary skill in the art of filing to include a chelated mesotrione in the composition embraced by the claims of the ‘331 patent. One would have understood in view of Reynolds that for divalent metals, the stoichiometric molar ratio of 2-(2-nitro 4'-methylsulphonylbenzoyl)-1,3-cyclohexanedione to metal ion is 2:1. Amounts in excess of the stoichiometric amount may enhance the chemical stability of mesotrione [0023]. Reynolds also teaches that the strength of the metal chelate complex is directly related to the release rate of mesotrione from the metal chelate complex, which is in turn related to the stability of the metal chelate within granular pesticidal compositions [0020]. It would have been obvious to include a chelate of mesotrione in the composition embraced by the claims of the ‘331 patent. One of ordinary skill in the art of filing would have been motivated to include a chelate of mesotrione in order to enhance the chemical stability of the mesotrione present in the composition. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Nelson teaches a nearly identical herbicide formulation comprising chelated mesotrione.
The molar ratio of mesotrione to divalent metal ion 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 molar ratio in order to best achieve the desired results as such would provide advantageous stabilization 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, Reynolds teaches that the strength of the metal chelate complex is directly related to the release rate of mesotrione from the metal chelate complex, which is in turn related to the stability of the metal chelate within granular pesticidal compositions [0020]. The Examiner considers it prima facie obvious to optimize the molar ratio of mesotrione: divalent metal ion, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the molar ratio of mesotrione to divalent metal ion would have a direct effect on the stability of mesotrione and therefore the release rate of mesotrione from the granular composition and therefore be an optimizable variable.
The weight percentages of mesotrione and auxin herbicide present in the 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 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, Nelson teaches that herbicidal formulations containing up to four complementary biologically active ingredients may satisfy the need for broad-spectrum, long-lasting pesticidal products [0008]. The Examiner considers it prima facie obvious to optimize the amounts of herbicides present in the formulation, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of mesotrione and auxin herbicide present in the composition would have a direct effect on the broad-spectrum activity of the herbicide composition and therefore be an optimizable variable.
The particle size of chelated mesotrione 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 particle 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, Reynolds teaches that a smaller particle size of chelated mesotrione can provide a higher percentage of weed control [0060]. The Examiner considers it prima facie obvious to optimize the particle size of chelated mesotrione, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the particle sizer would have a direct effect on the percentage of weed control rendered by the composition and therefore be an optimizable variable.
The weight percentage of water present in the 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 particle 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, the claims of the ‘331 patent teach that the aqueous mixture may be in the form of a diluted spray application mixture. The Examiner considers it prima facie obvious to optimize the weight percentage of water, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that weight percentage of water would have a direct effect on the herbicidal strength of the composition and therefore be an optimizable variable.
The pH of the 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 pH in order to best achieve the desired results as such would provide advantageous stabilization 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, teaches that the pH of the herbicide composition is from about 3 to about 7 and that and that preferred pH adjusters phosphoric acid or toluene sulfonic acid provide extremely good stability of the HPPD inhibitor in the formulation [0114]. The Examiner considers it prima facie obvious to optimize the pH of 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 pH would have a direct effect on the HPPD inhibitor and therefore be an optimizable variable.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,419,331, in view of Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) and Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record), as applied to claims 1, 3-15, 17, and 19-20 above, and further in view of Hopkinson (U.S. Patent No. 8,563,471, issue year: 2013, cited in the IDS filed 1/17/2024, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the pending claims.
Inter alia, the claims of the ‘331 patent embrace the relevant limitations as described above. The claims of the ‘331 patent do not teach a method of manufacturing an herbicide concentrate composition. However, this deficiency is cured by Nelson and Hopkinson. Nelson also teaches that the final formulation may be made by mixing S-metolachlor CS with water and then adding the mesotrione millbase under agitation [0148]. Hopkinson teaches a method of preparation of mesotrione millbase in which water, acetic acid, non-ionic surfactant, and mesotrione are mixed together. Copper hydroxide is added, followed by an antifoaming agent and xanthan gum. The mixture is then mixed and milled to the desired particle size before mixing with S-metolachlor EW and other components of the final herbicidal composition (col. 12, Example 3). Copper hydroxide acts as a stabilizing salt (col. 9 line 59).
It would have been prima facie obvious to one of ordinary skill in the art of filing to manufacture the herbicide composition embraced by the claims of the ‘331 patent via the method taught by Nelson. One would have understood in view of Nelson that an herbicide composition comprising a microencapsulated acetamide herbicide, mesotrione, and water, may be prepared by mixing the components together and in view of Hopkinson that copper hydroxide may be added to mesotrione to manufacture a mesotrione chelate before adding to S-metolachlor EW in an herbicide composition. It would have been obvious to mix the components to form an herbicide composition. One of ordinary skill in the art of filing would have been motivated to manufacture the herbicide composition via the method embraced by Nelson, in view of Hopkinson, in order to form the concentrate composition. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because the composition taught by Nelson is nearly identical to the composition embraced by the claims of the ‘331 patent.
Furthermore, it would have been prima facie obvious to one of ordinary skill in the art of filing to include a salt of a divalent transition metal ion in the method of manufacturing taught by Nelson. One would have understood in view of Hopkinson that copper hydroxide may be added when manufacturing a mesotrione millbase. It would have been obvious to include copper hydroxide when manufacturing the mesotrione millbase taught by Nelson. One of ordinary skill in the art of filing would have been motivated to include a copper hydroxide salt in the method of manufacture in order to provide copper as a stabilizing chelate for the mesotrione present in the composition. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Nelson teaches that mesotrione may be present in its acid or chelate form [0102] and Hopkinson teaches that copper hydroxide may be added during manufacture of a mesotrione millbase (col. 12, Example 3).
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,419,331, in view of Nelson (U.S. Patent Application No. 2014/0213450, publication year: 2014, cited in the IDS filed 1/17/2024, of record) and Reynolds (U.S. Patent Application No. 2007/0207929, publication year: 2007, of record), as applied to claims 1, 3-15, 17, and 19-20 above, and further in view of Purdue Extension (Avoid Tank Mixing Errors, available 9/2018, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the pending claims.
Inter alia, the claims of the ‘331 patent embrace the relevant limitations as described above. The claims of the ‘331 patent do not teach that the spray application mixture may be made by pouring the concentrate and any further additives into a water containing vessel under agitation. However, this deficiency is cured by Purdue Extension. Purdue Extension teaches that when you use water as a tank-mix carrier, the tank should first be filled with 50% of the required water volume. Agitation should start before addition of the first product and continue through the mixing process. The products should then be added to the tank in order (pg. 16, General Mixing Steps-Water as a Carrier). Purdue Extension also teaches that if a tank mixture is not agitated, then products with dispersed active ingredients will settle out over time (pg. 13, Agitate Properly). If there is less than a minimum amount of water present in the tank before adding the first product, this can create a very concentrated mixture that completely saturates the water (pg. 11, Use the Right Water Volume).
It would have been prima facie obvious to one of ordinary skill in the art of filing to add the herbicide concentrate of the claims of the ‘331 patent to a water containing vessel under agitation when diluting to form a spray application mixture. One would have understood in view of Purdue Extension that herbicide products should be added to a mix tank with agitation and with a sufficient volume of water already in the mix tank. One of ordinary skill in the art of filing would have been motivated to add the concentrate composition to water under agitation in a mix tank in order to avoid over saturating the water and the settling of the dispersed ingredients. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Purdue Extension teaches that these are the typical steps for mixing an herbicide for spray application.
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive.
On pages 13, 14, and 15, Applicant argues that Nelson and Reynolds do not describe or define compositions by each of the features listed in instant claim 1. This is not found persuasive. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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.
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, Ali Soroush can be reached at 571-272-9925. 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.
ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
Prosecution Insights