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 .
Applicant’s arguments, filed 21 April 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 5-14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Jimoh (US 6,369,001, 04/09/2002) as evidenced by Lock and Wilks (“Diquat”, 2001) (hereinafter Lock).
Jimoh discloses a liquid concentrate herbicidal microemulsion composition comprising water, a water-soluble herbicide, an oil-soluble cyclohexenone or aryloxyphenoxypropionate graminicide in a weight ratio to the water-soluble herbicide of about 1:50 to about 1:1, and a dispersing system comprising one or more nonionic surfactants in a total amount not exceeding about 5% by weight to provide dispersion upon dilution thereof in a suitable volume of water for application to plants (i.e. unwanted plants) (abstract). Graminicides include fluazifop-p-butyl (col. 2, lines 4-16). Because the spectrum of herbicidal activity of graminicides is largely restricted to grasses, there is great complementarity in a package-mix of a graminicide with a second herbicide that has strong broadleaf herbicidal activity; many such herbicides are most conveniently formulated as water-soluble salts. Examples include salts of triclopyr (col. 2, lines 18-25). Examples of water-soluble herbicides also include diquat (col. 9, lines 14-19). Compositions may contain more than one water-soluble herbicide (col. 9, lines 38-39). The composition contains at least about 5% by weight, and can contain up to about 50% by weight, of active ingredients in total of the water-soluble herbicide and the graminicide (col. 6, line 67 – col. 7, line 4). The concentration of the graminicide in the composition as a whole may be about 0.1% to about 25% by weight (col. 7, lines 11-13).
Accordingly, Jimoh discloses an herbicidal composition comprising about 0.1% to about 25% by weight of graminicide including fluazifop, and a water-soluble herbicide such as triclopyr, wherein the total amounts of graminicide and water-soluble herbicide is between about 5% to about 50% by weight of the composition. Together these would provide a composition as instantly claimed.
The prior art is not anticipatory insofar as this combination must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding claims 1 and 8 reciting an amount of component (B), although Jimoh does not explicitly disclose an amount of triclopyr, Jimoh discloses wherein graminicide may be about 0.1-25% by weight; that the ratio of graminicide to water-soluble herbicide is from about 1:50 to 1:1; and that the composition may contain about 5-50% by weight of graminicide and water-soluble herbicide such as triclopyr. Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed amounts of triclopyr (i.e. component (B)) through routine experimentation based on the level of activity desired. "[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." See MPEP § 2144.05(II)(A).
Regarding claims 1 and 5 reciting total amounts of component (A) and component (B) (i.e. from about 8.0 wt.% to about 12.0 wt.%, and from about 8.5 wt. % to about 10.0 wt. %, respectively) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. about 5-50 % by wt.). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 2, as evidenced by Lock, the common name diquat is in general use but is formulated as the dibromide salt (p. 1605, § 71.1.3, lines 1-4). Thus the diquat of Jimoh meets the limitation of the diquat dihalide salt as instantly claimed.
Regarding claim 6 reciting ratios by weight of component (A) to component (B), the claimed ratio (i.e. from about 3:2 to about 2:5) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. about 1:50 to about 1:1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 7 reciting a ratio of component (B) to (C), although Jimoh does not explicitly disclose an amount of each of the water-soluble herbicides, it would have taken no more than the relative skills of one of ordinary skill in the art to have selected an amount of triclopyr and an additional amount of diquat from the guidance of Jimoh (i.e. 5-50% wt. total actives, 0.1% to 25% wt. graminicide, and about 1:50 to 1:1 of graminicide to water soluble herbicides), such that the selected amounts would have equated to a weight ratio that overlaps with the claimed weight ratio (i.e. about 5:1 to about 3:2), thus making the claimed weight ratio obvious. "[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." See MPEP § 2144.05(II)(A).
Regarding claims 8 and 9, the claimed amounts of components (A) and (B), with or without component (C), as discussed above, Jimoh discloses about 5-50% weight of total active ingredients, about 0.1% to about 25% by weight graminicide including fluazifop ((A)), and both the salts of triclopyr ((B)) and diquat ((C)) as water-soluble herbicides. Accordingly, the claimed amounts of component (A) (i.e. about 3.0 wt.% to about 4.0 wt.%) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. about 0.1% to about 25 % by weight). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05(A). Moreover, as discussed above, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed amounts of component (B) (i.e. about 4.5 wt. % to about 5.5 wt. % in claims 8 and 9), and/or component (C) in claim 9 (about 1.0 wt. % to about 3.5 wt. % in claim 9) through routine experimentation, since Jimoh discloses 5-50% wt. total actives, 0.1% to 25% wt. graminicide, and about 1:50 to 1:1 of graminicide to water soluble herbicides. "[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." See MPEP § 2144.05(II)(A).
Regarding claim 10 reciting wherein components (A) and (B) are the only herbicidal active ingredients in the composition, Jimoh does not disclose wherein the composition is required to have three or more herbicides in combination. Therefore, it would have been obvious to one of ordinary skill in the art to have formulated the composition of Jimoh such that fluazifop and triclopyr are the only herbicidal active ingredients of the composition.
Regarding claims 12 and 13, as discussed above, Jimoh discloses wherein the dispersing system provides acceptable dispersion of the microemulsion upon dilution thereof in a suitable volume of water for application to plants. Jimoh further discloses wherein a “suitable volume of water” can readily be determined by one of skill in the art by routine evaluation of a range of compositions having differing amounts of the selected dispersing system and is an amount which upon dilution of the composition provides an application composition having a concentration of active ingredients adequate to kill or control susceptible plants if applied to foliage of such plants (col. 6, lines 34-43). Accordingly, even though Jimoh does not explicitly disclose the amount of water or the ratio of dilution, respectively, it would have taken no more than the relative skill of one of ordinary skill in the art to have arrived at the claimed amounts of water (i.e. about 45 wt.% to about 80 wt.%) or the claimed ratio by volume (i.e. about 1:25 to about 1:60), respectively, through routine experimentation based on the concentration of active ingredients adequate to kill or control susceptible plants if applied to foliage of such plants. "[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." See MPEP § 2144.05(II)(A).
Regarding claim 16 reciting wherein components (A), (B), and (C) are the only herbicidal active ingredients in the composition, Jimoh does not disclose wherein the composition is required to have four or more herbicides in combination. Therefore, it would have been obvious to one of ordinary skill in the art to have formulated the composition of Jimoh such that fluazifop, triclopyr, and diquat are the only herbicidal active ingredients of the composition.
Response to Arguments
Applicant mainly asserts on p. 8 of the Remarks dated 21 April 2026 that fluazifop is only listed among other “preferred” graminicides and triclopyr is similarly listed among other suitable water-soluble herbicides and not specifically cited in Jimoh’s working examples 1-23, thus one of ordinary skill in the art would not have selected a combination of such two components and required proportions of instantly claimed components (A) and (B).
The Examiner does not find the assertion to be persuasive. As supported by MPEP 2123(I), a prior art reference may be evaluated for all that it reasonably suggests and is not limited to preferred embodiments and working examples. Thus the teaching of Jimoh is not limited to Examples 1-23 and Applicant’s assertion is unpersuasive. Moreover, as discussed above, the herbicides are simply being combined with the expectation of obtaining a third composition which is also an herbicide. Thus Jimoh demonstrates that each of the claimed herbicide is known and can be combined. Generally, it is obvious to combine known compositions each of which is taught by the prior art to be useful for the same purpose (in this instant case as an herbicide), in order to form a third composition to be used for the very same purpose. See MPEP § 2144.06. As such, Applicant’s assertion is unpersuasive.
The Applicant mainly asserts on p. 7 of the Remarks dated 21 April 2026 that the claimed compositions involve the discovery that certain compositions comprising the active ingredients fluazifop or an ester of, and triclopyr or an ester thereof, and optionally additionally a diquat dihalide salt, have the desired properties and provide the desired weed killing effect against a broad weed spectrum, such as discussed in the instant Specification at paragraphs [0022], [0041], [0049], and the working examples beginning at para. [0174] including those summarized in Tables 1-8 at para. [0213].
The Examiner does not find Applicant’s assertions to be persuasive. Paragraphs [0022], [0041], and [0049] contain conclusory statements. While Tables 1-8 at para. [0213] do list various compositions containing fluazifop P-butyl and triclopyr TEA, with or without diquat dibromide, Tables 1-8 do not demonstrate the desirable results alleged by Applicant. Conclusory statements, unsupported by objective factual evidence, were not found to be of substantial evidentiary value. See MPEP § 716.01(c). As such, Applicant’s assertion is unpersuasive.
The Examiner notes that Table G1, at para. [0214] of the instant Specification, may contain results relevant to Applicant’s assertion, but Applicant should discuss them in specific detail regarding unexpected results and commensurateness of scope in relation to the claims as drafted.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Jimoh (US 6,369,001, 04/09/2002) in view of Witschel et al. (US 2021/0037824 A1, 02/11/2021) (hereinafter Witschel) as evidenced by Lock and Wilks (“Diquat”, 2001) (hereinafter Lock).
Regarding claims 3 and 4, the disclosure of Jimoh is discussed in detail above.
Jimoh differs from the instant claims insofar as not explicitly disclosing wherein the salts of triclopyr includes triclopyr-triethylammonium.
However, Witschel discloses herbicidal compositions comprising mixture A (herbicide), at least one further active compound herbicide B ([0047]-[0048]), and at least one auxiliary including surfactants ([0238]) such as nonionic surfactants that may be used as emulsifier, dispersant, solubilizer, wetter, penetration enhancer, protective colloid, or adjuvant ([0241]). Suitable forms of diquat includes diquat-dibromide ([0072]); and an agriculturally suitable salt of triclopyr is triclopyr-triethylammonium ([0085]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP § 2144.07. As discussed above, Jimoh discloses the herbicide may comprise salts of triclopyr. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated triclopyr-triethylammonium into the composition of Jimoh since it is a known and effective salt of triclopyr for compositions comprising herbicides as taught by Witschel.
Response to Arguments
Applicant does not present specific arguments with regard to Jimoh and Witschel.
Since the Examiner has discussed Jimoh above, this rejection is maintained.
Claims 11, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Jimoh (US 6,369,001, 04/09/2002) in view of Chetty et al. (US 2018/0153160 A1, 06/07/2018, hereinafter Chetty) as evidenced by Lock and Wilks (“Diquat”, 2001) (hereinafter Lock).
The disclosure of Jimoh has been discussed in detail above (including amounts of component (B) and total amounts of component (A) and (B)), and differs from the instant claim insofar as not explicitly disclosing a claimed nonionic surfactant.
However, Chetty discloses an herbicidal emulsifiable concentrate to control weeds ([0001]), containing active ingredients and emulsifying agents to enable easy dispersion in water ([0005]). Suitable active ingredients include fluazifop ([0137]) and triclopyr ([0143]). The emulsifying agent component preferably comprises nonionic surfactant component such as the condensation products of alkylene oxide with components forming nonpolar groups ([0058]), including castor oil ethoxylates such as TERMUL® 1284 ([0064]).
Jimoh discloses wherein any nonionic surfactant known to be effective in aiding dispersion for emulsion formulation can be used in the composition. Accordingly, it would have been obvious to one of ordinary skill in the art to have included a castor oil ethoxylate since it is a known and effective nonionic surfactant suitable in herbicidal compositions comprising actives such as fluazifop and triclopyr as taught by Chetty.
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 1-14 and 16-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 and 22-31 of copending Application No. 17/903,255 (reference application) in view of Jimoh (US 6,369,001, 04/09/2002), Witschel et al. (US 2021/0037824 A1, 02/11/2021) (hereinafter Witschel), and Chetty et al. (US 2018/0153160 A1, 06/07/2018, hereinafter Chetty), as evidenced by Lock and Wilks (“Diquat”, 2001) (hereinafter Lock). Although the copending claims differ from the pending claims insofar as not explicitly teaching all the features of the claimed invention, such as instantly amounts of component (B) or total amounts of components (A) and (B), these features are known in the art. As noted in the current rejections, the teachings of Jimoh render obvious claims 1-2, 5-14 and 16. Furthermore, the combined teachings of Jimoh and Witschel render obvious claims 3 and 4, and the combined teachings of Jimoh and Chetty render obvious claims 11, 17, and 18.
Therefore, as claims 1-20 and 22-31 of the copending Application No. 17/903,255, Jimoh, Witschel, and Chetty all disclose herbicidal compositions comprising herbicidal active ingredients, it would have been prima facie obvious to one of ordinary skill in the art to have modified the copending application and to include the teachings of Jimoh, Witschel, and Chetty as discussed in the rejections above, because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as instantly claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." See MPEP 2144.06(I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant notes if/when the double patenting rejection is the lone remaining rejection, to consider arguments establishing the claims of the subject application are patentably distinct over those of the reference application and/or a Terminal Disclaimer.
As this has not happened yet, the rejection is maintained.
Examiner’s Note
The Examiner notes again that Table G1 appears to speak specifically to the alleged desirable results and weed control, but Applicant should discuss them in specific detail and consider the various independent factors, e.g., species of nonionic surfactants present or conversely absent, and additional ingredients that may aid in the effectiveness of composition.
Conclusion
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 LUCY TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Thursday 8:30 AM - 6:30 PM EST.
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, Sahana Kaup can be reached at (571) 272-6897. 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.
/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
Prosecution Insights