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 .
Claim Objections
Claim 11 is objected to because of the following informalities: immediately prior to “comprises” in line 2 there should be recited --- further ---. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: “obtainable or” in line 1 should be removed. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: “that a” in line 1 should be recited as --- that the ---. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: “weed plants” in line 1 should be recited as --- unwanted plants ---. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: “the area” in the last line should be recited as --- an area ---. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: “a composition” in line 1 should be recited as --- the composition ---. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 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.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claim recites a use but fails to recite steps involved in the process, which results in a claim that is not a proper process claim under 35 U.S.C. 101.
Claim 15 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 because since the claim does not set forth any steps involved in the process, it is unclear as to what process the claim is intended to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites wherein components (A), (B) and (C) are present in the composition. The claim is indefinite because claim 1, from which it depends, recites only components (A) and (B). Thus, it is not clear what the component (C) refers to. To obviate this issue, it is suggested for claim 9 to depend from claim 2.
Claim 10 recites wherein components (A), (B), and optionally component (C) are the only herbicidal active ingredients present in the composition. The claim is indefinite because claim 1, from which it depends, recites only components (A) and (B). Thus, it is not clear what component (C) refers to. Furthermore, if claim 10 were to depend from claim 2, it would be further unclear how component (C) is optional when claim 2 requires component (C). Clarification is requested.
Regarding claim 11, the phrases “typically” and "preferably" in line 3 render 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). For the purposes of examination and for the sake of compact prosecution, the Examiner has interpreted the claim as requiring one or more polyethoxylated non-ionic surfactants.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 and 5-15 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 a graminicide such as 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 5, the claimed sum of the total amounts of component (A) and component (B) (i.e. at least about 8.0 wt.%, and about 8.0 wt.% to about 12.0 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 component (A), (B), and (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, 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) in claims 8 and 9 (i.e. about 4.5 wt. % to about 5.5 wt. %), and component (C) in claim 9 (about 1.0 wt. % to about 3.5 wt. %) 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), (B), and optionally (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 the composition of Jimoh wherein fluazifop, triclopyr, and optionally diquat (i.e. diquat dibromide) are the only herbicidal active ingredients of the composition. Component (C) is optional and thus does not need to be present to meet the claim limitation.
Regarding claim 11, Jimoh further discloses wherein the one or more nonionic surfactant known to be effective as a dispersant for emulsion formulations can be used in the composition includes polyoxyethylene (2-20) alkylethers (col. 11, lines 65 – col. 12, line 3).
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).
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.
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 1-15 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). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a more specific embodiment of the instant claims (i.e. herbicidal composition comprising fluazifop, triclopyr, diquat, and one or more non-ionic surfactants including polyethoxylated castor oils) and thus read on the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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