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 Claims
Receipt of Remarks/Amendments filed on 12/03/2025 is acknowledged. Claims 21 and 26-27 are amended and claims 1-20 and 22-25 are canceled. Claim 28 is new. Claims 21 and 26-28 are currently pending and are examined on the merits herein.
Priority
The instant application filed 04/16/2024, is a Continuation of Application No. 16/942,422, filed 07/29/2020, which claims benefit to Provisional Application Nos. 62/879,812, filed 07/29/2019, and 62/905,040, filed 09/24/2019. Examiner has requested a correction to the Bib Data sheet, in the meantime, an annotated copy has been provided.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/03/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Objections/Rejections
The specification was objected to for failing to provide proper antecedent basis for the claimed subject matter. Applicant’s amendments to claim 1 have resolved the issues and the objection is withdrawn.
Claim 6 (corrected claim 26) was objected to for informalities. Applicant’s amendment to claim 26 has overcome the objection and the objection is withdrawn.
Claim 6 (corrected claim 26) was rejected under 35 U.S.C. 112(b) for being indefinite. Applicant’s amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
Claims 1 and 6-7 (corrected claims 21 and 26-27) were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirofumi. Applicant’s amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
Claims 1 and 6-7 (corrected claims 21 and 26-27) were provisionally rejected on the ground of nonstatutory double patenting over claims 11 and 14-17 of copending Application No. 16/942,422 in view of Hirofumi. Applicant’s amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
The following rejections are new as necessitated by amendment:
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 26-28 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.
Claims 26-28 recite "the composition according to claim 1". There is insufficient antecedent basis for this limitation in the claim since claim 1 is cancelled.
Claim Rejections - 35 USC § 103
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.
1. Claims 21 and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Mann, R., et al. (US 20180206492 A1, 07/26/2018, PTO-892), hereinafter Mann, in view of Levy, R., (US 6337078 B1, 01/08/2002, PTO-892), hereinafter Levy.
Mann discloses methods for controlling aquatic weeds using florpyrauxifen with one or more of diquat dibromide, copper salts, endothal, or fluridone. The herbicidal compositions described allow for effective control and/or selectivity when treating a body of water, to control target aquatic weed populations (abstract).
Regarding claim 21: The composition for controlling aquatic weeds in a body of water comprises a herbicidally effective amount of (a) and (b), wherein (a) is florpyrauxifen and (b) is copper sulfate (claims 1, 4 and 6). Such a composition reads on the instantly claimed pesticide composition comprising a blend of florpyrauxifen, which reads on (i), and cupric sulfate (i.e., copper sulfate), which reads on (ii).
Regarding claim 26: The mixtures can be designed for application directly to weeds or their locus or can be concentrates or formulations that are normally diluted with additional carriers and adjuvants before application. They can be solids or liquids ([0039]).
Regarding claim 27: The mixtures can be in solid form such as granules ([0039]). The composition of (a) and (b) can be provided in (e.g., applied to) a body of water to be treated by the use of conventional granule applicators ([0049]).
Regarding claim 28: The composition can further comprise at least one or more agriculturally acceptable carrier ([0039]). Suitable solid carriers include talc, pyrophyllite clay, silica, and various other particulate carriers ([0042]). The mixture of (a) and (b) would necessarily be “carried” on such a carrier when included, as is the definition and meaning of a “carrier”.
The teachings of Mann differ from that of the instant invention in that Mann does not explicitly teach wherein the blend of (i) and (ii) is coated, as recited in claim 21.
Levy discloses controlled release compositions comprising complexes for treating a population of one or more aquatic organisms in a column of water. The complexes comprise a system comprising at least one bioactive agent, at least one carrier component, and at least one coating component (abstract). The coatings are selected so as to act as materials that will regulate the controlled release rate and release profile of bioactive agents over a period of time in an aqueous medium (col. 10, lines 52-56). Such a coating reads on the coating of instant claim 1.
Any bioactive agent, and combinations thereof, such as the two, three or four component combinations, designed for promoting, enhancing, or terminating (e.g., pesticides, or herbicides) the life of aquatic organisms can be utilized in the composition, depending on the desired end result (col. 10, lines 36-45). Various aquatic herbicides may be employed as the bioactive agent (col. 9-10, lines 60-7). Regarding the control of floating and submersed aquatic weeds, relevant bioactive agents include copper sulfate and other water soluble copper salts (col. 10, lines 8-15). The carrier of Levy can be particulates such as powders, granules, pellets, or briquets (col. 6, lines 64-67). The especially preferred materials comprise silica and silicate particles (col. 8, lines 4-37).
Regarding the coating of claim 21, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to incorporate a coating into the composition of Mann since coatings are known and routine in the art as taught by Levy. One of ordinary skill in the art would have been motivated to provide the mixture of florpyrauxifen and copper sulfate, taught by Mann, with the coating of Levy since such a coating regulates the controlled release rate and release profile of the bioactive agent in water. This property would be desirable in a composition for controlling aquatic weeds in a body of water, such as that of Mann. Both Mann and Levy teach compositions for treating aquatic organisms in water. “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.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modification since both Mann and Levy teach pesticide compositions for treating aquatic pests, both of which may be in the form of a solid granules with a particulate carrier, as instantly claimed.
As such, the prior art teaches all the components of the composition as claimed. Therefore, all of 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 would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
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.
1. Claims 21 and 26-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 14-17 of copending Application No. 16/942,422 in view of Mann. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Mann.
Copending claim 11 recites a process of making a herbicidal solid composition soluble in deionized water containing a commercial herbicide and a metal having at least a +2 oxidation state. The process of copending claims ‘422, would necessarily result in a herbicidal solid composition comprising a commercial herbicide and a metal having at least a +2 oxidation state, which reads partially on instant claim 1. Copending claim 16 further defines the metal as being selected from the group consisting of magnesium, iron, calcium, aluminum, copper, zinc, manganese, molybdenum, cobalt, strontium, barium and lanthanum. Copending claim 17 further defines the herbicide as being selected from several of the herbicides recited in instant claim 1, including florpyrauxifen. The copending claims differ from the instant claims in that the copending claims do not explicitly recite that the metal having at least a +2 oxidation state is a metal chloride, hydroxide, stearate, or sulfate as recited in instant claim 1. Mann discloses methods for controlling aquatic weeds using florpyrauxifen with one or more of diquat dibromide, copper salts, endothal, or fluridone. The herbicidal compositions described allow for effective control and/or selectivity when treating a body of water, to control target aquatic weed populations (abstract). The composition for controlling aquatic weeds in a body of water comprises a herbicidally effective amount of (a) and (b), wherein (a) is florpyrauxifen and (b) is copper sulfate (claims 1, 4 and 6). Thus, it would have been prima facie obvious to one of ordinary skill in the art to select copper sulfate (i.e. cupric sulfate) as the source of the 2+ metal since the combination of copper sulfate and herbicides such as florpyrauxifen, are known and routine in the art. One of ordinary skill in the art could have made such a modification by choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments, with respect to the 102(a)(1) rejection of claims 1 and 6-7 (corrected claims 21 and 26-27), have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding Applicant’s arguments against the obviousness-type double patenting, the rejections are provisional nonstatutory double patenting rejection, meaning the reference claims have not in fact been patented.
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 SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 7:30-5 (Flex).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616