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 .
Election/Restrictions
Applicant’s election without traverse of cloquintocet mexyl as species A and benzyl alcohol as species B in the reply filed on 06/11/2026 is acknowledged.
Accordingly, claims 3-4, 8, and 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Additionally, the non-elected species are withdrawn from their corresponding claims.
Status of Claims
Receipt of Remarks/Amendments filed on 06/11/2026 is acknowledged. Claims 4-5 are amended and claims 7 and 12 are canceled. Claims 3-4, 8, and 18-19 are withdrawn as set forth above. Claims 1-2, 5-6, 9-11, 13-17, and 20-23 are examined on the merits herein.
Priority
The instant application filed 04/30/2024, is a 371 filing of PCT/US2022/079092, filed 11/01/2022, which claims benefit to U.S. Provisional Application No. 63/274,582, filed 11/02/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/24/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 11 is objected to because of the following informality: The term “(ae)” is not appropriately defined by the claims, please remove parentheses and spell out the term acid equivalent. Appropriate correction is required.
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 5-6 and 23 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 5 and 6 depend from claim 3, which defines the safener as an azole safener and is withdrawn as set forth in the species election above. The safeners defined in claims 5 and 6 include the elected cloquintocet and other safeners which are not examples of the azole safeners of parent claim 3. As such, claims 5 and 6 are unclear and indefinite.
Claim 23 recites “the composition according to claim” without defining the claim it depends on. As such, the claim is unclear and indefinite. For the sake of compact prosecution the claim is interpreted as depending from claim 22.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
1. Claims 1-2, 5, 9, 16-17, and 21-23 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Stern A. et al. (WO 2014028256 A1, 02/20/2014, IDS dated 06/24/2024), hereinafter Stern.
Regarding claim 1: Stern discloses emulsifiable concentrate preparations of HPPD inhibitor herbicides in agriculturally acceptable solvents. Carbonyl containing solvents such as alkylene carbonates are useful for dissolving such herbicides (abstract), which read on a polar solvent as claimed.
Regarding claims 2 and 5: Example 10 comprises benoxacor as a safener (p. 10).
Regarding claim 9: The composition of Stern is an emulsion concentrate (abstract; claim 15).
Regarding claims 16 and 17: Specific examples comprise propylene carbonate (Ex. 1 and 3-8) and acetophenone (Ex. 7) as a solvent, both of which read on polar aprotic solvents and acetophenone reading on an aromatic ketone.
Regarding claims 21-23: Since the composition made obvious by the prior art is identical to the composition of claim 1, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
2. Claims 1-2, 5-6, 9-11, 13-14, 16-17, and 20-23 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kolb K. et al. (WO 2015144451 A1, 10/01/2015, IDS dated 06/24/2024), hereinafter Kolb.
Kolb disclose emulsifiable concentrates (ECs) comprising topramezone, bromoxynil and at least one herbicide safener (abstract).
Regarding claim 1: The EC comprises topramezone (abstract; claim 1), which is known to be an inhibitor of 4-hydroxyphenylpyruvatdioxygenase (4-HPPD inhibitor) (p. 1, para. 6). The EC further comprises a solvent system comprising dimethyl sulfoxide (DMSO) and at least one organic solvent different from DMSO (p. 2, para. 7; claim 1). The solvent other than DMSO may be an aromatic hydrocarbon solvent (p. 10, para. 1; Table 1; claim 9). DMSO reads on a polar solvent while aromatic hydrocarbons read on an aromatic solvent. While not explicitly disclosed that the HPPD inhibitor is dissolved in the solvent, such a configuration is inherent to the composition. The “solvent system” defined by Kolb would be recognized by one of ordinary skill in the art as the solvents in which the active ingredients (i.e., the HPPD inhibitor) are dissolved in.
Regarding claim 2: The EC comprises at least one herbicide safener (abstract; claim 1).
Regarding claims 5-6: The most preferred safener is cloquintocet-mexyl (p. 5, para. 8; Table 1).
Regarding claim 9: The composition is an emulsion concentrate (abstract; claim 1).
Regarding claims 10 and 13-14: The composition comprises bromoxynil (i.e., a nitrile herbicide) (abstract; claim 1), specifically in the form of bromoxynil-octanoate (Table 1).
Regarding claim 11: The weight ratio in a specific example between the HPPD inhibitor (i.e., topramezone) and the nitrile herbicide (i.e., bromoxynil-octanoate) is 12:240 (Table 1), which is equivalent to a 1:20 ratio.
Regarding claims 16 and 17: DMSO (i.e., dimethyl sulfoxide) is present in the solvent system (p. 2, para. 7; claim 1) and reads on a polar aprotic solvent.
Regarding claim 20: The composition comprises two solvents, one of which must necessarily dissolve the nitrile solvent for the reasons discussed above.
Regarding claims 21-23: Since the composition made obvious by the prior art is identical to the composition of claim 1, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
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.
1. Claims 1-2, 5-6, 9-11, 13-17, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kolb K. et al. (WO 2015144451 A1, 10/01/2015, IDS dated 06/24/2024), hereinafter Kolb in view of Vermaelen J. et al. (US 20210219553 A1, 07/22/2021, PTO-892), hereinafter Vermaelen.
The teachings of Kolb are discussed above as are the rejections of claims 1-2, 5-6, 9-11, 13-14, 16-17, and 20-23.
The teachings of Kolb differ from that of the instantly claimed invention in that Kolb does not explicitly teach wherein the HPPD inhibitor is tolpyralate, as recited in claim 15.
Vermaelen discloses a herbicide composition comprising as component (A) an herbicidally active amount of pyridate and as component (B) at least one 4-HPPD inhibitor (abstract). The 4-HPPD inhibitor may be selected from pyrazolones such as topramezone and tolpyralate ([0012];[0017]), with tolpyralate reading on the HPPD inhibitor of claim 15. The compositions may be in the form of an emulsifiable concentrate ([0033]; [0059]) and may further comprise additional herbicides such as bromoxynil ([0037]) and safeners such as cloquintocet-mexyl ([0046]).
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 replace the topramezone of Kolb with tolpyralate since it is a known and routine 4-HPPD inhibitor in the art, as taught by Vermaelen. One of ordinary skill in the art could have simply substituted one known HPPD inhibitor for another (i.e., tolpyralate for topramezone) to predictably yield the instant invention. One of ordinary skill in the art would have had a reasonable expectation of success in incorporating the tolpyralate of Vermaelen into the composition of Kolb since Vermaelen teaches that such an active can be incorporated into EC formulations which may also comprise bromoxynil and cloquintocet-mexyl, such as the composition of Kolb.
Claims 1-2, 5-6, 9-11, 13-14, 16-17, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kolb K. et al. (WO 2015144451 A1, 10/01/2015, IDS dated 06/24/2024), hereinafter Kolb, in view of Schneider R. et al. (US 10314305 B2, 06/11/2019, PTO-892), hereinafter Schneider.
The teachings of Kolb are discussed above as are the rejections of claims 1-2, 5-6, 9-11, 13-14, and 20-23.
The teachings of Kolb differ from that of the instantly claimed invention in that Kolb does not explicitly teach wherein the solvent is an aromatic alcohol such as benzyl alcohol, as defined in claims 16 and 17, and elected by the Applicant.
Schneider discloses a liquid agrochemical composition, preferably in the form of an emulsifiable concentrate (EC), comprising a mixture of: one or more agrochemically active ingredients (in particular comprising one or more herbicides); a C1-C6 alkyl methacrylate polymer; and a solvent system comprising: (c1) an alcohol solvent such as benzyl alcohol; and (c2) a heavy aromatic hydrocarbon solvent (abstract). Preferably, the one or more agrochemically active ingredients comprise one or more herbicides selected from nitriles and HPPD inhibitors, specifically including bromoxynil octanoate and topramezone, respectively (col. 19, lines 8-65; Ex. 13). The liquid agrochemical composition further contains a safener such as cloquintocet-mexyl (col. 20, lines 36-40; Ex. 1-14). In an especially preferred embodiment the alcohol solvent (c1) is benzyl alcohol (col. 12, liens 63-65; col. 16, lines 45-47; Ex. 5-12), which reads on the elected solvent of claims 16 and 17.
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 benzyl alcohol into the composition of Kolb since benzyl alcohol is a known and routine solvent in the art as taught by Schneider. One of ordinary skill in the art could have either 1) substituted out one of the solvents taught by Kolb for the benzyl alcohol of Schneider using simple substitution of one known component for another or 2) added the benzyl alcohol of Schneider in addition to the solvents taught by Kolb using known methods, both to predictably yield the instant invention. One of ordinary skill in the art would have had a reasonable expectation of success in making either modification since Kolb teaches benzyl alcohol as a known and routine solvent in ECs comprising topramezone or bromoxynil octanoate as actives and cloquintocet-mexyl as a safener, all components found in the composition of Kolb.
Conclusion
No claims allowed.
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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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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