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, 4, and 13 are original. Claims 2-3, and 5-12 are currently amended. Claims 1-13 are pending and under examination.
Priority
This application is a 371 of PCT/EP2022/078026, filed on 10/10/2022. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. EP 21204229.5, filed on 10/22/2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/11/2024 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 2 is objected to because of the following informalities: The term “IBC” must be spelled out before it is abbreviated. Appropriate correction is required. For the purpose of examination, ”IBC” shall be defined according to the specifications, which states that it stands for “intermediate bulk container”.
Claim 9 is objected to as the strikethrough did not extend to delete all of the word “to” that precedes “7” in the claim.
Claim 10 is objected to for “ester, ketone, or alcohol to 10:90….” Which is more appropriately “ester, ketone or alcohol is 10:90…”.
Claim 13 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only, and/or cannot depend from any other multiple dependent claims. See MPEP § 608.01(n). The claim should recite “any one of the preceding claims”.
Appropriate corrections are 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 and 6 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.
In claims 5 and 6, the introduction to the Markush group states that “the ester or alcohol is selected from”. However, there are compounds within these groups that are also ketones. Therefore, claims 5 and 6 are indefinite because their Markush groups recite compounds that do not fall within the recited classes of “ester or alcohol”, thereby rendering the scope of the claims unclear and indefinite. The suggested amendment is to change the introductory portion to “ester, ketone and/or alcohol”, or to remove the ketone compounds from these Markush groups.
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.
For the purpose of examination, "consisting essentially of" will be construed as equivalent to "comprising" until any prior art additive is shown to affect the basic and novel characteristics of the claimed composition/product. See MPEP 2111.03.
Claims 4-7, 9-11, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schneider (US20090005246A1).
Schneider discloses a herbicidal composition in the form of an emulsifiable concentrate which comprises, in addition to emulsifiers and water-insoluble solvents, 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo[1,2-d][1,4,5]oxadiazepin-7-yl ester (also Known as pinoxaden) and an alcohol (abstract). In a single embodiment (paragraph 25, table 1, example EC-2), the composition is formulated with 10.5 g of pinoxaden, 2.7 g of cloguintocet-mexyl (an ester), and 30 g of cyclohexanone (a ketone). In another embodiment (paragraph 25, table 1, example EC-3), the composition is formulated with 10.5 g of pinoxaden, 2.7 g of cloguintocet-mexyl (an ester), and 30 g of tetrahydrofurfuryl alcohol. For both of the above embodiments, the weight ratio of pinoxaden to the ketone or alcohol squarely overlaps with the present claimed weight ratios of 10:90 to 40:60 (present claim 10) and 15:85 to 30:70 (present claim 11). Schneider teaches that the above composition examples (EC) are mixtures that are obtained by stirring until a solution (which is homogenous) is formed (paragraph 20), which indicates that it inherently eliminates the risk of pinoxaden powder becoming airborne. This is especially supported when in example EC-3, the addition of tetrahydrofurfuryl alcohol reduced the loss of pinoxaden compared to the control composition shown in EC-1, with the percent loss in weight being reduced from 25% to 13% after two weeks of storage (paragraph 25, table one, examples EC-1 and EC-3). In independent claim 1, Schneider teaches that the composition contains pinoxaden and an alcohol, while its dependent claim 2 teaches that such composition also comprises 2-ethylhexanol, n-octanol, benzyl alcohol, tetrahydrofurfuryl alcohol, 2-methyl-2,4-pentanediol, 4-hydroxy-4- methyl-2-pentanone, cyclohexanol, methyl lactate or butyl lactate (pages 3-4).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
For the purpose of examination, "consisting essentially of" will be construed as equivalent to "comprising." See MPEP 2111.03.
Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Schneider (US20090005246A1).
In the various embodiments (or examples) previously stated, Schneider already teaches all of the limitations of claims 4-7, 9-11, and 13.
However, in such embodiments (or examples), Schneider fails to teach the limitations of claim 8 and 12, which include the alcohol being selected from the group consisting of a mixture of 2-methyl-2,4-pentanediol and benzyl alcohol in a ratio of 80-20 to 20-80% by weight; and the amount of pinoxaden by weight being more than 20%.
Schneider discloses a herbicidal composition in the form of an emulsifiable concentrate which comprises, in addition to emulsifiers and water-insoluble solvents, 2,2-dimethyl-propionic acid 8-(2,6-diethyl-4-methyl-phenyl)-9-oxo-1,2,4,5-tetrahydro-9H-pyrazolo[1,2-d][1,4,5]oxadiazepin-7-yl ester (also Known as pinoxaden) and an alcohol (abstract). Schneider teaches that 1% to 50% of herbicides including pinoxaden can be used in such compositions (paragraph 17). Schneider teaches that benzyl alcohol and 2-methyl-2,4-pentanediol can be included in the composition (paragraphs 7 and 10). Schneider teaches that such alcohols can be present in the composition as mixtures (paragraph 12). Schneider teaches that Preferably from 1% to 97% by weight of said alcohols may be present in the composition (paragraph 11). In a single embodiment (paragraph 25, table 1, example EC-2), the composition is formulated with 10.5 g of pinoxaden, 2.7 g of cloguintocet-mexyl (an ester), and 30 g of cyclohexanone (a ketone). In another embodiment (paragraph 25, table 1, example EC-3), the composition is formulated with 10.5 g of pinoxaden, 2.7 g of cloguintocet-mexyl (an ester), and 30 g of tetrahydrofurfuryl alcohol. For both of the above embodiments, the weight ratio of pinoxaden to the ketone or alcohol squarely overlaps with the present claimed weight ratios of 10:90 to 40:60 (present claim 10) and 15:85 to 30:70 (present claim 11). Schneider teaches that the above composition examples (EC) are mixtures that are obtained by stirring until a solution (which is homogenous) is formed (paragraph 20), which indicates that it inherently eliminates the risk of pinoxaden powder becoming airborne. This is especially supported when in example EC-3, the addition of tetrahydrofurfuryl alcohol reduced the loss of pinoxaden compared to the control composition shown in EC-1, with the percent loss in weight being reduced from 25% to 13% after two weeks of storage (paragraph 25, table one, examples EC-1 and EC-3). In independent claim 1, Schneider teaches that the composition contains pinoxaden and an alcohol, while its dependent claim 2 teaches that such composition also comprises 2-ethylhexanol, n-octanol, benzyl alcohol, tetrahydrofurfuryl alcohol, 2-methyl-2,4-pentanediol, 4-hydroxy-4- methyl-2-pentanone, cyclohexanol, methyl lactate or butyl lactate (pages 3-4).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the composition of schneider such that the alcohol comprises a mixture of 2-methyl-2,4-pentanediol and benzyl alcohol in a ratio of 80-20 to 20-80% by weight and such that the amount of pinoxaden by weight is more than 20%, as recited in claims 8 and 12. This is because Schneider teaches that benzyl alcohol and 2-methyl-2,4-pentanediol are suitable alcohols to be used in such compositions as mixtures at a broad amount of up to 97% by weight, thereby providing formulation flexibility to select relative proportions of mixed alcohol, which indicates that their ratio range in claim 8 is a matter of routine optimization absent proof of unexpected results or criticality. Furthermore, Schneider teaches that herbicides such as pinoxaden may be included in the composition at concentrations that overlap with those stated in claim 12. In view of these teachings, a person of ordinary skill in the art would have been motivated to select and combine the expressly disclosed alcohols at the claimed ratios in addition to the amount of pinoxaden at the claimed concentration to obtain an emulsifiable concentrate composition suitable for handling and storage. A reasonable expectation of success would have existed because Schneider teaches that such compositions are readily prepared by stirring, and the various embodiments (EC-2 & EC-3) exemplify pinoxaden formulations containing alcohol, which provide points of reference for modifying the composition.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Schneider (US20090005246A1) in view of Barion (US20180030253A1).
Schneider discloses all of the limitations previously listed, including a composition comprising pinoxaden in addition to an ester, a ketone and/or an alcohol.
However, Schneider fails to teach a transport system comprising a suitable container containing a composition consisting essentially of pinoxaden in addition to an ester, a ketone and/or an alcohol. Schneider further fails to teach the container to be an IBC having the capacity that overlaps with 100 litres and 10,000 litres.
Barion discloses polymer blend compositions and plastic containers for the transport of hazardous substances, made of the same (paragraph 1). Barion teaches that the polymer blend composition of the present invention is employed to manufacture inner containers for Intermediate Bulk Containers (IBC) for storage and collection of liquid or gel hazardous substances (paragraph 51). Barion teaches that the polymer blend composition of the present invention is particularly advantageous for the production of plastic containers to store solvents such as ketones and alcohols in addition to commercially based products including herbicides that are dissolved in such solvents (paragraph 52). Barion teaches that such containers according to the present invention preferably has a volume ranging between 800 Liters and 1200 Liters (paragraph 66).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the herbicide composition taught by Schneider into the transport system taught by Barion. This is because Schneider teaches all elements of the herbicidal composition stated in the present claims, which includes pinoxaden in addition to an ester, a ketone and/or an alcohol. Concurrently, Barion teaches that IBCs having an overlapping capacity with present claim 3 can be used to store and transport herbicides that are dissolved in the claimed solvents including ketones and alcohols. Thus, a person of ordinary skill in the art would have been motivated to combine the herbicidal composition taught by Schneider with the transport system taught by Barion in order to store and transport the known pinoxaden-containing solvent composition within a compatible IBC. Furthermore, because Barion teaches the IBCs to be compatible with such solvent-based herbicidal formulations, a person of ordinary skill in the art would have had a reasonable expectation of success combining these teachings to reach the claimed invention.
Conclusions
No claim is found allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARYA AHMADI BAZARGANI whose telephone number is (571)272-0211. The examiner can normally be reached Monday - Friday 9:00AM - 5:00 PM.
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Arya A. Bazargani, Ph.D.
Patent Examiner
Art Unit 1613
/MARK V STEVENS/ Primary Examiner, Art Unit 1613