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 Acknowledged
Applicant’s election of imidazolinone herbicides as the at least two or more herbicides in the reply filed on 4/7/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 4/12/2024 and 5/1/2024 was considered by the examiner.
Claim Rejections - 35 USC § 102
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.
Claims 1, 6 and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuah et al. (US 6436874).
Kuah discloses an herbicidal composition comprising glufosinate (L-glufosinate) (see claim 2) and one or more imidazolinones, e.g. imazapyr, imazethapyr (see claim 3). One or more imidazolinones is sufficiently descriptive that one would anticipate a composition comprising two or more of the compounds. Kuah includes glufosinate and the imidazolinones in a ratio of 1:0.5 to 1:2 (see instant claim 6). The composition may be used as a tank mix (see Example 1) (see instant claim 12). It is noted, however, that being used as a tank mix is an intended use. See MPEP 2111.02. Kuah’s composition may comprise auxiliary additives such as inert materials, surfactants and solvents (i.e. ‘agrochemically suitable excipients’) (see column 6, line 6-10) (see instant claim 11).
Methods of controlling the growth of undesirable vegetation by application of the composition are contemplated (see claim 8) (see instant claim 13). Rates of application for glufosinate and imidazolinones range from 20-100 g/ha (see column 3, lines 35-40) (see instant claim 14) and 20-100 g/ha, respectively (see column 4, lines 5-9) (see instant claim 15).
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.
Claims 1, 5, 6 and 9-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuah et al. (US 6436874).
Kuah is relied upon above for the rejections of claims 1, 6 and 11-15 under 35 102(a)(1) and is incorporated herein.
Kuah teaches that their agrochemical compositions are to comprise between from 0.1-99% by weight of the glufosinate and imidazolinones which obviates the presently claimed concentrations (see column 6, lines 66-67). 100-400 g/L glufosinate equals about 10-40% (see instant claim 9) which is within the range of Kuah. 10-1000 g ai/L imidazolinones equals about 0.1-100% (see instant claim 10) and is also within the range of Kuah. Thus, Kuah suggests herbicidal compositions having concentrations overlapping with that claimed. See MPEP 2144.05(I).
As noted above, Kuah teaches that the ratio of glufosinate to imidazolinone is to range from 1:0.5 to 1:2 (see claim 6). Although the reference does not teach a ratio of the glufosinate to the at least two herbicides being from 1:100:100 to 100:1:1 (see instant claim 5), such would have been obvious given that Kuah’s mixtures of glufosinate and more than one imidazolinones are contemplated in a range of 1:0.5 to 1:2, one of ordinary skill in the art would be capable of working within the generic framework of Kuah to identify ratios that would yield an effective herbicidal composition. If such a manipulation resulted in a composition having a ratio like that of instant claim 5, then that would likely be the result of common sense and ordinary skill rather than innovation.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 5, 6 and 9-15 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-13 and 15 of copending Application No. 19/113009; and
over claims 1-15 of copending Application No. 18/800855; and
over claims 1-26 of copending Application No. 17/691343; and
over claims 1-20 of copending Application No. 17/691207; and
over claims 1-24 of copending Application No. 17/691217; and
over claims 1-23 of copending Application No. 17/691346; and
over claims 1-13 and 15 of copending Application No. 19/113009; and
over claims 1-23 of copending Application No. 17/691346.
Given the multitude of double patenting rejections and the similarity of each of the copending applications with one another, for brevity, the Examiner will treat them as a batch.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the cited claims in all the applications are drawn to herbicidal compositions and methods of using said compositions wherein the composition comprises glufosinate and at least one imidazolinone such as imazethapyr, imazmox, imazapic, imazapyr, and combinatinos thereof. Compositions comprising at least two of these imidazolinone compounds would readily be envisaged as combinations are contemplated. Moreover, both applications require that the weight ratio of the glufosinate to the herbicide (imidizaolinone) are in a ratio of 1:100 to 100:1. Although none of the copending applications claim a ratio such as that of instant claim 5, one of ordinary skill in the art would be capable if using each of the co-pending applications to arrive at such a result. The scope of the claims in the cited applications are overlapping and the differences are considered to be obvious over each other. All other limitations are essentially identical in that the compositions utilize overlapping concentrations of glufosinate and imidazolinone actives, e.g. 100-400 g/L and 10-250 g/L, respectively. Methods of using the composition according to the copending applications provide glufosinate at an application rate of 50-350 g/ha and imidazolinone at an application rate of 5-200 g/ha. Thus, the claims of the copending applications are not patentably distinct over the instantly claimed subject matter.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Potentially relevant prior art
Shroff et al. (US 2020/0337310)
Mildenberger et al. (EP 0252237)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611
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