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 9 is objected to because of the following informalities:
Claim 9 recites “…fenoxaprop-p- ethyl…”. The Examiner suggests deleting the space between “fenoxaprop-p” and “ethyl” as such is the proper chemical name.
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.
Claims 1, 3-14 and 16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 3-14 and 16 are indefinite because claims 1 and 7 recite “built-in oil-type adjuvant”. As indicated in the MPEP § 2173.05(b)(III), "The addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). Likewise, the phrase “ZSM-5-type aluminosilicate zeolites” was held to be indefinite because it was unclear what “type” was intended to convey. The interpretation was made more difficult by the fact that the zeolites defined in the dependent claims were not within the genus of the type of zeolites defined in the independent claim. Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986). In the instant case, the term "type" makes the metes and bounds of the claimed invention indefinite.
Claim 3 recites the limitation "the polypropylene glycol ether" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 3 depends from claim 1, but claim 1 does not contain such limitation. Therefore, it is unclear what this limitation refers to and how to interpret the claim. The Examiner suggests changing claim 3 dependency to claim 2 in order to obviate the instant rejection.
Claim 4 recites the limitation "the polypropylene glycol stearyl ether" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 4 depends from claim 1, but claim 1 does not contain such limitation. Therefore, it is unclear what this limitation refers to and how to interpret the claim. The Examiner suggests changing claim 4 dependency to claim 3 in order to obviate the instant rejection.
Claims 7-9 recite concentration ranges without indicating how it is measured. For example, claim 7 recites “…wherein the built-in oil-type adjuvant is present in an amount of from 10 to 40% by weight” (similar limitation is recited in claims 8-9); however, it is not clear what this calculation is based on. For example, is the 10-40% by weight, based on the total weight of the composition? Such missing information makes the metes and bounds of the claimed invention indefinite.
Claim 10 recites “the ratio of pinoxaden and fenoxaprop-p-ethyl to the built-in oil-type adjuvant”. The claim does not recite the unit of measurement; is it based on volume or weight? Thus, the metes and bounds of the claims cannot be determined and the claims are indefinite.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefinite concerns outlined above.
Examiner’s note: “substantially no”, which is recited in instant claim 12 is defined in the speciation to mean “less than 0.5% by weight”.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over US EPA (Label Amendment – Adding a grazing restriction; Product name: Axial Bold Herbicide; EPA Reg. No. 100-1632; Letter dated 3/6/20), as evidenced by Syngenta (Safety Data Sheet: Axial Bold Herbicide; revision date: 3/8/23), and in view of Arand et al. (J Agr Food Chem, 2018, 66(23), 5770-5777).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
With regards to instant claims 1, 8-13 and 16, US EPA discloses that the product, Axial Bold Herbicide, comprises active agents pinoxaden (5.51%) and fenoxaprop-p-ethyl (2.75%) and other ingredients, wherein the product is an emulsifiable concentrate (EC) [p.3]. With regards to the amount of fenoxaprop-p-ethyl, MPEP §2144.05(I) states: a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). With 5.51% pinoxaden and 2.75% fenoxaprop-p-ethyl in the abovementioned composition, a ratio of about 2:1 of pinoxaden and fenoxaprop-p-ethyl is present [p. 3]. As evidenced by Syngenta, Axial Bold Herbicide further comprises the safener, cloquintocet-mexyl and does not contain tris(2-ethylhexyl)phosphate [p. 3].
With regards to instant claim 14, US EPA states that Axial Bold Herbicide is a systemic, postemergence herbicide for the control of several grass weed species in all varieties of spring wheat (excluding durum), winter wheat and barley [Section 3.0 Product Information]. US EPA states: “For ground application, apply the spray mixture in a volume of 5-10 gal/A” and “For aerial application, apply in a minimum spray volume of 5 gal/A” [Section 4.3 Application Volume and Spray Coverage].
With regards to instant claim 15, US EPA describes mixing directions, which include adding Axial Bold Herbicide to a spray tank that is half full with water and maintain tank agitation and continue throughout mixing (i.e., combining operation) [Section 4.4 Mixing Directions].
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
US EPA teaches the product Axial Bold Herbicide, which comprises the claimed pinoxaden and fenoxaprop-p-ethyl active ingredients, but does not teach wherein the product further comprises a built-in oil adjuvant, as required by instant claim 1. However, this deficiency is cured by Arand.
Arand is directed to the mode of actions of adjuvants in pinoxaden-containing compositions (Title). Arand teaches pinoxaden combined with the following built-in adjuvants: tris(2-ethylhexyl)phosphate (TEHP), sorbitan monolaurate (Span 20), sorbitan monooleate (Span 80), polyoxyethylene sorbitan monolaurate (Tween 20) and polyoxyethylene sorbitan monooleate (Tween 80) [Introduction Section]. Arand teaches that the formulations contain pinoxaden (PXD) in the commercial nonadjuvanted EC100 formulation Axial 100 EC (100 g/L PXD) containing the safener cloquintocet-mexyl [Materials and Methods Section]. Arand teaches that all samples were used as aqueous solutions or emulsion with an adjuvant concentration of 0.1% (w/v) [Materials and Methods Section].
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
US EPA (Axial Bold Herbicide) and Arand are both directed to pinoxaden-containing herbicidally-active compositions. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify US EPA’s product, Axial Bold Herbicide, by further incorporating a built-in oil adjuvant (e.g., Tween 20 or 80 or Span 20 or 80) to achieve the predictable result of obtaining a composition suitable for providing herbicidal effects. One of ordinary skill in the art would have been motivated to do so because Arand teach that it is advantageous for improving the efficiency of pinoxaden in controlling grass-weed species in greenhouse experiments by aiding retention, having humectant properties, maintaining the bioavailability, and increasing the cuticular penetration of pinoxaden [Abstract].
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claims 1-2 and 7-16 are rejected under 35 U.S.C. 103 as being unpatentable over US EPA (Label Amendment – Adding a grazing restriction; Product name: Axial Bold Herbicide; EPA Reg. No. 100-1632; Letter dated 3/6/20), as evidenced by Syngenta (Safety Data Sheet: Axial Bold Herbicide; revision date: 3/8/23), and in view of Jadhav et al. (US 2016/0066570; published: 3/10/16).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
With regards to instant claims 1, 8-13 and 16, US EPA discloses that the product, Axial Bold Herbicide, comprises active agents pinoxaden (5.51%) and fenoxaprop-p-ethyl (2.75%) and other ingredients, wherein the product is an emulsifiable concentrate (EC) [p.3]. With regards to the amount of fenoxaprop-p-ethyl, MPEP §2144.05(I) states: a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). With 5.51% pinoxaden and 2.75% fenoxaprop-p-ethyl in the abovementioned composition, a ratio of about 2:1 of pinoxaden and fenoxaprop-p-ethyl is present [p. 3]. As evidenced by Syngenta, Axial Bold Herbicide further comprises the safener, cloquintocet-mexyl and does not contain tris(2-ethylhexyl)phosphate [p. 3].
With regards to instant claim 14, US EPA states that Axial Bold Herbicide is a systemic, postemergence herbicide for the control of several grass weed species in all varieties of spring wheat (excluding durum), winter wheat and barley [Section 3.0 Product Information]. US EPA states: “For ground application, apply the spray mixture in a volume of 5-10 gal/A” and “For aerial application, apply in a minimum spray volume of 5 gal/A” [Section 4.3 Application Volume and Spray Coverage].
With regards to instant claim 15, US EPA describes mixing directions, which include adding Axial Bold Herbicide to a spray tank that is half full with water and maintain tank agitation and continue throughout mixing (i.e., combining operation) [Section 4.4 Mixing Directions].
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
US EPA teaches the product Axial Bold Herbicide, which comprises the claimed pinoxaden and fenoxaprop-p-ethyl active ingredients, but does not teach wherein the product further comprises a built-in oil adjuvant such as a polypropylene glycol ether and wherein the buil-in oil adjuvant is present in an amount of from 10-40% by weight, as required by instant claims 1-2 and 7. However, this deficiency is cured by Jadhav.
Jadhav is directed to agrochemical compositions comprising at least one agrochemical active ingredient and an adjuvant composition [Abstract]. Jadhav teaches wherein the agrochemical active ingredient is an herbicide [claim 3] and wherein the agrochemical active ingredient is present in an amount from about 5% to about 90% by weight of the composition [claim 6]. Jadhav teaches wherein the adjuvant composition is present in an amount from about 0.1% to about 15% by weight of the composition [claim 8]. As indicated in MPEP §2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Furthermore, Jadhav teaches that its compositions can further comprise nonionic surfactants and/or dispersing agents, wherein both agents can be polypropylene glycol alkyl ethers [0045-0046 and 0055].
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
US EPA (Axial Bold Herbicide) and Jadhav are both directed to pinoxaden-containing herbicidally-active compositions. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify US EPA’s product, Axial Bold Herbicide, by further incorporating a built-in oil adjuvant (e.g., polypropylene glycol alkyl ether) to achieve the predictable result of obtaining a composition suitable for providing herbicidal effects. One of ordinary skill in the art would have been motivated to do so because Jadhav teaches that it is advantageous for both surfactant and dispersing activities.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
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 1-16 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14 of copending Application No. 18/716,748 in view of US EPA (Label Amendment – Adding a grazing restriction; Product name: Axial Bold Herbicide; EPA Reg. No. 100-1632; Letter dated 3/6/20). Although the conflicting claims are not identical, they are not patentably distinct from each other because both claim sets are drawn to the same composition comprising 1-10% by weight pinoxaden, 10-40% by weight built-in oil adjuvant (e.g., polypropylene glycol stearyl ether of formula: R–(O–CH2CH(CH3))n–O–R1, wherein n is from 5-18, R is C16 to C16 straight- or branched-chain alkyl, R1 is H or methyl), a cloquitocet-mexyl safener, wherein the form is an EC or OD and the composition comprises substantially no TEHP. Furthermore, both claim sets are drawn to a method of making the abovementioned composition by combining the ingredients and a method of inhibiting or controlling undesirable plant growth, by applying the abovementioned composition to the plants or their habitat. The difference is that the copending application recites an additional component to the composition: fenoxaprop-p-methyl. However, such combination is routinely used in the prior art, as evidenced by US EPA: Axial Bold Herbicide. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the pinoxaden only herbicide composition with the combination of pinoxaden and fenoxaprop-p-methyl, which would allow control of more pest species. Thus, the instant claims and the application claims are obvious variants.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached at 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GENEVIEVE S ALLEY/Primary Examiner, Art Unit 1617