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 of Group I, drawn to an herbicidal composition, in the reply filed on 03/27/2026 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)).
Claims 12 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/27/2026.
Claims 13-16 are cancelled.
Claims 1-11 are under current examination.
Priority
This application is a national stage entry of PCT/EP2022/084031, filed 12/01/2022. Priority has
been claimed to US PRO 63/290,929, filed 12/17/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/14/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Herbicidal Compositions Comprising S-metolachlor, Metribuzin, and Cloransulam-methyl.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is fewer than 50 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 2 is objected to because of the following informalities: it is suggested that the quotation marks of ‘ZC’ be omitted. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: it is suggested that the comma following cloransulam-methyl in line 2 be omitted. 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 2-10 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.
Regarding claims 2-4, it is unclear if “(CS)” and “(SC)” in parentheses following the limitations “a stable suspension of capsules” and “active ingredient(s) in fluid”, respectively, are intended to be a further limitation on the preceding limitations, are intended to be an abbreviation for the preceding limitations, or are some other requirement. For purposes of examination and applying prior art, the Examiner interprets that these are intended as an abbreviation for the preceding limitations and do not further limit the claims.
Regarding claims 5-10, the phrase "preferably" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination and applying prior art, the Examiner interprets that the limitations following “preferably” are optional.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Belfry et al. (“Weed management options for conventional soybean” Can. J. Plant Sci. 2016, 96, 743-747; included on IDS submitted 06/14/2024) hereafter “Belfry”.
Belfry discloses weed control options for herbicidal treatments, exemplifying those comprising a combination of S-metolachlor, metribuzin, and cloransulam-methyl (see entire document, particularly abstract and Tables 2-3).
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Becher et al. (US 2010/0248963 A1, published September 30, 2010; included on IDS submitted 06/14/2024).
Regarding instant claims 1-4, Becher teaches herbicidal microcapsules comprising acetamide herbicide core material and a shell wall encapsulating the core material (see entire document, particularly abstract and claim 1), wherein the microencapsulated herbicide is selected from the group including S-metolachlor (claims 16-17). The microencapsulated acetamide herbicide is taught to be in an aqueous mixture (fluid) in the form of a concentrate or diluted spray application mixture (claim 68), and may be formulated as an aqueous dispersion optimized for shelf stability (paragraph [0193]). Becher further teaches that the aqueous mixture further comprises one or more co-herbicides selected from those including photosystem II inhibitors and ALS inhibitors (see claim 70, paragraph [0224]). Photosystem II inhibitors include metribuzin (paragraph [0220]), and ALS inhibitors include cloransulam-methyl (paragraph [0221]).
Regarding instant claim 5, Becher teaches that microcapsule dispersions may be less than about 55 weight percent herbicide in order to prevent a viscosity that is too high to pump (paragraph [0205]); the dispersions may be as dilute with respect to microcapsule weight percent as is preferred by the user, and is typically at least about 25 weight percent herbicidal active (paragraph [0206]). Becher therefore suggests S-metolachlor present from about 25 to about 55 weight percent, overlapping the range of the instant claim. Per 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Regarding claims 6-7, as noted above, Becher teaches the inclusion of one or more co-herbicides including metribuzin and cloransulam-methyl, and suggests an amount of S-metolachlor from about 25 to 55 weight percent. Becher further teaches that a preferred weight ratio of acetamide herbicide to co-herbicide of from 10:1 to 1:10 or 5:1 to 1:5 is preferred (paragraph [0215]). At a 10:1 ratio, Becher therefore suggests an amount of co-herbicide of about 2.5 to 5.5 weight percent, overlapping the ranges of the instant claims.
Regarding instant claim 8, Becher teaches that in aqueous dispersions, dispersants are useful to inhibit the agglomeration and settling of the microcapsules (paragraphs [0193]-[0194]).
Regarding instant claim 9, Becher teaches that dispersants include polymeric naphthalene sulfonate sodium salt and sulfonated naphthalene-formaldehyde condensates (paragraph [0194]).
Regarding instant claim 10, Becher teaches that aqueous dispersions of microcapsules are prepared via oil-in-water emulsions comprising an emulsifying agent which helps determine the size of the microcapsules (paragraphs [0174] and [0176]).
Regarding instant claim 11, Becher teaches that dispersions can be formulated with additives such as stabilizers, surfactants, antifreeze agents, and preservatives etc. (paragraphs [0192], [0202]); thickeners are useful to inhibit the agglomeration and settling of the microcapsules (paragraphs [0193], [0195]).
Becher does not teach the combination of S-metolachlor, metribuzin, and cloransulam-methyl and the inclusion of the claimed additives with sufficient specificity to anticipate, but rather renders obvious the instant claims. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to combine the prior art elements of encapsulated S-metolachlor, co-herbicides of metribuzin and cloransulam-methyl, and additives taught by Becher according to known methods to yield predictable results.
Becher teaches that encapsulated acetamide herbicides reduce injury to crop foliage while achieving commercially acceptable weed control (paragraphs [0002], [0010]); combining encapsulated acetamide with co-herbicides achieves maximum activity against weeds in the absence of antagonism between acetamide and co-herbicide (paragraph [0112]). The additives of Becher are formulated with the aqueous dispersion to optimize its shelf stability and safe use (paragraphs [0193]-[0202]) and to help determine the size of the microcapsules (paragraph [0176]). Rearrangement of the prior art elements taught by Becher to reach the composition of the instant claims is within the purview of a person of ordinary skill in the art who is not an automaton and would predictably result in a shelf-stable herbicidal composition with good activity against weeds and an absence of antagonism between herbicides. Further, from MPEP 2141 I., "[I]n Sakraida v. AG Pro, Inc., the Court derived . . . the conclusion that when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417, 82 USPQ2d at 1395-96 (Internal quotations omitted.)”.
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.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 9-10, and 12 of copending Application No. 18/720,050 in view of Becher et al. (US 2010/0248963 A1, published September 30, 2010; included on IDS submitted 06/14/2024), hereafter “Becher”.
Both the instant claims and those of copending Application No. 18/720,050 recite a composition comprising encapsulated S-metolachlor suspended (dispersed) in a liquid phase comprising metribuzin and cloransulam-methyl. Both sets of claims further recite that the compositions comprise one or more dispersants, wetting agents, emulsifiers, thickeners, anti-freeze agents, and an anti-foam agent.
The claims of copending Application No. 18/720,050 do not recite the amounts of S-metolachlor, metribuzin, and cloransulam-methyl recited in claims 5-7.
Becher teaches herbicidal microcapsules comprising acetamide herbicide (see entire document, particularly abstract and claim 1) wherein the microencapsulated herbicide is selected from the group including S-metolachlor (claims 16-17). The microencapsulated acetamide herbicide is taught to be in an aqueous mixture (claim 68), and the aqueous mixture further comprises one or more co-herbicides selected from those including photosystem II inhibitors and ALS inhibitors (see claim 70, paragraph [0224]). Photosystem II inhibitors include metribuzin (paragraph [0220]), and ALS inhibitors include cloransulam-methyl (paragraph [0221]). Becher teaches that microcapsule dispersions may be less than about 55 weight percent herbicide in order to prevent a viscosity that is too high to pump (paragraph [0205]); the dispersions may be as dilute with respect to microcapsule weight percent as is preferred by the user, and is typically at least about 25 weight percent herbicidal active (paragraph [0206]). Becher therefore suggests S-metolachlor present from about 25 to about 55 weight percent, overlapping the range of instant claim 5. Becher further teaches that a preferred weight ratio of acetamide herbicide to co-herbicide of from 10:1 to 1:10 or 5:1 to 1:5 is preferred (paragraph [0215]). At a 10:1 ratio, Becher therefore suggests an amount of co-herbicide of about 2.5 to 5.5 weight percent, overlapping the ranges of instant claims 6-7.
It would have been prima facie obvious to one of ordinary skill in the art to modify the amounts of S-metolachlor, metribuzin, and cloransulam-methyl in the composition of copending Application No. 18/720,050 with those suggested by Becher to reach the amounts of the instant claims. One of ordinary skill would have been motivated to do so in order to optimize the herbicide concentrations to achieve an herbicidal composition that achieves good weed control in the absence of antagonism between acetamide and co-herbicide while avoiding undesirable viscosities, as suggested by Becher (see paragraphs [0002], [0010]), [0112], [0206]).
Further, per 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” and per MPEP 2144.05 II. A., “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”.
Given that the subject matter of the instant claims is obvious and substantially overlaps the subject matter of copending Application No. 18/720,050, the instant claims are rejected on the ground of nonstatutory double patenting. This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUDITH M KAMM whose telephone number is (703)756-4575. The examiner can normally be reached M-F 8:00 am-4:30 pm EST.
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/J.M.K./Examiner, Art Unit 1611
/TREVOR LOVE/Primary Examiner, Art Unit 1611
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