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 with traverse of the species epyrifenacil (applicant’s I-A) in the reply filed on 06/15/26 is acknowledged. The traversal is on the ground(s) that the office has not carried its burden of proof to establish distinctness for requiring an election of species. This is not found persuasive because the amide, ester or acid portion of a molecules is not a significant portion of the molecule it is only one functional group and as such is not a significant portion of the structure and is not a structurally distinctive portion as carboxylic acids, amide, and esters are found in infinite numbers of molecules which exhibit and/or could exhibit pesticidal activity and this would even then be claiming and covering pesticides which have yet to even be discovered which contain this functional group. Additionally, as is discussed below this portion of the molecule is not distinctive and applicants special technical feature which is amine salts of dicamba combined with any pesticide having an acid, amine or ester functional group with any polycarboxylic acid or salt thereof is not a special technical feature because it was obvious when taken in view of Schnabel and Sada for the reasons which are set forth in the 103 rejection below. Thus, the requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims broadly embrace a pesticidal compound of which the only moiety required/defined is a carboxylic acid, any ester or any amide.
The specification discloses several pesticidal compounds such as formula I-A which have the required acid, amide or ester moiety. The specification is silent however on the scope of compounds which are to be encompassed as the claim encompasses compounds which have yet to even be discovered as the claim is currently written.
However, the specification fails to disclose substantive number of species of pesticidal compounds of formula I as claimed. Thus it is clear that Applicants' description of structure and activity regarding the genus of pesticidal compounds of formula I-a wherein nothing in the molecule is defined beyond the presence of an acid, amide or ester moiety based in large part on conjecture. The entire claim scope of pesticidal compounds of applicant’s formula I was not known in the prior art at the time of the instant invention by Applicants, and include pesticidal compounds yet to be discovered.
As the specification fails to describe the complete structures of pesticidal compounds being claimed within the scope of applicant’s formula I as it is currently written the disclosed species of pesticidal compounds which read on applicant’s formula as disclosed in the specification does not constitute a substantial portion of the claimed genus.
Applicant’s attention is also directed to In re Shokal, 113 USPQ 283 (CCPA 1957), wherein it is stated:
It appears to be well settled that a single species can rarely, if ever, afford sufficient support for a generic claim. In re Soll, 25 CCPA (Patents) 1309, 97 F2d 623, 38 USPQ 189; In re Wahlforss, 28 CCPA (Patents) 867, 117 F2d 270, 48 USPQ 397. The decisions do not however fix any definite number of species which will establish completion of a generic invention and it seems evident therefrom that such number will vary, depending on the circumstances of particular cases. Thus, in the case of small genus such as the halogens, consisting of four species, a reduction to practice of three, perhaps even two, might serve to complete the generic invention, while in the case of a genus comprising hundreds of species, a considerably larger number of reductions to practice would probably be necessary.
As stated in MPEP 2163 II: If the application as filed does not disclose the complete structure (or acts of a process) of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. The instant specification is devoid of a description for the numerous possible pesticidal compounds which contain an acid, amide or ester moiety and any degree of pesticidal activity. The specification merely discloses the structures and function of some examples of pesticidal actives which read on their formula I as claimed. Thus, Applicants have failed to demonstrate possession of the innumerable number of compounds having an acid, ester, or amide moiety and which have even the smallest degree of pesticidal activity as this scope includes compounds which have yet to be discovered. Disclosure of function alone is little more than a wish for possession; it does not satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (written description requirement not satisfied by merely providing “a result that one might achieve if one made that invention”); In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming a rejection for lack of written description because the specification does “little more than outline goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate”).
The disclosed structural features of applicant’s formula I in claim 1, do not constitute an adequate description to demonstrate possession of the numerous compounds containing an acid, amide or ester functional group and which have some degree of any pesticidal activity against any pest, as claimed. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail such that the Artisan can reasonably conclude that the inventor(s) had possession of the claimed invention. Such possession may be demonstrated by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and/or formulae that fully set forth the claimed invention. Possession may be shown by an actual reduction to practice, showing that the invention was “ready for patenting”, or by describing distinguishing identifying characteristics sufficient to show that Applicant was in possession of the claimed invention (January 5, 2001 Fed. Reg., Vol. 66, No. 4, pp. 1099-11).
Overall, what these statements indicate is that the Applicant must provide adequate description of such core structure and function related to that core structure such that the Artisan of skill could determine the desired effect. Hence, the analysis above demonstrates that Applicants have not described the numerous possible pesticidal compounds of their formula I which their claim is to encompass. As such, the Artisan of skill could not predict that Applicant possessed any additional species, except for those disclosed in the specification or known in the art at the time of the instant filing.
Therefore, the breadth of the claims as reading on innumerable compounds containing at least one acid, amide or ester group and having even the smallest degree of pesticidal activity, including those yet to be discovered; in view of the level of knowledge or skill in the art at the time of the invention, and the limited information provided in the specification, an Artisan of skill would not recognize from the disclosure that Applicant was in possession of the innumerable pesticidal compounds of formula I as claimed, at the time the application was filed. Thus it is concluded that the written description requirement is not satisfied.
Applicant’s claim any and all known and unknown pesticides containing the partial structure represented by formula I. However, the only structural moiety in formula I is an amide, ester or acid moiety. Thus, applicants are claiming any and all known and unknown compounds with any type or degree of pesticidal activity which contains any of these functional groups and while the specification discloses some examples of compounds with these moieties that work in their invention e.g. formula I-A, etc. this is not enough written support for claiming the entire scope of compounds including any and all unknown or yet to be discovered compounds having any degree of pesticidal activity which contain the claimed moiety. Thus, applicants specification does not actually provide adequate written support for the entire scope of pesticidal actives of which the only structural requirement is an a carboxylic acid, any amide or any ester moiety as claimed.
Claims 3-13 are also rejected because they depend from claim 1 and do not resolve the above written description issues.
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.
Claim(s) 1, 3-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnabel et al. (WO2013017402), and further in view of Sada (US20190142005).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 4, 6-9, 11, Schnabel teaches liquid pesticidal compositions having a pH of at least 7 which contains an agrochemical and a base/basic compound e.g. an alkali salt of hydrogen carbonate, and which can further comprise the alkali metal hydroxide, specifically potassium hydroxide and/or sodium hydroxide and wherein the agrochemical can be the claimed dicamba amine salts, specifically dicamba dimethylamine and/or dicamba BAPMA, etc. which when mixed with basic compounds sees reduced volatility, as Schnabel teaches forming dicamba and/or glyphosate, etc. salt formulations with the claimed polyacrylic acids as crystallization inhibitors which are/read on the claimed polycarboxylic acids and/or salts thereof and the claimed basic compounds are useful for reducing the volatility of liquid formulations of these active agents, and Schnabel teaches wherein the concentration of the base in liquid tank mix is 3 or 30 or 50 g/L and specifically teach that tank mixes may contain from 0.4 to 200 g/l, preferably from 0.8 to 100 g/l, and in particular from 2 to 50 g/l of the base selected from an alkali salt of hydrogencarbonate, e.g. sodium hydrogen carbonate/sodium bicarbonate has a molar mass of 84.006 and 2/84 is .023 mol/L to 50/84 is 0.60 mol/L which means that the ranges taught by Schnabel overlap the claimed concentration ranges (See entire document; abstract; claims; pg. 2, ln. 5-25; pg. 4, ln. 17-21, pg. 4, ln. 33-35; pg. 5, ln. 27-pg. 6, ln. 2; pg. 6, ln. 9-19, pg. 8, ln. 32-pg. 10, ln. 5; pg. 12, ln. 36-39; pg. 13, ln. 29-30, ln. 38-39 (dicamba and its salts); pg. 13, ln. 42-pg. 14, ln. 3; pg. 14, ln. 38-pg. 15, ln. 5; pg. 16, ln. 13-15; pg. 17, ln. 1-11; pg. 5, ln. 10-38; Example 7; pg. 28, ln. 18-40; pg. 29, ln. 33-pg. 30, ln. 1; pg. 30, ln. 7-11).
Regarding claims 1, 3-4, 6-11, Schnabel teaches wherein their liquid pesticidal compositions which comprise the claimed dicamba salts can further comprise additional pesticides which are not particularly limited and which specifically disclose PPO inhibitor herbicides can be included (which would broadly include the elected epyrifenacil (applicant’s formula I-A)), as Schnabel teaches that related pyrimidinedione PPO herbicides such as saflufenacil, etc. (which contain the claimed carboxylic group of applicant’s formula I, specifically applicant’s formula I-1 can be included) (See entire document; abstract; claims; pg. 2, ln. 5-25; pg. 4, ln. 17-21, pg. 4, ln. 33-35; pg. 5, ln. 27-pg. 6, ln. 2; pg. 6, ln. 9-19, pg. 8, ln. 32-pg. 10, ln. 5; pg. 12, ln. 36-39; pg. 13, ln. 29-30, ln. 38-39 (dicamba and its salts); pg. 13, ln. 42-pg. 14, ln. 3; pg. 14, ln. 38-pg. 15, ln. 5; pg. 16, ln. 13-15; pg. 17, ln. 1-11; pg. 5, ln. 10-38; Example 7; pg. 28, ln. 18-40; pg. 29, ln. 33-pg. 30, ln. 1; pg. 30, ln. 7-11).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1 and 3-13, Schnabel does not specifically teach the elected combination of dicamba/dicamba salts with epyrifenacil (applicant’s I-A) of claims 12-13, nor does Schnabel specifically teach wherein the dicamba salt is one of the claimed dicamba diglycolamine salt or the claimed dicamba monoethanolamine salt. However, as discussed above Schnabel does not limit what additional pesticidal/herbicidal actives can be included in their reduced volatility liquid pesticidal compositions and they specifically teach wherein other structurally similar pyrimidinedione PPO herbicides herbicides, e.g. saflufenacil can be included. Additionally, Schnabel already teaches that by including their bases and adjuvants into amine formulations of dicamba they also see reduced volatility as per the dicamba BAPMA example (Example 7). However, these deficiencies in Schnabel are addressed by Sada.
Sada teaches that combinations of epyrifenacil (Applicant’s I-A) and the claimed dicamba salts, specifically the claimed dicamba diglycolamine salts were known in the art and were known to be synergistic for controlling weeds (See entire document; [0006]; [0008-0010]; [0017-0020]; [0027]; claims; abstract; Examples 1-2).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have used the combination of epyrifenacil (Applicant’s I-A) and the claimed dicamba salts, specifically the claimed dicamba diglycolamine salts which are synergistic for controlling weeds as the dicamba and second herbicide in the formulations with the claimed base/basic compound and hydroxide, and polyacrylic acid of Schnabel in order to form the claimed combinations. One of ordinary skill in the art would want to do this because by using this synergistic combination of actives of Sada as the dicamba salt and second herbicide in the formulations of Schnabel would allow the epyrifenacil and dicamba composition to have reduced volatility which is desired with dicamba which is known to drift/have issues with volatility and the compositions of Schnabel report that by using the base/basic compound with the claimed hydroxides and the claimed polyacrylic acid leads to a reduction in volatility of herbicidal combinations comprising dicamba salts and other herbicides which are not limited and which include similar herbicides to the elected epyrifenacil which is taught by Sada. One of ordinary skill in the art would select the claimed herbicides as the dicamba combination to use because Sada teaches that the instantly elected combination is known to be synergistic and by formulating it as claimed as is taught by the combined references would lead to a more effective herbicidal composition with synergy and which has reduced or eliminated volatility issues.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
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 at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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