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 without traverse of Group I (claims 34-43) in the reply filed on 09 June 2026 is acknowledged.
Claims 44-53 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09 June 2026.
Claims 34-43 are under current consideration.
Drawings
The drawings are objected to because they contain color yet no petition has been filed as discussed below. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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. Specifically, the claims are directed to 2,4-D and/or glufosinate rather than dicamba.
The abstract of the disclosure is objected to because it should be directed to 2,4-D and/or glufosinate rather than dicamba. 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 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.
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.
Claim(s) 34-40 and 42-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnabel et al. ‘012 (US 2015/0157012 A1; published 11 June 2015) in view of Schnabel et al. ‘319 (US 2014/0171319 A1; published 19 June 2014).
Schnabel et al. ‘012 discloses an aqueous formulation comprising an anionic pesticide and a base (title) wherein a preferred pesticide may be 2,4-D (paragraph [0019]) or the pesticide may be glufosinate (paragraph [0014]) wherein a suitable base is potassium borate (paragraphs [0052], [0060]) wherein the composition usually contains at least 50 g/l of the base (paragraph [0065]) wherein an herbicidal effective amount of pesticidal active component is used (paragraph [0093]) wherein aqueous compositions use water as solvent (paragraph [0002]) wherein the composition may comprise adjuvants (paragraph [0081]) wherein the composition may include buffer (paragraph [0118]) wherein the composition may include mixtures of two or more pesticides (paragraph [0005]) wherein another pesticide may be dicamba or dicamba dimethylamine or dicamba diglycolamine (paragraphs [0019]-[0020]) wherein the composition reduces pesticide volatility (paragraph [0119]).
Schnabel et al. ‘012 does not disclose pH greater than 5 as claimed.
Schnabel et al. ‘319 discloses an aqueous composition comprising pesticide and a base (title) wherein preferred pesticides include 2,4-D (paragraph [0135]) and glufosinate (paragraphs [0105]-[0106]) wherein a preferred base comprises a borate (paragraph [0022]) such as potassium borate (paragraph [0028]) wherein the amount of base depends on the desired pH value (paragraph [0035]) wherein the composition has a pH value of at least 7.0 (abstract).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Schnabel et al. ‘012 and Schnabel et al. ‘319 by making the composition of Schnabel et al. ‘012 as discussed above with a pH of at least 7.0 as suggested by Schnabel et al. ‘319, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to make the composition with a pH known to be suitable for aqueous compositions comprising 2,4-D or glufosinate, with potassium borate, as suggested by Schnabel et al. ‘319.
Furthermore, although Schnabel et al. ‘012 discloses that the composition usually contains at least 50 g/l of the base rather than less than 30 g/l as claimed, and does not disclose an effective amount of borate as claimed, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the composition of Schnabel et al. ‘012 in view of Schnabel et al. ‘319 as discussed above wherein the amount of potassium borate base therein (and thus also vary the effective amount of borate) is varied through routine experimentation per MPEP 2144.05(II) in order to achieve the desired pH of at least 7.0, with a reasonable expectation of success, given that Schnabel et al. ‘319 discloses that the amount of base depends on the desired pH value and that a suitable pH value in an aqueous composition comprising potassium borate and 2,4-D or glufosinate is at least 7.0.
Further regarding claim 43, “consisting essentially of” is interpreted as comprising per MPEP 2111.03(III) since the specification provides no clear indication of the basic and novel characteristics of the claimed invention.
Claim(s) 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnabel et al. ‘012 in view of Schnabel et al. ‘319 as applied to claims 34-40 and 42-43 above, and further in view of Ward, JR. et al. (US 2016/0286816 A1; published 06 October 2016).
Schnabel et al. ‘012 and Schnabel et al. ‘319 do not disclose borate buffering agent as in claim 41.
Ward, JR. et al. discloses herbicides and buffers (title) wherein borate buffers are used therein (paragraph [0077] Table 4).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Schnabel et al. ‘012, Schnabel et al. ‘319, and Ward, JR. et al. by using the borate buffer of Ward, JR. et al. as the buffer in the composition of Schnabel et al. ‘012 in view of Schnabel et al. ‘319 as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because Schnabel et al. ‘012 suggests including buffer and Ward, JR. et al. discloses that borate buffer is a known buffer for herbicides and the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination per MPEP 2144.07.
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 34-43 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,022,827.
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘827 claims merely additionally encompass glyphosate.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue 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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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
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