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 .
Claims 17-32 are pending and are currently under consideration.
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.
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.
Claim(s) 17-32 (all claims currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable over Green et al (US 2017/0253897) (IDS Reference), Sievernich et al (WO 2009/141367)(IDS Reference), and Krieger (2011).
Green teaches a composition comprising L-glufosinate. Green further teaches that L-glufosinate is much more potent that D-glufosinate and is preferable to the racemate (see entire document, for instance, [0003]-[0004]). Green teaches a method of making substantially pure L-glufosinate, and teaches compositions comprising up to 99% L-glufosinate (see entire document, for instance, [0060]). The L-glufosinate is taught as being the L-glufosinate ammonium (see entire document, for instance, [0070] and [0081]). Green further teaches that phenoxyacetic herbicides can be utilized in the composition, and teaches 2,4-D is a known phenoxyacetic herbicide (see entire document, for instance, [0101]). Green further teaches that the composition can comprise aqueous or non-aqueous carriers (see entire document, for instance, [0015]).
Green, while teaching all of the instantly claimed components, does not directly teach the ratio of the L-glufosinate to 2,4-D choline.
Sievernich teaches an herbicidal composition comprising herbicides A, B, and C, wherein herbicide A is taught as being a salt of glufosinate, including ammonium salt, herbicide B is pyroxasulfone, and C.3.4 is taught as being 2,4-D (see entire document, for instance, Abstract, claims 1 and 13, page 5, lines 25-26, and page 32, lines 22-23). Sievernich teaches that the ratio of herbicide A to herbicide B is preferably 100:1 to 1:2 (see entire document, for instance, page 5, lines 35-37). Sievernich teaches a ratio of B (pyroxasulfone) to C.3.4 (2,4-D) of 500:1 to 1:5 (see entire document, for instance, the paragraph bridging pages 33 and 34). Sievernich teaches that the herbicides can be applied simultaneously (see entire document, for instance, page 3, lines 8-10). Sievernich further teaches that the composition is a useful herbicide for crop plants that are resistant to glufosinate (see entire document, for instance, paragraph bridging pages 99 and 100). The composition can be applied pre- or post-emergence (see entire document, for instance, page 108, lines 24-34).
Krieger teaches the use of 2,4-D choline salt is a particularly useful form of 2,4-D herbicide (see entire document, for instance, pages 211-212).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention to utilize L-glufosinate and 2,4-D choline in the instantly claimed amounts since Sievernich directly teaches glufosinate and 2,4-D are useful for herbicidal compositions in amounts that directly overlap the instantly claimed range and Krieger teaches that the choline salt is an herbicidally useful salt of 2,4-D. It is noted that MPEP 2144.05 states: “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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Further, it is noted that MPEP 2144.05 states: "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).”
It further would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention to utilize the herbicidal composition of Green, Sievernichm and Krieger for controlling undesirable vegetation in a field with glufosinate resistant crops, such as cotton, since Green teaches the combination of L-glufosinate and 2,4-D and Sievernich teaches that compositions comprising said two herbicides are useful for controlling undesirable vegetation for fields with glufosinate resistant crops, including cotton (see entire document, for instance, page 98, lines 38-39).
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 14-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,262,716. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims teach controlling undesirable vegetation utilizing L-glufosinate and 2,4-D choline. The patent recites using more than 95% of the L-enantiomer and a ratio of the components that overlaps the instant claims. While the patented claims are directed to treating soybeans, and the instant method claims are directed to cotton, it would have been obvious to one of ordinary skill in the art to utilize an effective herbicidal combination for soybeans on cotton in order to arrive at the same herbicidal benefits as found for soybeans.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611
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