CTNF 18/812,658 CTNF 85016 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claims 16-28 are pending and are currently under consideration. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 16 and 17 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Green et al (US 2017/0253897)(IDS Reference) . Green teaches an herbicidal composition comprising at least 70% L-glufosinate in combination with topramezone (see entire document, for instance, [0005], [0008], and [0101]) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 16-28 (all claims currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable over Green et al (US 2017/0253897) and Sievernich et al (WO 2009/141367)(both IDS References) . 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 pyrazolyl herbicides can be utilized in the composition, and teaches topramezone is a known pyrazolyl 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 topramezone. Green, while teaching the presence of a carrier and topramezone, further does not exemplify a composition comprising all three components. 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 is taught as being topramezone useful for treating corn (see entire document, for instance, Abstract, claim 1, page 5, lines 25-26, page 33, lines 33-34, page 98, lines 19-30, and page 99, lines 32-38). 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.8 (topramezone) of 1:100 to 100:1 (see entire document, for instance, the page 58, No. 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). 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 the L-glufosinate and topramezone of Green in the instantly claimed amounts since Sievernich directly teaches glufosinate and topramezone are useful for herbicidal compositions in amounts that directly overlap the instantly claimed range. 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 and Sievernich for controlling undesirable vegetation in a field with glufosinate resistant crops, such as soybeans, since Green teaches the combination of L-glufosinate and topramezone and Sievernich teaches that compositions comprising said two herbicides are useful for controlling undesirable vegetation for fields with glufosinate resistant crops . Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 16-28 (all claims currently under consideration) are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-19 of U.S. Patent No. 11,666,052 . Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are directed to a herbicidal mixture comprising a) L-glufosinate and its salts as compound I; and b) at least one bleacher herbicide as compound II selected from the group consisting of tolpyralate and topramezone; wherein: L-glufosinate comprises more than 70% by weight of the L-enantiomer; and the herbicidal mixture is free from herbicidal compounds other than L-glufosinate, D-glufosinate, and bleacher herbicides (see claim 1). While the patented claims are more narrow than the instant claims, it is noted that the narrower patented claims read upon the broader instant claims . 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. 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, 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. 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. /TREVOR LOVE/Primary Examiner, Art Unit 1611 Application/Control Number: 18/812,658 Page 2 Art Unit: 1611 Application/Control Number: 18/812,658 Page 3 Art Unit: 1611 Application/Control Number: 18/812,658 Page 4 Art Unit: 1611 Application/Control Number: 18/812,658 Page 5 Art Unit: 1611 Application/Control Number: 18/812,658 Page 6 Art Unit: 1611
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