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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/28/2024 and 08/29/2025 are being considered by the examiner. The submission is in compliance with the provisions of 37 CFR 1.97.
In the IDS filed on 08/28/2024, the foreign patents only have English translations of the abstracts, therefore, only the abstracts are being considered. Further, the non-patent literature document labeled “Office Action issued in TW Application No. 112137663” does not have a copy within the application folder, therefore, the document is not being considered.
Claim Interpretation
In regards to Claims 1 and 3-8 as to the limitation of 'a dosage form’ it is noted that the instant claims are composition claims and future intended use, such as use in a dosage form of the herbicidal composition is not given patentable weight. Thus any composition comprising 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidin-1(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylic acid ethyl ester and glufosinate-P will meet this limitation.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 17 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because instant claim 17’s claim to “A use of the herbicidal composition” claim fails to claim a process, machine, manufacture, or composition of matter thus failing to comply with 35 U.S.C. 101. The MPEP 2173.05(q) states “"Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 "). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: "The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid." In the instant case, claim 17 fails to provide any steps or limitations that purport to claim one of the four categories of patent eligible subject matter. Therefore, claim 17 is rejected under 35 U.S.C. 101 and will not be further examined.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “A herbicidal composition containing 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidin-1(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylic acid ethyl ester and glufosinate-P, wherein preparation raw materials of the herbicidal composition at least comprise the 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidin-1(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylic acid ethyl ester and the glufosinate-P” which is unclear whether the claim is attempting to cover a composition of matter or a method of manufacture. Further, it is unclear if the claim is attempting to be a product by process, it is unclear what the steps are or “raw materials” constitute the process as it simply repeats the same ingredients as presented in the composition, thus further rendering the claims indefinite.
For the purpose of moving prosecution forward, the examiner broadly interprets an herbicidal composition comprising 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidin-1(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylic acid ethyl ester and glufosinate-P to meet the limitations.
Claims 2-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Similarly to above, claims 2-8 recite “the herbicidal composition containing 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidin-1(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylic acid ethyl ester and glufosinate-P” and then recites “the preparation raw materials of the.. comprise:” which is unclear if these components are used to make the herbicidal composition or if they are required within the composition. Further, it is unclear if the claim is attempting to be a product by process, it is unclear what the steps are or “raw materials” as these are not recited in the herbicidal composition as claimed.
For the purpose of moving prosecution forward, the examiner broadly interprets the herbicidal composition comprising 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidin-1(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylic acid ethyl ester and glufosinate-P to meet these limitations.
Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 recites “A use of an herbicidal composition” which is unclear as to whether it is intended as an invention of a composition (i.e. herbicidal composition) or a method (i.e. treating plants). Additionally, if the claim were intended as a method, it would be further unclear as there are no steps to perform for a method within the text of the claims. See MPEP 2173.05(q).
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.
Claim(s) 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Xue et al. (US20210112813A1, published 04/22/2021, hereafter Xue) in view of Nakanishi et al. (US9255115B2, published 02/09/2016, hereafter Nakanishi).
Xue claims an herbicidal composition and use thereof, comprising an active component A and an active component B (claim 1 and title; according to the claim limitations of the instant claims 1-16). Xue claims the component B is selected from a group to include glufosinate-P-ammonium and derivatives thereof (claim 1; according to the claim limitations of the instant claims 1-16). Xue claims the mass ratio of active component A to active component B is 1:1.5-10 (claim 2; according to the claim limitations of the instant claims 9-16). Xue teaches the active component A is 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylic acid ethyl ester ([0004]; according to the claim limitations of the instant claims 1-16). Claim 8 of Xue claims the herbicide is in a dosage form of the herbicide and is emulsifiable concentrates, aqueous emulsions, microemulsions, suspoemulsions, wettable powders, or water dispersible granules (according to the claim limitations of the instant claims 1 and 5-8). Further, Xue claims in addition to the active component A and the active component B, a raw material for preparing the granules further comprises a surfactant, a dispersant, an antagonist, a defoamer, a disintegrant, a binder, and solid carrier (claim 8; according to the claim limitations of the instant claims 2-8). Xue teaches examples comprising: 5% dispersant, 3% sorbitol, 2% wetting agent, 0.15% thickener, 0.2% defoamer (example 7, [0102-0109]; according to the claim limitations of the instant claims 1-8). Xue teaches another example composition with 8-50.1% wetting agent (example 8, [0110-0117]; according to the claim limitations of the instant claim 5). Another example by Xue teaches glufosinate-ammonium (glufosinate-P ammonium) are 40% (example 1, [0090]; according to the claim limitations of the instant claims 3-7). Further, Xue teaches the active component A in concentrations of 2-5% (examples 2-3, [0093-0094]); according to the claim limitations of the instant claims 3-7). Further, Xue claims the raw materials for preparing the microemulsions further comprises a surfactant, a co-surfactant, an organic solvent, and water (claim 8; according to the claim limitations of the instant claims 2-8). Xue provides multiple examples in which water, specifically deionized water was used to complement the composition to 100% (examples 2-3 and 6-7, [0093-0094] and [0096-0097]; according to the claim limitations of the instant claims 3-4). Xue further claims a raw material for preparing the emulsifiable concentrate further comprises an organic solvent, a solvent oil and a emulsifier monomer (claim 8; according to the claim limitations of the instant claims 2-8). Xue teaches an example composition with 20% concentration of an emulsifier (example 2, [0093]; according to the claim limitations of the instant claim 3). Xue teaches an example composition comprising 6% fatty alcohol polyoxyethylene ether (an emulsifier) (example 5, [0098]; according to the claim limitations of the instant claims 4-5). Xue teaches the organic solvent to be preferably cyclohexanone and teaches example compositions comprising 10% cyclohexanone ([0049] and examples 2 and 4, [0093] and [0097]; according to the claim limitations of the instant claims 3-8). Xue claims in addition to the active component A and the active component B, a raw material for preparing the wettable powder further comprises a dispersant, a wetting agent and a filler (claim 8; according to the claim limitations of the instant claims 2 and 6-8). Claim 8 of Xue claims in addition to the active component A and the active component B, a raw material for preparing the aqueous emulsion further comprises a defoamer, water, an antifreeze, an emulsifier and a solvent oil (according to the claim limitations of the instant claims 3-4). Xue teaches the antifreeze preferably is sorbitol and provides an example with sorbitol at a concentration of 3% ([0056-0058] and example 7, [0101-0109]; according to the claim limitations of the instant claims 3-4). Xue provides additional examples comprising filling attapulgite used to complement to 100% (examples 5 and 9, [0098] and [0118-0122]; according to the claim limitations of the instant claims 6-8). Xue provides another example in which the dispersant is at a concentration of 4% and the disintegrant is at a concentration of 3% (example 8, [0110-0117]; according to the claim limitations of the instant claim 8). Lastly, examples 7 of Xue teaches component B, in this case glyphosate isopropylamine (by acid), is in a concentration of 20% ([0102-0109]; according to the claim limitations of the instant claims 3-8).
Although Xue claims glufosinate-P-ammonium and derivatives thereof is doesn’t claim glufosinate-P as in the instant claims.
Nakanishi teaches a method for producing glufosinate P free acid and teaches glufosinate P free acid is useful as an herbicide (title and column 1, lines 10-11). Nakanishi teaches glufosinate P free acid can exist in an anhydrous form or a hydrate form, or in a mixed form, and specifically teaches glufosinate P in a salt form such as ammonium salt (column 3, 30-34).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim an herbicide composition comprising 3-(2-chloro-4-fluoro-5-(3-methyl-2,6-dioxo-4-trifluoromethyl-3,6-dihydropyrimidine-1(2H)-yl)phenyl)-5-methyl-4,5-dihydroisoxazole-5-carboxylic acid ethyl ester and glufosinate-P ammonium as outlined by Xue with the ready for improvement with the known technique of utilizing glufosinate-P free acid instead of the ammonium salt form in an herbicide composition as outlined by Nakanishi. Utilizing the forementioned components to an herbicide composition as claimed by instant claims 1-17 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Conclusion
No claims are allowed.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./ Examiner, Art Unit 1611
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