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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/418,106, filed on 24 June 2021.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over North (US 2009/0233796) in view of de Ruiter et al. (Pestic. Sci., 1993, Vol. 38, 145-154).
Claim 1 is drawn to an herbicidal composition, comprising: ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy-2-pyridyloxyl]acetate (hereinafter “the compound of the present invention”) and 2,4-D-trolamine, wherein the weight ratio of the compound of the present invention to 2,4-D-trolamine is from 1:10 to 1:100.
North teaches synergistic herbicidal compositions (Abstract) comprising the herbicide of Formula II (Par. [0009]), i.e., the compound of the present invention:
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North further teaches compositions of the compound of the present invention and an additional herbicide having a ratio of 1:84 or 1:42 (Pars. [0060] and [0066]) and applying the compound of the present invention in an amount of 1-100 g/ha (Par. [0048]).
North does not teach 2,4-D-trolamine. However, North teaches synergistic herbicidal compositions comprising the compound of the present invention and salts of 2,4-D (Par. [0028]).
de Ruiter et al. teach herbicidal compositions comprising 2,4-D salts including 2,4-D-trolamine (Title, Abstract). de Ruiter et al. further teach application of 2,4-D-trolamine in the amount of 1000 g/ha (Pg. 146 left column last paragraph).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of North to include 2,4-D-trolamine. It would have been obvious to substitute 2,4-D-trolamine in the place of 2,4-D to obtain the predictable result of a synergistic herbicidal composition, with a reasonable expectation of success.
Substitution of 2,4-D-trolamine as taught by de Ruiter et al. in the composition of North would result in a composition having a ratio of the compound of the present invention to 2,4-D-trolamine between 1:100 and 1:10, overlapping with the instantly claimed range.
Based on all of the foregoing, claim 1 is rejected as prima facie obvious.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,701,936 in view of de Ruiter et al.
Claim 1 of Patent No. ‘936 recites a herbicidal composition comprising the compound of the present invention and 2,4-D choline salt, wherein the weight ratio of the compound of the present invention to 2,4-D choline is 1:5 to 1:100. Patent No. ‘936 does not teach 2,4-D-trolamine. However, de Ruiter et al. teach 2,4-D-trolamine as a suitable salt of 2,4-D for herbicidal use (Title, Abstract). Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Patent No. ‘936 by substituting 2,4-D-trolamine in the place of 2,4-D choline. It would have been obvious to substitute one 2,4-D salt suitable for use as an herbicide for another to obtain the predictable result of an herbicidal composition, with a reasonable expectation of success.
As such, claim 1 of Patent No. ‘936 in view of de Ruiter et al. renders instant claim 1 obvious.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,624,346 in view of Sprague (“Herbicide Classification” cited on Applicant’s IDS filed 19 December 2024) and de Ruiter et al.
Claim 1 of Patent No. ‘346 recites a herbicidal composition comprising the compound of the present invention and one or more dicamba salts, wherein the weight ratio of the compound of the present invention to the dicamba salt is 1:5 to 1:100. Patent No. ‘346 does not teach 2,4-D-trolamine. However, Sprague teaches both dicamba and 2,4-D as TIR1 auxin receptors (Group 4) and de Ruiter et al. teach 2,4-D-trolamine as a suitable salt of 2,4-D for herbicidal use (Title, Abstract). Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Patent No. ‘346 by substituting 2,4-D-trolamine in the place of the dicamba salt. It would have been obvious to substitute one TIR1 auxin receptor herbicide for another to obtain the predictable result of an herbicidal composition, with a reasonable expectation of success.
As such, claim 1 of Patent No. ‘346 in view of Sprague and de Ruiter et al. renders instant claim 1 obvious.
Conclusion
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/PAUL HOERNER/Examiner, Art Unit 1611
/CRAIG D RICCI/Primary Examiner, Art Unit 1611
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