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
The present application claims the benefit of Provisional US application 63548950 filed 02/02/2024.
Status of the Application
Receipt is acknowledged of Applicant’s claimed invention, filed 01/31/2025, in the matter of Application N° 19/042,530. Said documents have been entered on the record. The Examiner further acknowledges the following:
Claims 1-15 are pending.
Claims 1-15 are presented for examination and rejected as set forth below.
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.
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.
Claims 1-10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lenz (WO2022229654A1; published 11/03/2022 compared to the priority date of 02/02/2024).
Applicant’s claims are directed to an herbicidal composition comprising: a. at least a triazolone herbicide; b. at least a triazinone herbicide; and c. a crystal growth inhibitor. The examiner further recognizes amicarbazone (instant claim 5) and metribuzin (instant claim 6), as example triazolone and triazinone herbicides respectively, and acrylic copolymer as an example of a crystal growth inhibitor (instant claim 9).
Note that the term of “crystal growth inhibitor” is understood as generally any agent that aids in preventing the precipitation of crystalline particle precipitation, which appears to be an accepted term of the Art via literature search, and demonstrated in the claim set as an acrylic copolymer, for example. Also note, that “triazolone” and “triazolinone” are chemically synonymous terms (and may be freely exchanged in the literature).
Lenz teaches herbicidal compositions with enhanced soil mobility (abstract), whereby the at least one agrochemically suitable component (Lenz – claim 1) provides enhanced soil mobility and stability (pg 4, paragraph 4). Note, Lenz teaches general incorporation of surfactants such as polyalkylene oxide block copolymers (found as one component of instant claim 11).
Regarding claims 1, 3-6, 9-10 and 12-13: Lenz teaches suspension concentrate formulations (reads on claim 13) (Lenz – claim 3) that comprise ipfencarbazone (reads on instant claims 1 and 3) (Lenz – instant claim 1), and at least one additional herbicide, as a combination formulation (Lenz – claims 19 and 21), such as amicarbazone (reads on instant claims 1 and 5) (pg 15, Lenz – claim 21) and/or metribuzin (reads on instant claims 1 and 6) (pg 15, Lenz – claim 21), and at least one agrochemically suitable component (Lenz – claim 1).
Lenz teaches agrochemically suitable component, such as a surfactant, thickener, including acrylic copolymers (reads on instant claims 1, 9, and 12, because acrylic copolymers are defined by Applicant as a “crystal growth inhibitor” in instant claim 9), etc. (pg 5, paragraph 6; pg 7, paragraph 1; pg 13, paragraph 1). Furthermore, Lenz teaches the acrylic copolymer (i.e., as an agrochemically suitable component) (Lenz – claims 1 and 22) is incorporated in the amount of from 0.01 to 30 wt% (reads on instant claim 10) (pg 5, paragraph 3).
Regarding claims 2 and 7-8: Lenz teaches ipfencarbazone (i.e., a triazolinone herbicide active ingredient in the ‘background of invention’) in 10-50 wt%, so that it would be obvious to apply amicarbazone and metribuzin (i.e., other herbicidal active ingredients per “at least one another herbicide” and “mixtures or combinations thereof”) (Lenz – claims 19 and 21) in the same wt% concentrations, and thereby also rendering the 1:1 to 2:1 ratio between amicarbazone and metribuzin as obvious (reads on instant claims 2, and 7-8).
Regarding claim 14: Lenz teaches a method of controlling weeds (reads on undesirable vegetation) (abstract).
In summary, Lenz teaches the elements and desirability for the components for the instant composition, as described above, and thus, its obviousness. It must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Thus, Lenz teaches the combination of art-known elements (i.e., all instant actives agents, excipients, formulations, method of application) according to their disclosed beneficial properties (i.e., control of vegetation/weeds) with the resultant product nothing more than one would expect from their combination (i.e., herbicidal activity with enhanced properties according to the formulation optimization).
Claims 1-10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lenz (WO2022229654A1), and in further view of NAMA (2021), and DeWerff (estimated Jan. 2024, because on the table of pg 80, DeWerff writes Intrava DX (amicarbazone + metribuzin) is “pending approval for use in Wisconsin as of January 2024”, suggesting online publication, prior to the claimed priority date of 02/02/2024).
As discussed above, Lenz teaches most aspects of the instant composition and weeding method as obvious.
NAMA, furthermore, teaches Intrava DX herbicide, which is disclosed by a public-facing “Intrava TM DX Herbicide Go-To-Market-Playbook”, which is a “brochures, catalogs, etc., directed at dealers, distributors or sales reps or others serving agribusiness” that represents a sufficient example of a public disclosure (pg 2).
DeWerff additionally discloses Intrava DX herbicide is a commercial herbicidal product that comprises the specific combination of amicarbazone and metribuzin, that was submitted for EPA registration in April 2023 (pg 11), further narrowing the Prior Art’s teaching of the combination of these two specific active ingredients for herbicidal use.
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the compositions of Lenz to further specify the combination of amicarbazone and metribuzin for herbicidal use, because NAMA and DeWerff teach that specific active ingredient combination is effective in herbicidal use, and at the time of NAMA publication was in the process of marketing Intrava DX for commercial herbicidal use and also filing EPA registration for Intrava DX according to DeWerff, whereby Intrava DX contains the same active ingredient combination that is described by instant claims 1 and 5-6.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lenz (WO2022229654A1), as applied to claims 1-10 and 12-14, and in further view of Stepan (2021), Werle (Cropwatch, 2018), and Fabri (US20210360920A1).
As discussed above, Lenz teaches the instant composition (including suspension concentrate specific formulations) and weeding method as obvious, except for a few minor limitations. Lenz teaches general incorporation of surfactants such as polyalkylene oxide block copolymers (found as one component of instant claim 11). However, Lenz does not teach a graft copolymer (instant claim 11) and additionally, the method to target undesirable vegetation that is resistant/tolerant to atrazine (instant claim 15).
Stepan teaches polymethyl methacrylate-polyethylene glycol graft copolymer, as having a comb polymeric structure, that provides better stabilization (pg 3) for suspension concentration formulations, as related to pesticides such as herbicides (pg 3, whole document), thus demonstrating benefit for suspension concentrations generally.
Werle teaches metribuzin does not have cross resistance to atrazine-resistant weeds (pg 2, ‘results’). Thus, a PHOSITA would understand that metribuzin would provide beneficial herbicidal effect on atrazine-resistant weeds.
Fabri teaches synergistic combinations of herbicides including amicarbazone (Fabri – claim 1(a)) and metribuzin (Fabri – claim 1(b)), in order to better treat herbicide resistant weeds [0003], through a general embodiment of sulfentrazone (reads on instant claim 3) in combination with metribuzin (reads on instant claim 6) [0010, 0019].
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the compositions of Lenz to incorporate the graft copolymer of Stepan, because Lenz generally incorporates surfactants as a typical “agrochemically suitable component” that are claimed to enhance soil mobility and/or formulation stability for herbicidal actives (i.e., including triazolones), whereby the graft copolymer of Stepan not only would be expected serve this function, but is shown to provide enhanced formulation stabilization, especially for suspension concentrations. Similarly, Lenz also teaches dispersants (Lenz – claim 1), stabilizers generally (pg 5) and dispersion stabilizers (pg 9), whereby Stepan specifically names the instant graft copolymer as a dispersant (pg 3).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Lenz to target atrazine resistant/tolerant vegetation/weeds, as taught by Werle and Fabri, because Werle teaches that metribuzin does not have cross resistance to atrazine-resistant weeds (i.e., a PHOSITA would expect that metribuzin would retain significant herbicidal activity against atrazine-resistant weeds), whereby Fabri teaches the specific strategy to combine triazolone and triazinone herbicides to treat herbicide resistant weed species. Finally, Lenz is generally directed to enhancement of activity (abstract) and/or herbicidal activity and/or efficacy (‘background of invention’), and therefore the overall strategy of the instant claims to target herbicide resistant vegetation is 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.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over, and in further view of Lenz (WO2022229654A1), Stepan (2021), Werle (Cropwatch, 2018), and Fabri (US20210360920A1):
claims 1, 6, 9 and 11 of copending Application No. 16/980,578 (reference application)
claims 1-9 of copending Application No. 19/385,281 (reference application)
claims 1-12 of copending Application No. 19/413,097 (reference application)
claims 1-16 of copending Application No. 19/716,418 (reference application)
claims 1-10 of copending Application No. 19/731,850 (reference application)
Although the claims at issue are not identical, they are not patentably distinct from each other because all claim sets teach the combination of herbicidal active ingredients including triazolone and/or triazinone herbicides. The copending applications differ only significantly by not specifying the particular embodiments and/or method limitations of the instant claims.
This is remedied by the combined Prior Art (see 103 rejection above), who teach commonly used ingredient and strategies in herbicidal applications of weeds. One of ordinary skill in the art would have been motivated to modify the teachings of the copending applications because of the advantages provided in the 103 rejection, including enhanced soil mobility, enhanced stability, and targeting of treatment resistant weeds, with the Prior Art references, demonstrating the explicit combination of amicarbazone and metribuzin specifically for herbicidal use.
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJAN PRAGANI whose telephone number is (703)756-5319. The examiner can normally be reached 7a-5p EST (M-Th).
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, Ali Soroush can be reached on 571-272-9925. 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.
/R.P./Examiner, Art Unit 1614 9/17/2026
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
Prosecution Insights