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 instant application is the national stage entry of PCT/US2023/034075 filed 29 September 2023. Acknowledgement is made of the Applicant’s claim of domestic priority to provisional US application 63/412,366 filed 30 September 2022.
Status of the Claims
Claims 1-20 are pending.
Claims 1-20 are rejected.
Claim Objections
Claim 5 is objected to because of the following informalities: Claim 5 is missing the word, “The” at the beginning of the claim. Appropriate correction is required.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Steinbrenner et al. (US 2019/0174750) in view of Walter et al. (WO 2015/127259).
Steinbrenner teaches an aqueous composition comprising microcapsules wherein the core contains a pesticide (abstract). The term, pesticide, is defined as including fungicides, insecticides, herbicides, and growth regulators [0102]. Among the suitable herbicides/pesticides to use in the invention of Steinbrenner are included isoxazolidinones [0102] and clomazone [0119]. The composition may comprise a non-encapsulated herbicide in at least 1% by weight along with an encapsulated herbicide in at least 1% by weight [0143-0144]. The composition can further comprise an auxiliary such as a dispersant [0145]. Regarding the shell of the encapsulation, the microcapsule shell can comprise any known shell material including the preferred species of polyurea [0068]. The composition of Steinbrenner can be formulated in a tank mix in an aqueous liquid and then applied to undesired vegetation to regulate the growth of plants such as grass [0215, 0220]. The compositions of Steinbrenner do not comprise a safener.
Steinbrenner does not teach wherein the herbicide is bixlozone. Steinbrenner does not teach applying the composition to the plants found in instant claims 18-19.
Walter teaches an herbicidal composition comprising 2-(2,4-dichlorophenyl)methyl-4,4-dimethyl-3-isoxazolidinone (2,4-DC), which is the full name for bixlozone, along with a second herbicide (abstract). The second herbicide can be clomazone (pg 3, ¶2). The purpose of the composition is to control the growth of undesirable vegetation which interfere with crop growth (pg 2, ¶2). The undesirable vegetation can include grass weeds, broadleaf weeds, and chickweed (Stellaria media), among other options (pg 17, ¶2). The treatment method permits the composition to be applied pre-emergently or post-emergently (pg 18, ¶4). In one example, 2,4-DC and clomazone are combined together to form an effective formulation against chickweed (pg 60).
It would have been prima facie obvious to prepare the composition of Steinbrenner, wherein the formulation comprises a non-encapsulated herbicide and an encapsulated herbicide, both in 1% and thus a 1:1 ratio, along with a dispersant wherein the formulation does not further comprise a safener. That being said, 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.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Consistent with this reasoning, it would have been obvious to have selected various combinations of herbicides and auxiliaries from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
It would have been obvious to use 2,4-DC (bixlozone) as the first herbicide in an encapsulated form and clomazone as the additional herbicide which can be non-encapsulated, based on the teachings of Walter. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07). The encapsulation can be made by polyurea. While the additional herbicide is taught as being different than the first (2,4-DC) herbicide, it would have been obvious to duplicate parts including duplication of the bixlozone (See MPEP 2144.04(IV)B). The second portion of bixlozone can be non-encapsulated in 1% by weight. Moreover, the purpose of the formulation of Steinbrenner is to provide the active agents to the surface of the undesirable plants. As such, the encapsulated herbicides are understood to release the active agent from the encapsulation, thus resulting in, at some point in time, a 1:1 ratio of encapsulated to non-encapsulated herbicide, thus reading on instant claims 1-10.
The method of preparing the composition of Steinbrenner wherein the first herbicide is encapsulated followed by forming a mixture with additional components would have been obvious based on the prior art, thus reading on instant claims 11-15.
Since Walter teaches using bixlozone and clomazole to treat and control the growth of undesirable plants such as chickweed, it would have been obvious to use the composition of Steinbrenner in a method for controlling the growth of an undesirable plant by applying an herbicidal composition to said plant wherein the plant can be chickweed. The composition can be applied at the pre-emergent or post-emergent stages, thus reading on instant claims 16-20.
Claims 1-20 are accordingly rejected as obvious in view of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
