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 .
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group II, claims 12-14 in the reply filed on 01/06/2026 is acknowledged. The traversal is on the ground(s) that the method claims of Group I include all the limitations of the independent product claims of Group II. This is not found persuasive because as the examiner outlines the groups have unique CPC classification which would require different searching along with a unique text search. Applicant has failed to outline how the examiner’s reasoning is invalid or how the groups would instead have the same classification. Further, as the examiner outlined group I, the composition, may be used in a different method of weed-control thus further outlining the search burden.
The requirement is still deemed proper and is therefore made FINAL.
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) 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kong et al. (CN110024796A, published 07/19/2019, Google English translation, hereafter Kong) in view of Witschel et al. (EP2868196A1, published 05/06/2015, hereafter Witschel).
Kong claims an herbicide composition comprising flumioxazin and diclosulam at a mass ratio of 1.5-5:1 (claim 1 and abstract; according to the claim limitations of the instant claims 12-13). Kong claims a wettable powder, a water dispersible granule, and a composition with a floating agent composition comprising 0.2-90 parts of flumioxazin and 0.2-90 parts of diclosulam (claims 3, 5, and 7; according to the claim limitations of the instant claims 12-13). Further, Kong claims an additional wettable powder composition, an additional water dispersible granule composition, and an additional composition with a floating agent comprising 0.5-60 parts flumioxazin and 0.5-60 parts of diclosulam (claims 4, 6, and 8; according to the claim limitations of the instant claims 12-13).
Although Kong claims the addition of flumioxazin, but fails to claim ethyl 2-[2-[[3-chloro-5-fluoro-6-[3-methyl-2,6-dioxo-4- (trifluoromethyl)pyrimidin-1 -yl]- 2-pyridyl]oxy]phenoxy]acetate as in instant claim 12. Further, Kong fails to teach the addition of a third herbicide as in instant claim 14.
Witschel claims a herbicidal composition comprising herbicides of b1) to b15) to include: b1) lipid biosynthesis inhibitor, b2) acetolactate synthase inhibitors, b4) protoporphyrinogen-IX oxidase inhibitors, b5) bleacher herbicides, b6) enolpyruvyl shikimate 3-phosphate synthase inhibitors (EPSP inhibitors), b7) glutamine synthetase, b10) inhibitors of the synthesis of very long chain fatty acids (VLCFA inhibitors), and b13) auxin herbicides (claim 1; according to the claim limitations of the instant claims 12-14). Witschel claims the b1) lipid biosynthesis inhibitor to be clethodim (claim 3; according to the claim limitations of the instant claim 14). Witschel claims the b2) ALS inhibitor to be selected from the group to include diclosulam and imazethapyr (claim 3; according to the claim limitations of the instant claims 12 and 14). Witschel claims the b4) protoporphyrinogen-IX oxidase inhibitor to be selected from the group to include flumioxazin and ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (CAS 353292-31-6; S-3100) (claim 3; according to the claim limitations of the instant claim 12). Witschel claims the b5) bleacher herbicides are selected from a group to include mesotrione, and isoxaflutole (claim 3; according to the claim limitations of the instant claim 14). Witschel claims the b6) EPSP inhibitors to be selected from the group: glyphosate, glyphosate-isopropylammonium and glyphosate-trimesium (sulfosate) (claim 3; according to the claim limitations of the instant claim 14). Witschel claims the b7) glutamine synthase inhibitors to be selected from the group: glufosinate, glufosinate-P, and glufosinate-ammonium (claim 3; according to the claim limitations of the instant claim 14). Witschel claims the b10) VLCFA inhibitor is selected from a group including acetochlor, dimethenamid, and dimethenamid-P (claim 3; according to the claim limitations of the instant claim 14). Lastly, Witschel claims the b13) auxin herbicides is selected from a group to include 2,4-D (claim 3; according to the claim limitations of the instant claim 14).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim the herbicidal composition of Kong with the simple substitution of ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (CAS 353292-31-6; S-3100) for flumioxazin as outlined by Witschel. Simple substitution of one protoporphyrinogen-IX oxidase inhibitor for another is within the purview of the skilled artisan and would yield predictable results. Further, it would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim a herbicidal composition comprising diclosulam and a protoporphyrinogen-IX oxidase inhibitor as outlined by Kong with the ready for improvement with the known technique of adding additional herbicides such as clethodim, imazethapyr, mesotrione, isoxaflutole, glyphosate, glufosinate, acetochlor, dimethenamid, dimethenamid-P, and 2,4-D as outlined by Witschel. Adding the forementioned components to an herbicidal composition as claimed by instant claim 14 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.
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 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 7-8, and 14 of U.S. Patent No. US10375959B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
US10375959B2 claims an herbicidal composition comprising b) a single herbicide B selected from a group to include flumioxazin and c) herbicide C, at least one selected from a group consisting of fomesafen, dimethenamid, acetochlor, pendimethalin, dicamba, imazamox, imazethapyr, atrazine, diclosulam, mesotrione, isoxaflutole, topramezone, clethodim, 2,4-D, and their agriculturally acceptable enantiomers, salts and esters, (claims 1 and 14; according to the claim limitations of the instant claims 12 and 14). Further, claim 1 of US10375959B2 claims the weight ratio of B to A is 35:1 to 1:5; the weight ratio of A to C is 1:75 to 10:1 and the weight ratio of B to the sum of A and C is 30:1 to 1:60 (according to the claim limitations of the instant claims 12-13). Claim 2 of US10375959B2 claims the at least one herbicide C is diclosulam, imazamox or imazethapyr, or their agriculturally acceptable salts or esters (according to the claim limitations of the instant claim 12). Claim 4 of US10375959B2 claims the at least one herbicide C is dicamba or 2,4-D, or their agriculturally acceptable salts or esters (according to the claim limitations of the instant claim 14). Claim 7 of US10375959B2 claims the at least one herbicide C is mesotrione or topramezone or their agriculturally acceptable salts (according to the claim limitations of the instant claim 14).Claim 8 of US10375959B2 claims the at least one herbicide C is dimethenamid or acetochlor or their agriculturally acceptable enantiomers (according to the claim limitations of the instant claim 14).
US10375959B2 claims the addition of flumioxazin, but fails to claim ethyl 2-[2-[[3-chloro-5-fluoro-6-[3-methyl-2,6-dioxo-4- (trifluoromethyl)pyrimidin-1 -yl]- 2-pyridyl]oxy]phenoxy]acetate as in instant claim 12.
As outlined above, Witschel teaches an herbicidal composition and outlines that both flumioxazin and ethyl 2-[2-[[3-chloro-5-fluoro-6-[3-methyl-2,6-dioxo-4- (trifluoromethyl)pyrimidin-1 -yl]- 2-pyridyl]oxy]phenoxy]acetate are both protoporphyrinogen-IX oxidase inhibitors used as herbicides.
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim the herbicidal composition of US10375959B2 with the simple substitution of ethyl [3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (CAS 353292-31-6; S-3100) for flumioxazin as outlined by Witschel. Simple substitution of one protoporphyrinogen-IX oxidase inhibitor for another is within the purview of the skilled artisan and would yield predictable results.
Claims 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 6-8, 10 of copending Application No. 18/992,056 (reference application) in view of Kong et al. (CN110024796A, published 07/19/2019, Google English translation, hereafter Kong), and in view of Witschel et al. (EP2868196A1, published 05/06/2015, hereafter Witschel).. Although the claims at issue are not identical, they are not patentably distinct from each other.
18/992,056 claims an herbicidal combination comprising b4) protoporphyrinogen-IX oxidase inhibitor and b2) acetolactate synthase inhibitor (claim 1; according to the claim limitations of the instant claim 12). 18/992,056 claims b2) the ALS inhibitor is a sulfonanilide such as diclosulam (claim 2; according to the claim limitation of the instant claim 12). 18/992,056 claims the active compound b) comprises at least one compound (II) selected from a group b2) to include diclosulam (claim 4; according to the claim limitations of the instant claim 4). 18/992,056 claims the active compound b) comprises at least one compound (II) selected from the compounds of group b4): saflufenacil, trifludimoxazin, epyrifenacil (also known as ethyl 2-[2-[[3-chloro-5-fluoro-6-[3-methyl-2,6-dioxo-4- (trifluoromethyl)pyrimidin-1 -yl]- 2-pyridyl]oxy]phenoxy]acetate) (claim 6; according to the claim limitations of the instant claims 12 and 14). Claim 1 of 18/992,056 further claims the composition comprising b6) from the group of [[the]] EPSP synthase inhibitors:glyphosate, glyphosate-isopropylammonium, glyposate-potassiuml and glyphosate-trimesium (sulfosate);b7) from the group of [[the]] glutamine synthase inhibitors:bilanaphos (bialaphos), bilanaphos-sodium, glufosinate, glufosinate-P, glufosinate-ammonium, and glufosinate-P-ammonium (according to the claim limitations of the instant claim 14). Claim 8 of 18/992,056 claims the active compound b) comprises at least one compound (II) selected from the compounds of group b6) and b7): glyphosate, glyphosate-isopropylammonium, glyposate-potassium and glyphosate-trimesium (sulfosate)glufosinate, glufosinate-P, glufosinate-ammoniuml and glufosinate-P-ammonium (according to the claim limitations of the instant claim 14). Further claim 1 of 18/992,056 claims the compisiton comprises b13) which is selected from the group of auxinic herbicides: 2,4-D and its salts and esters (according to the claim limitations of the instant claim 14). Claim 10 of 18/992,056 claims active compound b) comprises at least one compound (II) selected from the compounds of group b10):acetochlor, butachlor, dimethenamid-P, metazachlor, metolachlor, metolachlor-S, pretilachlor, and flufenacet pyroxasulfone (according to the claim limitations of instant claim 14). Claim 2 of 18/992,056 further claims the b2) ALS inhibitor is a imidazolinone, specifically imazethapyr (according to the claim limitations of the instant claim 14). Claim 1 of 18/992,056 further claims the composition comprises b5) bleacher herbicides and claim 7 of 18/992,056 claims the active compound b) comprises at least one compound (II) selected from the compounds of group b5): diflufenican, picolinafen, clomazone, isoxaflutole, mesotrione, topramezone, aclonifen, andbixlozone (according to the claim limitations of the instant claim 14). Lastly, claim 1 of 18/992,056 further claims the composition comprises the active ingredient b1) lipid biosynthesis inhibitor and claim 2 of 18/992,056 further claims the b1) lipid biosynthesis inhibitor is clethodim (according to the claim limitations of the instant claim 14).
18/992,056 claims an herbicide composition comprising diclosulam and epyrifenacil, but fails to teach the concentration ratios of the instant claims 12-13.
As outlined above, Witschel teaches an herbicidal composition and outlines that both flumioxazin and ethyl 2-[2-[[3-chloro-5-fluoro-6-[3-methyl-2,6-dioxo-4- (trifluoromethyl)pyrimidin-1 -yl]- 2-pyridyl]oxy]phenoxy]acetate (epyrifenacil) are both protoporphyrinogen-IX oxidase inhibitors used as herbicides.
Further, as outlined above, Kong teaches an herbicidal composition comprising diclosulam and flumioxazin, a protoporphyrinogen-IX oxidase inhibitor (as outlined by Witchel) at a mass ratio of 1.5-5:1.
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim an herbicidal composition comprising diclosulam and epyrifenacil as outlined by 18/992,056 with the ready for improvement with the known technique of adjusting the concentrations of the diclosulam and the protoporphyrinogen (epyrifenacil) to a ratio of 1.5-5:1 to each other as outlined by Kong and Witschel. Adjusting the forementioned components of a herbicidal composition as claimed by instant claims 12-13 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. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims allowed.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./Examiner, Art Unit 1611