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 .
Status of Action/Claims
Applicants originally elected ACCase inhibiting herbicides, specifically quizalofop, and isoxadifen as the safener in their response to the restriction/election on 03/02/23 which was made final in the office action mailed 08/03/23. Thus, these are the species being examined currently. Any new claims directed to non-elected species are hereby withdrawn as being directed to a non-elected subject matter at this time. Thus, the claims being examined in this office action are 10-11, 13, 18, 20, 30-31, 34-36, and 49-51.
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 10-11, 13, 18, 20, 30-31, 34-35 and 49-51 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, and 14 of copending Application No. 18012409 (‘409) in view of Hinga et al. (US9370149), Zagar et al. (US20040235665), and Newhouse et al. (EP0375875), and as evidenced by (https://www.ebi.ac.uk/chebi/searchId.do;jsessionid=CD2C32DB3F063F75153CDBF2BF2DBE93?chebiId=CHEBI:132272) these modified rejections are due to applicant’s amendments to claim 10 and new claims and as such the examiner has combined the rejection of claims 11 and 30-31, and 34-35 with the rejection of claims 10, 13, 18, 20 due to these amendments.
‘409 and the instant application claim methods of controlling weeds in/near ACCase tolerant/resistant crops (i.e. having a genetic mutation conferring resistance to ACCase inhibiting herbicides) with combinations of isoxadifen and quizalofop wherein the application rates of the herbicidal combinations applied overlap in scope and wherein the methods comprise applying the same/overlapping effective amounts of the combination to a locus of the undesired vegetation in order to control the undesired vegetation. However, ‘409 claims wherein the ACCase tolerant crop is different from the instantly claimed ACCase tolerant/resistant rice and ‘409 also now teaches wherein the application steps lead to reducing phytotoxic action of the herbicide on their herbicide resistant crop, but does not teach wherein the herbicide resistant crop is a rice crop, or the other properties claimed as claimed in applicant’s amended claim 10, etc.
It would be obvious to apply quizalofop (which is an ACCase herbicide) to ACCase resistant crops to control weeds within those crops because crops which are ACCase resistant are not damaged by quizalofop as is evidenced/taught by Hinga. Hinga teaches that it was known to use quizalofop to control weeds within ACCase tolerant/resistant rice to control weeds (e.g. red rice) and it was known to use quizalofop in combination with isoxadifen to control weeds in transgenically modified crops including rice, etc. as is taught by Zagar as evidenced by CHEBI.
Zagar teaches compositions comprising isoxadifen and quizalofop (See Table 2; Composition No. 1.49 (quizalofop and isoxadifen) with applicant’s A) and Zagar teaches applying these actives in/near fields of transgenically modified crop plants, wherein they specifically disclose that these crops can include rice, (e.g. herbicide resistant crops, to control weeds/unwanted vegetation in/near the desired transgenic crop plants, e.g. rice) (claim 23; claims; [0040]; [0271-0272]; [0066-0067]; [0123-0124]; Table 2; Composition No. 1.49 (quizalofop and isoxadifen) with applicant’s A). Zagar further teaches wherein their combinations are synergistic ([0272]).
Zagar teaches wherein the active herbicidal agents and safeners together are applied at rates of 0.001 to 3 kg/ha, preferably from 0.005 to 2 kg/ha and in particular from 0.01 to 1 kg/ha (10 to 1000 g/ha) of active substance ([0266]) to the transgenic crop/rice and/or the locus of the crop, which read on the claimed rates of application of herbicidal mixture of from 1 g/ha to 600 g/ha and the newly claimed amounts of amended claim 10 and new claims 50-51 (See [0040]; [0263-0264]; [0387]; see examples; [0317]; claims).
Zagar teaches applying from 0.01 to 1 kg/ha active substance which include herbicidal actives A and B and safener C, and specifically teaches combinations which include as B and C, the claimed quizalofop (herbicide B) and isoxadifen (safener C) (See Table 2; Composition No. 1.49 (quizalofop and isoxadifen; claim 23; claims; [0040]; [0271-0272]; [0066-0067];) with applicant’s A). Zagar further teaches wherein the weight ratios of A to B to C (A:B:C) in the ternary composition are from 5:1:1 to 1:25:5, which read on the claimed weight ratios of herbicide to safener of 1:4 to 10:1 as claimed in claim 31 which would mean that the composition would comprise from for example a 5:1:1 weight ratio of 1000 grams of total active agent, which means the composition comprises/applies ~714 g/ha of herbicide A to ~143g/ha of herbicide B/quizalofop to 143 g/ha of isoxadifen which reads on the claimed application rates of claims 10 and 50-51 ([0151]; [0266]) and Zagar further teaches that it is known to optimize the amounts/application rates of the active agents because the application rates depend on the composition of the plant stand, on the development stage of the plants, on the climatic conditions of the location where the composition is used and on the application method ([0266]). Thus, it would be obvious to one of ordinary skill in the art to optimize the amount of quizalofop and isoxadifen to fall within the claimed application rates because it was known in the art to optimize the amounts/application rates of the active agents (herbicides and safeners) because the application rates depend on the composition of the plant stand, on the development stage of the plants, on the climatic conditions of the location where the composition is used and on the application method.
Zagar teaches wherein the combination of herbicides A and B and safener C are applied jointly or separately which reads on the claimed simultaneously or separately and/or sequentially that is instantly claimed ([0263-0264]; [0040]; [0270]; examples; claims). Zagar also teaches wherein the weeds controlled with the combination within/near the transgenic modified crop, e.g. modified rice, are applied to control all weeds/whole vegetation within fields of transgenic crops (See [0269]; [0271-0273]) and total vegetation/whole vegetation obviously include grasses (monocot) or broadleaf (dicot) or sedges because weed are classified as grasses/monocot, broadleaf/dicot, and sedges as evidenced by Weed Mgmt (See first sentence pg. 2) thus by controlling all weeds/all vegetation you are controlling monocots as claimed.
Zagar teaches wherein the herbicide and safener compositions are applied with at least one agriculturally acceptable carrier, specifically liquid or solid carriers, and/or surfactants (see [0039-0040]; claims 1-13, 20, 23; [0271]; [0245-0253]).
Zagar teaches wherein their herbicidal compositions which are useful for controlling weed in genetically engineered crops including rice, which are herbicide resistant/have herbicide resistance, and wherein these compositions further comprise wetting agents, binders, and/or fertilizers (see [0039-0040]; claims 13-20, 23; [0271]; [0248-252]; [0271-0272]; [0066-0067]; [0123-0124]; Table 2; Composition No. 1.49 (quizalofop and isoxadifen) with applicant’s A).
Zagar teaches wherein their herbicidal compositions which are useful for controlling weeds in genetically engineered crops including rice, which are herbicide resistant/have herbicide resistance, and wherein these compositions can be applied to seeds, e.g. as a seed treatment (See claim 14; [0271-0272]; [0066-0067]; [0123-0124]; Table 2; Composition No. 1.49 (quizalofop and isoxadifen) with applicant’s A; claims 1-13, 14, 20, 23).
Newhouse teaches that it was known in the art to use safeners in combination with herbicide resistant crops (which have been/are genetically modified to incorporate herbicide resistance genes into the crop) which are being treated with the herbicides to which they have genetic modifications for resistance, and that the addition of the safeners provide significantly improved/enhanced protection of the crops from herbicide damage/injury caused by the herbicides to which they have rendered tolerant/resistant, and Newhouse teaches wherein the genetically modified crops can be rice (abstract; pg. 2, ln. 1-18; Claims 1-3).
By definition as evidenced by CHEBI a safener is a compound used with herbicides that reduces the effect of the herbicide on crop plants or otherwise improves the selectivity of the herbicide for weed species over the crop plant, and makes no mention of light affecting the function of a safener or that genetically modified plants, e.g. herbicidally resistant plants are affected or not affected by safeners. Thus, one of ordinary skill in the art would have expected the addition of the safener to lead to the claimed reduced phytotoxicity under the claimed light conditions or increasing the resistance of the crop to the herbicide (e.g. reduced phytotoxicity), and/or reducing the phytotoxic action of the herbicide, herbicide effect, etc. on the herbicide resistant rice crop as compared to the same rice crop to which the safener is not applied because this is by definition what a safener does.
Thus, one of ordinary skill in the art would be motivated to use an ACCase herbicide, e.g. quizalofop in combination with a safener, specifically isoxadifen as taught by ‘409 to control other weeds in other ACCase tolerant crops because the crops would be more tolerant of the quizalofop than the weeds and the safener application to the ACCase tolerant crops would help to protect them further from any damage exerted by the application of the quizalofop because safeners are known to enhance crop protection even in genetically modified herbicide resistant crops including rice, and it would be obvious to select isoxadifen as the safener because isoxadifen is a known herbicide safener for use with quizalofop. It would have been obvious to one of ordinary skill in the art to form the claimed method comprising the claimed isoxadifen and quizalofop in the claimed ratios, etc. when looking to ‘409 and the combined references because as discussed above Zagar broadly teaches using the same safener and quizalofop combination with their herbicide A to control weeds, etc. in/near herbicide resistant crops wherein these crops include rice and they teach wherein the herbicides and safeners are used in amounts and ratios which overlap/read on those instantly claimed and as such it would have been obvious to optimize the amounts/ratios of the quizalofop and isoxadifen in ‘409 in order to achieve control of weeds and reduced phytotoxicity etc. of the herbicide as is instantly claimed because these are result effective of the claimed method steps which are taught by Zagar and further because as is evidenced by CHEBI this is by definition what safeners do.
Thus, one of ordinary skill in the art would conclude that the instantly claimed invention is an obvious variant of the composition and methods claimed in copending 18012409 when taken in view of the secondary references discussed above.
This is a provisional nonstatutory double patenting rejection.
Claim 36 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, and 14 of copending Application No. 18012409 (‘409) in view of Hinga et al. (US9370149), Zagar et al. (US20040235665), and Newhouse et al. (EP0375875) as applied to claims 10-11, 13, 18, 20, 30-31, 34-35 and 49-51 above and further in view of Yerkes (CA2879653). This modified/new grounds of rejection is because of applicants amendments and new claims.
As discussed above, ‘409 and the instant application claim methods of controlling weeds in/near ACCase tolerant/resistant crops (i.e. having a genetic mutation conferring resistance to ACCase inhibiting herbicides) with combinations of isoxadifen and quizalofop wherein the application rates of the herbicidal combinations applied overlap in scope and wherein the methods comprise applying effective amounts of the combination to a locus of the undesired vegetation in order to control the undesired vegetation. However, ‘409 claims wherein the ACCase tolerant crop is different from the instantly claimed ACCase tolerant/resistant rice. ‘409 does not teach wherein the applying is done as a tank mix comprising the herbicide and/or safener in the claimed amounts. However, this deficiency in the combined references is addressed by Yerkes and Zagar.
Yerkes teaches that it was known to form tank mixes of herbicides and safeners, e.g. isoxadifen/isoxadifen-ethyl, for application to rice/rice plants (See abstract; pg. 10, ln. 10-pg. 11, ln. 22 (tank mixed); pg. 15, ln. 9-pg. 17, ln. 19 (quizalofop and tank mixed)).
Zagar as discussed above teaches wherein the weight ratios of A to B to C (A:B:C) in the ternary composition are from 5:1:1 to 1:25:5, which read on the claimed weight ratios of herbicide to safener of 1:4 to 10:1 as claimed in claim 31 which would mean that the composition would comprise from for example a 5:1:1 weight ratio of 1000 grams of total active agent, which means the composition comprises/applies ~714 g/ha of herbicide A to ~143g/ha of herbicide B/quizalofop to 143 g/ha of isoxadifen which reads on the claimed application rates ([0151]; [0266]) and Zagar further teaches that it is known to optimize the amounts/application rates of the active agents because the application rates depend on the composition of the plant stand, on the development stage of the plants, on the climatic conditions of the location where the composition is used and on the application method ([0266]). Thus, it would be obvious to one of ordinary skill in the art to optimize the amount of quizalofop and isoxadifen to fall within the claimed application rates because it was known in the art to optimize the amounts/application rates of the active agents (herbicides and safeners) because the application rates depend on the composition of the plant stand, on the development stage of the plants, on the climatic conditions of the location where the composition is used and on the application method, etc. and one of ordinary skill in the art would do this in order to provide the most effective combination for controlling weeds without damaging the crop plants in the area where the herbicides are being applied.
It also would have been obvious to one of ordinary skill in the art to formulate the composition and methods of ‘409 and Zagar for application as a tank mix to form the claimed method because Zagar teaches that their compositions can be applied to rice and/or rice seeds via spraying aqueous solutions and/or suspensions, highly concentrated aqueous, oily, or other dispersions, suspensions, emulsions, etc. via spraying, atomizing, watering, etc. which are all modes that are used to apply tank mixes and because it was known in the art to formulate herbicide and safeners for application to rice as a tank mix as is taught by Yerkes as this is a commonly used mode of mixing/applying herbicides and safeners to rice crops.
Thus, one of ordinary skill in the art would conclude that the instantly claimed invention is an obvious variant of the composition and methods claimed in copending 18012409 when taken in view of the secondary references as discussed above.
This is a provisional nonstatutory double patenting rejection.
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.
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.
Claim(s) 10-11, 13, 18, 20, 30-31, 35, and 49-51 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zagar et al. (US20040235665, from IDS), and further in view of Hinga et al. (US9370149), Newhouse et al. (EP0375875), and as evidenced by Weed Mgmt (https://web.archive.org/web/20100620133808/https://ipm.ifas.ufl.edu/resources/success_stories/t&pguide/pdfs/Chapter6/Weed_Mgmt.pdf).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 10-11, 13, 30, Zagar teaches compositions comprising isoxadifen and quizalofop (See Table 2; Composition No. 1.49 (quizalofop and isoxadifen) with applicant’s A) and Zagar teaches applying these actives in/near fields of transgenically modified crop plants, wherein they specifically disclose that these crops can include rice, (e.g. herbicide resistant crops, to control weeds/unwanted vegetation in/near the desired transgenic crop plants, e.g. rice) (claim 23; claims; [0040]; [0271-0272]; [0066-0067]; [0123-0124]; Table 2; Composition No. 1.49 (quizalofop and isoxadifen) with applicant’s A). Zagar further teaches wherein their combinations are synergistic ([0272]).
Regarding claim 10-11 and 50-51, Zagar teaches wherein the active herbicidal agents and safeners together are applied at rates of 0.001 to 3 kg/ha, preferably from 0.005 to 2 kg/ha and in particular from 0.01 to 1 kg/ha (10 to 1000 g/ha) of active substance ([0266]) to the transgenic crop/rice and/or the locus of the crop, which read on the claimed rates of application of herbicidal mixture of from 1 g/ha to 600 g/ha, and Zagar further teaches wherein the combination is can be applied either pre-emergence or post-emergence (See [0040]; [0263-0264]; [0387]; see examples; [0317]; claims).
Regarding claims 10-11, 31, and 50-51, Zagar teaches applying from 0.01 to 1 kg/ha active substance which include herbicidal actives A and B and safener C, and specifically teaches combinations which include as B and C, the claimed quizalofop (herbicide B) and isoxadifen (safener C) (See Table 2; Composition No. 1.49 (quizalofop and isoxadifen; claim 23; claims; [0040]; [0271-0272]; [0066-0067];) with applicant’s A). Zagar further teaches wherein the weight ratios of A to B to C (A:B:C) in the ternary composition are from 5:1:1 to 1:25:5, which would mean that the composition would comprise from for example a 5:1:1 weight ratio of 1000 grams of total active agent, which means the composition comprises/applies ~714 g/ha of herbicide A to ~143g/ha of herbicide B/quizalofop to 143 g/ha of isoxadifen which reads on the claimed application rates and ratios in amended claim 31 ([0151]; [0266]) and Zagar further teaches that it is known to optimize the amounts/application rates of the active agents because the application rates depend on the composition of the plant stand, on the development stage of the plants, on the climatic conditions of the location where the composition is used and on the application method ([0266]).
Thus, it would be obvious to one of ordinary skill in the art to optimize the amounts/ratios of quizalofop and isoxadifen to fall within the claimed application rates instantly claimed because it was known in the art to optimize the amounts/application rates of the active agents (herbicides and safeners) because the application rates depend on the composition of the plant stand, on the development stage of the plants, on the climatic conditions of the location where the composition is used and on the application method.
Regarding claims 18 and 49, Zagar teaches wherein the combination of herbicides A and B and safener C are applied jointly which reads on the claimed simultaneously that is instantly claimed ([0263-0264]; [0040]; [0270]; examples; claims). Zagar also teaches wherein the weeds controlled with the combination within/near the transgenic modified crop, e.g. modified rice, are applied to control all weeds/whole vegetation within fields of transgenic crops (See [0269]; [0271-0273]) and total vegetation/whole vegetation obviously include grasses (monocot) or broadleaf (dicot) or sedges because weed are classified as grasses/monocot, broadleaf/dicot, and sedges as evidenced by Weed Mgmt (See first sentence pg. 2) thus by controlling all weeds/all vegetation you are controlling monocots as claimed.
Zagar teaches wherein the herbicide and safener compositions are applied with at least one agriculturally acceptable carrier, specifically liquid or solid carriers, and/or surfactants, and wherein these compositions further comprise wetting agents, binders, and/or fertilizers (see [0039-0040]; claims 1-13, 20, 23; [0248-252]; [0245-0253]; [0271-0272]; [0066-0067]; [0123-0124]; Table 2; Composition No. 1.49 (quizalofop and isoxadifen) with applicant’s A).
Zagar teaches wherein their herbicidal compositions which are useful for controlling weed in genetically engineered crops including rice, which are herbicide resistant/have herbicide resistance, and wherein these compositions can be applied to seeds, e.g. as a seed treatment (See claim 14; [0271-0272]; [0066-0067]; [0123-0124]; Table 2; Composition No. 1.49 (quizalofop and isoxadifen) with applicant’s A; claims 1-13, 14, 20, 23).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 10-11, 13, 18, 20, 30-31, 49-51, Zagar does not specifically teach wherein the transgenically modified crop/transgenically modified rice is modified for tolerance/resistance to ACCase inhibitor herbicides or wherein the undesired vegetation is red rice. These deficiencies in Zagar are addressed by Hinga and Newhouse. However, Zagar does not limit the herbicidal tolerance/resistance that is transgenically modified ([0271]) into the crops/rice and it was known to apply quizalofop to in and near rice which has been transgenically modified to be resistant to ACCase herbicides in order to control the hard to control red rice without killing the ACCase resistant rice crop as is taught by Hinga (See abstract; Col. 3, ln. 55-Col. 4, ln. 21; Col. 4, ln. 41-58; Claims; Col. 7, ln. 45-51; Col. 12, ln. 54-67).
Regarding claims 10-11, Zagar does not specifically teach wherein the safener is effective for increasing the resistance of the herbicide resistant rice crop to the ACCase inhibiting herbicide as compared to the same herbicide resistant rice crop to which the safener was not applied. However, this deficiency in Zagar is addressed by Newhouse.
Newhouse teaches that it was known in the art to use safeners in combination with herbicide resistant crops (which have been/are genetically modified to incorporate herbicide resistance genes into the crop) which are being treated with the herbicides to which they have genetic modifications for resistance, and that the addition of the safeners provide significantly improved/enhanced protection of the crops from herbicide damage/injury caused by the herbicides to which they have rendered tolerant/resistant, and Newhouse teaches wherein the genetically modified crops can be rice (abstract; pg. 2, ln. 1-18; Claims 1-3).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to apply the claimed combination of isoxadifen and quizalofop in rice field wherein the rice crop is genetically modified to be resistant to ACCase herbicides/quizalofop in order to control weeds and it would be obvious to apply this with a safener to reduce any effects which would result on the ACCase tolerant rice. One of ordinary skill in the art would want to apply the claimed combination which is taught by Zagar in the claimed method because Zagar teaches that the claimed combinations are synergistic and wherein the combinations can be used to control weeds within genetically modified crops which are modified to be resistant to the claimed herbicides which is also taught by Hinga. Thus, it would be obvious to treat the ACCase herbicide resistant rice with the safener which can be applied singly and then treat the field comprising the ACCase resistant rice with the quizalofop herbicide combination of Zagar in order to control weeds in the field, e.g. red rice, etc. without damaging the desired ACCase herbicide resistant rice crop. One of ordinary skill in the art would want to do this because Zagar teaches that their combinations can be applied pre and post-emergence and separately, etc. to control weeds in genetically modified crops, e.g. rice, and Hinga teaches that it was known to have ACCase herbicide resistant rice and to apply quizalofop to control the weeds within the genetically modified rice, including controlling red rice. Thus, it would be obvious to combine known combinations of known effective herbicides/quizalofop via known methods in order to control weeds within the same genetically modified rice (ACCase herbicide resistant rice) that was already known in the art to be resistant to quizalofop and it would be obvious to add a safener to this combination because the combination of safeners with herbicides in crops which are modified to be resistant/tolerant to the herbicides are known to exhibit reduced herbicidal damage/effects as per Newhouse. Thus, it would be obvious to formulate the claimed combinations as taught by Zagar in ACCase resistant rice as taught by Hinga and expected reduced damage in the crop because safeners used in herbicide resistant crops being treated with the herbicides to which they have the resistance/tolerance are known to have reduced herbicidal damage, effects with the addition of safeners.
Regarding the new claimed effect wherein the safener is effective for reducing herbicide effect, etc. in the herbicide resistant rice crop as compared to the herbicide effect in the same herbicide resistant rice crop to which the safener was not applied or wherein the safener is effective to increase the resistance of a herbicide resistant rice crop as compared to resistant rice not treated with the safener would have been expected because as discussed above that is what safeners by definition do, and further because as discussed above Zagar and the combined references teach wherein the same actives can be/are applied to the same plants, e.g. herbicide resistant rice/ACCase resistant rice, in the same amounts/ratios which are instantly claimed and disclosed, and as such it would have been obvious that the safener is effective for reducing herbicide effect of the herbicide in the herbicide resistant rice crop and/or increasing the resistance of the crop to the herbicide as compared to the effects in the same rice crop to which the safener was not applied as Zagar teaches the same active steps can be performed with the same herbicides and the same safener in the same/overlapping ratios and/or amounts to those instantly claimed/disclosed, and as such these effects would naturally flow from these active steps especially since by definition this what a safener does when applied to crop plants especially since Newhouse teaches that the combination of safeners when applied onto herbicide resistant crops leads to crops which have enhanced tolerance/resistance to the herbicide being applied that the plants are resistant/tolerant to as is discussed above especially since applicants argued/presented unexpected results are not commensurate in scope with applicant’s claims as they are currently written at this time.
It also would have been obvious for one of ordinary skill in the art to optimize the amount of actives, e.g. herbicide and/or safener to read on the newly claimed amounts/ratios in claims 10-11, and 31 because Zagar teaches that it was known to form herbicidal combinations which comprise the claimed isoxadifen, Zagar’s Herbicide A, and the claimed/elected quizalofop which comprise from 0.001 to 98% by weight active ingredients, e.g. (combination of A, B, and C) and Zagar further teaches as discussed above wherein the herbicides and safeners are used in ratios of A:B:C of 5:1:1 to 1:25:5, which read on the claimed weight ratios of herbicide to safener of 1:4 to 10:1 which means that compositions comprising 40% of active agents would comprise ~1.29% by weight of Zagar’s A, 32.26% of quizalofop, and 6.45% isoxadifen (1:25:5) ratio which is a 5:1 to ratio of quizalofop to isoxadifen which clearly reads on the claimed amounts. Further it was known to be obvious to optimize the amounts of herbicide and safeners used in a composition to control weeds in order to provide the most effective combination for controlling weeds without damaging the crop plants in the area where the herbicides are being applied.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zagar et al. (US20040235665, from IDS), and further in view of Hinga et al. (US9370149), Newhouse et al. (EP0375875), and as evidenced by Weed Mgmt (https://web.archive.org/web/20100620133808/https://ipm.ifas.ufl.edu/resources/success_stories/t&pguide/pdfs/Chapter6/Weed_Mgmt.pdf) as applied to claims 10-11, 13, 18, 20, 30-31, 35, and 49-51 above and as further evidenced by CHEBI (https://www.ebi.ac.uk/chebi/searchId.do;jsessionid=CD2C32DB3F063F75153CDBF2BF2DBE93?chebiId=CHEBI:132272).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the method of claims 10-11, 13, 18, 20, 30-31, 35, 49-51 as discussed above and incorporated herein.
The examiner notes that with respect to claim 34, the combined references together teach wherein the same actives can be/are applied to the same plants, e.g. herbicide resistant rice/ACCase resistant rice, in the same/overlapping amounts/ratios which are instantly claimed and disclosed as discussed above and incorporated herein, and as such it would have been obvious that the safener is effective for increasing the resistance of the herbicide resistant rice crop to the claimed herbicide(s) in the herbicidal mixture as compared to the resistance of the same crop to which the safener was not applied, and was also effective for reducing the phytotoxic action of the herbicide on the herbicide resistant rice crop compared to the same rice crop to which the safener was not applied, and was also effective for reducing herbicide effect of the herbicide in the herbicide resistant rice crop as compared to the resistance of the same rice crop to which the safener was not applied as Zagar teaches the same active steps can be performed with the same herbicides and the same safener in the same/overlapping ratios and/or amounts to those instantly claimed/disclosed, and as such these effects would naturally flow from these active steps as have been previously discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not specifically teach wherein the safener is effective in reducing phytotoxic action of the herbicide on herbicide resistant rice grown under low light intensity conditions or high light intensity conditions or the specifically claimed effects of the safener that which would flow naturally as discussed above.
As evidenced by CHEBI the definition of a safener is a compound used with herbicides that reduces the effect of the herbicide on crop plants or otherwise improves the selectivity of the herbicide for weed species over the crop plant, and makes no mention of light affecting the function of a safener. Thus, one of ordinary skill in the art would obviously expect known safeners as taught by Zagar, e.g. isoxadifen, to reduce the phytotoxicity/phytotoxic action and/or herbicide effect of an applied herbicide to herbicide resistant rice crops grown under all light conditions, including low light, high light, and/or other growing conditions as this is by definition what a safener does, and one would also obviously expect the safener to increase the resistance of the herbicide resistant crop to the herbicide as compared to resistant crops not treated with a safener because as evidenced above this is by definition what safeners do.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
The claimed effect of having the safener reduce the phytotoxicity/phytotoxic effects, herbicide damage/effects of the applied herbicide/quizalofop in herbicide resistant rice/ACCase resistant rice grown under low light intensity or high light intensity would have been expected because that is by definition what a safener does, and the definition of a safener does not make any disclosure that the light conditions affect the function of the safener. Thus, the claimed effects would have been expected by one of ordinary skill in the art based on the combined teachings of the prior art as discussed above and incorporated herein.
The claimed effect wherein the safener is effective for reducing herbicide effect, etc. in the herbicide resistant rice crop as compared to the herbicide effect in the same herbicide resistant rice crop to which the safener was not applied or wherein the safener is effective to increase the resistance of a herbicide resistant rice crop as compared to resistant rice not treated with the safener would have been expected because as discussed above that is what safeners by definition do, and further because as discussed above Zagar and the combined references teach wherein the same actives can be/are applied to the same plants, e.g. herbicide resistant rice/ACCase resistant rice, in the same amounts/ratios which are instantly claimed and disclosed, and as such it would have been obvious that the safener is effective for reducing herbicide effect of the herbicide in the herbicide resistant rice crop and/or increasing the resistance of the crop to the herbicide as compared to the effects in the same rice crop to which the safener was not applied as Zagar teaches the same active steps can be performed with the same herbicides and the same safener in the same/overlapping ratios and/or amounts to those instantly claimed/disclosed, and as such these effects would naturally flow from these active steps especially since by definition this what a safener does when applied to crop plants especially since Newhouse teaches that the combination of safeners when applied onto herbicide resistant crops leads to crops which have enhanced tolerance/resistance to the herbicide being applied that the plants are resistant/tolerant to as is discussed above.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zagar et al. (US20040235665, from IDS), and further in view of Hinga et al. (US9370149), Newhouse et al. (EP0375875), and as evidenced by Weed Mgmt (https://web.archive.org/web/20100620133808/https://ipm.ifas.ufl.edu/resources/success_stories/t&pguide/pdfs/Chapter6/Weed_Mgmt.pdf) as applied to claims 10-11, 13, 18, 20, 30-31, 35, 49-51 above and further in view of Yerkes (CA2879653A1).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the method of claims 10, 13, 18, 20, 30-31, 35, 49-51 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not specifically teach wherein the composition comprising the claimed herbicide and safener as applied in a tank mix, wherein the tank mix comprises from 0.1% to 99% by weight of the herbicide. However, these deficiencies in the combined references are addressed by Yerkes.
Yerkes teaches that it was known to form tank mixes of herbicides and safeners, e.g. isoxadifen/isoxadifen-ethyl, for application to rice/rice plants (See abstract; pg. 10, ln. 10-pg. 11, ln. 22 (tank mixed); pg. 15, ln. 9-pg. 17, ln. 19 (quizalofop and tank mixed)).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art to formulate the composition of Zagar as a tank mix because Zagar teaches that their compositions can be applied to rice and/or rice seeds via spraying aqueous solutions and/or suspensions, highly concentrated aqueous, oily, or other dispersions, suspensions, emulsions, etc. via spraying, atomizing, watering, etc. which are all modes that are used to apply tank mixes and because it was known in the art to formulate herbicide and safeners for application to rice as a tank mix as is taught by Yerkes as this is a commonly used mode of mixing/applying herbicides and safeners to rice crops.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
Applicant’s amendments to the claims and new claims have prompted the revised/new grounds of rejection presented herein. Applicants amendments to the claims have overcome the previous 112(b) rejection.
Firstly, the examiner notes that applicants results as were explained by applicant’s attorney in the interview on 09/10/25, specifically with respect to the elected isoxadifen or cloquintocet/cloquintocet-mexyl in specific amounts in combination with the elected quizalofop or clethodim or cycloxydim at specific amounts appear to maybe be unexpected. However, upon further search and consideration in reviewing the instantly amended claims the examiner notes that she did accidentally forget about the teachings of Newhouse in the interview which were in the previous office action that teach the combination of introduced genetic herbicide resistance to crops with the use of a chemical safener provides significantly enhanced protection in those cases where said genetic resistance or use of a chemical safener alone do not provide sufficient protection of the crops (See entire document, e.g. [0002]). Thus, in light of the fact that applicants claims are not commensurate in scope with their argued unexpected results and applicants have not demonstrated any criticality with their argued unexpected results because applicant’s assert, specifically Dr. Kaya in the previous declarations, that a variety of structurally very different safeners with all known and unknown ACCase herbicides would achieve these argued unexpected results, it appears that the argued unexpected results might actually just be a property of combining genetic modifications of crops with safeners when taken in view of the teachings of Newhouse and Dr. Kaya’s statements which speculate that applicant’s results are widely applicable, which would mean that applicants argued unexpected results do not actually appear to be unexpected in that any ACCase herbicide with any safener would lead to these effects. On the other hand, if applicant’s results are in fact unexpected as asserted, these results are still not commensurate in scope with applicant’s amended claim scope and as such are not patentable at this time specifically because applicant’s claims still encompass any known or unknown ACCase herbicide in the claimed broad amounts with any of the claimed safeners in a broad range of amounts whereas applicant’s results were obtained with specific safeners and specific ACCase herbicides both used in specific amounts which is much narrower than applicants currently amended claim scope.
Thus, contrary to applicants statements the claims are actually not in condition for allowance at this time because the claims are still not commensurate in scope with the unexpected results from the declarations as presented and specification and because Newhouse generally teaches that the combination of introduced genetic herbicide resistance to crops with the use of a chemical safener provides significantly enhanced protection in those cases where said genetic resistance or use of a chemical safener alone do not provide sufficient protection of the crops which in light of applicants amendments does appear to be what applicants are arguing and appears to be what applicants have found with their combinations especially since applicants assert that these effects are widely applicable to all known and unknown ACCase herbicides with any of the listed structurally different safeners claimed whereas as discussed above the argued results were obtained with a much narrower scope of herbicides and safeners in specific amounts.
Thus, based upon further consideration of applicants amended claims in light of applicant’s amendments and their argued unexpected results and the teachings of Newhouse the rejections of record have been modified to address the amended claims but the claims are still obvious over the prior art presented herein for the reasons discussed above especially since the results as presented in the specification and declarations by Dr. Kaya are still not commensurate in scope with the instant claims as they are currently presented.
Applicant’s then argue that independent claim 46 and dependent claims 47-48 are non-obvious. These claims are currently not being examined as they are directed to non-elected species at this time and as such the arguments with respect to the claims are premature since applicant’s elected species is not yet allowable at this time because for instance applicant’s claim 10 is not commensurate in scope with the argued unexpected results for the reasons discussed above.
Applicants then argue against the double patenting rejection that because they have unexpected results with their combination of safeners and ACCase herbicides in ACCase resistant rice, it would not be obvious to use the combinations from 18012409 to develop the claimed method because ‘409 is directed to sorghum instead of the instantly claimed rice.
The examiner respectfully disagrees at this time because applicants argued unexpected results are firstly, not necessarily even unexpected in light of the teachings of Newhouse as discussed above. Additionally, if the results actually are unexpected, these results are still not commensurate in scope with applicants claims at this time for the above disclosed reasons. Thus, because the prior art Zagar teaches that it was known to use combinations comprising their herbicide A, quizalofop, and isoxadifen to control weeds in herbicide resistant crops which include sorghum, rice, corn, soybeans, wheat, etc. ([0269]; claims 1-14, 18-20, 23; [0040]; [0271]; [0067]; [0092]; [0095, quizalofop]; Table 2: 1.49). Thus, Zagar teaches that it was known to treat herbicide resistant sorghum and rice to control weeds with their disclosed combinations and they disclose the claimed quizalofop and isoxadifen with their herbicide A as one of the combinations they envision for this purpose, and the combination of quizalofop and isoxadifen is already taught by ‘409 for being effective in herbicide resistant/tolerant sorghum, and when taken in view of Zagar one of ordinary skill in the art would conclude that combinations of quizalofop and isoxadifen would also be useful in herbicide resistant/tolerant rice based on the teachings of Zagar which teach that combinations comprising these herbicides are useful in herbicide resistant rice and herbicide resistant sorghum.
Applicants argue that Zagar discloses safeners for phenyluracil compounds and that Hinga discloses quizalofop tolerance of a new line of genetically modified rice and that neither of them teach the safening effect of isoxadifen on phytotoxicity caused by quizalofop. The examiner respectfully points out that these are result effective properties of applying the claimed herbicide with the claimed isoxadifen in the claimed ratios to herbicide resistant rice (e.g. rice modified to have resistance to various/specific herbicides) which is broadly taught by Zagar. The examiner also respectfully notes that ‘409 specifically teaches applying the claimed combination of isoxadifen with the claimed herbicides in the claimed ratios to genetically modified sorghum which has herbicidal resistance. The examiner also notes that applicant’s claims in ‘409 and the instant application use comprising language which is open-ended and excludes nothing from the claimed methods including other herbicides, other steps, other crops from being treated, etc. Further, the prior art Zagar teaches that combinations comprising isoxadifen and applicant’s elected herbicide quizalofop are combined with Zagar’s herbicide A and used to control weeds in herbicidally resistant crops, wherein the crops include rice, sorghum, wheat, soybeans, etc. (See [0269]; claims 1-14, 18-20, 23; [0040]; [0271]; [0067]; [0092]; [0095, quizalofop]; Table 2: 1.49) and Zagar teaches wherein the combinations of their herbicide A, quizalofop and isoxadifen are used in weight ratios of A: B (e.g. quizalofop): C (e.g. isoxadifen) of most preferably 5:1:1 to 1:25:5, and they specifically state that in the ternary compositions B (e.g. quizalofop): C (e.g. isoxadifen) is preferably in the range of 50:1 to 1:10 which read on/encompass the claimed weight ratios of herbicide, e.g. quizalofop and isoxadifen safener of 1:4 to 10:1. Thus, contrary to applicant’s assertion it would have been obvious to form the claimed method when looking to the combined prior art because the combined prior art teaches all of the active steps of the instantly claimed method with the same active agents and in the same/overlapping ratios which would obviously lead to the claimed beneficial properties reported/claimed by applicants.
Applicants then argue that it would not have been obvious to replace the sorghum crop with the claimed rice crop because safener activity is determined by selection of the herbicide and the crop and they cite a document from the restriction requirement that is cited by the examiner (Abu-Qare). The examiner respectfully disagrees because the secondary reference Zagar clearly teaches that isoxadifen is suitable for combination with the claimed quizalofop and that these combinations are effective for controlling weeds in crops which have been modified to exhibit herbicidal resistance, including sorghum and rice. Thus, the claimed compositions are taught by the combined prior art to be effective in controlling weeds in a variety of crop species when combined, e.g. quizalofop and isoxadifen and Zagar’s herbicide A are taught to be effective against weeds in rice crops which have herbicidal resistance as well as herbicide resistant sorghum crops, cereal crops, etc. including those which are ACCase resistant, e.g. the claimed ACCase resistant rice ([0269]; claims 1-14, 18-20, 23; [0040]; [0271]; [0067]; [0092]; [0095, quizalofop]; Table 2: 1.49). Thus, contrary to applicants assertion the combined references do render the instantly claimed method obvious for the reasons discussed above and incorporated herein. Especially since applicant’s claims are not commensurate in scope with their argued unexpected results at this time for the above discussed reasons.
Applicant’s arguments with respect to the 103 rejection have been fully considered but are not persuasive and insofar as they pertain to the revised and/or new grounds of rejection are addressed herein because the claims are not commensurate in scope with the argued unexpected results at this time and it is not clear based on the teachings of Newhouse as discussed above that applicants argued unexpected results are actually unexpected at all because Newhouse teaches that the combination of introduced genetic herbicide resistance to crops with the use of a chemical safener provides significantly enhanced protection in those cases where said genetic resistance or use of a chemical safener alone do not provide sufficient protection of the crops. Thus, the argued unexpected results would when taken in view of Newhouse and the rest of the prior art references actually be expected especially since Dr. Kaya asserts that the claimed wide variety of safeners claimed which are structurally distinct from one another would be expected to achieve the argued unexpected results. However, if the results are actually unexpected then not every safener would be expected to work in providing the unexpected results with each and every known and unknown ACCase herbicide in the broadly claimed amounts because unexpected results would not in fact be broadly applicable across many safeners and all known and unknown ACCase herbicides in all of the broadly claimed amounts as this would then be a property of this/these combinations which is/are already taught by the prior art and not actually unexpected as is asserted by applicants.
Applicants argue that their results are unpredictable. The examiner respectfully points out that it has not been made clear that applicants results actually are unpredictable because applicants results are not clearly unexpected as argued by applicants. Specifically, applicants point to table 4 in the specification. The examiner agrees that these results might be unexpected. However, these results are still not commensurate in scope with the instant claims which allow for any and all known and unknown ACCase herbicides and a broad range of structurally different safeners in much broader amounts than those which have been demonstrated to give the argued unexpected results by applicants. Thus, applicants argued unexpected results are still not commensurate in scope with the instant claim scope at this time. Further, as discussed above Newhouse already recognizes that it was known to use safeners in combination with genetically modified crops which have been modified to be resistant/have resistance to the herbicides which are being applied and wherein these safeners offer much improved, specifically strongly enhanced protection to the herbicide resistant crops from the damage/effects of the herbicides on the herbicide resistant crops, including herbicide resistant rice. Thus, it appears that applicants results are actually not really unexpected when taken in view of Newhouse’s teachings.
Conclusion
No claims are allowed at this time.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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, Sue X Liu can be reached at 571-272-5539. 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.
/ERIN E HIRT/Primary Examiner, Art Unit 1616