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
This action replaces the final office action mailed 03/12/26 and resets the period for reply and is made after discussion with the examiner’s supervisor, because the previous action contains some typos and an incomplete statement which were from a previously saved draft of the action as the finalized office action did not save properly prior to posting and the examiner did not catch this issue until after the previous action was posted for counting.
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.
Claim(s) 2, 9-10, 15, 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jennings (US20140200143) and Sebastian et al. (US20180289008).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 2, 9-10, Jennings teaches a method treating degraded rangeland to reduce the number of annual plants on the rangeland while increasing the number of perennial plants on the range land, including selective control of the invasive plant species, e.g. cheatgrass/Bromus tectorum, existing in a perennial grass plant community while preserving the perennial plant community species, e.g. bluebunch wheatgrass/Pseudoroegneria spicata, wherein they apply the claimed (i) a phytotoxic micronutrient applied in amounts/concentrations of about 0.5 to about 20 pounds/acre of at least one water soluble micronutrient, specifically boron, which they exemplify/teach applying in amounts of from about 2.4 to 14 pounds per acre which reads on the claimed rate of about 10 pounds to about 100 pounds of elemental boron per acre (See claims 2-19, 21-23; [0018-0019]; [0077]; [0081-0082]; [0125, 0.35-14 pounds of plant available boron per acre]). (See Example 6 [0112]; example 9 [0119]; example 15 [0132]).
Regarding amended claims 2 and 15, Jennings teaches wherein their compositions can contain adjuvants, specifically surfactants and/or wetting agents ([0061]; [0063]).
Regarding claims 22-24, Jennings teaches wherein their compositions of the phytotoxic micronutrients are in a dry granular formulation or can be in a liquid formulation ([0053, whether applied as dry formula or liquid is irrelevant]; [0120-0122 dry granular or liquid formulation]; [0123, dry granular or liquid]; [0082, dry or liquid]; [0077-0078]; [0060]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 2, 9-10, 15, 22-24, Jennings does not teach wherein the method also applies applicant’s claimed (ii) a synthetic herbicide, indaziflam, in the claimed rates. However, this deficiency in Jennings is addressed by Sebastian.
Sebastian teaches that indaziflam is known in the art to be a selective herbicide useful for controlling annual grasses and both monocot and dicot weeds in populations of perennial grasses, e.g. rangelands for several seasons after treatment and indaziflam is known to not injure to desired perennial grasses, forbs, and shrubs ([0101-0105]; [0126]; [0066]). Sebastian further teaches wherein the cellulose biosynthesis inhibitor, which is/can be indaziflam, is applied at rates of 1 to 1000 g AI/ha (~28.35 g = 1 ounce) which equals 0.035 ounces AI/ha to 35.27 ounces AI/ha which reads on/overlaps the claimed range of 3 ounces to 7 ounces/acre (1 hectare =2.47 acres) which means 7.41 ounces to 17 ounces per hectare (See claims; [0015-0016]; [0019]; [0011-0016]; [0025-0026]; [0039]; [0125-0126]; [0099]; [0065-0066]). Sebastian also teaches wherein the indaziflam can be formulated as a solid or liquid, etc. and as such it can be formulated in the forms instantly claimed ([0055-0056]).
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 combine the claimed amounts of indaziflam (elected herbicide species) with the claimed amounts of elemental boron and an adjuvant in order to develop the instantly claimed method to selectively control/negatively impact the growth of at least one invasive plant(s) (including the selective control of the invasive plant species existing in a perennial grass plant community) because each of the claimed active agents was already known in the art to be useful for this purpose in the claimed amounts/amounts which overlap those instantly claimed as is taught by Jennings and indaziflam (Sebastian) above and it is known in the art to combine two active agents/compositions for the same use, specifically as selective herbicides for controlling invasive plant species in perennial plant grass communities in order to form a method which is also to be used to control invasive plant species in perennial plant grass communities, because the courts have previously determined, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It also would be obvious to formulate the composition components as solids and/or liquids as claimed because it was known to formulate the claimed active agents as solids or liquids and Jennings teaches wherein what form the compositions take when applied, e.g. solid or liquid are not critical.
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 33 and 103 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jennings (US20140200143) and Sebastian et al. (US201802890), as applied to claims 2, 9-10, 15, and 22-24 above and further in view of WO2016180755 (‘755).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the method of claims 2, 9-10, 15, 22-24 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 simultaneous or sequential application of the micronutrients and synthetic herbicides. However, this deficiency in the combined references is addressed by ‘755.
‘755 teaches that it is known to combine herbicides into combinations for use together and that it is known to apply the herbicides which are in the composition together with one another simultaneously as in the form of a tank-mix, or they can be applied sequentially, one after the other (See pg. 8, ln. 27-pg. 9, ln. 6) and thus ‘755 teaches that both modes of application as are instantly claimed were known in the art for applying herbicidal combinations.
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 phytotoxic micronutrient (i) and the synthetic herbicide (ii) in applicant’s claimed method either simultaneously or sequentially as is instantly claimed and it would be obvious to apply the boron or Jennings either simultaneously or sequentially with the Indaziflam as is instantly claimed because ‘755 teaches that it was known in the art that herbicidal combinations being used to control weeds can be applied simultaneously or sequentially as both modes of application were known in the art to be useful for applying herbicidal combinations to areas in which they are being used to control weeds.
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 2, 9-10, 15, 22-24, 33, and 103 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US10681913 (‘913) in view of Jennings (US2014020014) and Sebastian et al. (US20180289008).
‘913 claims methods of selectively controlling the growth of at least one invasive plant species existing in a perennial grass community/negatively impacting the growth of at least one invasive plant species in a perennial grass community, i.e. rangeland, while preserving the growth and vigor of the perennial plant grass community, comprising: applying a liquid formulation containing boron to an area of the perennial grass community to achieve a soluble boron concentration in the soil of the perennial grass community from about 0.5 milligrams per liter to about 50 milligrams per liter, and wherein said boron application is phytotoxic to the at least one invasive plant species while increasing the growth and vigor of the perennial grass, wherein said at least one invasive plant species is selected from the group consisting of cheatgrass, dandelion, and spotted knapweed which are the same weeds which are instantly controlled by application of the same phytotoxic micronutrients, e.g. boron, that are instantly claimed. ‘913 also does not claim wherein the perennial plant grass community are necessarily the same grasses instantly claimed, or wherein the method further uses the claimed synthetic herbicides in the claimed amounts/concentrations or wherein the phytotoxic micronutrient and the synthetic herbicide are applied sequentially or simultaneously, or wherein their formulation can be formulated as s dry granular composition for application or wherein the composition/method further comprises and adjuvant, e.g. surfactant. However, these deficiencies in ‘913 are addressed by Jennings and Sebastian.
Jennings teaches a method for negatively impacting the growth of at least one invasive plant species, including selective control of the invasive plant species, e.g. cheatgrass, dandelion, spotted knapweed, existing in a perennial grass plant community while preserving the perennial plant community species, e.g. bluebunch wheatgrass, Kentucky bluegrass, wherein they apply the claimed (i) phytotoxic micronutrient in amounts/concentrations of about 0.5 to about 20 pounds/acre of at least one water soluble micronutrient, specifically boron, which they exemplify/teach applying in amounts of from about 2.4 to 14 pounds per acre which reads on the claimed rate of about 10 pounds to about 150 pounds of elemental boron per acre (See claims 2-19, 21-23; [0018-0019]; [0077]; [0081-0082]; [0125, 0.35-14 pounds of plant available boron per acre]).
Regarding claim 8, Jennings teaches wherein the boron in the phytotoxic micronutrient is phytotoxic to the at least one invasive plant species while maintaining or increasing the growth and vigor of the perennial grass (See Example 6 [0112]; example 9 [0119]; example 15 [0132]).
Regarding claims 2 and 15, Jennings teaches wherein their compositions can further comprise adjuvants, specifically surfactants and/or wetting agents ([0061]; [0063]).
Regarding claims 22-24, Jennings teaches wherein their compositions which apply the claimed phytotoxic micronutrients, boron, are in a dry granular formulation or can be in a liquid formulation as whether the compositions are applied as a liquid or dry powder formulation is irrelevant ([0053, whether applied as dry formula or liquid is irrelevant]; [0120-0122 dry granular or liquid formulation]; [0123, dry granular or liquid]; [0082, dry or liquid]; [0077-0078]; [0060]).
Sebastian teaches that indaziflam is known in the art to be a selective herbicide useful for controlling annual grasses and both monocot and dicot weeds in populations of perennial grasses, e.g. rangelands for several seasons after treatment and indaziflam is known to not injure to desired perennial grasses, forbs, and shrubs ([0101-0105]; [0126]; [0066]). Sebastian further teaches wherein the cellulose biosynthesis inhibitor, which is/can be indaziflam, is applied at rates of 1 to 1000 g AI/ha (~28.35 g = 1 ounce) which equals 0.035 ounces AI/ha to 35.27 ounces AI/ha which reads on/overlaps the claimed range of 3 ounces to 7 ounces/acre (1 hectare =2.47 acres) which means 7.41 ounces to 17 ounces per hectare (See claims; [0015-0016]; [0019]; [0011-0016]; [0025-0026]; [0039]; [0125-0126]; [0099]; [0065-0066]).
It would have been obvious to one of ordinary skill in the art to use the claimed amounts of boron as taught by Jennings in the composition of ‘913 and it would be obvious to combine indaziflam into this composition for use in the claimed method as taught by ‘913 and Jennings and Sebastian in order to develop the claimed method of negatively impacting the growth of at least one invasive plant species, including the selective control of the claimed invasive plant species, existing in the claimed perennial grass plant community while maintaining/preserving the perennial plant grass community species consisting of applying indaziflam and boron in the claimed amounts with and adjuvant because the active agents are known in the art to be used to control invasive plant species in perennial grass plant communities in amounts which read on those instantly claimed. It also would be obvious that the formulation of ‘913 could also be formulated as a dry granular formulation for treating soil because Jennings teaches whether the formulations are liquid or dry granular formulations is irrelevant for treating the perennial plant grass community for selectively controlling weeds in these perennial grass plant communities. Thus, it would be obvious to combine known effective agents for controlling/negatively impacting the growth of invasive plant species in perennial grass plant communities in amounts which are already known in the art to be effective for this purpose in order to form a composition for use in the same method of negatively impacting the growth of at least one invasive plant species, including the selective control of the invasive plant species, existing in a perennial grass plant community while maintaining/preserving the perennial plant grass community species because this is already what each agent does when applied alone and it is known to combine effective agents which are useful for the same purpose into a composition for use in the same method/purpose.
The examiner notes that none of US10681913 (‘913) in view of Jennings (US2014020014) and Sebastian et al. (US20180289008) teach applying the phytotoxic micronutrient and the synthetic herbicide sequentially or simultaneously. However, this deficiency in the combined references is addressed by WO2016180755 (‘755).
‘755 teaches that it is known to combine herbicides into combinations for use together and that it is known to apply the herbicides which are in the composition together with one another simultaneously as in the form of a tank-mix, or they can be applied sequentially, one after the other (See pg. 8, ln. 27-pg. 9, ln. 6) and thus ‘755 teaches that both modes of application as are instantly claimed were known in the art for applying herbicidal combinations.
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have applied the phytotoxic micronutrient and the synthetic herbicide as taught by the combined references above sequentially or simultaneously because it was already known to apply herbicidal combinations by these modes of application and as such it would be obvious to find the most effective and/or useful modes of application for a given herbicidal combination and use these modes to apply the herbicide and as the claimed modes were well known in the art it would be obvious to apply the claimed herbicidal combinations as simultaneously or sequentially as is instantly claimed because these are common ways of applying multiple herbicides.
Thus, one of ordinary skill in the art would conclude that the claimed method is obvious when taken in view of US10681913 (‘913) in view of Jennings (US2014020014) and Sebastian et al. (US20180289008), and WO2016180755 (‘755).
Claims 2, 9-10, 15, 22-24, 33, and 103 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. US11357232 (‘232) in view of Jennings (US2014020014), Sebastian et al. (US20180289008), and WO2016180755 (‘755).
‘232 claims/teaches methods for improving soil health in soil of an area of an existing perennial grass community comprising applying a composition comprising boron (phytotoxic micronutrient) to the soil to achieve a soluble boron concentration in the soil of from about 0.5 mg/L to about 50 mg/liter and wherein the resulting soluble boron concentration improves the soil health such that it promotes growth and/or vigor of desirable perennial plant species in the treated area when compared to an untreated area, and wherein non-desirable/invasive plant species selected from cheatgrass, dandelion, and spotted knapweed (which are the same invasive species instantly claimed) are controlled in the treated area, e.g. their growth is negatively impacted (as is instantly claimed) while preserving the perennial plant community species, e.g. bluebunch wheatgrass, Kentucky bluegrass (which are the same/read on the claimed perennial plant species/perennial grass plant species). ‘232 teaches wherein the boron is applied to the soil as a dry product with a spreader (which reads on the claimed dry granular product because spreaders apply dry granular products) or as a liquid product with a sprayer. ‘232 does not teach wherein their method further consists of applying the claimed synthetic herbicides, e.g. indaziflam, or applying the herbicides in the claimed amounts/concentrations, or wherein the phytotoxic micronutrient and the synthetic herbicide are applied sequentially or simultaneously.
However, these deficiencies in ‘232 are addressed by Jennings and Sebastian.
Jennings teaches a method for negatively impacting the growth of at least one invasive plant species, including selective control of the invasive plant species, e.g. cheatgrass, dandelion, spotted knapweed, existing in a perennial grass plant community while preserving the perennial plant community species, e.g. bluebunch wheatgrass, Kentucky bluegrass, wherein Jennings is applying the claimed (i) a phytotoxic micronutrient applied in amounts/concentrations of about 0.5 to about 20 pounds/acre of at least one water soluble micronutrient, specifically boron, which they exemplify/teach applying in amounts of from about 2.4 to 14 pounds per acre which reads on the claimed rate of about 10 pounds to about 150 pounds of elemental boron per acre (See claims 2-19, 21-23; [0018-0019]; [0077]; [0081-0082]; [0125, 0.35-14 pounds of plant available boron per acre]).
Regarding claim 8, Jennings teaches wherein the boron in the phytotoxic micronutrient is phytotoxic to the at least one invasive plant species while maintaining or increasing the growth and vigor of the perennial grass (See Example 6 [0112]; example 9 [0119]; example 15 [0132]).
Regarding claims 2 and 15, Jennings teaches wherein their compositions can further comprise adjuvants, specifically surfactants and/or wetting agents ([0061]; [0063]).
Regarding claims 22-24, Jennings teaches wherein their compositions contain the claimed phytotoxic micronutrients, boron, in a dry granular formulation or can be in a liquid formulation as whether the compositions are applied as a liquid or dry powder formulation is irrelevant ([0053, whether applied as dry formula or liquid is irrelevant]; [0120-0122 dry granular or liquid formulation]; [0123, dry granular or liquid]; [0082, dry or liquid]; [0077-0078]; [0060]).
Sebastian teaches that indaziflam is known in the art to be a selective herbicide useful for controlling annual grasses and both monocot and dicot weeds in populations of perennial grasses, e.g. rangelands for several seasons after treatment and indaziflam is known to not injure to desired perennial grasses, forbs, and shrubs ([0101-0105]; [0126]; [0066]). Sebastian further teaches wherein the cellulose biosynthesis inhibitor, which is/can be indaziflam, is applied at rates of 1 to 1000 g AI/ha (~28.35 g = 1 ounce) which equals 0.035 ounces AI/ha to 35.27 ounces AI/ha which reads on/overlaps the claimed range of 3 ounces to 7 ounces/acre (1 hectare =2.47 acres) which means 7.41 ounces to 17 ounces per hectare (See claims; [0015-0016]; [0019]; [0011-0016]; [0025-0026]; [0039]; [0125-0126]; [0099]; [0065-0066]).
It would have been obvious to one of ordinary skill in the art to use the claimed amounts of boron as taught by Jennings in the composition of and it would be obvious to combine indaziflam into this composition for use in the claimed method as taught by ‘913 (this is a clear typo here because this entire double patenting rejection is over ‘232) and Jennings and Sebastian in order to develop the claimed method of negatively impacting the growth of at least one invasive plant species, including the selective control of the claimed invasive plant species, existing in the claimed perennial grass plant community while maintaining/preserving the perennial plant grass community species consisting of applying indaziflam and boron in the claimed amounts with and adjuvant because the active agents are known in the art to be used to control of invasive plant species in perennial grass plant communities in amounts which read on those instantly claimed. It also would be obvious that the formulation of ‘913 (this is a clear typo here because this entire double patenting rejection is over ‘232 in view of the secondary references) could also be formulated as a dry granular formulation for treating soil because Jennings teaches whether the formulations are liquid or dry granular formulations is irrelevant for treating the perennial plant grass community for selectively controlling weeds in these perennial grass plant communities. Thus, it would be obvious to combine known effective agents for controlling/negatively impacting the growth of invasive plant species in perennial grass plant communities in amounts which are already known in the art to be effective for this purpose in order to form a composition for use in the same method of negatively impacting the growth of at least one invasive plant species, including the selective control of the invasive plant species, existing in a perennial grass plant community while maintaining/preserving the perennial plant grass community species because this is already what each agent does when applied alone and it is known to combine effective agents which are useful for the same purpose into a composition for use in the same method/purpose.
The examiner notes that none of US10681913 (‘913) (typo should read US11357232 (‘232)) in view of Jennings (US2014020014) and Sebastian et al. (US20180289008) teach applying the phytotoxic micronutrient and the synthetic herbicide sequentially or simultaneously. However, this deficiency in the combined references is addressed by WO2016180755 (‘755).
‘755 teaches that it is known to combine herbicides into combinations for use together and that it is known to apply the herbicides which are in the composition together with one another simultaneously as in the form of a tank-mix, or they can be applied sequentially, one after the other (See pg. 8, ln. 27-pg. 9, ln. 6) and thus ‘755 teaches that both modes of application as are instantly claimed were known in the art for applying herbicidal combinations.
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have applied the phytotoxic micronutrient and the synthetic herbicide as taught by the combined references above sequentially or simultaneously because it was already known to apply herbicidal combinations by these modes of application and as such it would be obvious to find the most effective and/or useful modes of application for a given herbicidal combination and use these modes to apply the herbicide and as the claimed modes were well known in the art it would be obvious to apply the claimed herbicidal combinations as simultaneously or sequentially as is instantly claimed because these are common ways of applying multiple herbicides.
Thus, one of ordinary skill in the art would conclude that the claimed method is obvious when taken in view of US11357232 (‘232) in view of Jennings (US2014020014) Sebastian et al. (US20180289008), and WO2016180755 (‘755).
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the double patenting rejections over ‘357 and ‘399 which are hereby withdrawn. Applicant’s amendments to the claims to completely alter the claim scope by using “consisting of” have prompted the new grounds of rejection presented herein.
Applicants first summarize the rejection of record and then state that they disagree. They cite various case law which relates to obviousness, and then they point to ways that applicants can rebut a presumption of obviousness citing 2 ways previously disclosed by the court which are detailed in the response on pg. 8. They then summarize what applicant’s claims are directed to and then generally summarize the teachings of the prior art again. They then argue that while Jennings teaches application of boron to rangeland/perennial grass community to selectively control invasive plants and/or weeds in the existing perennial grass community, and that Sebastian teaches using indaziflam to selectively control for instance invasive winter annual grasses and weeds in rangelands, they argue that Sebastian teaches using indaziflam for efficaciously irradicating invasive weeds compared to other herbicides where wildfire control is needed in habitats overrun with invasive species.
They argue that while Sebastian identifies that it may be used on desirable perennial plants that there is no reason for one of ordinary skill in the art would be motivated to combine a reference directed to treating invasive species in perennial grass communities with a reference directed to eradicating invasive species in areas where perennial plants have been dominated by the invasive species (to the point of requiring re-emergence). That there is nothing in Sebastian that would suggest that the combination of Sebastian with Jennings would lead to a decrease in invasive species while increasing the population of perennial grass species. Again the examiner respectfully disagrees and argues that this is result effective of the only active steps of the claimed method, specifically applying to the degraded rangeland (i.e. perennial grass community) a combination of boron, indaziflam and an adjuvant wherein the boron and indaziflam are applied in the claimed rates which is rendered obvious by the combination of the prior art as discussed above. Applicants argue that there would be no expectation that their claimed combination in the claimed amounts/application rates would result in both a decrease in invasive plant species and an increase in the prevalence of perennial grass species. The examiner respectfully disagrees because as discussed above this is result effective of the claimed active step which is taught by the combined references as discussed above and the combination remains appropriate and obvious because it is known to combine compositions known to be effective for controlling weeds within perennial grasses/rangeland without damaging the perennial grasses/rangeland in order to form new compositions for the same purpose. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Thus, the examiner disagrees that Jennings expressly teaches away from the claimed combination and that one of ordinary skill in the art would not look to combine known active agents effective for the selective control of annual weeds in perennial grasses without harming the grasses in order form more effective combinations for the same purpose as these types of combinations were recognized by the courts to be obvious to develop.
In response to applicant's argument that the prior art does not recognize or suggest that the application of the claimed combination both reduces the number of annual plants/weeds on the rangeland while also increasing the number of perennial plants, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Especially since the increase of the number of perennial plants occurs with/naturally flows from the application of the claimed combination of actives in the claimed ranges which are taught by the prior art as discussed above, and the instantly claimed combination would be obvious to form and apply, based on the combined teachings of the prior art, in order to provide more effective selective control the annual plants/invasive plants and weeds within the perennial grasses/plants of the rangeland without damaging the perennial plants of the rangeland and as such this additional benefit would naturally flow from and obvious method since the applying step is all that is required of the method as claimed.
Applicants then argue that Jennings teaches that traditional herbicides such as indaziflam do not work for selective control of invasive plant species while protecting the desired perennial species. The examiner respectfully disagrees firstly because there are new herbicides being developed all the time which have selectivity, etc. Secondly, indaziflam was more recently discovered and as is clearly taught by the new reference Sebastian, it is known to offer selective control of annual weeds within perennial grasses, e.g. in rangelands as is instantly claimed and as is taught by Sebastian. The examiner respectfully points out that Sebastian teaches applying the indaziflam in amounts which overlap those instantly claimed and it would be obvious to optimize the amounts of indaziflam within the ranges taught by Sebastian in order to control the claimed weeds within the perennial grasses of rangeland because Sebastian teaches selectively controlling annual weeds in rangelands and it is known, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, whether or not Sebastian teaches the claimed amounts, it was known to use the claimed amounts of indaziflam and it would have been obvious to one of ordinary skill in the art to optimize the amounts of indaziflam to effectively control weeds within the desired perennial grasses of rangeland in order to provide effective weed control without damaging the desired perennial grasses. Further it is known to combine compositions known to be effective for controlling weeds within perennial grasses/rangeland without damaging the perennial grasses/rangeland in order to form new compositions for the same purpose. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Thus, the examiner disagrees that Jennings expressly teaches away from the claimed combination and that one of ordinary skill in the art would not look to combine known active agents effective for the selective control of annual weeds in perennial grasses without harming the grasses in order form more effective combinations for the same purpose as these types of combinations were recognized by the courts to be obvious to develop.
Applicants then argue that the examiner’s use of Kerkhoven combinations for rendering their method obvious is incorrect/improper because they believe there would be no reasonable expectation of success and it would not be obvious to combine the claimed references because they state that Jennings teaches away from the use of herbicides to control invasive plant species and that one would not use Sebastian because it teaches herbicidal control in areas dominated by invasive species with little perennial grasses remaining. The examiner respectfully disagrees, firstly because nothing in the instant claims or Jennings actually requires a specific density of perennial grasses within the rangeland/grass plant community for achieving the claimed method. Thus, the arguments that Sebastian is only being used in areas with little perennial grasses remaining are not persuasive because even the presence of 1 perennial grass plant in the presence of weeds in the area being treated wherein the weeds are controlled reads on the claimed method and as discussed above this would lead to the resultant claimed effect of improving/increasing the number of perennial plants as this is result effective/naturally flows from the active step of the method which is taught by the combined prior art as is discussed above. Secondly, as discussed above Jennings discusses that organic chemical herbicides for control of invasive species are known ([0046]), and that herbicides are the principal strategy for controlling weeds…Effectiveness of conventional herbicide applications is highly dependent on timing of herbicide application relative to both plant physiology/growth stage, specific contact with growing vegetation, and complimenting rainfall conditions. The cost of chemical control can be as high as $250 per acre or greater with repeated applications. Land managers often rule out the use of herbicides for control of weeds due to high cost, low effectiveness and damage to desirable species. Effective weed control methods which do not harm desirable species are available, but often have limitations related to cost, need for repeated application and a general concern for the hazards associated with the application of organic chemicals in the environment. Most herbicides used for control of invasive species are organic liquid chemicals applied to the leaf tissue which result in disruption of plant metabolic processes. These same organic chemicals are not naturally-derived and may be harmful to water quality, wildlife and humans. Additionally, research suggests that some invasive plant species are developing resistance to herbicides ([0041]). However, while Jennings states that they can be costly and sometimes hazardous, etc. none of this specifically and/or explicitly teaches away from using herbicides or states that they do not work or cannot be combined with micronutrients to provide multiple modes of action for effectively controlling weeds/invasive plants selectively as is instantly claimed and argued by the examiner and Jennings even admits that there are selective herbicides in ([0041]). Jennings merely prefers to use micronutrients in higher concentrations, e.g. boron to control weeds. Thus, contrary to applicants arguments it remains prima facie obvious to combine the boron and indaziflam of Jennings and Sebastian in the claimed amounts which are taught by and/or rendered obvious by Jennings and Sebastian in order to develop the instantly claimed method, because each of the boron, and indaziflam were individually known in the prior art to be useful for treating degraded rangeland to selectively control annual plants in populations of perennial plants (while increasing the number of perennial plants as this is result effective of/naturally flows from the applying step) as is instantly claimed as discussed above because, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Applicants then argue that the examiner is relying on impermissible hindsight since they believe there is a lack of motivation or teaching to combine the prior art references. The examiner respectfully disagrees for the reasons which have been discussed above and which are incorporated herein. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicants argue that the rejections of the other dependent claims are overcome for the reasons they have previously discussed in their response as addressed above, the examiner respectfully disagrees for the reasons as discussed and addressed above.
Applicants then argue the double patenting rejections over ‘913. Applicants argue that the instant method is not obvious when taken in view of ‘913 because applicant’s amendments to the claim to now use consisting of language which closes the claimed method to unrecited elements because the instant claims do not recite applying liquid boron to a perennial grass community to achieve the specific concentration of soluble boron in the soil. The examiner respectfully disagrees in this instance because the instant claims allow for the incorporation of adjuvants which include crop oil concentrate (which are oils) and or surfactants or wetting agents, etc. which can be liquids and therefore the instant method does not actually exclude applying liquid composition comprising boron as is instantly argued by applicants. Further the instant claims only require a specific application rate of boron. Whether or not the prior art wants to achieve a different level of boron in the soil, it would still be obvious to optimize the amount of boron in ‘913 to achieve the same amounts instantly claimed as the only active step in the method of ‘913 is the applying step there is no measuring step and it would be obvious to optimize the soil amounts of ‘913 to read on the amounts achieved by the instantly claimed method which is taught by the combined references since it is known to optimize the amounts of active agents, e.g. boron and indaziflam in order to form the most effective selective herbicidal combination and methods as this is something one of ordinary skill in the art routinely does when developing effective herbicidal compositions and methods. Thus, the amounts of boron instantly claimed which are not taught by ‘913 and the indaziflam which are also not taught by ‘913 are taught by the combined secondary references as discussed above. Regarding applicant’s arguments, the examiner also respectfully points out that the rejection is not solely over ‘913 since the secondary references teach the indaziflam and the specific weeds and perennial plants which are control and/or treated, respectively. Applicants then argue that one of ordinary skill in the art would not look to the methods of ‘913 in order to develop the claimed method. The examiner respectfully points out that the double patenting rejection is not solely over ‘913 as argued by applicants. It is ‘913 in view of Jennings and Sebastian, etc. which together render obvious the claimed method since Jennings and Sebastian together teach the claimed/overlapping amounts of boron and indaziflam claimed being used to control weeds within rangelands/area, which thereby leads to the increased perennial plants since this is result effective/naturally flows from the claimed applying step which is taught by ‘913 together with the combined references and as such it would be obvious to optimize the amounts of boron and indaziflam together for use in the method of ‘913 in the manner taught by Jennings and Sebastian in order to develop the claimed method for the reasons discussed above and herein.
Applicants argue that the dependent claims are also patentable for the same reasons discussed above. The examiner disagrees for the same reasons discussed above. Especially since the only active step required by ‘913 is the applying the liquid composition comprising boron to the same areas which are instantly claimed, e.g. the claimed rangelands because perennial grass communities of ‘913 include the same perennial grasses as the rangelands claimed and the invasive species being controlled in ‘913 are the same as those instantly claimed as discussed above.
Applicants then argue the double patenting rejection over US11357232 (‘232) and the secondary references. Applicants first argue that for the same reasons as discussed with respect to the double patenting rejection over ‘913 and the secondary references discussed above. The examiner respectfully disagrees for the same reasons which are discussed above. Especially since the only active step required by the method of ‘232 is the applying step of applying the boron and the method of ‘232 just as in the method of ‘913 above uses comprising language and does not exclude the addition of indaziflam from the applied composition and ‘232’s applying step is to achieve the same results instantly claimed, specifically that it promotes growth and/or vigor of desirable perennial plant species in the treated area and it controls cheatgrass, dandelion and spotted knapweed in the treated area and the perennial plants of ‘232 are the same as those instantly claimed. Thus, for the reasons discussed above with respect to ‘913 which are incorporated herein, the examiner is maintaining the double patenting rejection over ‘232 and the combined references at this time.
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.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the revised/updated/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.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616