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 .
Claim interpretation
Applicant’s claims require delayed pre-emergence application of the herbicide. Applicant’s specification states that pre-emergence refers to anytime during the interval from planting of a crop plant up to, but not including emergence of the crop plant, i.e. before cracking or spiking. Thus, pre-emergent application broadly includes delayed pre-emergence application. Applicant’s specification also states, “Delayed pre-emergence generally refers to the time at least 4 days after planting and as many as 14 days after planting, when seed has imbibed moisture and sprouted but prior to emergence of the seedlings.” Which is not an explicit definition. However, for purposes of applying prior art the examiner is interpreting ~4-14 days post sowing or planting to be delayed pre-emergence application, unless the reference already clearly teaches/states a delayed pre-emergence application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14-15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 14-15 depend either directly or indirectly from claim 1 which has been amended to require a rate of crop injury that is no more than 20%. Thus, the presence of the or part of the “and/or” in these claims does not further limit claim 1 from which they depend because if claim 1 already requires a rate of crop injury that is no more than 20% then the embodiment of claim 15 which only requires the rate of crop injury that is no more than 20% does not further limit claim 1 from which it depends. Further the “or” embodiment of claim 14 which only requires/claims any degree of reduced crop injury improperly broadens/does not further limit claim 1 from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claims) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1, 5-6, 8-10, 14-15, 17, 19-20, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kraus et al (US20180192647, published 07/12/2018) as evidenced by IPFT (https://ipft.gov.in/capsule-suspension-cs), and Baker et al. (WO98/39297) and Norsworthy et al. (Adv. Crop. Sci. Tech., 2018, 6(5), 1-7).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 8-10, 17, Kraus teaches methods of growing rice, specifically O. sativa ([0273]; [0289]; [0291-0295]), wherein the rice seed is treated with a safener, and they specifically prefer dichlormid or fenclorim as safeners and wherein the safeners can be applied as a seed treatment/seed dressing which is applied to the seeds, specifically coating the seeds prior to planting as seed dressings coat seeds ([0032]; [0066]; [0069-0073]; [0275-0277]; [0192]; [0312]), and Kraus further teaches wherein the group 15 herbicide is acetochlor and it is encapsulated ([0312]), and wherein the herbicide can be applied to the seeds or the soil (see entire document; e.g. [0035]; [0038]; [0275-0276]; [0273]; [0189, the combinations can be applied separately]; [0192-0193]) and wherein the order of application is of minor importance it is only necessary that the herbicides and safeners are applied in a time frame that allows simultaneous action of the active ingredients on the plants to be controlled and/or safened, and wherein the herbicide can be applied for pre-emergence, either prior to or after the rice seed is planted (see entire document; e.g. [0035]; [0038]; [0049]; [0066]; [0192-0195]; [0273]; [0287-0289]; [0291-0295]; [0312]; etc.).
Regarding claims 5-6 and 24, Kraus teaches wherein application rate of herbicide B, which is preferably acetochlor, is from 0.1-10,000 g/ha which reads on the instantly claimed ranges of at least 250 gai/ha and at least 1260 gai/ha, respectively ([0281]; [0192]).
Regarding claims 1, 11, 14-15, Kraus teaches wherein broadleaf and grassy weeds are controlled with the combination comprising a safener/safener treated seed and herbicide applied to the soil, which further reads on wherein the weed control is at least 50% and wherein the reduced crop injury and reduced stand reduction as compared to crops only treated with the herbicide alone because safeners reduce crop injury from herbicides which are applied to the same area and reads on wherein the crop injury rate is not more than 20% and/or the stand reduction is not more than 20%, and wherein a commercially acceptable rate of weed control and commercially acceptable rate of crop injury are simultaneously obtained, as are instantly claimed because Kraus teaches applying the same herbicides at the same rates to the areas where the same safener treated rice seeds are planted or to be planted and these are results which are accomplished/affected by the claimed method steps which are taught by Kraus (see entire document; abstract; [0273]; [0192]; [0032]; [0066]; [0069-0073]; [0273]; [0275-0277]; [0291-0295]; [0281];[0312]; [0287-0289]).
Regarding claims 19-20, Kraus teaches the methods of claim 1 as discussed above and teaches applying the safener to rice seeds and treating the soil/locus of the rice seeds with herbicide, specifically acetochlor as is discussed above and as such Krause obviously would teach the rice plant produced from the treated seeds and seeds produced from that plant (See [0038]; [0049]; [0066]; [0192-0195]; [0273]; [0287-0289]; [0291-0295]; [0312]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1, 5-6, 8-10, 14-15, 17, 19-20, Kraus does not specifically teach/state that their encapsulated acetochlor is microencapsulated. However, Kraus specifically states at [0312] that the acetochlor was used as an encapsulated (CS) formulation and as is evidenced by IPFT CS formulations are capsule suspension formulations which contain the active ingredient encapsulated in polymer microcapsules. Thus, the CS formulation used in Kraus is microcapsules as evidenced by IPFT (See Description).
Regarding claims 1, 12, Kraus also does not specifically teach wherein their pre-emergence application is delayed pre-emergence. The examiner believes that the genus of pre-emergent application as taught by Kraus would encompass delayed pre-emergence application though Kraus does not specifically teach applying the herbicide at least 4 days after planting, and Kraus does not specifically teach wherein the weeds which are being controlled are barnyard grass. However, these deficiencies are addressed by Baker and Norsworthy.
Baker teaches that it was known to use delayed pre-emergence application of acetochlor in rice with safeners and wherein the safeners can be applied directly to the rice seeds, e.g. as a seed treatment/seed coating and wherein the herbicide/acetochlor can be formulated into microcapsules for controlled-release (See entire document; e.g. Claims; abstract; pg. 1, ln. 1-2; pg. 1, 2nd paragraph of background of invention section; pg. 2, first paragraph and structure; 4th paragraph; pg. 3, 4th paragraph; Pg. 3, bridging paragraph to pg. 4; pg. 4-5 summary of invention section; pg. 8, last paragraph; pg. 11, ln. 1-end of second full paragraph; pg. 12, paragraph on microcapsules). ‘297(Baker) further teaches wherein the weeds which are controlled are barnyardgrass (Echinochloa crus-galli) (See pg. 16-17).
Norsworthy teaches that it was known to apply microencapsulated acetochlor delayed pre-emergence to rice (e.g. ~5-6 days after planting) which reduced crop injury over normal pre-emergence application, e.g. they found that the injury generally decreased as application timing was delayed and they found that delayed pre-emergence application and spiking application offered the best weed control and rice yields (See abstract; Results and discussion section pg. 3, pg. 4, right col. First paragraph-2nd paragraph Table 2; pg. 2 of 7 Materials and methods section through Acetochlor experiment).
Regarding claim 24, Kraus does not specifically teach wherein the amount of fenclorim, the safener, applied to seeds is the claimed 0.1 to 3 g per kg of seed. However, Kraus does teach wherein the safener can be applied to rice seeds prior to planting and specifically teaches at [0066] that safeners are chemical compounds which prevent or reduce damage on useful plants without having a major impact on the herbicidal action of the herbicidal active components towards unwanted plants. Safeners can be applied before sowings (e.g. seed treatments), on shoots or seedlings as well as in the pre-emergence or post-emergence treatment of useful plants and their habitat. Safeners, i.e. fenclorim (a very preferred safener in Kraus), prevent or reduce damage to the rice plant without substantially impairing the damaging effect of the herbicide on weed species. Because the function of safeners is well-known in the art, one of ordinary skill (in the art) would have recognized that the amount of safener applied to the rice seeds would impact the ability of the safener to reduce or eliminate damage to the rice plants and is therefore an optimizable variable. “[D]iscovery of an optimum value of a result effective variable…is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious for one of ordinary skill in the art at the time of the instant filing to develop the instantly claimed method when looking to Kraus and Baker because Kraus teaches applying safeners to seeds, and wherein the safener is preferably fenclorim and Kraus specifically prefers rice/rice seeds in their application and then treating the area where the rice is to be planted/is planted with acetochlor which is/can be encapsulated as a CS formulation, as evidenced by IPFT means that the acetochlor is microencapsulated. Thus, one of ordinary skill in the art would be motivated to safen the seeds of rice with the claimed safeners which are preferred by Kraus, prior to applying the acetochlor because acetochlor works on both broadleaf and grassy plants/weeds and can cause damage and/or injure the rice growing from rice seed which is not safened and the safener does not safen/protect any weeds/weed seeds in the area from herbicide damage since it has only been applied to the seeds of the crops that are desired to grow, e.g. the treated rice seeds claimed.
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to use the claimed delayed pre-emergence application of the microencapsulated herbicide/acetochlor because it was already known in the art to apply acetochlor, including microencapsulated acetochlor delayed pre-emergence to rice seeds with a safener to protect the rice from damage by the acetochlor while still providing effective weed control as is taught by Baker, and Norsworthy specifically teaches that it was known that delayed pre-emergent application of microencapsulated acetochlor led to improved rice yields (e.g. lower toxicity) and improved weed control. Thus, it would be obvious to use known modes of application, specifically delayed pre-emergence application of microencapsulated acetochlor for growing rice which are known to allow for effective weed control while offering increased protection of the growing rice from herbicide damage, and afford increased rice yields versus other times of application of the same herbicide with safener treatments of seeds which were already known in the art to protect the growing rice plants from damage from the applied herbicides due to the presence of the safener on the seed/in the resulting plant. Thus, it would be obvious to combine known methods of protecting rice, by delayed pre-emergence application of the microencapsulated acetochlor in combination with the application of effective safeners for acetochlor and rice being applied to the rice seeds in order to provide the most effective level of rice protection while still affording increased weed control, which is observed by increased rice production as is taught by Norworthy. It would be obvious to combine these known methods in order to provide a more effective method of growing rice wherein the weeds are effectively controlled and thereby lead to improved rice yields and the rice plants are effectively protected while the weeds are being killed thereby also leading to/contributing to improved yields.
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to control the claimed weeds with the claimed method because it was already known in the art to control the claimed weeds, e.g. barnyardgrass in rice with the claimed herbicide in conjunction with safeners which are applied to the rice seed, and/or rice plants prior to application of the herbicide which can be applied delayed pre-emergence. One of ordinary skill in the art would be motivated to the control the claimed weeds because these weeds were already known in the art to be controlled with the claimed herbicidal active agents in the same crops, rice.
It also would have been obvious to optimize the amount of acetochlor and to determine the optimum value of a result effective variable, in this case the amount of safener applied to the seeds as now claimed in claim 24 because the function of safeners is known to reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the herbicide on weed species, one of ordinary skill in the art would have recognized that the amount of safener applied to the rice seeds would impact the ability of the safener to reduce or eliminate damage to the rice plants and is therefore an optimizable variable. “[D]iscovery of an optimum value of a result effective variable…is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276, and because Krause (as evidenced by IPFT) teaches using overlapping amounts of microencapsulated acetochlor to treat rice and in view of the combined references as discussed above there are clear benefits to applying acetochlor delayed pre-emergence. One of ordinary skill in the art would want to optimize the amount of microencapsulated acetochlor and realize that the amount of fenclorim/safener is a result effective variable which can be optimized in order to provide the most effective safener and acetochlor combination treatment which reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the acetochlor on weeds, allowing for the highest levels of weed control with acetochlor with minimal rice injury.
Regarding the newly added limitation, that the amount of applied herbicide and applied fenclorim attains at least 50% weed control of barnyardgrass and weedy rice and a rate of crop injury no more than 20%, this is result which naturally flows from the instantly claimed method which is rendered obvious by the combined prior art as discussed above. Further, as discussed above, one of ordinary skill in the art would want to optimize the amount of microencapsulated acetochlor and realize that the amount of fenclorim/safener is a result effective variable which can be optimized in order to provide the most effective safener and acetochlor combination treatment which reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the acetochlor on weeds, allowing for the highest levels of weed control with acetochlor with minimal rice injury.
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 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kraus et al (US20180192647, published 07/12/2018) as evidenced by IPFT (https://ipft.gov.in/capsule-suspension-cs), WO98/39297 (‘297), and Norsworthy et al. (Adv. Crop. Sci. Tech., 2018, 6(5), 1-7) as applied to claims 1, 5-6, 8-10, 14-15, 17, 19-20 above and further in view of CN108513877 (previously cited) and Louisiana Rice (https://agfax.com/2018/04/05/louisiana-rice-smooth-sailing-with-planting-but-cold-weather-in-store/) (previously cited).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the method of claims 1, 5-6, 8-10, 14-15, 17, 19-20 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not teach wherein the rice is grown in the claimed environmental conditions. However, these deficiencies in the combined references are addressed by ‘877 and Louisiana Rice.
Louisiana Rice teaches that rice seeds will germinate with night time temperatures of 50-60 F (10-16 °C) which reads on the average night temperatures instantly claimed, and ‘877 teaches that it was known to maintain soil moisture levels of 60-80% when planting/growing rice which would read on the moist soil conditions of between 70-90% claimed (See ‘877 English translation: “Further, it periodically waters to rice during the Rice Cropping, it is 60~80% to keep the water content of soil.”; See Louisiana Rice: Cold weather effects on germination section).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to grow the rice of the combined references in the claimed environmental conditions because it was already known in the art that rice seeds will germinate with night time temperatures of 50-60 F (10-16 °C) which reads on the average night temperatures instantly claimed, and ‘877 teaches that it was known to maintain soil moisture levels of 60-80% when planting/growing rice which would read on the moist soil conditions of between 70-90% claimed and as such it would be obvious to grow rice under environmental conditions which are known to be useful for growing rice because these are known effective conditions for growing rice.
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 1, 5-6, 8-10, 14-15, 17, 19-21, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baker et al. (WO98/39297), CN105494340A, Kraus et al (US20180192647, published 07/12/2018), and Norsworthy et al. (Adv. Crop. Sci. Tech., 2018, 6(5), 1-7).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, Baker teaches methods of growing rice/controlling weeds in rice comprising treating rice seed with a safener and applying a herbicide, specifically acetochlor, which can be microencapsulated, and teaches delayed pre-emergence herbicidal application to the soil after the rice seeds are planted (See entire document; e.g. Claims; abstract; pg. 1, ln. 1-2; pg. 1, 2nd paragraph of background of invention section; pg. 2, first paragraph and structure; 4th paragraph; pg. 3, 4th paragraph (delayed pre-emergence); Pg. 3, bridging paragraph to pg. 4; pg. 4-5 summary of invention section; pg. 8, last paragraph; pg. 11, ln. 1-end of second full paragraph; pg. 12, paragraph on microcapsules). Baker also teaches wherein the barnyard grass is controlled in rice with the combination of safener and acetochlor (see pre flood post emergence herbicidal screening test).
Regarding claims 5-6 and 24, Baker teaches wherein the herbicide/acetochlor is applied at a rate of from about 0.01 to about 11.5 kg per hectare which overlap and/or read on the claimed at least 250 g ai/ha and the at least 1260 g ai/ha (pg. 11, ln. 15-16).
Regarding claims 8-9, Baker teaches wherein the safener can be applied to rice seeds prior to planting, which reads on coating the seeds prior to planting (pg. 11, ln. 3-7).
Regarding claim 10, Baker teaches wherein the rice is/can be Oryza sativa (see pre flood post emergence herbicidal screening test).
Regarding claims 1, 14-15, Baker teaches wherein the applied combination of acetochlor and safener leads to the claimed rates of weed control, reduced crop injury, etc. as compared to application of the acetochlor alone and wherein the rates of crop injury and stand reduction are below the claimed percentages and wherein commercially acceptable rate of weed control and crop injury are simultaneously attained (see pre flood post emergence herbicidal screening test).
As Baker teaches that the safener can be applied to rice seeds and that the herbicide acetochlor can be microencapsulated for treating rice and wherein the microencapsulated herbicide can be applied to soil then the rice plants growing from said treated seeds in the soil would obviously read on the claimed rice plant of claim 19, and the seed that is produced from this rice plant resulting from this treated seed would obviously read on claim 20.
Regarding claim 21, Baker teaches only utilizing acetochlor as the sole herbicide (See entire document; e.g. pre-flood post emergence herbicidal screening test; Claims; abstract; pg. 1, ln. 1-2; pg. 1, 2nd paragraph of background of invention section; pg. 2, first paragraph and structure; 4th paragraph; pg. 3, 4th paragraph; Pg. 3, bridging paragraph to pg. 4; pg. 4-5 summary of invention section; pg. 8, last paragraph; pg. 11, ln. 1-end of second full paragraph; pg. 12, paragraph on microcapsules).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1, 5-6, 8-10, 14-15, 17, 19-21, Baker does not teach an express example of the instantly claimed invention nor wherein their delayed pre-emergence is at least 4 days after planting (Claims 1 and 23). Baker also does not specifically teach wherein the safener coats the rice seed, or wherein the safener is fenclorim (claims 7 and 17, 22), and/or wherein the method of growing rice comprising treating rice seed with fenclorim (prior to planting) (claim 17) and applying a herbicide selected from acetochlor, etc. to soil where the seeds have been planted, wherein the herbicide is microencapsulated (Claim 22) nor does Baker specifically teach examples/benefits for applying the herbicides delayed pre-emergence. However, these deficiencies in Baker are addressed by CN105494340A, Kraus, and Norsworthy.
As discussed above Baker does teach applying a safener to seeds of rice and then planting the rice and delayed pre-emergence application of herbicides, specifically acetochlor which can be microencapsulated for controlled release to the rice crop.
CN105494340A teaches that it was known to coat rice seed/dress the rice seed with fenclorim prior to sowing/planting the rice in the field and then treating the field with group 15 herbicides, specifically pretilachlor (which is not encapsulated but which is in the same family as acetochlor) 2-3 days after sowing the seeds, to control weedy rice (See Abstract in english).
Kraus teaches fenclorim and dichlormid are preferred safeners for use with encapsulated (specifically microencapsulated) acetochlor in rice, Oryzae sativa, and can be used on the seeds/applied to the seeds ([0032]; [0066]; [0069-0073]; [0275-0277]; [0192]; [0312]; [0273]; [0289]; [0291-0295]; [0312, that the acetochlor was used as an encapsulated (CS) formulation, which are microcapsules]).
Norsworthy teaches that it was known to apply microencapsulated acetochlor delayed pre-emergence to rice (e.g. ~5-6 days after planting) which reduced crop injury over normal pre-emergence application, e.g. they found that the injury generally decreased as application timing was delayed and they found that delayed pre-emergence application and application at spiking offered the best weed control and rice yields (See abstract; Results and discussion section pg. 3, pg. 4, right col. First paragraph-2nd paragraph Table 2; pg. 2 of 7 Materials and methods section through Acetochlor experiment).
Regarding claim 24, Baker does not specifically teach wherein the amount of fenclorim, the safener, applied to seeds is the claimed 0.1 to 3 g per kg of seed. However, Baker does teach wherein the safener can be applied to rice seeds prior to planting, which reads on coating the seeds prior to planting (pg. 11, ln. 3-7), and teaches that in order to preserve the beneficial aspects of herbicides which injure plants beyond an acceptable level, many herbicide safeners have been prepared (last paragraph pg. 1). These safeners reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the herbicide on weed species and that Baker found that acetochlor may be used on rice plants at effective levels when a safener is employed. High levels of weed control are possible with acetochlor and with the appropriate safener, rice injury is reduced to an acceptable level (pg. 3-pg.4, bridging paragraph). Because the function of safeners is known to reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the herbicide on weed species, one of ordinary skill in the art would have recognized that the amount of safener applied to the rice seeds would impact the ability of the safener to reduce or eliminate damage to the rice plants and is therefore an optimizable variable. “[D]iscovery of an optimum value of a result effective variable…is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276.
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 apply the safener to the rice seeds because Baker teaches that it was known to apply safener to rice seeds, and it would have been obvious to apply the microencapsulated acetochlor to the soil delayed pre-emergence after planting the rice seeds because it was known to microencapsulate acetochor to achieve controlled release and it was known to apply herbicides including acetochlor via delayed pre-emergence to rice as is taught by Baker. Thus, it would have been obvious to grow rice via the claimed method because each of the method steps was already known in the art to be useful for growing rice and controlling barnyard grass in the rice.
It would have been obvious to one of ordinary skill in the art to add and/or select fenclorim as an additional safener to the safener treatment of Baker in order to provide improved safening protection to the desired rice seed prior to application of the acetochlor because fenclorim is taught to be a good effective safener to use with acetochlor as taught by Kraus and because fenclorim is known to be useful for treating rice seeds prior to planting as per CN105494340A and prior to treatment with other group 15 herbicides and as such would be expected to be useful when combined with the acetochlor of Baker, which is another group 15 herbicide.
It also would have been obvious to substitute the fenclorim for the safener in Baker in order to develop the claimed method because fenclorim is known to be an effective safener in rice when using the herbicide acetochlor and for treating seeds (Kraus) and because fenclorim is known to be useful for treating rice seeds prior to planting as per CN105494340A and prior to treatment with other group 15 herbicides and as such would be expected to be useful when combined with the acetochlor of Baker, which is another group 15 herbicide.
It also would be obvious to use microencapsulated acetochlor because Baker teaches that microencapsulated acetochlor is useful for treating rice and allows for controlled release of the herbicide, and it would be obvious to apply the microencapsulated acetochlor delayed pre-emergence because Norsworthy specifically teaches that it was known that delayed pre-emergent application of microencapsulated acetochlor led to improved rice yields (e.g. lower toxicity) and improved weed control. Thus, it would be obvious to use known modes of application, specifically delayed pre-emergence application of microencapsulated acetochlor for growing rice which are known to allow for effective weed control while offering increased protection of the growing rice from herbicide damage, and afford increased rice yields versus other times of application of the same herbicide, with the claimed safener/fenclorim treatments of seeds which were already known in the art to protect the growing rice plants from damage from the applied herbicides due to the presence of the safener on the seed/in the resulting plant.
Thus, it would be obvious to combine known methods of protecting rice, by delayed pre-emergence application of the microencapsulated acetochlor with the application of effective safeners for acetochlor and rice being applied to the rice seeds in order to provide the most effective level of rice protection while still affording increased weed control, which is observed by increased rice production as is taught by Norworthy. It would be obvious to combine these known methods in order to provide a more effective method of growing rice wherein the weeds are effectively controlled and thereby lead to improved rice yields and the rice plants are effectively protected while the weeds are being killed thereby also leading to/contributing to improved yields.
It also would have been obvious to optimize the amount of acetochlor and to determine the optimum value of a result effective variable, in this case the amount of safener applied to the seeds as now claimed in claim 24 because the function of safeners is known to reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the herbicide on weed species, one of ordinary skill in the art would have recognized that the amount of safener applied to the rice seeds would impact the ability of the safener to reduce or eliminate damage to the rice plants and is therefore an optimizable variable. “[D]iscovery of an optimum value of a result effective variable…is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276, and because Baker teaches using overlapping amounts of acetochlor to treat rice and wherein the acetochlor can be applied delayed pre-emergence and as microcapsules as is taught by Baker. One of ordinary skill in the art would want to do this in order to provide the most effective safener and acetochlor combination treatment which reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the acetochlor on weeds, allowing for the highest levels of weed control with acetochlor with minimal rice injury.
Regarding the newly added limitation, that the amount of applied herbicide and applied fenclorim attains at least 50% weed control of barnyardgrass and weedy rice and a rate of crop injury no more than 20%, this is result which naturally flows from the instantly claimed method which is rendered obvious by the combined prior art as discussed above. Further, as discussed above, one of ordinary skill in the art would want to optimize the amount of microencapsulated acetochlor and realize that the amount of fenclorim/safener is a result effective variable which can be optimized in order to provide the most effective safener and acetochlor combination treatment which reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the acetochlor on weeds, allowing for the highest levels of weed control with acetochlor with minimal rice injury.
Claim 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baker et al. (WO98/39297), CN105494340A, Kraus et al (US20180192647, published 07/12/2018), and Norsworthy et al. (Adv. Crop. Sci. Tech., 2018, 6(5), 1-7) as applied to claims 1, 5-6, 8-10, 14-17, 19-21, and 24 above and further in view of CN108513877 and Louisiana Rice (https://agfax.com/2018/04/05/louisiana-rice-smooth-sailing-with-planting-but-cold-weather-in-store/).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the method of claims 1, 5-6, 8-10, 14-17, 19-21, and 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 teach wherein the rice is grown in the claimed environmental conditions. However, these deficiencies in the combined references are addressed by ‘877 and Louisiana Rice.
Louisiana Rice teaches that rice seeds will germinate with night time temperatures of 50-60 F (10-16 °C) which reads on the average night temperatures instantly claimed, and ‘877 teaches that it was known to maintain soil moisture levels of 60-80% when planting/growing rice which would read on the moist soil conditions of between 70-90% claimed (See ‘877 English translation: “Further, it periodically waters to rice during the Rice Cropping, it is 60~80% to keep the water content of soil.”; See Louisiana Rice: Cold weather effects on germination section).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to grow the rice of the combined references in the claimed environmental conditions because it was already known in the art that rice seeds will germinate with night time temperatures of 50-60 F (10-16 °C) which reads on the average night temperatures instantly claimed, and ‘877 teaches that it was known to maintain soil moisture levels of 60-80% when planting/growing rice which would read on the moist soil conditions of between 70-90% claimed and as such it would be obvious to grow rice under environmental conditions which are known to be useful for growing rice because these are known effective conditions for growing rice.
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 Amendments/Arguments
Applicant’s amendments to the claims have overcome the previous claim objections and 112 rejections. Applicant’s arguments with respect to the 103 rejection of record have been fully considered but are not persuasive at this time. Applicant’s amendments have prompted the new grounds of rejection under 112 and the revised grounds of rejection under 103 presented herein.
Applicants argue that there is no evidence in the references that demonstrates that commercially effective weed control can be simultaneously achieved with commercially acceptable crop injury and that applicants results are surprising. The examiner respectfully disagrees because the examiner sees no evidence of unexpected results. Further, the claimed method steps were known/rendered obvious by the combined prior art as is discussed above, and the newly claimed limitation that the amount of applied herbicide and applied fenclorim attains at least 50% weed control of barnyardgrass and weedy rice and a rate of crop injury no more than 20%, this is a result which naturally flows from the instantly claimed method which is rendered obvious by the combined prior art as discussed above. Further, as discussed above, one of ordinary skill in the art would want to optimize the amount of microencapsulated acetochlor and realize that the amount of fenclorim/safener is a result effective variable which can be optimized in order to provide the most effective safener and acetochlor combination treatment which reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the acetochlor on weeds, allowing for the highest levels of weed control with acetochlor with minimal rice injury. Thus, it appears that applicants argued surprising results are actually not that surprising in view of the combined teachings of the prior art.
Applicants further point to data in figures 3-4 and example 6 that suggest that application at DPRE timings that the claimed method achieved at least 50% weed control of barnyard grass and weedy rice and a rate of crop injury no more than 20% simultaneously and that this benefit is unexpected. The examiner respectfully disagrees because the examiner sees no evidence of unexpected results with this result. Further, as discussed above the claimed method steps were known/rendered obvious by the combined prior art as is discussed above, and the newly claimed limitation that the amount of applied herbicide and applied fenclorim attains at least 50% weed control of barnyardgrass and weedy rice and a rate of crop injury no more than 20%, this is a result which naturally flows and/or is result effective of performing the instantly claimed method steps which are rendered obvious by the combined prior art as discussed above. Further, as discussed above, one of ordinary skill in the art would want to optimize the amount of microencapsulated acetochlor and realize that the amount of fenclorim/safener is a result effective variable which can be optimized in order to provide the most effective safener and acetochlor combination treatment which reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the acetochlor on weeds, allowing for the highest levels of weed control with acetochlor with minimal rice injury. Thus, it appears that applicants argued surprising results are actually not that surprising in view of the combined teachings of the prior art. Applicants then further argue that the results across the comparative examples as compared to the instant method specifically highlight the synergistic effects of the features recited in claim 1. The examiner first notes that the scales on the figures are not the same.
Secondly, it is not unexpected that microencapsulated formulation causes less damage to rice than a commonly used emulsifiable concentrate, this type of protection was known in the art. Secondly, it is not unexpected that the addition of a safener to the seeds further limits the damage to rice while allowing for effective control of weeds. Thus, contrary to applicants arguments the data does not appear to show any synergistic effects that were unexpected based on the combined/known teachings of the prior art because the microencapsulation and safener are performing just as they are known to do, to safen the effects of herbicides on crops and reduce damage to crops and for the microencapsulation of the herbicide to allow for slower release and reduced crop damage which is what these features are known to do/were developed to do and these effects/combined protective effects are exactly what applicants are observing, as the addition of the fenclorim seed treatment both pre-emergently and delayed pre-emergence does further reduce the injury that does occur from the microencapsulated aetochlor. However the % injury values are particularly from different scales and are difficult to compare from between figures 3 and 4.
Applicants then further argue that none of the references teach the unexpected benefits now claimed. As discussed above, regarding the newly added limitation, that the amount of applied herbicide and applied these results naturally flow and/or are result effective from the instantly claimed method steps which have been rendered obvious by the combined prior art as discussed above. Further, as discussed above, one of ordinary skill in the art would want to optimize the amount of microencapsulated acetochlor and realize that the amount of fenclorim/safener is a result effective variable which can be optimized in order to provide the most effective safener and acetochlor combination treatment which reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the acetochlor on weeds, allowing for the highest levels of weed control with acetochlor with minimal rice injury.
They further argue that Baker and Kraus disclose broad ranges of herbicide rate without providing any motivation to modify such ranges to arrive at the claimed method. The examiner respectfully disagrees for the reasons which are set forth above. They further argue that neither Kraus nor Baker demonstrates the benefits of the combination of fenclorim seed treatment in combination with DPRE application of a microencapsulated group 15 herbicide such as acetochlor. The examiner respectfully points out that the rejection is not solely over Baker or Kruase and that the rejections are over the combined references together which render obvious the claimed method for the reasons which are discussed above and incorporated herein. that the amount of applied herbicide and applied these results naturally flow and/or are result effective from the instantly claimed method steps which have been rendered obvious by the combined prior art as discussed above. Further, as discussed above, one of ordinary skill in the art would want to optimize the amount of microencapsulated acetochlor and realize that the amount of fenclorim/safener is a result effective variable which can be optimized in order to provide the most effective safener and acetochlor combination treatment which reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the acetochlor on weeds, allowing for the highest levels of weed control with acetochlor with minimal rice injury.
Applicants then argue that Norsworthy fails to consider the effect of fenclorim seed treatment in combination with DPRE application of a microencapsulated group 15 herbicide such as acetochlor. They further argue that Norsworthy teaches that recited herbicides cause significant rice injury when applied pre-emergently or DPRE, and that nothing in Norsworthy suggests a safener would allow for earlier application of the herbicide to improve weed control while also maintaining a commercially acceptable rate of crop injury. The examiner respectfully points out that the rejection is not solely over Norsworthy, specifically the rejection is over Norsworthy and the combined references together which render obvious the claimed method for the reasons which are discussed above and incorporated herein. Applicants then argue that Norsworthy does not recommend delayed pre-emergence treatment because at the very end of the article they recommend applying acetochlor after rice emergence…to maximize weed control and minimize rice injury. The examiner notes that this is a suggestion by Norsworthy et al. based on previous research demonstrating the ability of VLCFA inhibiting herbicides The examiner respectfully points out that this is one more timing of treatment taught by Norsworthy, but Norworthy clearly teaches as discussed above and herein that delayed pre-emergence application reduced crop injury over normal pre-emergence application, e.g. they found that the injury generally decreased as application timing was delayed and they found that delayed pre-emergence and application at spiking offered the best weed control and rice yields. Applicants then argue that Norsworthy does not rationally suggest the claimed invention because Norsworthy explicitly teaches a different application timing is preferable. The examiner respectfully disagrees because Norsworthy suggests applying after rice emergence but by the 1-2 leaf rice growth stage, but the prior art is art for all it teaches even non-preferred embodiments and Norsworthy specifically teaches that that rice injury generally decreased as application timing was delayed and they found that delayed pre-emergence and application at spiking offered the best weed control and rice yields. Thus, Norsworthy clearly teaches that application at delayed pre-emergence is useful for applying acetochlor, and the prior art is art for all it teaches. The courts have previously found, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989). “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423” (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Applicants also argue that none of the references cited teach or suggest the unexpected benefits of the claimed amount of microencapsulated herbicide, application timing, and fenclorim seed treatment. The examiner respectfully disagrees with these arguments, and again respectfully points out that these results are not unexpected. Fenclorim is a known safener that is providing safening effects to crop plants, specifically rice from the damaging herbicidal effects of acetochlor as is discussed above. Kraus teaches overlapping amounts of microcapsulated/encapsulated acetochlor as discussed above and the amount of fenclorim would have been obvious to determine because the function of safeners is known to reduce or eliminate damage to the rice plant without substantially impairing the damaging effect of the herbicide on weed species, one of ordinary skill in the art would have recognized that the amount of safener applied to the rice seeds would impact the ability of the safener to reduce or eliminate damage to the rice plants and is therefore an optimizable variable. “[D]iscovery of an optimum value of a result effective variable…is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276. Applicants argue that their benefits are unexpected but have not actually explained how these results are unexpected, as applicants results appear to be in line with the combined teachings of the prior art references as discussed above. Applicants then argue that there is nothing in the cited references which teach or suggest the advantages of the claimed invention and that their examples demonstrate that the claimed technology lead to reduced rice injury and increased weed control. The examiner respectfully points out that as discussed above these effects are not unexpected because Norsworthy specifically teaches that it was known that delayed pre-emergent application of microencapsulated acetochlor led to improved rice yields (e.g. lower toxicity) and improved weed control, and for example as discussed above Baker teaches wherein the applied combination of acetochlor, which can be microencapsulated, and safener leads to the claimed rates of weed control, reduced crop injury, etc. as compared to application of the acetochlor alone and wherein the rates of crop injury and stand reduction are below the claimed percentages and wherein commercially acceptable rate of weed control and crop injury are simultaneously attained (see pre flood post emergence herbicidal screening test). Thus, contrary to applicants assertions their results are not unexpected when taken in view of the combined prior art of record.
Applicants finally argue that Chen, Louisiana Rice, and ‘340 fail to remedy this deficiency. The examiner again respectfully disagrees for the reasons which are detailed above and incorporated herein as it is the combined references together which render obvious the claimed method. Applicant’s further argued that none of these references teach delayed pre-emergence herbicide application with rice seed treated with fenclorim. The examiner respectfully points out that these features were taught by the other references cited in the rejections of record as discussed above.
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 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 1617