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 .
DETAILED ACTION
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 15 Jul 2026 has been entered.
Claims 1, 6, 12-16, and 27-42, 45-48, and 52 remain pending in the application.
Claims 1, 6, 16, and 45-48 are amended.
Claims 2-5, 7-11, 17-26 43, 44, and 49-51 are cancelled.
Claims 16, 27-42, 45-47 and 49-51 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 1, 6, 12-15, 48 and 52 are under consideration to the extent of the elected species, i.e., that the HPPD inhibitor is mesotrione.
Rejections Maintained – in modified form
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.
The rejection below was made previously and is made again with adjustments made to address the amended ranges in the claims.
Claims 1, 6, 12-15, 48 and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) and in view of Yerkes et al. (US 8,841,233, published 23 Sep 2014).
Eckelbarger teaches herbicidal compounds of Formula (I):
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(abstract, [0004], [0015]). Eckelbarger teaches values for the R1, R2, R3, R4, A and X variables that render obvious the compounds recited in the instant claims (see [0005]-[0015]). For instance, Eckelbarger teaches that A may be
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([0172]), X may be CF ([0171]), R3 and R4 may be Hydrogen and R2 may be chlorine ([0169]). This combination provides the structure of
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. Eckelbarger teaches that the R1 group may be OR1’ where OR1’ may be hydrogen, C1-C8 alkyl or C7-C10 arylalkyl ([0006]). The C7 arylalkyl group renders obvious the benzyl group and thus the structure of instant claim 52. Eckelbarger exemplifies the compound
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([0349]) which is identical to the compound recited in instant claims 1 and 6. Eckelbarger teaches that the compounds of Formula (I) may be used as herbicides to control undesirable vegetation (abstract, [0015]). Regarding the HPPD inhibitor (component b of the composition) of claims 1 and 48, Eckelbarger teaches that the compositions may be used in conjunction with one or more other herbicides such as mesotrione ([0201]). Eckelbarger teaches a list of other herbicides that can be used with the composition ([0201]). As evidenced by NIH, herbicides are a type of pesticide (page 1). Thus, the teachings of Eckelbarger of one or more other herbicides renders obvious the additional pesticide of claim 13. Regarding claim 14 which requires components (a) and (b) as the only active ingredients in the composition, this limitation would be obvious as Eckelbarger teaches compositions of formula (I) and that it may be used in combination with one other herbicide, as described above. Eckelbarger does not require additional actives to be used and it would have been obvious to one of ordinary skill to limit the active components in the composition to only what is necessary for the desired treatment. Regarding claim 12, Eckelbarger teaches that the compounds may be used in mixtures containing an herbicidally effective amount of the compound along with at least one agriculturally acceptable adjuvant or carrier ([0185]). Regarding claim 15, Eckelbarger teaches that the compositions may be concentrates or formulations that are diluted with additional carriers and adjuvants before application ([0185]).
Eckelbarger further teaches that pre-emergent and post-emergent application rates of the composition range from 1 to about 4000 g/ha ([0200]). Eckelbarger further exemplifies application of various compounds of Formula (I) applied at various rates such as 35, 70 and 140 g/ha with result performance varying based on the specific compound applied and the species being treated (page 68 Table 15).
Eckelbarger does not teach the weight ratios of a compound of Formula (I) and mesotrione within the range from about 1:10 to about 1:3 or about 1:7 to about 1:3.5 as recited in instant claims 1 and 6. This deficiency is made up for in the teachings of Yerkes.
Yerkes teaches herbicidal compositions comprising (a) 4-amino-3-chloro-5-fluoro-6-( 4-chloro-2-fluoro-3-methoxyphenyl) pyridine-2-carboxylic acid and (b) an HPPD inhibitor such as mesotrione (abstract, col 1 lines 20-25). Yerkes teaches that the (a) and (b) components may be in ratios such as 1:115 to 17:1 (col 1 lines 38-46, col 20 lines 4-31). Yerkes teaches that the mesotrione is applied in a herbicidally effective rate ranging from 5 – 280 gai/ha (col 5 lines 1-7, col 20 lines 45-60). Yerkes teaches examples of application of mesotrione for controlling various weed species and applying at various rates and exemplifies rates of 17.5, 35, 70 and 140 gai/ha (see Tables 1, 2 and 10-12).
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have applied the compound of Formula (I) taught by Eckelbarger and which renders obvious the instant compounds, as described above, at a rate ranging from 1 to 4000 g/ha and the compound mesotrione at rates such as 17.5, 35, 70 and 140 gai/ha. Compounds of Formula (I) are known for to be suitable in combination with mesotrione and may be used at rates of 1 to 4000 g/ha and the rate may be adjusted based on the specific compound applied and the specific species that is being treated, as taught by Eckelbarger. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, mesotrione is known to be useful at application rates such as 17.5, 35, 70 and 140 gai/ha, as taught by Yerkes. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 140 gai/ha mesotrione results in a weight ratio of 35:140 (1:4), which renders obvious the rates of range from about 1:10 to about 1:3 and from about 1:7 to about 1:3.5. It would be obvious to form an herbicidal mixture of a compound of Formula (I) and mesotrione as described above and it would be further obvious to have them at a ratio such as 1:4 as this ratio represents a ratio of the application rates of the individual components that are known to be suitable for treatment of various crop and weed species.
In addition to the obviousness of the recited weight ratios as described above, it is further recognized that the weight ratios are obvious as a matter of routine experimentation. As described above, the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated. Additionally, mesotrione may be applied to various weed species at different rates, as taught by Yerkes. Thus, the amount of a compound of Formula (I) and the amount of mesotrione that is applied to a weed species is an art-recognized result effective variable such that determining that the ratio of a compound of Formula (I) and mesotrione would be about 1:10 to about 1:3 and from about 1:7 to about 1:3.5 would be a matter of optimization through routine experimentation. "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would be obvious to one of ordinary skill to determine the most suitable application rate for the different components of a mixture of a compound of Formula (I) and mesotrione depending on the specific compound of Formula (I) that is utilized and based on the weed species to be treated as the effectiveness of the treatment is dependent on these parameters as demonstrated by Eckelbarger and Yerkes.
Accordingly, the instant claims are rendered prima facie obvious over the teachings of Eckelbarger and Yerkes.
Response to Arguments
Applicant's arguments filed 15 Jul 2026 have been fully considered but they are not persuasive. Applicant points to data presented in tables 1-4 of the specification and the tables in the declaration of 03 Jun 2026 as evidence of unexpected results. The tables demonstrate testing done with a few of the claimed compounds in certain combinations of HPPD inhibitor and at select ratios. The data demonstrate better than expected performance in controlling select weeds for the tested combinations. The applicant argues that the claimed compositions are commensurate in scope as they are now a narrow generalization of what has been demonstrated in the results presented (page 11 of remarks).
The examiner is not persuaded by this and maintains that the claims are not commensurate in scope with the data shown. For example, four of the seven claimed herbicide compounds are not tested. Two compounds have testing data but only in combination with mesotrione. Only one compound has data for the combination with the four HPPD inhibitors. Even for the compound that has testing with each of the claimed inhibitors, the testing does not support the claimed ranges. Only two ratios were tested for each combination. The ratios of claim 1 extend outside the tested ratios. The ratios of claim 6 are better aligned with the tested ratios except for the ratio for the combination with sulcotrione which extends beyond the tested data. Even with these tighter ranges, however, the applicant has not actually demonstrated unexpected results for the claimed ranges. Just testing the end points of the claimed range does not provide support for unexpected results within the range. For example, there is no data to demonstrate what would be expected at ratios within the claimed range of 1:7 to 1:3.5. Data demonstrating results from testing within the ratio range and outside of the ratio range would be helpful in supporting the assertion for unexpected results across the entire range as claimed. There is not a sufficient reason on the record as to why the limited data set should be expected to apply across the full range and for the untested combinations. Paragraph 12 of the declaration filed 03 Jun 2026 states that “a person of ordinary skill in the agricultural arts would readily understand that the efficacy of herbicide mixtures is unpredictable.” The examiner agrees with this in relation to the concept of unexpected results and maintains that the expected results cannot be predictably extended beyond the data demonstrated without sufficient reason. As the claims are broader than what is supported from the demonstrated results, the examiner maintains that the claims are obvious as the claims are not commensurate in scope with the data presented.
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 1, 6, 12-15, 48 and 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 9,637,505 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Yerkes et al. (US 8,841,233, published 23 Sep 2014).
The ‘505 patent claims in claims 1-25 a compound of Formula (I)
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and the variable groups as claimed read on the compounds of the instant claims.
Claim 26 of the ‘505 patent recites the compound of Formula (I) as part of an herbicidal composition comprising an agriculturally acceptable adjuvant or carrier. Claim 27 recites an additional herbicidal compound. Claims 28 and 29 recite a safener in the composition.
The ‘505 patent claims do not recite the addition of an HPPD inhibitor such as mesotrione in the weight ratios as recited or that the composition is an herbicidal concentrate (claim 15). These deficiencies are made up for in the teachings of Eckelbarger and Yerkes.
The teachings of Eckelbarger and Yerkes are described supra.
Based on the teachings of Eckelbarger and Yerkes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included mesotrione in the herbicidal composition of the claims of the ‘505 patent and to have formed the composition as an herbicidal concentrate. The same compound of Formula (I) of the ‘505 patent is known for use in herbicidal compositions in combination with other herbicides such as mesotrione, as taught by Eckelbarger. Regarding instant claim 14, the combination of the ‘505 patent and Eckelbarger do not require active ingredients in addition to a compound of Formula (I) and mesotrione. It is known that such compositions may be formed as concentrates, as taught by Eckelbarger. Thus, one of ordinary skill would have a reasonable expectation of success in forming the composition as the same compounds are taught as suitable in herbicidal compositions by Eckelbarger. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of mesotrione as taught by Yerkes render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, mesotrione is known to be useful at application rates such as 17.5, 35, 70 and 140 gai/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 140 gai/ha mesotrione results in a weight ratio of 35:140 (1:4), which renders obvious the rate of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and mesotrione may also be applied to various weed species at different rates, as taught by Yerkes, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 6, 12-15, 48 and 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 9,763,445 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Yerkes et al. (US 8,841,233, published 23 Sep 2014).
The ‘445 patent claims a safened herbicidal composition comprising a pyridine carboxylic acid herbicide of Formula (III)
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and a quinolinyloxyacetate safener. Claims 2 and 3 recite
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and
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which are identical to compounds of instant claims 1, 6 and 52. Claims 4-7 recite specific safeners and ratios of the compound of Formula (III) and the safener. Claim 7 recites an additional adjuvant. Claim 8 recites an additional pesticide.
The ‘445 patent do not recite the addition of an HPPD inhibitor such as mesotrione in the weight ratios as recited or that the composition is an herbicidal concentrate (claim 15). These deficiencies are made up for in the teachings of Eckelbarger and Yerkes.
The teachings of Eckelbarger and Yerkes are described supra.
Based on the teachings of Eckelbarger and Yerkes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included mesotrione in the herbicidal composition of the claims of the ‘445 patent and to have formed the composition as an herbicidal concentrate. The same pyridine carboxylic acid herbicide compound of the ‘445 patent is known for use in herbicidal compositions in combination with other herbicides such as mesotrione, as taught by Eckelbarger. Regarding instant claim 14, the combination of the ‘445 patent and Eckelbarger does not require active ingredients in addition to the pyridine carboxylic acid herbicide and mesotrione. It is known that such compositions may be formed as concentrates, as taught by Eckelbarger. Thus, one of ordinary skill would have a reasonable expectation of success in forming the composition as the same compounds are taught as suitable in herbicidal compositions by Eckelbarger. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of mesotrione as taught by Yerkes render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, mesotrione is known to be useful at application rates such as 17.5, 35, 70 and 140 gai/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 140 gai/ha mesotrione results in a weight ratio of 35:140 (1:4), which renders obvious the rate of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and mesotrione may also be applied to various weed species at different rates, as taught by Yerkes, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 6, 12-15, 48 and 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 9,526,244 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Yerkes et al. (US 8,841,233, published 23 Sep 2014).
The ‘244 patent claims a safened herbicidal composition comprising (a) a pyridine carboxylic acid herbicide of Formula (I)
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and (b) an azole carboxylate safener selected from fenchlorazole, isoxadifen, and mefenpyr. The pyridine carboxylic acid of claims 1-6 is renders obvious the compounds of instant claims 1, 6 and 52. Claims 7 recites ratios of (a) and (b) ranging from 65:1 to 1:5. Claim 8 recites an additional adjuvant. Claim 9 recites an additional pesticide.
The ‘244 patent claims do not recite the addition of an HPPD inhibitor such as mesotrione in the weight ratios as recited or that the composition is an herbicidal concentrate (claim 15). These deficiencies are made up for in the teachings of Eckelbarger and Yerkes.
The teachings of Eckelbarger and Yerkes are described supra.
Based on the teachings of Eckelbarger and Yerkes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included mesotrione in the herbicidal composition of the claims of the ‘244 patent and to have formed the composition as an herbicidal concentrate. The same pyridine carboxylic acid herbicide compound of the ‘244 patent is known for use in herbicidal compositions in combination with other herbicides such as mesotrione, as taught by Eckelbarger. Regarding instant claim 14, the combination of the ‘244 patent and Eckelbarger does not require active ingredients in addition to the pyridine carboxylic acid herbicide and mesotrione. It is known that such compositions may be formed as concentrates, as taught by Eckelbarger. Thus, one of ordinary skill would have a reasonable expectation of success in forming the composition as the same compounds are taught as suitable in herbicidal compositions by Eckelbarger. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of mesotrione as taught by Yerkes render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, mesotrione is known to be useful at application rates such as 17.5, 35, 70 and 140 gai/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 140 gai/ha mesotrione results in a weight ratio of 35:140 (1:4), which renders obvious the rate of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and mesotrione may also be applied to various weed species at different rates, as taught by Yerkes, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 6, 12-15, 48 and 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,455,836 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Yerkes et al. (US 8,841,233, published 23 Sep 2014).
The ‘836 patent claims a herbicidal composition comprising a pyridine carboxylic acid herbicide of
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or
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and a photosystem II inhibitor. The pyridine carboxyl acid compounds of claims 1-3 and 11-13 render obvious the pyridine carboxylic acid compound of the instant claims. Claims 4-6 require the photosystem II inhibitor is bromoxynil, isoproturon or metribuzin. Claim 7 recites an additional adjuvant. Claim 9 requires the pyridine carboxylic acid and the photosystem II inhibitor as the only active. Claim 10 recites the composition as an herbicidal concentrate.
The ‘836 patent claims do not recite the addition of an HPPD inhibitor such as mesotrione in the weight ratios as recited. These deficiencies are made up for in the teachings of Eckelbarger and Yerkes.
The teachings of Eckelbarger and Yerkes are described supra.
In addition to mesotrione, Eckelbarger teaches bromoxynil, isoproturon and metribuzin as suitable components in combination with the pyridine carboxylic herbicides ([0201]).
Based on the teachings of Eckelbarger and Yerkes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included mesotrione in the herbicidal composition of the claims of the ‘836 patent. The same pyridine carboxylic acid herbicide compound of the ‘836 patent is known for use in herbicidal compositions in combination with other herbicides such as mesotrione, as taught by Eckelbarger. Alternatively, it would have been obvious to have substituted the bromoxynil, isoproturon or metribuzin of the ‘836 patent claims with mesotrione as mesotrione, bromoxynil, isoproturon and metribuzin are all known as suitable in combination with the pyridine carboxylic acids. Regarding instant claim 14, the combination of the ‘836 patent and Eckelbarger do not require active ingredients in addition to the pyridine carboxylic acid herbicide and mesotrione and the substitution of mesotrione would remove the other active component. It is known that such compositions may be formed as concentrates, as taught by Eckelbarger. Thus, one of ordinary skill would have a reasonable expectation of success in forming the composition as the same compounds are taught as suitable in herbicidal compositions by Eckelbarger. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of mesotrione as taught by Yerkes render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, mesotrione is known to be useful at application rates such as 17.5, 35, 70 and 140 gai/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 140 gai/ha mesotrione results in a weight ratio of 35:140 (1:4), which renders obvious the rate of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and mesotrione may also be applied to various weed species at different rates, as taught by Yerkes, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 6, 12-15, 48 and 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10,448,638 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Yerkes et al. (US 8,841,233, published 23 Sep 2014).
The ‘638 patent claims a herbicidal composition comprising a pyridine carboxylic acid herbicide of
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or
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and an ALS inhibitor. The pyridine carboxyl acid compounds of claims 1-3 and 18-20 render obvious the pyridine carboxylic acid compound of the instant claims. Claims 4-13 and 21-25 require specific ALS inhibitors such as florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron and ratios of the component with the pyridine carboxylic acid herbicide. Claim 14 recites an additional adjuvant. Claim 15 recites an additional pesticide. Claim 16 recites the pyridine carboxylic acid the ALS inhibitor as the only actives. Claim 17 recites the composition as an herbicidal concentrate.
The ‘638 patent claims do not recite the addition of an HPPD inhibitor such as mesotrione in the weight ratios as recited. These deficiencies are made up for in the teachings of Eckelbarger and Yerkes.
The teachings of Eckelbarger and Yerkes are described supra.
In addition to mesotrione, Eckelbarger teaches florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron as suitable components in combination with the pyridine carboxylic herbicides ([0201]).
Based on the teachings of Eckelbarger and Yerkes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included mesotrione in the herbicidal composition of the claims of the ‘638 patent. The same pyridine carboxylic acid herbicide compound of the ‘638 patent is known for use in herbicidal compositions in combination with other herbicides such as mesotrione, as taught by Eckelbarger. Alternatively, it would have been obvious to have substituted the florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron of the ‘638 patent claims with mesotrione as mesotrione, florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron are all known as suitable in combination with the pyridine carboxylic acids. Regarding instant claim 14, the combination of the ‘638 patent and Eckelbarger do not require active ingredients in addition to the pyridine carboxylic acid herbicide and mesotrione and the substitution of mesotrione would remove the other active component. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of mesotrione as taught by Yerkes render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, mesotrione is known to be useful at application rates such as 17.5, 35, 70 and 140 gai/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 140 gai/ha mesotrione results in a weight ratio of 35:140 (1:4), which renders obvious the rate of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and mesotrione may also be applied to various weed species at different rates, as taught by Yerkes, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 6, 12-15, 48 and 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 9,521,847 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Yerkes et al. (US 8,841,233, published 23 Sep 2014).
The ‘847 patent claims an herbicidal composition comprising (a) a pyridine carboxylic acid herbicide of
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and (b) synthetic auxin herbicide or auxin transport inhibitors such as 2,4-D. The pyridine carboxyl acid compounds of claims 1-6 render obvious the pyridine carboxylic acid compound of the instant claims. Claims 7-10 recite specific ratios of the (a) and (b) components. Claims 11 and12 recite an additional adjuvant and safener. Claim 13 recites an additional pesticide. Claim 14 recites the pyridine carboxylic acid the synthetic auxin herbicide or auxin transport inhibitor as the only actives. Claim 15 recites the composition as an herbicidal concentrate.
The ‘847 patent claims do not recite the addition of an HPPD inhibitor such as mesotrione in the weight ratios as recited. These deficiencies are made up for in the teachings of Eckelbarger and Yerkes.
The teachings of Eckelbarger and Yerkes are described supra.
In addition to mesotrione, Eckelbarger teaches 2,4-D as a suitable component in combination with the pyridine carboxylic herbicides ([0201]).
Based on the teachings of Eckelbarger and Yerkes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included mesotrione in the herbicidal composition of the claims of the ‘847 patent. The same pyridine carboxylic acid herbicide compound of the ‘847 patent is known for use in herbicidal compositions in combination with other herbicides such as mesotrione, as taught by Eckelbarger. Alternatively, it would have been obvious to have substituted the 2,4-D of the ‘847 patent claims with mesotrione as mesotrione, florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron are all known as suitable in combination with the pyridine carboxylic acids. Regarding instant claim 14, the combination of the ‘847 patent and Eckelbarger do not require active ingredients in addition to the pyridine carboxylic acid herbicide and mesotrione and the substitution of mesotrione would remove the other active component. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of mesotrione as taught by Yerkes render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, mesotrione is known to be useful at application rates such as 17.5, 35, 70 and 140 gai/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 140 gai/ha mesotrione results in a weight ratio of 35:140 (1:4), which renders obvious the rate of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and mesotrione may also be applied to various weed species at different rates, as taught by Yerkes, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 6, 12-15, 48 and 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,231,451 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Yerkes et al. (US 8,841,233, published 23 Sep 2014).
The ‘451 patent claims an herbicidal composition comprising (a) a pyridine carboxylic acid herbicide of
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and a (b) synthetic auxin herbicide. The pyridine carboxyl acid compounds of claims 1-3 and 15-17 render obvious the pyridine carboxylic acid compound of the instant claims. Claims 4-9 recite the (b) component as picloram or a triclopyr compound specific ratios of the (a) and (b) components. Claims 10 and 11 recite an additional adjuvant and safener. Claim 12 recites an additional pesticide. Claim 13 recites the components (a) and (b) as the only actives. Claim 14 recites the composition as an herbicidal concentrate.
The ‘451 patent claims do not recite the specific pyridine carboxylic acid of instant claims 5 and 6 or the addition of an HPPD inhibitor such as mesotrione in the weight ratios as recited. These deficiencies are made up for in the teachings of Eckelbarger and Yerkes.
The teachings of Eckelbarger and Yerkes are described supra.
In addition to mesotrione, Eckelbarger teaches picloram and triclopyr esters as suitable components in combination with the pyridine carboxylic herbicides ([0201]).
Based on the teachings of Eckelbarger and Yerkes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included mesotrione in the herbicidal composition of the claims of the ‘451 patent. The same pyridine carboxylic acid herbicide compound of the ‘451 patent is known for use in herbicidal compositions in combination with other herbicides such as mesotrione, as taught by Eckelbarger. Alternatively, it would have been obvious to have substituted the picloram and triclopyr esters of the ‘451 patent claims with mesotrione as mesotrione, picloram and triclopyr esters are all known as suitable in combination with the pyridine carboxylic acids. Additionally, it would have been obvious to have substituted a pyridine carboxylic acid such as in instant claim 6 and 52 as these similar compounds are taught for herbicidal compositions by Eckelbarger. Regarding instant claim 14, the combination of the ‘451 patent and Eckelbarger do not require active ingredients in addition to the pyridine carboxylic acid herbicide and mesotrione and the substitution of mesotrione would remove the other active component. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of mesotrione as taught by Yerkes render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, mesotrione is known to be useful at application rates such as 17.5, 35, 70 and 140 gai/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 140 gai/ha mesotrione results in a weight ratio of 35:140 (1:4), which renders obvious the rate of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and mesotrione may also be applied to various weed species at different rates, as taught by Yerkes, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Response to Arguments
Applicant's arguments filed 15 Jul 2026 have been fully considered but they are not persuasive. The applicant argues that the instant claims are non-obvious due to unexpected results of the herbicide compounds in combination with HPPD inhibitors against weeds. This argument has been addressed above and the same reasoning applies here as the examiner is not convinced by this argument as the results are not commensurate in scope with the claims for the reasons noted above.
New Grounds of Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 48 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 48 depends from claim 7, however, claim 7 is canceled and it is not clear what the metes and bounds of claim 48 are.
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 extension fee 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 date of this final action.
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/E.C.M./Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
