DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Receipt of Remarks/Amendments filed on 11/25/2025 is acknowledged. Claims 1, 5 and 9-18 are currently pending. Claims 14, 16 and 18 have been withdrawn. Accordingly, claims 1, 5, 9-13, 15 and 17 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Withdrawn Objections/Rejections
Applicant’s remarks/amendments, filed 11/25/2025, with respect to the 112(b) rejection of claims 11-13 and 17 have been fully considered and are persuasive. The 112(b) rejection of claims 11-13 and 17 has been withdrawn due to the claim amendments.
New/Maintained Claim Objection(s) / Rejection(s)
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 15 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 15 recites components of the mixture are applied simultaneously, either jointly or separately, or in succession. It is unclear how the components of the mixture can be applied separately or in succession because the mixture is made up of compound I, II, and III and when the mixture is applied, all the components are applied together at the same time because they are all included in the mixture.
Response to Arguments
Applicant argued that claim 15 is clear and the recitation in claim 15 is defined at page 14 and 15 of the specification, and thus its scope is understood by one skilled in the art.
In response, the examiner argues that nowhere on page 14 and 15 of the specification or anywhere else in the specification is there a definition of what a mixture is. The Science Notes reference (https://web.archive.org/web/20230129051107/https://sciencenotes.org/what-is-a-mixture-in-chemistry-definition-and-examples/) states that mixture is a matter consisting of two or more constituents that are not chemically bonded to one another. In contrast, a pure substance consists of only one kind of matter that has a constant chemical composition. The instant specification do not provide any clear definition of what a mixture is and the known definition of a mixture in the art suggests that a mixture is a matter consisting of two or more constituents. Therefore, It remains unclear how the components of the mixture can be applied separately or in succession because the mixture consists of compound I, II, and III and when the mixture is applied, all the components would be applied together at the same time because they are all included in the mixture. Thus, the 112(b) rejection of claim 15 is maintained.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1, 5, 9-13, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Jhala (American Journal of Plant Sciences, 2014, 5, 2289-2297) in view of Minnesota (Minnesota Department of Agriculture, Isoxaflutole, New Active Ingredient Review, May 2015) and Young (Weed Technology, 1999, volume 13, 471-477).
Jhala throughout the reference teaches control of glyphosate resistant giant ragweed (undesirable vegetation) with herbicides in glyphosate resistant soybean (herbicide tolerant soybean). The combination of saflufenacil plus imazethapyr herbicide treatment provides 89-99% control of giant ragweed. (Abstract; Title). Jhala teaches field experiments were conducted at David City, NE in 2012 and 2013 in a grower’s field infested with glyphosate resistant giant ragweed (Materials and Methods). The instant specification state the term "locus", as used herein, means the area in which the vegetation or plants are growing or will grow, typically a field (page 14, line 33-34). Therefore, Jhala teaches application to a locus where undesirable vegetation is present or expected to be present. Jhala also teaches application of saflufenacil and imazethapyr before planting of the crop (Introduction). Jhala teaches herbicide treatment was applied on April 23, 2012 and May 8, 2013, and on May 12, 2012 and May 24, 2013, and glyphosate resistant soybean was planted on May 7 and May 24 in 2012 and 2013 (Materials and Methods). Thus, Jhala teaches application of the herbicide combination prior to emergence of the crop and prior to planting of the crop. Jhala teaches herbicides were applied with a CO2 pressurized backpack sprayer, which reads on a composition comprising solid carrier and the mixture of herbicides. Jhala also teaches saflufenacil and imazethapyr with methylated seed oil (which reads on liquid carrier) applied at a rate of 95 g-ae or ai/ha (i.e. 1:1 ratio of saflufenacil and imazethapyr and simultaneous application). (see: Material and Methods; Tables 1-3).
The teachings of Jhala have been set forth above.
Jhala does not teach the herbicide combination further includes isoxaflutole (compound I) and a weight ratio of compound I to compound II and III. However, Minnesota and Young cure this deficiency.
Minnesota teaches isoxaflutole is a selective herbicide approved for control of certain broadleaf and grass weeds in field corn and soybean. Isoxaflutole is effective against weeds resistant to other herbicide classes such as glyphosate. (see pages 1-2).
Young teaches weed control from pre-emergence applications of RPA 201772 (isoxaflutole) applied at 105 g ai/ha. Young teaches in order to achieve consistent control of a broad spectrum of weed species, isoxaflutole must be combined with other herbicides. (see: Abstract).
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 modified Jhala to incorporate the teachings of Minnesota and Young and further include isoxaflutole in combination with saflufenacil and imazethapyr. As discussed supra, Jhala teaches control of glyphosate resistant giant ragweed with saflufenacil plus imazethapyr herbicide treatment in glyphosate resistant soybean. Minnesota also teaches isoxaflutole for control of certain broadleaf and grass weeds in field corn and soybean and that isoxaflutole is effective against weeds resistant to other herbicide classes such as glyphosate. Therefore, it would have been obvious to one skilled in the art to combine isoxaflutole with saflufenacil and imazethapyr because all are taught to be useful for control of glyphosate resistant weed in soybean treatment. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. Moreover, Young teaches that in order to achieve consistent control of a broad spectrum of weed species, isoxaflutole must be combined with other herbicides. Therefore, it would have been obvious to one skilled in the art to combine isoxaflutole with the other herbicides taught by Jhala.
With respect to the weight ratio recited in the instant claims, as discussed supra, Jhala teaches saflufenacil and imazethapyr applied at a rate of 95 g-ae or ai/ha (i.e. 1:1 ratio of saflufenacil and imazethapyr). Young teaches weed control from pre-emergence applications of RPA 201772 (isoxaflutole) applied at 105 g ai/ha. 105 g of isoxaflutole and 95 g of saflufenacil and imazethapyr read on the weight ratios recited in the instant claims. It would have been obvious to one of ordinary skilled in the art at the time of the instant filing to start with known useful ratios of the herbicides to be used in applicants composition and to optimize the ratios of claimed combination starting with the known disclosed useful ratios, especially since one of ordinary skill in the art would likely start with a 1:1 ratio of I to II and 1:1 ratio of I to III because a 1:1 ratio is the easiest ratio to start with as it uses equal weights of all actives and as such it would have been obvious to one of ordinary skill in the art to start with the easiest ratio and to optimize the ratios of the active agents from there in order to provide the most effective weight ratios of the claimed active agents (I to II and I to III as claimed). “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05.
From the combined teaching of the cited references, 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.
Response to Arguments
Applicant argued that isoxaflutole was selected as a combination partner based on information gleaned from the present application which is impermissible hindsight. One skilled in the art seeking to improve the efficacy of saflufenacil and imazethapyr in soybean would consult authoritative guidelines and approved pre-mix herbicides for soybean. Applicant argued that the evidence provided in the attached Exhibit A and B publications shows that isoxaflutole is not listed as a component in any approved pre-mix herbicide for soybean. Therefore, the skilled person would not be motivated to select isoxaflutole in combination with saflufenacil and imazethapyr. It was argued that Minnesota discusses isoxaflutole’s approval status and environmental profile but does not suggest its use in combination with other herbicides for soybean, and Young evaluates isoxaflutole’s efficacy and application rates, but only in the context of corn, not soybean, and not in combination with saflufenacil or imazethapyr.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As discussed supra, Jhala teaches control of glyphosate resistant giant ragweed with saflufenacil plus imazethapyr herbicide treatment in glyphosate resistant soybean. Minnesota also teaches isoxaflutole for control of certain broadleaf and grass weeds in field corn and soybean and that isoxaflutole is effective against weeds resistant to other herbicide classes such as glyphosate. Therefore, it would have been obvious to one skilled in the art to combine isoxaflutole with saflufenacil and imazethapyr because all are taught to be useful for control of glyphosate resistant weed in soybean treatment. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. Further, regarding Young, even if Young does not teach specifically soybean crop, Young teaches that in order to achieve consistent control of a broad spectrum of weed species, isoxaflutole must be combined with other herbicides. Therefore, it would have been obvious to one skilled in the art to combine isoxaflutole with the other herbicides taught by Jhala because Young teaches that to achieve consistent control of a broad spectrum of weed species, isoxaflutole must be combined with other herbicides. Regarding applicant’s arguments that the attached Exhibit A and B publications do not teach or list isoxaflutole as a component in any approved pre-mix herbicide for soybean, the examiner argues that while the documents submitted by the applicant may not list isoxaflutole, the combination of Jhala, Minnesota and Young provide the motivation to include isoxaflutole in combination with saflufenacil and imazethapyr, as discussed in detail above. Thus, absence of the isoxaflutole herbicide in the Exhibit A and B publications does not mean that one skilled in the art would not have combined isoxaflutole with the other herbicides, especially because the Minnesota and Young reference provide the motivation to do so.
Applicant again argued the claimed herbicidal mixture having synergy which is demonstrated in the specification. Applicant pointed to results on page 26 of instant specification and argued the results shown demonstrate an unexpected synergistic action of the claimed mixture of herbicides. Applicant argued that the experimental evidence on file is commensurate in scope with amended claim 1 and provides robust support for the claimed synergistic herbicidal activity.
In response, while applicant have demonstrated synergistic results for the combination wherein the weight ratio of isoxaflutole (I) to saflufenacil (II) is 3.125 : 1 and the weight ratio of isoxaflutole (I) to imazethapyr (III) is 3.125 : 2.5 (1.25 : 1). These results are not commensurate in scope with applicant’s claims which claim a weight ratio of compound I to compound II is from 5:1 to 1:1 and a weight ratio of compound I to compound III is from 5:1 to 1:1. The results in the specification show synergy for wherein compound I has a higher weight amount than compound II and compound III. However, the claimed weight ratio is broader and encompasses wherein compound I to compound II or III weight ratio is 1:1, and applicants results do not show that synergy would occur when the compound I to compound II or III weight ratio is 1:1 and when the compound II to compound III weight ratio is also 1:1 because the amended claims encompass these weight ratios and the data/results provided by applicant do not show that if the weight ratio and amounts of the compounds I, II and III are the same (i.e., 1:1:1 weight ratio), then synergy would also occur at this weight ratio. The results currently provided by the applicant do not appear to be commensurate in scope with applicant’s claims which claim a weight ratio of compound I to compound II is from 5:1 to 1:1 and a weight ratio of compound I to compound III is from 5:1 to 1:1. It is unclear whether Isoxaflutole is required in higher amounts than saflufenacil and imazethapyr to provide synergy (as shown in the results provided by the applicant) or whether isoxaflutole, saflufenacil and imazethapyr in the same amounts (weight ratio of 1:1:1) would still provide a synergistic effect.
Conclusion
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.
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/A.S/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616