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 .
This Office Action is in response to Applicant’s amendment and supplemental amendment filed April 23, 2025 and August 20, 2025, respectively. Claims 18-24 and 27-36 are pending in the application. Claims 18, 20, 21, 29, and 30 have been amended. Claims 18-24 and 27-36 will be examined.
Information Disclosure Statement
Receipt of Information Disclosure Statement filed April 23, 2025 is acknowledged.
Status of the Claims
The objection of claim 30 because of informalities is withdrawn due to Applicant’s amendment of the claim.
The rejection of claims 20, 21, 22, 29 and 30 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to Applicant’s amendment of the claims.
The rejection of claims 18, 19, 20, 21, 22, 28, and 35 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Ovalle et al. (US 2013/0143739) is withdrawn due to Applicant’s amendment of the claims.
The rejection of claims 18-23, 27, 28, 29, 30, 35, and 36 under 35 U.S.C. 103 as being unpatentable over Ovalle et al. (US 2013/0143739) in view of Balko et al. (US 7,314,849) is withdrawn due to Applicant’s amendment of the claims.
The rejection of claim 24 under 35 U.S.C. 103 as being unpatentable over Ovalle et al. (US 2013/0143739) in view of Balko et al. (US 7,314,849) as applied to claims 18-23, 27, 28, 29, 30, 35, and 36 above, and further in view of Yerkes et al. (US 2012/0190551) is withdrawn due to Applicant’s amendment of the claims
The rejection of claims 31-34 under 35 U.S.C. 103 as being unpatentable over Ovalle et al. (US 2013/0143739) in view of Balko et al. (US 7,314,849) as applied to claims 18-23, 27, 28, 29, 30, 35, and 36 above, and further in view of the Wilson Publication (Wilson et al., Weed Technology, 2008), the Buhler Publication (Buhler et al., Biomass and Bioenergy, 1998), and the Hanson Publication (Hanson et al., Weed Technology, 2008) is withdrawn due to Applicant’s amendment of the claims.
New Rejections Necessitated by Amendment filed August 20, 2025
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.
Claims 18-24 and 27-36 are 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 18 recites the limitation "perennial crop" in line 8. There is insufficient antecedent basis for this limitation in the claim. Claim 18 has been amended to recite “tree and fruit orchard crops” in lines 2 and 3. Therefore, there is insufficient antecedent basis for “perennial crop”.
Claims 18-24 and 27-36 depend from claim 18 and therefore are also rejected.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 18-23, 27, 28, 29, 30, 35, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Ovalle et al. (US 2013/0143739) in view of Rosinger et al. (US 2010/0137137). Ovalle et al. and Rosinger et al. cited by Applicant on the IDS filed 2/2/2022.
Applicant’s Invention
Applicant claims a method for the selective pre-emergence and post-emergence control of undesirable vegetation in tree and fruit orchard crops which comprises applying a herbicidally effective amount of halauxifen (4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or an agriculturally acceptable ester or salt of either to the unwanted vegetation or the locus thereof or to the area where control of the undesirable vegetation is desired with foliar exposure of the perennial crop being avoided, wherein the halauxifen or an agriculturally acceptable ester or salt thereof is applied at a rate of 2 to 35 g ae/ha or wherein the 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or an agriculturally acceptable ester or salt thereof is applied at a rate of 5 to 50 g ai/ha.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Regarding claims 18, 19, and 35, Ovalle et al. teach herbicidal compositions comprising and methods of controlling desirable vegetation utilizing 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid or an agriculturally acceptable ester, amide (halauxifen), or salt thereof and (b) fluroxypyr or an agriculturally acceptable ester, amide, or salt thereof (Abstract, page 1, paragraph 9).
Regarding claim 18, Ovalle et al. teach control of weeds in perennial plantation crops (page 2, paragraph 12).
Regarding claims 18, 19, 20, 21, and 22, Ovalle et al. teach the compound of formula (I) or an ester, amide or salt thereof is applied at a rate from about 2 g ae/ha to about 35 g ae/ha. In some embodiments, the compound of formula (I) is applied at a rate of less than 10 g ae/ha (page 4, paragraph 26).
Regarding claim 20, Ovalle et al. teach the methyl ester is described as halauxifen-methyl or XDE-729 (page 1, paragraph 7).
Regarding claim 27, Ovalle et al. teach the method of controlling undesirable vegetation wherein the composition is applied pre-emergently (page 9, claim 18).
Regarding claim 28, Ovalle et al. teach the method of controlling undesirable vegetation wherein the composition is applied post-emergently (page 9, claim 19).
Regarding claim 30, Ovalle et al. teach the undesirable vegetation is Setaria faberi Herrm. (giant foxtail, SETFA), Amaranthus species (pigweeds and amaranths, AMASS), Chenopodium album L. (common lambsquarters, CHEAL), Ipomoea hederacea (L.) Jacq. (ivyleaf morningglory, IPOHE), Ipomoea lacunosa L. (white morningglory, IPOLA) (page 3, paragraph 17). Ovalle et al. teach the combination of (a) the compound of formula I or an agriculturally acceptable ester, amide, or salt thereof and (b) fluroxypyr or an agriculturally acceptable ester, amide, or salt thereof, are used to control redroot pigweed (Amaranthus retroflexus; AMARE), common chickweed (Stellaria media; STEME) (page 3, paragraph 20).
Regarding claim 35, Ovalle et al. teach the methods can be applied in conjunction with one or more other herbicides, including clopyralid, glufosinate-ammonium, glyphosate, indaziflam, and saflufenacil (pages 4-5 paragraph 29).
Regarding claim 36, Ovalle et al. teach the compositions and methods may be used in controlling undesirable vegetation in crops possessing multiple or stacked traits conferring tolerance to multiple chemistries and/or inhibitors of multiple modes of action (page 2, paragraph 13). Ovalle et al. further teach exemplary resistant or tolerant weeds include, but are not limited to, biotypes with resistance or tolerance to multiple herbicides, multiple chemical classes, and multiple herbicide modes-of-action (page 33, paragraph 21).
Orville et al. also teach that herbicidal activity by the compounds when they are applied directly to the plant or to the locus of the plant at any stage of growth. The effect observed depends upon the plant species to be controlled, the stage of growth of the plant, the application parameters, the environmental conditions at the time of use (page 2, paragraph 11).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Ovalle et al. do not specifically disclose examples wherein the crop is tree and fruit orchard crops, the herbicide is 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid or agriculturally acceptable ester or salt thereof of claim 23 or the specifically claimed tree and fruit orchard crops of claim 29. It is for this reason Rosinger et al. is added as a secondary reference.
Regarding claims 18, 19, and 20, Rosinger et al. teach a composition comprising (A) one or more compounds of the formula (I) or salts thereof and (B) one or more safeners (Abstract). Rosinger et al. teach the compounds of formula (I) include 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid (compound I-370), which is halauxifen, and methyl 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylate (compound I-312), which is halauxifen-methyl (page 8, paragraph 364).
Regarding claim 23, Rosinger et al. teach 4-amino-3-chloro-6-(4-chloro-2-fluoro-5-methoxyphenyl)-5-fluoropyridine-2-carboxylic acid (page 10, paragraph 445).
Regarding claims 1 and 29, Rosinger et al. teach the herbicides of formula (I) are suitable for controlling harmful plants in economically important arable crops such as permanent crops and plantation crops, such as stone fruit, citrus fruits, and nut plantations (page 11, paragraph 461; page 65, paragraph 568).
Regarding claims 1, 27 and 28, Rosinger et al. teach the application rates of the herbicides of formula (I) is from 0.01 g to 1000 g of ai/ha of the herbicides, in the pre-emergence and post-emergence method, a relatively broad spectrum of harmful plants is controlled. For the combinations, the application rates are generally lower, in the range of 10 to 400 g of ai/ha (page 11, paragraph 460).
Rosinger et al. teach a method for controlling unwanted plants in crops of plant which method comprises applying the components (A) and (B) of the herbicide/safener combination to the plants (for example harmful plants, such as monocotyledonous or dicotyledonous weeds or undesirable plants) (page 64, paragraph 565). Rosinger et al. teach the safener and herbicide are applied to the area on which the plants grow (for example the area under cultivation).
Regarding claim 35, Rosinger et al. teach combination partners include glyphosate, glufosinate-ammonium, idaziflam, isoxaben, clopyralid, fluoroxypyr, flumioxazin, pendimethalin, or saflufenacil (pages 67-68, paragraph 610).
Rosinger et al. teach the active ingredients are applied to the area under the cultivation (arable soil) (page 67, paragraph 607).
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Ovalle et al. and Rosinger et al. and use halauxifen or halauxifen-methyl to control undesirable vegetation in tree and fruit orchards, specifically those claimed in claim 29. Ovalle et al. teach that halauxifen and halauxifen-methyl control weeds in perennial plantation crops. Rosinger et al. teach the herbicides of formula (I), including halauxifen and halauxifen-methyl, are suitable for controlling harmful plants in economically important arable crops such as permanent crops and plantation crops, such as stone fruit, citrus fruits, and nut plantations. As such, it would have been obvious to one of ordinary skill in the art to use halauxifen and halauxifen-methyl in perennial plantations crops, such as stone fruit, citrus fruits, and nut plantations, with a reasonable expectation of success.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Ovalle et al. and Rosinger et al. and use 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid in the methods of controlling tree and fruit orchard crops. Ovalle et al. teach that halauxifen and halauxifen-methyl and fluroxypyr control weeds in perennial pastures and tree crops. One of ordinary skill in the art would have been motivated to substitute 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid as the herbicide in the methods taught by Ovalle et al. because Rosinger et al. teach that halauxifen and 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid provide control of various weed species, including control of Amaranthus and Chenopodium. Therefore, it would have been prima facie obvious to substitute one herbicidal 4-aminopicolinic acid herbicide, such as 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid for another 4-aminopicolinic acid herbicide, halauxifen or halauxifen-methyl since the prior art establishes halauxifen, halauxifen-methyl and 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid are functional equivalents.
Therefore, the claimed 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’s arguments with respect to the rejections of claims 18-23, 27, 28, 29, 30, 35, and 36 under 35 U.S.C 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made as indicated hereinabove. Applicant argues that Ovalle is silent regarding the use of halauxifen, 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid, or an agriculturally acceptable ester or salt of either, on tree and fruit orchard crops. In response to Applicant’s argument, based on the new rejection of record Ovalle et al. teach that halauxifen and halauxifen-methyl r control weeds in perennial plantation crops. Rosinger et al. teach the herbicides of formula (I), including halauxifen, are suitable for controlling harmful plants in economically important arable crops such as permanent crops and plantation crops, such as stone fruit, citrus fruits, and nut plantations. As such, it would have been obvious to one of ordinary skill in the art to use halauxifen, halauxifen-methyl and 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid in perennial plantations crops taught by Rosinger et al., such as stone fruit, citrus fruits, and nut plantations, with a reasonable expectation of success.
Applicant argues that a person of ordinary skill in the art would not be persuaded by the disclosures of Ovalle that auxin herbicides, such as halauxifen, 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid, or an agriculturally acceptable ester or salt of either can be safely used to control undesirable vegetation near tree and fruit orchard crops, in the absence of experimental data demonstrating such safety. Applicant provides information from 5 publications disclosing that auxin herbicides are harmful to several tree species, including sweet cherry trees, fruit trees, and pecan trees. In response to Applicant’s argument, the publications demonstrate that other auxin herbicides, particularly 2,4-D, MCPA, dicamba, and picloram, are harmful to different fruit trees, such as sweet cherry trees and pecan trees. While these articles provide a background to establish that one of ordinary skill may not choose an auxin herbicide to control weeds in fruit crops, the information is not compared to the closest prior art of record, Ovalle et al. In addition, Ovalle et al. and the new secondary reference, Rosinger et al. teach that halauxifen and halauxifen methyl are used in perennial plantation crops. Wherein Rosinger et al. teach that plantation crops include stone fruit, citrus fruits, and nut plantations. As such, it would have been obvious to one of ordinary skill in the art to use halauxifen and halauxifen methyl in tree and fruit orchard crops based on the prior art of record.
Applicant argues in contrast to the silence of Ovalle, Applicant submits the attached Declaration of Byron Sleugh that provides detailed information and data from experiments conducted on various fruit and nut trees, testing the potential harm to these trees when applying halauxifen-methyl around these trees over a three-year period. These arguments will be address in the Response to the Declaration hereinbelow.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Ovalle et al. (US 2013/0143739) in view of Rosinger et al. (US 2010/0137137) as applied to claims 18-23, 27, 28, 29, 30, 35, and 36 above, and further in view of Yerkes et al. (US 2012/0190551). Ovalle et al. and Rosinger et al. cited by Applicant on the IDS filed 2/2/2022.
Applicant’s Invention
Applicant claims a method for the selective pre-emergence and post-emergence control of undesirable vegetation in tree and fruit orchard crops which comprises applying a herbicidally effective amount of halauxifen (4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or an agriculturally acceptable ester or salt of either to the unwanted vegetation or the locus thereof or to the area where control of the undesirable vegetation is desired with foliar exposure of the perennial crop being avoided, wherein the halauxifen or an agriculturally acceptable ester or salt thereof is applied at a rate of 2 to 35 g ae/ha or wherein the 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or an agriculturally acceptable ester or salt thereof is applied at a rate of 5 to 50 g ai/ha.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Ovalle et al. and Rosinger et al. with respect to the 35 U.S.C. 103(a) rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Ovalle et al. and Rosinger et al. do not specifically disclose the herbicide is benzyl 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3methoxyphenyl)pyridine-2-carboxylic acid. It is for this reason Yerkes et al. is added as a secondary reference.
Yerkes et al. teach arylalkyl esters of 4-aminopicolinic acids and 6-amino-4-pyrimidinecarboxylates are herbicides for control of weeds especially those species common in pasture management programs (Abstract). Yerkes et al. teach arylalkyl esters of the present invention demonstrate greater efficacy than the known esters, especially against weeds prominent in pasture management programs (page 2, paragraph 19). Yerkes et al. teach the preparation of benzyl 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-5-fluoropicolinate (page 5, paragraph 44). Yerkes et al. teach the compounds are effective against Stellaria media (Chickweed) and Ipomoea hederacea (Morningglory, ivyleaf) (page 18, example 4).
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Ovalle et al., Rosinger et al., and Yerkes et al. and use benzyl 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid in the methods of controlling perennial crops. Ovalle et al. teach that halauxifen and halauxifen-methyl control weeds in perennial plantation crops. One of ordinary skill in the art would have been motivated to substitute benzyl 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid as the herbicide in the methods taught by Ovalle et al. because Rosinger et al. teach that halauxifen and 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid provide control of various weed species, including control of Amaranthus and Chenopodium. Benzyl 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid is an arylalkyl ester of 4-aminopicolinic acids and is the same compound 1 prepared by Yerkes et al. Yerkes et al. teach that the arylalkyl esters demonstrate greater efficacy than the known esters, especially against weeds prominent in pasture management programs. Therefore, it would have been prima facie obvious to substitute one 4-aminopicolinic acid herbicide, such as benzyl 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid for another 4-aminopicolinic acid herbicide, such as halauxifen or 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid, with a reasonable expectation of success since the prior art establishes the arylalkyl esters, such as benzyl 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2-carboxylic acid demonstrate greater efficacy against weeds prominent, including the same weeds controlled by halauxifen and halauxifen-methyl.
Therefore, the claimed 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’s arguments with respect to the rejections of claims 18-23, 24, 27, 28, 29, 30, 35, and 36 under 35 U.S.C 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made as indicated hereinabove. Applicant argues that Yerkes is silent on the use of these 4-aminopicolinic acid herbicides on tree and fruit orchard crops. Yerkes provides no working examples of herbicide use on or near tree and fruit orchard crops. In response to Applicant’s arguments, Yerkes et al. was added to provide a motivation to use benzyl 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3methoxyphenyl)pyridine-2-carboxylic acid. Ovalle et al., as modified by Rosinger et al., teach the use of the 4-aminopicolinic acid herbicides on tree and fruit orchard crops.
Claims 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Ovalle et al. (US 2013/0143739) in view of Rosinger et al. (US 2010/0137137) as applied to claims 18-23, 27, 28, 29, 30, 35, and 36 above, and further in view of the Wilson Publication (Wilson et al., Weed Technology, 2008), the Buhler Publication (Buhler et al., Biomass and Bioenergy, 1998), and the Hanson Publication (Hanson et al., Weed Technology, 2008). Ovalle et al. and Rosinger et al. cited by Applicant on the IDS filed 2/2/2022.
Applicant’s Invention
Applicant claims a method for the selective pre-emergence and post-emergence control of undesirable vegetation in tree and fruit orchard crops which comprises applying a herbicidally effective amount of halauxifen (4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or an agriculturally acceptable ester or salt of either to the unwanted vegetation or the locus thereof or to the area where control of the undesirable vegetation is desired with foliar exposure of the perennial crop being avoided, wherein the halauxifen or an agriculturally acceptable ester or salt thereof is applied at a rate of 2 to 35 g ae/ha or wherein the 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or an agriculturally acceptable ester or salt thereof is applied at a rate of 5 to 50 g ai/ha.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Ovalle et al. and Rosinger et al. with respect to the 35 U.S.C. 103(a) rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Ovalle et al. and Rosinger et al. do not specifically disclose the herbicide is applied in a dormant application when perennial crops are dormant but winter annual weeds are actively growing, as claimed in claim 31, the herbicide is applied in a spring or summer application when both perennial crops and weeds are actively growing, as claimed in claim 32, the herbicide is applied in a dormant application when perennial crops are dormant but winter annual weeds have not germinated, as claimed in claim 33, or the herbicide is applied under the perennial crops, with foliar exposure of the perennial crops being avoided, as claimed in claim 34. It is for this reason the Wilson Publication, the Buhler Publication, and the Hanson Publication are added as secondary references.
Regarding claim 31, Wilson et al. teach mixed stands of alfalfa and orchardgrass are typically less susceptible to weed invasion compared with pure alfalfa, but weeds can become established during stand establishment and crop dormancy (page 30, col. 1, paragraph 1). Wilson et al. teach in general, fall and spring applications of metribuzin caused less injury and height reduction to orchardgrass than hexazinone at similar rates (page 31, Results and Discussion, paragraph 1). With regard to crop safety of common POST herbicide treatments for winter weed control in alfalfa, imazethapyr and metribuzin were safe for both alfalfa and orchardgrass (page 32, col. 1, first full paragraph). Fall applied metribuzin gave the best combination of crop safety and weed control for winter annual weed management in mixed alfalfa-orchardgrass (page 32, col 2, first full paragraph).
Buhler et al. teach methods to identify optimum sampling strategies and to explore the relation between sampling optima and weed management effectiveness (page 386, col. 1, Introduction, paragraph 1). Buhler et al. teach hybrid poplars are typically planted on tilled or recently tilled agricultural land (page 386, col. 2, 2.2 Site preparation, paragraph 1). Buhler et al. teach effective weed management requires the integration of techniques to anticipate and manage problems. Central to any integrated management strategy will be efficient estimation of crop development on different sites and at different times during the year (page 387, 2.6 Weed competition and tree growth and survival: a method to assess weed control paragraph 1-page 388, line 1). Buhler et al. teach frequency of machinal cultivation is dependent on tree growth with the consequent shading of weeds, weed seed loads in the soil, and effectiveness of pre-emergent herbicides applied during the tree dormant seasons (page 387, col. 2, 1st paragraph).
Regarding claim 32, Buhler et al. teach herbicides applied after crop and weed emergence can also be used to reduce weed competition in perennial warm-season grass seedlings. Summer annual control broadleaf weeds are relatively easy to control with postemergence herbicides (spring or summer application when both perennial crops and weeds are actively growing).
Regarding claim 33, Buhler et al. teach linuron is applied to unfrozen soil during the late fall or early spring when trees are dormant. Sulfometuron shows promise in dormant season application (perennial crops are dormant, but winter weeds have not germinated) (page 387, col. 2, paragraph 2).
Regarding claim 34, Hanson et al. teach PRE and POST-directed application of several labeled and unlabeled materials were applied in a band over seeded peach rootstock or applied after emergence with a drop-nozzle spray boom (Abstract). Hanson et al. teach following tree emergence in the spring; the POST-directed treatments were applied in water using a drop-nozzle boom equipped to spray a band on either side of the tree row. The nozzles were arranged so that the spray pattern was 46 cm wide on each side of the tree row and the bands met at the base of the tree to minimize foliar herbicide exposure (applied under perennial crops, with foliar exposure of the perennial crops being avoided).
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Ovalle et al., Rosinger et al., Wilson Publication, Buhler Publication and Hanson Publication and apply halauxifen or halauxifen-methyl at any of the application timings claimed in claims 31-34 as a matter of experimentation and optimization to determine the best time to apply halauxifen or halauxifen-methyl to the perennial crops. Orville et al. and Rosinger et al. teach halauxifen are applied pre-emergently or post-emergently to perennial crops. Orville et al. also teach that herbicidal activity by the compounds when they are applied directly to the plant or to the locus of the plant at any stage of growth. The effect observed depends upon the plant species to be controlled, the stage of growth of the plant, the application parameters, the environmental conditions at the time of use. The Wilson Publication, the Buhler Publication, and the Hanson Publication provide guidance to the skilled artisan for the application of various other herbicides that are used pre- and post-emergently for weed control in various perennial crops. Buhler et al. specifically teach that effective weed management requires the integration of techniques to anticipate and manage problems. Central to any integrated management strategy will be efficient estimation of crop development on different sites and at different times during the year. As such, the skilled artisan would have been motivated to try the application of halauxifen in various methods including those taught by Wilson et al., i.e. while alfalfa-orchardgrass are dormant and winter weeds are growing, those taught by Buhler et al., i.e. application after crop and weed emergence to reduce weed competition in perennial warm-season grass seedlings or application during the late fall or early spring when trees are dormant and winter weeds have not grown or those taught by Hanson et al., i.e. on each side of the peach tree row wherein the bands met at the base of the tree to minimize foliar herbicide exposure. As such, the skilled artisan would have been motivated to use various application methods and timings with a reasonable expectation of success because this is a specific teaching in the prior art and a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007).
Therefore, the claimed 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’s arguments with respect to the rejections of claims 18-23, 24, 27, 28, 29, 30-36 under 35 U.S.C 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made as indicated hereinabove. Applicant argues that Wilson, Buhler, and Hanson either individually or collectively, do not cure these limitations. In response to Applicant’s argument, Wilson, Buhler, and Hanson were added to provide a motivation that the herbicide is applied in a dormant application when perennial crops are dormant but winter annual weeds are actively growing, as claimed in claim 31, the herbicide is applied in a spring or summer application when both perennial crops and weeds are actively growing, as claimed in claim 32, the herbicide is applied in a dormant application when perennial crops are dormant but winter annual weeds have not germinated, as claimed in claim 33, or the herbicide is applied under the perennial crops, with foliar exposure of the perennial crops being avoided, as claimed in claim 34. Orville et al. and Rosinger et al. teach halauxifen are applied pre-emergently or post-emergently to perennial crops. Orville et al. also teach that herbicidal activity by the compounds when they are applied directly to the plant or to the locus of the plant at any stage of growth. The effect observed depends upon the plant species to be controlled, the stage of growth of the plant, the application parameters, the environmental conditions at the time of use. The Wilson Publication, the Buhler Publication, and the Hanson Publication provide guidance to the skilled artisan for the application of various other herbicides that are used pre- and post-emergently for weed control in various perennial crops. The skilled artisan would have been motivated to use various application methods and timings, as taught hereinabove, with a reasonable expectation of success because this is a specific teaching in the prior art and a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Response to Declaration
The Declaration under 37 CFR 1.132 filed April 23, 2025 is insufficient to overcome the rejection of claims 18-24 and 27-36 as set forth in the Office action because: the data is not commensurate in scope with the claimed invention. The data provided in Tables 1-5 compares the safety of halauxifen-methyl + glyphosate and glyphosate alone. The data does indicate that the combination of halauxifen-methyl + glyphosate provides similar safety profiles on lemon, sweet orange, olive, cherry, plum, almond, peach, and pomegranate trees. However, this data is not commensurate in scope with the claimed invention. Applicant claims a method for the selective pre-emergence and post-emergence control of undesirable vegetation in tree and fruit orchard crops which comprises applying a herbicidally effective amount of halauxifen (4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or an agriculturally acceptable ester or salt of either to the unwanted vegetation or the locus thereof or to the area where control of the undesirable vegetation is desired with foliar exposure of the perennial crop being avoided, wherein the halauxifen or an agriculturally acceptable ester or salt thereof is applied at a rate of 2 to 35 g ae/ha or wherein the 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid or an agriculturally acceptable ester or salt thereof is applied at a rate of 5 to 50 g ai/ha.
Declarant does not provide experiments and data on the safety of halauxifen, halauxifen-methyl, or 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid, alone. It cannot be determined if halauxifen, halauxifen-methyl or 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid, alone, will provide the same safety profile as the halauxifen-methyl+ glyphosate.
While the data does provide evidence that halauxifen-methyl + glyphosate provides a similar safety profile to glyphosate, alone, the claims are directed to a method for the selective pre-emergence and post-emergence control of undesirable vegetation, not plant safety. There is no data in the Declaration demonstrating better than expected weed control for halauxifen, halauxifen-methyl or 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-pyridine-2-carboxylic acid, as currently claimed. Evidence of nonobviousness must be commensurate in scope with that of the claimed subject matter. Applicant has not established nonobvious evidence that is commensurate in scope with that of the claimed subject matter.
None of the claims are allowed.
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 Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614