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 filed December 15, 2025. Claims 29 and 31-45 are pending in the application. Claims 29, 35, 36, 37, 38, 39, 40, 41, 42, and 43 have been amendment. Claims 29 and 31-45 will currently be examined.
Status of the Claims
The objection of claim 29 because of minor informalities is withdrawn due to Applicant’s amendment to the claim.
The rejections of claims 38, 39, 40 and 42 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to Applicant’s amendments to the claims.
The rejection of claims 29 and 32 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Bessette (WO 00/51436) is maintained.
The rejection of claims 29, 31-32, and 34-45 under 35 U.S.C. 103 as being unpatentable over Bessette (WO 00/51436) is maintained.
The rejection of claim 33 under 35 U.S.C. 103 as being unpatentable over Bessette (WO 00/51436) as applied to claims 29, 31-32, and 34-45 above, and further in view of Yamada et al. (US 8,921,271) is maintained.
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections are reiterated. They constitute the complete set of rejections presently being applied to the instant application.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 29 and 32 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Bessette (WO 00/51436). Bessette cited by Applicant on the IDS filed 12/17/2021.
Regarding claims 29 and 32, Bessette discloses studies were conducted to determine the herbicidal activity of an aerosol mixture of plant essential oils consisting of eugenol (co-herbicide), 2-phenethyl propionate (co-herbicide), benzyl alcohol (benzyl alcohol), and peppermint oil (co-herbicide) against a variety of broadleaf weeds and grasses (page 12, lines 5-7).
Bessette discloses the plants treated were: wild mustard, penny smartweed, ragweed, plantin, crabgrass, sourdock, Canadian thistle, soybean, clover (page 12, lines 15-24).
Regarding claims 29 and 32, Bessette discloses the results indicate that the application of a spray containing plant essential oils and mixtures thereof resulted in rapid damage to all plant species, resulting in the death of the green matter. The study further demonstrated that the green matter could be removed from the trees without damaging the tree itself. The study concluded that the plant essential oils provided excellent herbicidal activity against plant matter with which they came into contact (page 12, lines 29-36).
Bessette meets all the limitations of the claims and thereby anticipates the claims.
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.
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.
Claims 29, 31-32, and 34-45 are rejected under 35 U.S.C. 103 as being unpatentable over Bessette (WO 00/51436). Bessette cited by Applicant on the IDS filed 12/17/2021.
Applicant’s Invention
Applicant claims a method for controlling noxious or undesirable plants, which comprises the application of a composition comprising the herbicide benzyl alcohol on noxious or undesirable plants, or parts of these noxious or undesirable plants, or also on land where these noxious or undesirable plants support.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Regarding claim 29, Bessette teaches a method for controlling grasses, which comprises applying to the locus where control is desired a herbicidally-effective amount of the composition of claim 1 (page 17, claim 5).
Regarding claim 29, Bessette teaches a herbicidal composition comprising, in admixture with an acceptable carrier, a plant essential oil compound (page 17, claim 1).
Regarding claim 29, Bessette teaches the plant essential oil compound is benzyl alcohol (page 17, claim 3).
Regarding claim 32, Bessette teaches the herbicidal composition comprising, in admixture with an acceptable carrier, a mixture of one or more plant essential oil compounds in combination with a conventional pesticide, including herbicides (page 18, claim 10).
Regarding claim 35, Bessette teaches the herbicidal compositions are effective against a wide variety of plant matter. The data and examples show that specific compounds are highly effective against broader weeds, yet sensitive to narrow grasses. In certain instances, specific compounds are highly effective against certain grasses while sensitive to other grasses (page 9, lines 33-36-page 10, lines 1-3).
Regarding claim 37, Bessette teaches certain trees were treated to remove green matter (page 12, lines 26-27). Bessette teaches the study further demonstrated that the green matter could be removed from the trees (page 12, line 32).
Regarding claims 38 and 39, Bessette teaches the mixture of active materials may be applied in sufficient amounts as to provide about 0.2 to 4 and preferably about 1 to 2 pounds of active material per acre (page 8, 35-36-page 9, line 1). Moreover, the required amount of the herbicidal composition may be applied per acre treated in from 1 to 200 gallons of liquid carrier, which is 9.35 L/ha to 870.79 L/ha, and falls within the application rates currently claimed. (page 9, lines 1-3).
Regarding claims 35, 36, and 40, Bessette teaches use of herbicidal compositions results in fast, effective weed and grass control. Bessette teaches they are employed as foliage application, soil incorporation, seedling box treatment, stalk injection and planting treatment (page 5, lines 8-13).
Regarding claim 41, Bessette teaches the herbicidal compositions are applied as a liquid composition via very effective atomizing equipment, in finely divided form by airplane crop spraying techniques (page 8, lines 27-31). Bessette teaches the formulations or compositions may be applied by spraying, sprinkling (page 9, lines 15-17).
Regarding claims 42 and 44, Bessette teaches surface-active agents that may be employed include emulsifying agents such as non-ionic and/or anionic emulsifying agents (page 7, lines 3-9).
Regarding claim 43, Bessette teaches the herbicidal composition can be formulated as solutions, suspensions, powder, spray powders, microcapsules (page 5, lines 23-36).
Regarding claim 44, Bessette teaches the herbicidal composition further comprising a surface-active agent (page 17, claim 4).
Bessette teaches over-all formulations that comprise mixtures of a conventional disposable carrier vehicle such as (1) a dispersible inert finely divided carrier solid, and/or (2) a dispersible carrier liquid such as a surface-active effective amount of a carrier vehicle and an amount of the active compound which is generally between about 0.0001-95%, and preferably 0.01-95%, by weight of the mixture (page 8, lines 19-26).
Bessette teaches the examples are illustrative of various embodiments only and do not limit the claimed invention regarding materials, conditions, weight ratios, process and parameters (page 10, lines 5-7).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Bessette does not specifically provide examples of compositions comprising benzyl alcohol as the only active substance, as claimed in claim 31, the weight ratio between the herbicide benzyl alcohol and the co-herbicide is comprised between 150:1 to 1:150, as claimed in claim 34, or the weight ratio between the total quantity of herbicide and surfactant can be comprised between 0.5:100 to 100:1.
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 use the teachings of Bessette and use benzyl alcohol as the only active substance in the composition. Bessette teaches a method of controlling weeds and grasses, which comprises applying to the locus where control is desired a herbicidally effective amount. Bessette teaches that benzyl alcohol is an essential oil component that is used as the herbicidal. As such, based on these teachings one of ordinary skill in the art would have been motivated to use benzyl alcohol as the only active in the composition with a reasonable expectation of success.
Regarding the weight ratio of the herbicide benzyl alcohol and the co-herbicide between 150:1 to 1:150, Bessette teaches that the essential oil, benzyl alcohol, is used in combination with a conventional pesticide, including herbicides. Bessette teaches the active compound is present in the composition between 0.01-95% by weight. One of ordinary skill in the art would have been motivated to use experimentation and optimization to determine the weight ratio of benzyl alcohol to the co-herbicide. Bessette teaches that the embodiments exemplified do not limit the claimed invention regarding weight ratios. As such, the adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Regarding the weight ratio between the total quantity of herbicide and surfactant can be comprised between 0.5:100 to 100:1, Bessette teaches over-all formulations that comprise mixtures of a conventional disposable carrier vehicle such as (1) a dispersible inert finely divided carrier solid, and/or (2) a dispersible carrier liquid such as a surface-active effective amount of a carrier vehicle and an amount of the active compound which is generally between about 0.0001-95%, and preferably 0.01-95%, by weight of the mixture. One of ordinary skill in the art would have been motivated to use experimentation and optimization to determine the total quantity of herbicide and surfactant using the teachings of Bessette. As such, the adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
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.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Bessette (WO 00/51436) as applied to claims 29, 31-32, and 34-45 above, and further in view of Yamada et al. (US 8,921,271).
Applicant’s Invention
Applicant claims a method for controlling noxious or undesirable plants, which comprises the application of a composition comprising the herbicide benzyl alcohol on noxious or undesirable plants, or parts of these noxious or undesirable plants, or also on land where these noxious or undesirable plants support. Applicant claims the benzyl alcohol is used in combination with at least on co-herbicide. Applicant claims the co-herbicide is flazasulfuron.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Bessette 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)
Bessette does not specifically disclose the co-herbicide is flazasulfuron. It is for this reason Yamada et al. is added as a secondary reference.
Yamada et al. teach a herbicidal composition comprising, as active ingredients, (a) flazasulfuron or its salt and (b) metribuzin or its salt (Abstract). Yamada et al. teach the herbicidal composition has a broader herbicidal spectrum, a high activity and a long-lasting effect (Abstract).
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 Bessette and Yamada et al. and use flazasulfuron as the co-herbicide. Bessette teaches a method of controlling weeds and grasses, which comprises applying to the locus where control is desired a herbicidally effective amount. Bessette teaches that benzyl alcohol is an essential oil component that is used as the herbicide. Bessette teaches the benzyl alcohol is used in an admixture in combination with a conventional pesticide, including herbicides. Yamada et al. teach that flazasulfuron is added to another herbicide to broaden herbicidal spectrum, increase high activity, and provide a long-lasting effect. As such, it would have been obvious to one of ordinary skill in the art to combine benzyl alcohol, an essential oil herbicide, with flazasulfuron, to increase the spectrum of the herbicidal composition, as this is known in the herbicidal art. In view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional herbicides set forth prima facie obvious subject matter.
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 filed December 15, 2025 have been fully considered but they are not persuasive. Applicant argues that Bessette neither anticipates nor renders obvious the present claimed methods.
Applicant argues that Bessette is fundamentally about essential oil based defoliant compositions, not about simple aromatic alcohols such a benzyl alcohol used as herbicides. Applicant argues that a person of ordinary skill in the art would not read the heterogeneous list as teaching that every listed compound is itself a herbicidal active ingredient and that benzyl alcohol is a simple aromatic alcohol that was well known in the art primarily as a solvent and preservative in pharmaceutical and agrochemical compositions. Applicant argues hindsight based on Applicant’s own disclosure. 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). Bessette teaches in claims 3, 8, and 12 that the herbicidal composition comprises as the plant essential oil compound, benzyl alcohol. Bessette does teach that benzyl alcohol is in a list of other plant essential oils. However, it is 5th in the listing and specifically used in the composition of example 3 testing the herbicidal effects of plant essential oils and mixtures or blends. Thus, it would be readily envisaged by one skilled in the art that benzyl alcohol is to be used as an essential oil, as a herbicide in the composition, not an excipient or solvent.
Applicant argues the only example in Bessette where benzyl alcohol is mentioned explicitly is an aerosol composition that contains eugenol…benzyl alcohol and peppermint oil, which is applied to various plant species to eliminate green matter. That example is clearly directed to a defoliant composition applied topically to remove green plant matter. Applicant argues that no specific activity is attributed to benzyl alcohol in that example and the activity is associated with the essential oil constituents. In response to Applicant’s argument, Bessette teaches that plants treated were wild mustard, ragweed, common and giant, crabgrass, sourdock and Canadian thistle. All of these plants are weeds or undesirable vegetation. While Bessette does teach that certain volunteer oak were treated to remove green matter and that vines were also treated, Bessette also specifically teaches that the study concluded that the plant essential oils provided excellent herbicidal activity against plant matter with which they came into contact. Applicant’s claims are directed to a method that comprises benzyl alcohol and that benzyl alcohol is used in combination with at least one co-herbicide. Therefore, it would have been obvious to one of ordinary skill in the art based on the teachings of Bessette that benzyl alcohol in this context is used as a herbicide. It is also obvious that benzyl alcohol is used in combination with other essential oil components as herbicidal composition.
Applicant argues that the compositions described as preferred in Bessette are repeatedly based on essential oil constituents such as eugenol, thymol, trans anethole…and citronellal, and benzyl alcohol is not presented as one of the herbicidal actives. Applicant argues that if Bessette had considered benzyl alcohol to be a herbicidal active ingredient, it would be expected to appear among the compounds tested for toxicity and synergy. In response to Applicant’s argument, as indicated Bessette does teach that benzyl alcohol is in a list of other plant essential oil. However, it is 5th in the listing and specifically used in the composition of example 3. Thus, it would be readily envisaged by one skilled in the art that benzyl alcohol can be used as an essential oil, as a herbicide in the composition. Even though Bessette uses benzyl alcohol in one example, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Regarding Applicant’s argument regarding weight ratios, the weight ratio of the herbicide benzyl alcohol and the co-herbicide between 150:1 to 1:150, Bessette teaches that the essential oil, benzyl alcohol, is used in combination with a conventional pesticide, including herbicides. Bessette teaches the active compound is present in the composition between 0.01-95% by weight. One of ordinary skill in the art would have been motivated to use experimentation and optimization to determine the weight ratio of benzyl alcohol to the co-herbicide. Bessette teaches that the embodiments exemplified do not limit the claimed invention regarding weight ratios. As such, the adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Applicant further argues that the present claims and specification explicitly treat benzyl alcohol as the herbicidal agent and a method for controlling noxious or undesirable plants by applying a composition comprising benzyl alcohol on noxious or undesirable plants. As indicated herein above, Bessette explicitly teaches that benzyl alcohol is in a list of other plant essential oil to be used as herbicides in a herbicidal composition. Thus, it would be readily envisaged by one skilled in the art that benzyl alcohol is used as an essential oil, as a herbicide in the composition. As such, the teachings of Bessette anticipate and are obvious over the claimed inventions.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614