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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 24 July 2026 has been entered.
Status
Applicant’s response dated 24 July 2026 to the previous Office action dated 17 December 2025 is acknowledged. Pursuant to amendments therein, claims 1-2, 4-11, 13-14, and 16-29 are pending in the application.
The rejections under 35 U.S.C. 103 made in the previous Office action are withdrawn in view of applicant’s claim amendments, but new (modified) rejections under 35 U.S.C. 103 are made herein in view of applicant’s claim amendments.
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.
Claim(s) 1, 4-8, 11, and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haas (US 2007/0142228 A1 published 21 June 2007; of record) in view of Haikal et al. (US 2009/0203526 A1; published 13 August 2009; of record).
Haas discloses a composition for selective weed control comprising customary inert formulation adjuvants, an herbicidally effective amount of the compound of formula I or an agronomically acceptable salt thereof (i.e., bicyclopyrone), and a synergistically effective amount of one or more compounds such as foramsulfuron, trifloxysulfuron, nicosulfuron, primisulfuron-methyl, rimsulfuron, halosulfuron, thifensulfuron, prosulfuron, iodosulfuron, tritosulfuron (i.e., sulfonylurea herbicides, ALS-inhibiting herbicides), flumetsulam, metosulam, cloransulam, diclosulam, florasulam (i.e., triazolopyrimidine herbicides, ALS-inhibiting herbicides), and/or bromoxynil (paragraphs [0005]-[0007]) wherein the composition may also comprise fertilisers and is preferably used with a nitrogen source as in EP-A-0 584 227 such as NITRO-30® methylene urea (paragraph [0135]) wherein an application rate of herbicide is 0.005-0.05 kg per hectare (i.e., 5-50 g ai/ha) (paragraphs [0185],[0197]) wherein application is post-emergence (paragraph [0004]) wherein the composition is suitable for weed control in crops of useful plants such as cereals against weeds such as Bromus (paragraph [0011]) wherein non-ionic surfactant may be added to the composition to impart good emulsifying, dispersing and wetting properties (paragraphs [0119]-[0121], [0126]-[0127]) wherein the composition comprises the active ingredient of formula I (i.e., bicyclopyrone) and one or more of the active ingredients (e.g., ALS-inhibiting herbicides as discussed above) in weight ratios of especially from 200:1 to 1:200 (paragraph [0114]) wherein the composition exhibits synergistic weed control (paragraphs [0004]-[0005]) wherein the synergistic herbicidal composition controls grasses and weeds in crops of useful plants, and protects the useful plants, but not the weeds, against the phytotoxic action of the herbicide (paragraph [0170]) wherein preferred synergistic mixtures comprise the combinations of active ingredients (paragraph [0015]) such as of compound of formula I and foramsulfuron (i.e., sulfonylurea herbicide, ALS-inhibiting herbicide) (paragraph [0037]) or of compound of formula I and flumetsulam (triazolopyrimidine herbicide, ALS-inhibiting herbicide) (paragraph [0048]).
Although Haas does not disclose a particular formulation example that comprises the bicyclopyrone along with a nitrogen-based fertilizer additive and ALS-inhibiting herbicide as claimed, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Haas as discussed above and to make the composition of Haas as discussed above that comprises a) bicyclopyrone, b) fertiliser nitrogen source such as NITRO-30® methylene urea, and c) sulfonylurea herbicide such as foramsulfuron, trifloxysulfuron, nicosulfuron, primisulfuron-methyl, rimsulfuron, halosulfuron, thifensulfuron, prosulfuron, iodosulfuron, or tritosulfuron, or triazolopyrimidine herbicide such as flumetsulam, metosulam, cloransulam, diclosulam, florasulam (i.e., ALS-inhibiting herbicides) in a weight ratio of a) bicyclopyrone to c) ALS-inhibiting herbicide of 200:1 to 1:200, and to selectively control weeds around crops such as cereal crops by applying such composition thereto to synergistically control weeds and protect crops against phytotoxic action of the herbicide (i.e., selectively control unwanted vegetation at a locus comprising a crop and the unwanted vegetation; increase control of unwanted vegetation and decrease phytotoxicity in a crop compared to a composition without the ALS-inhibiting herbicide), with a reasonable expectation of success, given that Haas suggests including with the bicyclopyrone one or more other herbicides such as sulfonylurea herbicides or triazolopyrimidine herbicides as well as fertilisers and nitrogen source.
Haas does not disclose mesosulfuron or pyroxsulam.
Haikal et al. discloses a method of controlling unwanted vegetation (title) using herbicide (abstract) wherein examples of sulfonylurea herbicides include mesosulfuron, foramsulfuron, trifloxysulfuron, nicosulfuron, rimsulfuron, halosulfuron, thifensulfuron, prosulfuron, iodosulfuron, and tritosulfuron (paragraph [0072]) and wherein examples of triazolopyrimidine herbicides include pyroxsulam, flumetsulam, metosulam, cloransulam, diclosulam, and florasulam (paragraph [0069]).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Haas and Haikal et al. by substituting the mesosulfuron of Haikal et al. for the foramsulfuron, trifloxysulfuron, nicosulfuron, rimsulfuron, halosulfuron, thifensulfuron, prosulfuron, iodosulfuron, or tritosulfuron of the composition and method of Haas as discussed above, and by substituting the pyroxsulam of Haikal et al. for the flumetsulam, metosulam, cloransulam, diclosulam, or florasulam of the composition and method of Haas as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because mesosulfuron, foramsulfuron, trifloxysulfuron, nicosulfuron, rimsulfuron, halosulfuron, thifensulfuron, prosulfuron, iodosulfuron, and tritosulfuron are all sulfonylurea herbicides that were known for use in controlling unwanted vegetation (i.e., equivalents known for the same purpose) as disclosed by Haikal et al., and pyroxsulam, flumetsulam, metosulam, cloransulam, diclosulam, and florasulam are all triazolopyrimidine herbicides that were known for use in controlling unwanted vegetation (i.e., equivalents known for the same purpose) as disclosed by Haikal et al., and it is prima facie obvious to substitute equivalents known for the same purpose per MPEP 2144.06(II).
Such combination results in a weight ratio range of bicyclopyrone to mesosulfuron or pyroxsulam of 200:1 to 1:200, which overlaps the claimed range of about 37.5-50 to about 10-60 (i.e., about 50:10 to 37.5:60, or about 5:1 to 1:1.6), and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claims 6 and 13-14, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Haas as discussed above and to include in the composition and method of Haas et al. in view of Haikal et al. as discussed above bromoxynil (i.e., an additional herbicide), with a reasonable expectation of success, given that bromoxynil is an herbicide suggested by Haas and Haas suggests including more than one herbicide therein.
Regarding claim 7, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Haas as discussed above and to apply the bicyclopyrone herbicide and the ALS-inhibiting herbicide at a rate of 5-50 g ai/ha for each herbicide in the composition and method of Haas et al. in view of Haikal et al. as discussed above, with a reasonable expectation of success, given that Haas suggests an application rate of herbicide of 5-50 g ai/ha). Such application rate overlaps the claimed rates of 37.5-50 and 10-60, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 8, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Haas as discussed above and to apply the composition post-emergence in the composition and method of Haas et al. in view of Haikal et al. as discussed above, with a reasonable expectation of success, given that Haas suggests application is post-emergence.
Claim(s) 1-2, 4-8, 11, 13-14, 16-20, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haas in view of Haikal et al. as applied to claims 1, 4-8, 11, and 13-14 above, and further in view of Thiele et al. (EP 0 584 227 B1; published 08 October 1997; of record).
Haas and Haikal et al. are relied upon as discussed above.
Haas and Haikal et al. do not disclose ammonium sulfate or urea ammonium nitrate as in claims 2 and 16.
Thiele et al. discloses herbicidal and nitrogen fertilizer compositions (title) wherein nitrogen sources used in fertilizing materials are commonly classified as either nitrate or ammonium types wherein commercially available ammonium types include ammonium sulfate and the most preferred nitrogen fertilizer is urea ammonium nitrate (page 3 lines 24-29).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Haas, Haikal et al., and Thiele et al. by using the ammonium sulfate or urea ammonium nitrate of Thiele et al. as the fertilizer nitrogen source in the composition and method of Haas in view of Haikal et al. as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because Haas specifically suggests using fertilizer nitrogen source as disclosed in EP 0 584 227 (i.e., Thiele et al.).
Regarding claims 18-19, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Haas as discussed above and to include in the composition and method of Haas et al. in view of Haikal et al. as discussed above non-ionic surfactant to impart good emulsifying, dispersing and wetting properties, with a reasonable expectation of success.
Regarding claim 29, such yield increase property would flow naturally from the suggestions of the prior art as discussed above and thus cannot be the basis for patentability per MPEP 2145(II).
Claim(s) 1, 4-9, 11, and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haas in view of Haikal et al. as applied to claims 1, 4-8, 11, and 13-14 above, and further in view of Bieringer et al. (U.S. Patent No. 6,124,240; issued 26 September 2000; of record).
Haas and Haikal et al. are relied upon as discussed above.
Haas does not disclose wheat as in claim 9.
Bieringer et al. discloses sulfonylurea herbicides (title) wherein use thereof is for cereal crops such as wheat (column 10 lines 52-55).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Haas, Haikal et al., and Bieringer et al. by using the composition and method of Haas in view of Haikal et al. as discussed above on cereal crops such as wheat as in Bieringer et al., with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because Haas specifically suggests using the composition and method on cereal crops, and wheat was known as a cereal crop upon which fertilizers are used per Bieringer et al., and also the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination per MPEP 2144.07.
Claim(s) 1, 4-8, 10-11, and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haas in view of Haikal et al. as applied to claims 1, 4-8, 11, and 13-14 above, and further in view of Hacker et al. (US 2003/0186816 A1; published 02 October 2003; of record).
Haas and Haikal et al. are relied upon as discussed above.
Haas does not disclose Bromus tectorum as in claim 10.
Hacker et al. discloses sulfonylurea herbicides (title) wherein examples of weed species include Bromus such as Bromus tectorum (paragraph [0120]).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Haas, Haikal et al., and Hacker et al. by using the composition and method of Haas in view of Haikal et al. as discussed above against weeds such as Bromus tectorum as in Hacker et al., with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because Haas specifically suggests using the composition and method against weeds such as Bromus, and Bromus tectorum was known as a weed upon which sulfonylurea herbicides are used per Hacker et al., and also the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination per MPEP 2144.07.
Claim(s) 1-2, 4-8, 11, 13-14, 16-25, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haas in view of Haikal et al. and Thiele et al. as applied to claims 1-2, 4-8, 11, 13-14, 16-20, and 29 above, and further in view of Bieringer et al.
Haas, Haikal et al., and Thiele et al. are relied upon as discussed above.
Haas, Haikal et al., and Thiele et al. do not disclose wheat as in claim 21.
Bieringer et al. discloses sulfonylurea herbicides (title) wherein use thereof is for cereal crops such as wheat (column 10 lines 52-55).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Haas, Haikal et al., Thiele et al., and Bieringer et al. by using the composition and method of Haas in view of Haikal et al. and Thiele et al. as discussed above on cereal crops such as wheat as in Bieringer et al., with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because Haas specifically suggests using the composition and method on cereal crops, and wheat was known as a cereal crop upon which fertilizers are used per Bieringer et al., and also the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination per MPEP 2144.07.
Regarding claim 23, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to optimize fertilizer efficacy in the composition and method of Haas in view of Haikal et al., Thiele et al., and Bieringer et al. by varying the concentration of ammonium sulfate or urea ammonium nitrate therein through routine experimentation per MPEP 2144.05(II), with a reasonable expectation of success, given that ammonium sulfate and urea ammonium nitrate were known to be fertilizers.
Claim(s) 1-2, 4-8, 11, 13-14, and 16-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haas in view of Haikal et al., Thiele et al., and Bieringer et al. as applied to claims 1-2, 4-8, 11, 13-14, 16-25, and 29 above, and further in view of Hacker et al.
Haas, Haikal et al., Thiele et al., and Bieringer et al. are relied upon as discussed above.
Haas, Haikal et al., Thiele et al., and Bieringer et al. do not disclose Bromus tectorum as in claim 26.
Hacker et al. discloses sulfonylurea herbicides (title) wherein examples of weed species include Bromus such as Bromus tectorum (paragraph [0120]).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Haas, Haikal et al., Thiele et al., Bieringer et al., and Hacker et al. by using the composition and method of Haas in view of Haikal et al., Thiele et al., and Bieringer et al. as discussed above against weeds such as Bromus tectorum as in Hacker et al., with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because Haas specifically suggests using the composition and method against weeds such as Bromus, and Bromus tectorum was known as a weed upon which sulfonylurea herbicides are used per Hacker et al., and also the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination per MPEP 2144.07.
Response to Arguments
Applicant's arguments filed 24 July 2026 have been fully considered but they are not persuasive.
Applicant argues that the references do not teach an herbicidal composition that increases control of the unwanted vegetation and decreases phytotoxicity in the crop compared to a composition without the ALS-inhibiting herbicide (remarks pages 7-10). In response, Haas teaches that the composition exhibits synergistic weed control (paragraphs [0004]-[0005]) wherein the synergistic herbicidal composition controls grasses and weeds in crops of useful plants, and protects the useful plants, but not the weeds, against the phytotoxic action of the herbicide (paragraph [0170]) wherein preferred synergistic mixtures comprise the combinations of active ingredients (paragraph [0015]) such as of compound of formula I (i.e., bicyclopyrone) and foramsulfuron (i.e., sulfonylurea herbicide, ALS-inhibiting herbicide) (paragraph [0037]) or of compound of formula I and flumetsulam (triazolopyrimidine herbicide, ALS-inhibiting herbicide) (paragraph [0048]). Applicant acknowledges that the instant invention comprises an herbicidal composition comprising bicyclopyrone, a nitrogen-based fertilizer additive, and an ALS-inhibiting herbicide (instant specification page 1 lines 22-27) wherein preferred ALS-inhibiting herbicides include sulfonylurea herbicide and triazolopyrimidine herbicide (instant specification page 2 lines 10-13) and wherein application of such composition unexpectedly mitigates crop damage while maintaining weed control (instant specification page 1 lines 14-20). Thus, since Haas already teaches such as discussed above, applicant’s argument is not persuasive.
Applicant argues that the data in the instant specification establishes unexpected results and that the claims recite the components in the tested formulations (remarks pages 7-10). In response, the data exemplified in Examples 1 and 2 rely on formulations that appear to include various constituents and concentrations thereof that are not recited in the claims, including for example the constituents and concentrations of TALINOR, CoAct+, R-11, UAN 32, etc., and appear to rely on particular application rates that are not recited in the claims. Since the data relies upon such specific formulations, the limitations (including for example all constituents and concentrations thereof) of such specific formulations must be included in the claims for the asserted unexpected results to be commensurate in scope with the claims, or persuasive data or reasoning provided showing that such limitations would not affect the asserted unexpected results and therefore need not be recited in the claims in order for the asserted unexpected results to be commensurate in scope with the claims. The data do not demonstrate any trend indicating that such missing constituents and concentrations thereof are not needed to attain such asserted unexpected results. Although individual claims may recite one or more other components in the tested formulations, no single claim includes all elements/components in the tested formulations/data.
Regarding applicant’s assertion that it is incorrect to require absolute identity of scope between claims and unexpected results (remarks page 7), unexpected results must be reviewed to see if the results occur over the entire claimed range per MPEP 716.02(d), and here the asserted unexpected results derive from particular formulations whereas the claims are not restricted to such formulations, and thus the results do not occur over the entire claimed range as required per MPEP 716.02(d).
Moreover, such results are not in fact unexpected as required per MPEP 716.02(b)(I)(“evidence relied upon should establish ‘that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.’”), given the teachings of synergism in Haas as discussed above.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
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