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 .
Claim Status
Claims 1, 10-11, 13, 15 and 17-18 are pending.
Claims 2-9, 12, 14 and 16 have been canceled.
Claims 1, 13 and 15 are currently amended.
Claims 13, 15 and 17 are withdrawn; they are drawn to non-elected groups and species.
Claims 1, 10-11 and 18 have been considered.
Claims 1, 10-11 and 18 are rejected.
Acknowledgement of Receipt
Applicants’ election with traverse of Group I., claims 1-12 and 17-18, drawn to a herbicidal combination; species: acetohydroxy acid synthase (AHAS) inhibitor, imazapyr; and photosystem inhibitors in the reply filed on 09/11/2025 are acknowledged. This Office Action is in response to Applicants’ elections, amendments, and remarks filed 09/11/2025.
Priority
This application is a 371 which is a National Stage Entry of PCT/IB2020/059196 filed 10/01/2020, which claims benefit to Indian Application No. IN 201941039822 filed 10/01/2019.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted on 09/22/2022 are in compliance with the provisions of 37 CFR 1.97. Accordingly, these IDSs have been considered by the Examiner.
Election/Restrictions
Applicants’ election with traverse of “Group I, 1-12 and 17-18” drawn to a herbicidal combination, in the reply filed on 09/11/2025 is acknowledged (see Remarks, pg. 5, para. 1). The traversal is on the ground(s) that the amended claims are linked by a single inventive concept, i.e., a combination of propisochlor and herbicides belonging to amino-acid synthesis inhibitor species exhibits an unexpected synergistic effect. Applicants argue that the restriction is improper and unduly burdensome; requirements for the restriction are insufficient and contrary to the rules. Citing MPEP § 803, "If the search and examination of an entire application can be made without serious burden, the Examiner must examine all claims on the merits, even though it includes claims to distinct or independent inventions," [Applicants’ emphasis].
With respect to Applicants’ election of species with traverse, Applicants argue that for the same reasons above, that this restriction is improper.
These arguments are not found to be persuasive because as per PCT Rule 13.1,
the international application shall relate to a group of inventions so linked as to form a
single general inventive concept or a “unity of invention.” PCT Rule 13.2 states that said “unity of invention” is fulfilled by defining a special technical feature that is shared amidst the claimed inventions. The Rule further specifies that “[t]he expression ‘special technical features’ shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.” See MPEP §1850 (II.).
The recitation of generic subject matter in the base claim (i.e., herbicidal combination) is sufficient enough to demonstrate a lack of unity amidst the groups set forth in the previous Office Action, as evidenced by Surgant, Sr. (US 4,936, 901, pub. 06/26/1990). As such, the instantly alleged special technical feature, is respectfully, NOT considered to provide a contribution over the prior art as required above.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13 and 15 are withdrawn because they belong to nonelected groups. Claim 17 is withdrawn because it belongs to a nonelected species; from further consideration pursuant to 37 CFR 1.142(b), there being no allowable generic or linking claim. Applicants’ timely traversed the restriction (election) requirement in the reply filed on 09/11/2025.
Claim Objections
Claims 11 and 18 are objected to because of the following informalities: inconsistent spellings of photosystem. The claims recite “photo system” and “photosystem.” Appropriate correction is required.
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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
The term “Acetohydroxy Acid Synthase (AHAS) inhibitor” recited in lines 3-4 of claim 1 is used by the claim to mean an alternative to the “Acetolactate Synthase (ALS) inhibitor” (Examiner’s emphasis) recited in line 3 of claim 1, while the accepted meaning is that these terms are interchangeable, that is to say AHAS is also known as ALS, indicates that ALS and AHAS inhibitors are the same. Garcia et al. (“Comprehensive Understanding of acetohydroxyacid synthase inhibition by different herbicide families” Proc Natl Acad Sci USA. Jan 30, 2017;114(7):E1091–E1100) explicitly states “Acetohydroxyacid synthase (AHAS), also known as acetolactate synthase, is the target for more than 50 commercial herbicides that are used globally to protect essential rice, corn, wheat, and cotton crops (pg. E1091, see last paragraph under “Significance”). The term(s) is/are indefinite because the specification does not clearly redefine the term(s).
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 (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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 10-11 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN101971823A, pub. 02/16/2011) in view of Guichard (WO 2014/131958 A1, pub. 09/04/2014) and Yerkes (US 8,906,826 B2, date of patent 12/09/2014) evidenced by IDPH (Alachlor and Atrazine in Groundwater, August 2006, pg. 1-2). Citations from Sun and Guichard are from the machine translation documents provided.
Sun discloses a compounded herbicide wherein the active ingredients of the herbicide are propisochlor and atrazine and the compounded herbicide contains emulsifier, surfactant, and oil (abstract, [0002], claims 1-3). Here, the teaching of emulsifier, surfactant and oil reads on the at least one agrochemically acceptable excipient limitation. Sun provides an herbicide combination that enhances weeding effect, lowers residual activity, lowers hazard to crops, delays the medicament resistance of weeds and community succession, reduces the using amount of the herbicide, reduces environmental pollution, saves time, labor and money and lowers the burden of farmers, overall achieving better weed control effects ([0014]). Sun provides formulary examples in paragraphs [0015-0027] (i.e., Embodiments 1-3).
Sun teaches an herbicidal combination comprising propisochlor.
Sun does not teach imazapyr (ELECTED).
Guichard and Yerkes are provided to show obviousness of an herbicidal combination comprising imazapyr.
Guichard discloses an herbicidal composition comprising a known compound, belonging to the chloroacetamide family, i.e., propisochlor component [A], mixed with a known compound, belonging to the isoxazolidinone family, i.e., clomazone component [B] (abstract, [0002], [0012-0014], claim 1). Guichard teaches that propisochlor and clomazone on the same crop allows for a synergy of known and observed effects for these two herbicides, a synergy from which it follows that, for the same result, the quantities of herbicides to be used are lower than those that could have been predicted from the effects of each of the two herbicides taken separately ([0011]). Guichard teaches that when the composition comprises at least one herbicide other than compounds [A] or [B], said other herbicide(s) may be selected from a group that includes imazapyr ([0022], see pg. 5, line 13; claim 6).
Yerkes discloses a synergistic herbicidal composition containing (a) a compound of formula (I):
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161
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or an agriculturally accept salt or ester thereof and (b) an imidazolinone, including but not limited to imazapyr (abstract, col. 2, line 4, claims 1, 4). Yerkes provides an embodiment thereof in which the imidazolinone in the mixture is imazapyr (col. 2, line 34) and provides results that show synergistic activity of compound A and imazapyr herbicidal compositions on control of weeds (col. 41, Tables 19 and 20). Yerkes teaches that the mixtures disclosed can be applied in conjunction with one or more other herbicides to control a wider variety of undesirable vegetation and these other herbicides include propisochlor (col. 25, line 58).
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to use the imazapyr taught by Guichard and Yerkes for at least two reasons. First, it would have been obvious to substitute one known atrazine of Sun with the imazapyr taught by Guichard and Yerkes for a similar purpose of overcoming the problem of most herbicides themselves not being very selective and long-term use can easily cause weed resistance (Sun, abstract, Guichard [0004], Yerkes, col. 5, lines 58-60, col. 16, lines 29-31). Simple substitution of one herbicide for another is within the purview of the skilled artisan and would yield predictable results. Additionally, substituting atrazine with imazapyr would have been obvious to a person of ordinary skill in the art because as evidenced by IDPH, atrazine is classified as a restricted use herbicide because of concerns about groundwater contamination (pg. 1, para. 3), which resonates with Sun’s efforts to reduce environmental pollution (Sun [0014]).
Second, it would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to utilize the imazapyr taught by Guichard and Yerkes in the herbicidal composition taught by Sun with expected results. The teachings of Guichard and Yerkes demonstrate that herbicidal combinations that include compounds, in the case of the prior art are taught as principal actives, that belong to the chloroacetamide family (e.g., propisochlor) (see Guichard, [0011], [0033]) or the ALS family (e.g., imidazolinones, imazapyr) (Yerkes, col. 11, lines 35-38) exhibit synergism. Synergistic activity would contribute to the improvement of Sun, absent a clear showing of evidence to the contrary.
Regarding claims 10, 11, and 18 (i.e., at least one third herbicide; photosystem inhibitor ELECTED, photosystem II inhibitor respectively), Sun does not exclude a third herbicide.
Sun does not teach at least one third herbicide and photosystem inhibitor.
Guichard teaches that the composition according to the invention may include further active ingredients such as other herbicides ([0021]).
Yerkes discloses that the compositions and methods can further be used in conjunction with imidazolinones, acetolactate synthase (ALS) or acetohydroxy acid synthase (AHAS) inhibitors, very long chain fatty acid inhibitors (VLCFA) (i.e., propisochlor), photosystem I inhibitors, and photosystem II inhibitors (col. 26, lines 25-34).
Conclusion
Claims 1, 10-11 and 18 are rejected; no claims are currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Karen Ketcham whose telephone number is (571)270-5896. The examiner can normally be reached 900-500 ET.
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/Karen Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614