-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, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on July 7, 2025 has been entered.
Priority
This application is a 371 of PCT/JP2020/039628 filed on 10/21/2020, and claims foreign
priority in Japanese application JP2019-198617 filed on 10/31/2019.
Claim Status
Claims 1 and 5-15 are pending. Claims 2-4 were canceled. Claims 1, 8, 14, and 15
were amended. Claims 1 and 4-13 are examined. Claims 14 and 15 are withdrawn.
Withdrawn Claim Rejections – 35 USC § 103
Rejections of claims 1 and 4-13 over Arai (US 2017/0006870 A1 Published January 12, 2017 — of record in IDS dated 04/22/2022) are withdrawn because the claims were amended to require an application rate of the protoporphyrinogen oxidase inhibitor, which is not taught by Arai.
Withdrawn Double Patenting Rejections
Rejections of claims 1 and 4-13 over claims 1-14 of copending Application No. 17/771,169 in view of Arai; rejections of claims 1 and 4-13 over claims 1-19 of copending Application No. 17/287,250 in view of Arai; and rejections of claims 1 and 4-13 over claims 1-5, 7, 8, 11-25, and 27-30 of copending Application No. 17/288,653 in view of Arai are withdrawn because applicant filed a terminal disclaimer that was received on and approved on July 5, 2025.
Terminal Disclaimer
The terminal disclaimer filed on July 5, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patented granted on application 17/771,169; any patent granted on application 17/288,653; and US Patent 12,302,897 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections – 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11-13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 11, 12, and 13 do not further limit claim 1 because claim 1 was amended to limit the method to treating a soybean, and claims 11-13 broaden the scope of the method because claim 11 recites a “cultivated crop”, claim 12 recites a “bean plant” in reference to the cultivated crop, and claim 13 recites five species of bean plants.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1 and 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Arai (US 2017/0006870 A1 Published January 12, 2017 — of record in IDS dated 04/22/2022) and Sievernich (WO 2009/115490 A2, Published September 24, 2009).
The claims are drawn to a weed control method.
The teachings of Arai are related to an agrochemical composition for foliage treatment, which does not cause chemical damage due to deposition on cultivated crop and is highly safe when carrying out foliage treatment on farmland using pyroxasulfone (Abstract). Test example 4 describes herbicidal effect on weeds by field soil treatment. The field soil was filled in plastic pots and seeds were sown and covered. Thereafter, the agrochemical composition obtained in examples 7, 9, 10, 11 and comparative example 1 was weight out so that the amount of pyroxasulfone per hectare was 50 g, diluted with water, and sprayed uniformly on the soil surface. Subsequently, the plants were grown in a greenhouse and examined by observation 14 days after the treatment. An experimental group consisting of untreated plants was used as a control group and the degree of herbicidal effect was evaluated according the criteria shown in Table 1 and represented with an index from 0 to 10 in an 11 point grading system. The results are shown in Table 5 (paragraph 0111). Paragraph 0089 describes a method of making the composition of example 7, which comprises encapsulating pyroxasulfone in polyurea to conceal the substance. The composition is in the form of spherical particles having an average particle diameter of 5 micron.
Arai does not teach application rate of the protoporphyrinogen oxidase inhibitor.
The teachings of Sievernich are related to herbicidally active compositions, which comprise pyroxasulfone and at least one herbicide B which is an selected from protoporphyrinogen-IX-oxidase inhibitors, and the use of the composition for controlling undesirable vegetation in crops. When using the compositions for this purpose, the herbicide A and the at least one herbicide B can be applied simultaneously or in succession in crops, where undesirable vegetation may occur (Abstract). The compositions are suitable for combating undesired vegetation in soybean (page 30 lines 28-30). Herbicide B comprises saflufenacil (page 26 lines 1-2). The required application rates of pyroxasulfone are generally in the range from 1 g/ha to 500 g/ha and preferably in the range from 5 g/ha to 400 g/ha or from 10 g/ha to 300
g/ha of active substance. The required application rates of the herbicide B (total amount of herbicide B) are generally in the range from 0,1 g/ha to 5000 g/ha and preferably in the range from 1 g/ha to 2500 g/ha or from 5 g/ha to 2000 g/ha of active substance (page 24 lines 16-23). Table 1b on pages 44-45 and Table 2b on pages 46-47 teach the combined activity of pyroxasulfone and saflufenacil, when applied at different rates. According to the observed activity, it was determined that the combination of the two actives produced synergistic results against different weeds.
The teachings of Arai and Sievernich are related to compositions comprising pyroxasulfone and saflufenacil, and methods of treating crops such as soybean using said compositions, and it would have been obvious to have combined them because they are in the same field of endeavor.
Regarding claims 1, 12, and 13, 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 have modified the method in test example 4 by formulating the agrochemical composition with one or more additional pesticidal active ingredients such as saflufenacil in addition to pyroxasulfone, with a reasonable expectation of success because Arai teaches formulating the agrochemical composition with one or more other pesticidal active ingredients in addition to the pyroxasulfone contained in the composition. The other pesticidal active ingredients may be blended together with pyroxasulfone in a concealing substance, encapsulated or covered, or in a configuration separately from pyroxasulfone (paragraph 0067). Herbicidal active ingredients include saflufenacil (paragraphs 0068 and 0069). It would have been further obvious to have practiced the method on farmland because Arai teaches applying the treatment to an upland field used for growing crops (paragraph 0009) and applying the treatment composition to farm field (paragraph 0110), which reads on farmland. Modified method in test example 4 comprises performing a soil treatment on farmland comprising applying an agrochemical composition comprising pyroxasulfone microencapsulated in polyurea, and the composition further comprising saflufenacil. The claimed method is a weed control method. Arai’s modified method of test example 4 comprises the same steps as claimed and it would have been reasonable to expect the method to control weed. It is noted that while the abstract states that the purpose of Arai is to provide an agrochemical composition for foliage treatment, Arai also teaches an embodiment of applying the agrochemical composition directly to soil. Rejection of the claims is based on the embodiment of treating soil with the agricultural composition. It would have been reasonable to apply the various embodiments of agricultural compositions described by Arai to soil as a soil treatment.
It would have been obvious to have selected soybean as the cultivated plant, with a reasonable expectation of success because Arai teaches Glycine max (soybean) as an example of a cultivated crop (paragraph 0081).
It would have been obvious to have applied pyroxasulfone at a rate of 210 g/ha, 125 g/ ha, 148 g/ha, 50 g/ha, and 105 g/ha, with a reasonable expectation of success because Arai teaches these application rates as suitable (paragraph 0108 Table 2; paragraph 0109 Table 3; paragraph 0110 Table 4; paragraph 0111 Table 5; paragraphs 0112-0113 Tables 6 and 7).
It would have been also obvious to have applied pyroxasulfone at a rate of from 10 g/ha to 300 g/ha because Sievernich teaches said range as preferred in compositions that contain second herbicide such as saflufenacil, where the compositions are intended for controlling weed in soybean crop. The claimed application rate range is obvious because it encompasses Arai’s specific application rates, and because it encompasses Sievernich’s preferred application rate range.
It would have obvious to have applied saflufenacil at an application rate of from 5 g/ha to 2000 g/ha, with a reasonable expectation of success because Sievernich teaches said application rate range as preferred in compositions that contain second herbicide such as pyroxasulfone, where the compositions are intended for controlling weed in soybean crop. The claimed application rate range is obvious because it overlaps with Sievernich’s range.
Regarding the total amount of pyroxasulfone and saflufenacil applied per ha, it would have been obvious to have applied the two active agents in an amount from 15 g to 2300 g per ha, with a reasonable expectation of success because said endpoints are derived from application amounts of each active agent. Furthermore, it would have been obvious to have applied the two active agents at a combined rate of from 31.25 g/ha (25+6.25) to 62.5 (50+12.5) g/ha because Sievernich teaches said combined application rates as being useful for controlling specific weeds. The skilled artisan would have been motivated to use said application rates because they were shown to be synergistic (Table 1b). The claimed range of application rates of the two active agents combined is obvious because it overlaps with 15-2300 g/ha and encompasses 31.25-62.5 g/ha.
Regarding claim 5, Arai teaches pyroxasulfone microencapsulated in polyurea.
Regarding claim 6, the claimed average particle size range is obvious because Arai teaches particles having an average diameter of 5 microns.
Regarding claim 7, example 7 teaches using 1 part of pyroxasulfone and 10 parts of polymethylene polyphenyl polyisocyanate. The claimed mass ratio of the masking substance to pyroxasulfone is obvious because it encompasses 10:1.
Regarding claim 8, Arai teaches polyurea.
Regarding claim 9, it would have been obvious to have added an additional herbicide to the composition because Arai teaches adding one or more active agents to the composition in addition to pyroxasulfone and provides a list of suitable active agents in paragraphs 0069-0072. It would have been obvious to have used any combination of herbicides disclosed in Arai.
Regarding claim 10, Arai describes the composition in example 7 as microspheres having an average diameter of 5 microns, which reads on dust. Arai further teaches that the composition may be in the form of a powder, a granule, a wettable powder, a wettable granule, an aqueous suspension preparation or an oily suspension preparation (page 14 claim 7).
Regarding claim 11, test example 4 teaches treating the soil before sprouting of a cultivated crop.
Response to Arguments
In the remarks dated July 7, 2025, applicant traversed the rejections and provided a declaration to support the arguments.
Applicant’s arguments in section B and the declaration were fully considered but are not persuasive for the following reasons.
The data submitted in the declaration are not persuasive because it does not meet the requirements of MPEP 716.02. Furthermore, Arai teaches an agrochemical composition, which does not cause phytotoxicity to a cultivated crop due to adhesion thereto when foliage treatment of an upland field is performed with pyroxasulfone, but has a high level of safety and an herbicidal effect on a broad spectrum of weeds. The agrochemical composition comprises pyroxasulfone and a masking material that masks the pyroxasulfone, wherein the pyroxasulfone is microencapsulated in or coated with the masking material such that phytotoxicity to a cultivated crop due to adhesion thereto when foliage spraying is performed is avoided.
The claims are not commensurate in scope with examples that produced the asserted unexpected results. The examples teach a specific application rate of each active expressed as g/ha, whereas claim 1 teaches a range of application rates of each of the two active agents and an application rate of the combined amount of the two active agents. The examples that produced the asserted unexpected properties require specific application rate of each of the active agents, and the applicant did not show that the results obtained for those examples can be extrapolated to the entire breadth of the claimed ranges. While the total amount of the active agents applied per 1 ha further narrows the amounts of each active, the total amount does not indicate anything about the ratio of two active agents. For example, a total amount of 500 g can be achieved by many different combinations of the two active agents as long as the lowest amount of each is 10 g/ha. Data submitted in the specification and the declaration does not show that any combination of the two active agents would provide the asserted unexpected properties.
Pages 36 and 37 of the specification teach a specific method of making the encapsulated pyroxasulfone using specific compounds in specific amounts that was used in inventive compositions, whereas present claims broadly recite microencapsulated pyroxasulfone in a masking substance without identifying the masking substance. Applicant did not show that compositions comprising any masking substance would have produced the asserted unexpected effects. Examples on page 42 teach a specific method of applying the composition, whereas the claims broadly require a simultaneous soil treatment step. The applicant did not show with data that the asserted unexpected effects would have occurred over the entire breadth of the claimed method.
The data in the Tables of the specification and the declaration show observed soybean growth inhibition rate and the Colby expected value. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” In the present case, applicant did not provide statistical analysis of the results and it is unknown if the observed value is statistically significant compared to the expected value. It appears that each treatment was performed once and the observed value for each treatment was reported along with the expected value determined by the Colby equation. This is not sufficient because it cannot be determined from the single observed value whether or not the value is of statistical significance. Applicant provided a difference between the Colby value and the observed value and concluded that the difference is statistical and unexpected. However, this is not the standard for determining statistical significance between two values. For example, each experiment should be performed at least twice and the average value and the standard deviation should be reported for each experiment, such as 180±20. Even the expected values obtained using the Colby equation are based on the observed values of each of the active agents separately, and the observed values should be based on at least two runs expressed as an average with standard deviation. Once the observed value provided as an average(+,-)standard deviation and the expected value provided as an average(+,-)standard deviation are known, then the skilled artisan can determine whether or not the observed value is statistically significant compared to the expected value. The skilled artisan cannot determine if the observed values are of statistical significance unless the standard deviation of the observed values is provided and the expected value with the standard deviation is provided.
Applicant’s argument in section C is persuasive and applicant’s comparative example was sufficient. However, a reference by Sievernich was recovered during the current updated search and the reference teaches many examples of pyroxasulfone and saflufenacil that were shown to have synergistic properties.
Applicant’s argument in section D is not persuasive because applicant’s arguments in section C were not found persuasive.
Conclusion
No claims are allowed.
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/ALMA PIPIC/
Primary Examiner, Art Unit 1617