DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1 and 3-12 are pending and represent all claims currently under consideration.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/05/2025 has been entered.
Response to Arguments
Applicant's arguments filed 11/05/2025 have been fully considered but they are not persuasive.
Applicant argues that Arnevik does not disclose or suggest that the crop plant is tolerant to PPO-inhibiting herbicides, and rather that the first treatment of Arnevik refers to a pre-emergent herbicide application in Arnevik, col 22, lines 13-15. Applicant states that it is recognized in the art that the identity of a pre-emergence herbicide is not determined by, and is independent of, the herbicide tolerance profile of the crop to be cultivated in the treated area (Remarks, pages 5-8). This argument is not persuasive, because no evidence is provided to support the Applicant’s assertion that this is recognized in the art. Further, Arnevik states “a herbicide-resistant weed tolerant to at least the first herbicide treatment” (Arnevik, claim 35), supporting that the weed is tolerant to the first herbicide treatment, as previously stated.
Applicant argues that Arnevik would have motivated a person of ordinary skill to avoid the application of an ACCase inhibiting herbicide, because Arnevik teaches at least one herbicide treatment is applied which comprises an herbicidally effective amount of a benzoic acid herbicide and teaches an ACCase inhibitor in combination with such herbicides (Remarks, pages 6-8). This argument is not persuasive, because there is no limitation in the claims that requires the use of an ACCase inhibitor alone without a benzoic acid herbicide.
Applicant argues that claim 27 of Arnevik is taught in combination with a cropping system wherein the crop plant is a monocot plant and not a dicot plant, and therefore Arnevik does not teach or suggest applying an ACCase inhibiting herbicide to volunteer corn plants tolerant to PPO inhibiting herbicides in a cultivation area of a dicot crop tolerant to PPO inhibiting herbicides as claimed (Remarks, page 7). This argument is not persuasive, because Arnevik states the crop plant is a dicot plant, such as cotton or soybeans in the systems set forth in Table 4 and/or 5 (Arnevik, column 4, lines 5-9), which each list PPO inhibitors as suitable first treatments (Arnevik, tables 4-5). Arnevik further teaches the system can be practiced for managing a volunteer corn plant (Arnevik, column 10, lines 20-24), and the herbicide treatment can comprise ACCase (Arnevik, column 6, lines 38-44; table 4). Therefore, it would be prima facie obvious to one of ordinary skill in the art to apply the ACCase herbicide to an area of a dicot crop as claimed.
Applicant reiterates arguments that Table 3 of Arnevik discloses using a graminicide in combination with a crop plant comprising tolerance to other herbicides, and that ACCase herbicides are associated with a higher risk of developing resistant weeds (Remarks, page 7). These arguments were addressed in the Advisory Action mailed 09/17/2025.
Applicant argues that it would not be obvious to combine Hanger and Armel in order to arrive at the claimed invention, and neither reference provides a motivation to make the combinations or modifications necessary to arrive at the claimed invention (Remarks, pages 8-10). Applicant states that Hanger makes no mention of PPO resistance, let alone the treatment of volunteer corn plants transgenically tolerant to PPO inhibitors (Remarks, page 9). This argument is not persuasive, because Hanger, Armel, and the instant invention are all in the same field of controlling the growth of herbicide resistant weeds. While Hanger does not specifically teach the dicot plant to be resistant to PPO inhibiting herbicides, Hanger does teach the dicot plant is tolerant to a herbicide (Hanger, page 2, paragraph 0029). Armel teaches herbicide treatment in a locus where PPO tolerant crops are grown (Armel, claim 15). It would have been prima facie obvious to one of ordinary skill in the art to combine the teachings of Hanger and Armel, utilizing the ACCase inhibiting herbicides taught by both references to control volunteer corn which is resistant to PPO inhibiting herbicides with a reasonable expectation for success, because it is known that these herbicides can be utilized for herbicide resistant volunteer corn and for transgenic PPO resistant plants.
Applicant states that the extensive list of PPO resistant weeds described in pages 13-14 of Armel does not include PPO resistant weeds which are transgenic (Remarks, page 9). This argument is not persuasive, because as stated previously, Armel teaches the PPO resistant weeds can be transgenic (Armel, page 38, line 31).
Maintained 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.
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 3-12 are rejected under 35 U.S.C. 103 as being unpatentable over Arnevik (US 7939721 B2). The reference has been previously cited by the Examiner.
Regarding claim 1, Arnevik teaches a method for minimizing development of an herbicide resistant weed comprising applying an herbicide treatment to control weed growth from a first cropping system (Arnevik, claim 36) wherein the cropping systems employ transgenic crops including herbicide resistant volunteer plants (Arnevik, column 11, line 34-35), and the weed is resistant to the first herbicide treatment (Arnevik, claim 35), which can be a PPO (i.e., a volunteer plant tolerant to PPO inhibiting herbicides; Arnevik, claim 27; table 4). Arnevik further teaches the crop plant is a dicot plant (Arnevik, claim 18), the system can be practiced for managing a volunteer corn plant (Arnevik, column 10, lines 20-24), and the herbicide treatment can comprise ACCase (Arnevik, column 6, lines 38-44; table 4). Arnevik further teaches the first treatment does not significantly damage the crop (Arnevik, claim 1), which can be a dicot plant (Arnevik, claim 18), and wherein the treatment can be a PPO inhibitor (Arnevik, table 5), suggesting the dicot plant is tolerant to PPO-inhibiting herbicides.
Arnevik is considered to be analogous to the claimed invention because both Arnevik and the instant invention are in the same field of methods for treating herbicide resistant crops. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Arnevik under the meaning of 35 U.S.C. 103.
Regarding claim 3, Arnevik teaches all the elements of the current invention as applied to claim 1. Arnevik further teaches the crop plant is soybean (Arnevik, claim 19).
Regarding claim 4, Arnevik teaches all the elements of the current invention as applied to claim 1. Arnevik further teaches the treatment is clethodim or fluazifop P-butyl (i.e., ester of fluazifop P, ACCase inhibiting herbicides; Arnevik, claim 20).
Regarding claim 5, Arnevik teaches all the elements of the current invention as applied to claim 1. Arnevik further teaches the first treatment can be flumioxazin (i.e., a PPO inhibiting herbicide; Arnevik, claim 20), the second treatment can be clethodim (i.e., an ACCase inhibiting herbicide; Arnevik, table 5, "herbicides suitable for the second and third treatments"), and a third herbicide treatment can be applied (i.e., optionally at least one different herbicide; Arnevik, claim 3).
Regarding claim 6, Arnevik teaches all the elements of the current invention as applied to claim 5. Arnevik further teaches the first treatment (i.e., a PPO inhibiting herbicide) can be flumioxazin (Arnevik, claim 20).
Regarding claim 7, Arnevik teaches all the elements of the current invention as applied to claim 2. Arnevik further teaches the crop plant is soybean (Arnevik, claim 19).
Regarding claim 8, Arnevik teaches all the elements of the current invention as applied to claim 2. Arnevik further teaches the second treatment (i.e., an ACCase inhibiting herbicide) can be clethodim (Arnevik, table 5, "herbicides suitable for the second and third treatments").
Regarding claim 9, Arnevik teaches all the elements of the current invention as applied to claim 3. As above, Arnevik teaches the second treatment (i.e., an ACCase inhibiting herbicide) can be clethodim (Arnevik, table 5, "herbicides suitable for the second and third treatments").
Regarding claim 10, Arnevik teaches all the elements of the current invention as applied to claim 2. As above, Arnevik teaches the first treatment can be flumioxazin (i.e., a PPO inhibiting herbicide; Arnevik, claim 20), the second treatment can be clethodim (i.e., an ACCase inhibiting herbicide; Arnevik, table 5, "herbicides suitable for the second and third treatments"), and a third herbicide treatment can be applied (i.e., optionally with at least one different herbicide; Arnevik, claim 3).
Regarding claim 11, Arnevik teaches all the elements of the current invention as applied to claim 3. As above, Arnevik teaches the first treatment can be flumioxazin (i.e., a PPO inhibiting herbicide; Arnevik, claim 20), the second treatment can be clethodim (i.e., an ACCase inhibiting herbicide; Arnevik, table 5, "herbicides suitable for the second and third treatments"), and a third herbicide treatment can be applied (i.e., optionally with at least one different herbicide; Arnevik, claim 3).
Regarding claim 12, Arnevik teaches all the elements of the current invention as applied to claim 4. As above, Arnevik teaches the first treatment can be flumioxazin (i.e., a PPO inhibiting herbicide; Arnevik, claim 20), the second treatment can be clethodim (i.e., an ACCase inhibiting herbicide; Arnevik, table 5, "herbicides suitable for the second and third treatments"), and a third herbicide treatment can be applied (i.e., optionally at least one different herbicide; Arnevik, claim 3).
Claims 1 and 3-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hanger (US 20120220460 A1; IDS reference, 07/21/2022), further in view of Armel (WO 2018019845 A1). The references have been previously cited by the Examiner.
Regarding claim 1, Hanger teaches a method for controlling genetically modified volunteer plants in a field comprising dicot plants by applying a herbicide (Hanger, claim 1) and teaches corn as the volunteer plant (Hanger, claim 2). Hanger further teaches the herbicide is selected from the group consisting of clethodim and sethoxydim (i.e., ACCase inhibiting herbicides; Hanger, claim 7) and the volunteer plant is resistant to a herbicide (Hanger, claim 16).
Hanger does not specifically teach the genetically modified volunteer plant is resistant to PPO inhibiting herbicides. Armel teaches a method for controlling the growth of PPO resistant weeds (i.e., tolerant to PPO inhibiting herbicides), which can be transgenic (Armel, page 38, line 31), comprising contacting with saflufenacil and at least one compound (Armel, claim 1) selected from the list comprising clethodim and sethoxydim (i.e., ACCase inhibiting herbicides; Armel, table B), in a locus where PPO tolerant crops are grown (Armel, claim 15).
Hanger teaches the dicot plant is tolerant to a herbicide (Hanger, page 2, paragraph 0029), but does not specifically teach the dicot plant to be resistant to PPO inhibiting herbicides. Armel, however, teaches herbicide treatment in a locus where PPO tolerant crops are grown (Armel, claim 15).
Hanger and Armel are both considered to be analogous to the claimed invention, because Hanger, Armel, and the instant invention are all in the same field of controlling the growth of herbicide resistant weeds. It would have been prima facie obvious to one of ordinary skill in the art to combine the teachings of Hanger and Armel, utilizing the ACCase inhibiting herbicides taught by both references to control volunteer corn which is resistant to PPO inhibiting herbicides with a reasonable expectation for success, because it is known that these herbicides can be utilized for herbicide resistant volunteer corn and for transgenic PPO resistant plants.
Regarding claim 3, Hanger and Armel together teach all the elements of the claimed invention as applied to claim 1. Hanger further teaches the dicot plant is soybean (Hanger, claim 3).
Regarding claim 4, Hanger and Armel together teach all the elements of the claimed invention as applied to claim 1. As above, Hanger teaches the herbicide to be selected from the group consisting of clethodim and sethoxydim (i.e., ACCase inhibiting herbicides; Hanger, claim 7).
Regarding claim 5, Hanger and Armel together teach all the elements of the claimed invention as applied to claim 1. Hanger does not teach the ACCase inhibiting herbicide is applied with a PPO inhibiting herbicide. Armel, however, teaches treatment with saflufenacil (i.e., a PPO inhibiting herbicide) and at least one further compound (Armel, claim 1) selected from the list comprising clethodim and sethoxydim (i.e., ACCase inhibiting herbicides; Armel, table B). The term “at least one further compound” suggests that additional different herbicides may be used. It would have been prima facie obvious to one of ordinary skill in the art to modify the teachings of Hanger, which use ACCase inhibiting herbicides, with the teachings of Armel, including a PPO inhibiting herbicide, in order to control for the presence of any PPO resistant weeds (Armel, claim 13).
Regarding claim 6, Hanger and Armel together teach all the elements of the claimed invention as applied to claim 5. As above, Hanger does not teach a PPO inhibiting herbicide. Armel, however, teaches treatment with saflufenacil (i.e., a PPO inhibiting herbicide). As above, it would have been prima facie obvious to one of ordinary skill in the art to modify the teachings of Hanger, which use ACCase inhibiting herbicides, with the teachings of Armel, including a PPO inhibiting herbicide, in order to control for the presence of any PPO resistant weeds (Armel, claim 13).
Regarding claim 7, Hanger and Armel together teach all the elements of the claimed invention as applied to claim 2. Hanger further teaches the dicot plant is soybean (Hanger, claim 3).
Regarding claim 8, Hanger and Armel together teach all the elements of the claimed invention as applied to claim 2. As above, Hanger teaches the herbicide to be selected from the group consisting of clethodim and sethoxydim (i.e., ACCase inhibiting herbicides; Hanger, claim 7).
Regarding claim 9, Hanger and Armel together teach all the elements of the claimed invention as applied to claim 3. As above, Hanger teaches the herbicide to be selected from the group consisting of clethodim and sethoxydim (i.e., ACCase inhibiting herbicides; Hanger, claim 7).
Regarding claim 10, Hanger and Armel together teach all the elements of the claimed invention as applied to claim 2. As above, Hanger does not teach the ACCase inhibiting herbicide is applied with a PPO inhibiting herbicide. Armel, however, teaches treatment with saflufenacil (i.e., a PPO inhibiting herbicide) and at least one further compound (Armel, claim 1) selected from the list comprising clethodim and sethoxydim (i.e., ACCase inhibiting herbicides; Armel, table B). The term “at least one further compound” suggests that additional different herbicides may be used. It would have been prima facie obvious to one of ordinary skill in the art to modify the teachings of Hanger, which use ACCase inhibiting herbicides, with the teachings of Armel, including a PPO inhibiting herbicide, in order to control for the presence of any PPO resistant weeds (Armel, claim 13).
Regarding claim 11, Hanger and Armel together teach all the elements of the claimed invention as applied to claim 3. As above, Hanger does not teach the ACCase inhibiting herbicide is applied with a PPO inhibiting herbicide. Armel, however, teaches treatment with saflufenacil (i.e., a PPO inhibiting herbicide) and at least one further compound (Armel, claim 1) selected from the list comprising clethodim and sethoxydim (i.e., ACCase inhibiting herbicides; Armel, table B). The term “at least one further compound” suggests that additional different herbicides may be used. It would have been prima facie obvious to one of ordinary skill in the art to modify the teachings of Hanger, which use ACCase inhibiting herbicides, with the teachings of Armel, including a PPO inhibiting herbicide, in order to control for the presence of any PPO resistant weeds (Armel, claim 13).
Regarding claim 12, Hanger and Armel together teach all the elements of the claimed invention as applied to claim 4. As above, Hanger does not teach the ACCase inhibiting herbicide is applied with a PPO inhibiting herbicide. Armel, however, teaches treatment with saflufenacil (i.e., a PPO inhibiting herbicide) and at least one further compound (Armel, claim 1) selected from the list comprising clethodim and sethoxydim (i.e., ACCase inhibiting herbicides; Armel, table B). The term “at least one further compound” suggests that additional different herbicides may be used. It would have been prima facie obvious to one of ordinary skill in the art to modify the teachings of Hanger, which use ACCase inhibiting herbicides, with the teachings of Armel, including a PPO inhibiting herbicide, in order to control for the presence of any PPO resistant weeds (Armel, claim 13).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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