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 .
Applicant’s amendments filed 2/12/2026 has been entered. Claim 8 has been amended. Claims 1-5 and 8-14 are pending.
Response to Amendment
The declaration under 37 CFR 1.132 filed 2/12/2026 is insufficient to overcome the rejection of claims 1-5 and 8-14 based upon Massa et al. (WO 2016/113334; published July 21, 2016) as set forth in the last Office action because: In the declaration only L-glufosinate ammonium (L-GA) and saflufenacil were tested wherein L-GA was used in the range of 125-250 g ai/ha and saflufenacil in the range of 1.563-12.5 g ai/ha (ratio of L-GA:saflufenacil 160:1 to 20:1). The showing is not commensurate in scope with the claimed invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 10-19 of copending Application No. 18/031,176 (herein ‘176). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims only require (i) glufosinate, L-glufosinate or an agronomically acceptable salt thereof and (ii) saflufenacil, wherein the ratio of (i) is at least 40 times more than the total amount (ii) in the case of (i) being glufosinate and at least 20 times more than the total amount (ii) in the case of (i) being L-glufosinate, wherein the total amount of component (i) is from 100-600 g/L and wherein (ii) is in the range of from 0.15-15 g/L in the case of (i) being glufosinate and in the range of from 0.2-30 g/L in the case of (i) being L-glufosinate. However, the copending application differs by comprising a mixture of (A) salflufenacil and (B) trifludimoxazin as component (ii) and claim 12 states that the total amount of component (i) is from 100-600 g/L and wherein (ii) is in the range of from 0.1-15 g/L in the case of (i) being glufosinate and in the range of from 0.2-30 g/L in the case of (i) being L-glufosinate. The present claim further allow for the inclusion of further agrochemically active compounds. Therefore, the present claims are prima facie obvious in view of copending application ‘176.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
Claim(s) 1-5 and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Massa et al. (WO 2016/113334; published July 21, 2016).
Applicant’s Invention
Applicant claims a composition comprising i) 100-600 g/L glufosinate, L-glufosinate or an agronomically acceptable salt thereof and ii) 0.15-15 g/L or 0.2-30 g/L saflufenacil, wherein a ratio by weight of a total amount of component i) is at least 40 times more than a total amount of component ii) in case of i) being glufosinate, preferably 1000:1 to 50:1. (Claim 1)
Applicant further claims a method for controlling undesired plant growth, and/or controlling harmful plants comprising applying an herbicide combination of claim 1 onto the undesired plants or the harmful plants or the area where the undesired plants or harmful plants grow (claim 12).
Determination of the scope and the content of the prior art
(MPEP 2141.01)
With respect to claims 1-5 of the instant application, Massa et al. teach the ratio of herbicide B (glufosinate) to A (saflufenacil) is preferably 1000:1 to 1:10 (page 5, lines 4-7). Although, L-glufosinate is not specified in Massa, the term “glufosinate” encompasses all stereoisomers and it is widely known that L-glufosinate is the herbicidally active isomer of glufosinate responsible for herbicidal activity as evidenced by Winter (WO 2019/030098) cited by applicant (page 2, lines 28-37). Therefore, using L-glufosinate in the herbicidal combinations would have been prima facie obvious.
With respect to claims 1 and 8 of the instant application, Massa et al. teach formulations comprise herbicidally effective amounts of A and B with further actives in the range of 1-98% by weight (page 48, lines 10-20). One of ordinary skill would have been motivated to optimize the range of the total active ingredient to formulate a suspension concentrate comprising 10-60% (100-600 g/L) glufosinate and 0.2-3% (0.02-30 g/L) saflufenacil because Massa et al. disclose applying the combination glufosinate and saflufenacil wherein the ratio of glufosinate to saflufenacil is up to 1000:1.
With respect to claims 13 and 14 of the instant application, Massa et al. teach the application rate of saflufenacil is usually 1-500 g/ha and glufosinate is usually 50-3000 g/ha (page 39, lines 17-32).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
With respect to claims 1 and 8, Massa et al. teach the ratio of herbicide B (glufosinate) to A (saflufenacil) is preferably 1000:1 to 1:10 (page 5, lines 4-7). Therefore, one of ordinary skill would have been motivated to manipulate ranges during routine experimentation to discover the optimum or workable range since the prior art provides the general range. It is the normal desire of scientists or artisans to improve upon what is already generally known to optimize formulation ingredients, therefore, optimizing the amounts of glufosinate and saflufenacil in a ratio from up to 1000:1 to a ratio of 1:10 and reach the claimed amounts of glufosinate and saflufenacil is prima facie obvious.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Therefore, it would have been prima facie obvious to one of ordinary skill to use the teachings of Massa et al. to formulate the herbicidal combination comprising 0.2-30 g/L saflufenacil with 100-600 g/L L-glufosinate with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of the filing to use the teachings of Massa et al. to optimize the amounts of glufosinate and saflufenacil in a ratio from up to 1000:1 to a ratio of 1:10 and reach the claimed amounts of glufosinate and saflufenacil to find the optimum workable range to form a suspension concentrate.
Response to Arguments
Applicant's arguments filed 2/12/2026 have been fully considered but they are not persuasive.
Applicant argues that Massa does not teach or suggest a composition containing a synergistic mixture of glufosinate and saflufenacil in which glufosinate is present in and amount of 100-600 g/L or 150-500 g/L. The Examiner is not persuaded by this argument because Massa et al. teach the ratio of herbicide B (glufosinate) to A (saflufenacil) is preferably 1000:1 to 1:10 which encompasses the claimed range (page 5, lines 4-7). Commercially available saflufenacil has a concentration of 340 g/L and glufosinate has a concentration of 280 g/L (page 51, lines 5-10). Therefore, one of ordinary skill would have been able to make formulations comprising glufosinate and saflufenacil within the claimed amounts since the disclosed formulations overlap with the ranges disclosed by Massa. Therefore, a prima facie obviousness case exists and one of ordinary skill would have been able to make the claimed compositions by using routine experimentation to find the optimal concentration needed.
Applicant further argues that the claimed invention demonstrates synergistic effect, namely an observed herbicidal activity of 70-85% compared to the expected activity of 5-35%. The Examiner has considered the evidence, however, Massa teaches coapplication of glufosinate and saflufenacil which inherently possess enhanced effects. Massa shows improved results when glufosinate is used in combination with saflufenacil versus when glufosinate is applied alone which implies synergism (page 1, lines 28 through page 2, line 2). Therefore, Massa teaches synergistic effects are not unexpected. Additionally, the showing does not provide unexcepted results commensurate in scope with the claims. The data found in the specification only supports a mixture of glufosinate and saflufenacil, wherein glufosinate is applied at an application rate of 280 g ai/ha and saflufenacil is applied at a rate of 1 g ai/ha. In the declaration tests combinations of L-glufosinate ammonium (L-GA) and saflufenacil wherein L-GA was used in the range of 125-250 g ai/ha and saflufenacil in the range of 1.563-12.5 g ai/ha (ratio of L-GA:saflufenacil 160:1 to 20:1). . Therefore, the showing is not commensurate in scope with the claims which encompasses a much broader range of 100-600 g/L (preferably 150-500 g/L), wherein the rate of saflufenacil is 0.15-15 g/L (preferably 0.2-10 g/L) for glufosinate. Furthermore, Massa teach that synergy is expected when glufosinate is combined with saflufenacil. Therefore, the rejection has been maintained.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached Monday-Friday 9:00 am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1611
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