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 .
Claims 1-2, 4-8, and 10-16 are pending in this application.
The outstanding objection to claim 7 under 37 CFR 1.75(c) is withdrawn in view of the amendment to claim 7 filed on 7/22/2025.
All outstanding grounds of rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are withdrawn in view of the amendment to the claims filed on 7/22/2025.
The outstanding ground of rejection under 35 USC 101 is withdrawn in view of the amendment to the claims filed on 7/22/2025.
The outstanding ground of rejection under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, is withdrawn in view of cancellation of claim 3 filed on 7/22/2025.
The outstanding ground of rejection under 35 U.S.C. 103 as being unpatentable over Bojack et al. (WO 2019/145245; hereinafter, Bojack) in view of Burckhardt et al. (US 5,215,570) and Vogt et al. (US 2019/0297886) is withdrawn in view of the amendment to the claims filed on 7/22/2025. Bojack et al. do not disclose the Z-4 that is now required by the compound of formula (I) in the amended claims.
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.
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 1-2, 4-8, and 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over Peters et al. (WO 2018/228985; hereinafter, Peters) in view of Burckhardt et al. (US 5,215,570), Vogt et al. (US 2019/0297886), and Agri-Facts1.
Peters (WO 2018/228985) teaches herbicidally active 3-phenylisoxazolinecarboxamides, stereoisomers thereof, and agrochemically acceptable salts thereof (paragraphs 16, 55-57), that are effective against broad spectrum of weeds.2 Peters' isoxazolinecarboxamides include compound I-10, which is a mixture of two diastereomers I-11 and I-12 (page 11, Table 1). The two individual diastereomers are separated by HPLC and separately disclosed (id; paragraphs 556-563). See also analytical data for I-10, I-11, and I-12 on page 36 and extensive pre-emergence (80 g/ha) and post-emergence (320 g/ha) herbicidal data I-10, I-11, and I-12 on pages 62-69. Use with a safener is taught (paragraphs 190, 196, 281-289; claims 15-16). Metcamifen is disclosed by its urea nomenclature, 1-[4-(N-2-methoxybenzoylsulfamoyl) phenyl]-3-methylurea (paragraph 287). Chemical structure of metcamifen is encompassed by the structure of Peters' formula S4c (paragraphs 281-285). Use with safeners is disclosed (paragraphs 190, 196). Controlling monocot or dicot weeds in crop plants is disclosed by applying the compounds prior to sowing, pre-emergence, or post-emergence (paragraphs 161-165). Control of weeds in genetically modified crop plants is disclosed (paragraphs 167-177; claims 20-21). Application to the seed is disclosed (paragraphs 161, 399, 401-406). Application rate of Peters' 3-phenylisoxazoline-carboxamides can vary according to environmental conditions and includes from 0.001 to 1 kg/ha or 0.005 to 750 g/ha (paragraph 390; see also Tables C1-C26). Use with surfactants, carriers, and extenders is disclosed (paragraphs 377-396).
Burckhardt et al. (US 5,215,570) discloses metcamifen as a herbicidal antidote or safener. See compound 1.028 in Table 1. Burckhardt's compound can be applied as a pre-treatment to cultivated seeds or applied to the soil before or after sowing (column 8, lines 24-29). Said compound can also be applied together with a herbicide before or after emergence of plants; said compound can be applied to the seed or plant independently of the time of application of the herbicide (column 8, lines 30-35). Ratio of Burckhardt's safener to herbicide can range from 1:50 to 5:1, and the safener can be applied from 0.1 to 5 kg per kg of seed; wherein the application amount depends to a large extent on the mode of application (column 8, lines 40-55). Concentration of the safener can range from 1 to 10,000 ppm (column 8, lines 55-61). Burkhardt’s Example B2 was carried out with compound 1.060, which is structurally similar to metcamifen, applied to maize seed at application rate of 0.5 g, 1 g, or 2 g per kg of maize seed and herbicides applied pre-emergence or post-emergence (Table in columns 31-34). Protective action is shown to increase with increasing safener rate and with decreasing herbicide rate (Table in columns 31-34).
Vogt et al. (US 2019/0297886) teach that safeners are compounds which prevent or reduce damage on useful plants without having a major impact on the herbicidal action of Vogt's phenylpyrimidine herbicidally active components (paragraph 374). These safeners include metcamifen (paragraph 379), which can be applied to the seed or as a pre-emergence or post-emergence application (paragraph 374). In view of Vogt's combined use with myriad structurally divergent additional herbicides that span various modes of herbicidal activity (paragraphs 281-370), Vogt's disclosure of metcamifen as a suitable safener is a disclosure that would have suggested to the ordinary skilled artisan that metcamifen can be used to safen a wide spectrum of herbicides and modes of action.
Agri-Facts is cited to establish the known relationship between seed weight and seed application rate per area. For example, average sweet corn seeding rate can be calculated as 5 x 380 ÷ 0.9 ÷ 100 = 21.1 kg/ha of sweet corn seed. See the Metric formula on page 2 and cereal seeding rate in Table 2, page 3.
Peters (WO 2018/228985) does not explicitly disclose a specific example of a composition comprising compound of formula (I) or an agrochemically acceptable salt thereof + metcamifen. Peters also does not explicitly disclose a specific example of reducing crop damage by sowing a seed of a crop treated with metcamifen and applying a composition of formula (I) or agrochemically acceptable salt thereof to undesirable plants and/or habitat thereof.
However, Peters teaches metcamifen as a suitable safener for his compound I-10 and its diastereomers I-11 and I-12, all of which have the same formula or structure as Applicant’s formula (I); and both metcamifen is known to be applied to crop seeds. Therefore, it would have been obvious to the ordinary skilled artisan to apply metcamifen to seeds of a crop and combine with pre- or post-emergence application of Peters’ compound I-10, I-11, and/or I-12, which read on Applicant’s formula (I). The ordinary skilled artisan would have expected control of undesirable plants with a known herbicide of the instant claimed invention and he/she would have further expected reduced crop damage from the known safening activity of metcamifen.
Features of new claims 11-16 are discussed hereinbelow.
Formula (I) applied at 0.1-1000 g/ha or 1-50 g/ha
Peters teaches that the application rate of his compounds can vary within wide limits, including 1-1000 g/ha. Peters exemplifies 80 g/ha pre-emergent application rate and 320 g/ha post-emergent application rate. Therefore, the claimed application rate would have been obvious.
Metcamifen applied at 1-1000 g/ha, 10-200 g/ha
Burckhardt et al. (US 5,215,570) disclose metcamifen as a herbicidal antidote or safener. Ratio of Burckhardt's safener to herbicide can range from 1:50 to 5:1, and the safener can be applied from 0.1 to 5 kg per kg of seed; wherein the application amount depends to a large extent on the mode of application (column 8, lines 40-55). Although Burckhardt et al. did not specifically test metcamifen (compound 1.028), a structurally similar compound 1.050 was tested at 0.5, 1, and 2 grams per kg of seed. Agri-Facts teaches an average sweet corn seeding rate of 21.1 kg of seeds per hectare, so Burckhardt’s application rate of safener to seed can be estimated as approximately
21.1 g of safener per hectare for sweet corn for the aforementioned 1 g/kg of seed application rate, for example. Thus, Burckhardt’s exemplified application rate of
0.5, 1, and 2 grams per kg of seed is suggestive of 10.55 g, 21.1 g, and 42.2 g of metcamifen per hectare.
Crop seed treated with metcamifen and compound of formula (I)/salt
applied post-emergent to the crop or pre-emergent to the crop
Peters teaches the same compound and its pre-emergent and post-emergent herbicidal activity, and Burckhardt et al. teach the method of applying a safener to crop seed and then applying herbicides either pre-emergence or post-emergence to the crop. Thus, the ordinary skilled artisan would have found it obvious to apply the known safener metcamifen to crop seed and apply herbicides either pre-emergence or post-emergence to the crop.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Applicant’s arguments filed on 7/22/2025 have been given due consideration but they were deemed unpersuasive. Applicant points to Table 7 of the specification to assert that the “combination of the compound formula (I) with metcamifen was unexpectedly successful at preventing damage to crop plants.” The Examiner cannot agree. Not only does Peters teaches the use of the safener metcamifen for his compounds, including the compound/salt of Applicant’s formula (I), but a safener such as metcamifen is known to reduce herbicidal damage to crop plants. Put another way, the ordinary skilled artisan would have expected reduction in herbicidal damage by applying a safener such as metcamifen, so there is insufficient basis to conclude that the results disclosed in specification Table 7 are evidence of unexpected result. To the contrary, obtaining reduced herbicidal damage would have been the expected result when using Peters’ herbicide with metcamifen.
For these reasons, Applicant’s arguments are found unpersuasive, and all claims must be rejected.
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 JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 See attached PTO-892, Non-Patent Document “U.”
2 All paragraph numbers mentioned here are paragraph numbers of the translation document, which is US 2021/0292312 (cited in Applicant's IDS of 11/30/2022).