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 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.
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.
Claim(s) 1-2, 4-7, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peters et al. (WO2018/228985, with US20210292312 used solely as the English translation for citation purposes).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-2, Peters teaches compositions comprising compounds of applicants formula I, specifically I-10, I-11, I-12, etc. which are compounds of applicants formula (I), more specifically of applicant’s formula (Ia) and teaches wherein these compounds can be combined with other active substances including the claimed benoxacor which is a preferred safener ([0016-0043]; [0062-0151]; Table 1 (entries I-10, I-11, I-12, etc.); [0238]; [0243]; [0189-0190]; [0184-0188]; Claims 1-16, 18-22; [0164-0169]; Biological examples).
Regarding claims 4 and 6, Peters teaches products which can comprise the claimed compounds of formula I, specifically formula Ia, can be combined with the claimed benoxacor and used for controlling undesirable plants and which comprise one or more surfactants and/or extenders ([0189]; [0396]; [0393]; [0395]; [0398]; [0407]; [0001]; [0161]; [0016-0043]; [0062-0151]; Table 1 (entries I-10, I-11, I-12, etc.); [0238]; [0243]; [0189-0190]; [0184-0188]; Claims 1-16, 18-22; [0164-0169]; all formulation and biological Examples).
Regarding claim 5, Peters teaches using their compositions comprising the claimed compounds of formula I and which can comprise the claimed benoxacor which are used in methods of controlling one or more undesirable plants and which comprise applying the composition comprising the claimed components or a formulation there to the undesirable plants and/or a habitat thereof ([0001]; [0161]; [0016-0043]; [0062-0151]; Tables, e.g. Table 1 (entries I-10, I-11, I-12, etc.); [0238]; [0243]; [0189-0190]; [0184-0188]; Claims 1-16, 18-22; [0164-0169]; biological Examples).
Regarding claim 7, Peters teaches process for preparing compositions which comprise mixing their compounds of formula I with one or more surfactants and/or extenders and wherein their compositions can further comprise benoxacor which would read on/render obvious the claimed process for preparing a herbicidal composition ([0398-0399]; [0407]; ([0016-0043]; [0062-0151]; Table 1 (entries I-10, I-11, I-12, etc.); [0238]; [0243]; [0189-0190]; [0184-0188]; Claims 1-16, 18-22; [0164-0169]; Biological examples).
Regarding claim 10, Peters teaches wherein the method of controlling undesirable plants comprising applying the composition in the presence of a crop of genetically modified plants ([0167-0169]; [0417-0419]; [0016-0043]; [0062-0151]; Table 1 (entries I-10, I-11, I-12, etc.); [0238]; [0243]; [0189-0190]; [0184-0188]; Claims 1-16, 18-22; [0164-0169]; Biological examples).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-2, 4-7, and 10, Peters does not teach a specific example of the claimed invention.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed combinations because Peters already teaches that the claimed compounds of formula I, and formula Ia are known in the art to be used in the claimed methods on the claimed genetically modified crops to control weeds within the crops, and can be combined with the claimed surfactants and extenders in compositions and can be formed into compositions by mixing the actives with the appropriate surfactants and extenders and where the same actives of formula I and/or formula Ia can be combined with benoxacor and be used to control unwanted vegetation, and be combined with the claimed surfactants and/or extenders to form compositions for controlling weeds and can be mixed together to form a composition with extenders and/or surfactants as claimed. Thus, it would be obvious to form the claimed combinations, compounds, and methods which are instantly taught by looking to Peters because Peters teaches that the claimed compounds of formula I/formula Ia can be combined with the claimed benoxacor and can be used in the claimed methods and/or prepared by the claimed methods and be in the claimed compositions as are instantly claimed and as such the instantly claimed combination, compositions and methods would have been obvious to one of ordinary skill in the art when looking to Peters.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 8, 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peters et al. (WO2018/228985, with US20210292312 used solely as the English translation for citation purposes) as applied to claims 1-2, 4-7, and 10 above and further in view of Moser (CA1243022).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Peters teaches the combination, composition and methods of claims 1-2, 4-7, and 10 as discussed above and incorporated herein.
Regarding claim 11-12, Peters teaches wherein the compound of formula (I) is applied at rates of between 0.1 to 1000 g per ha, specifically 0.005-750 g/ha which read on the claimed ranges of 0.1-1000 g/ha and 1 to 50 g/ha instantly claimed ([0013]; [0185]; Table 1 (entries I-10, I-11, I-12); [0390]). Peters teaches that these compounds can be used selectively in crop plants, specifically transgenic crop plants and can range from 0.001 to 1 kg/ha, preferably from 0.005 and 750 g/ha, which read on the claimed application rates of the compound of formula (I) ([0013]; [0185]; Table 1 (entries I-10, I-11, I-12); [0390]).
Regarding claim 8, 15-16, Peters teaches applying/treating the compounds of formula I and/or formula Ia for post-emergence and pre-emergence treatment ([0164-0165]; [0161]; biological examples [0739-0754]; Claims) and wherein these compounds are known to be used with pre-emergence (soil-acting safeners) ([0239]; [0250]; [0161]; Table 1 (entries I-10, I-11, I-12); [0401]; [0419]; [0250]; [0238]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 11-14, Peters did not teach an application rate for benoxacor which reads on the claimed rate.
Regarding claims 8, 15-16, Peters does not teach treating the seeds with benoxacor before the application of the compounds of formula I pre-emergence or post-emergence.
These deficiencies in Peters are addressed by Moser.
Regarding claim 11-14, Moser teaches the application rate of antidotes including the specifically claimed benoxacor (Table 1 cmpd 1.1) (which is a preferred/very preferred antidote/safener of their invention as it is used in multiple biological examples) is typically from 0.025kg/ha to 5 kg/ha which reads on the claimed application range of between 1 and 1000 g/ha, and the claimed between 10 and 200 g/ha (Claims 26-27; Table 1 (cmpd 1.1); example H1; bridging paragraph pg. 9-10; Pg. 22, ln. 1-4; pg. 9, 2nd full paragraph; pg. 7-8 bridging paragraph; pg. 5, last complete paragraph).
Regarding claims 8, 15-16, Moser teaches benoxacor/ 4-dichloroacetyl-2,3-dihydro-3-methyl-1,4-benzoxazine is a preferred antidote/safener of their invention as it is used in the examples (Claims 26-27; Table 1 (cmpd 1.1); example H1; bridging paragraph pg. 9-10; Pg. 22, ln. 1-4; pg. 9, 2nd full paragraph; pg. 7-8 bridging paragraph; pg. 5, last complete paragraph) and can be applied directly to the seed prior to planting, e.g. dressing the seed of the crop plant prior to planting with the safener/cyproconazole and that the herbicide can be applied to the soil before or after the coated seed is planted as claimed and that it is known to use safeners in amounts effective to reduce phytotoxicity of herbicides on the crop plants being grown (pg. 16-17, seed dressing section).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have used the claimed amounts of benoxacor and apply the benoxacor to the seeds prior to application of the herbicide pre-emergence or post-emergence as claimed. One of ordinary skill in the art would be motivated to do this because firstly Peters teaches that benoxacor is a preferred safener that is useful for mixing with the claimed active agents of formula I/formula Ia and it was known to use safeners with herbicides to lessen/reduce and/or eliminate the phytotoxic effects caused by the herbicides to crop plants in the fields where the herbicides are applied. One of ordinary skill in the art would be motivated to select and/or optimize the amounts of benoxacor and the compound of applicant’s formula (I) to be the claimed amounts/application rates of benoxacor and the application of benoxacor to seeds prior to planting because Moser teaches that benoxacor is an effective safener which was known to be applied in the claimed amounts to fields and was known to be applied to seeds prior to planting in order to reduce crop damage caused by herbicides and both Moser and Peters teach amounts which read/encompass the claimed amounts and it is known to optimize within known ranges to find the most effective amounts within the disclosed ranges. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Thus, it would be obvious to use benoxacor on the seeds prior to the application of the known herbicides of formula I/formula Ia as taught by Peters pre-emergence or post-emergence because this safener was known in the art to reduce crop damage when applied to seeds and/or in combination with herbicides to lessen any phytotoxicity of the herbicides on the crop plants to which it is applied as taught by Moser. One of ordinary skill in the art would want to apply the benoxacor to the seeds prior to planting in order to protect the seeds/seedlings/resultant plants from phytotoxicity caused by herbicides applied to the field where these crops are growing, e.g. herbicides of formula I/Ia which are known in the art and known to be used in conjunction with safeners including the claimed benoxacor.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
Applicants amendments to the claims have overcome the previous claim objections and 112 rejections. Applicants submission of terminal disclaimers over copending application 18000189, 18000223, 18000361, 18000368, 18000345, and 18000370 and their approval on 07/03/25 have also rendered moot these rejections. Thus, these rejections and objections are hereby withdrawn.
Applicants amendments to the claims have also prompted the revised grounds of rejection under 103 applicants arguments insofar as they pertain to the revised grounds of rejection are addressed herein.
Applicants argue that the combination of the claimed herbicide of formula I and benoxacor was unexpectedly successful at preventing damage to crop plants they argue that the reduction in herbicide damage with the safener produces markedly less damage than application of the herbicide alone. The examiner respectfully points out that this is not an unexpected result. Safeners, e.g. benoxacor, by definition are used to reduce damage from herbicides to crop plants. Thus, the argued reduced damage is not at all unexpected contrary to applicant’s arguments.
Thus, the examiner respectfully disagrees that applicants results demonstrate any unexpected herbicidal or safening activities since the safeners are merely functioning as they are known to in the art by reducing herbicidal activity of herbicides on crop plants.
Conclusion
No claims are 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 Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at (571)-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616