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 .
Response to Amendment
The Amendment filed 12/22/2025 has been entered. Applicant’s amendments are in response to in the Non-Final Office Action mailed 09/22/2025. Applicant’s claims have been amended in the following manner: claims 1-2 have been modified by a narrowing of the chemical species and specifying the chemical to safener ratio (the ratio is roughly drawn from previously cancelled claim 3, and supported by Example formulations of the instant Specification) such that the thrust of the current rejection remains similar to the previous rejection. However, the previous 102 rejection is now replaced with a 103 rejection, constituting a new grounds of rejection that is prompted by Applicant’s amendments. The following objections/rejections are withdrawn: the previous 102/103 rejection is withdrawn (but replaced by a 103 rejection prompted by the amendments).
Furthermore, Applicant was notified by telephone and email that the newest IDS (filed on 01/05/2026) was unable to be visualized by USPTO software (see notes below).
The Examiner further acknowledges the following:
Claims 1-2, 4-8, and 10 are pending.
Claims 4-8 and 10 are withdrawn from consideration as directed to non-elected inventions.
Claims 1-2 are presented for examination and rejected as set forth below.
Information Disclosure Statement
The Information Disclosure Statement (IDS), filed 01/05/2026, has a technical problem and cannot be displayed. USPTO IT has recommended the document be refiled in the correct file format, as the issue cannot be fixed at the USPTO. The IDS file states “your PDF viewer may not be able to display this type of document.” USPTO IT confirmed (specifically, “What you are seeing in DAV is the actual TIFF image that was entered into the legal record. That IDS came in via Patent Center, and Patent Center's converter to TIFF produced that TIFF image. These items should go to "Patent Center" -> "Filing".”) that the error was not something they could address, and could only be rectified by filing a new IDS correctly (which was communicated to Applicant twice). Thus, because it cannot be read, the IDS filed on 01/05/2026, has not been considered in this Action. Notably, previously filed IDSs for this Application did not have this error.
Applicant was notified of the IDS issue, and responded by stating that they may eventually abandon the Application, suggesting it is not an issue that requires immediate correction (see attachment).
Claim Objections
Claims 1-2 recite the term “about” to describe numerical values, where the numerical value is unclear. The Examiner suggests “about” should be removed and considers the claim values as if the term “about” was not present. See MPEP 2173.05(b)(i).
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 1-2 are rejected as being unpatentable by 35 U.S.C. 103 over Peters (WO2018228985A1), and in further view of Rosch (US5703008A; same patent family as WO-A-91/07874, which is referenced within Peters on pg 21; cited on the IDS filed 11/30/2022).
Applicant’s claims are directed to a combination comprising (a) a substituted isoxazolincarboxamide of formula (I) and (b) mefenpyr-diethyl. The weight ratio of the compound of formula (I) to mefenpyr-diethyl is about 0.005 to 60.
Applicant selects species I.68 from Table 1 of US20230200390A1, and the species election is maintained. It is further noted that Applicant has amended the claims set to focus on this elected species.
PNG
media_image1.png
271
357
media_image1.png
Greyscale
PNG
media_image2.png
67
358
media_image2.png
Greyscale
PNG
media_image3.png
82
350
media_image3.png
Greyscale
Peters teaches 3-phenylisoxazoline-5-carboxamides of tetrahydro and dihydrofuran carboxylic acids and esters and use thereof in the field of plant protection.
Regarding claims 1-2: Peters teaches substituted isoxazolincarboxamides of formula (I) (Peters – claim 1) in combination with mefenpyr-diethyl (Peters – claim 17), where mefenpyr-diethyl is a particularly preferred safener (pg 29, near bottom of page). Peters specifically teaches compound I-10 (from Table 1, that is shown below), where Z-1 is in the form of a 2,4-cis configuration (under “Kommentar”, where the machine translation did not translate all of the German, but google translation deciphers the meaning of German words in combination with the original Table 1 from the original German language publication), which reads on the elected species shown above (I.68 from Table 1 of US20230200390A1), based on the structures, substitution, and similar drawing notations of orientation.
PNG
media_image4.png
155
501
media_image4.png
Greyscale
PNG
media_image5.png
95
77
media_image5.png
Greyscale
PNG
media_image6.png
237
752
media_image6.png
Greyscale
Peters motivates the selection of compound I-10 because Peters teaches “surprisingly, it has now been found that the subsequently defined 3-phenylisoxazoline-5-carboxamides of tetrahydro- and dihydrofuran carboxylic acids and esters of the formula (I) and their salts have excellent herbicidal activity against a broad spectrum of economically important monocotyledonous and dicotyledonous harmful plants” (pg 2). Peters also teaches the effectiveness of control for I-10 (pg 87-115; or pg 121-122 of the German language publication version) against various undesired plants and weeds such as ALOMY (Table 1), AVEFA (Table 2), etc. (pg 121-145 of the German language publication version).
In summary, Peters teaches the instant elected species in combination with mefenpyr-diethyl for use against undesired plants and weeds. However, Peters does not specify the chemical to safener ratio as 0.005 to 60 (instant claim 1-2).
Rosch teaches the application rate of the safener mefenpyr-diethyl, where safeners are compounds that protect crop plants without adversely affecting the herbicidal action of herbicides (col 1, lines 1-15) (same patent family as WO-A-91/07874, which was referenced by Peters in the discussion of mefenpyr-diethyl (pg 21)). The application rate of the safeners of Rosch is a molar ratio of safener and herbicide is between 1:10 (0.091) and 10:1 (Rosch – claim 7) (reading on the 0.005 to 60 ratio of instant claim 1).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the herbicide safener combination of Peters for the specified application rates of Rosch because these application rates are known in the art to provide effective outcomes when an herbicide and safener are used in combination. Furthermore, the application rates and amounts are something a person of ordinary skill in the art would optimize for improved efficacy, as taught by Peters and Rosch.
Finally, Rosch (who is cited by Peters on pg 21, when discussing mefenpyr-diethyl) teaches that safeners are compounds that provide exactly the same beneficial effect claimed by Applicant (i.e., protect crop plants without adversely affecting the herbicidal action of herbicides (col 1, lines 1-15), where Rosch shows an 82-85% reduction in damage (i.e., derived from 100% - “15-18%” herbicidal action in col 14, Table 3) in HOVU barley, postemergence (col 13, Example 1).
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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-22 of Peters (US11597724B2; same patent family as WO2018228985A1), and in further view of Rosch (US5703008A).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets teach the same species of herbicidal compound (I-10 from Table 1) and suggest a combination with mefenpyr-diethyl (Peters - claim 1 and 17).
Rosch teaches the application rates of the safener (similarly described in the 103 above), as suitable for herbicide and safener combinations for protecting the plant and not affecting herbicidal activity.
Thus, the instant claims are obvious.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of Bojack (US12319664B2), and in further view of Peters (WO2018228985A1) and Rosch (US5703008A).
Although the claims at issue are not identical, they are not patentably distinct from each other because all claim sets teach herbicidal phenylisoxazoline carboxamides (where Z-1 is slightly different compared to the instant formula structure (Bojack – claim 1)) in combination with mefenpyr-diethyl (Bojack - claim 9).
This is resolved by the disclosure of the instant species in Peters (see 103 above), where functionally the instant species has similar bioactivity to the compounds of Patent ‘664.
Rosch teaches the application rates of the safener in combination with herbicides (similarly described in the 103 above), as suitable for protecting the plant and not affecting herbicidal activity.
Thus, the instant claims are obvious.
Response to Arguments
Applicants arguments, see pg 9-12, filed 12/22/2025, with respect to the 102/103 rejection of claims 1-3 under rejection have been fully considered and are persuasive. Therefore, the 102/103 rejections have been withdrawn. However, upon further consideration and in view of applicant’s amendments to the claims, a new ground of rejection is made in view of the same references previously used. Furthermore, the claim for unexpected results has been found unpersuasive (as discussed below).
With respect to chemical nomenclature being discussed, note that the instantly claimed species (claims 1-2), compound 1.68 (Applicant’s Specification), and compound I-10 (Table 1 of Peters) are the same compound.
Furthermore, mefenpyr-diethyl (instant claims 1-2, Specification, Peters) and Example 3 (Rosch - col 9, lines 10-20; Ethyl 1-(2,4-dichlorophenyl)-5-methyl-5-ethoxycarbonyl-pyrazoline-3-carboxylate) are the same compound. As evidenced by Desomer (WO2017198451A1), the chemical structure to nomenclature relationship is verified (pg 6, lines 20-25).
On page 9-10, Applicant argues that the amendments prompt a withdrawal of the 102 rejection due to the amendment specifying the chemical to safener ratio as 0.005 to 60. The argument is persuasive and the 102 rejection is withdrawn. However, the Prior Art on record still teaches the instant claims as obvious (see 103 above).
On page 10-11, Applicant argues an unexpected result relying on the data for compound 1.68 (representative of the instant herbicidal species of claims 1 and 2) in combination with mefenpyr-diethyl, citing a 75-100% reduction in damage for HORVS Montoya, spring barley in Tank-mix post-emergence (Table 2) and HORVS Montoya, spring barley in seed treatment, pre-emergence (Table 7).
However, Rosch demonstrates in the discovery of mefenpyr-diethyl (i.e., Example 3 compound (col 9, lines 10-20)) that mefenpyr-diethyl (Example 3) produces effective plant protective effects in combination with many herbicides (col 3-5), and highlights an example herbicide (i.e., fenoxaprop-ethyl), where Rosch shows an 82-85% reduction in damage (i.e., derived from 100% - “15-18%” herbicidal action in col 14, Table 3) in HOVU barley, postemergence (col 13, Example 1).
From the Table 3, mefenpyr-diethyl (Example 3) is clearly one of the better performing safeners in HOVU (i.e., the reduction in damage is of a higher magnitude than others), and Peters also identifies mefenpyr-diethyl as a preferred safener compared to other safeners from Rosch’s disclosure (Peters – claim 17; recites mefenpyr-diethyl as one of six preferred safeners for use in combination with isooxazoline compounds of Formula I)). Furthermore, Rosch teaches the safeners of the disclosure (i.e., mefenpyr-diethyl) to work in conjunction with a wide variety of herbicides (col 3-5), but more importantly, Peters teaches mefenpyr-diethyl to specifically work with compound 1.68 (i.e., Peter teaches substituted isoxazolincarboxamides of formula (I) (Peters – claim 1) (especially, compound I-10 in Table 1, which is the same structure as the instant herbicide of claims 1-2).
Regarding unexpected results, note that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Consequently, we must determine whether the results obtained in the closest prior art and those set forth by Applicants are sufficiently different in kind, and not merely in degree, so as to be unexpected by a person of ordinary skill in the art at the time of invention. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (Unexpected results that are probative of nonobviousness are those that are "different in kind and not merely in degree from the results of the prior art") (citation omitted).
In this case, the instant results are considered expected based on three elements, which summarize the discussion above:
Peter teaches the obviousness of combining substituted isoxazolincarboxamides of formula (I) (Peters – claim 1) (especially, compound I-10 in Table 1, which is the same structure as the instant herbicide of claims 1-2) in combination with mefenpyr-diethyl (Peters – claim 17; recites mefenpyr-diethyl as one of six preferred safeners for use in combination with isooxazoline compounds of Formula I).
Rosch teaches the obviousness of active ingredient herbicides to mefenpyr-diethyl ratio of 1:10 to 10:1 (col 5, lines 28-30), where Peter directly references Rosch for teachings of mefenpyr-diethyl (pg 21).
Rosch teaches that the combination of the active ingredient herbicides and mefenpyr-diethyl demonstrates a plant protective effect similar in magnitude to what Rosch demonstrates for an example herbicide (i.e., 75-100% reduction in spring barley (HORVS) plant damage in the instant Application vs. 82-85% reduction in barley (HOVU) plant damage in Rosch, using similar treatment methods with similar plant species). Thus, a PHOSITA would expect the demonstrated reductions in plant damage of the instant Specification, because the instant species of claims 1-2 and mefenpyr-diethyl have already been taught to be compatible by Peters (see point #1 above).
Thus, at the time of filing, a PHOSITA has been provided with all of the elements and motivations to make the instant composition of claims 1-2, and the results demonstrated by Applicant are expected because the Art recommends the exact instant species in combination with mefenpyr-diethyl combination. Furthermore, the magnitude of plant damage reduction in the instant Specification (discussed in point #3 above) is not significantly different from Rosch’s examples for mefenpyr-diethyl in Table 3 (Example 3), under similar experimental conditions.
The Examiner further notes similar scales of plant damage reduction across all example analog compounds of Applicant’s Specification (Tables 2-9), demonstrating that the safener effect is a general effect that is not particularly sensitive to the herbicide they are combined with in order to be effective, which is the type of efficacy expected by the combined teachings of Peters and Rosch.
On page 11, Applicant argues for the withdrawal of the nonstatutory double patenting rejection. Because the arguments against the 103 (newly implemented) are not persuasive, the double patenting rejection is maintained.
On page 12, Applicant concludes.
Correspondence
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJAN PRAGANI whose telephone number is (703)756-5319. The examiner can normally be reached 7a-5p EST (M-Th).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.P./Examiner, Art Unit 1614 2/4/2026
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614