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, 3-8, 10-13, 16-17, and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE19915013, and further in view of Shroff et al. (US20100144532), Kraus (of record from previous action WO2017009138), US20160286797A1, CN104604856A, CA3092133, and Kilinc (Turkish Journal of Agri., 2015, 3(6), 491-497).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 3, 6-7, and 10-12, ‘013 teaches herbicidal combinations consisting of aclonifen (PPO inhibitor) and napropamide which are useful for selectively controlling weeds, including grassy/monocot weeds in growing crops, and they specifically report that the combination is effective in rapeseed crops/fields, but broadly disclose that their combinations are useful for a variety of crops which include cereals and wherein the herbicide combination can be applied pre-emergent of the crop or in the field with the growing crops, e.g. post-emergence which would read on applying after planting of the crops and after-emergence of the crops and wherein the combinations can comprise formulation auxiliaries (e.g. solvents, surfactants, etc.) and/or safeners which are allowed by applicant’s instant claims (See entire document; [0041, aclonifen + napropamide]; [0007]; [0001]; [0047-0048]; [0053-0070]; title; abstract; [0077]; [0090-0098]). ‘013 teaches wherein their combinations are useful for controlling the claimed genus of weeds in claim 2 (See entire document; [0041]; [0025]; [0007]; [0081-0082]; all sections cited above).
Regarding claims 16-17, ‘013 teaches wherein the combinations, e.g. the explicit combination of aclonifen and napropamide, are applied at application rates of 1 to 5000 g/ha, specifically 1 to 2000 g/ha of active ingredients which means that the napropamide would obviously read on the claimed application rates (See entire document; [0047]; [0086]; all sections cited above).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding the instant claims 1, 3-8, 10-13, ‘013 does not specifically teach wherein the combinations are applied to cereals, specifically wheat/winter wheat, more specifically pre or post-emergence or after planting of the wheat or to BBCHcereal 01 to BBCHcereal 19 as claimed or wherein the weed is resistant to control by pendimethalin as claimed. However, these deficiencies in ‘013 are addressed by Kraus, US20160286797A1, CN104604856A, and CA3092133.
As discussed previously, Kraus teaches different herbicidal combinations to those now claimed which comprise as an active/effective herbicide napropamide (which has a different mechanism of action from pendimethalin), specifically D or M-napropamide which are applied to cereal crops pre- and post-emergence of the crop and because Kraus teaches that their herbicide combinations comprising the claimed D or M-napropamide can be applied to wheat crops and cereal crops while they are growing the field, and as BBCHcereal 01 to BBCHcereal 19 are known growing phases of cereal crops, and Kraus teaches that their combinations comprising napropamide, specifically D or M-napropamide can be applied to growing cereal crops, then obviously napropamide and/or D or M-napropamide can be applied to cereals during BBCHcereal 01 to BBCHcereal 19, e.g. seedlings, as claimed to control weeds (see entire document; claims; pg. 2, In. 19-34; pg. 3, In. 34-pg. 4, In. 2; pg. 4, In. 16-17; pg. 4, In. 36-37; pg. 6, In. 9-13; pg. 65, In. 1-5; pg. 65, In. 13-34 (seedlings, post- emergence)). Kraus teaches wherein the weeds being controlled with their napropamide containing combinations include the claimed Alopecurus, specifically Alopecurus myosuroides and wherein the weeds are resistant to control by flufenacet (HRAC K3) and/or pendimethalin (HRAC group K1) (pg. 6, 9-30; pg. 46, In. 33-pg. 61, In. 13 (inclusive); specifically pg. 53, In. 22-pg. 54, In. 11).
US 20160286797 A1 teaches that it is known to apply aclonifen (PPO inhibitor) to wheat both pre-emergent and post-planting (See [0003]). CN104604856A teaches it was known to apply it to winter wheat post-emergence (See [0001]). CA3092133 clearly teaches it is a known pre- and post-emergence herbicide and as such can be applied in fields of growing wheat since it is known to compatible with wheat and as such can obviously be applied to cereals during BBCHcereal 01 to BBCHcereal 19 as claimed (See entire document; pg. 1, ln. 7-8). Kilinc teaches that aclonifen is known to be effective in controlling the claimed A. myosuroides (See abstract).
Regarding claims 16-17 and 30, ‘013 does not teach wherein the napropramide is D-napropamide or M-napropamide (different names for same compound as discussed in previous action). However, this deficiency in ‘013 is addressed by Shroff.
Shroff teaches that D-napropamide is 8 times more active than the L-napropamide isomer and about 1.7-2 times more active than the racemic napropamide that is taught by ‘013 (See [0002-0005]).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Regarding claim 5, aclonifen is a PPO inhibitor and has a different mechanism of action from pendimethalin as is evidenced by ‘013 which teaches pendimethalin as a possible mixing partner (b) with the PPO herbicides (See [0016]; [0008]; [0009-0010]; all sections cited above). Thus, aclonifen would obviously be expected to control the claimed weeds which are resistant to pendimethalin since ‘013 teaches that the combination of napropamide and aclonifen alone and/or with a safener or formulation excipients are useful for controlling all of weed genuses listed in claim 2. Thus, it would be obvious to combine aclonifen with napropamide as taught by ‘013 to treat weeds which are pendimethalin resistant as claimed because Kraus teaches that napropamide (which is known to have a different mechanism of action from pendimethalin) has activity and/or effectiveness against such weeds since it has been used in other combinations against the claimed weeds and these types of weeds, and because aclonifen and napropamide both have different mechanisms of action from pendimethalin the combination of these two herbicides would obviously be effective/have activity against pendimethalin resistant weeds, e.g. the weeds claimed and taught by ‘013, etc. as discussed above, and it is known, “It is prima facie obvious to combine two active agents each of which is taught by the prior art to be useful for the same purpose, e.g. controlling Alopecurus weeds and/or pendimethalin resistant weeds in crops such as wheat/cereals, etc. in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to form the claimed method of selectively controlling the claimed weeds in cereal crops comprising applying the combination consisting of napropamide and aclonifen as the only herbicides as claimed because ‘013 first teaches that the combination consisting of aclonifen and napropamide is known in the art and is known to be effective against the claimed weed genuses when used in rapeseed. The broader teachings of ‘013 teach that their combinations are effective in wheat, corn, cereals, etc. and because the secondary references Kraus and US20160286797A1, CN104604856A, CA3092133, and Kilinc each teach that napropamide is known to be effective for controlling weeds, specifically the claimed weeds, in wheat (including winter wheat) pre and post-emergently including in growing wheat, and that aclonifen is known to be useful for controlling the specifically claimed weeds and is useful for weed control in wheat pre- and post-emergently and in growing wheat as claimed. As such it would be obvious to apply the known combination of aclonifen and napropamide as expressly taught by ‘013 to control the claimed weeds in rapeseed to wheat pre-emergently or post-emergently or in growing wheat fields to control the same weeds because it is obvious to combine the two known active agents together into a combination for controlling the claimed weeds in wheat because the combinations is known to be effective for controlling the claimed weeds in other crop species and each of the active agents was already known in the art for controlling the claimed weeds in wheat as is discussed above and because it is known, "It is prima facie obvious to combine two active agents each of which is taught by the prior art to be useful for the same purpose, e.g. controlling Alopecurus weeds in crops, including wheat, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to apply the napropamide as claimed and at the claimed rates instantly claimed because ‘013 teaches applying the combination of aclonifen and napropamide at combined rates which overlap those instantly claimed for napropramide and because it was known that D-napropamide was known to be 1.7-2 times more active in combinations than racemic napropramide and is known to be ~8 times more active that racemic napropramide when used alone as is taught by Shroff so it would have been routine for one of ordinary skill in the art to have optimized the application rate of the M/D-napropamide to read on the claimed application rates when looking to the teachings of ‘013 and Shroff as discussed above. 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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it would be obvious to optimize the amounts of D-napropamide applied to the weeds in the wheat fields/crops in order to form the most effective napropamide + aclonifen combination.
It also would have been obvious for one of ordinary skill in the art to select to use D/M-napropamide of Shroff in place of the racemic napropamide of ‘013 to develop the claimed method because Shroff teaches that the D/M-napropamide isomer was known to be 1.7-2 times more active in combinations than racemic napropramide and is known to be ~8 times more active that racemic napropramide when used alone as is taught by Shroff above.
Regarding the intended use of the method for selective control of monocot weeds, this is result effective of applicants claimed applying step which is taught by the combined prior art as discussed above. Further, "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, whether or not ‘013 teaches that their combination selectively control monocot weeds in wheat, or other crops it is automatically performing these steps whether or not it was recognized by ‘013 and the combined references because this is result effective of the claimed applying step when the claimed combination which is obviously taught by ‘013 is applied in/with crops of wheat especially since ‘013 already recognizes this combination of herbicides to be effective for controlling the claimed weed genus.
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.
Claims 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE19915013, and further in view of Shroff et al. (US20100144532), Kraus (of record from previous action), US20160286797A1, CN104604856A, CA3092133, and Kilinc (Turkish Journal of Agri., 2015, 3(6), 491-497) as applied to claims 1, 3-8, 10-13, 16-17, and 30 above and further in view of Minnesota (https://web.archive.org/web/20181127171658/https://extension.umm edu/planting-small-grains/winter-wheat-seeding-rate-and-depth, cited previously)
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the method of claims 1, 3-8, 10-13, 16-17, and 30 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not teach wherein the cereal crop is planted at the claimed depths of claims 14-15. However, these deficiencies in the combined references are addressed by Minnesota.
Minnesota teaches that it was known in the art to plant cereal crops at depths of at least 1 cm, specifically at least 2 cm, as they teach that typical depths are 1-1.5" for winter wheat (which is greater than 2 cm deep) (see lines 1-2).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to plant the winter wheat at least 1 cm deep, specifically at least 2 cm deep because it was known in the art to plant cereal crops at depths of at least 1 cm, specifically at least 2 cm, as they teach that typical depths are 1-1.5" for winter wheat (which is greater than 2 cm deep). Thus, these were known and/or common depths for planting cereals/winter wheat.
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
Applicant’s amendments to the claims have prompted the new grounds of rejection in this final office action and have overcome the previous grounds of rejection under 112(a), (b), and (d) which are hereby rendered moot/overcome. Applicant’s arguments insofar as they pertain to the new grounds of rejection are addressed herein. Applicant’s argue that Kraus no longer applies as it include cinmethylin which has been excluded. The examiner agrees that Kraus’ combination no longer reads on the claimed combination. However, Kraus is still art for all it teaches and as such it still applies as prior art for teaching that napropamide including D or M-napropamide was known to be used to control the claimed weeds in wheat pre-emergence or post-emergence and while the wheat was growing as discussed above and as such would be safe for application to wheat to control the same weeds instantly claimed and taught to be controlled in ‘013 and as such it remains prior art as a secondary reference for this reason.
Applicants then argue that even if the examiner finds art rendering the claimed combination obvious that they have provided the declaration of Nikos Maltabes with their response which demonstrates that the claimed combinations are effective for controlling weeds in cereal crops. The examiner will address the declaration below but the declaration is not persuasive because it was already known to be obvious to combine two known herbicides which are known to be capable of/effective for controlling weeds in wheat crops pre or post emergence or while growing together in order to form a herbicidal combination for the same purpose.
Declaration Under 1.132
Nikos Maltabes provided a declaration under 1.132, filed 06/23/26. The Declaration meets the formal requirements. In the most relevant part, the Declaration presents data which shows that the claimed combinations are slightly more effective than the calculated additive result. However, the results are very close to the expected additive results within less than 5% and some even are less than 1% difference between the observed and expected additive result. As such, it appears that the observed results are within standard error of the expected additive result and the results do not appear to be of statistical significance for proving synergy. The data also shows that the combinations were effective for controlling grassy weeds in wheat crops which again is not unexpected in light of the combined teachings of the prior art above.
A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the
Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d
1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than
merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5)
whether the prima facie case is sufficiently strong that allegedly superior results are insufficient
to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed.
Cir. 2007)). The relevant criterion here is No. 5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed.Cir. 2007)). The examiner has carefully reviewed the Declaration, including the data presented in the Declaration.
In the most relevant part of the included declaration In the most relevant part, the Declaration presents data which shows that the claimed combinations are slightly more effective than the calculated additive result. However, the results are very close to the expected additive results within less than 5% and some even are less than 1% difference between the observed and expected additive result. As such, it appears that the observed results are within standard error of the expected additive result and the results do not appear to be of statistical significance for proving synergy. The data also shows that the combinations were effective for controlling grassy weeds in wheat crops which again is not unexpected in light of the combined teachings of the prior art above. As such it appears that the obviousness rejection is sufficiently strong to overcome the results presented especially since it does not appear that applicants increased results of the combination are statistically significant. Applicant’s are directed to MPEP 716 regarding their declaration, specifically 716.02 (b) which states, that the burden is on applicant to establish that their results are unexpected and significant neither of which appears to be present in the data presented in this declaration, specifically “The evidence relied upon should establish ‘that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.’” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992)
The standard for an obviousness rejection is a reasonable expectation of success. In the instant case, the combined teachings of the prior art render it obvious to make the claimed combination and one of ordinary skill in the art would have a reasonable expectation it would lead to the claimed method when applied to wheat fields because of the combined teachings of the prior art.
Thus, for the above reasons, the examiner maintains that it would have been obvious to one of ordinary skill in the art at the time of the instant filing to have developed the claimed method when looking to the prior art references as combined at this time.
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
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