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 .
The Examiner of this application has changed from Samantha Knight to Danielle Johnson. Applicants amendment filed 2/17/2026 has been entered. Claims 1, 2, 4-6, 13 and 14 were amended. New claims 17 and 18 were added. Claims 1-8 and 13-18 are pending.
Claim Objections
Claim 18 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 17. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/17/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites the method of claim 1 wherein a list from a. through g. is claimed which is indefinite. The claim appears to be a list of alternatives, however it is unclear if a-g are optional, alternatives or lastly if a. through f. are required OR g alone. The metes and bounds of the claim cannot be deciphered because it appear that a. through g. are all required however, c. states isoxadifen is applied pre-emergence, whereas d. states that isoxadifen is applied post-emergence which cannot occur at the same time. For the purpose of examination the examiner has treated the claim as the method of claim 1, wherein any one of the alternatives a. through g. exists.
Claim 6 recites the limitation "wherein the one or more one or more" in reference to claim 1. There is insufficient antecedent basis for this limitation in the claim.
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 1-8 and 13-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 11, 13, 30, 44 of copending Application No. 16/982,981 (herein ‘981) in view of Gast et al. (US 2017/0156324). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to a method of controlling undesired vegetation in the vicinity of an ACCase tolerant sorghum crop comprising applying a) an effective amount of a mixture consisting of one or more ACCase inhibiting herbicide; and b) an effective amount of isoxadifen, esters or salt thereof to a locus of the undesired vegetation, whereas claim 10 of ‘981 is directed to controlling undesired vegetation at the locus of an herbicide resistant rice crop. It is for this reason that Gast is joined. Gast teaches methods of controlling undesirable vegetation ([0007]) in ACCase tolerant rice ([0014]) and sorghum crops ([0007]) comprising applying a composition containing propaquizafop (i.e. an ACCase inhibiting herbicide) ([0040]) and isoxadifen-ethyl ([0041]) to a locus of the undesired vegetation ([0007]). Since both sorghum and rice crops are suitable ACCase tolerant crops it would have been prima facie obvious for one of ordinary skill in the art to combine the teachings of ‘981 and Gast and treat ACCase tolerant sorghum with a reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 13 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Satchivi et al. (WO 2020/096833; published May 14, 2020).
Applicant claims an ACCase tolerant sorghum crop obtainable by treating sorghum crop with isoxadifen, ester or salts thereof.
Satchivi et al. discloses sorghum (SORVU, sorghum vulgare) treated with isoxadifen-ethyl and their safening properties (Example 5; [0101-0102]). Since the process step to obtain the properties are the same the crop would inherently possess the property of being ACCase tolerant.
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 (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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Gast et al. (2017/0156324; published Jun 8, 2017).
Applicant claims an ACCase tolerant sorghum crop obtainable by treating sorghum crop with isoxadifen, ester or salts thereof. Claim 13
Gast teaches methods of controlling undesirable vegetation in sorghum crops areas including contacting the undesirable vegetation or the locus thereof with a composition containing a herbicidally effective amount of (a) a compound of formula (I), (b) florasulam, and (c) pyroxsulam ([0007]). Sorghum crops may be genetically modified to be tolerant to various herbicides including acetyl CoA carboxylase (ACCase) ([0014]). The compositions and methods are utilized to control undesirable vegetation that occurs in annual crops such as ACCase-tolerant sorghum ([0060]). The composition may contain one or more additional herbicides including propaquizafop (i.e., ACCase inhibiting herbicide) ([0040]). The composition may be employed in combination with one or more herbicide safeners such as isoxadifen-ethyl (([0041]).
Therefore, it would have been prima facie obvious to combine the teachings of Gast to obtain an ACCase tolerant sorghum crop with increased tolerance by treating the sorghum crop with isoxadifen with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Gast and treat sorghum with isoxadifen because Gast teach ACCase-tolerant sorghum have increased tolerance to ACCase inhibiting herbicides and treating sorghum with isoxadifen-ethyl would be expected to increase herbicide tolerance of sorghum crops.
Claim(s) 1, 2, 4-8 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hofer et al. (US 2004/0242422; published December 2, 2004) in view of Gast et al. (2017/0156324; published Jun 8, 2017).
A method of controlling undesired vegetation in the vicinity of an ACCase tolerant sorghum crop comprising applying a) an effective amount of a mixture consisting of one or more ACCase inhibiting herbicide; and b) an effective amount of isoxadifen, esters or salt thereof to a locus of the undesired vegetation. Claim 1
A method of controlling undesired vegetation in the vicinity of an ACCase tolerant sorghum crop comprising applying a) an effective amount of isoxadifen, esters or salt thereof; and applying b) an effective amount of a mixture consisting of one or more ACCase inhibiting herbicide to a locus of the undesired vegetation. Claim 14
With respect to claims 1, 4-8 and 14-18, Hofer teaches herbicidal synergistic compositions comprising clodinafop-propargyl and a synergistically effective amount of at least one compound selected from fenoxaprop-P-ethyl, in addition to customary inert formulation adjuvants (abstract). The combination of two actives is capable of controlling both preemergence and post-emergence the majority of weeds occurring in crops of useful plants without substantially damaging the useful plant [0005]. The weeds controlled include Sorghum halepense (Johnsongrass) and Cyperus (sedge) and the composition is suitable especially for controlling weeds in cereals including crops that have been made tolerant to herbicides or classes of herbicides as a result of breeding or genetic engineering [0010 and claims 4 and 5; limitation of claims 7, 8, 15 and 16]. Compositions that are especially effective include mixtures of clodinafop-propargyl with fenoxaprop-P-ethyl and mefenpyr-diethyl or isoxadifen [0012; limitation of claims 1 and 14]. Rates of application range from 0.1-5 kg of active ingredient mixture/ha (100-5000 g/ha) [0013; limitation of claims 4 and 5]. The adjuvants are selected from solid carriers, surfactants (wetting agents), anti-foaming agents, binders, tackifiers, viscosity regulators and fertilizers [0019-22; limitation of claims 17 and 18]. The active ingredients may be applied together as mixtures or alone post-emergence or pre-emergence [0051-52].
With respect to claims 1, 4-8 and 14-18, Hofer do not teach an ACCase tolerant sorghum group, however Hofer does teach the composition is suitable especially for controlling weeds in cereals including crops that have been made tolerant to herbicides or classes of herbicides. With respect to claim 2, Hofer does not specify the ACCase inhibitor is selected from propaquizafop. It is for this reason that Gast et al. is joined.
With respect to claims 1, 2, 4-8 and 14-18, Gast teaches methods of controlling undesirable vegetation in sorghum crops areas including contacting the undesirable vegetation or the locus thereof with a composition containing a herbicidally effective amount of (a) a compound of formula (I), (b) florasulam, and (c) pyroxsulam ([0007]). Vegetation includes dormant seeds, germinant seeds, and emerging seedlings ([0012]). The composition is applied pre-emergence or post-emergence to the undesirable vegetation ([0011] and claims 19 and 20). Sorghum crops may be genetically modified to be tolerant to various herbicides including acetyl CoA carboxylase (ACCase) ([0014]). The compositions and methods are utilized to control undesirable vegetation that occurs in annual crops such as ACCase-tolerant sorghum ([0060]). The composition may contain one or more additional herbicides including propaquizafop (i.e., ACCase inhibiting herbicide) ([0040]; limitation of claim 2). The composition may be employed in combination with one or more herbicide safeners such as isoxadifen-ethyl (([0041]). The components of the composition may be applied either separately, sequentially, or tank-mixed ([0051]). The composition is applied at an application rate from about 1.00 grams active ingredient per hectare (g ai/ha) to about 100 g ai/ha ([0050]). The undesirable vegetation may be Sorghum halepense (L.) Pers. (Johnsongrass, SORHA) and Sorghum bicolor (i.e., a monocot) (L.) Moench ssp., Cenchrus echinatus L. (southern sandbur, CENEC), or Arundinaceum (shattercane, SORVU) ([0063]) and sedge weeds ([0066]).
Thus, Gast teaches methods of controlling undesirable vegetation ([0007]) in ACCase tolerant ([0014]) sorghum crops ([0007]) comprising applying a composition containing propaquizafop (i.e. an ACCase inhibiting herbicide) ([0040]) and isoxadifen-ethyl ([0041]) to a locus of the undesired vegetation ([0007]).
Both Hofer and Gast teach methods of treating cereal crops with ACCase inhibitors and isoxadifen as a safener to reduce the phytotoxic effects of the herbicides. Therefore, it would have been prima facie obvious to combine the teachings of Hofer and Gast to control undesired vegetation growth in the vicinity of an ACCase tolerant sorghum crop with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Hofer and Gast to treat ACCase tolerant sorghum crops because Hofer and Gast both teachings herbicide tolerant cereal crops and Gast teach annual cereal crops include ACCase-tolerant sorghum.
With respect to claim 2, it would have been prima facie obvious to combine the teachings of Hofer and Gast to control undesired vegetation growth in the vicinity of an ACCase tolerant sorghum crop wherein the ACCase inhibitor is propaquizafop with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Hofer and Gast to treat ACCase tolerant sorghum crops with propaquizafop because Gast teach propaquizafop is an additional herbicide that can be used to treat ACCase tolerant sorghum.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hofer et al. (US 2004/0242422; published December 2, 2004) in view of Gast et al. (2017/0156324; published Jun 8, 2017) as applied to claims 1, 2, 4-8 and 14-18 in further view of Rosinger et al. (US 2007/0010398; published January 11, 2007).
A method of controlling undesired vegetation in the vicinity of an ACCase tolerant sorghum crop comprising applying a) an effective amount of a mixture consisting of one or more ACCase inhibiting herbicide; and b) an effective amount of isoxadifen, esters or salt thereof to a locus of the undesired vegetation. Claim 1
The teachings of Hofer and Gast are addressed in the previous 103 rejection. Hofer and Gast teach the use of isoxadifen but does not specify isoxadifen-diethyl. It is for this reason that is Rosinger is joined.
Rosinger discloses herbicidal compositions (abstract) which can be used against unwanted vegetation and which comprise, as active compounds, a combination of at least two herbicides and one safener ([0002]). Safeners include isoxadifen-diethyl ([0018]). The compositions according to the invention act against herbicide-resistant plants in cereals ([0044]), including a broad spectrum of weeds, like Sorghum halepense ([0067]).
Hofer, Gast and Rosinger teach methods of treating cereal crops with isoxadifen as a safener to reduce the phytotoxic effects of herbicides. Therefore, it would have been prima facie obvious to combine the teachings of Hofer, Gast and Rosinger to use isoxadifen-diethyl with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Hofer, Gast and Rosinger to use isoxadifen-diethyl because Rosinger teach isoxadifen-diethyl is a safener used on herbicide-resistant plants against a broad spectrum of weeds.
Conclusion
No claims allowed.
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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DANIELLE D. JOHNSON
Examiner
Art Unit 1617
/BETHANY P BARHAM/ Supervisory Patent Examiner, Art Unit 1611
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