DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 26, 2026 has been entered.
Previous Rejections
Applicant’s arguments, filed February 26, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Status
Claims 10, 12, 15, 16, and 18-20 are withdrawn.
Claims 1, 7, and 9 are examined here-in.
Claim Rejections - 35 USC § 102 (Maintained)
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.
Claims 1, 7, and 9 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Nevill (US 2002/0004457 A1, of record).
Nevill discloses the combination of clethodim with carfentrazone-ethyl as well as the combination of clethodim with pyraflufen-ethyl (paragraphs 0049, 0051, 0053, 0055, 0057). Furthermore, Nevill teaches that the combination of clethodim with carfentrazone-ethyl illustrates synergistic activity when applied to sugar beets, soya, rapeseed, cotton, and sunflowers (paragraphs 0048, 0050, 0052, 0054, 0056). Nevill measures synergy with Colby’s equation (paragraph 0097).
Nevill’s teachings of clethodim with carfentrazone-ethyl and clethodim with pyraflufen-ethyl anticipate instant claims 1 and 7. Nevill’s teachings of carfentrazone-ethyl and clethodim with pyraflufen-ethyl for herbicidal use appears to be capable of meeting the intended use limitation of controlling weeds and undesirable vegetation from non-agricultural land, amenities, orchards, vines, fruit trees, and post-harvest crop lands because the action of controlling weeds would be the same regardless of the location of the weed. According to MPEP 2111.02(ii), “to satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim”. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
The functional limitations recited for claims 1 and 7 (i.e. “wherein the combination exhibits a synergistic herbicidal effect as determined by Colby’s equation, with the observed efficacy exceeding the expected efficacy”) are the result of a combination of clethodim and at least one other herbicide from the group carfentrazone, carfentrazone-ethyl, pyraflufen, and pyraflufen-ethyl as taught by Nevill since it does not appear from the instant disclosure that additional elements are required to cause the functional limitations (examples 1 - 3 in the instant specification include clethodim and carfentrazone-ethyl, pyraflufen, or pyraflufen-ethyl without any additional ingredients). According to MPEP 2112(III) and 2163.07(a), an inherent feature of a composition or method does not need to be explicitly recognized in the prior art for the prior art to be applied. Said differently, “By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it” MPEP 2163.07(a).
Since combination of clethodim and at least one other herbicide from the group carfentrazone, carfentrazone-ethyl, pyraflufen, and pyraflufen-ethyl as taught by Nevill appears to overlap with the claimed composition, the skilled artisan would have expected that the composition of Nevill would display the same synergy according to Colby’s equation as that which is instantly claimed. Something which is old (e.g., the composition of Nevill) does not become patentable upon the discovery of a new property (e.g., synergy according to Colby’s equation), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I) and 2112(II). Put another way, "When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art." In re Spada, 911 F .2d 705, 709, (Fed. Cir. 1990). Therefore, since Nevill’s prior art teachings recite the combination of clethodim and at least one other herbicide from the group carfentrazone, carfentrazone-ethyl, pyraflufen, and pyraflufen-ethyl, the functional limitations of claims 1 and 7 are anticipated.
Nevill teaches that the herbicidal combination can be included in a customary formulation with one or more carrier compounds (paragraphs 0074-0076), anticipating instant claim 9.
However, in the event that the previous does not have sufficient specificity to rise to anticipation, claims 1, 7, and 9 are rejected under 35 U.S.C. 103 below.
Examiner’s Reply to Attorney Arguments Dated February 26, 2026
Applicant argues that Nevill does not anticipate claim 1 because it does not disclose each and every limitation of the claim, particularly the requirement that the synergistic clethodim combination is for controlling weeds and undesirable vegetation in the recited non-agricultural and perennial-crop and post-harvest loci (Remarks page 6). This argument is not persuasive, because as discussed in the body of the rejection above, Nevill teaches combinations of clethodim with carfentrazone-ethyl or pyraflufen-ethyl (paragraphs 0049, 0051, 0053, 0055, 0057), reading on the required components of the instant claims. With regards to Applicant’s recitation “for controlling weeds and undesirable vegetation from non-agricultural land, amenities, orchards, vines, fruit trees, and post-harvest crop lands” is intended use. According to MPEP 2111.02(ii), “to satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim”. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In this case, Nevill’s teachings of carfentrazone-ethyl and clethodim with pyraflufen-ethyl for herbicidal use appears to be capable of meeting the intended use limitation of controlling weeds and undesirable vegetation from non-agricultural land, amenities, orchards, vines, fruit trees, and post-harvest crop lands because the action of controlling weeds would be the same regardless of the location of the weed, i.e. the “structure” of the herbicidal combination as taught by Nevill is the same as that which is instantly claimed. Lastly, with regards to the functional limitations recited for claims 1 and 7 (i.e. “wherein the combination exhibits a synergistic herbicidal effect as determined by Colby’s equation, with the observed efficacy exceeding the expected efficacy”) – synergism appears to be the result of a combination of clethodim and at least one other herbicide from the group carfentrazone, carfentrazone-ethyl, pyraflufen, and pyraflufen-ethyl as taught by Nevill since it does not appear from the instant disclosure that additional elements are required to cause the functional limitations (examples 1 - 3 in the instant specification include clethodim and carfentrazone-ethyl, pyraflufen, or pyraflufen-ethyl without any additional ingredients). Since the combination of clethodim and at least one other herbicide from the group carfentrazone, carfentrazone-ethyl, pyraflufen, and pyraflufen-ethyl as taught by Nevill appears to overlap with the claimed composition, the skilled artisan would have expected that the composition of Nevill would display the same synergy according to Colby’s equation as that which is instantly claimed. Something which is old (e.g., the composition of Nevill) does not become patentable upon the discovery of a new property (e.g., synergy according to Colby’s equation), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I) and 2112(II). Put another way, "When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art." In re Spada, 911 F .2d 705, 709, (Fed. Cir. 1990). Therefore, since Nevill’s prior art teachings recite the combination of clethodim and at least one other herbicide from the group carfentrazone, carfentrazone-ethyl, pyraflufen, and pyraflufen-ethyl, the functional limitations of claims 1 and 7 are anticipated.
For the reasons discussed above, the 35 U.S.C. 102 rejection over claims 1, 7, and 9 is maintained.
Claim Rejections - 35 USC § 103 (Maintained)
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 non-obviousness.
Claims 1, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Nevill (as cited above).
For the purposes of this ground of rejection only, and purely arguendo, the examiner will take the position that Nevill does not teach a specific embodiment (i.e., preferred embodiment, working example, etc.) having all of the claimed elements arranged as required by the claim without resorting to some “picking and choosing” within the prior art disclosure. That being said, although Nevill thus would not be anticipatory by this interpretation of the facts, it nevertheless does fairly suggest the claimed invention, as shown below.
Nevill discloses the combination of clethodim with carfentrazone-ethyl as well as the combination of clethodim with pyraflufen-ethyl (paragraphs 0049, 0051, 0053, 0055, 0057). Furthermore, Nevill teaches that the combination of clethodim with carfentrazone-ethyl illustrates synergistic activity when applied to sugar beets, soya, rapeseed, cotton, and sunflowers (paragraphs 0048, 0050, 0052, 0054, 0056). Nevill also teaches that the herbicidal combination can be included in a customary formulation with a carrier compound (paragraphs 0074-0076).
Claims 1, 7, and 9 are rendered prima facie obvious over the teachings of Nevill because it is prima facie obvious to combine prior art elements according to known methods in order to yield predictable results (MPEP 2143(I)(a)). In the instant case, all the claimed elements (e.g. clethodim, carfentrazone-ethyl, pyraflufen-ethyl, carrier compound) were known in the prior art (e.g. herbicidal compositions) and one skilled in the art could have combined the elements as claimed by known methods to with no change in their respective function with the combination yielding nothing more than predictable results to one of ordinary skill in the art. A person of ordinary skill in the art would have been motivated to use the combinations of clethodim with carfentrazone-ethyl or clethodim with pyraflufen-ethyl because Nevill teaches the combinations have synergistic activity (paragraphs 0048, 0050, 0052, 0054, 0056).
Nevill’s teachings of clethodim with carfentrazone-ethyl and clethodim with pyraflufen-ethyl reads on instant claims 1 and 7. Nevill’s teachings of carfentrazone-ethyl and clethodim with pyraflufen-ethyl for herbicidal use appears to be capable of meeting the intended use limitation of controlling weeds and undesirable vegetation from non-agricultural land, amenities, orchards, vines, fruit trees, and post-harvest crop lands because the action of controlling weeds would be the same regardless of the location of the weed. According to MPEP 2111.02(ii), “to satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim”. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
The functional limitations recited for claims 1 and 7 (i.e. “wherein the combination exhibits a synergistic herbicidal effect as determined by Colby’s equation, with the observed efficacy exceeding the expected efficacy”) are the result of a combination of clethodim and at least one other herbicide from the group carfentrazone, carfentrazone-ethyl, pyraflufen, and pyraflufen-ethyl as taught by Nevill since it does not appear from the instant disclosure that additional elements are required to cause the functional limitations (examples 1 - 3 in the instant specification include clethodim and carfentrazone-ethyl, pyraflufen, or pyraflufen-ethyl without any additional ingredients). According to MPEP 2112(III) and 2163.07(a), an inherent feature of a composition or method does not need to be explicitly recognized in the prior art for the prior art to be applied. Said differently, “By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it” MPEP 2163.07(a).
Since combination of clethodim and at least one other herbicide from the group carfentrazone, carfentrazone-ethyl, pyraflufen, and pyraflufen-ethyl as taught by Nevill appears to overlap with the claimed composition, the skilled artisan would have expected that the composition of Nevill would display the same synergy according to Colby’s equation as that which is instantly claimed. Something which is old (e.g., the composition of Nevill) does not become patentable upon the discovery of a new property (e.g., synergy according to Colby’s equation), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I) and 2112(II). Put another way, "When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art." In re Spada, 911 F .2d 705, 709, (Fed. Cir. 1990). Therefore, since Nevill’s prior art teachings recite the combination of clethodim and at least one other herbicide from the group carfentrazone, carfentrazone-ethyl, pyraflufen, and pyraflufen-ethyl, the functional limitations of claims 1 and 7 are obvious.
Nevill’s teaching that the herbicidal combinations can be formulated with one or more carrier compounds (paragraphs 0074-0076) reads on instant claim 9.
Examiner’s Reply to Attorney Arguments Dated February 26, 2026
Applicant argues that Nevill “does not render claim 1 obvious because Nevill provides no teaching or suggestion, grounded in its crop-selective PPO-resistant setting, to apply the claimed clethodim-based synergistic combinations in the materially different non-agricultural and perennial-crop and post-harvest settings” (Remarks page 7). This argument is not persuasive, because as discussed in the body of the rejection above, Nevill teaches combinations of clethodim with carfentrazone-ethyl or pyraflufen-ethyl (paragraphs 0049, 0051, 0053, 0055, 0057), which reads on the required components of the instant claims. With regards to Applicant’s recitation “for controlling weeds and undesirable vegetation from non-agricultural land, amenities, orchards, vines, fruit trees, and post-harvest crop lands”, this recitation is intended use. According to MPEP 2111.02(ii), “to satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim”. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Although Applicant argues that the “crop-selective PPO-resistant setting… [is] materially different [from the] non-agricultural and perennial-crop and post-harvest settings”, Applicant does not provide any evidence to support this argument. According to MPEP 2145(i), “argument does not replace evidence where evidence is necessary”. Therefore, because Nevill’s teachings of clethodim with carfentrazone-ethyl or pyraflufen-ethyl for herbicidal use appears to be capable of meeting the intended use limitation of controlling weeds and undesirable vegetation from non-agricultural land, amenities, orchards, vines, fruit trees, and post-harvest crop lands because the action of controlling weeds would be the same regardless of the location of the weed, i.e. the “structure” of the herbicidal combination as taught by Nevill is the same as that which is instantly claimed.
For the reasons discussed above, the 35 U.S.C. 103 rejection over claims 1, 7, and 9 is maintained.
Claim Rejections - 35 USC § 103 (New)
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 non-obviousness.
Claims 1, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Gover (Gover, A. “Use and Characteristics of Herbicides for Non-crop Weed Control” Pennsylvania State University, 2008).
Gover teaches non-cropland includes fence lines, highway guardrails, railroads, parking and storage areas, electric substations, petroleum tank farms, and grounds surrounding industrial facilities, among others (page 1 column 1). Gover teaches that regardless of non-crop settings, the principles of vegetation management remain the same (page 1, columns 1 and 2).
Gover teaches that selectivity is an important consideration for chemical herbicidal treatments (page 2 column 1).
Gover teaches clethodim is an herbicide that selectively controls grasses (page 10 column 2, Table 7).
Gover teaches carfentrazone-ethyl and pyraflufen-ethyl are membrane disrupter herbicides that act quickly and are not effective against perennial plants (page 11, Table 8). This suggests that carfentrazone-ethyl and pyraflufen-ethyl would be “safe” to apply on areas containing perennial plants, to selectively kill undesired vegetation.
Gover teaches clethodim, carfentrazone-ethyl, and pyraflufen-ethyl are well-known herbicides available for non-crop use (pages 26 – 27, Table 12).
Gover does not teach a specific embodiment having each of the claimed elements, however, claims 1, 7, and 9 are rendered prima facie obvious over the teachings of Gover, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results (MPEP 2143(i)(a)). In the instant case, all the claimed elements (e.g., clethodim, carfentrazone-ethyl, pyraflufen-ethyl) were known in the prior art (e.g., herbicides for non-crop use) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., an herbicidal combination for non-crop use) to one of ordinary skill in the art.
Gover’s teachings for clethodim, carfentrazone-ethyl, and pyraflufen-ethyl as well-known herbicides that are used in non-crop settings (page 10 column 2, Table 7, page 11, Table 8, pages 26 – 27, Table 12) reads on instant claims 1 and 7. A person of ordinary skill in the art would be motivated to combine clethodim with carfentrazone-ethyl or pyraflufen-ethyl because Gover teaches these herbicides attack different plants, therefore a combination of clethodim with carfentrazone-ethyl or pyraflufen-ethyl would be expected to attack more than one kind of unwanted vegetation. Gover teaches that these herbicides are commonly applied to non-crop plants, reading on the intended use “for controlling weeds and undesirable vegetation from non-agricultural land, amenities, orchards, vines, fruit trees, and post-harvest crop lands…” as recited in claims 1 and 7. Although Gover does not teach that the combination of these herbicides is synergistic, a person of ordinary skill in the art would reasonably expect the combination of clethodim with carfentrazone-ethyl or pyraflufen-ethyl to have increased activity together than any of the herbicides alone. Furthermore, a person of ordinary skill in the art would be motivated to combine clethodim with carfentrazone-ethyl or pyraflufen-ethyl because Gover teaches that herbicide resistance is prevented by using mixtures of herbicides with different modes-of-action (page 12 column 2).
Gover’s teaching that clethodim, carfentrazone-ethyl, and pyraflufen-ethyl are well-known herbicides available for non-crop use (pages 26 – 27, Table 12), which suggests that these herbicides are in formulations, i.e. the active component with auxiliary and/or carrier compounds. The combination of herbicide with auxiliary and/or carrier compounds reads on instant claim 9.
Double Patenting (Withdrawn)
The provisional non-statutory double patenting rejections for 18/246,138 and 18/246,140 are withdrawn because amendments to those cases and the instant case appear to render the claims patentably distinct.
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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, Sahana Kaup can be reached at 571-272-6897. 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.
/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
Prosecution Insights