DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Receipt and consideration of Applicant’s amended claim set and Applicant’s arguments/remarks submitted on December 19, 2025 are acknowledged.
All rejections/objections not explicitly maintained in the instant office action have been withdrawn per Applicant’s claim amendments and/or persuasive arguments.
Status of the Claims
Claims 1-3 and 5-15 are pending. Claims 2, 3, and 5-15 are withdrawn. Claim 4 is cancelled. Claim 1 is under consideration in this action.
Election/Restrictions
Applicant’s election without traverse of Invention I and the species Compounds No. I-1 in the reply filed on February 5, 2024 is acknowledged.
Note: In light of Applicant’s claim amendments submitted December 19, 2025, claim 2 no longer reads on the elected species (e.g., methyl for X is removed in claim 2). Thus, claim 2 is now withdrawn.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Koehn et al. (Koehn) (US 2014/0371068 A1; of record) and Ahrens et al. (Ahrens) (US 2015/0018209 A1; of record).
Applicant claims a benzoylamide of formula (I) or a salt thereof (elected species: Compounds I-1).
Koehn discloses herbicidal substituted benzoylamide compounds having the following general formula (I), particularly those having selective control of broad-leaved weeds and weed grasses in crops of useful plants (abstract; para.0001, 0004-0006; Koehn claim 1):
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Koehn discloses that the compounds of formula (I) have excellent herbicidal efficacy against a broad spectrum of economically important monocotyledonous and dicotyledonous annual weed plants. The active ingredients also have good control over perennial weed plants which are difficult to control and produce shoots from rhizomes, root stocks, and other perennial organs (para.0036-0037). The inventive compounds also have outstanding growth-regulating properties in crop plants. They intervene in the plant’s own metabolism with a regulatory effect, and can thus be used to control plant constituents and to facilitate harvesting. In addition, they are also suitable for general control and inhibition of unwanted vegetative growth without killing the plants (para.0043).
Koehn explicitly discloses the following compound of formula (I) (Table 89):
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Koehn’s compound of formula (I) shown in Table 89 differs from the elected species, Compounds No. I-1 in the following ways:
Koehn’s W is C-S-CH2CH3 whereas in the instant application, the corresponding moiety is C-S-CH3;
Koehn’s Z is CF3, whereas in the instant application, the corresponding moiety is CHF2; and
Koehn’s R is not H as in the instant application’s corresponding moiety.
However, with regards to Koehn’s W, Koehn allows for W to be C-S-(C1-C6)-alkyl, thus encompassing C-S-CH3 (Koehn claim 1). With regards to Koehn’s Z, it is noted that Koehn allows for Z to be a C1-haloalkyl (Koehn claim 1).
Koehn does not appear to explicitly disclose wherein the moiety corresponding to Koehn’s R is H or exemplify wherein the moiety corresponding to Koehn’s Z is CHF2. Ahrens is relied upon for this disclosure. The teachings of Ahrens are set forth herein below.
Ahrens discloses herbicidal sulfin- and sulfonimidoylbenzamides having the following formula (I), which are herbicides for selective control of broad-leafed leaves and weed grasses in crops of useful plants (abstract, para.0001, 0004):
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Ahrens discloses that the compounds have outstanding herbicidal activity against a broad spectrum of economically important monocotyledonous and dicotyledonous annual harmful plants. The active substances also act efficiently on perennial harmful plants which produce shoots from rhizomes, rootstocks, or other perennial organs which are difficult to control (para.0059-0060). The compounds also have outstanding growth-regulatory properties in crop plants. They engage in the plant metabolism in a regulatory fashion and can therefore be employed for the influencing, in a targeted manner, of plant constituents and for facilitating harvesting. They are also suitable for generally controlling and inhibiting undesired vegetative growth without destroying the plants in the process. Inhibiting the vegetative growth plays an important role in many monocotyledonous and dicotyledonous crops (para.0066).
Ahrens explicitly disclose the following compound of formula (I), compound no. 1-7:
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wherein Z is CHF2 and X is Me (Table 1).
Koehn does not appear to explicitly disclose wherein the moiety corresponding to Koehn’s R is H or exemplify wherein the moiety corresponding to Koehn’s Z is CHF2. However, these are prima facie obvious modifications in light of the teachings of Ahrens. As discussed above, like Koehn, Ahrens also discloses herbicidal compounds having the same substituted benzoylamide core structure. In light of Ahrens’s disclosure that functional groups such as H for Koehn’s R and CHF2 for Koehn’s Z are known to be used for herbicidal benzoylamides having a core structure as shown in Koehn, it would have been obvious to one of ordinary skill in the art to combine the teachings of Koehn and Ahrens and try H for Koehn’s R and CHF2 for Koehn’s Z for Koehn’s formula of compound (I) shown on Koehn’s Table 89 as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have had a reasonable expectation of success in doing so as such functional groups in said positions are known for herbicidal compounds having the core structure shown in Koehn.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Response to Arguments
Applicant's arguments filed December 19, 2025 have been fully considered but they are not persuasive.
(1) Applicant argues that the rejection relies on impermissible hindsight, as a person of ordinary skill in the art would not have had a reasonable expectation of success. Applicant argues that with regards to the modification of Koehn’s compound to replace the trifluoromethyl group with a difluoromethyl group as taught by Ahrens, Applicant argues that this conclusion is based on improper hindsight as -CF3 and -CHF2 groups are not simple chemical equivalents. Applicant argues that such a substitution would be highly unpredictable as the two groups have markedly different electron-withdrawing strengths, and one of ordinary skill in the art would not have had a reasonable expectation of success.
With regards to Applicant’s argument (1), the traversal argument is not found persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the present case, both Koehn and Ahrens are directed to herbicidal benzoylamides having a core structure as shown in Koehn.
One of ordinary skill in the art would have had a reasonable expectation of success in using -CHF2 as the Z moiety on Koehn because although Koehn’s compound shown in Table 89 shows where the Z moiety is -CF3, as discussed above, Koehn allows for Z to be a C1-haloalkyl (Koehn claim 1), which encompasses -CHF2. Ahrens was relied upon for the further evidence that the Z moiety on the benzoylamide core structure can indeed be -CHF2, a species of C1-haloalkyl, for herbicidal benzoylamides having a core structure as shown in Koehn.
(2) Applicant argues that the proposed combination of the cited prior art references disregards the core inventive principle of Ahrens. Applicant argues that to do the proposed combination, it would require one of ordinary skill in the art to disregard the explicit inventive principle of the Ahrens reference, thereby negating any motivation to combine the reference in the manner proposed. Applicant argues that Ahrens’s core teaching is that its “improved properties” are achieved by incorporating a novel sulfonimidoyl group at position 3 of the benzoyl ring. Applicant argues that the proposal of applying the -CHF2 group and amide -H to the thioether scaffold of Koehn, which lacks the very sulfonimidoyl group that Ahrens teaches is responsible for its improved properties, discards Ahrens’s central inventive concept.
With regards to Applicant’s argument (2), the traversal argument is not found persuasive. In the above proposed combination of Koehn and Ahrens, the modifications are not being made to Ahrens’s compound. As discussed above, both Koehn and Ahrens disclose herbicidal compounds having the same substituted benzoylamide core structure. Ahrens was relied upon for the disclosure of specific C1-haloalkyls known to be used as the Z moiety (e.g., -CHF2) and R moiety on the amide groups of the herbicidal benzoylamide core structure.
As discussed above, in light of Ahrens’s disclosure that functional groups such as H for Koehn’s R and CHF2 for Koehn’s Z are known to be used for herbicidal benzoylamides having a core structure as shown in Koehn, it would have been obvious to one of ordinary skill in the art to combine the teachings of Koehn and Ahrens and try H for Koehn’s R and CHF2 for Koehn’s Z for Koehn’s formula of compound (I) shown on Koehn’s Table 89 as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have had a reasonable expectation of success in doing so as such functional groups in said positions are known for herbicidal compounds having the core structure shown in Koehn.
(3) Applicant argues the claims have been amended to limit compounds wherein Ra is hydrogen, thus bringing the claim scope into direct alignment with a critical feature of the compounds presented in the Specification’s comparative data tables (Tables E-I), all of which feature Ra as hydrogen. Applicant argues that Table I of the Specification compares inventive Compound 1-2 to the structurally closest compound of Koehn (4-803), and that the data demonstrates that Applicant’s compound exhibits a dramatic and surprising increase in herbicidal activity, transforming a compound with low efficacy into a highly potent herbicide.
With regards to Applicant’s argument (3), the traversal argument is not found persuasive. It is noted that the claimed species under consideration in this office action is Compound 1-1. Thus, Applicant’s comparison of Compound 1-2 to Compound 4-803 in Table I are not commensurate in scope with the species currently under examination and do not necessarily demonstrate that the instant Compound No. 1-1 will also demonstrate unexpected results over the closest prior art structure (cited Koehn reference, US 2014/0371068 A1, Table 89; or cited Ahrens reference, US 2015/0018209 A1, Compound No. 1-7). Furthermore, it is noted that in the comparison between the instant Compound 1-2 and Compound 4-803 that Applicant points to appears to be showing the criticality of X being a methyl group. However, the cited Koehn reference already discloses the corresponding position as a methyl group.
Further, it is unclear from the data in Tables I and J which moiety or combination of moieties are critical in resulting in the purported unexpected results. While Table J comparing the instant compound no. 1-1 with Table J’s Koehn’s compound 4-135, for example, appear to be isolating the effect of the CF3 compared to CHF2, the data only demonstrates results on two weeds and it is only demonstrating pre-emergent application results. This is not commensurate in scope with the claims as the claims do not limit the compound to being herbicidal compounds nor does it limit the compound to only pre-emergent controlling compounds. It is unclear from the data presented that the purported unexpected results would be seen in all pesticidal applications of the elected species and in both pre- and post-emergent uses. As discussed above, both Koehn and Ahrens are directed to herbicidal compounds having a core structure that overlaps with that of the instant claims and disclose functional groups in such structures for herbicidal use.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 10, and 11 of U.S. Patent No. US 11,051,515 B2 (USPN 515) in view of Koehn et al. (Koehn) (US 2014/0371068 A1; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping herbicidal benzoylamide compounds. The primary difference between the instant claims and the cited claims of USPN 515 is the moiety corresponding to -S(O)nR in the instant claims is -SCH3, wherein in USPN 515 it is -C(O)Z. However, this is a prima facie obvious modification in view of Koehn. The teachings of Koehn are set forth above and incorporated herein.
As discussed above, like USPN 515, Koehn discloses herbicidal compounds having the same substituted benzoylamide core structure. In light of Koehn’s disclosure that functional groups such as -SCH3 for USPN 515’s -C(O)Z is known to be used for herbicidal benzoylamides having a core structure as shown in USPN 515’s claims, it would have been obvious to one of ordinary skill in the art to combine the teachings of Koehn with the claims of USPN 515 and try Koehn’s -SCH3 for USPN 515’s -C(O)Z in USPN 515’s claimed compound as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have had a reasonable expectation of success in doing so as such functional groups in said positions are known for herbicidal compounds having the core structure shown in USPN 515’s claims.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 9 of U.S. Patent No. US 10,604,494 B2 (USPN 494) in view of Ahrens et al. (Ahrens) (US 2015/0018209 A1; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping herbicidal benzoylamide compounds. The primary difference between the instant claims and the cited claims of USPN 494 is the moiety corresponding to NH in the instant claims is N-C(O)R in USPN 494. However, this is a prima facie obvious modification in view of Ahrens. The teachings of Ahrens are set forth above and incorporated herein.
As discussed above, like USPN 494, Ahrens discloses herbicidal compounds having the same substituted benzoylamide core structure. In light of Ahrens’s disclosure that moieties such as NH for USPN 494’s N-C(O)R is known to be used for herbicidal benzoylamides having a core structure as shown in USPN 494’s claims, it would have been obvious to one of ordinary skill in the art to combine the teachings of Ahrens with the claims of USPN 494 and try Ahrens’s NH for USPN 515’s N-C(O)R in USPN 494’s claimed compound as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have had a reasonable expectation of success in doing so as such moieties in said positions are known for herbicidal compounds having the core structure shown in USPN 494’s claims.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 9,204,650 B2 (USPN 650) in view of Koehn et al. (Koehn) (US 2014/0371068 A1; of record) and Ahrens et al. (Ahrens) (US 2015/0018209 A1; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping herbicidal benzoylamide compounds. The primary difference between the instant claims and the cited claims of USPN 650 is the moiety corresponding to Y in the instant claims is -SCH3 and Z is CHF2. However, these are prima facie obvious modifications in view of Koehn and Ahrens. Their teachings are set forth above and incorporated herein.
As discussed above, like USPN 650, Koehn and Ahrens discloses herbicidal compounds having the same substituted benzoylamide core structure. In light of Koehn’s disclosure that functional groups such as -SCH3 for USPN 650’s -Y and Ahrens’s disclosure that CHF2 for USPN 650’s Z is known to be used for herbicidal benzoylamides having a core structure as shown in USPN 650’s claims, it would have been obvious to one of ordinary skill in the art to combine the claims of USPN 650 with the teachings of Koehn and Ahrens and try Koehn’s -SCH3 for USPN 650’s -Y and Ahrens’s CHF2 for USPN 650’s claimed compound as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have had a reasonable expectation of success in doing so as such functional groups in said positions are known for herbicidal compounds having the core structure shown in USPN 650’s claims.
Claims 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. US 8,957,096 B2 (USPN 096) in view of Koehn et al. (Koehn) (US 2014/0371068 A1; of record) and Ahrens et al. (Ahrens) (US 2015/0018209 A1; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping herbicidal benzoylamide compounds. The primary difference between the instant claims and the cited claims of USPN 096 is the moiety corresponding to Y in the instant claims is -SCH3 and Z is CHF2. However, these are prima facie obvious modifications in view of Koehn and Ahrens. Their teachings are set forth above and incorporated herein.
As discussed above, like USPN 096, Koehn and Ahrens discloses herbicidal compounds having the same substituted benzoylamide core structure. In light of Koehn’s disclosure that functional groups such as -SCH3 for USPN 096’s -Y and Ahrens’s disclosure that CHF2 for USPN 096’s Z is known to be used for herbicidal benzoylamides having a core structure as shown in USPN 096’s claims, it would have been obvious to one of ordinary skill in the art to combine the claims of USPN 096 with the teachings of Koehn and Ahrens and try Koehn’s -SCH3 for USPN 096’s -Y and Ahrens’s CHF2 for USPN 096’s claimed compound as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One of ordinary skill in the art would have had a reasonable expectation of success in doing so as such functional groups in said positions are known for herbicidal compounds having the core structure shown in USPN 096’s claims.
Response to Arguments
Applicant's arguments filed December 19, 2025 have been fully considered but they are not persuasive.
(4) Applicant argues the claims are patentably distinct from the cited patents for at least the same reasons set forth above with respect to the rejection under 35 U.S.C. 103.
With regards to Applicant’s argument (4) regarding the obviousness analyses, the rebuttal to the obviousness arguments are set forth above in the response to arguments (1)-(3) and incorporated herein.
Conclusion
Claim 1 is rejected. No claims are allowed.
THIS ACTION IS MADE FINAL. 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 MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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/MONICA A SHIN/Primary Examiner, Art Unit 1616
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