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 .
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.
Priority
The instant application, filed 07/20/2023, is a continuation of U.S. Patent No 15/999,587 filed on 08/16/2018, which is a National Stage entry of PCT/IL2017/050209, which claims domestic benefit to U.S. provisional applications 62/376,443, filed 08/18/2016 and 62/295,600, filed 02/16/2016.
Status of Application/Claims
The amendment filed on 07/07/2025 is acknowledged. Claims 1-9 and 17-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/09/2024. Claims 10-16 are amended. Claims 10-16 are currently pending and are examined on the merits herein.
Withdrawn Rejections and Objections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied, as necessitated by the amendments filed 07/07/2025. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New Grounds of Rejections and Objections
Claim Interpretation
The Applicant has modified the terminology of instant claims 10, 11 and 16, and removed recitation of a “plant” and replaced with recitation of “weed.” However, the elected species of “plant” as elected without traverse on 12/09/2024 remains in prosecution, said “plant” being Arabidopsis thaliana. Thus, any recitation of “weed” in the instant claims will be interpreted as reading upon the Applicant’s elected species of “plant,” which is A. thaliana.
Claim Objections
Claims 11, 12 and 15 are objected to because of the following informalities:
Claim 11 recites “wherein R2, R3, R8 and R9 are each H, and X is O.” Claim 11 should instead recite “wherein R2, R3, R-8 and R9- are…” in order to remain consistent with the R-group notation format utilized in independent claim 10. Appropriate correction is required.
Claims 12 and 15 both recite that the effective amount is “between 1.5 and 90uM.” Claims 12 and 15 should instead recite “between 1.5 and 90 µM.” This is consistent with the unit of molarity described in the instant specification. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-12 and 14-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is a lack of description in the specification for all of the following new claim limitations:
Claims 10-12 are now written towards a method of “selectively inhibiting growth of a weed” (line 1 of claim 10, emphasis added) by contacting an effective amount of a compound depicted by Formula I with the weed, thereby inhibiting the growth of the weed. Although the instant disclosure does not specifically define the term “selective inhibition” of growth of a weed, the Examiner is interpreting this recitation to mean that the method works to provide the compound of Formula I as a selective herbicide, not a broad-spectrum herbicide. This interpretation finds support in the instant specification which explains how “herbicides can be divided to selective herbicides which control specific weed species, while leaving the desired crop relatively unharmed, and non-selective herbicides (sometimes called "total weedkillers" in commercial products) can be used to clear waste ground, industrial and construction sites, railways and railway embankments as they kill all plant material with which they come into contact” (see instant specification p. 25 lines 3-10). There is no support in the instant disclosure or prosecution history for the selective inhibition of growth of a weed, particularly A. thaliana, by applying an effective amount of a compound depicted by Formula I to the weed. There is no evidence in the instant specification confirming that selective inhibition of a weed may be achieved via contacting an effective amount of a compound depicted by Formula I with the weed, and there is no further guidance in the specification as to which weeds the compounds of Formula I have selective growth inhibition activity towards, and which other plants or weeds are not inhibited by the compounds of Formula I. Thus, one skilled in the relevant art would not reasonably conclude that the inventors had possession of a method of selectively inhibiting growth of a weed by contacting an effective amount of a compound depicted by Formula I with the weed at the time of the claimed invention. Any recitation of a method of selective inhibition of growth of a weed via contacting an effective amount of the compound of Formula I with the weed does not meet the written description provision of 35 USC § 112, first paragraph, and is furthermore considered to be new matter. Additionally, this limitation (selective inhibition) is not relied upon in the prior art rejections addressed in this office action.
Claim 11 now also recites the method of claim 10, wherein “said effective amount is sufficient for inhibiting activity of 5-enolpyruvyl-shikimate synthetase (EPSPS) within said weed” (lines 1-2). Nowhere in the instant specification is there any indication that the compound of Formula I inhibits activity of EPSPS within any weed, particularly A. thaliana. There is no evidence in the instant specification confirming that the effective amount of the compound of Formula I is sufficient for inhibiting activity of EPSPS within a weed, and there is no further guidance in the specification as to what the effective amount is in regards to sufficient inhibition of activity of EPSPS. Thus, one skilled in the relevant art would not reasonably conclude that the inventors had possession of a method of selectively inhibiting growth of a weed by contacting an effective amount of a compound depicted by Formula I with the weed, wherein said effective amount is sufficient for inhibiting activity of EPSPS within said weed, at the time of the claimed invention. Any recitation of the compound of Formula I inhibiting activity of EPSPS within a weed does not meet the written description provision of 35 USC § 112, first paragraph, and is furthermore considered to be new matter.
Claim 12 now also recites the method of claim 10, wherein “said effective amount is between 1.5 and 90 uM.” The unit for concentration here is being interpreted as µM. The “effective amount” is interpreted as being effective towards selective inhibition of growth of a weed, which continues to lack support in the instant disclosure as addressed supra. Furthermore, there is no support in the instant disclosure for the effective amount of the compound being the specific concentration range “between 1.5 and 90 µM.” The closest related recitation is in instant specification p. 19 lines 14-19, which states that “according to some embodiments, the effective amount of the agent is between about 1.5 to 100 µM, e.g. between 2 µM to about 70 µM…of the compound depicted by Formula I.” There is no specific “effective amount” range between 1.5 and 90 µM disclosed for the compound of Formula I; furthermore, the paragraphs prior to the recitation of this “effective amount” describe a different effect than what is claimed, the effect being that the phenylalanine analogue is effective in inhibiting the growth and killing the cyanobacteria Synechocystis PCC 6803 (instant specification p. 19 lines 6-9). Thus, one skilled in the art would not reasonably conclude that the inventors had possession of a method of selectively inhibiting growth of a weed by contacting an effective amount of a compound depicted by Formula I with the weed, wherein said effective amount is between 1.5 and 90 µM, at the time of the claimed invention. Any recitation of the compound of Formula I selectively inhibiting growth of a weed by contacting an effective amount of a compound depicted by Formula I with the weed, wherein said effective amount is between 1.5 and 90 µM does not meet the written description provision of 35 USC § 112, first paragraph, and is furthermore considered to be new matter.
Claim 14 now recites a method of inhibiting growth of a photosynthetic organism, comprising contacting the photosynthetic organism with a combination of an effective amount of the compound depicted by Formula I and an effective amount of an herbicide… “wherein said effective amount of said herbicide is reduced by at least 100% as compared to an amount of said herbicide required for achieving the same growth inhibition of the photosynthetic organism when administered in the absence of said effective amount of the compound of Formula I” (lines 6-9; emphasis added). There is no support in the instant disclosure or prosecution history for the effective amount of the herbicide being reduced by at least 100% (in the presence of Formula I) as compared to an amount required to achieve the same growth inhibition without the presence of the compound of Formula I. The closest related recitation is in instant specification p. 19 lines 13-23, which states that “the effective amount of the herbicide is reduced by at least 1%, 2%, 3%, 4%, 5%, at least about 10%, about 15%, about 20%, about 25%, about 30%, about 35%, about 40%, about 45%, about 50%, about 55%, about 60%, about 65%, about 70%, about 75%, about 80%, about 85%, about 90%, about 95%, e.g., by 97%, 98%, 99% as compared to an amount of the herbicide required for achieving the same growth inhibition of the photosynthetic organism when administered in the absence of the effective amount of the compound depicted by Formula A, I or II.” There is no specific recitation of an effective amount for said herbicide in combination with the compound of Formula I which, when administered, is reduced by at least 100% for achieving the same growth inhibition of the photosynthetic organism. Thus, one skilled in the relevant art would not reasonably conclude that the inventors had possession of a method of inhibiting growth of a photosynthetic organism by contacting an effective amount of a compound depicted by Formula I and an effective amount of an herbicide with the organism, wherein the effective amount of said herbicide, when administered with the effective amount of the compound of Formula I, is reduced by at least 100% for achieving the same growth inhibition of the photosynthetic organism, at the time of the claimed invention. Any recitation of the effective amount of the herbicide being reduced by at least 100% (in the presence of Formula I) as compared to an amount required to achieve the same growth inhibition without the presence of the compound of Formula I does not meet the written description provision of 35 USC § 112, first paragraph, and is furthermore considered to be new matter.
Claim 15 now recites the method of claim 14 wherein “said effective amount of the compound is provided prior to or concomitantly with said effective amount of said herbicide, wherein said effective amount is between 1.5 and 90 µM, and wherein said herbicide is glyphosate” (emphasis added). There is no support in the instant disclosure or prosecution history for the “effective amount” of the compound, when provided prior to or concomitantly with said effective amount of glyphosate, being in the specific range of between 1.5 and 90 µM for the inhibition of growth of a photosynthetic organism. Similarly, there is no support for an “effective amount” of glyphosate being in the specific range of between 1.5 and 90 µM for the inhibition of growth of a photosynthetic organism. Thus, one skilled in the relevant art would not reasonably conclude that the inventors had possession of a method of inhibiting growth of a photosynthetic organism by contacting an effective amount of a compound depicted by Formula I and an effective amount of the glyphosate with the organism, wherein said effective amount is specifically between 1.5 and 90 µM, at the time of the claimed invention. Any recitation of the effective amount of either compound of Formula I or the herbicide being specifically between 1.5 and 90 µM does not meet the written description provision of 35 USC § 112, first paragraph, and is furthermore considered to be new matter.
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 14 and 15 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 14 recites a method of inhibiting growth of a photosynthetic organism, comprising contacting the photosynthetic organism with a combination of an effective amount of the compound depicted by Formula I and an effective amount of an herbicide… “wherein said effective amount of said herbicide is reduced by at least 100% as compared to an amount of said herbicide required for achieving the same growth inhibition of the photosynthetic organism when administered in the absence of said effective amount of the compound of Formula I” (lines 6-9; emphasis added). It is unclear what is meant by this recitation. If the effective amount of herbicide is reduced by “at least 100%” as compared to an amount of said herbicide required for achieving the same growth inhibition of the photosynthetic organism when administered in the absence of said effective amount of the compound of Formula I, then it seems that the herbicide is not present in the combination at all. Reduction of an amount of anything by 100% means that amount is reduced to zero. Therefore, it is unclear if the herbicide is present or absent in the combination being applied to the photosynthetic organism. For the purposes of compact prosecution, this recitation will be interpreted as an intended result of the method of contacting the claimed combination with the photosynthetic organism, and does not provide further structural limitations to the combination being applied in the method of claim 14 (wherein the combination is purely an “effective amount” of the compound of Formula I and an “effective amount” of an herbicide).
Claim 15 recites “wherein said effective amount of the compound is provided prior to or concomitantly with said effective amount of said herbicide, wherein said effective amount is between 1.5 and 90uM” (emphasis added). It is unclear which “effective amount” the underlined effective amount is referring to; this effective amount could either be referring to the amount of the compound, or the amount of the herbicide. For the purposes of compact prosecution, the “effective amount” herein will be interpreted as the amount of the compound, not the amount of the herbicide, in order to remain consistent with the recitation of claim 12; however, as addressed supra, this specific amount range for the compound of Formula I is considered new matter, and does not meet the written description provision of 35 USC § 112, first paragraph.
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.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0261815 A1 (Weston, L. A. et al) 23 OCT 2008 (IDS filed 07/20/2023) in view of Taylor, D. et al. (1998) Phytochemistry, 27, 51-71 (IDS filed 07/20/2023), and Young, M.R. and Neish, A.C. (1966) Phytochemistry, 5, 1121-1132 (PTO-892).
US’815 teaches a method for inhibiting weed growth, comprising providing an m-tyrosine or a salt thereof, and treating a weed or weed seed with said m-tyrosine or salt thereof under conditions effective to inhibit growth of said weed or weed seed in a growth medium (claim 1). US’815 teaches that the root length of Arabidopsis thaliana (the applicant’s elected plant species) is reduced by 50% when m-tyrosine is applied to growth media at a concentration of 2 µM ([0195]). US’815 teaches that A. thaliana is considered to be a weed species ([0145]); thus, A. thaliana reads on the “weed” of the instant claims.
US’815 teaches that a likely cause of m-tyrosine toxicity is that it interferes with tyrosine or phenylalanine metabolism ([0197]). US’815 teaches that, considering its chemical structure and the symptomology observed after treatment, it appears likely that m-tyrosine interferes with cell wall formation; it is speculated that the incorporation of m-tyrosine during cell wall formation in place of either p-tyrosine or phenylalanine interferes with cross-linking, and m-tyrosine could interfere with the biosynthesis of lignin building blocks ([0142]).
US’815 differs from the instant invention in that it fails to teach the use of an effective amount of 3-methylphenylalanine (the applicant’s elected species of the compound of Formula I as defined in claim 10) in its method for inhibiting growth of A. thaliana (applicant’s elected plant species), as recited in instant claim 10. Furthermore, US’815 fails to teach that the “effective amount” is sufficient for inhibiting activity of 5-enolpyruvyl-shikimate synthetase (EPSPS) within said weed, and that R2, R3, R8 and R9 of the compound of Formula I are each H, and X is O, as recited in instant claim 11. Finally, US’815 fails to teach that the “effective amount” of the compound of Formula I is between 1.5 and 90 µM, as recited in claim 12.
Taylor teaches metabolism of chlorophenylalanines in crop and weed plants in relation to the formation of potential herbicidal end products (title). Taylor teaches biochemical pathways for the conversion of D,L-phenylalanine and D,L-chlorophenylalanines to their corresponding phenylacetic (PAA), cinnamic (CA) and benzoic (BzA) acids in shoot tissues in the following figure (page 52, Fig. 1):
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Taylor teaches that, of the mono-chlorinated isomers fed to bushbean shoots, 3-chlorophenylalanine was the only isomer to utilize both the ammonia lyase and aminotransferase pathways in the Fig 1 and be metabolized into all three of the monitored metabolites – Cl-PAA, Cl-BzA, and Cl-CA (page 58 Table 4). Taylor teaches that 3-Cl-CA was produced by all six of the tested representative shoots or leaves of crop and weed plants fed with solutions of 3-chlorophenylalanine (page 67 Table 10). Taylor comprehends the possibility that competitive inhibition of the enzyme phenylalanine ammonia lyase (PAL) by a chlorophenylalanine comparable to 3-fluorophenylalanine would greatly inhibit lignin and flavonoid biosynthesis (page 67, left column, paragraph 2 lines 10-14).
Young teaches the conversion of ring-substituted phenylalanines to their corresponding cinnamic acids by ammonia lyase enzymes in wheat shoots (abstract). Young teaches inhibition of both L-phenylalanine ammonia lyase and L-tyrosine ammonia lyase in wheat shoot acetone powders by a number of phenylalanine derivatives, particularly DL-3-fluorophenylalanine, DL-3-hydroxyphenylalanine (m-tyrosine), DL-3-methylphenylalanine, and DL-3-methoxyphenylalanine (Page 1124 Table 3).
Regarding claims 10 and 12, it would have been prima facie obvious for a person having ordinary skill in the art to arrive at the instant invention before its effective filing date by substituting 3-hydroxyphenylalanine (aka m-tyrosine) with 3-methylphenylalanine (one of Taylor and Young’s meta-substituted phenylalanine derivatives) at a concentration of 2 µM (US’813’s effective amount of 3-hydroxyphenylalanine for inhibiting growth of A. thaliana root by 50%) in the agricultural composition and method of inhibiting A. thaliana growth taught by US’815 because the derivatives taught by Taylor and Young are structurally similar to 3-hydroxyphenylalanine and share the same phenylalanine metabolism-inhibiting activity. Taylor and Young collectively teach that phenylalanine derivatives containing -OH, -CH3, -F, -OCH3 and -Cl at the m-position on the phenyl ring exhibit the ability to disrupt phenylalanine metabolism in plants via competitive inhibition of PAL, which Taylor teaches further results in the disruption of lignin biosynthesis. US’815 supports this by teaching that 3-hydroxyphenylalanine inhibits root growth of A. thaliana via interference with phenylalanine metabolism and subsequent cell-wall formation, particularly emphasizing the possibility of lignin biosynthesis disruption. Therefore, an ordinarily skilled artisan would predict that using the phenylalanine derivative 3-methylphenylalanine at the same concentration for 3-hydroxyphenylalanine taught by US’815 to be effective towards inhibition of species A. thaliana root growth (2 µM) would result in inhibition of A. thaliana root growth via the same mechanism of phenylalanine metabolism disruption by 3-hydroxyphenylalanine.
Regarding claim 11, which states that the “effective amount” of the compound of Formula I in the method of claim 10 is sufficient for inhibiting activity of 5-enolpyruvyl-shikimate synthetase (EPSPS), this is considered an inherent property which results from contacting the effective amount of the compound of Formula I (wherein R2, R3, R8 and R9 are each H, and X is O, and wherein the “effective amount” is within the context of effectiveness towards the growth inhibition of a weed) with the weed. "[P]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. The “effective amount” of the compound of Formula I established in the method of claim 10 is expected to have the same inherent properties applicant claims in claim 11, including inhibition of activity of EPSPS when applying the effective amount of said compound to the weed for inhibition of the growth of the weed as recited in claim 10. Thus, because it would have been obvious to use an effective amount of 3-methylphenylalanine (a compound of Formula I wherein R2, R3, R8 and R9 are each H, and X is O) to inhibit weed growth, this effective amount would also inherently have the claimed characteristics of claim 11 (inhibition of activity of EPSPS). Furthermore, the fact that the inventor has recognized another advantage would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,165,939 A (Agbaje, H. et al) 26 DEC 2000 (cited PTO-892 dated 03/04/2025) in view of Jangaard, N. O. (1973) Phytochemistry, 13, 1769-1775, (cited PTO-892 dated 03/04/2025), Young, M.R. and Neish, A.C. (1966) Phytochemistry, 5, 1121-1132 (cited PTO-892 dated 03/04/2025), Jander, G. et al (2003) Plant Physiology, 131, 139-146 (cited in PTO-892) and US 2008/0261815 A1 (Weston, L. A. et al) 23 OCT 2008 (IDS filed 07/20/2023).
US’939 teaches an herbicidal composition comprising glyphosate as a first herbicide and a second herbicide that is the chloroacetamide alachlor, wherein the composition is an emulsion comprising an aqueous phase, and is stabilized by one or more emulsifiers (claims 1 and 9). As evidenced by the instant specification, an aqueous solution is considered a liquid carrier (instant specification, p. 28 lines 10-13). Thus, the aqueous phase in the emulsion composition of US’939 is considered to be a carrier. US’939 also teaches a method of controlling weeds in a field, comprising diluting said herbicidal composition in a volume of water in a spray tank and spraying a soil surface and foliage of weeds that have emerged from the soil surface, whereby emerged weeds are killed or controlled, and the weeds that have not emerged will be inhibited from doing so (claim 20).
As defined in Applicant’s claim 13, glyphosate is an herbicide which inhibits activity of 5-enolpyruvyl-shikimate synthetase (EPSPS) in a photosynthetic organism (see instant claim 13).
US’939 differs from the instantly claimed inventions in that it fails to teach its herbicidal composition comprises 3-methylphenylalanine (applicant’s elected species of compound of Formula I) along with US’939’s taught glyphosate and carrier, as recited in claim 13. US’939 also fails to teach that the method of controlling growth of a photosynthetic organism using said herbicidal composition comprises application of effective amounts of both the compound of Formula I and the herbicide, and that the effective amount of said herbicide is reduced by at least 100%, as compared to an amount of said herbicide required for achieving the same growth inhibition of the photosynthetic organism when administered in the absence of said effective amount of the compound of Formula I, as recited in claim 14. Thus, US’939 fails to teach the method wherein said effective amount (presumably of the compound of Formula I) is between 1.5 and 90 µM when provided concomitantly with the herbicide glyphosate in the singular composition administered to the photosynthetic organism, as recited in claim 15. Finally, US’939 fails to teach the method controls growth of the plant Arabidopsis thaliana (applicant’s elected species of plant, which reads on the weed of claim 16).
Jangaard teaches in vitro and in vivo effects of multiple herbicides on phenylalanine ammonia lyase (PAL) activity (abstract). Jangaard teaches that the herbicide alachlor exhibits inhibitory effects in vivo on both PAL and tyrosine ammonia lyase (TAL) in green foxtail plants (page 1770 Table 2). Jangaard teaches that a positive correlation between herbicidal activity and inhibition of PAL activity, combined with a general background showing the relationship between PAL activity and lignification, results in a reasonable expectation of success when assuming that PAL inhibitors have herbicidal or plant growth regulatory activity (page 1775, paragraph 2).
Young teaches the conversion of ring-substituted phenylalanines to their corresponding cinnamic acids by ammonia lyase enzymes in wheat shoots (abstract). Young teaches inhibition of both L-phenylalanine ammonia lyase (PAL) and L-tyrosine ammonia lyase in wheat shoot acetone powders by a number of phenylalanine derivatives, particularly DL-3-fluorophenylalanine, DL-3-hydroxyphenylalanine (m-tyrosine), DL-3-methylphenylalanine, and DL-3-methoxyphenylalanine (Page 1124 Table 3).
Jander teaches that glyphosate inhibits EPSPS, an enzyme in the shikimate pathyway leading to the formation of aromatic amino acids Tyr, Phe and Trp (page 139, right column, paragraph 2). Jander teaches a method of spraying and killing Arabidopsis thaliana with an effective amount of commercial glyphosate which is 2.5 kg active ingredient ha-1 (page 140, “Results” paragraph 1).
US’815 teaches a method for inhibiting weed growth, comprising providing an m-tyrosine (aka 3-hydroxyphenylalanine) or a salt thereof, and treating a weed or weed seed with said m-tyrosine or salt thereof under conditions effective to inhibit growth of said weed or weed seed in a growth medium (claim 1). US’815 teaches that the root length of Arabidopsis thaliana (the applicant’s elected plant species) is reduced by 50% when m-tyrosine is applied to growth media at a concentration of 2 µM ([0195]).
Regarding claim 13, it would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to alter the herbicidal composition taught by US’939 by substituting the alachlor in the composition with the compound 3-methylphenylalanine, because 3-methylphenylalanine exhibits the same PAL-inhibiting activity as alachlor and would therefore predictably act as an herbicide in a similar manner. This reasonable expectation of success is explicitly taught by Jangaard. As supported by MPEP 2143(I), it is obvious to perform a simple substitution of one known element for another to obtain predictable results.
Regarding claims 14-16, it would have been prima facie obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to include specifically 2 µM of 3-methylphenylalanine in the aforementioned obvious composition comprising glyphosate, carrier, and the compound 3-methylphenylalanine in place of alachlor, and use the resulting herbicide composition in the method of US’939, to spray and kill specifically Arabidopsis thaliana seedlings, because the growth inhibition of Arabidopsis thaliana by glyphosate is known in the art, and furthermore because the use of 2 µM of the PAL-inhibitor 3-hydroxyphenylalanine (which is structurally highly similar to 3-methylphenylalanine, and exhibits the same PAL-inhibiting effects on plants) is also known to inhibit growth of Arabidopsis thaliana. Thus, it would be expected that the inclusion of specifically 2 µM of the PAL-inhibitor 3-methylphenylalanine would also inhibit growth of Arabidopsis thaliana, similarly to this same amount of 3-hydroxyphenylalanine. As supported by MPEP 2143(I), it is obvious to combine prior art elements according to known methods to yield predictable results. The ordinarily skilled artisan would have a reasonable expectation of success using the glyphosate-containing herbicidal composition in the method of of US’939, as altered with 2 µM 3-methylphenylalanine, to kill Arabidopsis thaliana because glyphosate is taught by Jander to inhibit growth of Arabidopsis thaliana, US’939 teaches the success of controlling plants with its method of spraying its glyphosate-containing herbicidal composition, 2 µM of the PAL-inhibitor 3-hydroxyphenylalanine is structurally similar to the PAL-inhibitor 3-methylphenylalanine and exhibits growth inhibition of Arabidopsis thaliana, and Jangaard explicitly teaches a reasonable expectation of success when assuming that PAL inhibitors have herbicidal or plant growth regulatory activity. It is reiterated that claim 14’s recitation of the effective amount of said herbicide being reduced by at least 100%, as compared to an amount of said herbicide required for achieving the same growth inhibition of the photosynthetic organism when administered in the absence of said effective amount of the compound of Formula I is interpreted as an intended result of the method of contacting the claimed combination with the photosynthetic organism, and does not provide further structural limitations to the combination being applied in the method of claim 14 (wherein the combination is purely an ”effective amount” of the compound of Formula I and an “effective amount” of a herbicide), nor does it provide further limitations towards the method steps being claimed. Thus, because the method of application of a combination of an effective amount of glyphosate and an effective amount of the compound of Formula I (in the form of the obvious herbicidal composition) to A. thaliana for inhibition of growth is rendered obvious by the combined teachings, the intended results limitation is also addressed. A recitation of the intended use (or in this case, intended result) of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure (or in this case, the obvious method of applying the obvious composition) is capable of performing the intended use/result, then it meets the claim.
Response to Arguments
Applicant’s arguments (filed on 07/07/2025) with respect to the objection over claim 10, the rejections of claims 15-16 under 35 U.S.C. 112(b), the 35 U.S.C. 103 rejections over claims 10-12 as being unpatentable over US 2008/0261815 A1 (Weston, L. A. et al) 23 OCT 2008 in view of Taylor, D. et al. (1998) Phytochemistry, 27, 51-71 and Young, M.R. and Neish, A.C. (1966) Phytochemistry, 5, 1121-1132, as well as the 35 U.S.C. 103 rejections made in the non-final action dated 03/04/2025 over claims 10-16 as being unpatentable over US 6,165,939 A (Agbaje, H. et al) 26 DEC 2000 in view of Jangaard, N. O. (1973) Phytochemistry, 13, 1769-1775, Young, M.R. and Neish, A.C. (1966) Phytochemistry, 5, 1121-1132 and Jander, G. et al (2003) Plant Physiology, 131, 139-146 made in the non-final action dated 03/04/2025 have been fully considered and are addressed below.
Regarding the objection over claim 10, Applicant has amended to include the structure and limitations surrounding Formula I.
In light of the amendments, the objection over claim 10 is withdrawn.
Regarding the rejection over claims 15-16 under 35 U.S.C. 112(b), Applicant has amended claims 15-16.
In light of the amendments, the rejections over claims 15-16 under 35 U.S.C. 112(b) as being indefinite due to a recitation of “optionally” have been withdrawn, however, the amendment to claim 15 results in indefiniteness for a different reason, as addressed in the new grounds of 35 U.S.C. 112(b) rejection supra.
Regarding the 35 U.S.C. 103 rejections made in the non-final action dated 03/04/2025 over claims 10-12 as being unpatentable over US 2008/0261815 A1 (Weston, L. A. et al) 23 OCT 2008 in view of Taylor, D. et al. (1998) Phytochemistry, 27, 51-71 and Young, M.R. and Neish, A.C. (1966) Phytochemistry, 5, 1121-1132:
Applicant argues, in the bridging paragraphs between pages 10 and 11 of the Remarks filed 07/07/2025, that Taylor teaches metabolic activity of 3-Cl-Phe in both crop (bushbean, soybean and corn) and weed plants, and shows that 3-Cl-Phe is specifically active in crops rather than in weeds resulting in very high (**) levels of chlorophenylacetic acid and other toxic metabolites. Applicant argues that, accordingly, the ordinarily skilled artisan would be refrained from using 3-Cl-phenylalanine for selective inhibition of weed growth. Applicant further argues that Young teaches L-Tyr is the most prominent PAL inhibitor (Table 3), whereas 3-methylphenylalanine shows negligible inhibition of only 4%, and also includes the note that the concentration of Phe-derivatives used by Young is 9.1 µmol/mL, which corresponds to 9/1 mM and is two orders of magnitude higher than upper concentration range in claim 12. Applicant argues that Young doesn’t suggest herbicidal activity of the substituted phenylalanine species of claim 1, let alone at the concentration in claim 12.
Applicant argues, in paragraphs 4-6 on page 11 of the Remarks filed 07/07/2025, that US’815 teaches structural isomers of m-tyrosine (o- and p-tyrosine) exhibit no toxicity, and because of this a skilled artisan would be under the impression that the phytotoxicity of m-tyrosine is unambiguously bound to this particular structure, and the artisan would be skeptical of other phenylalanine derivatives taught by Taylor and Young regarding phytotoxicity. Applicant argues that, taking into account that the secondary references do not demonstrate any phytotoxicity of the tested chloro/fluoro-phenylalanine derivatives and based on the specific structure specificity of m-tyrosine taught by US’815, the skilled artisan would not be motivated to combine the cited references for selectively inhibiting growth of a weed, as recited in claim 10.
Applicant argues, in the bridging paragraph between pages 11 and 12 of the Remarks filed 07/07/2025, that the combined cited references are silent re- the current feature of instant claim 11 (that the active compound, the compound of Formula I, is applied in an amount sufficient for inhibiting activity of 5-enolpyruvyl-shikimate synthetase), let alone regarding the specific concentration range of the effective amount of claim 12 with respect to the active agent being the compound of instant Formula I.
These arguments have been fully considered but are not found to be persuasive for the following reasons.
Regarding (a), Applicant appears to be attacking Taylor and Young separately. Applicant is reminded that one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Furthermore, the Applicant is relying on the current claim amendment claiming that the method of contacting effective amount of the compound of Formula I to a weed is for selective inhibition of the weed growth in an attempt to distinguish the claimed invention over the prior art. However, there is no support in the instant disclosure for selective inhibition of weed growth by contacting an effective amount of the compound of Formula I with the weed, as instantly claimed. Not taking into account the unsupported claim limitation of “selective” inhibition of a weed, it is asserted that the ordinarily skilled artisan would indeed have a reasonable expectation of success using an effective amount of the phenylalanine derivative 3-methylphenylalanine (Applicant’s elected species of Formula I), along with the other derivatives taught by Taylor and Young (including 3-chloro-phenylalanine, which Applicant is including in the discussion), in a method of inhibiting Arabidopsis thaliana root growth via the same mechanism of phenylalanine metabolism disruption demonstrated by 3-hydroxyphenylalanine at a concentration of 2 µM (the effective amount taught by US’815 to inhibit 50% A. thaliana root growth). Because both 3-methylphenylalanine and 3-chloro-phenylalanine are structurally similar to 3-hydroxyphenylalanine/m-tyrosine (the only difference being the substituent substituted at the meta-position on the phenyl ring), the ordinarily skilled artisan would have a reasonable expectation of success using either of the two structurally-similar phenylalanine derivatives, at the concentration taught by US’815 for m-tyrosine (2 µM) to effectively inhibit A. thaliana root growth. Although Young teaches what the Applicant is deeming a “negligible” inhibition of PAL by 3-methylphenylalanine, this does not prevent the ordinarily skilled artisan from performing substitution of the m-tyrosine with the structurally similar phenylalanine analogue 3-methylphenylalanine because, per MPEP 2144.09 (I), a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). It is reiterated that the combined teachings of Taylor and Young state that phenylalanine derivatives, containing -OH, -CH3, -F, -OCH3 and -Cl at the m-position on the phenyl ring exhibit the ability to disrupt phenylalanine metabolism in plants via competitive inhibition of PAL. Young’s demonstration of inhibition of PAL by 3-methylphenylalanine serves to provide the ordinarily skilled artisan the reasonable expectation that 3-methylphenylalanine will have similar properties to m-tyrosine, which includes inhibition of A. thaliana growth when applied at a concentration of 2 µM (which is within the claimed effective amount range of current claim 12).
Regarding (b), US’815’s teaching that structural isomers of m-tyrosine (o- and p-tyrosine) exhibit no toxicity would not deter the skilled artisan from using similar phenylalanine analogues which maintain the same substitution at the meta-position on the phenyl ring as m-tyrosine but replace the substituent at the meta position (-OH) with analogues, such as -Cl and -CH3. US’815 would most likely deter the skilled artisan from attempting to use phenylalanine analogues wherein the substituent on the phenyl ring is at the ortho- or para- position, because US’815’s substitution of the -OH substituent at the ortho- and para-positions in tyrosine demonstrably exhibits a lack of toxicity. The combined teachings of Taylor and Young demonstrate that meta-substituted phenylalanine derivatives containing -OH, -CH3, -F, -OCH3 and -Cl at the m-position on the phenyl ring exhibit comparable ability to disrupt phenylalanine metabolism in plants via competitive inhibition of PAL, and thus the ordinarily skilled artisan would have a reasonable expectation that 3-methylphenylalanine (meta-substituted) will have similar properties to m-tyrosine (also meta-substituted). Once again, the prior art’s demonstration of inhibition of PAL by 3-methylphenylalanine serves to provide the ordinarily skilled artisan the expectation that 3-methylphenylalanine will have similar properties to m-tyrosine (also substituted at the meta-position, and also a PAL inhibitor), which includes inhibition of A. thaliana growth when applied at a concentration of 2 µM.
Regarding (c), Applicant appears to be relying on the current feature of instant claim 11 (that the active compound, the compound of Formula I, is applied in an amount sufficient for inhibiting activity of 5-enolpyruvyl-shikimate synthetase) in order to assert patentability of the claimed method over the prior art. However, there is no support in the instant disclosure for contacting the active compound, the compound of Formula I, in an amount sufficient for inhibiting activity of 5-enolpyruvyl-shikimate synthetase in the weed, as instantly claimed. Thus, because there is no support, this cannot be a patentable feature over the prior art. Additionally, the concentration of claim 12 is rendered obvious by the obvious use of the 3-methylphenylalanine derivative at a concentration of 2 µM, which is the concentration which demonstrates growth inhibition effect on A. thaliana using the structurally similar m-tyrosine. Please see the above responses to arguments, as well as the new grounds of rejection supra, for a discussion of this prima facie case of obviousness.
Regarding the 35 U.S.C. 103 rejections made in the non-final action dated 03/04/2025 over claims 10-16 as being unpatentable over US 6,165,939 A (Agbaje, H. et al) 26 DEC 2000 in view of Jangaard, N. O. (1973) Phytochemistry, 13, 1769-1775, Young, M.R. and Neish, A.C. (1966) Phytochemistry, 5, 1121-1132 and Jander, G. et al (2003) Plant Physiology, 131, 139-146:
Applicant argues in page 12, paragraph 3 of the Remarks filed on 07/07/2025, that based on Young, the skilled artisan would not be motivated to use 3-fluoro-phenylalanine, let alone 3-methyl-phenylalanine, because Young teaches the most efficient PAL inhibitor is L-Tyr; accordingly, skilled artisan would be simply motivated solely to use L-Tyr in combination with glyphosate, not 3-methyl-phe in combination with glyphosate because of negligible PAL inhibiting activity of 3-methyl-phe as exemplified in table 3 of Young.
Moreover, in p. 12 paragraph 4, Applicant argues that the skilled artisan wouldn't be motivated to use the compound of Formula I at the low concentration range recited in claim 15, since this range is allegedly insufficient for any significant PAL inhibition, as apparent from teachings of Young.
Applicant argues that the combination of refs is silent regarding specific herbicidal effect against weed and photosynthetic bacteria, as recited in clm 16. Applicant argues that because Young has exemplified PAL inhibition in wheat shoots, based on Young it is highly plausible that a potential combination of glyphosate with L-Tyr/3-F-Phe will result in a non-specific herbicidal activity, which undermines commercial use of such combination.
These arguments have been fully considered but are not found to be persuasive for the following reasons.
Regarding (d), it is asserted that the ordinarily skilled artisan would indeed have a reasonable expectation of success using an effective amount of the phenylalanine derivative 3-methylphenylalanine (Applicant’s elected species of Formula I) in a method of inhibiting Arabidopsis thaliana (a weed) root growth via the same mechanism of PAL metabolism disruption demonstrated by alachlor. Because 3-methylphenylalanine demonstrates the same PAL-inhibition as the herbicide alachlor, the ordinarily skilled artisan would have a reasonable expectation of success using either of the two herbicides taught for the same use to inhibit A. thaliana root growth. Applicant’s argument about the amount of PAL disruption exhibited by 3-methylphenylalanine being “negligible” does not prevent the ordinarily skilled artisan from using 3-methylphenylalanine in combination with glyphosate because it is reiterated that Jangaard teaches that a positive correlation between herbicidal activity and inhibition of PAL activity, combined with a general background showing the relationship between PAL activity and lignification, results in a reasonable expectation of success when assuming that PAL inhibitors have herbicidal or plant growth regulatory activity, and Young demonstrates that 3-methylphenylalanine does inhibit PAL activity.
Regarding (e), as addressed in the new grounds of rejection above, the use of 2 µM of the PAL-inhibitor 3-hydroxyphenylalanine (which is structurally similar to 3-methylphenylalanine, and exhibits the same PAL-inhibiting effects on plants) is known to inhibit growth of Arabidopsis thaliana. Thus, it would be expected that the inclusion of specifically 2 µM of the PAL-inhibitor 3-methylphenylalanine would also inhibit growth of Arabidopsis thaliana, similarly to this same amount of 3-hydroxyphenylalanine.
Regarding (f), Applicant appears to be stating that the combination of references is silent regarding specific inhibition against weed and photosynthet