DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 19-20 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.
Specifically, claim 19 is indefinite because it generally claims synergistic compositions however, it is unclear what these compositions are to be synergistic for. Specifically, claim 19 claims synergy for anything and/or everything in any amount and as such it is indefinite as to what activity and what amounts are actually synergistic within the scope of applicants claims. The scope of the claims is unclear because the record does not define what amounts of the recited component are required by the claims or what activity of the claimed composition are relevant for determining whether a given combination of A-1 and the selected B herbicides are “synergistic”. The specification does recite some examples which appear to demonstrate synergy in controlling grass/grassy weeds in specific amounts/ratios but the instant claims recite encompass any and all known or unknown synergy of the claimed combination in any and all amounts. If applicants were to amend the claims to address the above deficiencies, it is believed that these amendments would overcome this rejection.
Claim 20 is rejected because it depends from and/or includes the limitations of claim 19 and does not resolve the ambiguities with respect to claim 19 especially since it merely requires a herbicidally effective amount, and does not require any synergy with respect to controlling unwanted plant growth.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-10, 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deprez et al. (WO2015108779, from IDS) and further in view of Nakamura et al. (WO2005118530, from IDS) as evidenced by Chemical Book (https://www.chemicalbook.com/ProductChemicalPropertiesCB95487335_EN.htm).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-4 and 11, Deprez teaches applications compound
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, which is their compound 120 from index table A, and teach multiple instances of using this compound as a herbicide to control unwanted plant growth by applying the claimed compound to unwanted plants (monocot and dicot weeds/grassy and broadleaf weeds), parts thereof, and/or a locus thereof (compound 120 from index table A, Bottom of pg. 127-128 demonstrates activity of compound 120; table pg 133, which demonstrates activity of compound 120) and Deprez also teaches combining their compounds with additional herbicidal active agents, specifically other known triketone herbicides which which are structurally similar to the claimed B-II/lancotrione, specifically sulcotrione, tefuryltrione, tembotrione, etc. all of which are known to inhibit HPPD, and wherein they teach combining their compound with these structurally similar triketone HPPD inhibitors in ratios of their compound A, e.g. compound 120 as instantly claimed with sulcotrione in weight ratios of 1:105 to 9:1, more specifically 1:35 to 3:1, even more specifically 1:10 to 1:2, and/or compound 120 as instantly claimed with tefuryltrione in weight ratios of 1:37 to 24:1, more specifically 1:12 to 8:1, even more specifically 1:3 to 3:1, and/or compound 120 as instantly claimed with tembotrione in weight ratios of 1:27 to 33:1, more specifically 1:9 to 11:1, even more specifically 1:2 to 4:1 which read on the claimed ratios of 0.01:1 to 100:1, 0.025:1 to 20:1, and/or 1:30 to 16:1 as claimed in claims 2-4 for use as herbicides (Table A1; pg. 101, ln. 7-pg. 103, ln. 36; pg. 104, ln. 9-end of index table A).
Regarding claim 5 and 12-13, Deprez teaches wherein their compounds and compositions comprising these compounds with their structurally similar triketone herbicides to applicant’s claimed B-II in herbicidally effective amounts and wherein herbicidally effective amounts of their compounds and compositions is determined by a number of factors. These factors include: formulation selected, method of application, amount and type of vegetation present, growing conditions, etc. and that one of ordinary skilled in the art can easily determine the herbicidally effective amount necessary for the desired level of weed control and Deprez teaches wherein the compounds of instant formula (I) and their combinations with other structurally similar triketones having the same HPPD inhibitor activity can be formulated as concentrates (pg. 95, ln. 3-9; pg. 101, ln. 7-pg.112, end of table prior to 1st line of text; pg. 90, ln. 34-pg. 91, ln. 16; pg. 94, ln. 27-pg. 95, ln. 8; pg. 104, ln. 9-28; pg. 105, ln. 22-26, etc.).
Regarding claims 6-9, Deprez teaches wherein their herbicidal compositions comprising the claimed (I) and the structurally similar triketones having the same HPPD inhibitor action (present in herbicidally effective amounts), can comprise additional active ingredients beyond their structurally similar triketone herbicides to applicant’s claimed B-II, specifically can comprise additional herbicide and/or herbicide safener (which read on at least one additional pesticide/at least one additional active ingredient), and wherein their compositions comprise the claimed agriculturally acceptable diluent/carrier and/or formulation adjuvants as they state they can comprise at least one additional active ingredient selected from herbicides and herbicide safeners (pg. 86, ln. 1-pg. 91, ln. 16; pg. 95, ln. 3-9; pg. 101, ln. 7-pg.112, end of table prior to 1st line of text; pg. 90, ln. 34-pg. 91, ln. 16; pg. 94, ln. 27-pg. 95, ln. 8; pg. 104, ln. 9-28; pg. 105, ln. 22-26; abstract; claims; Table A1; pg. 101, ln. 7-pg. 103, ln. 36; pg. 104, ln. 9-end of index table A; pg. 3, ln. 14-21; pg. 28, ln. 34-pg. 34, ln. 13).
Regarding claim 10 and 14, Deprez teaches methods of controlling unwanted plant growth/unwanted plants comprising applying herbicidally effective amounts of their compounds and/or compositions comprising these compounds and other structurally similar triketone HPPD inhibiting herbicides to those of applicant’s B-II as discussed and cited above to the unwanted plants and/or their locus, etc. as claimed (abstract; claims; Table A1; pg. 101, ln. 7-pg. 103, ln. 36; pg. 104, ln. 9-end of index table A; pg. 3, ln. 14-21; pg. 28, ln. 34-pg. 34, ln. 13; id.).
Regarding claims 12-13, Deprez teaches active ingredient concentrations/amounts of between 1-50% for liquid formulations, e.g. oil dispensions, suspensions, emulsions, and emulsifiable concentrates, and formulation inerts/adjuvants of about 40-99% wt for these types of formulations which read on the claimed amounts of claim 12-13 (See pg. 88 table at top of page; id.).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-10, and 12-14, Deprez does not teach applicant’s express component B being combined with the claimed compound (I), specifically B-II. However, as discussed above Deprez does teach combining applicant’s (I) with structurally similar triketone herbicides which also are HPPD inhibitors to the instantly claimed B-II. However, this deficiency in Deprez is addressed by Nakamura as evidenced by Chemical Book.
Nakamura teaches triketone herbicide compounds, specifically applicant’s B-II, specifically I-8 (which exists in the keto-enol form because the H atom present on the carbon between the triketones has a low/lower pKa ~2.75/3 (as evidenced by Chemical Book—lancotrione chemical properties) and would be deprotonated under neutral conditions) (see [0101-0102]; abstract; [0005-0009]; claims; [0068-0069]; etc.).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art to have formed the claimed compositions comprising applicant’s (I) of Deprez with applicant’s claim B-II because Deprez teaches that applicant’s formula (I) can be mixed with various additional herbicidal agents which are not particularly limited and they specifically teach combining their formula (I) which includes the claimed
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(Deprez’s 120) with other structurally similar triketone herbicides as discussed above which also function as HPPD inhibitors in ratios which overlap/read on those instantly claimed and as such it would be obvious to substitute and/or add applicant’s B-II as taught by Nakamura into the compositions taught by Deprez in the ratios that were known to be useful for other triketone herbicides with the claimed compound (I) instantly claimed as taught by Deprez in order to develop the instantly claimed compositions because it is known in the art to combine herbicides in order to develop new combinations/herbicidal compositions for controlled weeds/unwanted plant growth.
It also would have been obvious to form the claimed compositions with the claimed carriers, etc. and additional herbicides and to form the claimed methods because Deprez already teaches wherein applicant’s I and related triketone herbicides were useful in these methods and in compositions with additional herbicides/herbicide safeners and carriers, etc. as it is known in methods of controlling unwanted vegetation/plant growth to apply the herbicides to the plant growth meant to be controlled.
Regarding the claimed concentrations of the formulation and concentrate of claim 12-13, it would have been obvious to optimize the concentration of the active agents to read on the claimed 0.01 to 90% or 2 to 80% by weight, and to optimize the amount of formulation inerts to read on the claimed ranges because Deprez already teaches formulating their compositions with overlapping amounts of active agents and inerts for their formulations including concentrates and it is known, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deprez et al. (WO2015108779, from IDS) and further in view of Nakamura et al. (WO2005118530, from IDS) as evidenced by Chemical Book (https://www.chemicalbook.com/ProductChemicalPropertiesCB95487335_EN.htm) as applied to claims 1-10, and 12-14 above and further in view of Satterfield et al (WO2016196593).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the composition of claims 1-10, and 12-14 as discussed above and incorporated herein.
Regarding claim 15, Deprez further teaches wherein applicants compound A-I, their 120
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(Deprez’s 120), can be combined with other herbicides which are not at all limited because for instance group b15 is other herbicides and includes herbicides having unknown modes of action or whose mode of action do not fall within the other listed groups. Thus, Deprez does not at all limit the herbicides for combining with their 120 (see entire document; abstract; claims; pg. 29, ln. 5-pg. 34, ln. 2, specifically pg. 29, ln. 5-19 and pg. 33, ln. 19-pg. 34, ln. 2; Table A1; pg. 101, ln. 7-pg. 103, ln. 36; pg. 104, ln. 9-end of index table A; pg. 3, ln. 14-21; pg. 28, ln. 34-pg. 34, ln. 13; id.; compound 120 from index table A, Bottom of pg. 127-128 demonstrates activity of compound 120; table pg 133, which demonstrates activity of compound 120).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not specifically teach wherein B is B-III, specifically the claimed tetflupyrolimet. However, this deficiency in the combined references is addressed by Satterfield.
Satterfield teaches applicant’s B-III, specifically their synthesis example 6 which is one o4 particularly preferred compounds (see pg. 40, ln. 24-25), is useful as a herbicide and can be combined with other known herbicidal actives which are not limited to form effective herbicidal combinations (see entire document; e.g. pg. 41, ln. 1-pg. 46, ln. 17, inclusive; synthesis example 6; compound 622; pg. 40, ln. 24-25).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to combine/use applicant’s B-III as the B herbicide either in place of B-II or in combination with B-II of Nakamura to form the claimed herbicidal combination(s) because Deprez does not limit the additional herbicides which can be combined with the claimed A-1 and applicant’s B-III is a known herbicide as per Satterfield which is also useful for combining with other known herbicides which are not limited in scope. One of ordinary skill in the art would be motived to form the combination claimed in claim 15 in effort to form additional/new effective herbicidal combinations because it is known, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deprez et al. (WO2015108779, from IDS) and further in view of Nakamura et al. (WO2005118530, from IDS) as evidenced by Chemical Book (https://www.chemicalbook.com/ProductChemicalPropertiesCB95487335_EN.htm) as applied to claims 1-10, and 12-14 above and further in view of JP2020023443 (‘443).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claim 16, Deprez further teaches wherein applicants compound A-I, their 120
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(Deprez’s 120), can be combined with other herbicides which are not at all limited because for instance group b15 is other herbicides and includes herbicides having unknown modes of action or whose mode of action do not fall within the other listed groups. Thus, Deprez does not at all limit the herbicides for combining with their 120 (see entire document; abstract; claims; pg. 29, ln. 5-pg. 34, ln. 2, specifically pg. 29, ln. 5-19 and pg. 33, ln. 19-pg. 34, ln. 2; Table A1; pg. 101, ln. 7-pg. 103, ln. 36; pg. 104, ln. 9-end of index table A; pg. 3, ln. 14-21; pg. 28, ln. 34-pg. 34, ln. 13; id.; compound 120 from index table A, Bottom of pg. 127-128 demonstrates activity of compound 120; table pg 133, which demonstrates activity of compound 120).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not specifically teach wherein B is B-IV. However, this deficiency in the combined references is addressed by ‘443.
‘443 teaches applicant’s B-IV, specifically their formula (1) wherein R is H, which is ‘443’s compound (2) which is one of two herbicidal compounds disclosed in the application, is useful as a herbicide and can be combined with other known herbicidal actives which are not at all limited in scope to form effective combinations (see entire document; abstract; claims; paragraph beginning: “Ortho-substituted haloalkylsulfonanilide compound represented by the following formula (1) [hereinafter…”; paragraph beginning: In addition to the compound (1) or the compound (2), one or more other known pesticides such as herbicides, insecticides, acaricides, nematicides, antiviral agents…”; paragraph beginning: Herbicides: TCBA (2,3,6-TBA)…end of all listed herbicides ).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to combine/use applicant’s B-IV as the B herbicide either in place of B-II or in combination with B-II of Nakamura to form the claimed herbicidal combination(s) because Deprez does not limit the additional herbicides which can be combined with the claimed A-1 and applicant’s B-IV is a known herbicide as per ‘443 which is also useful for combining with other known herbicides which are not limited in scope. One of ordinary skill in the art would be motived to form the combination claimed in claim 16 in effort to form additional/new effective herbicidal combinations because it is known, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deprez et al. (WO2015108779, from IDS) and further in view of Nakamura et al. (WO2005118530, from IDS) as evidenced by Chemical Book (https://www.chemicalbook.com/ProductChemicalPropertiesCB95487335_EN.htm) as applied to claims 1-10, and 12-14 above and further in view of Sumitomo (EP1122244A1).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claim 17, Deprez further teaches wherein applicants compound A-I, their 120
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(Deprez’s 120), can be combined with other herbicides which are not at all limited because for instance group b15 is other herbicides and includes herbicides having unknown modes of action or whose mode of action do not fall within the other listed groups. Thus, Deprez does not at all limit the herbicides for combining with their 120 (see entire document; abstract; claims; pg. 29, ln. 5-pg. 34, ln. 2, specifically pg. 29, ln. 5-19 and pg. 33, ln. 19-pg. 34, ln. 2; Table A1; pg. 101, ln. 7-pg. 103, ln. 36; pg. 104, ln. 9-end of index table A; pg. 3, ln. 14-21; pg. 28, ln. 34-pg. 34, ln. 13; id.; compound 120 from index table A, Bottom of pg. 127-128 demonstrates activity of compound 120; table pg 133, which demonstrates activity of compound 120).
Regarding claim 17, Deprez also teaches forming combinations with other PPO inhibitor herbicides which are N-phenylimide containing herbicides such as butafenacil, saflufenacil and tiafenacil which is a genus/grouping of herbicides which includes applicant’s B-V, epyrifenacil (See pg. 31, ln. 20-31).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not specifically teach wherein B is B-V (epyrifenacil). However, this deficiency in the combined references is addressed by Sumitomo.
Sumitomo teaches applicant’s B-V, specifically their compound 7-8 of table 7, is useful as a herbicide and can be combined with other known herbicidal actives to form effective combinations (see entire document; abstract; Table 7, 7-8; Test Examples 1-2; claims; [0341].
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to combine/use applicant’s B-V as the B herbicide either in place of B-II or in combination with B-II of Nakamura to form the claimed herbicidal combination(s) because Deprez does not limit the additional herbicides which can be combined with the claimed A-1 and teaches that other herbicides in the same structural family as B-V are effective for formulating with their compounds, e.g. applicant’s A-1, and applicant’s B-V is a known herbicide as per Sumitomo which is also useful for combining with other known herbicides. One of ordinary skill in the art would be motived to form the combination claimed in claim 17 in effort to form additional/new effective herbicidal combinations because it is known, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deprez et al. (WO2015108779, from IDS) and further in view of Nakamura et al. (WO2005118530, from IDS) as evidenced by Chemical Book (https://www.chemicalbook.com/ProductChemicalPropertiesCB95487335_EN.htm) as applied to claims 1-10, and 12-14 above and further in view of Dow Agro (US20140274695).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claim 18, Deprez further teaches wherein applicants compound A-I, their 120
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(Deprez’s 120), can be combined with other herbicides which are not at all limited because for instance group b15 is other herbicides and includes herbicides having unknown modes of action or whose mode of action do not fall within the other listed groups. Thus, Deprez does not at all limit the herbicides for combining with their 120 (see entire document; abstract; claims; pg. 29, ln. 5-pg. 34, ln. 2, specifically pg. 29, ln. 5-19 and pg. 33, ln. 19-pg. 34, ln. 2; Table A1; pg. 101, ln. 7-pg. 103, ln. 36; pg. 104, ln. 9-end of index table A; pg. 3, ln. 14-21; pg. 28, ln. 34-pg. 34, ln. 13; id.; compound 120 from index table A, Bottom of pg. 127-128 demonstrates activity of compound 120; table pg 133, which demonstrates activity of compound 120).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not specifically teach wherein B is B-VI. However, this deficiency in the combined references is addressed by Dow Agro.
Dow Agro teaches applicant’s B-VI, specifically their example 12; also compound 1.16 table 10, is useful as a herbicide and can be combined with other known herbicidal actives to form effective combinations wherein the additional herbicides are not particularly limited (see entire document; abstract; claims; example 12; also compound 1.16 table 10; Examples C-D; [0201]).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to combine/use applicant’s B-VI as the B herbicide either in place of B-II or in combination with B-II of Nakamura to form the claimed herbicidal combination(s) because Deprez does not limit the additional herbicides which can be combined with the claimed A-1 and applicant’s B-VI is a known herbicide as per Dow Agro which is also useful for combining with other known herbicides which are not limited in scope. One of ordinary skill in the art would be motived to form the combination claimed in claim 15 in effort to form additional/new effective herbicidal combinations because it is known, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the previous claim objections, 101 rejections, and 112 (b) rejections. Applicant’s amendments to the claims and new claims have prompted the new grounds of rejection under 112(b), and the revised and new grounds of rejection under 103 presented herein. Applicant’s arguments were not persuasive at this time and applicant’s arguments insofar as they pertain to the revised grounds of rejection under 103 are addressed herein.
Applicants first argue that the instant composition is not rendered obvious by the combination of Deprez, Nakamura, and Chemical Book. They argue that the combination is not obvious because the biological examples show evidence of unexpected or unobviousness. Applicant’s specifically point to the B2.4 tables on pages 22-23 of the instant specification which they argue demonstrate that the observed action of the combination of A-I and B-II was greater than the expected action. The examiner notes that it appears that applicants have possibly demonstrated some synergy in their examples. However, there are several issues with the data which applicants are arguing discloses unexpected results. Firstly, the data is not at all commensurate in scope with the instant claims. Specifically, the argued unexpected results were obtained with specific ratios of applicant’s A-I to B-II. However, the claims are not limited to these ratios. Secondly, the data is not limited to the argued combinations of A-I to B-II, but to A-I with at least one B selected from B-II, B-III, B-IV, B-V, and B-VI. Thus, clearly the argued results are not commensurate in scope with the instant claims as currently written. Thus, for these reasons the claims are still rendered obvious by the combined references at this time as discussed above.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616