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 Interpretation
Applicant’s claims now specifically require the step of applying the uracil compounds claimed to PPO inhibitor resistant weeds which was not previously required, and the dependent claims of limiting the weeds are no longer only trying to limit the intended use without actually limiting the applying step as was previously the case. Thus, applicant’s claim amendments which now have completely changed the scope of applicant’s claimed method steps have prompted the new grounds of rejection presented herein.
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) 1-3, 5-6, 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Komori et al. (US6403534, from IDS) and further in view of Pioneer (https://web.archive.org/web/20191210110510/https://www.pioneer.com/us/agronomy/glyphosate-resistant-waterhemp-IL.html).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claim 1, Komori teaches applicant’s compounds I, II, and III are known herbicidal compounds and Komori teaches methods of controlling weeds comprising applying these compounds to weeds (Table 1, compounds 1-9, 1-11, 1-12, claims; examples; abstract; Col. 1, ln. 21-Col. 2, ln. 50; Col. 15, 37-Col. 18, ln. 9; Col. 18, ln. 12-35).
Regarding claim 2, Komori teaches wherein their weeds which are controlled and to which the claimed compounds are applied include waterhemp, palmer amaranth, and common ragweed (Col. 16, ln. 1-5; Col. 16, ln. 43-56; Table 1, compounds 1-9, 1-11, 1-12, claims; examples; abstract; Col. 1, ln. 21-Col. 2, ln. 50; Col. 15, 37-Col. 18, ln. 9; Col. 18, ln. 12-35; ).
Regarding claims 5-6, Komori teaches wherein their compounds are useful for controlling weeds within crops/crop cultivation, specifically the claimed wheat, corn, barley, soybean, cotton, sunflower, canola/rapeseed, rice, and wherein the crop is tolerant to one or more herbicides by introduction of a tolerance gene (Col. 18, ln. 12-35; Table 1, compounds 1-9, 1-11, 1-12, claims; examples; abstract; Col. 1, ln. 21-Col. 2, ln. 50; Col. 15, 37-Col. 18, ln. 9; Col. 18, ln. 12-35).
Regarding claims 9-10, Komori teaches wherein the uracil compound is/can be the compound of formula (I), specifically Table 1 compound 1-12, and Komori teaches wherein the application rate of the claimed uracil compounds is from 0.01 to about 20,000 g/ha, more preferably about 1 to about 12,000 g/ha and the amounts will vary depending on weather conditions, formulation types, application times, application methods, soil conditions, crops to be protected and weeds to be controlled, etc. (Col. 20, ln. 5-11; Table 1, compound 1-12).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-3, 5-6, 8-10, Komori does not teach wherein the weeds to which their composition is applied are PPO inhibitor resistant weeds, specifically PPO inhibitor resistant waterhemp, palmer amaranth, etc. as claimed.
Pioneer teaches that water hemp are common weeds which are known to widely carry PPO-inhibitor resistance specifically populations in Illinois were surveyed from 2010-2014 and about 50% of those fields have resistance to both glyphosate and PPO inhibitors, and another 18-19% of waterhemp plants having only PPO resistance which reads on claims 1 and 8 and as such these mutations are very common (see entire document; results section; Study description section; Figure 1). Pioneer teaches wherein a site mutation is what is measured for measuring PPO inhibitor resistance in waterhemp and as such the resistance is target-site resistance which reads on claim 3 (see entire document; results section; Study description section; Figure 1).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing that the method of Komori when being performed to treat waterhemp as taught by Komori would be obviously treating PPO inhibitor resistant waterhemp as claimed because PPO inhibitor resistant waterhemp is very common, specifically over 60% of waterhemp plants surveyed have resistance to PPO inhibitor herbicides. Thus, when controlling water hemp as taught by Komori one of ordinary skill in the art would obviously be controlling the claimed PPO-inhibitor resistant waterhemp since this resistance is observed in a majority of waterhemp plants.
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have developed the claimed method when looking to the prior art because as discussed above Komori broadly teaches the instantly claimed method especially since Komori teaches controlling waterhemp and as is taught by Pioneer over 60% of waterhemp plants are resistant to PPO inhibitors and as such when applying the claimed formula I compound in the claimed amounts to control waterhemp in crop cultivation/crop cultivation areas, specifically the same crop types instantly claimed as is taught by Komori, Komori would obviously be controlling PPO inhibitor resistant weeds, specifically for instance in PPO inhibitor resistant waterhemp having a target site resistance as taught by Pioneer.
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Komori et al. (US6403534, from IDS) and Pioneer (https://web.archive.org/web/20191210110510/https://www.pioneer.com/us/agronomy/glyphosate-resistant-waterhemp-IL.html) as applied to claim(s) 1-3, 5-6, 8-10 above and further in view of Quinn (https://aces.illinois.edu/news/palmer-amaranths-molecular-secrets-reveal-troubling-potential-0#:~:text=Tranel's%20second%20new%20study%20explains,4%20inches%2C%20it's%20all%20over.).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the method of claims 1-3, 5-6, and 8-10 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not specifically teach wherein the weeds have non-target site resistance to PPO inhibitors. However, this deficiency in the combined references is addressed by Quinn.
Quinn teaches that Palmer amaranth weeds have natural resistance to some degree against PPO inhibitors, which is non-target site resistance (see entire document; paragraphs 11-12).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing that the method of Komori and Pioneer above when being used to treat palmer amaranth with the claimed compounds as taught by Komori, would obviously be treating plants which have at least some degree of non-target site resistance to PPO inhibitors because Quinn teaches that Palmer amaranth has some natural resistance/tolerance to PPO inhibitor herbicides. Therefore, naturally Palmer amaranth has some degree of non-target site resistance to PPO inhibitors as claimed. Thus, obviously the combination of Komori, Pioneer, and Quinn together render obvious the claimed method when the claimed compounds are being applied to control Palmer amaranth as is taught by Komori and Pioneer as discussed above when taken in view teachings of Quinn.
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Komori et al. (US6403534, from IDS) and Pioneer (https://web.archive.org/web/20191210110510/https://www.pioneer.com/us/agronomy/glyphosate-resistant-waterhemp-IL.html) as applied to claim(s) 1-3, 5-6, 8-10 above and further in view of further in view of Armel et al. (WO2018/019842, from IDS).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the method of claims 1-3, 5-6, and 8-10 as discussed above and incorporated herein.
Regarding claim 7, Komori teaches wherein their compounds are useful for controlling weeds within crops/crop cultivation, specifically the claimed wheat, corn, barley, soybean, cotton, sunflower, canola/rapeseed, rice, and wherein the crop is tolerant to one or more herbicides by introduction of a tolerance gene (Col. 18, ln. 12-35; Table 1, compounds 1-9, 1-11, 1-12, claims; examples; abstract; Col. 1, ln. 21-Col. 2, ln. 50; Col. 15, 37-Col. 18, ln. 9; Col. 18, ln. 12-35).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not specifically identify that the herbicide tolerance gene in the crops is to the claimed herbicides. However, this deficiency in the combined references is addressed by Armel.
Armel teaches that it was known to form herbicide tolerant crops having herbicide
tolerance genes introduced which allow for tolerance to PPO inhibitor herbicides, and they teach
having herbicide tolerance genes introduced that give tolerance to their structurally similar
phenyl uracil herbicides and wherein these PPO inhibitor resistant plants/crops can also have
additional herbicidal resistance (claims; pg. 40, ln. 12-pg. 53, ln. 18, inclusive;).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant
filing to have developed the claimed method when looking to the combined prior art because as discussed above Komori teaches applying the claimed compounds to the claimed varieties of weeds and it is obvious that when treating waterhemp weeds in crops that the waterhemp would have the claimed PPO inhibitor resistance because PPO inhibitor resistance is very widespread according to Pioneer as discussed above, and it would have been obvious to form herbicide tolerant crop plants having resistance to the claimed compounds of formulae (I), (II), and (III) for use in the method of Komori and Pioneer as discussed above and incorporated herein because Armel teaches that it was known to form herbicidal resistance genes into crop for related phenyl uracil compounds and Armel actually explains how this process is accomplished and as such one of ordinary skill in the art can follow the procedures of Armel as known/taught by the prior art in order to from the claimed crops having herbicidal resistance genes to the claimed compounds of formulae (I), (II), and (III), and it was known to have these crops have additional herbicide resistance genes as claimed. One of ordinary skill in the art would want to do this because by incorporating herbicide resistance genes into the crops in the field where weeds are being controlled, this allows the crops to be protected/have some protection from the applied herbicides, and would allow for the use of additional herbicides in the crops to control weeds if needed without causing significant damage to the crops growing in the field.
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 prompted the new grounds of rejection presented above because applicants amendments have completely changed the scope . Applicant’s amendments to the specification are overcome by applicant’s amendments. Applicant’s amendments to claim 1 have overcome the previous claim objection.
Applicant’s submission of a terminal disclaimer over copending 18258979 and its approval on 09/18/25 have rendered moot/overcome the previous double patenting rejection which is hereby withdrawn.
Applicant’s first argue that Komori does not discuss controlling PPO inhibitor resistant weeds. The examiner respectfully points out that this was merely the intended use of the claimed method previously claimed because the only active step required by the method was the application to any surface of the claimed compounds which was taught by Komori. However, applicant’s amendments to now actually require applying to PPO inhibitor-resistant weeds one or more of the claimed compounds has prompted the revised grounds of rejection presented herein as this limitation of actually applying at least one of the claimed uracil compounds to PPO inhibitor-resistant weeds is addressed by the Komori and the combined references as applied to applicant’s amended claims as discussed above.
Applicant’s then argue that Armel does not discuss controlling and/or applying the herbicides to PPO inhibitor-resistant weeds, again this application step was not required previously but has been addressed in the rejection above now that applying to PPO inhibitor-resistant weeds is required. Further, the for controlling PPO inhibitor resistant weeds was the intended use of the previously claimed method since it did not actually require application to PPO inhibitor resistant weeds all of which has been addressed herein in light of applicants amendments. Armel was used by the examiner and is still being used by the examiner to teach wherein the crop is tolerant to one or more uracil compounds as it is in the instant office action which was a previously claimed feature.
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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