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 3 and 8 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. Applicant’s amendment to the claims to remove the new matter has prompted the indefiniteness rejection herein.
Claims 3 and 8 are indefinite because they recite “wherein the amount/concentration of isoxaben and cellulosin ranges from about 0.01 mg/mL to about 5000 mg/mL” and it is unclear to the examiner if these amounts/concentrations are of the isoxaben and cellulosin together, e.g. a total concentration, or if these ranges are meant to be for isoxaben and cellulosin separately? Thus, the metes and bounds for what these ranges are meant to encompass is unclear to the examiner. For purposes of applying prior art the examiner is interpreting this as together the isoxaben and cellulosin are present in the claimed concentration/amount.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of US Patent No. 11497213 (‘213) in view of Zagar et al. (US20060211576), and Norsworthy et al. (Weed Science¸ 2012, 60(sp1), 31-62).
‘213 teaches a method of weed control for a field of a plant comprising a step of applying isoxaben and cellulosin together with one or more diluents, excipients or carriers to the field in need of said weed control, and wherein the method further comprises a step of applying one or more additional herbicides having the same or different mode of action to said field in need of weed control and wherein the two herbicides can be applied together as a mixture of preformulated single products and wherein the molar ratios of isoxaben and cellulosin are the same as those instantly claimed and wherein the plants growing in the field containing plants which are isoxaben resistant and/or cellulosin resistant, and/or wherein the plant is a crop for food or feed. ‘213 does not specifically teach the claimed concentration of isoxaben and cellulosin are as claimed. However, this deficiency in ‘213 is addressed by Zagar et al. (US20060211576). Zagar teaches that it was known to use isoxaben in herbicidal combinations with other herbicides, e.g. picolinafen which has a different mode of action to treat/control weeds in fields of crop plants, specifically crops which are used for food or feed, e.g. corn, cereals, rice, and soybeans ([0009-0010]; [0040-0041]; [0002-0004]; [0125]; [0171]; [0271]; [0270]). Zagar further teaches wherein it was known in the art to determine the appropriate ratio of herbicides in a combination to form the most effective combination (e.g. synergistic combinations) and that these ranges often fall within the claimed ratios of 1:100 to 100:1 of isoxaben to cellulosin as it was known to use isoxaben with picolinafen together in ratios of 0.1:1 to 50:1 which falls within the claimed ratios of isoxaben to cellulosin (See [0267]). Further Zagar teaches that it was known to apply concentrations herbicides such as isoxaben in amounts/concentrations of 0.001 to 3 kg/ha and to formulate their compositions with from 0.001-98% by weight of the active compounds which would read on the claimed concentration/amounts of 0.01 mg/mL to about 5000 mg/mL especially since Zagar teaches formulating their herbicides as liquid formulations (See [0282]; [0286-0289]).
‘213 also does not teach sequential application of the cellulosin and the isoxaben as separate compositions. However, this deficiency in ‘213 is addressed by Norsworthy. Norsworthy teaches that it was known to apply herbicides having different modes of action sequentially in order to reduce the risk of herbicide resistance which is what the instant application is doing with cellulosin and isoxaben. Thus, it would have been obvious to apply cellulosin and isoxaben as separate compositions in either order to reduce herbicide resistance and control weeds in fields of crops (See pg. 39-40, BMP 6, paragraphs 1-3). One of ordinary skill in the art would be motivate to apply the isoxaben with cellulosin sequentially/separately because it was known in the art to combine herbicides with different modes of action and apply them sequentially or concurrently/together in order to reduce herbicide resistance and control weeds. One of ordinary skill in the art would want also to combine isoxaben and celluosin together as a mixture for application in the claimed ratios and amounts for controlling weeds in crops of useful plants for food or feed because it was known in the art to use isoxaben with other herbicides in these ratios and it would be obvious to combine at least one additional herbicide having a different mode of action into the combination instantly claimed because it was known to combine mixtures of herbicides having different modes of action to improve weed control and reduce herbicide resistance as is taught by Norsworthy. As such one of ordinary skill in the art would conclude that the instantly claimed methods are an obvious variant of the method disclosed in US Patent No. 11497213 in view of Zagar and Norsworthy for the reasons discussed above.
Regarding the claimed amounts and ratios of isoxaben and cellulosin, it would have been obvious to one of ordinary skill in the art to determine the most effective mixtures/ratios and amounts of isoxaben and cellulosin to be applied to the fields in need of weed control because this is something that one of ordinary skill in the art routinely does when forming herbicidal mixtures is to optimize the ratios of the actives and the amounts of the active agents in order to form the most effective herbicidal combinations. Further, ‘213 already teaches/claims the claimed methods and method steps with the same active agents in the same ratios being applied to the control the same weeds in fields of crops, etc. and as such it would be obvious to optimize the amounts/ratios of the isoxaben and cellulosin which are being used for the same methods in ‘213 in order to form the instantly claimed method. Thus, one of ordinary skill in the art would conclude that the instantly claimed method is an obvious variant of the method disclosed in ‘213 when taken in view of Zagar and Norsworthy.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of US Patent No. 11938121 (‘121) in view of Zagar et al. (US20060211576).
‘121 teaches a method of weed control for a field of a plant comprising a step of applying isoxaben and cellulosin (ES20) together with one or more diluents, excipients or carriers to the field in need of said weed control, and wherein the method further comprises a step of applying one or more additional herbicides having the same or different mode of action to said field in need of weed control and wherein the two herbicides can be applied together as a mixture of preformulated single products. ‘121 teaches wherein the plants growing in the field containing weeds are crops for food or feed, and wherein the field of plants to which the composition are being applied are resistant to the cellulosin, and wherein the combination can be applied separately or concurrently or sequentially which reads on wherein the steps being conducted in either order. ‘121 does not teach wherein the cellulosin and isoxaben are applied in the claimed ratios or the claimed amounts or wherein the plants growing in the field (containing the weeds being controlled) are isoxaben resistant or with additional herbicides having the same or different mode of action. However, these deficiencies in ‘121 are addressed by Zagar et al. (US20060211576). Zagar teaches that it was known to use isoxaben in herbicidal combinations with other herbicides, e.g. picolinafen which has a different mode of action to treat/control weeds in fields of crop plants, specifically crops which are used for food or feed, e.g. corn, cereals, rice, and soybeans ([0009-0010]; [0040-0041]; [0002-0004]; [0125]; [0171]; [0271]; [0270]). Zagar further teaches wherein it was known in the art to determine the appropriate ratio of herbicides in a combination to form the most effective combination (e.g. synergistic combinations) and that these ranges often fall within the claimed ratios of 1:100 to 100:1 of isoxaben to cellulosin as it was known to use isoxaben with picolinafen together in ratios of 0.1:1 to 50:1 which falls within the claimed ratios of isoxaben to cellulosin (See [0267]). Further Zagar teaches that it was known to apply concentrations herbicides such as isoxaben in amounts/concentrations of 0.001 to 3 kg/ha and to formulate their compositions with from 0.001-98% by weight of the active compounds which would read on the claimed concentration/amounts of 0.01 mg/mL to about 5000 mg/mL especially since Zagar teaches formulating their herbicides as liquid formulations (See [0282]; [0286-0289]). Zagar further teaches that it was known to apply isoxaben and other herbicidal combinations to plants which are made herbicidally resistant owing to breeding and/or genetic engineering as such it would be obvious to apply the claimed herbicidal blends to plants/crops which are isoxaben and/or cellulosin resistant as is instantly claimed ([0273]).
One of ordinary skill in the art would be motivate to apply the isoxaben with cellulosin sequentially/separately because it was known in the art to combine herbicides with different modes of action and apply them sequentially or concurrently/together in order to reduce herbicide resistance and control weeds.
Regarding the claimed amounts and ratios of isoxaben and cellulosin, it would have been obvious to one of ordinary skill in the art to determine the most effective mixtures/ratios and amounts of isoxaben and cellulosin to be applied to the fields in need of weed control because this is something that one of ordinary skill in the art routinely does when forming herbicidal mixtures is to optimize the ratios of the actives and the amounts of the active agents in order to form the most effective herbicidal combinations. Further, ‘121 already teaches the claimed methods and method steps with the same active agents and as such it would be obvious to optimize the amounts/ratios of the isoxaben and cellulosin which are being used for the same methods in ‘121 in order to form the instantly claimed method. Thus, one of ordinary skill in the art would conclude that the instantly claimed method is an obvious variant of the method disclosed in ‘121 when taken in view of Zagar.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12, and 18-19 of copending application No. 19/204442 (‘442) in view of Zagar et al. (US20060211576) and Norsworthy et al. (Weed Science¸ 2012, 60(sp1), 31-62).
‘442 teaches a method of weed control for a field of a plant comprising a step of applying cellulosin (ES20) to a field in need of said weed control.
‘442 does not specifically teach the claimed concentration of isoxaben and cellulosin are the claimed concentration or wherein the molar ratios of isoxaben and cellulosin are the same as those instantly claimed and wherein the plants growing in the field (which containing the weeds being controlled) are isoxaben resistant and/or cellulosin resistant or wherein the method further comprises a step of applying one or more additional herbicides having the same or different mode of action to said field in need of weed control and does not teach wherein the two herbicides can be applied together as a mixture of preformulated single products or wherein the plants growing in the field containing weeds are crops for food or feed, and wherein the composition being applied are applied together with another herbicides having the same or different mode of action or wherein the plants growing in the field containing weeds are crops for food or feed, and wherein the composition being applied are applied together with another herbicides having the same or different mode of action or wherein the actives are applied with one or more diluents, excipients or carriers to the field in need of weed control.
However, these deficiencies in ‘442 are addressed by Zagar et al. (US20060211576). Zagar teaches that it was known to use isoxaben in herbicidal combinations with other herbicides, e.g. picolinafen, which has/have a different mode of action to treat/control weeds in fields of crop plants, specifically crops which are used for food or feed, e.g. corn, cereals, rice, and soybeans ([0009-0010]; [0040-0041]; [0002-0004]; [0006]; [0125]; [0171]; [0271]; [0270]). Zagar further teaches wherein it was known in the art to determine the appropriate ratio of herbicides in a combination to form the most effective combination (e.g. synergistic combinations) and that these ranges often fall within the claimed ratios of 1:100 to 100:1 of isoxaben to cellulosin, and as it was known to use isoxaben with picolinafen together in ratios of 0.1:1 to 50:1 which falls within the claimed ratios of isoxaben to cellulosin (See [0267]). Further Zagar teaches that it was known to apply concentrations of herbicides such as isoxaben in amounts/concentrations of 0.001 to 3 kg/ha and to formulate their compositions with from 0.001-98% by weight of the active compounds which would read on the claimed concentration/amounts of 0.01 mg/mL to about 5000 mg/mL especially since Zagar teaches formulating their herbicides as liquid formulations (See [0282]; [0286-0289]). Zagar further teaches that it was known to apply isoxaben and other herbicidal combinations to plants which are made herbicidally resistant owing to breeding and/or genetic engineering as such it would be obvious to apply the claimed herbicidal blends to plants/crops which are isoxaben and/or cellulosin resistant as is instantly claimed ([0273]).
‘442 also does not teach sequential application of the cellulosin and the isoxaben as separate compositions. However, this deficiency in 442 is addressed by Norsworthy.
Norsworthy teaches that it was known to apply herbicides having different modes of action sequentially in order to reduce the risk of herbicide resistance which is what the instant application is doing with cellulosin and isoxaben. Thus, it would have been obvious to apply cellulosin and isoxaben as separate compositions in either order to reduce herbicide resistance and control weeds in fields of crops (See pg. 39-40, BMP 6, paragraphs 1-3). One of ordinary skill in the art would be motivated to apply the isoxaben with cellulosin sequentially/separately because it was known in the art to combine herbicides with different modes of action and apply them sequentially or concurrently/together in order to reduce herbicide resistance and control weeds. One of ordinary skill in the art would want also to combine isoxaben and celluosin together as a mixture for application in the claimed ratios and amounts for controlling weeds in crops of useful plants for food or feed because it was known in the art to use isoxaben with other herbicides in these ratios and it would be obvious to combine at least one additional herbicide having a different mode of action into the combination instantly claimed because it was known to combine mixtures of herbicides having different modes of action to improve weed control and reduce herbicide resistance as is taught by Norsworthy.
Regarding the claimed amounts and ratios of isoxaben and cellulosin, it would have been obvious to one of ordinary skill in the art to determine the most effective mixtures/ratios and amounts of isoxaben and cellulosin to be applied to the fields in need of weed control because this is something that one of ordinary skill in the art routinely does when forming herbicidal mixtures is to optimize the ratios of the actives and the amounts of the active agents in order to form the most effective herbicidal combinations. Further, ‘442 already teaches controlling weeds with the claimed cellulosin and as such it would be obvious to combine isoxaben and cellulosin to form new herbicidal combinations and it would be obvious to optimize the amounts/ratios of the isoxaben and cellulosin to form the most effective combination for controlling weeds in order to form the instantly claimed method. As such one of ordinary skill in the art would conclude that the instantly claimed methods are an obvious variant of the method disclosed in copending application 19204442 in view of Zagar and Norsworthy for the reasons discussed above.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-20 of copending application No. 19/221217 (‘217) in view of Zagar et al. (US20060211576) and Norsworthy et al. (Weed Science¸ 2012, 60(sp1), 31-62).
‘217 teaches a method of weed control for a field of a plant comprising a step of applying cellulosin (ES20) to the field in need of said weed control.
‘217 does not specifically teach the claimed concentration of isoxaben and cellulosin are the claimed concentration or wherein the molar ratios of isoxaben and cellulosin are the same as those instantly claimed and wherein the plants growing in the field (which containing the weeds being controlled) are isoxaben resistant and/or cellulosin resistant or wherein the method further comprises a step of applying one or more additional herbicides having the same or different mode of action to said field in need of weed control and does not teach wherein the two herbicides can be applied together as a mixture of preformulated single products or wherein the plants growing in the field containing weeds are crops for food or feed, and wherein the composition being applied are applied together with another herbicides having the same or different mode of action or wherein the plants growing in the field containing weeds are crops for food or feed, and wherein the composition being applied are applied together with another herbicides having the same or different mode of action or wherein the actives are applied with one or more diluents, excipients or carriers to the field in need of weed control.
However, these deficiencies in ‘217 are addressed by Zagar et al. (US20060211576). Zagar teaches that it was known to use isoxaben in herbicidal combinations with other herbicides, e.g. picolinafen, which has/have a different mode of action to treat/control weeds in fields of crop plants, specifically crops which are used for food or feed, e.g. corn, cereals, rice, and soybeans ([0009-0010]; [0040-0041]; [0002-0004]; [0006]; [0125]; [0171]; [0271]; [0270]). Zagar further teaches wherein it was known in the art to determine the appropriate ratio of herbicides in a combination to form the most effective combination (e.g. synergistic combinations) and that these ranges often fall within the claimed ratios of 1:100 to 100:1 of isoxaben to cellulosin, and as it was known to use isoxaben with picolinafen together in ratios of 0.1:1 to 50:1 which falls within the claimed ratios of isoxaben to cellulosin (See [0267]). Further Zagar teaches that it was known to apply concentrations of herbicides such as isoxaben in amounts/concentrations of 0.001 to 3 kg/ha and to formulate their compositions with from 0.001-98% by weight of the active compounds which would read on the claimed concentration/amounts of 0.01 mg/mL to about 5000 mg/mL especially since Zagar teaches formulating their herbicides as liquid formulations (See [0282]; [0286-0289]). Zagar further teaches that it was known to apply isoxaben and other herbicidal combinations to plants which are made herbicidally resistant owing to breeding and/or genetic engineering as such it would be obvious to apply the claimed herbicidal blends to plants/crops which are isoxaben and/or cellulosin resistant as is instantly claimed ([0273]).
‘217 also does not teach sequential application of the cellulosin and the isoxaben as separate compositions. However, this deficiency in ‘217 is addressed by Norsworthy.
Norsworthy teaches that it was known to apply herbicides having different modes of action sequentially in order to reduce the risk of herbicide resistance which is what the instant application is doing with cellulosin and isoxaben. Thus, it would have been obvious to apply cellulosin and isoxaben as separate compositions in either order to reduce herbicide resistance and control weeds in fields of crops (See pg. 39-40, BMP 6, paragraphs 1-3). One of ordinary skill in the art would be motivated to apply the isoxaben with cellulosin sequentially/separately because it was known in the art to combine herbicides with different modes of action and apply them sequentially or concurrently/together in order to reduce herbicide resistance and control weeds. One of ordinary skill in the art would want also to combine isoxaben and celluosin together as a mixture for application in the claimed ratios and amounts for controlling weeds in crops of useful plants for food or feed because it was known in the art to use isoxaben with other herbicides in these ratios and it would be obvious to combine at least one additional herbicide having a different mode of action into the combination instantly claimed because it was known to combine mixtures of herbicides having different modes of action to improve weed control and reduce herbicide resistance as is taught by Norsworthy.
Regarding the claimed amounts and ratios of isoxaben and cellulosin, it would have been obvious to one of ordinary skill in the art to determine the most effective mixtures/ratios and amounts of isoxaben and cellulosin to be applied to the fields in need of weed control because this is something that one of ordinary skill in the art routinely does when forming herbicidal mixtures is to optimize the ratios of the actives and the amounts of the active agents in order to form the most effective herbicidal combinations. Further, ‘217 already teaches controlling weeds with the claimed cellulosin and as such it would be obvious to combine isoxaben and cellulosin to form new herbicidal combinations and it would be obvious to optimize the amounts/ratios of the isoxaben and cellulosin to form the most effective combination for controlling weeds in order to form the instantly claimed method. Thus, one of ordinary skill in the art would conclude that the instantly claimed method is an obvious variant of the method disclosed in copending ‘217 when taken in view of Zagar and Norsworthy.
As such one of ordinary skill in the art would conclude that the instantly claimed methods are an obvious variant of the method disclosed in copending application 19221217 in view of Zagar and Norsworthy for the reasons discussed above.
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the previous 112(a) and (b) rejections. The examiner notes that applicant’s abandonment of previously copending application 16765788 has rendered this double patenting rejection moot and it is withdrawn.
Applicants have not argued the remaining double patenting rejections nor have they filed any terminal disclaimers. Thus, the remaining double patenting rejections are hereby maintained at this time. As there were no arguments presented by applicants there is nothing further for the examiner to respond to.
Applicant’s filing of a new applications 19/204442 and 19/221217 have prompted the new grounds of rejection in this action and the 3rd non-final office action from the examiner.
The examiner also notes that applicants appear to have some synergistic results for the claimed combination as is demonstrated in figure 7. However, these results are not commensurate in scope with applicant’s claims as currently written which allow for the combination of isoxaben and cellulosin in any ratio whereas these results were for only a single ratio, i.e. a single amount of isoxaben and a single amount of cellulosin and it is not clear that these results would be seen with every ratio/amount/concentration of isoxaben and cellulosin as instantly claimed.
Conclusion
No claims are allowed.
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
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615