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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/29/25 has been entered.
Claim Rejections - 35 USC § 103
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 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.
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.
Claim(s) 1, 5-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Satterfield et al. (WO2016/196593, from IDS), and further in view of Yerkes et al. (US2014/0031224, from IDS) as evidenced by HRAC/WSSA Group 4 (https://hracglobal.com/tools/classification-lookup/?s=&mode=&letter=18457&number=#classificationLookup).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1 and 12-20, Satterfield teaches compounds of formula I and compositions these compounds, N-oxides and salts (abstract). Satterfield teaches in Example 6 the preparation of applicant’s Formula I,
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, wherein applicant’s R1 is methyl, A1 is CCF3, A2 is CH, A3 is CH, B1 is CF, B2 is CH, B3 is CH (abstract; synthesis example 6).
Satterfield teaches a herbicidal mixture comprising (a) a compound of applicant’s formula I, and specifically exemplifies mixtures with the homologous compound 428 which only differs from applicant’s formula I, in that R5 in Satterfield is Me instead of the instantly claimed H group (See Index table B, cmpds 428 and 622) and positional isomer compound 622 which only differs in that the CF3 group is at position 4 instead of instantly claimed position 3 with (b) auxin mimic compounds which are not particularly limited but Satterfield exemplifies halauxifen, halauxifen-methyl, and methyl 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-5-fluoro-2-pyridine carboxylate which are structurally similar and have the same activity as applicant’s formula II. Specifically, applicant’s formula II is the benzyl ester of the methyl 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-5-fluoro-2-pyridine carboxylate that is taught by Satterfield (pg. 41, ln. 1-4; pg. 42, ln. 31-pg. 43, ln. 4). Satterfield specifically teaches wherein their combinations with applicant’s compounds of formula I, synthesis example 6, and homologous compound 428 which only differs in the addition of a CH3 group instead of the H atom at Satterfield’s R5, are combined with auxin mimics, e.g. halauxifen, halauxifen-methyl preferably in overlapping ratios to those which are instantly claimed, e.g. 1:20 to 56:1 more typically 1:6 to 19:1 which read on the ratio ranges claimed in claims 1, 12-20, and wherein the combinations can exhibit synergistic effects on weeds, or positional isomer compound 622 which has CF3 is at position 4 instead of the instantly claimed position 3 are combined with auxin mimics, e.g. halauxifen, halauxifen-methyl preferably in overlapping ratios to those which are instantly claimed, e.g. 1:20 to 56:1 more typically 1:6 to 19:1 which read on the ratio ranges claimed in claims 1, 12-20, and wherein the combinations can exhibit synergistic effects on weeds (See pg. 104 entries for halauxifen and halauxifen-methyl; pg. 108 Tables No. A77 and A266, etc.; pg. 99, ln. 16-19; pg. 99, ln. 24-27). Thus, one of ordinary skill in the art can easily determine through simple experimentation and the teachings of Satterfield which ratios of (a) to (b) would likely afford the most effective/synergistic herbicidal combinations in order to achieve the desired spectrum of biological activity (see pg. 99, ln. 16-21).
Regarding claims 5-8, Satterfield teaches that their compounds which broadly include the claimed Formula I (example 6) in combination with auxin mimics in the claimed ratios are useful for controlling barnyard grass and umbrella sedge/Cyperus difformis and they exemplify using the related/positional isomer compound 622 to control these in rice and the homologous 428 to control them (Tables B: entries for 622; Test C, tables on pgs. 383-, etc. Tables C compound 428, 622; ). Satterfield teaches plant species in the flooded patty test consisted of one stand of 9 or 10 water seeded rice seedlings (Oryza sativa) and two stands of 3 or 4 transplanted rice seedlings, umbrella (small-flower umbrella sedge, Cyperus difformis), bearded sprangletop (Leptochloa fascicularis), and barnyard grass (Echinochloa crus-galli) (page 401, lines 17-25) and that these weeds could be controlled with their claimed compounds, e.g. the compounds of instant formula I and combinations thereof (see entire document; all sections previously cited above).
Regarding claim 9, Satterfield teaches wherein the compounds/compositions can further be mixed with one or more biologically active compounds or agent including other herbicides, safeners, fungicides, insecticides (pg. 96, ln. 7-14).
Regarding claim 10, Satterfield teaches that the compositions comprise at least one surfactant, solid or liquid diluent (pg. 96, ln. 18-20).
Regarding claim 11, Satterfield teaches a method for controlling undesirable vegetation comprising contacting the undesirable vegetation or its environment with a herbicidally effective amount of a mixture of Claim 1 (pg. 40, ln. 30-32).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Satterfield does not specifically disclose examples of the mixture comprising (a) a compound of Formula I and (b) 2-pyridinecarboxylic acid, 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl-5-fluoro-phenylmethyl ester or the weight ratio of (a) to (b) from about 1:20 to about 56:1. Though as discussed above Satterfield does teach forming combinations with applicant’s formula I and/or homologous variants of formula I with other structurally similar and closely related auxin mimics in ratios which overlap the claimed ratios as is discussed above. It is for this reason Yerkes is added as a secondary reference.
Yerkes teaches a safened herbicidal composition for use in rice comprising an herbicidally effective amount of
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(page 10, paragraphs 63-65, Example 1), This compound is 2-pyridinecarboxylic acid, 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl-5-fluoro-phenylmethyl ester. Yerkes teaches the compounds are used to control Cyperus, Echinochloa crus-galli, Leptochloa, and Cyperus difformis (page 6, paragraphs 38 and 39).
Yerkes teaches the safened herbicide mixtures can be applied in conjunction with one or more other herbicides to control a wider variety of undesirable vegetation (page 7, paragraph 44).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art at the time of the effective filing date of the invention to combine the teachings of Satterfield and Yerkes and formulate a mixture comprising (a) a compound of Formula I and (b) 2-pyridinecarboxylic acid, 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-5-fluoro-phenylmethyl ester, i.e. florpyrauxifen-benzyl in the claimed ratios because Satterfield teaches in synthesis Example 6 preparation of: applicant’s formula I (page 66, lines 10-35-page 67, lines 1-15). (3S, 4S)-N-(2-fluorophenyl)-1-methyl-2-oxo-4-[8-(trifluoromethyl)phenyl]-3-pyrrolidinecarboxamide is applicant’s formula I, wherein R1 is methyl, A1 is CCFs, A2 is CH, A3 is CH; B1 is CF, B2 is CH, and B3 is CH. One of ordinary skill in the art would have been motivated to formulate a mixture comprising 2-pyridinecarboxylic acid, 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl-5-fluoro-phenylmethyl ester because Satterfield teaches a herbicidal mixture comprising (a) a compound selected from Formula 1, N-oxides, and salts thereof and (b) at least one additional active ingredient selected from (b4) auxin mimics and specifically exemplifies ratios of compounds of formula I to the auxin mimics which overlap those instantly claimed as is discussed above. Satterfield teaches auxin mimics include methyl 4-amino-3-chloro-6-(4-chloro-2-fluoro-3- methoxyphenyl)-5-fluoro-2-pyridinecarboxylate. The compound of Formula II is the benzyl ester of methyl 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl)-5-fluoro-2- pyridinecarboxylate. One of ordinary skill in the art would have also been motivated to formulate a mixture comprising applicant’s formula I and 2-pyridinecarboxylic acid, 4-amino-3-chloro-6-(4-chloro-2-fluoro-3-methoxyphenyl-5-fluoro-phenylmethyl ester because each of the herbicidal compounds are taught to be used for the control of the claimed undesirable vegetation, Cyperus, Echinochloa and Leptochloa in rice fields, as further evidenced by Yerkes. Therefore, in view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional herbicides set forth prima facie obvious subject matter. Further Satterfield teaches wherein their combinations of compounds which include applicant’s formula I can be mixed with auxin mimics in ratios which overlap those instantly claimed and wherein these combinations can be synergistic as is discussed above.
It would have been obvious to one skilled in the art before the effective filing date of the invention to use the teachings of Satterfield and Yerkes and use the mixture wherein the weight ratio of (a) to (b) is from about 12.5:1 to about 4:1, and specifically the ratio ranges claimed in new claims 12-20 because Satterfield teaches where one or more of the various mixing partners are used, the weight ratio of these various partners to the compound of Formula 1 is typically between about 1:30 and about 30:1 which encompasses the claimed ratio ranges. One of ordinary skill in the art would have been motivated to use the claimed weight ratio because Satterfield teaches that one skilled in the art can easily determine through simple experimentation the biologically effective amounts of active ingredients necessary for the desired spectrum of biological activity. (page 99, lines 16-21). Satterfield also provides an example wherein another compound of Formula I, compound 428 and halauxifen and halauxifen-methyl, which are auxin mimics that have structures similar to florpyrauxifen-benzyl, typically have a weight ratio of 1:20-56:1 (See table A77 and pgs. 100-108, inclusive). As such, one of ordinary skill in the art would have been motivated to use known weight ratios of structurally similar/related herbicides as a starting point for determining the most effective herbicidal ratios of the claimed compounds as taught by Satterfield and Yerkes with a reasonable expectation of success.
Therefore, the claimed 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 because every element of the invention has been fairly suggested by the cited references.
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.
Response to Arguments/Remarks
Applicants filing of a terminal disclaimer over US11919859 and its approval on 09/29/25 have overcome the previous double patenting rejections which are withdrawn. Further consideration of applicants claims and the prior art have prompted the revised grounds of rejection presented herein. Applicant’s arguments with respect to the 103 rejection are not persuasive at this time and these arguments are addressed herein insofar as they pertain to the revised grounds of rejection.
Applicants first argue that there is no specific teaching as to the specific claimed mixture of the auxin mimic with a benzyl ester of the present invention at the claimed ranges of ratios, and specifically that the present invention has an unexpected and superior effect with the specific combination of applicants a) and b) when limited to the mixture of applicant’s a) and b) in the specifically claimed ratios. They argue that this combination is not taught or suggested in Satterfield. They also state that the inventor has provided a declaration showing the non-obviousness of the present claims over Satterfield and Yerkes, this declaration will be addressed separately below.
Applicants then argue that Yerkes does not contemplate a mixture with applicant’s compound of formula I, i.e. a) and is silent to the mode of action. The examiner respectfully points out that the rejection is over the combination of Satterfield and Yerkes and that arguing the references separately is not appropriate because the rejection of record was an obviousness rejection not and anticipatory rejection and as such it is not a requirement that both Satterfield and Yerkes teach each and every limitation of the instant claims as applicants appear to be arguing.
Applicants then argue that their combination in the claimed range of ratios is non-obvious over Satterfield in view of Yerkes, because they believe that one of ordinary skill in the art is not motivated to develop the claimed combination of active agents as defined in the instant claims and secondly they argue that one of ordinary skill in the art would not have expected synergy in the combination which they observe and thirdly the argue that the claimed ranges of ratios are unexpected and should be found to be non-obvious over the combined references because of differences between the cited references and the present claims. They also argue that their combination is more than just a combination of known active agents mixed together because they are in specific ranges of synergistic ratios which are neither taught nor suggested in the prior art.
The examiner respectfully disagrees because firstly, Satterfield clearly teaches applicants compound of formula I/their a) as a preferred herbicide in their invention because for instance it is explicitly exemplified as one of the compounds they synthesize, as per synthesis example 6, and they teach that it was known to combine applicant’s claimed a) with halauxifen-methyl which is an arylpicolinate (HRAC/WSSA Group 4 (See listing/table)) which is the same type of active/family of active agents which include the claimed florpyrauxifen-benzyl/applicant’s b). Thus, contrary to applicants arguments merely because Satterfield does not exemplify combinations with applicant’s claimed compound of formula I, even though Satterfield specifically makes the claimed compound of formula I in example 6 and teaches that this compound can be combined with other structurally similar arylpicolinate herbicides of HRAC/WSSA Group 4 (see listing/table) which is the same type of active/family of active agents that includes the claimed florpyrauxifen-benzyl/applicant’s b), and they teach wherein these combinations can exhibit synergy as discussed above. Additionally, applicants continue to argue synergy but applicants argued synergistic results are firstly not commensurate in scope with the instant claims because the tested ratios in applicant’s specification only touch on the 12.5:1 (cmpd 1: florpyrauxifen-benzyl) endpoint of the instantly claimed range and the data from the Puri declaration, filed and entered with the RCE on 10/29/25, which tests the instantly claimed ratios of 10:1 to 4:1 (cmpd 1: florpyrauxifen-benzyl), for instance the instant claims use comprising language which is open-ended and does not exclude anything including additional actives, for instance other herbicides, from being part of the combination. Secondly, applicant’s data is not clearly synergistic as nearly all of applicants data provided in the declaration actually has observed activity which is very near to the expected activity as calculated by the Colby equation and applicants have not demonstrated that their argued synergistic results are truly synergistic in that these values are statistically significant/different from the calculated expected additive results from the Colby equation. Applicants are respectfully reminded that the burden is on applicants to establish that their results are unexpected and significant (see MPEP 716.02(b)) more specifically that the courts have previously determined, “The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
Thus, the examiner maintains that it would have been obvious to select applicant’s compound of formula I/applicant’s a) for use in the methods of Satterfield since it is expressly made (Example 6) and disclosed in Satterfield to be used as a herbicide in combinations with other herbicides including auxin mimics, and as an auxin mimic they specifically disclose the structurally similar halauxifen-methyl and that it would be obvious to substitute the claimed compound b) florpyrauxifen-benzyl for the halauxifen-methyl of Satterfield because both agents are herbicidal arylpicolinates of HRAC/WSSA Group 4 (see listing/table) and would be expected to form effective combinations with actives such as applicant’s a) which is taught by Satterfield whereby Satterfield teaches that such combinations of applicants a) which can be combined with auxin mimics which includes the claimed florpyrauxifen-benzyl (wherein Satterfield exemplifies combinations of their formula 1 compounds which include the claimed a) with halauxifen-methyl as discussed above), and wherein their combinations can exhibit synergy as discussed above.
Applicants then argue that they disagree with the construction of the argument around Satterfield disclosing the methyl ester making the benzyl analog obvious. The examiner never said that Satterfield’s methyl ester renders the benzyl analog obvious. The examiner argued that it would be obvious to replace the halauxifen-methyl with the claimed florpyrauxifen-benzyl because both herbicides belong to a small group of arylpicolinate/pyridinecarboxylic acid herbicides which have the same HRAC/WSSA Group 4 mode of action (another name/classification of auxin mimics) (see listing/table) and as such it would be obvious to substitute the halauxifen-methyl of Satterfield with the known florpyrauxifen-benzyl and expect similar increases in herbicidal activity as are taught by Satterfield. Thus, contrary to applicants arguments the examiner never argued making multiple changes to the halauxifen-methyl structure to achieve the claimed florpyrauxifen-benzyl as is asserted by applicants or modifying the exemplified structurally similar compound of applicant’s formula I for applicant’s specific formula I which is expressly made and taught by Satterfield as is asserted by applicants. The examiner argued that it would be obvious to use florpyrauxifen-benzyl as is taught by Yerkes with applicants a) as taught by Satterfield because Satterfield teaches that applicant’s a) can be combined with auxin mimics (which is the type of herbicide florpyrauxifen-benzyl is) to form effective herbicidal combinations and they exemplify combinations with the structurally similar halauxifen-methyl. Further as discussed above, Yerkes teaches that florpyrauxifen-benzyl is useful to control the same weeds which are being controlled in Satterfield and the same weeds which are instantly claimed, and as such it would be obvious to combine this herbicide with the combinations of Satterfield and/or in place of the halauxifen/halauxifen-methyl taught by Satterfield because it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional herbicides set forth prima facie obvious subject matter. Further, Satterfield teaches wherein their combinations of compounds which include applicant’s formula I can be mixed with auxin mimics (which includes halauxifen/halauxifen-methyl and florpyrauxifen-benzyl) in ratios which overlap those instantly claimed and wherein these combinations can be synergistic as is discussed above. Especially, since applicants own data does not clearly demonstrate that their combinations are actually synergistic with any statistical significance, especially since the majority of observed data of the claimed combination in various of the claimed ratios does not actually appear to be appreciably different from the expected additive result of the combination in these ratios and the calculated expected additive results appear to actually fall within the expected error/standard deviation of the observed result(s), e.g. 100 vs 100, 97 vs. 100, 98 vs. 100, 95 vs. 100, 90 vs. 100 all of these are very close to each other and it is not clear that the argued synergy is really a statistically significant result.
Applicants argue that there is no obvious instruction to select the claimed stereochemistry of the compound of formula I. The examiner respectfully disagrees because Satterfield clearly teaches applicant’s a)
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, which is applicants stereochemistry and the clearly make this compound in their Example 6. Thus, contrary to applicant’s arguments Satterfield does clearly teach and render obvious applicant’s compound of formula I/ their a). Thus, applicants arguments with respect to the construction of the argument around Satterfield and their points 1)-4) are not persuasive for the reasons discussed above and herein.
Applicants then argue that compound 428 in Satterfield requires too many changes. The examiner respectfully points out that Satterfield expressly teaches applicant's a) as they make it in Example 6 as has been discussed at length in the previous rejections of record. Further, as discussed above 428 and 622 are the closest examples which are taught to be mixed with the closest arylpicolinate, halauxifen-methyl, to applicant's b which differs from applicants b) for the reasons of record. However, as has been discussed previously Satterfield is art for all it teaches including applicant's a). Thus, Satterfield does not actually require changing applicant's 428 or 622 to component a) via the multiple changes argued by applicant's because Satterfield already teaches applicant's a) as an alternative active for combining with their arylpicolinates in place of 428. Thus, the examiner does not have select stereochemistry, or the multiple structural modifications, etc. as argued because Satterfield already teaches applicant's a) is an alternative to 428 which can be used in their combinations. Regarding the specifically, claimed rate ranges Satterfield already teaches using rate ranges which encompass the claimed rate ranges with their structurally similar 428 and the halauxifen methyl in their biological/combination examples.
Regarding the specific rate ranges it would be obvious to form the claimed ratio ranges for the reasons already of record in the final office action. Especially since applicant's argued unexpected results do not actually appear to unexpected because they are so very close to the expected results and because it is not clear that these argued unexpected results are of statistical significance as is discussed above.
Applicants then argue that there is no test data for the 428 combination. The examiner respectfully points out that the prior art is art for all it teaches and is not limited to only the tested examples for the reasons already discussed above and herein as the prior art is art for all it teaches. Further, the positional isomer compound 622 discussed above is tested in rice and on the claimed weeds, but the prior art is not limited to the examples and is art for all it teaches and because it teaches that their compounds are known to be useful on the claimed weeds when applied to the claimed crops, e.g. rice it would be obvious to use their compounds and combinations to control the claimed weeds in the claimed crops. Additionally, applicant’s claims are to the composition itself not the method of controlling the specifically claimed weeds in rice and as such they are only afforded patentable weight insofar as the Satterfield teaches that their combinations are effective for controlling these same weeds in rice.
Applicants then also argue that compound 428 on rice weeds was not taught in Satterfield. The examiner respectfully points out that the claims are to a composition comprising the claimed combination which is rendered obvious by the combined prior art for the reasons discussed above and further the claimed method is to controlling the growth of undesired vegetation anywhere not just on rice weeds. Additionally, with respect to the weeds claimed in claim 5 as discussed above both Satterfield and Yerkes teach that their active compounds are used to control Cyperus, Echinochloa crus-galli, Leptochloa, and Cyperus difformis, and secondly again the claims are to the composition and as such where the weeds are growing is an intended site of application and since Satterfield teaches that their combinations are useful for treating weeds in rice then contrary to applicants arguments the combined references together render obvious these claims. Especially, since nothing in the combined references would teach away from their compositions being able to be applied to control weeds in rice.
Applicants then argue that the broad ranges of ratios in Satterfield do not suggest the specific claimed ranges of about 12.5:1 to about 4:1. The examiner respectfully disagrees because applicant’s claims do not claim the range of 37.5:1 to 12.5:1. Applicant’s claims claim a ratio range of 12.5:1 to 4:1, and specific ratio ranges within this broader range which are recited in applicants embodiments, and applicants have provided no evidence of criticality of these ratio ranges or that these ratio ranges achieve their argued synergy. Thus, as discussed above it would have been obvious to optimize the ratios of applicant’s a) as taught by Satterfield with applicant’s b) as taught by Yerkes to fall within the claimed ratio ranges because this is something that one of ordinary skill in the art routinely does, especially since Satterfield teaches that combinations of applicant’s A and/or structurally similar compounds to applicant’s A are used in ratios which overlap the instantly claimed ratios with other auxin mimic herbicide compounds. 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Applicants then argue that there is generic disclosure of example 6 which is applicant's compound a) being used with auxin mimics there is no specific instructions to combine these components. The examiner respectfully again points out that this is an obviousness not and anticipatory rejection and as such specific instructions for applicant's combination do not have to be expressly disclosed. The combination of the two actives again remains obvious for the reasons of record as discussed above and previously made of record in for example the most recent final office action. Further it was known to combine herbicidal actives in order to form new/additional/different herbicidal combinations for the same use. Thus, for these reasons the examiner maintains that it would be obvious to combine the claimed known herbicides as taught by the combination of Satterfield and Yerkes in the claimed ratios of (a) to (b) being from about 12.5:1 to about 4:1, and specifically the ratio ranges of claims 12-20 because Satterfield teaches where one or more of the various mixing partners are used, the weight ratio of these various partners to the compound of Formula 1 (applicant's a) is typically between about 1:30 and about 30:1 which encompasses the claimed ratio ranges. One of ordinary skill in the art would have been motivated to use the claimed weight ratio because Satterfield teaches that one skilled in the art can easily determine through simple experimentation the biologically effective amounts of active ingredients necessary for the desired spectrum of biological activity. (page 99, lines 16-21). Satterfield also provides examples wherein another compound, structurally similar to applicant's a), specifically cmpds. 428 or 622 are combined with halauxifen or halauxifen-methyl, which are auxin mimics that have structures similar to florpyrauxifen-benzyl, typically are used in weight ratios of 1:20-56:1 (See table A77, A266 and pgs. 100-108, inclusive and all sections cited above). As such, one of ordinary skill in the art would have been motivated to use known weight ratios of structurally similar/related herbicides as a starting point for determining the most effective herbicidal ratios of the claimed compounds as taught by the combination of Satterfield and Yerkes with a reasonable expectation of success.
Applicants further argue that their results would overcome the obviousness rejections because applicant’s have demonstrated that their combination provides a greater than expected effect against various weed species. The examiner disagrees firstly that applicants have actually demonstrated unexpected/synergistic results which are commensurate in scope with the claimed weight ratio ranges and which are statistically different from the calculated expected average from the Colby equation. As discussed above, respectfully, the burden is on applicants to establish that their results are unexpected and significant (see MPEP 716.02(b)) more specifically that the courts have previously determined, “The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
Additionally, applicant’s specification states that the synergistic results are calculated using the Colby equation. However, the Colby equation is not always an accurate formula for evaluating synergy in agricultural compositions. For instance Rummens (Weed Science, 1975, 23(1), 4-6) provides evidence that a person of ordinary skill in the art would not have blindly accepted results derived from the Colby equation as unexpected herbicidal effect. See the entire article by Rummens, which discusses the Colby formula. Rummens teaches that the Colby equation “can give results that are clearly erroneous.” (page 4, left column, last paragraph & analysis presented in the rest of the article). Rummens shows in Example 1 Colby’s failure to evaluate even a simple single-component system, which is due to the faulty definition of synergism as implied in the Colby equation (pages 4-5). Further, Richer (Pesticide Science, 1987, 19, pages 309-315) states regarding the Colby equation (also called Limpel’s formula), “Its unthinking application can produce absurd results" due to its assumption of a linear dose-response relationship (page 312). Thus, the Colby equation and its method for determining expected and unexpected herbicidal effect are not sufficient in many different situations; and the person of ordinary skill in the agricultural arts would not believe that applicant’s minor increases in herbicidal activity provided by the combinations are actually synergistic when these values are so close to the expected additive results as calculated by the Colby equation in the absence of statistical evidence showing that these argued unexpected/synergistic results are actually statistically significant/different from the expected additive results. The examiner notes that evidence indicating that the argued results are statistically significant/different from the expected additive results would overcome these issues with applicants data and would appear to overcome the prior art of record especially since the Colby equation is the most commonly used indicator of synergy with respect to agricultural compositions and methods.
Applicants then also argue that compound 428 on rice weeds was not taught in Satterfield. The examiner respectfully points out that the claims are to a composition comprising the claimed combination which is rendered obvious by the combined prior art for the reasons discussed above and further the claimed method is to controlling the growth of undesired vegetation anywhere not just on rice weeds. Additionally, with respect to the weeds claimed in claim 5 as discussed above both Satterfield and Yerkes teach that their active compounds are used to control Cyperus, Echinochloa crus-galli, Leptochloa, and Cyperus difformis, and secondly again the claims are to the composition and as such where the weeds are growing is an intended site of application and since Satterfield teaches that their combinations are useful for treating weeds in rice then contrary to applicants arguments the combined references together render obvious these claims. Especially, since nothing in the combined references would teach away from their compositions being able to be applied to control weeds in rice. The examiner has also added another close example, cmpd. 622 as the examiner can add an additional citation in this new round of prosecution.
Declaration Under 1.132
Atul Puri provided a declaration under 1.132, refiled with the RCE dated 10/29/25. The Declaration meets the formal requirements. In the most relevant part, the Declaration presents data of combinations of applicant’s a) with florpyrauxifen-benzyl in weight ratios which are encompassed by the claimed weight ratio range.
A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the
Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d
1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than
merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5)
whether the prima facie case is sufficiently strong that allegedly superior results are insufficient
to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed.
Cir. 2007)). The relevant criterion here is: 4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)) 5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed.Cir. 2007)). The examiner has carefully reviewed the Declaration, including the data presented in the Declaration.
In the most relevant part of the included declaration Atul Puri demonstrates that the claimed mixture comprising applicant’s formula I and Formula II in the claimed ratios demonstrate slightly better herbicidal activity than the calculated expected additive effect of the two herbicides as calculated by the Colby equation. Dr. Puri’s data does not clearly demonstrate that this increase in activity is actually unexpected/synergistic and/or wherein the difference is statistically significant/different when compared to the expected additive result. Thus, it appears that the data does not show a difference in kind (that the results are synergistic) merely that the combination achieves the expected additive result since the argued synergistic results actually appear to be within the standard error/deviation of the expected additive results of the combination. Thus, it appears that the data is insufficient to overcome the case for obviousness for the reasons which are detailed above because Satterfield teaches that applicant’s formula I (which is their example 6) can be combined with auxin mimics which would include the claimed florpyrauxifen-benzyl especially since the structurally similar halauxifen-methyl is taught to be an effective auxin mimic for combining with applicant’s formula I, and because Yerkes teaches florpyrauxifen-benzyl is effective against the same weeds being controlled by Satterfield and in the same crops and can be combined with other herbicides and 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).
Thus for the above reasons, the examiner maintains that 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 invention when looking to the combination of the prior art references as discussed above at this time.
Conclusion
No claims are allowed.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616