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 .
Claims 1-30 are pending in this application.
Election with traverse
Applicant's election with traverse of the invention of Group I and saflufenacil as the species of “at least one additional herbicide” in the reply filed on 11/20/2025 is acknowledged. The traversal is on the ground(s) that the examination of said species should be extended to at least saflufenacil, which should include a mixture of (S)-metolachlor and saflufenacil. Applicant also notes that the International Search Authority “found the claims 1-30 contain unity,” which according to Applicant is evidence that pending claims have unity and should be examined together. This is not found persuasive because of the following reasons:
(1) The USPTO makes its own determination during patent prosecution. If Applicant disagrees, Applicant is requested to cite authority for the position that USPTO must follow determinations of other patent offices or authorities.
The International Search Authority (ISA) found that none of the claims have inventive step and many claims lack novelty. Applicant does not similarly argue that this is evidence of lack of novelty and lack of inventive step.
(2) It is maintained that the species of “at least one additional herbicide” lack unity of invention. The technical feature shared among the claimed species is the imidazolinone-based ALS inhibitor as a herbicide. However, imidazolinone-based ALS inhibitors such as imazethapyr and imazamox are known herbicides, as evidenced by Zagar et al. (US 2016/03241531, see e.g., paragraphs 4, 8). Additionally, all the species are also known herbicides. Therefore, the shared corresponding technical feature is not a feature that defines a contribution over the prior art.
(3) It is further maintained that the invention groups I and II lack unity of invention for the reasons of record, which Applicant does not specifically traverse.
For these reasons, the restriction requirement under lack of unity rules is maintained. The requirement is still deemed proper and is therefore made FINAL.
Expanded species
In the interest of expedited prosecution and in view of the prior art and specification disclosure examples, the elected species under examination shall be expanded to include the following species:
(1) saflufenacil (no other herbicide except the imidazolinone-based ALS inhibitor);
(2) saflufenacil + (S)-metolachlor (no other herbicide except the imidazolinone-based ALS inhibitor); and
(3) quinclorac dimethylammoniuim (no other herbicide except the imidazolinone-based ALS inhibitor).
Claims under examination
Accordingly, claim 30 is withdrawn from further consideration as being directed to a non-elected invention. Claims 1-29 will presently be examined to the extent that they read on the species of “at least one additional herbicide,” which consist of: (1) saflufenacil with no additional herbicide; and (2) saflufenacil + (S)-metolachlor.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 1, 3-8, 10, 12, 13, 16, 20, 24, 25 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.
(1) Formula I of claim 1 (reproduced below) shows only one R1 but the claim recites “R1 is 1 to 4 substituents.” Dependent claims 4-7 recite more than one R1.
Thus, there is a conflict between the structural formula and its definition, because a R1 substituent that is drawn like here (inside the ring, not at any specific ring carbon) indicates bond at any position, not multiple R1s. Even if Applicant were to argue that a bond at any position on an otherwise unsubstituted phenyl ring must convey multiple R1s, such argument would not account for only one R1 .
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(2) Claims 3 and 4 recite preferable features after recitation of broader features. Under the facts of this application, preferable claim features of claims 3 and 4 may lead to confusion over the intended scope of the claims because it is not clear whether the preferable feature is a limitation.
(3) Claim 8 recites a weight ratio that is 1 to “at least about 5” (emphasis added). The phrase “at least about 5” is indefinite, because “at least” sets the floor under which the ratio cannot go below, but “about” makes that unclear.
(4) Claim 10, 12, 16, and 20 recite “such as” to show examples. The examples that follow “such as” in these claims make it unclear whether they are exemplary or limiting.
(5) Claims 10, 12, 13, 20, 24, and 25 contain the trademark/trade name TWEEN®, SOROPHOR®, ALKAMULS®, STEPANTEX®, and RHODIASOLV® PolarClean. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe various surfactants (TWEEN®, SOROPHOR®, ALKAMULS®, STEPANTEX®) and solvent (RHODIASOLV® PolarClean), and accordingly, the identification/description is indefinite.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
35 U.S.C. 102 or 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-7, 11, 14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Berghaus et al. (US 2010/0255992; Berghaus)2.
Berghaus discloses a preferred embodiment of a soluble liquid (SL) formulation comprising quinclorac dimethylammonium, benzyl alcohol, and one additional herbicidal active ingredient selected from (1) bentazon, (2) imazapic, (3) imazapyr, (4) imazaquin, (5) imazethapyr, or (6) imazamox. See paragraph 146. See also paragraph 251, which further comprises a co-solvent. Berghaus further discloses “especially bentazon or one of its environmentally compatible salts” (paragraphs 146, 251).
Anticipation
Berghaus explicitly discloses a herbicidal composition comprising the known herbicide quinclorac in the form of its dimethylammonium salt, the known herbicides (1) to (6) as set forth above, and benzyl alcohol. Even though an imidazolinone-based ALS inhibitor herbicide is not specifically exemplified or further singled out as “especially,” 5 out of 6 herbicides are imidazolinone-based ALS inhibitor herbicides: (2) imazapic, (3) imazapyr, (4) imazaquin, (5) imazethapyr, and (6) imazamox. Therefore, each of these imidazolinone-based ALS inhibitor herbicide is clearly envisaged. The claims are thereby anticipated.
Obviousness
In the alternative, selection of imazethapyr, imazapic, imazapyr, imazaquin, or imazamox would have been obvious from a list of additional herbicides that includes only 6 herbicides. Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited reference.
The claims are thereby rejected.
35 U.S.C. 103
Claims 1-12, 14, 26, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Berghaus (US 2010/0255992).
Berghaus discloses a preferred embodiment of a soluble liquid (SL) formulation comprising quinclorac dimethylammonium, benzyl alcohol, and one additional herbicidal active ingredient selected from (1) bentazon, (2) imazapic, (3) imazapyr, (4) imazaquin, (5) imazethapyr, or (6) imazamox. See paragraph 146. See also paragraph 251, which further comprises a co-solvent. Berghaus further discloses “especially bentazon or one of its environmentally compatible salts” (paragraphs 146, 251).
Berghaus also discloses 2-25 wt% additional herbicide, 30-60 wt% solvent, and 0.1-20 wt% formulation additives (paragraphs 553-554, 556). The formulation additive can be a surfactant such as castor oil ethoxylate (paragraphs 330, 356). Control of the large crabgrass Digitaria sanguinalis with only quinclorac dimethylammonium is shown (paragraph 595).
As discussed in the previous ground of rejection, Berghaus explicitly discloses and at least suggests a herbicidal composition that contains benzyl alcohol and an imidazolinone-based ALS inhibitor herbicide such as imazethapyr or imazapic, as claimed herein. Weight ratio of imidazolinone-based ALS inhibitor to benzyl alcohol of 1 : “at least about 5” is suggested by the fact that the solvent can be present in 30-60 wt%, whereas the additional herbicide, i.e., imazethapyr or imazapic, can be present in the relatively smaller range of 2-25 wt%. The ordinary skilled artisan would have it obvious to adjust the herbicide amount within the claimed ratio to optimize various formulation considerations such as stability and solubility. Selection of a particular surfactant such as ethoxylated castor oil would have been obvious from Berghaus’ teaching of various surfactant alternatives, including castor oil ethoxylates. Control of weeds, for example Digitaria sanguinalis, would have been obvious with the Berghaus’ herbicide comprising quinclorac dimethylammonium + imazapic, imazapyr, imazaquin, imazethapyr, or imazamox, because quinclorac by itself delivers control.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited reference.
35 U.S.C. 103
Claims 1-12, 14, 26, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Berghaus (US 2010/0255992) in view of Jentzer et al. (US 9,392,785; hereinafter, Jentzer).
Berghaus discloses a preferred embodiment of a soluble liquid (SL) formulation comprising quinclorac dimethylammonium, benzyl alcohol, and one additional herbicidal active ingredient selected from (1) bentazon, (2) imazapic, (3) imazapyr, (4) imazaquin, (5) imazethapyr, or (6) imazamox. See paragraph 146. See also paragraph 251, which further comprises a co-solvent. Berghaus further discloses “especially bentazon or one of its environmentally compatible salts” (paragraphs 146, 251).
Berghaus also discloses 2-25 wt% additional herbicide, 30-60 wt% solvent, and 0.1-20 wt% formulation additives (paragraphs 553-554, 556). The formulation additive can be a surfactant such as castor oil ethoxylate (paragraphs 330, 356). Control of the large crabgrass Digitaria sanguinalis with only quinclorac dimethylammonium is shown (paragraph 595).
Jentzer (US 9,392,785) discloses pentanoic acid 5-(dimethylamino)-2-methyl-5-oxo methyl ester. See Example 1.3 at column 34, lines 53-58 and Example 1.4 at column 36, lines 8-14. Compare with instant application claim 20. Jentzer discloses this compound and similar compounds as a solvent to formulate various agricultural compounds such as herbicides (column 2, line 49 to the end of column 3; column 12, lines 41-62). Use with a co-solvent is disclosed (column 10, lines 42-52). 4-60% active phytosanitary product (e.g., herbicide), 10-92% solvent, and 4-60% emulsifier/surfactant such as SOPROPHOR® surfactants and ALKAMULS® OR/36 surfactant is disclosed (Column 28, lines 51-67; column 29, lines 15-23).
As discussed in the previous ground of rejection, Berghaus explicitly discloses and at least suggests a herbicidal composition that contains benzyl alcohol and an imidazolinone-based ALS inhibitor herbicide such as imazethapyr or imazapic, as claimed herein. Weight ratio of imidazolinone-based ALS inhibitor to benzyl alcohol of 1 : “at least about 5” is suggested by the fact that the solvent can be present in 30-60 wt%, whereas the additional herbicide, i.e., imazethapyr or imazapic, can be present in the relatively smaller range of 2-25 wt%. The ordinary skilled artisan would have it obvious to adjust the herbicide amount within the claimed ratio to optimize various formulation considerations such as stability and solubility. Selection of a particular surfactant such as ethoxylated castor oil would have been obvious from Berghaus’ teaching of various surfactant alternatives, including castor oil ethoxylates. Control of weeds, for example Digitaria sanguinalis, would have been obvious with the Berghaus’ herbicide comprising quinclorac dimethylammonium + imazapic, imazapyr, imazaquin, imazethapyr, or imazamox, because quinclorac by itself delivers control.
Further addition of a co-solvent such as the pentanoic acid 5-(dimethylamino)-2-methyl-5-oxo methyl ester of instant claim 20 would have been obvious from the teachings of Jentzer.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited reference.
35 U.S.C. 103
Claims 1-19, 21-23 and 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over Campbell et al. (WO 01/51028; hereinafter, Campbell)3 in view of JP 2018/030797.
Campbell discloses a non-aqueous composition comprising:
emulsifier such as polysorbate 20 or polysorbate 80 (page 8; claim 7)
polyol;
benzyl alcohol; and
biologically active compound, which includes herbicides imazethapyr, imazapyr, imazaquin (page 14).
See claim 1. Campbell also discloses a similar composition that further comprises N-methyl pyrrolidone as a co-solvent (claim 12). Application to crop or plants is disclosed (claims 33-34, 40; see also page 1, second paragraph; page 4, lines 12-14; page 5, lines 1-3). Campbell teaches that water-insoluble or water-labile biologically active compounds may be solubilized and conveniently transported to a site of application in non-aqueous form, and then diluted in an aqueous solution (page 2). Although the active ingredient in Campbell’s example on page 8 is not an imidazolinone-based ALS inhibitor herbicide, the weight ratio active compound (ivermectin) to benzyl alcohol is about 1:7.5. In the same example, polysorbate 80 is used at 25 wt%. Dilution with water is disclosed (abstract; claim 2); 20-fold dilution is disclosed (Example 1 on page 10).
JP 2018/030797 discloses a herbicide composition that is safe for cultivation of plants and effective for control of wider range of weeds at lower dosage by synergistic effect of active ingredients, which includes the combination of saflufenacil and at least one very long chain fatty acid(VLCFA) synthesis inhibitor herbicide4 See the enclosed machine translation of the entire document; in particular, see the abstract; see also another English abstract provided herewith, this one by Espacenet. JP 2018/030797 further discloses the following:
(1) VLCFA inhibitor herbicides include S-metolachlor (2nd page of translation);
(2) Ratio of saflufenacil and VLCFA inhibitor herbicide ranges from 1:5 to 1:300 (2nd page of translation). Saflufenacil is used at 5-80 g/ha, whereas S-metolachlor is used at 300-3,000 g/ha (6th page of translation, first paragraph). In the Example shown on page 26 of the original document, saflufenacil and S-metolachlor are combined at 1:58 weight ratio (e.g., 6.25 to 362.6, 12.5 to 725).
(3) Formulation with one, two, or more liquid carriers having solvent ability is disclosed (4th page of translation, second to last paragraph);
(4) Formulation with surfactants such as polyoxyethylene sorbitan fatty acid esters, i.e., polysorbates, is disclosed (5th page of translation, first paragraph);
(5) Application in crops such as rice and wheat is disclosed (7th page of translation).
(6) Further combination with additional herbicides such as imazethapyr, imazapic, imazaquin, imazapyr, imazamethabenz-methyl, and imazamox is disclosed (8th page of translation, 7th paragraph).
(7) Control of weeds such as crabgrass (Digitaria), Amaranthus retroflexus, Conyza bonariensis, and Solanum nigrum is disclosed (10th page of translation, first two paragraphs).
The cited prior art references do not explicitly disclose all the claim-recited features of the instant invention. However, for the reasons set forth below, those features and the claimed invention as whole would have been obvious to the ordinary skilled artisan.
Composition comprising imidazolinon-based ALS inhibitor herbicide and benzyl alcohol with polysorbate 20
Campbell teaches formulating various active compounds with benzyl alcohol and polysorbate 20, including imazethapyr, imazapyr, imazaquin and other imidazolinone herbicide class as the active compound. Advantages of solubility and convenience of transport are suggestive of the claimed invention.
1 to “at least about 5” wt ratio of imidazolinone ALS inhibitor to benzyl alcohol
Campbell’s example on page 8 is not an imidazolinone-based ALS inhibitor herbicide, but the weight ratio active compound (ivermectin) to benzyl alcohol is about 1:7.5. The ordinary skilled artisan would have found it obvious to adjust and optimize suitable amount of a solvent to formulate herbicides at various concentration strengths to obtain the claimed invention.
Imazethapyr + (S)-metolachlor + saflufenacil
JP 2018/030797 discloses the herbicidally synergistic combination of (S)-metolachlor and saflufenacil, and JP 2018/030797 teaches further addition of another herbicide such as imazethapyr. Therefore, it would have been obvious to the ordinary skilled artisan that Imazethapyr + (S)-metolachlor + saflufenacil would advantageously provide herbicidally synergistic activity and control a broad range of weeds at reduced dosage.
Claim 23: about 0.5-5 wt% imidazolinone-based ALS inhibitor, about 5-60 wt% solvent, about 10-70 wt% surfactant, about 15-45 wt% VLCFA inhibitor,
about 0.1-25 wt% PPO inhibitor, and 0.5-7 wt% co-solvent
It would have been obvious to the ordinary skilled artisan from the known dosage and known formulation concentration ranges of the known herbicides imazethapyr, (S)-metolachlor, and saflufenacil, to arrive at the relative proportions required by claim 23. For example, teachings of Campbell (WO 01/51028) is open to wide concentration strengths of imazethapyr, with sufficient amount of benzyl alcohol utilized as a solvent. In one example Campbell shows approximately 1:7.5 ratio of active compound to benzyl alcohol and 25 wt% polysorbate surfactant. Further, the relative proportion of saflufenacil to (S)-metolachlor is suggested by the fact that saflufenacil is used in smaller dose/concentration of 5-80 g/ha than dose/concentration of (S)-metolachlor of 300-3000 g/ha (JP 2018/030797, 6th page of translation). 1:58 weight ratio of saflufenacil to (S)-metolachlor is exemplified by JP 2018/030797.
Benzyl alcohol is clearly taught by Campbell as a useful solvent to formulate myriad structurally divergent active compounds, which solvent can be used with another solvent (page 8, last paragraph). Additional formulation optimization would have been well within the skill of the ordinary skilled artisan based on the percentages and proportions taught by the prior art as discussed hereinabove. Thus, it would have been obvious to the ordinary skilled artisan to formulate the three claim-recited herbicides imidazolinone-based ALS inhibitor such as imazethapyr, VLCFA inhibitor such as (S)-metolachlor, and PPO inhibitor such as saflufenacil with solvent (benzyl alcohol), co-solvent, and surfactants in the proportions and percentages as claimed herein.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 Cited previously in the Office action of 8/20/2025.
2 US 2010/0255992 is a patent family member of WO 2009/013120, which was cited in the International Search Report and submitted in the IDS of 8/23/2023.
3 Cited in the International Search Report and submitted in the IDS of 8/23/2023.
4 Machine translation is provided herewith.