DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after January 08, 2024, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention filed on 01/08/2024 in the matter of Application N° 18/577,361. Said documents are entered on the record. The Examiner further acknowledges the following:
Thus, claims 1-15 represent all claims currently under consideration.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Scutt et al. (WO2015197468A1)
Regarding claims 1-4, Scutt et al. discloses compound P7, which reads on the compound of formula I and specifically formula IC given in claims 1, 2, and 3, is disclosed by Scutt et al. (See pages 144 and 159). Scutt teaches an herbicidal composition comprising the compound of formula I in a herbicidally effective amount thereof and also comprising one or more further herbicides. Scutt teaches the compound of formula I can be used in combination with glufosinate, which reads on the ammonium salt of glufosinate recited in claims 1 and 4 (See page 87, lines 1-5, and page 105, line 31).
Regarding claim 5, Scutt et al. disclose wherein the compound of formula I can be used in combination with glyphosate and isopropylammonium salt of glyphosate (See page 80, line 5 and 7 and page 90, line 24).
Regarding claim 6, Scutt et al. disclose the conditions under which butafenacil and the compound of formula I can be used together (See page 88, line 12, and page 95, line 16).
Regarding claim 7, Scutt et al. disclose the conditions under which paraquat and the compound of formula I can be used together (See page 91, line 27).
Regarding claims 8 and 9, according to Scutt et al. an herbicidal composition that contains the compound of formula I additionally contains one or more additional herbicides. In addition to the other herbicides taught, Scutt et al. disclose that the compound of formula I can be used in together with acetochlor and metolachlor (See page 87, line 27, and page 91, line 15).
Regarding claims 10, 11, and 16, Scutt et al. teaches a method of controlling weeds, particularly grassy monocotyledonous weeds, in crops of useful plants is disclosed. It involves applying an herbicidal composition (in a herbicidally effective amount) consisting of the compound of formula I to the weeds, plants, or the locus thereof. According to Scutt et al. areas under cultivation and/or the locus (such as weeds and/or crops of useful plants) are to be defined as including both land intended for the cultivation of those crop plants and land where they are currently growing. Therefore, Scutt et al. teaches how to control and/or selectively control weeds at a locus that includes weeds and crop plants.
Regarding claims 12-14, according to Scutt et al. crops that have been made tolerant to herbicides or classes of herbicides (like ALS, GS, PPO, HPPD, and EPSPS (component B), and/or2,4-D or dicamba (Component C). Crops of useful plants include 2,4-D-tolerant soybean (See pages 79 and 80).
Regarding claims 15, 19, and 20, Scutt et al. teaches the monocotyledonous weeds to be controlled comprise Alopecurus, and Echinochloa (See page 81, lines 8-9).
Regarding claims 17, and 18, Scutt et al. discloses compound P7, which reads on the compound of formula I and specifically formula IC given in claims 1, 2, and 3, is disclosed by Scutt et al. (See pages 144 and 159). Scutt et al. disclose wherein the compound of formula I can be used in combination with glyphosate and isopropylammonium salt of glyphosate (See page 80, line 5 and 7 and page 90, line 24).
Scutt teaches an herbicidal composition comprising the compound of formula I in a herbicidally effective amount thereof and also comprising one or more further herbicides. Scutt teaches the compound of formula I can be used in combination with glufosinate, which reads on the ammonium salt of glufosinate recited in claims 1 and 4 (See page 87, lines 1-5, and page 105, line 31). Scutt et al. disclose the conditions under which butafenacil and the compound of formula I can be used together (See page 88, line 12, and page 95, line 16).
Scutt et al. disclose wherein the compound of formula I can be used in combination with glyphosate and isopropylammonium salt of glyphosate (See page 80, line 5 and 7 and page 90, line 24). Scutt et al. disclose the conditions under which butafenacil and the compound of formula I can be used together (See page 88, line 12, and page 95, line 16).
Scutt et al. teachings are outlined above.
In order to manage weeds in crop plants, Scutt et al. teach a genus of formula I. Additionally, the claimed compound of formula I (taught as compound P7 in Scutt et al. as a specific species of compound of formula I of Scutt et al.). Is explicitly disclosed. The compound P7 in conjunction with the purported herbicides B and C is not specifically demonstrated by Scutt et al. However, as was previously said, Scutt et al. generally teaches that the compound of formula I, which includes compound P7, can be employed for weed control in herbicide-tolerant crops as well as in conjunction with the claimed extra herbicides. All of the claimed elements were therefore known in the prior art, and one skilled in the art could have combined the elements as claimed by known methods without changing their respective functions, and the combination would have produced predictable results to one of ordinary skill in the art at the time of the invention. Note: Teleflex Inc. v. MPEP 2141 KSR International CO. 82 USPQ 2d 1385 (Supreme Court 2007).
One of ordinary skill in the art would have had a reasonable expectation of success in making the claimed invention based on the combined instruction of the given reference. Therefore, at the time of the invention’s formulation, a person with ordinary skill in the field would have found the invention as a whole to be prima facie obvious.
Response to Arguments
Applicant's arguments filed March 10, 2026 have been fully considered but they are not persuasive.
Upon further review of the application and the cited references, the examiner has determined that the previously issued double patenting rejection was improper and is hereby withdrawn. The claims of the instant application are not subject to a nonstatutory obviousness type double patenting rejection over the cited patent/application because the requisite factual and legal basis for such a rejection has not been established.
Applicant’s evidence of alleged unexpected results is not persuasive because it is not commensurate in scope with the claimed invention. Claim 1 broadly encompasses herbicidal compositions comprising a compound of Formula (I), wherein G is hydrogen, in combination with a wide range of herbicides, including glufosinate, glyphosate, and numerous PPO-inhibiting herbicides. Claim 2 further encompasses multiple compounds within Formula (I), including Formula (Ia), Formula (Ib), and Formula (Ic).
However, the experimental data submitted by applicant are directed solely to compositions containing the specific compound of Formula (Ic). The evidence does not demonstrate that the alleged results would be obtained throughout the full scope of the claimed genus, including compositions comprising Formula (Ia) and Formula (Ib). Therefore, the evidence is not reasonably commensurate in scope with the claims.
Additionally, the comparative data do not establish a meaningful comparison across the breadth of the claims. The tested application rates vary between the individual components and the combination treatments, making it difficult to determine whether any observed effect is attributable to a synergistic interaction rather than differences in application rates. For example, the data do not consistently compare the compound of Formula (Ic) and PPO-inhibiting herbicides at equivalent rates. Table B12 provides a comparison in which both components are present at 0.94; however, the claims are not limited to that specific rate, ratio, or combination. Consequently, the evidence fails to demonstrate that the alleged unexpected results would occur across the full scope of the claimed compositions.
Accordingly, applicant has not provided objective evidence sufficient to overcome the prima facie case of obviousness because the submitted data are not commensurate in scope with the breadth of the pending claims and do not adequately establish unexpected results for the claimed genus as a whole.
Conclusion
THIS ACTION IS MADE FINAL. 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 Kimberly Barber whose telephone number is (703) 756-5302. The examiner can normally be reached on Monday through Friday from 6:30 AM to 3:30 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax, can be reached at telephone number (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
Prosecution Insights