DETAILED ACTION
Applicant’s arguments, filed 17 March 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 Objections (New)
Claim 16 is objected to because of the following informalities: “A and B” in line 2 should be recited as --- (A) and (B) ---. Appropriate correction is required.
Claim 21 is objected to because of the following informalities: “A method” in line 1 should be recited as --- The method ---. Appropriate correction is required.
Claim Rejections - 35 USC § 112 (New)
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.
Claim 16 is 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.
Claim 16 recites wherein the composition comprises components (A) and (B) in a synergistic weight ratio according to the Colby formula. The claim is indefinite because the scope of the claim is unclear. As explained in pp. 7-8 of the instant Specification, the Colby formula is a theoretical formula relying on having an observed (O) value to be greater than expected (E) in order to establish synergism. Therefore, it is unclear how the Colby formula recited at the bottom of p. 7 of the instant Specification, without any observed value input, would be able to demonstrate what amounts of components (A) and (B) are encompassed by the recitation of a “synergistic weight ratio.” To obviate this issue, it is suggested for the Applicant to recite specific amounts of each of components (A) and (B).
Claim Rejections - 35 USC § 103 (maintained)
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6 and 8-21 are rejected under 35 U.S.C. 103 as being unpatentable over Scutt et al. (US 2017/0183281 A1, 06/29/2017) (hereinafter Scutt).
Regarding claims 1-3, 9, 13-14, and 17-19, Scutt discloses an herbicidal composition comprising an herbicidally effective amount of a compound of formula (I) for controlling weeds in crops of useful plants by applying to the plants or to the locus thereof (abs), with one or more further herbicides, an agrochemically acceptable carrier, diluent and/or solvent, and/or a safener ([0410]). The one or more further herbicides include halauxifen ([0420]), and a compound of formula (I) includes compound P-7 ([0222]):
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(Table P1).
Accordingly, Scutt discloses an herbicidal composition comprising a compound of formula (I) wherein G is -C(O)OCH3 (i.e. a compound of instantly claimed formula (Ic)), and at least one herbicide including halauxifen as instantly claimed.
The prior art is not anticipatory insofar as this combination must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding claims 4, 6, 8, and 10, Scutt further discloses wherein a compound of formula (I) is provided as a mixture with one or more further herbicides includes 2,4-D, dicamba, fluroxypyr ([0420]), and triclopyr ([0415]).
Regarding claims 11 and 12, Scutt further discloses wherein the one or more further herbicides includes metolachlor ([0415]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have included metolachlor in the composition of Scutt, since each is taught as a known and effective further herbicide. "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." See MPEP 2144.06(I).
Regarding claim 15, Scutt further discloses wherein “crops” includes crops that have been rendered tolerant to herbicides, e.g., glyphosate-tolerant (i.e. a glyphosate-tolerance trait) ([0381]). Thus, it would have been obvious to one of ordinary skill in the art to have applied the composition of Scutt on crops having an herbicide tolerance trait as instantly claimed.
Regarding claims 20 and 21, Scutt further discloses wherein the weeds to be controlled include Sorghum halepense ([0385]).
Response to Arguments
Applicant mainly presents Table B1-B2 and the Colby formula in an effort to demonstrate alleged unexpected result, and asserts that even if a prima facie case of obviousness was established (which Applicant does not concede), the evidence of unexpected results in Tables B1-B6 in the instant Specification is sufficient to establish non-obviousness.
The Examiner does not find the Applicant’s assertion to be persuasive.
Regarding the product claims, it is noted that where the components of the composition are taught by the prior art, as long as the component is present in the composition made obvious, there is a reasonable expectation that the functional recitations regarding such a composition are also met, given that the function of compositions is a product of the compositions’ structure. In other words, the component need not be included for the same purpose as Applicants reasoning. In this instant case, the claims as recited requires only an amount of a compound of Formula (I), and at least one further herbicide as recited in claim 1. Thus it would reasonably appear the composition of Scutt reads on the herbicidal composition as instantly claimed.
Regarding the method claims (claims 13-15 and 19-21), it is noted that the administration of Scutt is substantially similar to the administration as instantly claimed. Therefore, absent manipulative differences between the claimed inventio and the prior art, one of ordinary skill in the art would reasonably conclude the composition of Scutt would be capable to demonstrate substantially the same effects like the claimed invention.
Furthermore, it is noted that Applicant’s alleged unexpected results of Tables B1-B6 comprises selected sets of data. For example, it is noted that observed values in Table B3 is missing, and Table B6 only contains one data point of individual/combination concentration. Thus, assuming purely arguendo that the unexpectedness of the results has been established, the probative value of the evidence as compared to the invention as claimed must then be determined, i.e., the claims must be “commensurate in scope” with the showing. MPEP § 716.02(d). See also MPEP § 2145. The examples of Tables B1-B6 employ specific combinations of specific amounts each, of specific species of a compound of Formula (I) and specific species (e.g., a specific salt) of an herbicide of component (B) (as noted on p. 2, para. 4 and Table 1 of the instant Specification); even if Applicant were to show unexpected results, they would have been obtained, for example, not with the broad formula of “a compound of Formula (I)” or at least one herbicide of (B) “and agrochemically acceptable esters or salts of any of the aforementioned (B) compounds” generally, but instead with specific amounts of specific species. Note, for example, Table B2 utilizes dicamba dimethylamine salt; Table B4 uses halauxifen-methyl; and Table B6 uses florpyrauxifen-benzyl. Applicant would need to explain how these specific species are “reasonably representative” of the more broadly claimed subject matter of the claims.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Scutt et al. (US 2017/0183281 A1, 06/29/2017) (hereinafter Scutt) in view of Hennessy et al. (WO 2020/074489 A1, 04/16/2020) (hereinafter Hennessy).
The disclosure of Scutt has been discussed in detail above, and differs from the instant claim insofar as not explicitly disclosing wherein the one or more further herbicides includes florpyrauxifen.
However, Hennessy discloses compositions for controlling weeds in crops of useful plants (abs), that may be in a mixture with one or more additional herbicides including 2,4-D, dicamba, clopyralid, florpyrauxifen and halauxifen (p. 17, lines 7-29).
Accordingly, it would have been obvious to one of ordinary skill in the art to have included florpyrauxifen in the herbicidal composition of Scutt, since it is a known and effective additional herbicide suitable for herbicidal compositions as taught by Hennessy. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP § 2144.07. Likewise, it would have been obvious to one of ordinary skill in the art to have included florpyrauxifen in the composition of Scutt, since each is taught as a known and effective further herbicide. "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." See MPEP 2144.06(I).
Response to Arguments
Applicant does not present specific arguments with regard to Scutt and Hennessy. Since the Examiner has discussed Scutt above, this rejection is maintained.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/577,361, claims 1-14 of copending Application No. 18/577,406, and claims 1-16 of copending Application No. 18/577,424 in view of Scutt et al. (US 2017/0183281 A1, 06/29/2017, US document of IDS reference WO 2015/197468 A1) (hereinafter Scutt) and Hennessy et al. (WO 2020/074489 A1, 04/16/2020) (hereinafter Hennessy).
The pending claims differ from the copending claims insofar as reciting an at least one herbicide of (B) as instantly claimed.
However, Scutt discloses an herbicidal composition comprising an herbicidally effective amount of a compound of formula (I) for controlling weeds in crops of useful plants by applying to the plants or to the locus thereof (abs), with one or more further herbicides, an agrochemically acceptable carrier, diluent and/or solvent, and/or a safener ([0410]). The one or more further herbicides include halauxifen, 2,4-D, clopyralid, dicamba, fluroxypyr ([0420]), metolachlor and triclopyr ([0415]). The compound of formula (I) includes compound P-7 ([0222]):
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(Table P1).
Hennessy discloses compositions for controlling weeds in crops of useful plants (abs), that may be in a mixture with one or more additional herbicides including 2,4-D, dicamba, clopyralid, florpyrauxifen and halauxifen (p. 17, lines 7-29).
Accordingly, it would have been obvious to one of ordinary skill in the art to have included one or more further herbicides including halauxifen, 2,4-D, clopyralid, dicamba, fluroxypyr, metolachlor, florpyrauxifen and triclopyr in the composition of the copending claims, since each is a known and effective herbicide suitable for combination with a compound of formula (I) as taught by Scutt. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP § 2144.07. Likewise, it would have been obvious to one of ordinary skill in the art to have included said one or more further herbicides in the compositions of the copending claims, since each is taught as a known and effective further herbicide. "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." See MPEP 2144.06(I).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant mainly asserts while component (A) might be in common between the pending application and referenced applications, no component (B) is common. Accordingly, there are no two-way mixtures of component (A) and component (B) in common between all applications. Therefore, the analysis is flawed since the claims would not be infringing two obvious variants of the same invention, rather, they would be infringing two separate inventions.
The Examiner does not find the Applicant’s assertion persuasive. As supported by MPEP 804 (II)(B)(3)-(II)(B)(4), it is not required for the Examiner to apply a two-way test for distinctness. In this instant case, as discussed above, it would have been obvious to one of ordinary skill in the art to have included a further herbicide, such as those disclosed by Scutt, with a compound of instantly claimed component (A), since they are known and effective herbicides suitable for combination with the same compound of component (A) as taught by Scutt. One of ordinary skill in the art is simply combining an herbicide with another known herbicide to yield a third herbicidal composition. As such, Applicant’s assertion is unpersuasive.
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 LUCY TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Thursday 8:30 AM - 6:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUCY M TIEN/ Examiner, Art Unit 1612
/SAHANA S KAUP/ Supervisory Primary Examiner, Art Unit 1612
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