DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Status of Claims
The amendment, filed on 29 July 2026, is acknowledged.
Claims 1-3 and 5-8 have been amended.
Claim 4 has been cancelled.
New claims 15-19 have been added.
Claims 1-3, 5-8, and 15-19 are pending and under consideration in the instant Office Action, to the extent of the following previously elected species:
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the specific compound of formula (I) is a compound of Formula (Ic), whose chemical structure is reproduced from instant claim 2 below
the specific ACCase inhibiting herbicide is clethodim (B1); and
the specific additional herbicidal component is glyphosate.
Objections Withdrawn
Objections to Title
Applicant’s submitted amendment to the title dated 29 July 2026, would overcome the objection to the title set forth in the Office Action mailed on 29 April 2026. Applicant is notified that as of the writing of the instant Office Action, the title has not yet been updated. With the understanding that the title will be updated accordingly, the relevant objection is withdrawn.
Objections to Claims
Applicant’s amendment to claims 1-3 and 5-8 have overcome the objections to the claims set forth in the Office Action mailed on 29 April 2026. Accordingly, the relevant objections are withdrawn. Applicant’s cancellation of claim 4 has rendered moot the objection to the claim set forth in the previous Office Action.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 103
The rejection of claims 1-3 and 5-8 under 35 U.S.C. § 103 is withdrawn in view of Applicant’s amendment to claim 1 and in favor of the new grounds of rejection below. The rejection of claim 4 under 35 U.S.C. § 103 is rendered moot in view of Applicant’s cancellation of the claim.
New Grounds of Objection
Claim Objections
Claims 2 and 14-19 are objected to for the following informalities:
Claim 2 was amended to remove Formula Ib. However, the group of compounds still recites “consisting of Formula (Ia), and (Ic)”. The comma is extraneous and should be removed.
Claims 14-19 recite “The composition according to…” in the preamble. While it is apparent that the referenced composition is the herbicidal composition recited in claim 1, clarity would be improved if each claim were amended to recite “The herbicidal composition according to…”.
Appropriate correction is required.
New Grounds of Rejection
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-8, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Scutt et al. (WIPO International Patent Publication No. WO 2015/197468 A1, published 30 December 2015, provided by Applicant in the IDS filed on 4 April 2024, hereafter referred to as Scutt).
Scutt teaches an herbicidal composition comprising a compound of formula (I) and methods of controlling weeds comprising application of the composition comprising a compound of formula (I) (Abstract), where formula (I) is
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In one embodiment, R1, R3, and R6 are hydrogen, R2 is methoxy, Y is carbon, G is a methyl acetate group, and R4 and R5 are connected via two carbons, producing the compound P7, which is depicted below and is identical to the compound of Formula (Ic) recited in instant claim 2 (Table P1, pg. 144).
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Scutt teaches that their herbicidal composition may comprise a compound of formula (I) and “one or more further herbicides” (claims 12-13). In some embodiments, the further herbicides may be clethodim (pg. 88, line 25 and pg. 103, line 18) and glyphosate (pg. 90, lines 23-25 and pg. 103, lines 25-31).
Scutt teaches that the compound of formula (I) and the one or more further herbicides can be used in a variety of weight ratios, such as 30:1 to 1:30 (pg. 106, lines 5-14). The composition can be applied in rates to provide 1-2000 g/ha of the compound of formula (I) (pg. 108, lines 5-14). Finally, the weeds to which the composition of Scott may be applied include members of the Digitaria, Echinochloa, Lolium, and Setaria genera including the specific species Echinochloa crus-galli, Digitaria insularis, Lolium multifolorum, and Setaria faberi (pg. 81, lines 6-27).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the range of ratios of compounds of formula (I) to the one or more additional herbicides and the application rate taught by Scutt. In each instance, the taught ranges encompass the ranges recited in the instant claims.
Scutt is silent regarding synergy between the compound of formula (I) and one or more herbicides in their invention. However, the synergy between component (A) and component (B) in the claimed invention arises from the concentration of each component present in the composition, as evidenced by para. [0024-0030] of the instant specification. Therefore, the claimed synergistic effect between the components of the composition is inherent to the two species when used in the claimed ratio. “Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See also MPEP § 2112.01. Because Scutt has rendered obvious a composition comprising the elected compound of Formula (Ic) and clethodim in the recited ratio, the properties claimed are necessarily present and so too are the claimed synergistic effects obvious, regardless of the method used to determine the synergistic effect.
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Addressing the issue of obviousness, the Supreme Court noted that analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007)). The Court further emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton” (Id. at 1742).
The only difference between Scutt and the instant claims is that Scutt does not teach the specific combination of components as claimed in a single embodiment (e.g., a composition with compound P7, clethodim, and glyphosate), or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Scutt, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP § 2141.I. Consistent with this reasoning, it would have been prima facie obvious to a person having ordinary skill in the art, prior to the effective filing date of the instant application, to have selected various combinations of the various disclosed ingredients from within the teachings of Scutt, to arrive at an invention such as the one being sought in instant claims 1-3, 5-8, and 15-19.
Response to Arguments
The Applicant’s arguments, filed on 29 July 2026, have been fully considered but are not persuasive.
Applicant alleges they have found unexpected results from the final para. of pg. 8 to para. 2 of pg. 9. Guidelines on determining whether results are expected or unexpected are provided in MPEP § 716.02. To demonstrate that results are unexpected and significant, the Applicant has the responsibility of presenting evidence that establishes “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). “Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims”. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e).
Applicant has not explained the data presented in Tables B1 and B2 in the arguments filed on 29 July 2026, nor does the instant specification explicitly explain the data, and no explanation of how the data supports the claim of unexpected results has been provided. The Examiner’s interpretation of Tables B1 and B2 are a comparison of the “observed actions” (as evidenced by para. [0029] of the instant spec.) as a function of the rates of application of the compound of Formula (Ic) alone, either clethodim (B1) or fluazifop-P-butyl (B4a) alone, or a combination of the compound of Formula (Ic) and either B1 or B4a. It is not clear if the compound of Formula (Ic) and either B1 or B4a are applied sequentially or in one composition simultaneously, nor is the relationship clear between the rate of application and the claimed weight ratio of component (A) to component (B). Further, in rows 6-7 it is not clear which component is applied at each listed rate.
Even if, for the sake of argument, the rates presented in Table B1 were equivalent to weights and the entries of rows 6-7 represent weight ratios of component (A) to component (B) of 1:1 and 2:1, respectively, falling within the range of ratios recited in claims 16-17, this is not a showing of unexpected results commensurate in scope with the claims because there is no data outside of the claimed range to demonstrate the criticality of said range. “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d).
The Applicant also has not compared their invention with the closest prior art. See MPEP § 716.02(e). A comparison with the closest subject matter in the prior art should include a comparison to Scutt, which was provided in the IDS filed on 4 April 2024. As a result, Applicant’s assertion of unexpected results is not persuasive and the arguments do not overcome the rejection above.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Sean J. Steinke, Ph.D., whose telephone number is (571) 272-3396. The examiner can normally be reached Mon. - Fri., 09:00 - 17:00 ET.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
