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 Election/Restriction
Applicant's election with traverse of Group I, claims 1-8, and a compound of Formula (Ic), clethodim, and glyphosate in the reply filed on 10 March 2026, is acknowledged. The traversal is on the grounds that:
1. the International Search Authority “found that claims 1-14 have unity” and that “this is evidence that the pending claims have unity” and
2. as quoted in the Office Action from 37 CFR 1.475 (b), the inventions of Groups I and II are related as a product and a process of use of said product, therefore they have unity of invention.
Regarding the first argument, this is not found persuasive because the International Search Authority does not search or examine according to the same code, laws, or rules as the U.S. Patent and Trademark Office and their findings do not change the findings of the USPTO. Regarding the second argument, Applicant is directed to the recitation of 37 CFR 1.475(a) in the previous Office Action, two paragraphs above the cited recitation of 37 CFR 1.475 (b), which states that “[w]here a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features” (bold added for emphasis). As argued in the previous Office Action, the shared technical feature is not a special technical feature and unity of invention is therefore still found to be lacking.
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
Claims 1-14 are pending in the instant Office Action.
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10 March 2026.
Claims 1-8 are under consideration in the instant Office Action, to the extent of the following elected species:
the specific compound of formula (I) is a compound of Formula (Ic), whose chemical structure is reproduced from instant claim 2 below
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the specific ACCase inhibiting herbicide is clethodim (B1); and
the specific additional herbicidal component is glyphosate.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent European Application No. EP 21184839, filed on 9 July 2021, has been received from the International Bureau.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4 April 2024, was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Objection to title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The title of the instant application is “Herbicidal Compositions”. The title should be brief but technically accurate and descriptive and should contain fewer than 500 characters. The title does not reflect the main inventive concept of Applicant’s invention and the major components of the invention. The title is generic and can be applicable to any herbicidal compositions. The Examiner advises Applicant to consider including major components of the composition, primary purpose of the invention, and/or the general steps taken to achieve the claimed invention in the title to precisely reflect the inventive concept. Inasmuch as the words "new", "improved", "improvement of", and "improvement in" are not considered as part of the title of an invention, these words should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues. Similarly, the articles "a," "an," and "the" should not be included as the first words of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.
Claim Objections
Claims 1-8 are objected to because of the following informalities:
Claim 1 recites “a herbicidally effective amount” in lines 1-2. The article “a” should be “an” and the resulting phrase should read “an herbicidally effective amount” (bold added for emphasis).
Claim 6 recites the limitation "component B is clethodim" in line 2. While the intended herbicide species is clearly clethodim, the Examiner recommends amending the claim to recite “clethodim (B1)” to maintain consistency with claims 4-5.
Claims 2-8 are objected to because of the following informalities: Independent claims start recitations with the use of articles “A” or “An” whereas dependent claims will start recitations with the use of the proposition “The”. However, dependent claims 2-8 start recitations with the article “An”.
Appropriate correction is required.
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 1-8 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 et al. teach 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).
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 1-8.
Conclusion
No claims are allowed.
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
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