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 .
Priority
This application is a National Stage entry of PCT/EP2022/068239, filed on 07/01/2022, and claims foreign priority to EP21184857.7, filed 07/09/2021.
Information Disclosure Statement
The IDS filed on 4/4/2024 has been considered. See the attached PTO 1449 form.
Claim Status
Claims 1-16 are currently pending and presented for examination on the merits for patentability.
Claim Objections
Claims 1-11 and 13-16 are objected to because of the following informalities:
Regarding claim 1, there does not appear to be any space after B1, B2, B3 and B4. The examiner suggests adding a space after B1, B2, B3 and B4.
In claims 2-10, the recitation “An herbicidal composition” should recite “The herbicidal composition” as claims 2-10 depend from claim 1 and claim 1 already recites “An herbicidal composition”.
Similarly, in claims 13-16, the recitation “A method according to” should recite “The method according to” as claims 13-16 depend from claims 11 or 12 which already recite “A method”.
In claim 4, line 2, the recitation “is selected from” should recite “selected from”.
In claim 11, the recitation “to the locus of a weed controlling amount” should recite “to the locus a weed controlling amount”.
In claim 14, the recitation “wherein the wherein the” in line 1 is repetitive and should recite “wherein the”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 10 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 10 recites the limitation “wherein component (C) is a herbicide selected from…”. There is insufficient antecedent basis for this limitation in the claim. Claim 10 depends on claim 7 and 1 and neither of these claims recite the composition comprises component C. Therefore, it is unclear what components in the preceding claims (1 and 7) claim 10 is referring to. It is also unclear whether component C recited in claim 10 is a further comprising component because the claim does not recite the composition further comprises component C. The claim should either be amended to recite wherein the composition further comprises component C and the claim can be amended to depend form claim 9, which does recite the composition further comprises component C.
Claim Rejections - 35 USC § 103
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.
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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Scutt et al. (WO 2015/197468 A1).
Scutt throughout the reference teaches herbicidal propynyl-phenyl compounds represented by formula I below.
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Regarding claims 1-4, Scutt discloses compound P7 (e.g., page 144 and 159; see below) which reads on the compound of formula I and specifically formula Ic recited in claim 1, 2 and 3.
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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 mesotrione, which reads on the HPPD-inhibiting herbicide recited in claims 1 and 4. (see e.g., page 87, line 1-5; page 91, line 9-11).
Regarding claim 5, Scutt teaches the compound of formula I can be used in combination with acetochlor. (e.g., page 87, line 24-27).
Regarding claim 6, Scutt teaches the compound of formula I can be used in combination with bensulfuron-methyl. (e.g., page 88, line 1-5).
Regarding claim 7, Scutt teaches the compound of formula I can be used in combination with ametryn. (e.g., page 87, line 29-31).
Regarding claim 8, Scutt teaches the compound of formula I can be used in combination with cyclopyrimorate. (e.g., page 94, line 29-31).
Regarding claims 9 and 10, as discussed supra, Scutt teaches an herbicidal composition comprising the compound of formula I also comprising one or more further herbicides. Scutt teaches the compound of formula I can be used in combination with glyphosate, 2,4-D, glufosinate and dicamba in addition to the other herbicides taught. (e.g., page 103, line 25-34, page 104; page 108, line 21-30).
Regarding claims 11 and 12, Scutt teaches a method of controlling weeds, especially grassy monocotyledonous weeds, in crops of useful plants, comprising applying an herbicidal composition (in a herbicidally effective amount) comprising the compound of formula I, to the weeds and/or to the plants or to the locus thereof. Scutt discloses that areas under cultivation, and/or the locus (e.g. of weeds and/or of crops of useful plants), are to be understood as including land where the crop plants are already growing as well as land intended for the cultivation of those crop plants. Thus, Scut teaches controlling and/or selectively controlling weeds at a locus which comprises crop plants and weeds. (see e.g., Abstract; claims; page 65, line 5-15; page 84, line 20-25).
Regarding claim 13-15, Scutt teaches the term "crops" is to be understood as also including crops that have been rendered tolerant to herbicides or classes of herbicides (for example ALS, GS, EPSPS, PPO and HPPD inhibitors (component B), and/or 2,4-D or dicamba (component C)). Crops of useful plants include 2,4-D-tolerant soybean. (see e.g., pages 79-80).
Regarding claim 16, Scutt teaches the monocotyledonous weeds to be controlled comprise Echinochloa (see e.g., page 81, line 6-27).
The teachings of Scutt et al. have been set forth above.
As discussed supra, Scutt teaches a genus of formula I which is used for controlling weed in crop plants and Scutt also expressly discloses the claimed compound of formula I (taught as compound P7 in Scutt as specific species of compound of formula I of Scutt). Scutt does not expressly exemplify the compound P7 in combination with the claimed herbicides B and C. However, as discussed above, Scutt generally teaches the compound of formula I (which includes compound P7) can be used in combination with the claimed additional herbicides and for the method of controlling weeds in herbicide tolerant crops. Therefore, all of 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 would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/577,406 (US20240306642A1) in view of Scutt et al. (WO 2015/197468 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and ‘406 recite a herbicidal composition comprising a herbicidally effective amount of formula I (both teach the same compound of formula I). ‘406 teaches the composition comprises component B herbicide and component C herbicides wherein Component C includes glyphosate, glufosinate, 2,4-D and dicamba. ‘406 also recites a method of controlling weeds utilizing the composition comprising the compound of formula I. ‘406 teaches all the same method steps recited in the instant claims.
The difference between the instant claims and ‘406 is that ‘406 does not teach the instantly claimed component B herbicides. However, Scutt cures this deficiency.
The teachings of Scutt discussed above are incorporated herein.
As discussed supra, Scutt also teaches an herbicidal composition comprising the instantly claimed compound of formula I and Scutt teaches the compound of formula I can be used in combination with mesotrione, acetochlor, bensulfuron-methyl, ametryn and cyclopyrimorate, which are all instantly claimed component B herbicides. Therefore, it would have been prima facie obvious to one skilled in the art to substitute the component B herbicides disclosed in ‘406 with the herbicides taught by Scutt because both Scutt and ‘406 teach the instantly claimed compound of formula I and Scutt teaches other herbicides that can be combined with it and a person with ordinary skill has good reason to pursue known options within his or her technical grasp. see MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). As a general principle 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, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/577,391 (US20240341309A1) in view of Scutt et al. (WO 2015/197468 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and ‘391 recite a herbicidal composition comprising a herbicidally effective amount of formula I (both teach the same compound of formula I). ‘391 teaches the composition comprises component B herbicide and component C herbicides wherein Component B includes 2,4-D and dicamba. ‘391 also recites a method of controlling weeds utilizing the composition comprising the compound of formula I. ‘391 teaches all the same method steps recited in the instant claims.
The difference between the instant claims and ‘391 is that ‘391 does not teach the instantly claimed component B herbicides. ‘391 also does not recite the crop plant and the type of weed. However, Scutt cures this deficiency.
The teachings of Scutt discussed above are incorporated herein.
As discussed supra, Scutt also teaches an herbicidal composition comprising the instantly claimed compound of formula I and Scutt teaches the compound of formula I can be used in combination with mesotrione, acetochlor, bensulfuron-methyl, ametryn and cyclopyrimorate, which are all instantly claimed component B herbicides. Therefore, it would have been prima facie obvious to one skilled in the art to substitute the herbicides disclosed in ‘391 with the herbicides taught by Scutt because both Scutt and ‘391 teach the instantly claimed compound of formula I and Scutt teaches other herbicides that can be combined with it and a person with ordinary skill has good reason to pursue known options within his or her technical grasp. see MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). Further, one skilled in the art would have found it prima facie obvious to use the compound of formula I for controlling weed such as Echinochloa in soy bean crop because Scutt teaches the compound of formula I can be used to treat crops such as soybean and wherein the weed type controlled is Echinochloa. As a general principle 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, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/577,361 (US20240324595A1) in view of Scutt et al. (WO 2015/197468 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and ‘361 recite a herbicidal composition comprising a herbicidally effective amount of formula I (both teach the same compound of formula I). ‘361 teaches the composition comprises component B herbicide and component C herbicides wherein Component B includes glufosinate and glyphosate. ‘361 also recites a method of controlling weeds utilizing the composition comprising the compound of formula I. ‘361 teaches all the same method steps recited in the instant claims.
The difference between the instant claims and ‘361 is that ‘361 does not teach the instantly claimed component B herbicides. However, Scutt cures this deficiency.
The teachings of Scutt discussed above are incorporated herein.
As discussed supra, Scutt also teaches an herbicidal composition comprising the instantly claimed compound of formula I and Scutt teaches the compound of formula I can be used in combination with mesotrione, acetochlor, bensulfuron-methyl, ametryn and cyclopyrimorate, which are all instantly claimed component B herbicides. Therefore, it would have been prima facie obvious to one skilled in the art to substitute the herbicides disclosed in ‘361 with the herbicides taught by Scutt because both Scutt and ‘361 teach the instantly claimed compound of formula I and Scutt teaches other herbicides that can be combined with it and a person with ordinary skill has good reason to pursue known options within his or her technical grasp. see MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). As a general principle 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, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US10662138B2 in view of Scutt et al. (WO 2015/197468 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and ‘138 recite a herbicidal composition comprising a herbicidally effective amount of formula I (both teach the same compound of formula I). ‘138 teaches the composition comprises one or more further herbicides. ‘138 recites a method of controlling grassy monocotyledonous weeds in crops of useful plants, comprising applying a compound of formula (I) or a herbicidal composition comprising such a compound, to the weeds and/or to the plants and/or to the locus thereof. The grassy monocotyledonous weeds comprise volunteer corn and/or one or more weeds selected from the genera Brachiaria, Cenchrus, Digitaria, Echinochloa, Eleusine, Eriochloa, Leptochloa, Ottochloa, Panicum, Pennisetum, Phalaris, Rottboellia, Setaria and Sorghum.
The difference between the instant claims and ‘138 is that ‘138 does not recite the instantly claimed component B and C herbicides. ‘138 also does not recite the crop plant is soybean or cotton. However, Scutt cures this deficiency.
The teachings of Scutt discussed above are incorporated herein.
As discussed supra, Scutt also teaches an herbicidal composition comprising the instantly claimed compound of formula I and Scutt teaches the compound of formula I can be used in combination with mesotrione, acetochlor, bensulfuron-methyl, ametryn and cyclopyrimorate, and glufosinate which are all instantly claimed component B and C herbicides. Therefore, it would have been prima facie obvious to one skilled in the art to substitute the herbicides disclosed in ‘138 with the herbicides taught by Scutt because both Scutt and ‘138 teach the instantly claimed compound of formula I and Scutt teaches other herbicides that can be combined with it and a person with ordinary skill has good reason to pursue known options within his or her technical grasp. see MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). Further, one skilled in the art would have found it prima facie obvious to use the compound of formula I for controlling weed such as Echinochloa in soy bean crop because Scutt teaches the compound of formula I can be used to treat crops such as soybean and wherein the weed type controlled is Echinochloa. As a general principle 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, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Conclusion
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/ALI S SAEED/ Examiner, Art Unit 1616