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.
Status of the Claims
Receipt of Remarks/Amendments filed on 4/1/2026 is acknowledged. Claims 1-14 and 16-21 are currently pending and presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
New/Maintained Claim Objection(s) / Rejection(s)
New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 19-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 19 recites the method step of harvesting the crop plants. Applicant point to the specification and specifically, Tables 1-4 and Tables B1 to B11 for support. However, nowhere in the specification is there support for the method step of harvesting the crop plants. While harvesting the crop plants after they’ve grown may be obvious, a description which renders the claim invention obvious does not satisfy the written description requirement (p 1172, Ariad v. Eli Lilly, 598 F3d 1336, 94 USPQ2d 1161, citing Lockwood v. Am. Airlines). MPEP 2163. As such, the recitation “harvesting the crop plants” in claim 19 present new matter issues.
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 1-7, 9-14 and 16-18 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.
PNG
media_image1.png
232
350
media_image1.png
Greyscale
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.
PNG
media_image2.png
228
340
media_image2.png
Greyscale
PNG
media_image3.png
146
186
media_image3.png
Greyscale
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 chlorimuron-ethyl. (e.g., page 88, line 19-21).
Regarding claim 7, Scutt teaches the compound of formula I can be used in combination with atrazine. (e.g., page 87, line 33-34).
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 13-14, 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).
Regarding claims 17-18, Scutt teaches the weight ratio of the compound of formula (I) to each further herbicide is especially from 30:1 to 1:30 (see e.g. page 106, line 5-14), which overlaps the claimed weight ratio.
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).
Regarding the weight ratio recited in claims 17-18, as discussed supra, Scutt teaches the weight ratio of the compound of formula (I) to each further herbicide is especially from 30:1 to 1:30, which almost entirely overlaps the claimed weight ratio. It would have been obvious to one skilled in the art to manipulate/optimize the amounts and ratio of the herbicide and select an amount which would provide an optimal herbicidal activity. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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.
Claims 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Scutt et al. (WO 2015/197468 A1) as applied to claims 1-7, 9-14 and 16-18 above and further in view of Staton (Michigan State University, September 5, 2019, https://www.canr.msu.edu/news/harvesting-soybeans-for-forage).
The teachings of Scutt have been set forth above.
Regarding claim 19, as discussed supra, Scutt teaches a method of controlling 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, Scutt teaches the method of applying at a locus comprising crop plants and weeds a weed controlling amount of an herbicidal composition and allowing the crop plants to grow. (see e.g., Abstract; claims; page 65, line 5-15; page 84, line 20-25).
Regarding claim 20-21, as discussed supra, 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).
Scutt does not expressly teach the method step of harvesting the crop plants. However, Staton cures this deficiency.
Staton teaches harvesting soybeans for forage. The feed value of properly harvested and handled soybean forage can be approximately equivalent to alfalfa. (see entire document).
It would have been prima facie obvious for one of ordinary skill in the art to combine the teachings of Scutt and Staton and harvest the crop plant, specifically soybean crops taught by Scutt based on the teachings of Staton. As discussed supra, Scutt teaches a method of controlling weeds, in crops of useful plants. 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. Scutt also discloses that certain compounds of formula (I) according to the present invention are particularly efficacious against grassy (e.g. warm-climate grassy) monocotyledonous weeds and appear to be selective for grassy (e.g. warm-climate grassy) monocotyledonous weed control in crops of soybean (see e.g. page 79, line 25-30). Scutt teaches crop as useful plants, which can be cultivated and the composition comprising the herbicidal compounds are selective herbicide for weed control in crops such as soybean. Thus, it would have been obvious to one skilled in the art to harvest the crop plant (e.g. soybean) which have been growing/grown for its use because Scutt teaches crops as useful plants and is directed to controlling weed plants and allowing the crop plant to grow. Staton teaches harvesting soybeans for forage and that the feed value of properly harvested and handled soybean forage can be approximately equivalent to alfalfa. Thus, harvesting of the crop plant and specifically soybean would have been prima facie obvious to one skilled in the art.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Scutt et al. (WO 2015/197468 A1) as applied to claims 1-7, 9-14 and 16-18 above and further in view of Deprez et al. (US 10,654,840 B2; May 19, 2020).
The teachings of Scutt have been set forth above.
Scutt does not teach wherein the further comprising herbicide (claimed component B) includes rimisoxafen. However, Deprez et al. cures this deficiency.
Deprez throughout the reference teaches pyrimidinyloxy benzene derivatives (compound of formula I) as herbicides and methods for controlling undesired vegetation by contacting the undesired vegetation or its environment with an effective amount of the compound (e.g., abstract). Compounds of the invention are particularly useful for selective control of weeds in crops such as wheat, barley, maize, soybean, sunflower, cotton, oilseed rape and rice (e.g. col 33, line 29-39). Deprez teaches the compound of formula I used as herbicide comprises 5-chloro-2-[2-[3-(difluoromethyl)-5-isoxazolyl]-3-chlorophenoxy]pyrimidine, which is rimisoxafen. (e.g. claim 9 and 15; col. 190). Deprez also teaches the herbicidal compound can be used as mixture with additional herbicides. (e.g. claim 19, col. 33; see entire document).
It would have been prima facie obvious for one of ordinary skill in the art to combine the teachings of Scutt and Deprez and combine the herbicide compound, rimisoxafen, taught by Deprez with the herbicide compound of formula I taught by Scutt. As discussed supra, both Scutt and Deprez teach these compounds are used for controlling undesired vegetation, such as weed, in useful crop plants and that these compounds are particularly useful for selective control of weeds in crops such as soybean. Thus, one skilled in the art would have found it obvious to combine rimisoxafen with the compound of formula I taught by Scutt because both are taught to be useful for controlling undesired vegetation in crops such as soybean. 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.
Response to Arguments
Applicant argued that Scutt does not render obvious the claimed herbicidal composition comprising herbicidally effective amount of a compound of formula I and at least one herbicide of component B. It was argued that the examiner has not considered the unexpected results described in the specification (Tables B1 to B11), which provides experimental data for compositions including components A and B, demonstrating synergisms in the herbicidal control of weed species.
In response, firstly the examiner respectfully draws applicant’s attention to the modified and new 103 rejections above, necessitated by claim amendments, which render obvious the claims as amended.
With respect to applicant’s arguments of unexpected effect, firstly the examiner argues that the data/evidence presented in the specification does not appear to be commensurate in scope with the claims. The data presented in the specification shows results only for the compound of formula Ic, however, the claim is broad because it also encompasses compound of formula Ia (where G is hydrogen) and it is unclear if synergism will also occur when compound of formula Ia is used instead of Ic. Further, the claims are broad in that the independent claims do not recite any amount of the compound of formula I and component B. The data present in the specification uses specific and narrow amounts of compound of formula I and each of component B herbicides. For example, Table B1 shows compound of formula Ic used in the amount of 0.47 and 0.94 grams and bicyclopyrone used in the amount of 0.94 and 1.88 grams. It is unclear if synergistic effect can occur over any amount or broader amounts as encompassed by the claims because the data presented shows results only for a specific amount of formula Ic and component B herbicides. In each of Tables B1 to B11, a different component B herbicide is used and in all of these results, specific and narrow amounts are utilized and it is unclear if synergism would occur over amounts which are different than what is used in these results provided in the specification. “[t]he evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains.” Jn re Dill, 604 F.2d 1356, 1361 (CCPA 1979. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
Further, while instant claims 17 and 18 recite a specific ratio of component A to component B, the data presented in the instant specification is not sufficient to show the criticality of the ratios recited in the claims. Claims 17 and 18 are also broad in that they recite any of the component and A and any of the component B having the recited ratio. As discussed supra, in each of Tables B1 to B11, a different component B herbicide is used in combination with compound of formula Ic and in all of these results, specific and narrow amounts are utilized. 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). Note: MPEP 716.02(d). The evidence provided does not show any comparative examples outside of the claimed ratio. As such, the evidence provided by the applicant does not appear to be commensurate in scope with the claims and the argument of unexpected effect is not persuasive at this time.
Furthermore, as discussed supra, Scutt teaches combination of compound of formula I and claimed component B (e.g. mesotrione). While Scutt doesn’t expressly teach the mixture includes specifically the claimed compound (component A), Scutt teaches compound P7 (which is the same as the claimed compound Ic) as one of the compound of formula I and this provides a strong motivation to one skilled in the art to use compound P7 in the mixture of herbicides. Evidence pertaining to secondary considerations must be taken into account whenever it has been properly presented; however, it does not necessarily control the obviousness conclusion. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372, 82 USPQ2d 1321, 1339 (Fed. Cir. 2007) ("the record establish[ed] such a strong case of obviousness" that allegedly unexpectedly superior results were ultimately insufficient to overcome obviousness conclusion); Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157, 1162, 82 USPQ2d 1687, 1692 (Fed. Cir. 2007) ("given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion" of obviousness); and Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988). Office personnel should not evaluate rebuttal evidence for its "knockdown" value against the prima facie case, Piasecki, 745 F.2d at 1473, 223 USPQ at 788, or summarily dismiss it as not compelling or insufficient. Office personnel should weigh all relevant evidence of record in order to determine whether the claims would have been obvious based on a preponderance (more likely than not) standard, and then explain their conclusions. See MPEP2145 and MPEP 716. With a strong case of obviousness provided in the Scutt reference to use the claimed compound Ic in combination with the component B herbicide and in view of the evidence presented by the applicant in the specification, applicant’s arguments regarding unexpected results is not persuasive at this time.
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 1-14 and 16-21 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), Deprez et al. (US 10,654,840 B2; May 19, 2020) and Staton (Michigan State University, September 5, 2019, https://www.canr.msu.edu/news/harvesting-soybeans-for-forage).
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, the weight ratios and the step of harvesting the crops. However, Scutt, Deprez and Staton cure these deficiencies.
The teachings of Scutt, Deprez and Staton 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, chlorimuron-ethyl and atrazine, 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 discussed supra, Deprez also teaches rimisoxafen, which can be used with additional herbicides, is used for selective controlling of weeds/unwanted vegetations in useful crops. 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.
Regarding the weight ratio recited in claims 17-18, as discussed supra, Scutt teaches the weight ratio of the compound of formula (I) to each further herbicide is especially from 30:1 to 1:30, which almost entirely overlaps the claimed weight ratio. It would have been obvious to one skilled in the art to manipulate/optimize the amounts and ratio of the herbicide and select an amount which would provide an optimal herbicidal activity. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Further, as discusses supra, Staton teaches harvesting soybeans for forage and that the feed value of properly harvested and handled soybean forage can be approximately equivalent to alfalfa. Thus, harvesting of the crop plant such as soybean crops would also have been prima facie obvious to one skilled in the art.
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 1-14 and 16-21 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), Deprez et al. (US 10,654,840 B2; May 19, 2020) and Staton (Michigan State University, September 5, 2019, https://www.canr.msu.edu/news/harvesting-soybeans-for-forage).
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, the weight ratios and the step of harvesting the crops. ‘391 also does not recite the crop plant and the type of weed. However, Scutt, Deprez and Staton cure these deficiencies.
The teachings of Scutt, Deprez and Staton 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, chlorimuron-ethyl and atrazine, 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 discussed supra, Deprez also teaches rimisoxafen, which can be used with additional herbicides, is used for selective controlling of weeds/unwanted vegetations in useful crops. 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.
Regarding the weight ratio recited in claims 17-18, as discussed supra, Scutt teaches the weight ratio of the compound of formula (I) to each further herbicide is especially from 30:1 to 1:30, which almost entirely overlaps the claimed weight ratio. It would have been obvious to one skilled in the art to manipulate/optimize the amounts and ratio of the herbicide and select an amount which would provide an optimal herbicidal activity. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Further, as discusses supra, Staton teaches harvesting soybeans for forage and that the feed value of properly harvested and handled soybean forage can be approximately equivalent to alfalfa. Thus, harvesting of the crop plant such as soybean crops would also have been prima facie obvious to one skilled in the art.
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 1-14 and 16-21 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), Deprez et al. (US 10,654,840 B2; May 19, 2020) and Staton (Michigan State University, September 5, 2019, https://www.canr.msu.edu/news/harvesting-soybeans-for-forage).
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, the weight ratios and the step of harvesting the crops. However, Scutt, Deprez and Staton cure these deficiencies.
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, chlorimuron-ethyl and atrazine, 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 discussed supra, Deprez also teaches rimisoxafen, which can be used with additional herbicides, is used for selective controlling of weeds/unwanted vegetations in useful crops. 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.
Regarding the weight ratio recited in claims 17-18, as discussed supra, Scutt teaches the weight ratio of the compound of formula (I) to each further herbicide is especially from 30:1 to 1:30, which almost entirely overlaps the claimed weight ratio. It would have been obvious to one skilled in the art to manipulate/optimize the amounts and ratio of the herbicide and select an amount which would provide an optimal herbicidal activity. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Further, as discusses supra, Staton teaches harvesting soybeans for forage and that the feed value of properly harvested and handled soybean forage can be approximately equivalent to alfalfa. Thus, harvesting of the crop plant such as soybean crops would also have been prima facie obvious to one skilled in the art.
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 1-14 and 16-21 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), Deprez et al. (US 10,654,840 B2; May 19, 2020) and Staton (Michigan State University, September 5, 2019, https://www.canr.msu.edu/news/harvesting-soybeans-for-forage).
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, the weight ratios and the step of harvesting the crops. ‘138 also does not recite the crop plant is soybean or cotton. However, Scutt, Deprez and Staton cure these deficiencies.
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, chlorimuron-ethyl and atrazine, 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 discussed supra, Deprez also teaches rimisoxafen, which can be used with additional herbicides, is used for selective controlling of weeds/unwanted vegetations in useful crops. 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.
Regarding the weight ratio recited in claims 17-18, as discussed supra, Scutt teaches the weight ratio of the compound of formula (I) to each further herbicide is especially from 30:1 to 1:30, which almost entirely overlaps the claimed weight ratio. It would have been obvious to one skilled in the art to manipulate/optimize the amounts and ratio of the herbicide and select an amount which would provide an optimal herbicidal activity. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Further, as discusses supra, Staton teaches harvesting soybeans for forage and that the feed value of properly harvested and handled soybean forage can be approximately equivalent to alfalfa. Thus, harvesting of the crop plant such as soybean crops would also have been prima facie obvious to one skilled in the art.
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.
Response to Arguments
Applicant appear to argue that while component (A) may be 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.
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
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 ALI SAEED whose telephone number is (571)272-2371. The examiner can normally be reached M-F 8-5 EST.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SUE X LIU can be reached at 5712725539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/ALI S SAEED/ Examiner, Art Unit 1616
Prosecution Insights