DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Receipt and consideration of Applicant’s amended claim set and Applicant’s arguments/remarks submitted on March 2, 2026 are acknowledged.
All rejections/objections not explicitly maintained in the instant office action have been withdrawn per Applicant’s claim amendments and/or persuasive arguments. Applicant’s claim amendments have necessitated new grounds of rejections set forth below.
Status of the Claims
Claims 1-3, 14, 15, 18, 21, 22, 33-36, 41, 44, 45, 48, 49, and 52-55 are pending and under consideration in this action. Claims 4-13, 16, 17, 19, 20, 23-32, 37-40, 42, 43, 46, 47, 50, and 51 are cancelled.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemla et al. (Chemla) (WO 99/32464 A1; published Jul. 1, 1999).
With regards to Claims 1 and 2, Chemla discloses compounds of formula (I) and processes for protecting and immunizing plants against attack by phytopathogenic microorganisms by applying compounds of formula (I) as active ingredient to plants, to parts of the plant, and/or to the locus of the plants (abstract; p.1, para.1; p.3, para.2; p.5; Chemla claims 1-8 and 10).
Among the preferred compounds of formula (I) include compounds of formula I.A in group 14, which include compounds as follows (p.10):
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Compound I.A reads on the structure show in the instant claim 1 when:
Z is CO-A
A is OR6
R6 is H or C1-alkyl
R1 is H or halogen
R2 H
R3 is H
R4 is Cl
Also among the preferred compounds of formula (I) include Compound No. 1.2, which has the following structure (p.30, Table 1):
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R1 is H
R2 is H
A is OMe
Chemla’s Compound No. 1.2 reads on compounds of claims 1 and 2 wherein Z is the 4th structure and n is 0
Chemla also discloses compositions for protecting and immunizing plants against attack by microorganisms, comprising a compound of formula (I) together with a suitable carrier (Chemla claim 10; p.18, para.4).
With regards to the preamble of the instant claims, a recitation of the intended use of the claimed invention, an herbicidal composition in the instant application, must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02. In the present case, Chemla’s compounds discussed above, are structurally the same as the structure recited in the instant claims 1 and 2, and Chemla’s compounds are in a composition with a carrier. There does not appear to be any required component of Chemla that would preclude Chemla’s composition from being used as an herbicide. Chemla also discloses their composition for agricultural use, being suitable for application to plants and locus of plants. Thus, absent evidence to the contrary, the prior art structure is capable of performing the intended use, and thus meets the claim.
With regards to Claims 14 and 15, the compounds of formula (I) are generally used in the form of compositions and can be applied to the crop area or plant to be treated, simultaneously or in succession, with further compounds. These further compounds can be, for example, herbicides, insecticides, fungicides, or preparations that influence plant growth (p.18, par.4).
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, 2, 14, 15, 21, 33, 34, 44, 49, and 52-55 are rejected under 35 U.S.C. 103 as being unpatentable over Chemla et al. (Chemla) (WO 99/32464 A1; published Jul. 1, 1999).
The teachings of Chemla as they apply to Claims 1, 2, 14, and 15 are set forth above and incorporated herein. Additional relevant teachings of Chemla are set forth herein below.
With regards to Claims 21, 44, and 52-55, the instant Specification discloses that in general, an herbicidally effective amount of compounds of this invention is about 0.001 to 20 kg/ha with a preferred range of about 0.001 to 1 kg/ha (p.79, ln.7-15). Although Chemla does not appear to explicitly disclose methods of controlling (undesired) plant growth, Chemla discloses that advantageous rates of application of their compounds are normally from 5 g to 2 kg of active ingredient (i.e., their compounds) per hectare, preferably from 10 g to 1 kg/ha (p.19, para.2). Chemla also discloses that their compounds are applied to the leaves (foliar application) (p.19, para.1). Chemla further disclose that the compounds can also penetrate the plant through the roots via the soil (systemic action) if the locus of the plant is impregnated with a liquid formulation or if the substances are introduced in solid form into the soil, e.g., in the form of granules (soil application) (p.19, para.1). Furthermore, as discussed above, Chemla discloses that selective herbicides may be applied with the compounds (p.18, para.4), thus indicating that compositions are applied to the location of undesired plant growth.
Although Chemla does not appear to explicitly disclose a method of controlling (undesired) plant growth or controlling amino acid content in a plant or a plant part thereof, because Chemla discloses performing the same application step to the claimed loci (foliar or to the locus of undesired plant growth) with compounds encompassed by the instant claims in amounts that overlap and are within the range the instant Specification indicates are considered “herbicidally effective amounts,” absent evidence to the contrary, performing the methods as disclosed by Chemla, will absent evidence to the contrary, also result in the control of (undesired) plant growth and controlling amino acid content in a plant or plant part thereof as recited in the preamble to instant claims 52-55. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 [R-5].
With regards to Claims 33, 34, and 49, the compounds of formula (I) are generally used in the form of compositions and can be applied to the crop area or plant to be treated, simultaneously or in succession, with further compounds. These further compounds can be, for example, herbicides, insecticides, fungicides, or preparations that influence plant growth, or mixtures of several of these preparations (p.18, par.4).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Claims 18, 35, 36, 41, and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Chemla et al. (Chemla) (WO 99/32464 A1; published Jul. 1, 1999) as applied to Claims 1, 2, 14, 15, 21, 33, 34, 44, 49, and 52-55, further in view of Winter et al. (Winter) (US 2021/0022345 A1; published Jan. 28, 2021).
The teachings of Chemla as they apply to Claims 1, 2, 14, 15, 21, 33, 34, 44, 49, and 52-55 are set forth above and incorporated herein. Additional relevant teachings of Chemla are set forth herein below.
Chemla further discloses that target crops to be protected within the scope of their invention include cotton (p.18, para.3).
Chemla does not appear to explicitly disclose the application of the specific herbicide or plant growth regulator as recited in Claims 18, 35, 36, 41, and 48. Winter is relied upon for this disclosure. The teachings of Winter are set forth herein below.
Winter discloses herbicidal mixtures for controlling undesirable vegetation in conventional and tolerant (e.g., glufosinate-tolerant) cotton (abstract). The herbicidal mixture comprises L-glufosinate and at least one herbicidal compound II. Among the suitable herbicidal compound II include 2,4-D and imazapyr (abstract; para.0019; Winter claim 1).
With regards to Claims 18, 35, 36, 45, 48, as discussed above, Chemla discloses that their compositions may be used for protecting cotton crops, and their compositions may further include herbicides. In light of Winter’s disclosure that herbicidal mixtures of L-glufosinate and imazapyr are known to control undesirable vegetation in conventional and tolerant cotton, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Chemla and Winter, and incorporate Winter’s herbicidal mixture of L-glufosinate and imazapyr in Chemla’s composition. One of ordinary skill in the art would have been motivated to do so in order to obtain the advantage of widening the scope of pests controlled to include conventional and tolerant weeds of cotton crop. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Chemla discloses that herbicides may be used with their compounds, and among the target crops to be protected include cotton, and Winter discloses herbicides known to be used to control undesirable vegetation in cotton.
With regards to Claims 18, 41, 48, as discussed above, Chemla discloses that their compositions may be used for protecting cotton crops, and their compositions may further include herbicides. In light of Winter’s disclosure that herbicidal mixtures of L-glufosinate and 2,4-D are known to control undesirable vegetation in conventional and tolerant cotton, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Chemla and Winter, and incorporate Winter’s herbicidal mixture of L-glufosinate and 2,4-D in Chemla’s composition. One of ordinary skill in the art would have been motivated to do so in order to obtain the advantage of widening the scope of pests controlled to include conventional and tolerant weeds of cotton crop. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Chemla discloses that herbicides may be used with their compounds, and among the target crops to be protected include cotton, and Winter discloses herbicides known to be used to control undesirable vegetation in cotton.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered. In light of Applicant’s claim amendments, new rejections citing new prior art references are set forth above to address the newly amended claim scope.
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 1-3, 14, 15, 18, 21, 22, 33-36, 41, 44, 45, 48, 49, and 52-55 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10-15, 19-23, 25, 26, and 28-30 of copending Application No. 18/876,582 (Copending 582).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compounds having the structure claimed in the instant claim 1. Boths sets of claims also claim such compounds being in a composition with an agriculturally acceptable carrier, and using the compositions in methods of controlling undesired plants by application to a locus of the undesired plant an herbicidally effective amount of the compounds. Both sets of claims also claim the use of the compounds and compositions containing such compounds in combination with at least one crop protection agent, such as herbicides.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-3, 14, 15, 18, 21, 22, 33-36, 41, 44, 45, 48, 49, and 52-55 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONICA A SHIN/Primary Examiner, Art Unit 1616
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