DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claim 12, and the species exemplified in Compound A 1.68 in the reply filed on 5/20/2026 is acknowledged. Claims 3-11 have been amended to conform to U.S. practice in the amendments to the claims filed 5/20/2026 and have been grouped with the elected claim 12. Election was made without traverse in the reply filed on 5/20/2026.
Status of the Claims
Claims 3-12 are pending and under current examination. Claims 1, 2, and 13-20 are cancelled.
Claim Objections
Claim 3-12 are objected to because of the following informalities:
The independent claim 12 lacks the article “A” and the dependent claims lack the article “The” at the beginning of each claim. See MPEP 608.01(n)(IV).
Claim 3 is objected to for not ending in a period and for incorporating limitations into a table, where a table is not necessary. MPEP 608.01(m) states: “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995).” MPEP 2173.05(s) states in part: Where possible, claims are to be complete in themselves. Tables (either alone or incorporated by reference) are “permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.” In the instant case, the Examiner suggests amending the claims with wherein clauses reciting the possible species of X3, X5, R3, Z, and G.
Claim 5 line 4 recites “dimethanamid”. This is a clear typographical error and should be amended to read “dimethenamid”.
Claim 12 recites the limitation “method for spot-treatment application against weeds on an agricultural field characterized by spot spraying-application of”. The phrase “characterized by spot spraying-application of” is in the passive voice and would be improved if amended to utilize verbs in the active tense.
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.
Claims 3-12 are 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.
Claims 4, 6, and 12 recite the limitations “useful in the treatment of an agricultural field” or “useful for treating the plurality of crop plants”. The term “useful” is a relative term which renders the claim indefinite. The term “useful” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The instant specification states that type C active ingredients can be, for instance, insecticides, acaricides, fungicides, safeners, fertilizers and/or growth regulators or nutrients useful for treating the plurality of crop plants [0053] and provides some exemplary type B herbicides useful to be combined with the inventive compounds [0054], but does not provide a definitive scope as to what qualifies a compound as “useful” in either category. With no guidance provided in the claim or specification as to what may qualify a compound as “useful”, it is impossible to discern the metes and bounds of the claims.
Claim 5 is unclear. The claim recites “SYN-523 such as [[3-[2-Chlor-5[3,6-dihydro-3-methyl-2,6-dioxo-4-(trifluormethyl)-1(2H)-pyrimidinyl]-4-fluorphenoxy]-2-pyridinyl]oxy]-acetic acid ethylester”. The species following the phrase “such as” renders the claim indefinite because it is unclear whether the exemplary species is part of the claimed invention. See MPEP 2173.05(d). The Examiner suggests deleting “SYN-523” or “[[3-[2-Chlor-5[3,6-dihydro-3-methyl-2,6-dioxo-4-(trifluormethyl)-1(2H)-pyrimidinyl]-4-fluorphenoxy]-2-pyridinyl]oxy]-acetic acid ethylester” to obviate the rejection.
Claim 10 recites the limitation “the foliar part of the plurality of crop plants”. There is insufficient antecedent basis for this limitation in the claims. This may be obviated by amending the claim to read “a foliar part of the plurality of crop plants”.
Claim 11 recites the limitation “formula (I) or a salt thereof”. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation “X3, X5, R3 and G are as described above”. There is insufficient antecedent basis for this limitation in the claim. This may be remedied by amending claim 12 to describe the species X3, X5, R3 and G.
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Claim 12 recites the limitation “wherein Z-4a mean the mixture of both structures Z-4b and Z-4c;
This renders the claim indefinite because it is not clear if the connection point indicated in structure Z-4b (indicated here by a red arrow) is directly attached to the tetrahydrofuran group or the alpha carbon as indicated in structure Z-4a.
Regarding claims 3 and 6-9, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3-11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 3-11 are dependent from claim 12 (i.e., claim 12 is not a claim previously set forth). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 7 recites the limitation “spot treatment application… before or after emergence of the weeds”. The independent claim 12 recites a method for spot-treatment application against weeds but does not specify a timepoint (i.e. before or after emergence of the weeds). Because the limitation “before or after emergence of the weeds” recited by claim 7 could encompass any point in time, the limitations of claim 7 do not further limit the subject matter of claim 12.
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 3-7 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Peters (WO2018/228985, publication year: 2018, cited in the IDS filed 1/18/2024; citations refer to U.S. Patent Application No. 2021/0292312 used only as an English translation).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
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Regarding claims 3-4 and 12, Peters teaches compounds of the general formula (I) [0016]:
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In exemplary compound I-10, X2, X4, X6, R1, and R2 are hydrogen, Y and W are oxygen, X3 and X5 are fluorine, and R3 is (S)-vinyl. Z is Z-1 of 2,4-cis configuration, 2 diastereomers (Table 1). Z-1 has the structure [0128]:
The compounds may be used in a method for controlling unwanted plants or for regulating the growth of plants, preferably in plant crops, in which one or more compounds of the invention are applied to the plants (for example harmful plants such as monocotyledonous or dicotyledonous weeds or unwanted crop plants), the seed or the area on which the plants grow. The compounds can be deployed prior to sowing, prior to emergence or after emergence [0161]. The compounds may be used in combination with other active compounds such as insecticides, acaricides, herbicides, fungicides, safeners, fertilizers, and/or growth regulators [0190]. The instant specification defines “spot-treatment against weeds” to refer to a selected treatment for a locus where weeds are growing or a locus (soil) where weeds may grow and may compete with the crop for resources ([0019] of the instant specification), therefore the Examiner considers the method of Peters to read on the limitations of the instant claim.
Regarding claim 5, Peters teaches that the compounds may be used in combination with herbicides such as diflufenican, glufosinate, glyphosate, paraquat, diquat, oxadiazon, pyraflufen, pyraflufen-ethyl, flufenacet, indaziflam, pyroxasulfone, rimsulfuron, acetochlor, dimethenamid, pethoxamid, isoxaben, flurochloridone, flurtamone, fluometuron, safluenacil, oxyfluorfen, SYN-523, phenmedipham, dicamba, 2,4-D, tembotrione, and mesotrione [0193].
Regarding claim 6, Peters teaches that the compounds may be used in combination with other active compounds such as insecticides, acaricides, herbicides, fungicides, safeners, fertilizers, and/or growth regulators [0190].
Regarding claim 7, Peters teaches that the compounds can be deployed prior to sowing, prior to emergence or after emergence [0161].
Regarding claim 10, Peters teaches that the compounds may be used in a method for controlling unwanted plants or for regulating the growth of plants, preferably in plant crops, in which one or more compounds of the invention are applied to the plants (for example harmful plants such as monocotyledonous or dicotyledonous weeds or unwanted crop plants), the seed or the area on which the plants grow. The compounds can be deployed prior to sowing, prior to emergence or after emergence [0161]. The treatment of the plants and plant parts with the active compounds or compositions is carried out directly or by action on their surroundings, habitat or storage space using customary treatment methods [0401]. The Examiner considers the phrases “one or more compounds of the invention are applied to the plants (for example harmful plants such as monocotyledonous or dicotyledonous weeds or unwanted crop plants)” and “the treatment of the plants….is carried out directly” to read on the “application ….to the foliar part of the plurality of crop plants on the agricultural field is avoided” limitation of the instant claim.
Regarding claim 11, Peters teaches that the compound I-10 may be applied at an application rate of 0.08kg of active substance or less per hectare [0751]. This is equivalent to 80g of active substance per hectare.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 3-4 and 12, Peters does not teach a single embodiment or example meeting all limitation of the invention of claims 3 and 12.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 3 and 12, within the broader scope of Peters all of the limitations of the invention of claims 3 and 12 are met. It would have been prima facie obvious for one having ordinary skill in the art to choose the limitations in the instant claims from those disclosed by Peters and arrive at this conclusion because such was contemplated by Peters.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Peters (WO2018/228985, publication year: 2018, cited in the IDS filed 1/18/2024; citations refer to U.S. Patent Application No. 2021/0292312 used only as an English translation), as applied to claims 3-7 and 10-12 above, and further in view of Summer et. al. (University of Georgia Extension, publication year: 2017).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Peters teaches the relevant limitations of claim 12 as described in the obviousness rejection above. Peters also teaches that the treatment may be carried out directly or by action on the surroundings, habitat or storage space of the plant and plant parts using customary treatment methods, for example by dipping, spraying, atomizing, irrigating, evaporating, dusting, fogging, broadcasting, foaming, painting, spreading-on, watering (drenching), and drip irrigating [0401].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Peters does not teach the use of hooded sprayer equipment or a drift-reduction nozzle. However, this deficiency is cured by Summer.
Summer teaches that precision applications of herbicides that maximize spray coverage of weeds and minimizing spray contact with cotton, which can cause injury, is critical. Spray fender/cultivator and shield/hood sprayers are commonly used for precision, directed spray applications (pg. 1 Introduction). Appropriate spray nozzle tips include off-center or flat-fan tips (extended-range, air injected, anti-drift, lo-drift, etc.) (pg. 1 Equipment).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art of filing to utilize a hooded sprayer equipment or a drift-reduction nozzle to apply the herbicide composition of Peters. One would have understood in view of Peters that the herbicide composition may be applied to weeds pre- or post-emergence using customary treatment methods and in view of Summers that shield/hood sprayers and anti-drift or lo-drift nozzles may be utilized to apply herbicide to weeds growing amongst cotton crops while avoiding injury to the crop plant. One of ordinary skill in the art would have been capable of applying this known technique (shield/hood sprayers and anti-drift or lo-drift nozzles) to a known product (the herbicide composition of Peters) that was ready for improvement and the results (application of the herbicide only to weeds pre- or post-emergence) would have been predictable to one of ordinary skill in the art. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Peters teaches that the compounds may be used in a method for controlling unwanted plants or for regulating the growth of plants, preferably in plant crops, in which one or more compounds of the invention are applied to the plants (for example harmful plants such as monocotyledonous or dicotyledonous weeds or unwanted crop plants), the seed or the area on which the plants grow. The compounds can be deployed prior to sowing, prior to emergence or after emergence [0161]. See MPEP 2143 (I)(D).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Peters (WO2018/228985, publication year: 2018, cited in the IDS filed 1/18/2024; citations refer to U.S. Patent Application No. 2021/0292312 used only as an English translation), as applied to claims 3-7 and 10-12 above, and further in view of Adamchuk et. al. (University of Nebraska Lincoln Extension, publication year: 2008).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Peters teaches the relevant limitations of claim 12 as described in the obviousness rejection above. Peters also teaches that the treatment may be carried out directly or by action on the surroundings, habitat or storage space of the plant and plant parts using customary treatment methods, for example by dipping, spraying, atomizing, irrigating, evaporating, dusting, fogging, broadcasting, foaming, painting, spreading-on, watering (drenching), and drip irrigating [0401].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Peters does not teach that the spot-treatment is performed with a precision farming vehicle. However, this deficiency is cured by Adamchuk.
Adamchuk teaches that weeds in an agricultural field can be controlled by using a predetermined field map which identifies the species and location of weeds (strategic approach). The strategic approach requires a separate operation, but gives the grower a better estimate of the amount and type of chemical needed for a specific weed problem (pg. 2, Principles of Site-Specific Weed Management). Adopting satellite-based auto-guidance (also called auto-steer) technology and using automatic boom section control can substantially reduce herbicide misapplications without requiring the operator to turn boom sections on or off. Auto-guidance allows more accurate control of the distance between two adjacent passes, significantly reducing steering-caused skips and overlaps and does not require conventional markers (pg. 2, Applying Precision Agriculture to Weed Management). Adamchuk also teaches that it is simple to make site-specific post-emergence burndown herbicide applications to winter or summer fallow fields using current technologies such as CropCircle, WeedSeeker, GreenSeeker, or N-Sensor. These close proximity optical sensors use near-infrared light reflextance measurements to distinguish green vegetation from bare soil and crop residue. These data can then be used to turn the sprayer on only when weeds or volunteer crops are present. Herbicide cost savings are realized from not spraying areas that lack weeds (pg. 2, Applying Precision Agriculture to Weed Management). The instant specification defines “precision farming vehicle” to refer to a tractor with a mounted sprayer, a tractor connected to a tractor pull-type sprayer, UAVs and/or UGVs which can apply the inventive compounds according to a weed map or sense and control weeds by spot treatment independent of substantial human intervention [0042 of the instant specification]; therefore, the Examiner considers the teachings of Adamchuk to read on the “precision farming vehicle” limitation of the instant claim 9.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art of filing to utilize a precision farming vehicle to apply the herbicide composition of Peters. One would have understood in view of Peters that the herbicide composition may be applied to weeds pre- or post-emergence using customary treatment methods and in view of Adamchuk that precision farming techniques may be used to apply herbicide only to weeds in order to give a better estimate of the amount and type of chemical needed for a specific weed population and to realize herbicide cost savings. One of ordinary skill in the art would have been capable of applying this known technique (precision farming application of herbicides) to a known product (the herbicide composition of Peters) that was ready for improvement and the results (application of the herbicide only to weeds pre- or post-emergence) would have been predictable to one of ordinary skill in the art. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Peters teaches that the compounds may be used in a method for controlling unwanted plants or for regulating the growth of plants, preferably in plant crops, in which one or more compounds of the invention are applied to the plants (for example harmful plants such as monocotyledonous or dicotyledonous weeds or unwanted crop plants), the seed or the area on which the plants grow. The compounds can be deployed prior to sowing, prior to emergence or after emergence [0161]. See MPEP 2143 (I)(D).
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 3-7 and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,597,724.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘724 patent embrace a method of controlling one or more unwanted plants comprising applying an effective amount of at least one compound of formula (I) to the unwanted plants or to a site of the unwanted plants. The compound of formula (I)
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comprises:
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wherein R1 and R2 may be hydrogen, R3 may be a C2-C4 alkenyl, R4 may be a C1-C12 alkyl substituted by a hydroxy radical, Y and W may be oxygen, X2, X4 and X6 may be hydrogen, and X3 and X5 may be fluorine. Z may be represented by the structure Z-1:
The specification of the ‘724 patent teaches that if one or more asymmetrically substituted carbon atoms are present, enantiomers and diastereomers may occur (col. 5 lines 61-63). The Examiner therefore considers the structure embraced by the claims of the ‘724 patent to read on the formula of the instant claims.
The claims of the ‘724 patent also embrace an herbicidal composition comprising the claimed compounds and a formulation auxiliary such as insecticides, acaricides, herbicides, fungicides, safeners, and/or growth regulators. The specification of the ‘724 patent teaches that the herbicide may be diflufenican, glufosinate, glyphosate, paraquat, diquat, oxadiazon, pyraflufen, pyraflufen-ethyl, flufenacet, indaziflam, pyroxasulfone, rimsulfuron, acetochlor, dimethenamid, pethoxamid, isoxaben, flurochloridone, flurtamone, fluometuron, safluenacil, oxyfluorfen, SYN-523, phenmedipham, dicamba, 2,4-D, tembotrione, and mesotrione (col. 29 line 5-col. 31 line 5).
The Examiner has relied upon the specification to delineate the scope of the invention embraced by the claims of the ‘724 patent, consistent with the decision in Sun Pharmaceutical Industries Ltd. v. Eli Lilly and Co. U.S. Court of Appeals Federal Circuit, 95 USPQ2d 1797.
The instant specification defines “spot-treatment against weeds” to refer to a selected treatment for a locus where weeks are growing or a locus (soil) where weeds may grow and may compete with the crop for resources ([0019] of the instant specification), therefore the Examiner considers the method of the claims of the ‘724 patent to read on the limitations of the instant claims.
The claims of the ‘724 patent do not embrace an application rate of the herbicidal composition. The application rate of the herbicidal composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal application rate in order to best achieve the desired results as such would provide advantageous herbicidal effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, the claims of the ‘724 patent embrace an herbicidal composition capable of controlling one or more unwanted plants. The Examiner considers it prima facie obvious to optimize the application rate of an herbicidal composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the application rate of the herbicidal composition embraced by the claims of the ‘724 patent would have a direct effect on the herbicidal effect of the composition and therefore be an optimizable variable.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,597,724, as applied to claims 3-7 and 10-12 above, and further in view of Summer et. al. (University of Georgia Extension, publication year: 2017).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘724 patent embrace the relevant limitations as described above. The claims of the ‘724 patent do not embrace the use of hooded sprayer equipment or a drift-reduction nozzle. However, this deficiency is cured by Summer. Summer teaches that precision applications of herbicides that maximize spray coverage of weeds and minimizing spray contact with cotton, which can cause injury, is critical. Spray fender/cultivator and shield/hood sprayers are commonly used for precision, directed spray applications (pg. 1 Introduction). Appropriate spray nozzle tips include off-center or flat-fan tips (extended-range, air injected, anti-drift, lo-drift, etc.) (pg. 1 Equipment).
It would have been prima facie obvious to one of ordinary skill in the art of filing to utilize a hooded sprayer equipment or a drift-reduction nozzle to apply the herbicide composition of the claims of the ‘724 patent. One would have understood in view of the claims of the ‘724 patent that the herbicide composition may be applied to weeds pre- or post-emergence and in view of Summers that shield/hood sprayers and anti-drift or lo-drift nozzles may be utilized to apply herbicide to weeds growing amongst cotton crops while avoiding injury to the crop plant. One of ordinary skill in the art would have been capable of applying this known technique (shield/hood sprayers and anti-drift or lo-drift nozzles) to a known product (the herbicide composition of the claims of the ‘724 patent) that was ready for improvement and the results (application of the herbicide only to weeds pre- or post-emergence) would have been predictable to one of ordinary skill in the art. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because the claims of the ‘724 patent embrace a method for controlling unwanted plants or for regulating the growth of plants. See MPEP 2143 (I)(D).
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,597,724, as applied to claims 3-7 and 10-12 above, and further in view of Adamchuk et. al. (University of Nebraska Lincoln Extension, publication year: 2008).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘724 patent embrace the relevant limitations as described above. The claims of the ‘724 patent do not embrace spot-treatment with a precision farming vehicle. However, this deficiency is cured by Adamchuk.
Adamchuk teaches that weeds in an agricultural field can be controlled by using a predetermined field map which identifies the species and location of weeds (strategic approach). The strategic approach requires a separate operation, but gives the grower a better estimate of the amount and type of chemical needed for a specific weed problem (pg. 2, Principles of Site-Specific Weed Management). Adopting satellite-based auto-guidance (also called auto-steer) technology and using automatic boom section control can substantially reduce herbicide misapplications without requiring the operator to turn boom sections on or off. Auto-guidance allows more accurate control of the distance between two adjacent passes, significantly reducing steering-caused skips and overlaps and does not require conventional markers (pg. 2, Applying Precision Agriculture to Weed Management). Adamchuk also teaches that it is simple to make site-specific post-emergence burndown herbicide applications to winter or summer fallow fields using current technologies such as CropCircle, WeedSeeker, GreenSeeker, or N-Sensor. These close proximity optical sensors use near-infrared light reflextance measurements to distinguish green vegetation from bare soil and crop residue. These data can then be used to turn the sprayer on only when weeds or volunteer crops are present. Herbicide cost savings are realized from not spraying areas that lack weeds (pg. 2, Applying Precision Agriculture to Weed Management). The instant specification defines “precision farming vehicle” to refer to a tractor with a mounted sprayer, a tractor connected to a tractor pull-type sprayer, UAVs and/or UGVs which can apply the inventive compounds according to a weed map or sense and control weeds by spot treatment independent of substantial human intervention [0042 of the instant specification]; therefore, the Examiner considers the teachings of Adamchuk to read on the “precision farming vehicle” limitation of the instant claim 9.
It would have been prima facie obvious to one of ordinary skill in the art of filing to utilize a precision farming vehicle to apply the herbicide composition embraced by the claims of the ‘724 patent. One would have understood in view of the claims of the ‘724 patent that the herbicide composition may be applied to weeds post-emergence and in view of Adamchuk that precision farming techniques may be used to apply herbicide only to weeds in order to give a better estimate of the amount and type of chemical needed for a specific weed population and to realize herbicide cost savings. One of ordinary skill in the art would have been capable of applying this known technique (precision farming application of herbicides) to a known product (the herbicide composition of the claims of the ‘724 patent) that was ready for improvement and the results (application of the herbicide only to weeds pre- or post-emergence) would have been predictable to one of ordinary skill in the art. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because the claims of the ‘724 patent embrace a method of applying the composition to unwanted plants. See MPEP 2143 (I)(D).
Claims 3, 6-7, and 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-8, and 10 of copending application no. 18/000,370, as evidenced by EPA (Mefenpyr-diethyl Safener, publication year: 2011).
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims render obvious the instant claims.
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Inter alia, the claims of the ‘370 application embrace a method for controlling one or more undesirable plants comprising applying an herbicidal composition to undesirable plants and/or a habitat thereof. The composition comprises a compound of formula (I):
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wherein G represents OCH3, R1 and R2 represent hydrogen, R3 represents S-vinyl, X2, X4, and X6 represent fluorine, and X3 and X5 represent fluorine. Z represents formula Z-4a, which in turn represents a mixture of both structures Z-4b and Z-4c:
The composition also comprises mefenpyr-diethyl. EPA teaches that Mefenpyr-dietheyl is a safener (pg. 1). The instant specification defines “spot-treatment against weeds” to refer to a selected treatment for a locus where weeds are growing or a locus (soil) where weeds may grow and may compete with the crop for resources ([0019] of the instant specification), therefore the Examiner considers the method of the claims of the ‘370 application to read on the limitations of the instant claim.
The claims of the ‘370 application do not embrace an application rate of the herbicidal composition. The application rate of the herbicidal composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal application rate in order to best achieve the desired results as such would provide advantageous herbicidal effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, the claims of the ‘370 application embrace an herbicidal composition capable of controlling one or more unwanted plants. The Examiner considers it prima facie obvious to optimize the application rate of an herbicidal composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the application rate of the herbicidal composition embraced by the claims of the ‘370 application would have a direct effect on the herbicidal effect of the composition and therefore be an optimizable variable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 4 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-8, and 10 of copending application no. 18/000,370, as applied to claims 3, 6-7, and 10-12 above, and further in view of Peters (WO2018/228985, publication year: 2018, cited in the IDS filed 1/18/2024; citations refer to U.S. Patent Application No. 2021/0292312 used only as an English translation), as evidenced by EPA (Mefenpyr-diethyl Safener, publication year: 2011).
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims render obvious the instant claims.
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Inter alia, the claims of the ‘370 application embrace the relevant limitations above. The claims of the ‘370 application do not embrace a composition comprising an herbicide. However, this deficiency is cured by Peters. Peters teaches compounds of the general formula (I) [0016]:
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In exemplary compound I-10, X2, X4, X6, R1, and R2 are hydrogen, Y and W are oxygen, X3 and X5 are fluorine, and R3 is (S)-vinyl. Z is Z-1 of 2,4-cis configuration, 2 diastereomers (Table 1). Z-1 has the structure [0128]:
The compounds may be used in a method for controlling unwanted plants or for regulating the growth of plants, preferably in plant crops, in which one or more compounds of the invention are applied to the plants (for example harmful plants such as monocotyledonous or dicotyledonous weeds or unwanted crop plants), the seed or the area on which the plants grow. The compounds can be deployed prior to sowing, prior to emergence or after emergence [0161]. The compounds may be used in combination with other active compounds such as insecticides, acaricides, herbicides, fungicides, safeners, fertilizers, and/or growth regulators [0190]. The compounds may be used in combination with herbicides such as diflufenican, glufosinate, glyphosate, paraquat, diquat, oxadiazon, pyraflufen, pyraflufen-ethyl, flufenacet, indaziflam, pyroxasulfone, rimsulfuron, acetochlor, dimethenamid, pethoxamid, isoxaben, flurochloridone, flurtamone, fluometuron, safluenacil, oxyfluorfen, SYN-523, phenmedipham, dicamba, 2,4-D, tembotrione, and mesotrione [0193].
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (the composition of the claims of the ‘370 application and the composition of Peters), in order to form a third composition to be used for the very same purpose. See MPEP 2144.06 (I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-8, and 10 of copending application no. 18/000,370, as applied to claims 3, 6-7, and 10-12 above, and further in view of Summer et. al. (University of Georgia Extension, publication year: 2017), as evidenced by EPA (Mefenpyr-diethyl Safener, publication year: 2011).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘370 application embrace the relevant limitations as described above. The claims of the ‘370 application do not embrace the use of hooded sprayer equipment or a drift-reduction nozzle. However, this deficiency is cured by Summer. Summer teaches that precision applications of herbicides that maximize spray coverage of weeds and minimizing spray contact with cotton, which can cause injury, is critical. Spray fender/cultivator and shield/hood sprayers are commonly used for precision, directed spray applications (pg. 1 Introduction). Appropriate spray nozzle tips include off-center or flat-fan tips (extended-range, air injected, anti-drift, lo-drift, etc.) (pg. 1 Equipment).
It would have been prima facie obvious to one of ordinary skill in the art of filing to utilize a hooded sprayer equipment or a drift-reduction nozzle to apply the herbicide composition of the claims of the ‘370 application. One would have understood in view of the claims of the ‘370 application that the herbicide composition may be applied to weeds pre- or post-emergence and in view of Summers that shield/hood sprayers and anti-drift or lo-drift nozzles may be utilized to apply herbicide to weeds growing amongst cotton crops while avoiding injury to the crop plant. One of ordinary skill in the art would have been capable of applying this known technique (shield/hood sprayers and anti-drift or lo-drift nozzles) to a known product (the herbicide composition of the claims of the ‘370 application) that was ready for improvement and the results (application of the herbicide only to weeds pre- or post-emergence) would have been predictable to one of ordinary skill in the art. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because the claims of the ‘370 application embrace a method for controlling unwanted plants. See MPEP 2143 (I)(D).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-8, and 10 of copending application no. 18/000,370, as applied to claims 3, 6-7, and 10-12 above, and further in view of Adamchuk et. al. (University of Nebraska Lincoln Extension, publication year: 2008), as evidenced by EPA (Mefenpyr-diethyl Safener, publication year: 2011).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘370 application embrace the relevant limitations as described above. The claims of the ‘370 application do not embrace spot-treatment with a precision farming vehicle. However, this deficiency is cured by Adamchuk.
Adamchuk teaches that weeds in an agricultural field can be controlled by using a predetermined field map which identifies the species and location of weeds (strategic approach). The strategic approach requires a separate operation, but gives the grower a better estimate of the amount and type of chemical needed for a specific weed problem (pg. 2, Principles of Site-Specific Weed Management). Adopting satellite-based auto-guidance (also called auto-steer) technology and using automatic boom section control can substantially reduce herbicide misapplications without requiring the operator to turn boom sections on or off. Auto-guidance allows more accurate control of the distance between two adjacent passes, significantly reducing steering-caused skips and overlaps and does not require conventional markers (pg. 2, Applying Precision Agriculture to Weed Management). Adamchuk also teaches that it is simple to make site-specific post-emergence burndown herbicide applications to winter or summer fallow fields using current technologies such as CropCircle, WeedSeeker, GreenSeeker, or N-Sensor. These close proximity optical sensors use near-infrared light reflextance measurements to distinguish green vegetation from bare soil and crop residue. These data can then be used to turn the sprayer on only when weeds or volunteer crops are present. Herbicide cost savings are realized from not spraying areas that lack weeds (pg. 2, Applying Precision Agriculture to Weed Management). The instant specification defines “precision farming vehicle” to refer to a tractor with a mounted sprayer, a tractor connected to a tractor pull-type sprayer, UAVs and/or UGVs which can apply the inventive compounds according to a weed map or sense and control weeds by spot treatment independent of substantial human intervention [0042 of the instant specification]; therefore, the Examiner considers the teachings of Adamchuk to read on the “precision farming vehicle” limitation of the instant claim 9.
It would have been prima facie obvious to one of ordinary skill in the art of filing to utilize a precision farming vehicle to apply the herbicide composition embraced by the claims of the ‘370 application. One would have understood in view of the claims of the ‘370 application that the herbicide composition may be applied to weeds post-emergence and in view of Adamchuk that precision farming techniques may be used to apply herbicide only to weeds in order to give a better estimate of the amount and type of chemical needed for a specific weed population and to realize herbicide cost savings. One of ordinary skill in the art would have been capable of applying this known technique (precision farming application of herbicides) to a known product (the herbicide composition of the claims of the ‘370 application) that was ready for improvement and the results (application of the herbicide only to weeds pre- or post-emergence) would have been predictable to one of ordinary skill in the art. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because the claims of the ‘370 application embrace a method of applying the composition to unwanted plants. See MPEP 2143 (I)(D).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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