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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 21, 2025 has been entered.
Summary
Claims 1-16 and 29 are pending in this office action. Claims 17-26 are withdrawn. The Applicant is requested to amend the withdrawn claims within the same scope as the pending claims in order expedite prosecution upon allowance. All pending claims are under examination in this application.
Priority
The current application filed on March 21, 2024 claims domestic priority to a provisional patent application 63/454,046 filed March 22, 2023.
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 non-obviousness.
Claims 1-16 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Simard et al. (WO2019/006358A1) in view of Macom et al. (WO2021/252438A1) and Hacker et al. (WO2013/037955A1).
[The Examiner is going to introduce each reference, and then combine them where appropriate in rejecting the instant claims.]
1. Simard et al.
Simard et al. is considered to be the prior art closest to the present application and teaches herbicidal compositions and methods of use thereof (see title). Furthermore, Simard et al. disclose the present invention provides a method for selectively controlling or modifying the growth of Poa annua in creeping bentgrass (Agrostis stolonifera) or dormant bermudagrass (Cynodon dactylon) without causing significant injury to such turf grass, comprising applying to the turf grass or to locus of the Poa annua in such turf grass, a herbicidally effective amount of a composition comprising a compound of formula (I) (see abstract).
2. Macom et al.
Macom et al. teaches herbicidal mixtures and compositions and methods of use (see title). In addition, Macom et al. disclose that the invention relates to herbicidal mixtures and compositions comprising isoxaben, dithiopyr, 2,4-Dichlorophenoxyacetic acid (2,4-D), 3,6-dichloro-2-methoxybenzoic acid (dicamba) and methylchlorophenoxypropionic acid (Mecoprop or MCPP), and methods of using the same (see abstract).
3. Hacker et al.
Hacker et al. teach thew use of acylsulfonamides for improving plant yield (see title). Furthermore, Hacker et al. disclose compounds (A) that can be used for increasing the yield of useful plants or crop plants with respect to their harvested plant organs, wherein the compound (A) is selected from compounds of the formula (I) or salts thereof, wherein the symbols are defined as in instant claim 1, preferably cyprosulfamide [compound (Al)] (see abstract).
Combination of Simard et al. and Macom et al.
Regarding instant claims 1 and 29, Simard et al. and Macom et al. teach a method for using Simazine for controlling annual bluegrass (Poa annua). The necessary citations within Simard et al. that correspond to instant claim 1 are compiled within Table I.
Table I
Instant Claims 1 and 29
Simard et al. and Macom et al. Citations
A method of using Simazine for controlling annual bluegrass (Poa annua) in a turf comprising a cool-season turfgrass species, the method comprising applying an effective dosage of Simazine to the turf
Simard et al. disclose a method for selectively controlling or modifying the growth of Poa annua in creeping bentgrass (Agrostis stolonifera) or dormant bermudagrass (Cynodon dactylon) without causing significant injury to such turf grass, comprising applying to the turf grass or to locus of the Poa annua in such turf grass, a herbicidally effective amount of a composition comprising a compound of formula (I) (see abstract within Simard et al.); formula (I) includes the use of other active ingredients that are commonly used in standard turf management practices or to combine other bioactive components with compound of formula (I) such as Simazine (see paragraphs [0026-0027] within Simard et al.)
wherein the effective dosage of Simazine is an independently effective dose for controlling annual bluegrass regardless of whether any other herbicide also is applied to the turf, and
Macom et al. disclose that Examples of plants and/or plant parts useful with this invention (e.g., for which control of growth may be desirable) include, but are not limited to, barley, barnyardgrass, annual bluegrass (Poa annua)…(see page 26, lines 5-7 within Macom et al.). Furthermore, Macom et al. disclose that Simazine can be classified as a pre-emergent herbicide or post-emergent broadleaf herbicide (see claims 8 and 9 within Macom et al.). Moreover, the product label for Simazine lists post-emergent herbicidal bioactivity for annual bluegrass (see PTO-892 NPL U).
wherein the effective dosage of Simazine does not unacceptably damage the cool-season turfgrass species.
Simard et al. disclose that the herbicide mixture that includes Simazine does not unacceptably damage the cool-season turfgrass species (see abstract and paragraph [0001] within Simard et al.).
[The Applicant’s use of the transitional phrase comprising (for instant claim 1) and consisting essentially of (for instant claim 29) is open-ended and allows for additional active ingredients (Simazine and other herbicides) present within the Simard et al. and Macom et al. references.]
In the context of instant method claims 1 and 29, the desired purpose defines an effect that arises from, and is implicit in the method step(s). Thus, where the purpose is limited to stating a technical effect that inevitably occurs during the performance of the claimed method step(s), and is therefore inherent in that/those step(s), that technical effect is not limiting to the subject-matter of the claim. Thus, the present method claims, defining the application/use of the composition and defining its purpose as "use", is anticipated by any document of the state of the art describing a method of application/use although not mentioning this specific use.
[All elements of instant claim 1 are taught by the combination of Simard et al. and Macom et al. within instant claims 1-16.]
Regarding instant claim 2, Simard et al. and Macom et al. teach the growth suppression of annual bluegrass. Simard et al. disclose the herbicide can be applied at an application rate of between 1 to 400g a.i./ha (gram active ingredient per hectare), based on the total amount of active ingredient in the composition used for carrying out the method of suppressing or controlling annual bluegrass (Poa annua) within (cool and warm season) turf grass (see abstract and paragraphs [0001] and [0015]).
Regarding instant claims 3 and 8-9, Simard et al. and Macom et al. teach the effective dosage of Simazine. Simard et al. disclose an effective dosage range between 1 to 400 g ai/ha which translates to ~0.01 to 0.36 lb ai/a (active ingredient per acre) (see paragraph [0015]). This claimed range covers all the limitations of instant claims 3 and 8-9.
Regarding instant claims 5-7 and 10-13, Simard et al. and Macom et al. teach the application of the herbicide Simazine. Simard et al. disclose the herbicide can be applied or re-applied to the turf grass or to the locus thereof for carrying out the method of suppressing or controlling Poa annua at intervals of from 5 to 42 days. Rates and number of application for cool and warm season turf and greens, tees, fairways and roughs within these parameters may vary based on local conditions (see paragraph [0016]).
Regarding instant claim 14, Simard et al. and Macom et al. teach wherein the cool-season turfgrass species comprises at least one species selected from the group consisting of: rye, bentgrass, and fescue. The Markush Group presented within instant claim 14 is a preferred embodiment. The Examiner is relying on one member of the group (bentgrass) to reject the instant claim. Simard et al. disclose selectively controlling or modifying the growth of Poa annua in a turf grass selected from creeping bentgrass (Agrostis stolonifera) and dormant bermudagrass (Cynodon dactylon) without causing significant injury to the turf grass (see paragraph [0033]).
Regarding instant claim 16, Simard et al. and Macom et al. teach wherein the cool-season turf grass is bentgrass, and the effective dosage of Simazine is about 0.05 lb ai/a. Please see the necessary citations and discussion within instant claims (3 and 8-9) and 14.
Combination of Simard et al., Macom et al., and Hacker et al.
Regarding instant claim 4, Simard et al., Macom et al., and Hacker et al. teach a method of using Simazine where the effective dose of ai/a is between 0.5-1.0 lb ai/a. Hacker et al. disclose an application range of 0.005 g to 5000 g ai/ha, which converts to a range of ~0.01 lb to 4.46 lb per acre (see page 18, lines 1-2 within Hacker et al.). This range overlaps with that of instant claim 4.
Regarding instant claim 15, Simard et al., Macom et al., and Hacker et al. teach a method wherein the cool-season turfgrass species is rye, and the effective dosage of Simazine is about 0.1 lb AI/A to about 1.0 lb AI/A. Hacker et al. disclose the application of the herbicide to the cool-season turf grass rye (see page 43, lines 14-16 within Hacker et al.). Please see the instant claim 4 citation discussion which discloses a suitable range for the effective dosage of Simazine within Hacker et al.
Analogous Art
The Simard et al., Macom et al., and Hacker et al. references are directly relevant to the endeavor of the instant application. Therefore, these teachings make the references applicable to instant claims 1-16 and 27-29.
Obviousness
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the herbicidal composition containing Simazine disclosed by Simard et al., using the teachings of Macom et al. and Hacker et al. to incorporate the necessary claim limitations.
The motivation to combine both Macom et al. and Hacker et al. to the teachings of Simard et al. is due to each reference including mixtures of herbicides with Simazine. Simard et al. disclose a method for selectively controlling or modifying the growth of Poa annua in creeping bentgrass (Agrostis stolonifera) or dormant bermudagrass (Cynodon dactylon) without causing significant injury to such turf grass, comprising applying to the turf grass or to locus of the Poa annua in such turf grass, a herbicidally effective amount of a composition comprising a compound of formula (I) (see abstract within Simard et al.).
Macom et al. disclose that examples of plants and/or plant parts useful with this invention (e.g., for which control of growth may be desirable) include, but are not limited to, barley, barnyardgrass, annual bluegrass (Poa annua)…(see page 26, lines 5-7 within Macom et al.). Furthermore, Macom et al. disclose that Simazine can be classified as a pre-emergent herbicide or post-emergent broadleaf herbicide (see claims 8 and 9 within Macom et al.). Moreover, the product label for Simazine lists post-emergent herbicidal bioactivity for annual bluegrass (see PTO-892 NPL U).
Additionally, Hacker et al. disclose herbicides or plant growth inhibitors, such as Simazine (see page 86, line 30 within Hacker et al.) that can be added to their composition for improving plant yields.
Starting with Simard et al., the skilled person only had to the necessary claim limitations disclosed by Macom et al. and Hacker et al. The combination of Simard et al, Macom et al., and Hacker et al. would allow one to arrive at the present application without employing inventive skill. This combination of the herbicidal composition containing Simazine taught by Simard et al. along with the use of the necessary claim limitations taught by Macom et al. and Hacker et al. would allow a research and development scientist (POSITA) to develop the invention taught in the instant application. It would have only required routine experimentation to modify the herbicidal composition containing Simazine disclosed by Simard et al. with the use of the necessary claim limitations taught by Macom et al. and Hacker et al. This combined modification would have led to an enhanced herbicidal composition containing Simazine that would be beneficial for consumers.
Allowable Subject Matter
Claims 27-28 are allowed due to the large number (~150) herbicides listed in Hacker et al. Motivation is lacking to select Penoxsulam from that list and add it to the closest prior art of Simard et al. A skilled artisan (POSITA) would also not select the desired herbicide, and then formulate the desired weight ratio of Simazine to Penoxsulam without undue experimentation.
Response to Arguments
Applicant's arguments filed October 21, 2025 have been fully considered but they are not persuasive.
The Applicant’s claim amendments did necessitate a new ground of rejection, however, Examiner has withdrawn the Prudhomme citation from the record and added the Macom et al. reference to give evidence for the post-emergent control of winter annual weeds including annual bluegrass by the herbicide Simazine.
Applicant argument: The Applicant argues that Prudhomme establishes that Simazine is used for pre-emergent application.
Examiner’s Rebuttal: The argument is now moot. The Prudhomme reference has been withdrawn from the record and replaced by the Macom et al. citation which supports the post-emergent use of Simazine (see Table I).
Applicant argument: The Applicant argues that the Examiner has used impermissible hindsight in “mapping” the limitations of the instant claims for the 35 U.S.C. §103 rejection.
Examiner’s Rebuttal: The Examiner respectfully disagrees. In response, the Examiner respectfully submits that in response to the Applicants argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argument: The Applicant argues that a prima facie case of obviousness under 35 U.S.C. §103 is not presented by the Examiner.
Examiner’s Rebuttal: The Examiner has established a prima facie case of obviousness under 35 U.S.C. §103 using the 3-prong criteria:
Suggestion or motivation to combine the Simard et al, Macom et al., and Hacker et al. references: Both Simard et al. and Hacker et al. use mixtures of herbicides. Macom et al. identifies Simazine as a herbicide that may offer some post-emergent control of winter annual weeds, such as annual bluegrass. The Simard et al. reference is not required to show specific examples relevant to the present invention. There is enough overlap between the references for a skilled artisan (POSITA) to develop the present invention, with the aid of these citations. Furthermore, due to this overlap, the motivation to combine these references is high.
Reasonable expectation of success: The Simard et al, Macom et al., and Hacker et al. references map well with the claim limitations within the instant application. Although a specific dosage is not defined within the cited references for the control of annual bluegrass by Simazine while not damaging a cool-season turf grass, this would be ascertained by a skilled artisan (POSITA) through routine experimentation. All three references prove that a mixture of herbicides containing Simazine yields positive results. A skilled artisan (POSITA) would search and find this literature in order to solve the control of annual bluegrass by Simazine. There is enough overlap between the references for a skilled artisan (POSITA) to develop the present invention, with the aid of these citations.
Teaching of each and every claim limitation: The Simard et al., Macom et al., and Hacker et al. references map well with the claim limitations within the instant application. Every claim limitation is taught by the prior art. There is enough overlap between the references for a skilled artisan (POSITA) to develop the present invention, with the aid of these citations.
Applicant argument: The Applicant argues that the combination of Simard et al. and Prudhomme fails to establish a prima facie case of obviousness under 35 U.S.C. §103.
Examiner’s Rebuttal: The argument is now moot. The Prudhomme reference has been withdrawn from the art of record and replaced by Macom et al.
Applicant argument: The Applicant argues that unexpected results are obtained with Simazine in controlling annual bluegrass within the instant application.
Examiner’s Rebuttal: The Examiner believes that a skilled artisan (POSITA) would “discover” these same results upon standard experimentation based on the art of record and Simazine label.
Applicant argument: The Applicant argues that the Hacker et al. reference would not be consulted by a skilled artisan (POSITA) because the reference is in the field of improving plant yields.
Examiner’s Rebuttal: The Examiner respectfully disagrees. Despite the fact that Hacker et al. is in the field of improving plant yield, the reference does allow for possible mixing partners in the area of herbicides. This provides the link to overlap and combine with Simard et al. and Macom et al.
Examiner’s Comment: Instant claim 1 uses the transitional phrase “comprising.” Later, instant claim 29 uses the transitional phrase “consisting essentially of.” Both transitional phrases are broad and allow for other additives, in this case herbicides. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention."); see also AK Steel Corp. v. Sollac, 344 F3.d 1234, 1239-1240, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003); In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 895-96 (CCPA 1963) [see MPEP 2163 (II)(A)(1)].
Thus, the 35 U.S.C. rejection of instant claims 1-16 and 29 are maintained.
Conclusion
Claims 27-28 are allowed.
Claims 1-16 and 29 are not allowed.
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/JOHN W LIPPERT III/Examiner, Art Unit 1615 /Robert A Wax/Supervisory Patent Examiner, Art Unit 1615