DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 01 July 2026, in response to the Office Correspondence dated 02 March 2026, are acknowledged.
The listing of Claims filed 01 July 2026, have been examined. Claims 1-20 are pending. Claims 1, 2, and 7-9 are amended.
Response to Amendment
The applicant amended independent claims 1 and 2, independent method claim 7, and dependent claims 8 and 9 to clarify that the recited weight ratios are based upon the acid forms of glyphosate and imazamox. The amendments have been entered. Claim 7 further specifies that the recited ratio refers to the applied amounts of herbicide A and herbicide B. These amendments overcome the previous objection regarding inconsistent calculation of weight ratios among acid, salt and ester forms.
Accordingly, the previous claim objection regarding inconsistent reference bases for the recited weight ratios is withdrawn. The amendments also overcome the previous §112(b) rejection directed to uncertainty regarding whether claim 7 referred to applied or residual amounts. Accordingly, the previous §112(b) rejection of claim 7 based upon uncertainty regarding the measurement of the weight ratio following successive applications is withdrawn.
The applicant argues that one skilled in the agricultural arts understands where Digitaria insularis may emerge and that pre-emergence applications are routine. The argument is persuasive, given patent claims are interpreted from the viewpoint of one having ordinary skill in the pertinent art. The phrase, "where Digitaria insularis plants grow or may grow" when read in light of the specification, reasonably informs one skilled in weed science that the method encompasses both post-emergence and pre-emergence herbicide applications.
The specification repeatedly teaches treatment of areas before emergence and treatment of seed banks and expected infestations. Accordingly, the phrase does not render the metes and bounds of the claims uncertain. Therefore, the §112(b) rejection of claims 1, 4, 5, 7, 14, 15 and their dependent claims based upon the phrase "may grow" is withdrawn.
The applicant argues that "glyphosate-tolerant" is a well-established term of art. The applicant asserts that the term is well understood in the art and provides publications to demonstrate the term’s common usage. The examiner agrees in part. The evidence establishes that the expression "glyphosate-tolerant" is widely used within the weed-science community. However, the issue raised in the previous Office Correspondence was not whether the terminology exists, but whether the claim provides an objective boundary defining the required level of tolerance.
The claims do not set forth any standard for “tolerance” (e.g., the level of tolerance, the assay used for determination, whether tolerance is genetically conferred or merely operational, or a recognized reference variety). A weed or crop might be considered “glyphosate-tolerant” based on field performance, laboratory dose-response curves, or possession of a specific gene. Without an objective definition, the metes and bounds of the claims are unclear. The cited publications demonstrate usage of the terminology; however, they do not establish a uniform, legally definite meaning or a universally accepted quantitative boundary incorporated into the claims. Accordingly, the rejection of claims 3 and 6 under 35 USC §112(b) is maintained.
The applicant argues that a combination includes sequential application. The Examiner agrees. The specification consistently defines "combination" as including tank mixtures, simultaneous application, and successive application. Claim 7 now expressly states that the herbicides may be applied successively or simultaneously. When read in light of the specification, one of ordinary skill would understand that "binary herbicide combination" refers to the combined treatment using two herbicides rather than requiring a pre-formulated composition. Accordingly, the previous §112(b) rejection directed to "binary herbicide combination" is withdrawn.
In summary, claims 3 and 6 remain rejected under 35 USC §112(b) and all other prior §112(b) rejections are withdrawn. Regarding the prior rejections under 35 USC §103, the applicant's arguments have been fully considered but are not persuasive, as detailed in the Response to Arguments below. The amendments do not overcome the prior 35 USC §103 rejection over Belani in view of Malefyt, and thus, the 35 USC §103 rejection is maintained, with strengthened reasoning addressing applicant's arguments in the Response to Arguments.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 02 March 2026, since the art which was previously cited continues to read on the amended/newly cited limitations.
Claim Rejections - 35 USC § 112(b)
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 Applicant regards as his invention.
Claims 3 and 6 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, regards as the invention.
Claims 3 and 6 are independently rejected for the use of the term “glyphosate-tolerant” without defining the degree of tolerance, the assay used, or whether tolerance is genetic, phenotypic, or operational. While the term may be used colloquially, the claims must provide an objective measure to determine whether a particular plant or seed falls within the claimed category. Without such a standard, one of ordinary skill in the art cannot precisely ascertain which plants fall within the scope of the claims.
The claims merely recite "glyphosate-tolerant" without identifying resistant according to accepted herbicide resistance testing, survival following a specified field application rate, resistance factor, GR50, LD50, or any other objective criterion. Whether a given Digitaria population is "glyphosate-tolerant" may vary depending upon environmental conditions, application rate, formulation, growth stage and local agricultural practice.
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 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Belani et al. (US-20170325453-A1; publishes 16 November 2017, hereinafter referred to as “Belani”) in view of Malefyt et al. (US-6277787-B1; published 21 August 2001, hereinafter referred to as “Malefyt”).
Regarding instant claims 1 and 2, Belani teaches herbicidal mixtures and methods for controlling undesirable vegetation, including the specific weed Digitaria insularis (claim 26), combining a glyphosate or an agriculturally acceptable salt thereof herbicide and an imidazolinone herbicide or an agriculturally acceptable salt thereof, to act on herbicide resistant plants or their habitat in crop plants (claim 20), wherein imazamox is an imidazolinone herbicide that is commonly formulated and used as an ammonium salt of imazamox (e.g., Clearcast®, IMOX™) or alternatively formulated as various esters.
The glyphosate herbicide taught by Belani can also be used in the form of their agriculturally acceptable salts including potassium and ammonium such as, glyphosate-diammonium, glyphosate-isopropylammonium, glyphosate-monoammonium, glyphosate-potassium, glyphosate-sesquisodium, and glyphosate-trimesium (¶[0058]), teaching the limitation of instant claim 16. Imazamox is specifically defined in the specification as an encompassed imidazolinone herbicide (¶[0053]) taught by Belani, rendering instant claim 18 obvious, and the imidazolinone herbicide taught by Belani includes acids and salt forms such as, 2-(4-isopropyl-4-methyl-5-oxo-2-imidazolin-2-yl)-5-(methoxymethyl)-nicotinic acid, imazamox potassium salt, imazamox ammonium salt, and agriculturally acceptable salts thereof imazamox (¶[0059], ¶[0060], ¶[0065]), encompassing the instant claim 19 and 20 imazamox acid form and salts.
Belani explicitly teaches the method wherein the undesired vegetation is resistant to glyphosate and/or acetohydroxyacid synthase inhibitors (claim 23), including Digitaria insularis (claim 26) and wherein the crop plants are soybean (claim 21) and the herbicides may act on the plants or their habitat (claim 20), teaching the limitations of instant claims 3-6.
The invention of Belani is taught for use not only where Digitaria insularis might occur, but where it also occurs (¶[0031] and ¶[0032]), to act on the plants, their habitat or on seed (¶[0034] and ¶[0035]), wherein the terms “controlling” and “combating” are synonyms (¶[0046]), and wherein the compositions according to the invention have better herbicidal activity against harmful plants than would have been expected by the herbicidal activity of the individual compounds- show an accelerated action on harmful plants, i.e. damaging of the harmful plants is achieved more quickly in comparison to application of the individual herbicides, while also effective in reducing regrowth of emerged plants and the emergence of new plants (¶[0045]).
Thus, Belani’s clearly implies use in applications of growing Digitaria insularis plants at any stage (including above-ground basal branches or more plants) in addition to prevention of regrowth. The instant claims do not define the developmental stage, number of branches, or timing relative to application. Moreover, one of ordinary skill in the art would consider herbicidal activity to refer to the capacity of a substance to kill, disrupt, suppress or inhibit the growth of unwanted vegetation by interfering with vital biological processes, thus making it obvious to use the invention disclosed by Belani on growing plants, including above-ground basal branches or more plants, thus rendering instant claims 14 and 15 obvious from the teaching of Belani.
Belani describes preparing a mixture of separately packaged herbicides prior to application, wherein, “Preferably the mixing is performed as a tank mix, i.e. the formulations are mixed immediately prior or upon dilution with water.” (¶[0172]), teaching the limitations of instant claims 12 and 13. Belani also explicitly teaches the herbicides can be applied simultaneously or in succession in crops undesirable vegetation may occur (¶[0022]), rendering instant claim 7 as an obvious implementation of this teaching.
Belani teaches wherein the weight ratio of the glyphosate herbicide (A) to imidazolinone herbicide (C) is from 1:1 to 100:1 (¶[0167]), or approximately 50-99.01% of instant claim glyphosate herbicide A and approximately 0.99-50% of instant claim imazamox herbicide B, which strongly overlaps with the instant claimed range of 1:2 to 120:1, or approximately 33.33-99.17% of instant claim glyphosate herbicide A and approximately 0.83-66.67% of instant claim imazamox herbicide B. Further, in examples embodiments, Belani exemplifies the use of 7.35:1 and 3.43:1 of glyphosate herbicide: imidazolinone herbicide (Table 18, page 28, active ingredients 10 and 11; equivalent to 88:02%:11.98% and 77.42%:22.58%), which is encompassed with in the instant claim 1 range.
Moreover, Malefyt also teaches synergistic control of undesirable plants with a synergistically effective amount of a combination of glyphosate and an imidazolinone compound selected from the group consisting of imazethapyr; imazaquin; imazapic; imazamox; imazapyr; and mixtures thereof (claim 1), wherein the imidazolinone compound is imazamox (claim 5), more specifically wherein the compound is the R isomer of imazamox (teaching the limitation of instant claim 17), and wherein the glyphosate and imidazolinone compound are present at a wt/wt ratio of about 3:1 to 65:1 (claim 7), overlapping with the 1:2 to 120:1 instant claim range and the more narrow instant claim 8 range of 1:1 to 50:1. In addition Malefyt teaches wherein the glyphosate and imazamox are present at a wt/wt ratio of 20:1 to 65:1 (claim 10), rendering the narrower instant claim 9 range of 8:1 to 22:1 for the acid-form weights and obvious optimization. One of ordinary skill would have been motivated to optimize the ratio for a specific weed like Digitaria insularis through routine experimentation, making this range obvious.
Instant claim 10 and 11 application rates for herbicide A (0.24 to 2.4 kg/ha) and herbicide B (0.02 to 0.56 kg/ha) are also directly taught by Malefyt. Malefyt discloses a synergistic effective amount of about 200 g/ha to 1200 g/ha (0.2 to 1.2 kg/ha) of glyphosate and about 8.0 g/ha to 150 g/ha (0.008 to 0.15 kg/ha) of an imidazolinone compound (claim 11). While the upper limit for glyphosate in instant claim 10 is higher (2.4 kg/ha) and the upper limit for imazamox in instant claim 11 is higher (0.56 kg/ha), these represent obvious extensions of the known effective ranges for controlling difficult weeds, particularly in light of the broader ratios and the specific target weed taught by Belani.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date employ the composition and methods taught by Belani and further supported by the teachings of Malefyt with the selection of optimization parameters of the instant claims arrived at through routine experimentation. The prior art teaches all elements of the claimed method and composition including, binary combination of glyphosate and imazamox, selection of Digitaria insularis as taught by Belani and as an obvious species selection from a known genus of grass weeds in the invention taught by Malefyt (motivated by known resistance issues), application to soybean systems, weight ratios and application rates overlapping the claimed ranges, simultaneous or sequential application, and applying the disclosed mixtures to glyphosate-tolerant weeds and crops, as resistance management is explicitly taught.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 01 July 2026, have been fully considered.
The applicant contends that Belani teaches only ternary mixtures and therefore teaches away from omission of saflufenacil, wherein a skilled person would expect a weakened effect if it were omitted. The argument is not persuasive.
Belani’s ternary mixtures are described as providing better herbicidal activity (¶[0045]), but Belani also explicitly contemplates that the herbicides can be used in binary combinations or in sequences. The reference discloses that glyphosate and an imidazolinone (including imazamox) are individually effective against Digitaria insularis (claims 20-26). Thus, Belani expressly teaches glyphosate in combination with an imidazolinone herbicide as part of its disclosed herbicidal systems. Saflufenacil functions as an additional herbicide intended to broaden activity. Nothing in Belani teaches that glyphosate and the imidazolinone lose utility when saflufenacil is absent. Moreover, Malefyt independently teaches a binary combination of glyphosate and an imidazolinone (specifically imazamox) provides synergistic control of weeds. Thus, the proposed modification does not rely solely upon Belani.
A person of ordinary skill in the art, faced with the problem of controlling glyphosate-resistant Digitaria insularis, would have been motivated to simplify Belani’s three-way mixture by omitting saflufenacil and relying on the known synergistic binary combination of glyphosate and imazamox, taught by Malefyt, with a reasonable expectation of success. The motivation to reduce the number of active ingredients while maintaining acceptable efficacy is a routine formulation choice in commercial product development.
A disclosure of a preferred three-component composition does not teach away from using a disclosed subset of active ingredients where the omitted ingredient merely provides additional herbicidal activity. Deletion of one known component from a known combination where each component performs its expected herbicidal function represents no more than routine optimization (see In re Kerkhoven, 626 F.2d 846 (CCPA 1980)). Thus, omitting saflufenacil would not have been counter to the teachings of the art.
The applicant argues Malefyt does not specifically disclose Digitaria insularis. This argument is not persuasive. Belani expressly identifies Digitaria insularis. Malefyt supplies the binary glyphosate and imazamox system. The proposed combination merely substitutes the binary system taught by Malefyt into the Digitaria application expressly taught by Belani. No hindsight reconstruction is required.
The applicant argues that Belani allegedly prefers other imidazolinones and that Malefyt shows greater synergy with imazethapyr, so the skilled person would not have selected imazamox. This argument is not persuasive. Belani expressly identifies imazamox as one of the suitable imidazolinone herbicides. Malefyt specifically teaches imazamox as one of only five preferred imidazolinones that synergizes with glyphosate (claim 5) and provides specific ratios and application rates for glyphosate and imazamox combinations. The fact that imazethapyr may have shown a higher synergy in some tests does not teach away from imazamox, rather it merely presents alternatives.
The choice among known synergists to target a specific weed like Digitaria insularis, which Belani itself identifies as a target, would have been an obvious optimization step. Moreover, Belani explicitly lists imazamox as an imidazolinone herbicide (¶[0053]) and teaches its use in the form of agriculturally acceptable salts and esters, exactly as claimed. Selection of one expressly disclosed species (i.e., imazamox) from a finite disclosed genus (i.e., the short list of imidazolinones known to synergize with glyphosate) constitutes an obvious selection absent evidence of criticality (see MPEP 2144.08). The applicant has not established that selection of imazamox itself is critical independent of the alleged synergy.
The applicant emphasizes the unpredictability of synergy and points to data in the specification showing an alleged unexpected synergistic effect against Digitaria insularis. Evidence of unexpected results can rebut a prima facie case of obviousness, but the evidence considered here is not commensurate with the full scope of the claims and is not sufficient to outweigh the prima facie case.
First, the claims encompass glyphosate or any salt, combined with imazamox, any salt, or any ester, over an extremely broad ratio 1:2 to 120:1, multiple application timings, multiple application methods, pre-emergence, post-emergence, soybean, non-soybean, and all Digitaria insularis populations, including resistant and susceptible biotypes. The specification demonstrates only a limited number of experimental conditions, wherein Tables 2-4 are derived from a limited set of application rates, ratios, and growth stages.
In particular, the broad range of ratios (e.g., 1:2 to 120:1) includes ratios far removed from those tested, and the claim covers pre-emergence applications where synergism has not been shown. The data of record do not establish that synergy is obtained across the entire claimed range and for all application timings, thus, the applicant has not established that synergy exists throughout the full claimed scope. Objective evidence must be commensurate in scope with the claims (see MPEP 716.02(d)). Therefore, the evidence does not overcome the obviousness rejection.
Second, the applicant has not provided comparison with closest prior art. The applicant compares the invention only against individual herbicides. The closest prior art is Belani and Malefyt. The claimed synergy cannot be considered wholly unexpected in view of Malefyt, which already teaches synergy between glyphosate and imazamox for other weed species. A skilled artisan would anticipate that synergy might extend to related grass weeds, particularly when Belani singles out Digitaria insularis as a target for a combination containing glyphosate and an imidazolinone.
The applicant has not demonstrated superiority over glyphosate and imidazolinone combinations already disclosed, nor shown superiority relative to Belani's ternary systems. Unexpected results must be shown relative to the closest prior art. The cited Exhibit B (general statement that antagonism is more frequent than synergy) does not establish that synergy is unexpected for this specific, known synergistic pair. The existence of some unpredictable interactions does not render all binary herbicide combinations nonobvious when the prior art expressly discloses synergy for the same pair of active ingredients.
Third, the applicant fails to demonstrate criticality of claimed ratios. The applicant argues synergy generally. However, the evidence does not establish that the entire claimed ratio 1:2 to 120:1 is critical. The demonstrated examples occupy only a small fraction of the claimed range. No evidence establishes synergy near the endpoints. Thus, criticality has not been shown.
The newly added limitation that the weight ratio is based on acid forms does not change the obviousness analysis. Malefyt teaches a weight ratio of glyphosate to imidazolinone (including imazamox) of 3:1 to 65:1, and Belani teaches overlapping glyphosate and imidazolinone ratios from 1:1 to 100:1. Both ranges substantially overlap with the claimed 1:2 to 120:1. Where claimed numerical ranges overlap prior art ranges, a prima facie case exists.
Expressing the ratio in terms of acid equivalents is a routine practice when working with herbicidal salts and esters. The specific narrower ranges of claims 8 and 9 of 1:1 to 50:1 and 8:1 to 22:1 are also obvious optimizations of the known effective ratios. Similarly, the application rates of claims 10 and 11 are taught by Malefyt (i.e., 0.2-1.2 kg/ha glyphosate, 0.008-0.15 kg/ha imidazolinone) and the slight upward extension to cover difficult-to-control perennial grass weeds (i.e., 2.4 kg/ha glyphosate, 0.56 kg/ha imazamox) is an obvious variation that would result from routine experimental optimization in field trials.
In summary, claims 1-20 remain rejected under 35 USC §103 over Belani in view of Malefyt. Belani expressly teaches Digitaria insularis, glyphosate herbicides, imidazolinone herbicides including imazamox, soybean systems, simultaneous and sequential applications, tank mixing, and herbicide-resistant weeds. Malefyt teaches binary glyphosate and imazamox combinations, synergistic weed control, overlapping application rates, overlapping weight ratios, and R-imazamox.
One of ordinary skill in the art would have been motivated to employ the binary glyphosate and imazamox combinations taught by Malefyt for control of Digitaria insularis specifically taught by Belani because both references are directed towards improved control of herbicide-resistant weeds using glyphosate combined with imidazolinone herbicides. The modification merely combines familiar herbicides according to their known functions to obtain predictable herbicidal activity. Optimization of herbicide ratios for a known target weed through routine field testing would have constituted no more than ordinary routine optimization by one of skill in the art.
Conclusion
No claims are allowed. THIS ACTION IS MADE FINAL. 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 (87 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 REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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