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
The listing of claims filed 25 March 2024, have been examined. Claims 1-20 are pending. Claims 1-20 are amended to remove multiple dependencies to be consistent with proper form and are supported by the originally-filed disclosure.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
Claim 9 introduces ambiguity in “weight ratio” across different chemical forms in the claims, given it introduces an inconsistent reference base, which introduces inconsistent interpretation. Claims reciting weight ratios do not specify whether the ratio refers to applied formulation weight, active ingredient content, or acid equivalent weight. The claims also do not clearly define whether the herbicides must be present simultaneously at all times, or merely at some point after application. Claim 9 specifies that the weight ratio refers to acid forms of glyphosate and imazamox. Claims 1 and 2 do not include this clarification and herbicides A and B may be present as salts or esters with different molecular weights. The claims fail to consistently specify whether the weight ratio refers to acid equivalents, salt forms, or ester forms, leading to uncertainty in determining the claimed ratio.
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 1-20 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 1, 4 and 7 recite the phrase, “where Digitaria insularis plants grow or may grow”, which is speculative and open-ended language. “May grow” potentially encompasses any geographic area, including areas where Digitaria insularis has never been present. The claims provide no limiting criteria (e.g., soil type, climate, infestation history, etc.) to define the bounds of such an area. Thus, the phrase “where Digitaria insularis plants grow or may grow” fails to provide a clear, objective boundary for the claimed method and renders the scope of the claim uncertain. Depended claims 3 and 5-20 are included in this rejection because they do not cure the defect noted above.
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. Without an objective standard, it is unclear which plants fall within the scope of the claims.
Claim 7 requires that herbicides A and B be “present on said area” in a specified weight ratio, even when applied successively. The claims do not specify when the ratio is measured, whether degradation, runoff, or absorption is considered, or whether the ratio refers to applied amounts or residual amounts. This creates uncertainty as to how compliance with the ratio is determined. The claims do not clearly indicate how the recited weight ratio is to be determined when the herbicides are applied successively, rendering the scope of the claims indefinite.
Claim 7 depends from claim 1, in which claim 1 refers to a “binary herbicide combination”, however claim 7 allows separate applications performed successively, rendering ambiguity as to physical form and timing related to the term “binary herbicide combination”. Thus, it is unclear whether a “binary herbicide combination” requires a pre-formed mixture, a tank mix, or merely the co-presence of two herbicides on an area at some point in time. The claims fail to clearly define whether the “binary herbicide combination” requires a physical combination prior to application or merely a temporal overlap of two independently applied herbicides. As such this rendered claims including the term “binary herbicide combination” indefinite including claims 1, 2, 4, 5, 14 and 15 and dependent claims 3, 6-13 and 16-20 indefinite as well.
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.
Conclusion
No claims are allowed.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at: http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615