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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 24, 2025 has been entered.
Response to Arguments
Applicant’s response from 10/24/2025 is acknowledged.
Claim Rejections - 35 USC § 102
Applicant’s claim amendments, and the Declaration of Liliana Rapado filed under 37 CFR 1.132 (“Rapado Declaration”), from 4/22/2025 were previously acknowledged and addressed in the office action. The Examiner restates her responses from 5/29/2025, which continually apply, short of the most recent claim amendment, which recites “wherein the total application rate of herbicide A-1 and herbicide B together does not exceed 100 g/ha”. As to that wherein limitation a modified rejection has been made below to further address it.
The gist of the Rapado Declaration with respect to the following disclosure of Jin: “The method of the present invention for controlling the herbicide-resistant weeds comprises a step of applying the uracil compound before, simultaneously with and/or after seeding crop seeds.” ([0085], [0017]; emphasis added) can be found in the following paragraph:
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In response, having considered the Rapado Declaration, the Examiner still maintains her position. As she previously noted vis-à-vis paragraphs, it is evident from the face of [0085] and [0017] that they refer to, inter alia, post-emergent control, and that, similar to Applicant’s own specification, to all of pre-plant, pre-emergent, at-emergent and/or post emergent weed control of crops. “This would designate to one of skill in the art to include before the emergence of the crop plants. In other words, the weeds are being controlled even as the seeds are seeded, or after the seeds are seeded. This can only mean post-emergent seed control. Jin also discloses Applicant’s claimed ratios, as noted in the office action re: paragraph [0161-2]).”
To deviate for a moment, the Examiner notes Applicant’s own specification, which in fact is not limited post emergent control of crops, but discloses control of weeds at all stages as well.
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To get back to Jin, this is evident from the specific examples of Jin as well. It seems that the Rapado Declaration simply opined on this sentence alone, without even considering the numerous examples of Jin, which specifically state to the contrary of the opinion made. Notably, Jin specifically tested the effect of compound X on various weeds at various stages of their development in terms of timing to when the crop was also seeded, as disclosed in detail in paragraphs [0166]-[0187]. For instance, Examples 3, 6, 9, 12, 15 and 18 9[0170]- [0175], are about post-emergent control of the weed palmer amaranth with various different mutations, which confer this weed herbicide resistance. Examples 19-2304 are about similar experiments on other weeds. Example 2305, [0186], is about post-emergent control of the weed waterhemp, which was sprayed with compound X when it reached plant height of 10 cm, per Applicant’s claims as amended, and for which the data of herbicidal effect are shown in Table 1.
Examples 1-3 are shown below as indicative as to how Jin specifically tested herbicidal effect taking into account timing vis-à-vis the planting and emergence of the crop that the weed is grown with.
Example 1
[0168] In a plastic pot, palmer amaranth (Amaranthus palmeri) having an Arg128Met mutation in PPO2 is seeded. On the same day, compound X is applied to the surface of soil so that the application rate of the compound X is 10, 20, 40, or 80 g/ha and the spray liquid amount is 200 L/ha. The plastic pot is then placed in a greenhouse, and at 7 days after the application, soybeans are seeded, and further at 14 days after seeding the soybeans, the effect on the weeds and crop injuries on the soybeans are investigated. An effective control effect on the palmer amaranth is confirmed.
Example 2
[0169] In a plastic pot, palmer amaranth (Amaranthus palmeri) having an Arg128Met mutation in PPO2 and soybeans are seeded. On the same day, compound X is applied to the surface of soil so that the application rate of the compound X is 10, 20, 40, or 80 g/ha and the spray liquid amount is 200 L/ha. The soybeans are then cultivated in a greenhouse, and at 21 days after seeding, the effect on the weeds and crop injuries on the soybeans are investigated. An effective control effect on the palmer amaranth is confirmed.
Example 3
[0170] In a plastic pot, palmer amaranth (Amaranthus palmeri) having an Arg128Met mutation in PPO2 and soybeans are seeded. The soybeans are then cultivated in a greenhouse, and at 21 days after seeding, compound X is applied to the stem and leaf so that the application rate of the compound X is 10, 20, 40, or 80 g/ha and the spray liquid amount is 200 L/ha. Further, the soybeans are cultivated in the greenhouse, and at 14 days after the application of compound X, the effect on the weeds and crop injuries on the soybeans are investigated. An effective control effect on the palmer amaranth is confirmed.
The above teachings further address Applicant’s arguments from pages 4-6. As to the combination with saflufenacil, and Applicant’s claimed ratio, it is noted that these are disclosed in Jin as well. Jin discloses “a combination of compound X and saflufenacil” as an example of a specific combination. ([0162]). Jin discloses that “[i]n each of the combinations, a ratio of the compound to be combined with the present uracil compound as opposed to the present uracil compound is usually within a range of 0.01 to 1,000 times by weight, preferably within a range of 0.1 to 100 times by weight, and more preferably within a range of 1 to 10 times by weight.” ([0161]). This encompasses Applicant’s claimed ratios, which will accordingly have a synergistic effect of the composition in controlling the weeds.
Note to File
For the record, below is the structure of Applicant’s claimed compound herbicide A-1: ethyl 2-[2-[[3-chloro-5-fluoro-6-[3-methyl-2,6-dioxo-4-(trifluoromethyl)-pyrimidin-1-yl]-2-pyridyl]oxy]phenoxy]acetate, aka 2-[2-[[3-chloro-6-[3,6-dihydro-3-methyl-2,6-dioxo-4-(trifluoromethyl)-1(2H)-pyrimidinyl]- 5-fluoro-2-pyridinyl]oxy]phenoxy] acetic acid ethyl ester (CAS 2158274-50-9).
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Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-8 and 10-15 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 20220322665 to Jin et al. (“Jin”).
Jin relates to a method for effectively controlling specific weeds having resistance to herbicides. The method comprises applying one or more uracil compounds selected from a group consisting of a compound represented by formula (I) ((hereinafter, referred to as “Compound X”):
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to a PPO inhibitor-resistant weed which has one or more mutations selected from a group consisting of Arg128Met mutation, Arg128Gly mutation, Arg128His mutation, Arg128Ile mutation, Arg128Lys mutation, and Gly399Ala mutation in PPO.
Compound X is Applicant’s claimed herbicide A-1.
Jin discloses “a combination of compound X and saflufenacil” as an example of a specific combination. ([0162]). Jin discloses that “[i]n each of the combinations, a ratio of the compound to be combined with the present uracil compound as opposed to the present uracil compound is usually within a range of 0.01 to 1,000 times by weight, preferably within a range of 0.1 to 100 times by weight, and more preferably within a range of 1 to 10 times by weight.” ([0161]). This encompasses Applicant’s claimed ratios, which will accordingly have a synergistic effect of the composition in controlling the weeds.
The Examiner specifically notes that Jin makes very specific notations of exactly the combination of Compound X with saflufenacil, and with exactly overlapping ratios as in Applicant’s claims- see, e.g., “[0107] Combination of the compound X and saflufenacil (1:0.1 to 1:20).” See also Example 2 below, which is also a specific example of actual testing of the combination of compound X and saflufenacil, which further specifically discloses the current new claim limitation pertaining to combined application rate of less than 100 g/ha.
Jin discloses application for post-emergent control. “The method of the present invention for controlling the herbicide-resistant weeds comprises a step of applying the uracil compound before, simultaneously with and/or after seeding crop seeds.” ([0085], [0017]). This would designate to one of skill in the art to include before the emergence of the crop plants. This is evident from the specific examples of Jin as well. Notably, Jin specifically tested the effect of compound X on various weeds at various stages of their development in terms of timing to when the crop was also seeded, as disclosed in detail in paragraphs [0166]-[0187]. For instance, Examples 3, 6, 9, 12, 15 and 18 9[0170]- [0175], are about post-emergent control of the weed palmer amaranth with various different mutations, which confer this weed herbicide resistance. Examples 19-2304 are about similar experiments on other weeds.
Examples 1-3 are shown below as indicative as to how Jin specifically tested herbicidal effect taking into account timing vis-à-vis the planting and emergence of the crop that the weed is grown with.
Example 1
[0168] In a plastic pot, palmer amaranth (Amaranthus palmeri) having an Arg128Met mutation in PPO2 is seeded. On the same day, compound X is applied to the surface of soil so that the application rate of the compound X is 10, 20, 40, or 80 g/ha and the spray liquid amount is 200 L/ha. The plastic pot is then placed in a greenhouse, and at 7 days after the application, soybeans are seeded, and further at 14 days after seeding the soybeans, the effect on the weeds and crop injuries on the soybeans are investigated. An effective control effect on the palmer amaranth is confirmed.
Example 2
[0169] In a plastic pot, palmer amaranth (Amaranthus palmeri) having an Arg128Met mutation in PPO2 and soybeans are seeded. On the same day, compound X is applied to the surface of soil so that the application rate of the compound X is 10, 20, 40, or 80 g/ha and the spray liquid amount is 200 L/ha. The soybeans are then cultivated in a greenhouse, and at 21 days after seeding, the effect on the weeds and crop injuries on the soybeans are investigated. An effective control effect on the palmer amaranth is confirmed.
Example 3
[0170] In a plastic pot, palmer amaranth (Amaranthus palmeri) having an Arg128Met mutation in PPO2 and soybeans are seeded. The soybeans are then cultivated in a greenhouse, and at 21 days after seeding, compound X is applied to the stem and leaf so that the application rate of the compound X is 10, 20, 40, or 80 g/ha and the spray liquid amount is 200 L/ha. Further, the soybeans are cultivated in the greenhouse, and at 14 days after the application of compound X, the effect on the weeds and crop injuries on the soybeans are investigated. An effective control effect on the palmer amaranth is confirmed.
Specific examples of the type of weeds which can be a subject controlled by the present invention include the following weeds, but are not limited thereto to Commelinaceae weeds, Glycine max, Gossypium hirsutum, etc. ([0092], [0138], [0034], [0029]. Jin discloses a very wide number of weeds to be controlled ([0092] et seq.), which to one of skill in the art are known to be between 2 and 60 cm tall.
With respect to Applicant’s claim limitation of claim 1 pertaining to how tall the weeds are, the following disclosure of Jin further applies. Example 2305, [0186], is about post-emergent control of the weed waterhemp, which was sprayed with compound X when it reached plant height of 10 cm, per Applicant’s claims as amended, and for which the data of herbicidal effect are shown in Table 1.
As the office action noted above, Example 2 below is a specific example of actual testing of the combination of compound X and saflufenacil, which further specifically discloses the current new claim limitation pertaining to combined application rate of less than 100 g/ha.
Example 2
[0437] The weeds (palmer amaranth (Amaranthus palmeri), waterhemp (Amaranthus tuberculatus=Amaranthus rudis=Amaranthus tamariscinus), common ragweed (Ambrosia artemisiifolia), giant ragweed (Ambrosia trifida), Canadian horseweed (Conyza canadensis), common lambsquarters (Chenopodium album), summer cypress (Bassia scoparia), common barnyardgrass (Echinochloa crus-galli) and giant foxtail (Setaria faberi)) and soybeans are seeded in a plastic pot. On the same day, a spray liquid containing the compound X and saflufenacil prepared so that the application rate of the compound X might be 25, 50, 100 or 200 g/ha and the application rate of Sharpen (saflufenacil 29.7% wettable powder, manufactured by BASF SE) might be 73 mL/ha (1 fluid ounce/acre) is applied to the surface of soil so that the spray liquid amount may be 200 L/ha. The weeds and soybeans are then cultivated in a greenhouse, and 21 days after the application, the effect on the weeds and crop injuries on soybeans are investigated. A synergistic weed control effect compared to the single use of each of the compounds is confirmed.
(emphasis added)
As can be seen from Example 2, disclosed application rates of compound X are 25 and 50 g/ha. The application rate of Sharpen, saflufenacil 29.7% wettable powder, manufactured by BASF SE) might be 73 mL/ha. The Examiner was able to convert 73 mL//ha of 29.74% saflufenacil to g/ha using google AI, which provides:
“The 73 mL/ha of 29.74% saflufenacil is 52.2 g/ha of active ingredient.
To convert the volume of a liquid product to the mass of the active ingredient, you must use the product's density and concentration. The density of pure saflufenacil is approximately 1.595 g/mL.
Calculation Steps
Calculate the mass of the liquid product per hectare:
We can assume the density of the 29.74% solution is close to that of pure saflufenacil for this estimate, as specific product density data was not available.
Volume per hectare = 73 mL
Density of saflufenacil = 1.595 g/mL
Total mass of liquid product = Volume × Density
Total mass = 73 mL/ha × 1.595 g/mL = 116.435 g/ha
Calculate the mass of the active ingredient (saflufenacil) per hectare:
The product is 29.74% saflufenacil by weight/concentration.
Concentration = 29.74% (or 0.2974 as a decimal)
Mass of active ingredient = Total mass of liquid product × Concentration
Mass of active ingredient = 116.435 g/ha × 0.2974 = 34.62 g/ha
If the density of the formulated product (which typically includes solvents and other inert ingredients) is different, the result may vary. One Safety Data Sheet from BASF for a similar product indicates a density of approximately 1.15 g/cm³ (g/mL) for the solvent. Using this alternative density:
Total mass of liquid product = 73 mL/ha × 1.15 g/mL = 83.95 g/ha
Mass of active ingredient = 83.95 g/ha × 0.2974 = 24.97 g/ha
Given the ambiguity regarding the exact product's density, a more general calculation is to consider only the percentage of the 73 mL volume that is the active ingredient, which gives approximately 21.7 g/ha.”
Thus, Example 2 of Jin very specifically also discloses a combined application rate of compound X and saflufenacil, which is less than 100 g/ha.
Other relevant art
The Examiner also notes for the record the following prior art, which similarly discloses Applicant’s claimed herbicidal compounds in combination, over which no rejections were made solely in view of its cumulative nature.
- US 20220322666
- WO 2019030098A 1 (of record)
- WO 2017202768 A1 (of record)
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to SVETLANA M IVANOVA whose telephone number is (571)270-3277. The examiner can normally be reached 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney L. Klinkel can be reached on (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SVETLANA M IVANOVA/ Primary Examiner, Art Unit 1627