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 .
Response to Arguments
Applicant’s response from 4/27/2026 is acknowledged.
Claim Rejections - 35 USC § 102
Applicant has argued as follows:
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In response, the Examiner disagrees with this characterization in its entirety. All of the claimed features are taught by Jin. The office action outlined in great detail where. Applicant has simply assembled in one claim disclosure, which is clearly taught throughout Jin.
Applicant has further argued:
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The Examiner agrees with Applicant just as this sentence, and will take out combination with saflufenacil just as to Example 2. Nonetheless, the Examiner correctly pointed out that explicit combination of just compound X and saflufenacil is taught in Jin.
“[0159] In the present invention, particularly preferable examples of the herbicides to be used in combination with the present uracil compound include glyphosate-potassium salt, glyphosate-guanidine salt, glyphosate-dimethylamine salt, glyphosate-monoethanolamine salt, glufosinate-ammonium salt, glyphosate-isopropylammonium salt, flumiclorac-pentyl, clethodim, lactofen, S-metolachlor, metribuzin, flufenacet, nicosulfuron, rimsulfuron, acetochlor, mesotrione, isoxaflutole, chlorimuron-ethyl, thifensulfuron-methyl, cloransulam-methyl, imazethapyr-ammonium salt, flumioxazin, saflufenacil, and trifludimoxazin.
. . .
[0162] Examples of specific combinations are disclosed below:
. . .
a combination of compound X and saflufenacil”
(emphasis added).
Applicant has further noted:
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The Examiner agrees with Applicant regarding the citation of the ‘666 publication. The Examiner also notes that she has cited the ‘666 publication, together with other relevant references, in the section titled Other relevant art over which no rejections were made solely in view of their cumulative nature. In this regard, it also stands out that Example 2 of the ‘666 publication explicitly discloses the combination of compound X and saflufenacil. Moreover, it explicitly points out that the combination is synergistic. Thus, multiple prior art references are ongoingly applicable against Applicant’s claims.
For the foregoing reasons, taking into account Applicant’s and the Examiner’s comments above, a new modified rejection has been made below.
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 § 103
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.
Claims 1, 3-8 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 20220322665 to Jin et al. (“Jin”, of record), further in view of US 20220322666 to Jin et al. (“Jin 2”, of record).
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 compound X on post-emergent weeds, which further specifically discloses the more recent claim limitation pertaining to 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.
Applicant’s claim 1 recites that the claimed combination results in a synergistic effect of the composition in controlling the weeds. However, even the synergistic effect of the combination in weed control is disclosed in the art in Jin 2.
Jin 2 relates to a herbicidal composition and a method for controlling weeds that have a superior weed controlling effect, comprising one or more uracil compounds selected from the group consisting of a compound represented by formula (I) and (II) (comprising compound X- Applicant’s herbicide A-1), and one or more compounds selected from the group consisting of the herbicide compound group B, which includes saflufenacil. (Abstract, claims 1, 2, 6).
Example 2 below is a specific example of actual testing of compound X, which further specifically discloses the claim limitation pertaining to 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).
The notation of synergistic effect is specifically bolded. Example 9 also pertains to first applying compound X and a few days later applying saflufenacil. It also discloses a synergistic effect on weed control.
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.
The only feature, which Jin 2 does not disclose in Example 2 specifically is post-emergent weed control. But applying just compound X in post-emergent weed control, and in a specific example, is already disclosed in Jin. Moreover, Jin 2 very specifically discloses that the method includes application for post-emergent weed control. ([0062]-[0364]).
Accordingly, it would have been obvious to a person of skill in the art before the effective filing date of the claimed invention to combine the teachings of Jin and Jin 2 in order to practice Applicant’s claimed method. All the features of Applicant’s claimed method is disclosed in both Jin and Jin 2, to include with very specific teachings, and actual testing, of both the claimed combination, and in the claimed ratios, and with the claimed application rate, by both references, and with an indication that the combination is synergistic, by Jin 2, and with an actual example on post-emergent weed control in Jin with just one of the compounds. Accordingly, it would have been obvious to a person of skill in the art to apply the teachings of Jin 2 to post-emergent weed control, as specifically taught by Jin, with a reasonable expectation of success, to include with a reasonable expectation of a synergistic effect, which is already taught by Jin 2. Thus, by merely placing the word unexpected in its claims, Applicant’s claims do not rise to showing any unexpected results at all, where they are already taught by the prior art. Unexpected results must be “truly unexpected,” e.g., “a difference in kind as opposed to degree.” In re Merck, 800 F.2d 1091, 1099 (Fed. Cir. 1986); see also In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (“even though applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art, unless the claimed ranges ‘produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.’“) (quoting In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Other relevant art
The Examiner also restates 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.
- 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
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