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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13) in the reply filed on 7/2/2026 is acknowledged. Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/2/2026.
Specification
The use of terms such as Alion, Rejuvra, and DuraZone, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore, the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
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 the applicant regards as his invention.
Claim 4 is 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites a “ method for preventing germination of a seed or for destroying a plant from which the seed grows, the method comprising applying to the seed, while harvesting or destroying a plant from which the seed has been produced, a seed-germination preventative amount and/or a plant-destroying amount of an herbicidal composition.” The preamble recites the claimed method as a method of preventing germination or for destroying a plant, in the alternative. However, the amount of herbicidal composition to be applied is recited using “and/or”. This inconsistency renders unclear the amount of herbicide that is to be applied. For example, if the seed-germination preventative amount and the plant-destroying amount are the same amount, an interpretation of the claim language using “and” would seemingly indicate the application of twice the amount of herbicide.
Furthermore, the recitation of “method for preventing germination of a seed or for destroying a plant from which the seed grows, the method comprising applying to the seed, while harvesting or destroying a plant from which the seed has been produced” makes it unclear what growth stage the plant and seed are in, i.e. if the seed has been produced already or if the seed has not yet been produced. Since the claim language recites “comprising applying to the seed” it seems to indicate that the seed is present already, however this seems to contradict the language “a plant from which the seed grows”, which suggests future seed production. For purposes of compact prosecution, if the prior art teaches application of an effective amount of herbicidal composition for preventing germination or destroying a plant to a seed, it will be interpreted as meeting the instant claim limitation.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over BASF, Seedhead Suppression (2006).
Anticipation
BASF teaches that one application of 2 to 4 oz/acre of Plateau herbicide to tall fescue grass before emergence of seedheads can eliminate or reduce the need for mowing [pg. 2] BASF further teaches that tall fescue grass foliage continues to grow after seedhead emergence, and an additional application of Plateau herbicide may be necessary to control the growth of the tall fescue (reads on applying herbicide to a seedhead of a plant in a seedhead growth stage) [pg. 2]. BASF discloses that a Plateau solution of 4 oz/acre was effective in suppressing tall fescue seedhead production [pg. 2] Suppression of seedhead production necessarily prevents the germination of seeds by preventing the maturation of viable seeds, i.e. if the seeds never develop, they will never germinate (reads on seed-germinating preventative amount). Accordingly, the reference teaches each and every limitation of claim 1, either expressly or inherently. Therefore, claim 1 is anticipated by BASF.
Obviousness, in the alternative
Alternatively, assuming arguendo that BASF does not expressly anticipate claim 1, claim 1 would nevertheless have been obvious under 35 U.S.C. 103 over BASF. BASF teaches that tall fescue grass foliage continues to grow after seedhead emergence, and an additional application of Plateau herbicide (after the customary application two to three weeks before seedhead emergence) may be necessary to control the growth of the tall fescue (reads on applying herbicide to a seedhead of a plant in a seedhead growth stage) [pg. 2]. BASF discloses that a Plateau solution of 4 oz/acre was effective in suppressing tall fescue seedhead production [pg. 2] Suppression of seedhead production necessarily prevents the germination of seeds by preventing the maturation of viable seeds, i.e. if the seeds never develop, they do not germinate (reads on seed-germinating preventative amount). Furthermore, if the prior art teaches the claimed method, a property that results as a consequence of performing the claimed method (in this case, prevention of seed germination) to the same patient population would be expected absence evidence to the contrary. It would be obvious to one of ordinary skill to apply an amount of herbicide, as taught by BASF, to plants that are in the seedhead growth stage as recommended by BASF, and thus apply the herbicide to the seedheads in course of the application process. One of ordinary skill would be motivated to perform this second herbicide application in order to keep the tall fescue at an acceptable height because tall fescue grass can produce safety problems if allowed to grow unchecked along public roadsides [pg. 2]. Therefore, claim 1 would have been obvious over BASF.
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.
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.
Claims 1-2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Killian et al. (US 2010/0016158A1, published 1/21/2010) in view of Reicher (2006).
Regarding claims 1 and 12, Killian teaches a method for controlling weeds comprising applying an herbicide comprising substituted diamino-s-triazines (referred to as compounds of formula I) to the weeds, parts of the weed plants, seeds of the weed plants or the area under cultivation where the plants of lawn or turf are growing, sown or to be sown [claim 1]. Killian teaches that compounds of formula I, such as indaziflam [Table 1, Compound A21], are useful for weed control against a wide range of weeds in both pre-emergence and post-emergence applications [0006]. Killian further teaches that when the herbicide is applied post-emergence to the green parts of the plants, growth stops over time after treatment and the weed plants remain at the stage of growth at the time of application, or they die completely after a certain time [0044]. Killian teaches that the application rates of herbicidal compounds of formula I may vary depending on factors such as the type of weed to be controlled, soil type, and weather conditions [0062]. Suitable application rates range from 0.01 to 2000 grams of active ingredient per hectare [0062]. This range overlaps with the ranges recited in the instant specification as amounts effective to prevent seed germination. See instant specification pg. 4, which recites the range of 0.1 to 500 grams of active ingredient per hectare. Thus, the amounts taught in Killian make obvious and read on limitation of “seed-germinating preventative amount” in the instant claim. MPEP 2144.05.
Killian teaches that the compounds of formula I may be applied to the weeds, parts of the weed plants, seeds of the weed plants, or the soil [claim 1; 0064]. However, Killian does not explicitly teach the application of herbicide to the seedhead. Reicher teaches that seeds contained in seedheads will not germinate if the seedheads do not reach maturity on the stem [pg 2]. Interruption of seedhead maturation through methods such as mowing or removal will prevent subsequent germination of weed seeds [pg. 2]. One of ordinary skill, before the effective filing date of the claimed invention, would be able to modify the teachings of Killian with that of Reicher, and recognize that application of the herbicide of Killian directly to the seedhead would achieve the same result of preventing seed germination by interrupting seedhead maturation. As discussed, Killian teaches that application of herbicide to the plant can arrest the plant to the growth stage that the plant was in at the time of herbicide application [0044]. Both references teach different means of preventing continued maturation of the seedhead, thus, a skilled artisan would recognize that substitution of one method for another (i.e. mowing vs herbicide application) would predictably prevent seed germination. Furthermore, if the prior art makes obvious the claimed method, a property that results as a consequence of performing the claimed method (in this case, prevention of seed germination) to the same patient population would be expected absence evidence to the contrary.
Regarding claim 2, Killian teaches that compounds of formula I have excellent herbicidal activity against monocotyledonous plants [0030]. Thus, it would be obvious to apply the method of claim 1 to plants for which the method is taught to be effective.
Claims 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Killian et al. (US 2010/0016158A1, published 1/21/2010) in view of Reicher (2006), as applied to claims 1 and 12 above, and further in view of Bayer CropScience LP, Alion Herbicide Pamphlet (published 2013, cited on the 9/5/2024 IDS, hereinafter “Bayer”).
Regarding claim 3, Killian does not explicitly disclose that compounds of formula I are effective against the species of grasses recited in the instant claim. Bayer teaches that the herbicide Alion, which comprises indaziflam, is effective against cheatgrass [pg. 6]. As discussed in the 103 rejection of claim 1, Killian teaches that indaziflam is a compound of Formula I [Table 1, Compound A21]. Thus, it would be obvious to modify the teachings of Killian and Reicher with that of Bayer, and apply the method of claim 1 to cheatgrass, as cheatgrass is taught in the prior art to be a weed that indaziflam is effective against.
Regarding claim 13, Bayer teaches that Alion comprises indaziflam as the sole active ingredient [pg. 1]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. It would be obvious to select Alion, a commercially available herbicide comprising indaziflam as the sole active ingredient, for use with the method of claim 1, as indaziflam a compound of formula I of the method taught by Killian [Table 1, Compound A21].
Claims 4-11 are rejected under 35 U.S.C. 103 as being unpatentable over Samuelsson (US 4551968, patented 11/12/1985, cited on the 9/5/2024 IDS), as evidenced by Grant (2023), in view of Ahlrens et al. (US2004/0157739A1, published 8/12/2004, issued patent cited on the 9/5/2024 IDS) and Bayer CropScience LP, Alion Herbicide Pamphlet (published 2013, cited on the 9/5/2024 IDS, hereinafter “Bayer”).
Regarding claims 4-5 and 10-11, Samuelsson teaches a method and harvester combine apparatus for killing weeds (reads on destroying a plant from which seed grows) in crop fields, comprising applying chemical herbicide in combination with harvesting crop [Abstract; col. 1 line 59-65]. The method of Samuelsson comprises the steps of cutting the crop plants, threshing the cut crop to separate it into crop and crop residue, and selectively applying liquid herbicide to the cut crop field from said harvester combine over areas of the crop field where weeds are found [claim 1]. Herbicide is applied immediately after the crop has been harvested and lifted from the field, but before any crop residue is redeposited on the field [col. 1 line 61-65]. Samuelsson further teaches that herbicide is applied where weeds are discovered (reads on locus where the plant had been growing of instant claim 5) [col. 2 line 45-46].
Samuelsson does not explicitly state that the herbicide is applied to the seed as instantly claimed, however, Samuelsson states that the liquid herbicide is applied to areas of the cut crop field where weeds are found [claim 1]. It can be reasonably inferred that the application of liquid weed killer to areas of a field will result in some of the herbicide reaching the soil. As evidenced by Grant, all agricultural soil has a weed seed bank containing a reservoir of weed seeds [pg. 2-3]. Thus, the application of herbicide to the soil would result in application of herbicide to the seeds present in the soil, meeting the instant limitation. Nothing in the instant claims excludes the application of herbicide to seeds under the soil from meeting the instant claim. To the contrary, the instant specification states that “plant parts”, including seeds, should be understood as meaning “all above ground and subsoil parts and organs of plants” [Specification pg. 9].
Samuelsson does not explicitly teach a specific herbicide or amount to be applied in the taught method. However, a skilled artisan could easily select an appropriate herbicide in an effective dose amount depending on the plant to be destroyed and the type of crop present on the area to be treated. Ahlrens teaches 2-amino-1,3,5-triazine derivatives (referred to as compounds formula I) for pre- and post-emergent control of broadleaf weeds and grass weeds [0006; 0434]. Compounds of formula I as defined by Ahlrens embrace indaziflam [see 0006-0017]. Ahlrens further teaches that compounds of formula I are suitable for selective control of undesired weeds in crops [0434] due to their excellent herbicidal activity and the fact that these compounds cause insignificant or no damage to economically important crops such as cotton, soybean, wheat, and corn [0433] (reads on instant claim 10). Ahlrens teaches that the herbicidal compounds may be applied at an application rate of 0.001 kg to 10 kg of active ingredient per hectare [0558]. This range overlaps with the range recited in instant claim 11. Where the range taught in the prior art overlaps with the claimed range, a prima facie case of obviousness exists. MPEP 2144.05. It would be obvious to one of ordinary skill to modify the teachings of Samuelsson with that of Ahlrens to inform selection of a suitable herbicide and a suitable dose when adapting the method of Samuelsson to a particular crop and weed. Furthermore, the selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. It would be obvious to select a compound of formula I, such as indaziflam, for use in Samuelsson’s method of killing weeds in crop fields, as such compounds are taught by Ahlrens to be suitable for weed control in crops.
Regarding claims 6-9, Ahlrens teaches 2-amino-1,3,5-triazine derivatives (referred to as compounds formula I) for pre- and post-emergent control of broadleaf weeds and grass weeds [0006; 0434], however, Samuelsson and Ahlrens do not explicitly teach the application of the claimed method to the instantly recited species of invasive grasses. Bayer teaches that indaziflam is effective against cheatgrass [pg. 6] (reads on instant claims 6-7) and kochia, pigweed, and Russian thistle [pg. 5-6] (reads on instant claims 8-9). It would be obvious to use indaziflam to treat a weed species that it is taught to be effective against. It would be obvious to apply the teachings of Bayer to modify the method made obvious over Samuelsson and Ahlrens in order to adapt the instant invention for wider commercial applicability.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA LYNN CHI whose telephone number is (571)272-0026. The examiner can normally be reached Monday - Friday 9 am-5pm ET.
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/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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