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 .
Status of the Claims
Claims 1-19 are pending and currently under examination.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been received and placed in the file.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Initialed and dated copies of Applicants’ information disclosure statements (IDS) filed on 01/23/2025 is attached to the instant Office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claims 5 and 16 are objected to because of the following informalities:
Claim 5 recites “bi-pyrazone”, in line 3, this appears to be a typographical error. Amending the claim to delete the hyphen would be remedial.
Claim 5 recites “fluchlo-raminopyr”, in line 4, this appears to be a typographical error. Amending the claim to delete the hyphen would be remedial.
Claim 16 recites “tet-flupyrolimet”, in line 2, this appears to be a typographical error. Amending the claim to delete the hyphen would be remedial.
Appropriate correction is required.
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.
Claims 1-19 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “wherein the L-glufosinate comprises more than 70% by weight of the L-enantiomer”. This language renders the claim indefinite because it is unclear how L-glufosinate can have a L-enantiomer less than 100% if it is L-glufosinate.
Claim 4 recites “wherein the L-glufosinate comprises more than 80% by weight of the L-enantiomer”. This language renders the claim indefinite because it is unclear how L-glufosinate can have a L-enantiomer less than 100% if it is L-glufosinate.
Claim 17 recites “wherein the L-glufosinate comprises more than 90% by weight of the L-enantiomer”. This language renders the claim indefinite because it is unclear how L-glufosinate can have a L-enantiomer less than 100% if it is L-glufosinate.
Claim 18 recites “wherein the L-glufosinate comprises more than 95% by weight of the L-enantiomer”. This language renders the claim indefinite because it is unclear how L-glufosinate can have a L-enantiomer less than 100% if it is L-glufosinate.
Claims depending from rejected claims have also been rejected because they incorporate
all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness
concerns outlined above.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-4, 7-15, and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Winter et al. (US20200359629A1, Published 11/9/2020).
The claims are drawn to an herbicidal mixture comprising a) L-glufosinate and its salts as compound I; and b) an herbicidal compound II; wherein the L-glufosinate comprises more than 70% by weight of the L-enantiomer.
Regarding claim 1, Winter discloses an herbicidal mixture comprising a) L-glufosinate and its salts as compound I; and b) at least one bleacher herbicide as compound II; wherein L-glufosinate comprises more than 70% by weight of the L-enantiomer (claim 16).
Regarding claims 2-3, Winter discloses wherein compound I is L-glufosinate-ammonium (claim 18).
Regarding claim 4, Winter discloses wherein L-glufosinate comprises more than 80% by weight of the L-enantiomer (claim 19).
Regarding claims 7-8, Winter discloses wherein the weight ratio of compound I to compound II is from 1000:1 to 1:500 (claim 23).
Regarding claim 9, Winter discloses a pesticidal composition, comprising a liquid or solid carrier and the herbicidal mixture of claim 16 (claim 24).
Regarding claim 10, Winter discloses a method for controlling undesirable vegetation comprising applying the herbicidal mixture according of claim 16 to a locus where undesirable vegetation is present or is expected to be present (claim 25).
Regarding claim 11, Winter discloses comprising application of the herbicidal mixture of claim 16 prior to emergence of the crop (claim 26).
Regarding claim 12, Winter discloses comprising application of the herbicidal mixture of claim 16 prior to planting the crop (claim 27).
Regarding claim 13, Winter discloses wherein the crop is selected from rice, maize, pulse crops, cotton, canola, small grain cereals, soybeans, peanut, sugarcane, sunflower, plantation crops, tree crops, nuts and grapes (claim 28).
Regarding claim 14, Winter discloses wherein the crop is selected from glufosinate tolerant crops (claim 29).
Regarding claims 15 and 19, Winter discloses wherein compounds I and II of the herbicidal mixture as defined in claim 16 are applied simultaneously, that is jointly or separately, or in succession (claim 30).
Regarding claims 17-18, Winter discloses wherein L-glufosinate comprises more than 90% by weight of the L-enantiomer and wherein L-glufosinate comprises 95% by weight of the L-enantiomer (claims 31-32).
Accordingly, Winter anticipated the claimed invention.
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 1-4, 7-15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Winter et al. (US20200359629A1, Published 11/9/2020).
Applicant’s Invention
The Applicants claims are drawn to an herbicidal mixture comprising a) L-glufosinate and its salts as compound I; and b) an herbicidal compound II; wherein the L-glufosinate comprises more than 70% by weight of the L-enantiomer.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Winter discloses an herbicidal mixture comprising a) L-glufosinate and its salts as compound I; and b) at least one bleacher herbicide as compound II; wherein L-glufosinate comprises more than 70% by weight of the L-enantiomer (claim 16).
Regarding claims 2-3, Winter discloses wherein compound I is L-glufosinate-ammonium (claim 18).
Regarding claim 4, Winter discloses wherein L-glufosinate comprises more than 80% by weight of the L-enantiomer (claim 19).
Regarding claims 7-8, Winter discloses wherein the weight ratio of compound I to compound II is from 1000:1 to 1:500 (claim 23).
Regarding claim 9, Winter discloses a pesticidal composition, comprising a liquid or solid carrier and the herbicidal mixture of claim 16 (claim 24).
Regarding claim 10, Winter discloses a method for controlling undesirable vegetation comprising applying the herbicidal mixture according of claim 16 to a locus where undesirable vegetation is present or is expected to be present (claim 25).
Regarding claim 11, Winter discloses comprising application of the herbicidal mixture of claim 16 prior to emergence of the crop (claim 26).
Regarding claim 12, Winter discloses comprising application of the herbicidal mixture of claim 16 prior to planting the crop (claim 27).
Regarding claim 13, Winter discloses wherein the crop is selected from rice, maize, pulse crops, cotton, canola, small grain cereals, soybeans, peanut, sugarcane, sunflower, plantation crops, tree crops, nuts and grapes (claim 28).
Regarding claim 14, Winter discloses wherein the crop is selected from glufosinate tolerant crops (claim 29).
Regarding claims 15 and 19, Winter discloses wherein compounds I and II of the herbicidal mixture as defined in claim 16 are applied simultaneously, that is jointly or separately, or in succession (claim 30).
Regarding claims 17-18, Winter discloses wherein L-glufosinate comprises more than 90% by weight of the L-enantiomer and wherein L-glufosinate comprises more than 95% by weight of the L-enantiomer (paragraph [0018]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Winter does not disclose a single embodiment or example where every limitation recited in the instant claims are taught.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
The claims are considered prima facie obvious to one of ordinary skill in the art because
Winter teaches all of the claimed elements. It would have been prima facie obvious at the time
of filing to have an herbicidal mixture comprising a) L-glufosinate and its salts as compound I; and b) an herbicidal compound II; wherein the L-glufosinate comprises more than 70% by weight of the L-enantiomer because Winter teaches these elements as components of their invention.
Claims 5-6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Winter et al. (US20200359629A1, Published 11/9/2020) as applied to claims 1-4, 7-15, and 17-19 above in view of North et al. (AU2019203141A1, Published 11/21/2019).
Applicant’s Invention
Winter renders obvious all the limitations of instant claim 1. Applicants claim 5 further adds the limitation wherein the compound II is selected from the group consisting of
beflubutamid-M, tetflupyrolimet, dimesulfazet, benquitrione, bi-pyrazone, cypyrafluone,
dioxopyritrione, fenpyrazone, rimisoxafen, tripyrasulfone, fluchlo-raminopyr,
fluchloraminopyr-tefuryl, pyriflubenzoxim, flufenoximacil, flusulfiname, iptri-azopyrid, icafolin,
pyraquinate, and broclozone. Applicants claim 6 further adds the limitation wherein the compound II is selected from the group consisting of beflubutamid-M, tetflupyrolimet, and icafolin. Applicants claim 16 further adds the limitation wherein beflubutamid-M, tet-flupyrolimet, benquitrione, bipyrazone, tripyrasulfone, fenpyrazone, dioxopytrione, fluchloraminopyr, fluchloraminopyrtefuryl, and icafolin.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 5-6 and 16, Winter teaches wherein compound II is selected from the group consisting of beflubutamid (claim 20).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Winter does not teach wherein the compound II is selected form the group consisting of beflubutamid-M, tetflupyrolimet, dimesulfazet, benquitrione, bi-pyrazone, cypyrafluone,
dioxopyritrione, fenpyrazone, rimisoxafen, tripyrasulfone, fluchlo-raminopyr,
fluchloraminopyr-tefuryl, pyriflubenzoxim, flufenoximacil, flusulfiname, iptri-azopyrid, icafolin, pyraquinate, and broclozone. However, this deficiency is cured by North et al.
The present invention discloses novel compositions for protecting crops from undesirable vegetation. The composition described herein allows a combination of herbicides to be applied at reduced rates whilst maintaining and potentially increasing levels of efficacy against weeds such as lolium rigidum therefore decreasing the number of weed seedlings escaping control and assisting the buildup of resistant traits within the local weed population. North also teaches that the invention is directed to the use of the composition herein in controlling undesirable vegetation which interferes with crop growth (paragraph [0003]). In some embodiments, the crop is selected from the group consisting of bananas, barley, beans, beets, canola, cassava, cereals, citrus, cocoas, coconuts, coffee, com, cotton, cowpea, fiber crops, flowers, forge corps, forestry, groundnuts, peanuts, hops, horticultures, non-land crops, oil palm, oilseed rape, peas, pomes, potato, rice, rye, sorghum, soybean, stonefruit, spices, sugar cane, Sunflower, tea, tobacco, tomatoes, tree nuts, turf, vegetable crops, vines, grapes, and wheat (paragraph [0012]). North further teaches Acetamide herbicides include, but are not limited to beflubutamid, beflubutamid-M (paragraph [0026]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to add beflubutamid-M to Winter’s herbicidal mixture. Winter teaches wherein compound II is selected from the group consisting of beflubutamid (claim 20). One would have understood in view of North a composition for protecting crops from undesirable vegetation wherein the crops can be rice, soybean, cotton, peanut, grapes etc. North also teaches a second active ingredient selected from the group consisting of an acetamide (paragraph [0004]), wherein the acetamide herbicides that can be used are to beflubutamid, beflubutamid-M (paragraph [0026]). It would have been obvious to add beflubutamid-M to Winter’s herbicidal mixture because Winter teaches the inventive mixtures are in particular suitable for burndown of undesired vegetation in fields of the following crop plants: small grain crops such as wheat, barley, rye, triticale and durum, rice, maize (corn), sugarcane, sorghum, soybean, pulse crops such as pea, bean and lentils, peanut etc. (paragraph [0114]), wherein compound II is selected from the group consisting of beflubutamid (claim 20) and North teaches a composition for protecting crops from undesirable vegetation wherein the crops can be rice, soybean, cotton, peanut, grapes etc. North also teaches a second active ingredient selected from the group consisting of an acetamide (paragraph [0004]), wherein the acetamide herbicides that can be used are to beflubutamid, beflubutamid-M (paragraph [0026]). Beflubutamid-M is a known herbicide that can be used in herbicidal mixtures against undesired vegetation as both Winter and North both teach herbicidal mixtures for undesired vegetations. Therefore, beflubutamid-M can be added to Winter’s herbicidal mixture to provide an additive effect for the purpose of controlling undesired vegetation. See MPEP 2144.06 (I).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7-15, and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. US11666052B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims render obvious the instant claims.
Inter alia the claims of ‘052 patent embrace a herbicidal mixture comprising a) L-glufosinate and its salts as compound I; and b) at least one bleacher herbicide as compound II selected from the group consisting of tolpyralate and topramezone (i.e., an herbicidal compound II); wherein: L-glufosinate comprises more than 70% by weight of the L-enantiomer; and the herbicidal mixture is free from herbicidal compounds other than L-glufosinate, D-glufosinate, and bleacher herbicides; wherein compound I is selected from the group consisting of L-glufosinate-ammonium, L-glufosinate-sodium as L-glufosinate salts, and L-glufosinate as free acid; wherein compound I is L-glufosinate-ammonium; wherein L-glufosinate comprises more than 80% by weight of the L-enantiomer; wherein the weight ratio of compound I to compound II is from 1000:1 to 1:500; comprising a liquid or solid carrier and the herbicidal mixture of claim 1. The ‘052 patent also embraces a method for controlling undesirable vegetation comprising applying the herbicidal mixture according of claim 1 to a locus where undesirable vegetation is present or is expected to be present; comprising application of the herbicidal mixture of claim 1 prior to emergence of the crop; comprising application of the herbicidal mixture of claim 1 prior to planting the crop; wherein the crop is selected from rice, maize, pulse crops, cotton, canola, small grain cereals, soybeans, peanut, sugarcane, sunflower, plantation crops, tree crops, nuts and grapes; wherein the crop is selected from glufosinate tolerant crops; wherein compounds I and II of the herbicidal mixture as defined in claim 1 are applied simultaneously, that is jointly or separately, or in succession; wherein L-glufosinate comprises more than 90% by weight of the L-enantiomer; wherein L-glufosinate comprises 95% by weight of the L-enantiomer; wherein the weight ratio of compound I to compound II is from 100:1 to 1:10; wherein the weight ratio of compound I to compound II is from 50:1 to 1:5; wherein the weight ratio of compound I to compound II is from 100:1 to 1:5.
Claims 5-6 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. US11666052B2 as applied to claims 1-4, 7-15, and 17-19 above in view of North et al. (AU2019203141A1, Published 11/21/2019).
The relevant limitations of the ‘052 patent are set forth above.
The ‘052 patent also does not teach wherein the compound II is selected form the group consisting of beflubutamid-M, tetflupyrolimet, dimesulfazet, benquitrione, bi-pyrazone, cypyrafluone, dioxopyritrione, fenpyrazone, rimisoxafen, tripyrasulfone, fluchlo-raminopyr,
fluchloraminopyr-tefuryl, pyriflubenzoxim, flufenoximacil, flusulfiname, iptri-azopyrid, icafolin, pyraquinate, and broclozone. However, this deficiency is cured by North et al. North teaches the present invention discloses novel compositions for protecting crops from undesirable vegetation. The composition described herein allows a combination of herbicides to be applied at reduced rates whilst maintaining and potentially increasing levels of efficacy against weeds such as lolium rigidum therefore decreasing the number of weed seedlings escaping control and assisting the buildup of resistant traits within the local weed population. North also teaches that the invention is directed to the use of the composition herein in controlling undesirable vegetation which interferes with crop growth (paragraph [0003]). In some embodiments, the crop is selected from the group consisting of bananas, barley, beans, beets, canola, cassava, cereals, citrus, cocoas, coconuts, coffee, com, cotton, cowpea, fiber crops, flowers, forge corps, forestry, groundnuts, peanuts, hops, horticultures, non-land crops, oil palm, oilseed rape, peas, pomes, potato, rice, rye, sorghum, soybean, stonefruit, spices, sugar cane, Sunflower, tea, tobacco, tomatoes, tree nuts, turf, vegetable crops, vines, grapes, and wheat (paragraph [0012]). North further teaches Acetamide herbicides include, but are not limited to beflubutamid, beflubutamid-M (paragraph [0026]). It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to add beflubutamid-M to ‘052’s herbicidal mixture. One would have understood in view of North a composition for protecting crops from undesirable vegetation wherein the crops can be rice, soybean, cotton, peanut, grapes etc. North also teaches a second active ingredient selected from the group consisting of an acetamide (paragraph [0004]), wherein the acetamide herbicides that can be used are to beflubutamid, beflubutamid-M (paragraph [0026]). It would have been obvious to add beflubutamid-M to ‘052’s herbicidal mixture because the ‘052 patent teaches applying the herbicidal mixture according of claim 1 to a locus where undesirable vegetation is present or is expected to be present; comprising application of the herbicidal mixture of claim 1 prior to emergence of the crop; comprising application of the herbicidal mixture of claim 1 prior to planting the crop; wherein the crop is selected from rice, maize, pulse crops, cotton, canola, small grain cereals, soybeans, peanut, sugarcane, sunflower, plantation crops, tree crops, nuts and grapes and North teaches a composition for protecting crops from undesirable vegetation wherein the crops can be rice, soybean, cotton, peanut, grapes etc. North also teaches a second active ingredient selected from the group consisting of an acetamide (paragraph [0004]), wherein the acetamide herbicides that can be used are to beflubutamid, beflubutamid-M (paragraph [0026]). Beflubutamid-M is a known herbicide that can be used in herbicidal mixtures against undesired vegetation as both the ‘052 patent and North both teach herbicidal mixtures for undesired vegetations. Therefore, beflubutamid-M can be added to ‘052’s herbicidal mixture to provide an additive effect for the purpose of controlling undesired vegetation. See MPEP 2144.06 (I).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFUA BAMFOAA BOATENG whose telephone number is (703)756-1358. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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AFUA BAMFOAA BOATENGExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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