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 .
Claims 16-30 are pending in this application.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 26-29 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.
Claims 26-29 recite “the crop” but there is no prior recitation of a crop. Consequently, said claims lack antecedent basis for “the crop.”
35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 30 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 30 depends on claim 25, which requires the mixture of claim 16 to be applied to a locus of undesirable vegetation. However, claim 30 recites joint application, separate application, or application in succession of the mixture compounds. Because the mixture of the base claims 16 and 25 is already mixed, its components cannot be separately applied, i.e., simultaneously, jointly, separately, or in succession.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
35 U.S.C. 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)(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 16-21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Viertelhaus et al. (US 2021/0137112; hereinafter, Viertelhaus)1.
Viertelhaus explicitly discloses the herbicidal mixture of epyrifenacil + glufosinate-P and epyrifenacil + glufosinate-P ammonium. See B.124 and B.126 on page 22 and compositions 1.123 and 1.124 on page 27. It is noted that Epyrifenacil is the compound II-16 of Applicant’s claims, CAS Reg No. 353292-31-6; and glufosinate-P is synonymous with L-glufosinate.
Claims 16-21 recite 70%, 80%, 90%, 95% by weight of the L-enantiomer, respectively. It is the Examiner’s position that Viertelhaus’ disclosure of glufosinate-P is a teaching of the L-enantiomer, so the claimed concentrations of the L-enantiomer are encompassed by Viertelhaus’ disclosure that clearly conveys the L-enantiomer only.
For these reasons, claims 16-21 are anticipated.
35 U.S.C. 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.
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 16-30 are rejected under 35 U.S.C. 103 as being unpatentable over Viertelhaus (US 2021/0137112) in view of in view of Takematsu et al. (US 4,265,654) and Green et al. (US 2017/0253897).
Viertelhaus explicitly discloses the herbicidal mixture of epyrifenacil + glufosinate-P and epyrifenacil + glufosinate-P ammonium. See B.124 and B.126 on page 22 and compositions 1.123 and 1.124 on page 27. It is noted that Epyrifenacil is the compound II-16 of Applicant’s claims, CAS Reg No. 353292-31-6; and glufosinate-P is synonymous with L-glufosinate. Application can be made before sowing, pre-emergence, or post-emergence (paragraphs 398, 583). Control of weeds in crop is disclosed (paragraph 227), including in soybean, rice, cotton, peanuts (paragraph 229), and crop plants that have been modified for herbicidal tolerance to glufosinate (paragraphs 230-231, 235-236). Suitable carriers include solid and liquid carriers (paragraph 526-528). Ratio of epyrifenacil to glufosinate-P or glufosinate-P ammonium can range from 1:1000 to 1000:1, preferably 1:75 to 75:1 (paragraph 438).
Takematsu et al. (US 4,265,654) teach that the “essence of the herbicidal activity” of glufosinate2 comes from the L-form, i.e. L-glufosinate. L-glufosinate has twice the activity of glufosinate, which is the racemic mixture (column 4, first full paragraph). The acid form of L-glufosinate and its salt forms such as sodium or ammonium salts are preferred (column 5, lines 1-17). Glufosinate (“DL-AMPB”) can be applied at 50 to 3,000 g/10 are, which is equivalent to 500 to 30,000 g/hectare, the amount depending on climatic conditions, such as temperature and light intensity, and species of weeds to be controlled (column 4, lines 30-51). In Example 4 and Table 6, herbicidal activity of L-glufosinate (“L-AMPB” Na salt) is exemplified at application amounts that include 375 g/ha and 750 g/ha.3
Green et al. (US 2017/0253897) disclose glufosinate to be one of the safest herbicides from a toxicological or environmental standpoint (paragraph 3). L-glufosinate is known to be “much more potent than D-glufosinate,” so one advantage is smaller amounts are needed to be effective as a herbicides (paragraphs 3 and 13). 10-1500 g/ha application rate is disclosed, including in a field of crop plants (paragraphs 78, 103). L-glufosinate at an enantiomeric excess of greater than 90% over D-glufosinate is disclosed (paragraph 8). Compositions can comprise L-glufosinate, D-glufosinate, and PPO4, wherein the L-glufosinate can be present at a concentration that is greater than 95% of the composition based on the weight of the three ingredients (paragraph 10, 15). L-glufosinate and cationic salts such as ammonium salt are further disclosed (paragraphs 73, 87). Formulation with solid and liquid extenders, solvents, water, surfactants, and various other formulation additives is disclosed (paragraphs 80-86). Herbicidal mixtures of L-glufosinate with other herbicides is disclosed to control a wider variety of undesirable vegetation (paragraph 101). Use in crops that are resistant to glufosinate is disclosed (paragraph 102).
Claims 16-21 recite 70%, 80%, 90%, 95% by weight of the L-enantiomer, respectively. It is the Examiner’s position that Viertelhaus’ disclosure of glufosinate-P is a teaching of the L-enantiomer, so the claimed concentrations of the L-enantiomer are encompassed by Viertelhaus’ disclosure that clearly conveys the L-enantiomer only.
Additionally, it would have been obvious to the ordinary skilled artisan that Viertelhaus’ glufosinate-P disclosure means pure L-enantiomer of glufosinate without the D-enantiomer, because the L-enantiomer is known to be far more active, i.e. the “essence of the herbicidal activity” of glufosinate (Takematsu et al.). Furthermore, Green et al. teach the claimed proportion of the L-enantiomer. Therefore, the ordinary skilled artisan would have found it obvious to use a pure or substantially pure glufosinate-P, which contains more than 70%, 80%, 90%, or 95% of the L-enantiomer of glufosinate.
Claim 26 recites application prior to emergence of the crop, and claim 27 recites application prior to planting the crop. Such application timing would have been obvious to the ordinary skilled artisan from Viertelhaus’ teachings and also because clearing a field of weed prior to crop planting or prior to crop emergence would likely to be safer to crops.
Claim 29 recites applying the herbicidal mixture in crops that are glufosinate tolerant. Viertelhaus teaches such use, which would have been obvious for protecting crops from the herbicide
Claims 22 and 23 recite ratios, with claim 23 reciting L-glufosinate to epyrifenacil ratio of 50:1 to 1:5. The ordinary skilled artisan would have found a ratio within such ranges to be obvious from Viertelhaus’ 1:75 to 75:1 ratio range, and also from the known application rates or L-glufosinate and epyrifenacil. Takematsu et al. exemplify 750 g/ha and 375 g/ha of L-glufosinate, and Viertelhaus teaches preferable application rate of 0.005to 0.25 kg/ha.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Specification data shown in Example 2 at page 39 have been reviewed in this regard, but the data fail to establish sufficient evidence of obviousness for the following reasons.
Applicant’s data is limited to 800:1 ratio of L-glufosinate to epyrifenacil. The tested ratio is not commensurate in scope with that of the claimed subject matter, which is open to any ratio for most of the claims and inclusive of 1000:1 to 1:500 in claim 22 and 50:1 to 1:5 in claim 23. Evidence of nonobviousness, if any, must be commensurate in scope with that of the claimed subject matter. In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Lindner, 173 USPQ 356, 358 (CCPA 1972).
For these reasons, all claims must be rejected at this time under 35 USC 103.
Nonstatutory 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 16-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,568,968 in view of Takematsu et al. (US 4,265,654) and Green et al. (US 2017/0253897). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Patented claims are directed to herbicidal composition and method for treating or protecting crops by applying the composition, wherein the composition comprises L-glufosinate + epyrifenacil, wherein the ratio by weight of L-glufosinate to epyrifenacil is at least 20. Claims 1, 4-5, 6-13. Ratio of 500:1 to 25:1 or 250:1 to 30:1 is claimed (claims 4-5). Formulation auxiliaries and application in crops such as apple trees, soybean, corn, canola, and cotton are claimed (claims 7, 12-13).
Takematsu et al. (US 4,265,654) teach that the “essence of the herbicidal activity” of glufosinate5 comes from the L-form, i.e. L-glufosinate. L-glufosinate has twice the activity of glufosinate, which is the racemic mixture (column 4, first full paragraph). The acid form of L-glufosinate and its salt forms such as sodium or ammonium salts are preferred (column 5, lines 1-17). Glufosinate (“DL-AMPB”) can be applied at 50 to 3,000 g/10 are, which is equivalent to 500 to 30,000 g/hectare, the amount depending on climatic conditions, such as temperature and light intensity, and species of weeds to be controlled (column 4, lines 30-51). In Example 4 and Table 6, herbicidal activity of L-glufosinate (“L-AMPB” Na salt) is exemplified at application amounts that include 375 g/ha and 750 g/ha.6
Green et al. (US 2017/0253897) disclose glufosinate to be one of the safest herbicides from a toxicological or environmental standpoint (paragraph 3). L-glufosinate is known to be “much more potent than D-glufosinate,” so one advantage is smaller amounts are needed to be effective as a herbicides (paragraphs 3 and 13). 10-1500 g/ha application rate is disclosed, including in a field of crop plants (paragraphs 78, 103). L-glufosinate at an enantiomeric excess of greater than 90% over D-glufosinate is disclosed (paragraph 8). Compositions can comprise L-glufosinate, D-glufosinate, and PPO7, wherein the L-glufosinate can be present at a concentration that is greater than 95% of the composition based on the weight of the three ingredients (paragraph 10, 15). L-glufosinate and cationic salts such as ammonium salt are further disclosed (paragraphs 73, 87). Formulation with solid and liquid extenders, solvents, water, surfactants, and various other formulation additives is disclosed (paragraphs 80-86). Herbicidal mixtures of L-glufosinate with other herbicides is disclosed to control a wider variety of undesirable vegetation (paragraph 101). Use in crops that are resistant to glufosinate is disclosed (paragraph 102).
Claims 16-21 recite 70%, 80%, 90%, 95% by weight of the L-enantiomer, respectively. It is the Examiner’s position that the L-glufosinate of the patented claims is a teaching of the L-enantiomer, that is to say, the pure L-enantiomer of glufosinate without the D-enantiomer. Further, the L-enantiomer is known to be far more active, i.e. the “essence of the herbicidal activity” of glufosinate (Takematsu et al.). Green et al. also teach the claimed proportion of the L-enantiomer. Therefore, the ordinary skilled artisan would have found it obvious to use a pure or substantially pure glufosinate-P, which contains more than 70%, 80%, 90%, or 95% of the L-enantiomer of glufosinate.
Claim 26 recites application prior to emergence of the crop, and claim 27 recites application prior to planting the crop. Such application timing would have been obvious to the ordinary skilled artisan because clearing a field of weed prior to crop planting or prior to crop emergence would likely to be safer to crops.
Claim 29 recites applying the herbicidal mixture in crops that are glufosinate tolerant. It would have been obvious to the ordinary skilled artisan that control of weeds in crop plants that are tolerant to one or more of the applied herbicides would provide additional crop safety.
For these reasons, the ordinary skilled artisan would have recognized the instant claimed invention as an obvious variation of the invention set forth in the claims of U.S. Patent No. 12,568,968.
For the foregoing reasons, all claims must be rejected at this time. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 Viertelhaus claims domestic priority to US 62/479,486, filed on 3/31/2017. All disclosures of Viertelhaus (US 2021/0137112) discussed herein are disclosed also in US 62/479,486.
2 Takematsu et al. use the term “AMPB” to refer to glufosinate.
3 0.025% and 0.05% concentrated solutions are applied at 150 liters per 10 are, which is equal to 375 g/ha and 750 g/ha, respectively.
4 PPO is (2-oxo-4-(hydroxy(methyl)phosphinoyl)butyric acid, not to be confused with the “PPO” in “PPO inhibitor,” which is protoporphyrinogen-IX oxidase inhibitor.
5 Takematsu et al. use the term “AMPB” to refer to glufosinate.
6 0.025% and 0.05% concentrated solutions are applied at 150 liters per 10 are, which is equal to 375 g/ha and 750 g/ha, respectively.
7 PPO is (2-oxo-4-(hydroxy(methyl)phosphinoyl)butyric acid, not to be confused with the “PPO” in “PPO inhibitor,” which is protoporphyrinogen-IX oxidase inhibitor.
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