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 simultaneous application, 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., cannot be applied simultaneously (except as a mixture), 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. 103
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 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 Kim et al. (US 2015/0024940; hereinafter, Kim) in view of Takematsu et al. (US 4,265,654), Green et al. (US 2017/0253897), and Ko et al. (US 2011/0224083).
Kim (US 2015/0024940) disclose experimental herbicidal data for a mixture of glufosinate + tiafenacil, wherein the observed herbicidal value is greater than the calculated value. See Table 5 on page 11, wherein compound 36 is tiafenacil (see Table 1 on page 9). Mixture ratio can be broad, including 0.05 to 100 parts of the second herbicide per 1 part of tiafenacil (paragraph 14) – in Table 5, the mixture ratio of glufosinate to tiafenacil is 75:1, 18.75:1, and about 4.7:1. Safener can be added (paragraph 21). Control of weeds in crops is disclosed, including Glycine crops (which include soybean), Oryza crops (which include rice), and Zea crops (which include corn). See paragraphs 30-34. Application pre-emergence, post-emergence, or prior to sowing is disclosed (paragraph 37). Application to genetically modified plants, e.g., plants which can tolerate PPO inhibitors and other herbicidal mechanism, is disclosed (paragraphs 28-29). Kim’s composition can even control weeds that are usually difficult to control (paragraph 100). Formulation with various liquid or solid carriers is disclosed (paragraphs 15-18).
Takematsu et al. (US 4,265,654) teach that the “essence of the herbicidal activity” of glufosinate1 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.2
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 PPO3, 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).
Ko et al. (US 2011/0224083) disclose tiafenacil (compound 36 on page 5; paragraph 50; Example 7 on page 12; Tables 4 and 7) as a herbicide that exhibits a "wide herbicidal effect against not only grass weeds but also broadleaf weeds upon foliar treatment at low concentration." (paragraph 138). Grass weeds that are controlled include Digitaria species (paragraph 154; Tables 4, 7). Broadleaf weeds that are controlled include Equisetaceae weeds and Commelinaceae weeds (paragraph 155 on page 15). Selectivity in crops such as wheat and corn upon soil treatment is disclosed (paragraph 138). Application rate of 10 to 400 g/ha is disclosed, wherein "the amount may be determined considering such factors as the amount of weeds, growth level of the weeds, formulation type, or the like." (paragraph 139). 32 g/ha is exemplified (Table 7 on page 16). Combined use with a herbicide having glutamine synthetase inhibitor activity such as glufosinate ammonium is disclosed (paragraphs 140, 145).
Although Kim explicitly teaches the herbicidal combination of glufosinate and tiafenacil, wherein the racemic “glufosinate” contains 50% L-glufosinate, Kim does not specifically disclose the use of L-glufosinate in excess of 70%, 80%, 90%, 95% enantiomeric purity. However, Takematsu et al. teach that the “essence of the herbicidal activity” of glufosinate4 comes from the L-form, i.e. L-glufosinate; and L-glufosinate has twice the activity of glufosinate, which is the racemic mixture (column 4, first full paragraph). Additionally, 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 L-glufosinate, which contains more than 70%, more than 80%, more than 90%, or 95% of the L-enantiomer of glufosinate.
Claims 22 and 23 recite ratios, with claim 23 reciting L-glufosinate to tiafenacil ratio of 50:1 to 1:5. The ordinary skilled artisan would have found a ratio within such ranges to be obvious from Kim’s 75:1 to ~4.7:1 ratio range, and also from the known application rates of L-glufosinate and tiafenacil. Takematsu et al. exemplify 750 g/ha and 375 g/ha of L-glufosinate, and Ko et al. exemplify 32 g/ha tiafenacil (Table 7 on page 16), wherein "the amount may be determined considering such factors as the amount of weeds, growth level of the weeds, formulation type, or the like" (paragraph 139). Thus, for example, 375:32 = about 11.7:1 would have been obvious.
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 Kim’s 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. Kim teaches application to crops that are tolerant to other mechanism of herbicidal activity, such as plants that can tolerate PPO inhibitors (paragraph 29). It would have been obvious to the ordinary skilled artisan that application to crops that can tolerate glufosinate would provide safety in using a herbicidal mixture that contains the more herbicidally active L-glufosinate.
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.
For these reasons, all claims must be rejected at this time.
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 Takematsu et al. use the term “AMPB” to refer to glufosinate.
2 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.
3 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.
4 Takematsu et al. use the term “AMPB” to refer to glufosinate.
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