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 .
Priority
This application is a Continuation of 19186223, filed 04/22/2025; 19186223 is a Continuation of 18435544, filed 02/07/2024, now U.S. Patent # 12305207; 18435544 is a Continuation of 18179136, filed 03/06/2023, now U.S. Patent # 11913048; 18179136 is a Continuation of 17530018, filed 11/18/2021, now U.S. Patent # 11905538; 17530018 is a Continuation of 16997133, filed 08/19/2020, now U.S. Patent # 11560577; 16997133 is a Continuation of 16287290, filed 02/27/2019, now U.S. Patent # 10781465; 16287290 is a Continuation of 15787448, filed 10/18/2017, now U.S. Patent # 10260078; 15787448 is a Divisional of 15445254, filed 02/28/2017, now U.S. Patent # 9834802; 15445254 Claims Priority from Provisional Application 62413240, filed 10/26/2016; 15445254 Claims Priority from Provisional Application 62336989, filed 05/16/2016; 15445254 Claims Priority from Provisional Application 62302421 , filed 03/02/2016.
Information Disclosure Statement
The IDS filed on 3/17/2026 has been considered. See the attached PTO 1449 form.
Claim Status
Receipt of Remarks/Declaration filed on 3/17/2026 is acknowledged. Claims 1-24 are currently pending and presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Withdrawn Rejections
The double patenting rejections made in the previous office action have been withdrawn due to filing of Terminal Disclaimers.
Terminal Disclaimer
The terminal disclaimers filed on 3/17/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US10260078, US11732281, US11905538, US12305206, and any patent granted on Application Number 19/372,848 and 19/324,859 has been reviewed and is accepted. The terminal disclaimer has been recorded.
New/Maintained Claim(s) Objection(s)/Rejection(s)
Claim Rejections - 35 USC § 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.
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.
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 1, 3, 5, 7, 9, 11, 13, 15, 17, 19, 21, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Hacker et al. (US2011/0287933 A1; Nov. 24, 2011).
Hacker throughout the reference teaches herbicidal compositions and the use for controlling harmful plants in oilseed rape crops. (e.g., Abstract; Title).
Regarding claims 1, 3, 5, 7, 9, 11, 13, 15, 17, 19, 21, 23, Hacker teaches method for controlling harmful plant, specifically weeds, in a crop of planted seeds, specifically oil seed rape crops. Hacker teaches applying a composition comprising a combination of herbicide A and herbicide B to the crops/area. Hacker in Table 1 and 2 teaches herbicide A comprising L-glufosinate ammonium. Instant claim 1 recites L-glufosinate or a salt thereof at an enantiomeric excess of greater than 90% over D-glufosinate. Enantiomeric excess of greater than 90% includes 100% of L-glufosinate and does not require any D-glufosinate. Thus, Hacker teaching only L-glufosinate reads on instant claims. Hacker teaches the application rate/effective amount of L-glufosinate ranges from 12.5 to 2500 g, preferable from 25 to 2500 g, particularly preferably from 50 to 1500 g per hectare. (see e.g., Abstract; Title; Claims; Examples; Para 0017-0022; 0061-0069; 0076-0089; Table 1; Entire document).
Hacker does not expressly teach applying the L-glufosinate at amount ranging from 250 to 1200 grams per hectare as recited in claim 1 and the narrower amounts recited in the dependent claims. However, as discussed supra, Hacker teaches the application rate/effective amount of L-glufosinate ranges from 12.5 to 2500 g, preferable from 25 to 2500 g, particularly preferably from 50 to 1500 g per hectare. Therefore, it would have been obvious to one skilled in the art to determine the optimal amount within the broad range of amounts taught based on, for example, severity of weed that needs to be controlled in the crop area. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claims 2, 4, 6, 8, 10, 12, 14, 16, 18, 20, 22, 24 are rejected under 35 U.S.C. 103 as being unpatentable over Hacker et al. (US2011/0287933 A1; Nov. 24, 2011) as applied to claims 1, 3, 5, 7, 9, 11, 13, 15, 17, 19, 21, 23 above and further in view of Baillie et al. (EP0030424B1; 02/20/1985).
The teachings of Hacker et al. have been set forth above.
Hacker does not teach the composition further comprises more than 0.01% but less than 10% 2-oxo-4-(hydroxy(methyl)phosphinoyl)butyric acid (PPO). However, Baillie cures this deficiency.
Baillie also teaches herbicidal compositions for selective control of weeds in crops. Baillie teaches the herbicidal composition comprising compounds of formula I having herbicidal effect. Specifically, Baillie discloses wherein the compound of formula I is 4-(hydroxymethyl-phosphinyl)-2-oxobutanoic acid, which is the PPO compound recited in the instant claims. Baillie teaches the concentration of the compound in the composition can be 0.05-5% by weight. (see e.g., Abstract; Title; Claims; Para 0004; 0013-0033; Entire Document).
It would have been prima facie obvious to one of ordinary skill in the art to have combined the teachings of Hacker and Baillie and further include compound of formula I and specifically 4-(hydroxymethyl-phosphinyl)-2-oxobutanoic acid (PPO) into the composition of Hacker. As discussed supra, both Hacker and Baillie teach herbicidal composition for weed control in crops. Hacker also teaches that the composition can comprise further herbicides (para 0072) and Baillie teaches the active compound may be admixed with another herbicide (0048). Therefore, it would have been obvious to one skilled in the art to include the compound of formula I and specifically 4-(hydroxymethyl-phosphinyl)-2-oxobutanoic acid (PPO) of Baillie, in the amount taught, into the composition of Hacker. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Response to Arguments/Declaration
Applicant's arguments/declaration, filed 3/17/2026, with respect to the 103 rejection have been fully considered but they are not persuasive.
Applicant in remarks and declaration argued that Hacker teaches application rate of active compound A in the range of from 12.5 to 2500 g/ha, particularly preferably 50-1500 g/ha. The instant claims require the effective amount of L-glufosinate is from 250 to 1200 grams per hectare. It was argued that the experimental data presented in the declaration demonstrates unexpected results which include a reduction of phytotoxicity caused to crops by using L-glufosinate in compartison to the same molar amount of racemic glufosinate and an increase in the control of weeds by using L-glufosinate in comparison to twice the molar amount of racemic glufosinate.
In response, the examiner argues that Hacker expressly discloses the use of L-glufosinate ammonium as the active compound A (see e.g. Table 1 and 2 of Hacker). Thus, applicant’s data and results provided in the declaration which compare L-glufosinate with racemic glufosinate are not sufficient to establish unexpected effect because the prior art expressly teaches L-glufosinate and applicant’s comparison to racemic glufosinate is not a comparison to the closes prior art. A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5)whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)). See MPEP 716.02(e). In the instant case, since the prior art expressly discloses L-glufosinate as the active compound, applicant’s comparison of L-glufosinate with racemic glufosinate does not appear to be a comparison to the closest prior art.
Further, applicant appear to argue unexpected effect or criticality of the claimed amount of L-glufosinate. However, the results in the declaration fail to show the criticality of the claimed amount of L-glufosinate because the comparative example utilizes racemic glufosinate rather than comparing L-glufosinate at varying amounts (both inside and outside the claimed range) to establish criticality of the claimed amount. Note MPEP 716.02(d): “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Therefore, applicant’s remarks and declaration regarding unexpected effect is not found persuasive at this time.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/A.S/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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