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 .
Applicant’s amendment filed 2/6/2026 has been entered. Claims 1, 4, 10-12 and 20 were amended. Claims 3 and 8 were canceled.
Claims 1, 4-7 and 10-20 are pending.
Withdrawn rejections
Applicant's amendments and arguments filed 2/6/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.
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 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 9,596,862 (herein ‘862). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a composition comprising Bacillus firmus and fluopyram with a further insect control agent applied as a seed treatment, whereas the present claims recite a method of controlling resistance of Soybean cyst nematodes, a method of improving plant yield comprising treating seed and a treated soybean seed comprising Bacillus firmus, fluopyram and clothianidin. However, ‘862 teach combinations wherein the bacillus firmus spore and the insect control agent is clothianidin (column 13, lines 2-3). Examples show treatments comprising 0.375 mg ai/seed the neonicotinoid clothianidin (column 19, lines 20-47). Soybean seeds planted in soil infected by soybean cyst nematodes shows improved plant growth when the biological insecticide was combined with the neonicotinoid insecticides (Example 4, column 20, lines 10-54). Further combining the biological insecticide and the neonicotinoid insecticides with fungicides further improved yield (Table 3, column 21, lines 4-22).
Claims 1, 4-7 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 9,560, 852 (herein ‘852). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a composition comprising Bacillus firmus and clothianidin with a further fungicide applied as a seed treatment, whereas the present claims recite a method of controlling resistance of Soybean cyst nematodes, a method of improving plant yield comprising treating seed and a treated soybean seed comprising Bacillus firmus, fluopyram and clothianidin. However, ‘852 teach fungicides include fluopyram (column 9, lines 15-24). Examples show treatments comprising 0.375 mg ai/seed the neonicotinoid clothianidin (column 19, lines 37-55). Soybean seeds planted in soil infected by soybean cyst nematodes shows improved plant growth when the nematicidal insecticide was combined with the neonicotinoid insecticides (Example 4, column 20, lines 10-54). Further combining the biological insecticide and the neonicotinoid insecticides with fungicides further improved yield (Table 3, column 21, lines 3-18).
Response to Arguments
Applicant's arguments filed 2/6/2026 have been fully considered but they are not persuasive. Applicant argues that the combination demonstrates unexpected results which overcome the teachings of ‘862 and ‘852. The Examiner is not persuaded by this argument because double patenting rejections are only overcome by filing terminal disclaimers since the claims would result in an improper timewise extension. Therefore the rejections have been maintained.
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.
Claims 1, 4-7, 10, 11 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Pederson et al. (9,149,044; October 6, 2015) in view of al. (Genetic and Phenotypic Analysis of Soybean mosaic virus Resistance in PI 88788 Soybean, The American Phytopathological Society, Vol. 94, No.7, 2004, pages 687-692).
Applicant claims a method of reducing, delaying and/or controlling resistance of Soybean Cyst nematodes to one or more plant traits (preferably in soy seeds after a first, second or third generation) comprising treating a seed, a plant, or a plant part with one or more compositions comprising a) 0.01-10 mg ai/seed of fluopyram and/or an oxide thereof; b) 0.01-10 mg ai/seed of clothianidin; and c) 0.006 mg ai/seed of Bacillus firmus. (claim 1)
Applicant also claims PI 88788 soybean seed comprising a) 0.01-1 mg ai/seed of fluopyram and/or an oxide thereof; b) 0.01-1 mg ai/seed of clothianidin; and c) Bacillus firmus. (claim 19)
Applicant claims a method of improving plant yield comprising treating a seed, a plant, or a plant part with one or more compositions comprising a) 0.01-10 mg ai/seed of fluopyram and/or an oxide thereof; b) 0.01-10 mg ai/seed of clothianidin; and c) 0.006 mg ai/seed of Bacillus firmus. (claim 20)
Pederson et al. teach combinations of agricultural ingredients comprising I) a nematode-antagonistic biocontrol agent and II) one or more agents selected from a fungicide, an insecticide and a bacterium of the genus Bacillus (abstract). Fluopyram is a preferred fungicide (column 4, lines 19-23). Clothianidin is a preferred is insecticide (column 4, lines 30- 32). The preferred bacterium is Bacillus firmus CNCM 1-1582 (column 5, lines 1-3; limitation of claim 18). The mixtures can include 3 or more active ingredients with Bacillus firmus and clothianidin as required ingredients (column 8, lines 22-27). The most specific combination c) comprises Bacillus firmus, thiodicarb and clothianidin (column 8, line 27). The compositions may demonstrate synergistic activity compared to the activity of the individual ingredients in the combination (column 10, lines 65-67). The compositions are used in methods of controlling of pests on a plant and improving yield of a plant (column 11, lines 3-35). With respect to claims 1 and 9, Pederson et al. teach pests treated with the compositions include Heterodera glycines, soybean cyst nematodes (column 12, lines 19-56). With respect to claim 5- 7, Pederson et al. teach the preferred propagation material is seed from plants selected from soybean, tobacco, cotton, potato, canola and peanut, including crops which have been transformed by recombinant DNA techniques (column 14, line 56; column 16, lines 4-43). The synergistically enhanced actions of the combinations result in lower pathogenic pest damage, lower rates of application, longer duration of action, an improvement in the growing characteristics and improve quality, yield and vigor (column 11, lines 8-67). With respect to claims 1 and 4, Pederson et al. teach that seed treatments are applied at a rate of 0.01-2 mg ai/seed, preferably 0.03-1.5 mg ai/seed depending on the crop, however the rates of A, B, C, D and E can vary depending on the specific agent and type of crop and are readily obtainable by a skilled person (column 19, lines 29-36). The mass ratio any two ingredients is selected to give synergistic action and include ratios ranging from 100:1 to 1:100, preferably 1:1 (column 18, lines 35 through column 19, lines 1-3).
Pedersen et al. do not show the specific combination of fluopyram, clothianidin and Bacillus firmus in a single formulation, however fluopyram is a preferred fungicide and clothianidin is a preferred insecticide that Pedersen et al. teach can be combined with Bacillus firmus. Pedersen et al. teach a specific combination c) comprises Bacillus firmus, thiodicarb and clothianidin. Therefore, it would have been prima facie obvious to swap out thiodicarb and replace it with fluopyram to formulate a 3 component formulation comprising an insecticide, a fungicide and the bacterium is Bacillus firmus with a reasonable expectation of success.
With respect to claims 1 and 20, Pederson does not specify 0.006 mg ai/seed of Bacillus firmus, however, Pederson teach Bacillus firmus is an optional ingredient and the rates of application can be varied to any effective amount that can be determined by trials and routine experimentation (column 19, lines 9-28).
Pedersen et al. do not teach controlling soybean cyst nematode resistance to one or more plant traits in soy seeds after a second generation of soybean cyst nematode and after the third generation of soybean cyst nematode (claims 10 and 11). Pedersen et al. also do not teach the specific plant trait is PI 88788 or Peking (claims 14-19). It is for this reason that al. is joined.
al. teach resistance to soybean mosaic virus (SMV) was identified in PI 88788 soybean which is used to provide resistance in soybean cyst nematode and have inheritance resistance (abstract). When PI 88788 was crossed with SMV-susceptible and SMV-resistant lines, such as Peking, were tested from generations 1 (G1) to generation 7 (G7) (page 688, paragraph 1-2). The resistance conditioned by recessive genes that interfere with viral movement and viral accumulation are observed (page 691, paragraph 4).
Both Pendersen et al. and al. are drawn to methods of treating soybean cyst nematodes.
Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Pedersen et al. and Gunduz et al. to combine fluopyram, clothianidin and Bacillus firmus together to aid in controlling Soybean cyst nematodes with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of the filing to combine the teachings of Pedersen et al. and Gunduz et al. to formulate a single formulation comprising fluopyram, clothianidin and Bacillus firmus because Pedersen et al. teach mixtures comprising 3 or more active ingredients including the specific combination of Bacillus firmus and clothianidin and add fluopyram is a preferred fungicide used in the formulation. Therefore, one of ordinary skill in the art would have been motivated to combine fluopyram, clothianidin and Bacillus firmus and form a single formulation that can be used to control pests and improve plant yield by acting as a fungicide and insecticide.
Furthermore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Pedersen et al. and al. to include treating PI 88788, or Peking soy seeds after 2 or 3 generations with fluopyram, clothianidin and Bacillus firmus with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of filing to combine the teachings of Pedersen et al. and Gunduz et al. to treat PI 88788 soybean seeds after the first, second or third generation because the Gunduz et al. teach that plant traits after 2 or 3 provide resistance in soybean cyst nematode and have inheritance resistance.
Response to Arguments
Applicant's arguments filed 2/6/2026 have been fully considered but they are not persuasive for the reasons set forth in the response to arguments above.
Applicant argues that Pederson and Gunduz fail to teach or make obvious the claims because Pederson requires the nematode-antagonistic biocontrol agent. The Examiner is not persuaded by this argument because the “comprising” language of the claim allows for the inclusion of other ingredients. Additionally, Pederson teaches synergistically enhanced actions of the combinations result in lower pathogenic pest damage, lower rates of application, longer duration of action, an improvement in the growing characteristics and improve quality, yield and vigour (column 11, lines 8-67). Therefore, Pederson provides sufficient motivation for one of ordinary skill in the art to combine a fungicide, such as fluopyram, with clothianidin and B. firmus in a single formulation and treating plants with the formulation to control pest resistance.
Applicant argues that the claimed invention exhibits unexpected results, namely a significant delay in resistance development to SCN traits. The Examiner is not persuaded by this argument because the claims are drawn to a composition and a method of improving plant growth and the data does not suggest an unexpected result commensurate in scope with the claims. The data is limited to showing that the SCN egg population for PI 88788 after 3 generations increases but there is no correlation to improved plant growth. Therefore, Applicant has failed to show unexpected results commensurate in scope with the claims.
Claims 12 and 13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Pederson et al. (9,149,044; October 6, 2015) in view of Gunduz et al. (Genetic and Phenotypic Analysis of Soybean mosaic virus Resistance in PI 88788 Soybean, The American Phytopathological Society, Vol. 94, No.7, 2004, pages 687-692),as applied to claims 1, 3-8, 10, 11 and 14-20, in further view of Klink et al. (Syncytium gene expression in Glycine max [PI 88788] roots undergoing a resistant reaction to the parasitic nematode Heterodera glycines, Plant Physiology and Biochemistry 48, 2010, pages 176-193).
Applicant claims a method of reducing, delaying and/or controlling resistance of a pest to one or more plant traits comprising treating a seed, a plant, or a plant part with one or more compositions comprising a) fluopyram and/or an oxide thereof; b) clothianidin; and c) Bacillus firmus. (claim 1) Applicant also claims PI 88788 soybean seed comprising a) fluopyram and/or an oxide thereof; b) clothianidin; and c) Bacillus firmus. (claim 19)
The teachings of Pederson et al. and Gunduz et al. are addressed in the above 103 rejection.
Pedersen et al. and Gunduz et al. do not teach plants carry one or more genes selected from Rhg 1 and Rhg4 (claims 12 and 13). It is for this reason that Klink et al. is joined.
Klink et al. teach soybean cyst nematodes is a major pathogen of soybeans with plant trait PI 88788 (abstract). The recessive genes involved in conferring resistance to soybean cyst nematodes include Rhgi and Rhg4 (page 177, paragraph 1).
Pendersen et al., Gunduz et al. and Klink et al. are drawn to methods of treating soybean cyst nematodes. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Pedersen et al., Gunduz et al. and Klink et al. to include treating PI 88788 soy plants carrying Rhg1 and Rhg4 genes with a reasonable expectation of success. One of ordinary would have been motivated at the time of the filing to combine the teachings of Pedersen et al., Gunduz et al. and Klink et al. to include plants with genes Rhg 1 and Rhg 4 because Klink et al. teach the plant traits Rhg1 and Rhg4 genes are associated with soy PI 88788 and were known to be involved in conferring resistance of soy to soybean cyst nematodes.
Response to Arguments
Applicant's arguments filed 2/6/2026 have been fully considered but they are not persuasive for the reasons set forth in the response to arguments above.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached on Monday-Friday 9:00 am-5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Patent Examiner
Art Unit 1617
