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 .
Response to Amendment
Applicant's argument filed May 20, 2026, in response to the non-final rejection, are acknowledged and have been fully considered. Any previous rejection or objection not mentioned herein is withdrawn.
Claims 1, 6-10, 12, 13, 18, 22-25, 41, 44 and 54-55 are pending of which claims 18, 22-25 and 41 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claims 1, 6-10, 12, 13, 44 and 54-55 are being examined on the merits.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 6-10, 12, 13, 44 and 54-55 are rejected under 35 U.S.C. 103 as being unpatentable over Randall Cush et. al. (US9192159B2), Pohl (from IDS, Antifungal free fatty acids: A Review, Science against microbial pathogens: communicating current research and technological advances, A. Mendez-Vilas (Ed.), pp 61-71) and Savage (US6103768). This is a new rejection based on the amendments filed on 05/20/2026.
Cush teaches a present invention provide microemulsions comprising azoxystrobin and propiconazole (see claim 1) which also includes at least one water-immiscible solvents which can be used include aliphatic hydrocarbons and such plant oils such as epoxidised coconut oil (see column 4, lines 8-9). Cush teaches that water-miscible solvents may be used alone or as co-solvents with water-immiscible solvents and teaches that solvents are present in an amount of from about 30% to about 75% weight of the microemulsion concentration (see lines 65-67, column 4). Cush also teaches diluting the azoxystrobin (see claim 1 and 16) in amounts to be present in the concentrate in an amount of from 0.1 (see lines 63-65, column 3).
Pohl’s general disclosure is to the antifungal, antibacterial, antimalarial properties of free fatty acids (see abstract)
Pohl teaches that the development of resistance of microbes, including fungi and yeasts, towards antimicrobial agents already in use, necessitates the search for alternative antimicrobials, including fatty acids and their derivatives. Although fatty acids may not be as effective as chemical fungicides, they pose less environmental risks. They are not only biodegradable, but exhibit a high degree of specificity. In addition, fatty acids are accepted food additives and importantly, pathogenic fungi are less likely to become resistant to antifungal fatty acids. The most important part of antifungal fatty acids is the cell membrane. They cause an increase in membrane fluidity, which will result in leakage of the intracellular components and cell death” (see abstract).
Pohl also teaches that the saturated fatty acid Octanoic (caprylic) acid is known to have antifungal activity to at least seven different fungi (see table 1). It is also known to those skilled in the art that coconut oil and epoxidized coconut oils contain caprylic acid.
Savage’s general disclosure is to “fatty acids and their derivatives to eradicate existing fungal and bacterial infections in plants. Also, described herein are combination treatments whereby fatty acids are used to enhance or augment the activity of fungicides, bactericides, and biological control agents” (see abstract).
Savage teaches fatty acids pesticides comprising of C5 to C19 being saturated or unsaturated (column 6, line 66 to column 7, line 18) and teaches the fatty acids are highly advantageous for pesticidal use because they occur commonly in nature and have little mammalian toxicity (column 5, lines 31-35). The fatty acids are disclosed to improve or compliment the activity of other fungicidal and bactericidal chemicals (column 5, lines 41-42; column 10, 45-54).
Regarding claims 6 and 54-55, pertaining to wherein the synergistic pesticidal composition has an FIC Index value of less than 0.75 or 0.5. Please note, since the Office does not have the facilities for examining and comparing Applicants’ composition with the composition of the prior art, the burden is on applicant to show a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Also, the prior art teaches the ranges at which the combined ingredients show the synergistic activity and thus at these ranges would exist the same FIC values as being claimed.
Furthermore, Savage teaches that combining fatty acids with fungicidal and bactericidal chemicals improves or compliments their activity, thus the instantly claimed composition would have been made obvious and the effects of combining those components would have been expected to be enhanced upon their combination.
With regards to the FIC value being less than 1, the prior art does not specifically teach that the combination of the azoxystrobin and saturated aliphatic acid would have this value, however the prior art teaches the claimed combination and to be within the claimed ranges. The prior art also recognizes that the fatty acid claimed is highly advantageous for pesticidal use because they occur commonly in nature and have little mammalian toxicity and improve or compliment the activity of other fungicidal and bactericidal chemicals.
Furthermore, it is well established that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). In Baxter, the court held that even when the prior art did not expressly disclose hemolysis-suppression feature or property of a blood bag plasticizer, such unrecognized feature or property is insufficient for rebutting a prima facie case of obviousness over a prior art blood bag that utilized the same plasticizer. Id. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious’).
Therefore it would have been obvious to persons having ordinary skill in the art before the effective filing date to combine a saturated aliphatic acid such as octanoic acid (caprylic acid) as the water-immiscible solvent which is also taught to come from plant oils such as coconut oil with that of azoxystrobin for creating a synergistic fungicidal composition as claimed, because Cush teaches using aliphatic hyrdorcarbons from plant oils as solvents for azoxystrobin formulations and teaches combining the solvent in amounts from 30-75% weight of the microemulsion. Optimizing the amount of azoxystrobin and solvent to be within the instantly ranges is well within the purview of any skilled artisan especially given the prior art as Cush teaches adding azoxystrobin in amounts as little as 0.1% and teaches diluting the active ingredient to emulsify and mix with functional solvents/co-solvents in much larger amounts of 30-75% weight of the emulsion. Pohl teaches that the most important part of antifungal fatty acids is the cell membrane. They cause an increase in membrane fluidity, which will result in leakage of the intracellular components and cell death. Specifically octanoic acid is known to be useful against at least seven different fungal species. Savage teaches the fatty acids are disclosed to improve or compliment the activity of other fungicidal and bactericidal chemicals and so using octanoic acid as a solvent for creating a synergistic pesticidal composition would have been prima facie obvious and the properties claimed would naturally flow from the combination of the two ingredients at the taught ranges.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The applicant is again advised to amend the claims to be commensurate in scope with the claim language and what they argue.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 6-10, 12, 18, 22-25, 44 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 7-9, 11, 16-17, 19, 22, 26 of copending Application No. US18/694,199 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application broadly claim the same ingredients which can be both azoxystrobin and octanoic acid for pesticide compositions. The claims also incorporate non-ionic surfactants which the present application describes being used in the instant specs at page 30 and it is unclear as to if the applicant may amend the claims to incorporate this component. Additionally the saturated and unsaturated aliphatic acids are also tested in the current application and these additional components would be obvious to incorporate given both applications. It cannot be anticipate how the applicant would amend these claims and thus these claims need to stand rejected.
Claims 1, 6-10, 12, 18, 22-25, 44 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 12, 18, 21-23, 26-27, 33, 35, 45-50 of copending Application No. US20210352895A1 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the claims of the instant application are already claimed within the pending Application No. US20210352895A1 and thus are anticipated. The pending Application No. US20210352895A1 claims a synergistic pesticidal composition comprising a pesticidal active ingredient and a C4-C10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof wherein a ratio of the concentrations of said pesticidal active ingredient and said C4-C10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof is between about 1:15000 and 15000:1. The instant application claims the same components however teaches a C6-C10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof and between about 1:5000 and 5000:1 which would be encompassed by the previous disclosure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1, 6-10, 12, 18, 22-25, 44 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6, 10, 12, 16-17, 19-20, 24, 30-31, 34-36 of copending Application No. US20220000107A1 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending Application No. US20220000107A1claims a synergistic pesticidal composition comprising a pesticidal active ingredient at least one nicotinic acetylcholine receptor disruptor or allosteric modulator; and a C6-C10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof wherein a ratio of the concentrations of said pesticidal active ingredient and said C4-C10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof is between about 1:15000 and 15000:1. The instant application claims the same C6-C10 aliphatic acid and pesticidal active ingredient and claims the ratios at 1:5000 and 5000:1 which are also encompassed by the co-pending application and thus would anticipate the co-pending application. The copending application discusses working examples of azoxystrobin (see at least example 8) and the claims may be amended to encompass the fungicide.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 6-10, 12, 44 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 6, 9, 12-14, 18, 22, 26, 30, 33, 41, 44-49 and 51, of copending Application No. US20200305425A1 in view of Savage (US6103768). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending Application No. US20200305425A1 claims a synergistic pesticidal composition comprising a pesticidal active ingredient and a C6-C10 unsaturated aliphatic acid wherein a ratio of the concentrations of said pesticidal active ingredient and said C6-C10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof is between about 1:10000 and 10000:1. The instant application claims the same components however teaches a C6-C10 saturated aliphatic acid or an agriculturally compatible salt thereof and between about 1:5000 and 5000:1 which would be encompassed by the previous disclosure. Both applications also teach the FIC values being less than 1 and teach the same pesticidal active ingredients. Both applications claim azoxystrobin.
Although the instant application claims saturated fatty acids as opposed to unsaturated fatty acids, this limitation would have been made obvious over Savage (US6103768). Savage teaches fatty acids pesticides comprising of C5 to C19 being saturated or unsaturated (column 6, line 66 to column 7, line 18) and teaches the fatty acids are highly advantageous for pesticidal use because they occur commonly in nature and have little mammalian toxicity (column 5, lines 31-35). The fatty acids are disclosed to improve or compliment the activity of other fungicidal and bactericidal chemicals (column 5, lines 41-42; column 10, 45-54).
Therefore, it would have been obvious to utilize the saturated fatty acids taught by Savage in the composition because both saturated and unsaturated fatty acids are known to be useful in pesticidal formulations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 6-10, 12, 44 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5, 8, 12-14, 18-21, 23, 25-28, 34-36 of copending Application No. US 20230000081 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending Application No. US20230000081A1 claims A synergistic pesticidal composition comprising a pesticidal active ingredient selected from the list comprising: benzovindiflupyr, bixafen, boscalid, cyproconazole, fenpicoxamid, fenpyrazimine, florylpicoxamid, flutriafol, fluxapyroxad, isopyrazam, isotianil, kresoxim-methyl, metrafenone, oxathiapiprolin, penflufen, penthiopyrad, picoxystrobin, prothioconazole, pydiflumetofen, revysol, sedaxane, trifloxystrobin, pyraclostrobin, azoxystrobin, chlorothalonil, cyprodinil, metalaxyl, epoxiconazole, propiconazole, difenoconazole, fludioxonil, mancozeb, tebuconazole, valifenalate, and combinations thereof; and a C4-C 10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof; wherein a ratio of the concentrations of said pesticidal active ingredient and said C4-C10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof is between about 1:15000 and 15000:1. These active ingredients, fatty acids and their specified amounts would be encompassed by the co-pending application and so would anticipate the co-pending application.
Claims 1, 6-10, 44, 54-55 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-36 of copending Application No. 17/789,486 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are directed to pesticidal compositions comprising of C4-C10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof and a pesticidal active ingredient which would overlap in scope with the C6-C10 saturated or unsaturated aliphatic acid being claimed instantly. The FIC values being claimed are the same and there exists formulations that would be inclusive of the different bonds formed between the active ingredients and from the different fungicides being claimed as these have all been described and listed out in both inventions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1, 6-10, 44, 54-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,839,212. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent 11,839,212 would include at least synergistic combinations of the same ingredients as being instantly claimed because both inventions are directed to pesticidal compositions having an insecticidal active ingredient and a C6-C10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof within the same overlapping ranges.
Claim 1, 6-10, 44, 54-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12501898. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent 12501898 would include at least synergistic combinations of the same ingredients as being instantly claimed because both inventions are directed to pesticidal compositions having an insecticidal active ingredient and a C6-C10 saturated or unsaturated aliphatic acid or an agriculturally compatible salt thereof within the same overlapping ranges. Additionally, the patented claims are directed to azoxystrobin (see base claim).
Response to Arguments
Applicant has previously argued that the provisional nonstatutory obviousness-type double patenting rejections be held in abeyance. This is noted; however, the rejection is still deemed proper and stands for the reasons of record.
Conclusion
Currently no claims are 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 JACOB ANDREW BOECKELMAN whose telephone number is (571)272-0043. The examiner can normally be reached Monday-Friday 8am-5pm.
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JACOB A BOECKELMANExaminer, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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