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 .
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, 5-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 7714140 (‘140) in view of Nagata (US20090137646), WO2012165511A1, and Forster et al. (US20090325802).
‘140 claims applicant’s compound (1) as a plant disease controlling agent. ‘140 does not claim treating the seeds of small grain cereals with the claimed compound or wherein the claimed compound is in combination with other actives for treating the claimed specific small grain cereals seeds. However, these deficiencies in ‘140 are addressed by Nagata.
Nagata teaches seed treatment as a method of applying the compositions comprising applicant’s compound (1) and further teaches wherein diseases which can be treated include wheat diseases/fungi known to cause wheat diseases, i.e. Puccinia recondita (which causes wheat leaf rust), Erysiphae graminis (causes powdery mildew), etc. (see [0045, seed treatment, submerged]; [0051]; [0010]; claims; examples). Nagata also teaches wherein compound (1) can be combined with other active agents, e.g. fungicides, insecticides, etc. ([0044]). Thus, because Nagata which is the application from which the patent ‘140 claims priority teaches that compound (1) is useful for treating the above organisms which cause wheat diseases and is useful for seed treatment it would have been obvious to use the compound 1 as taught by ‘140 to treat seeds of wheat to control diseases of wheat/wheat seeds because Nagata teaches the compounds can be applied to seeds and are useful for treating known fungal pathogens of wheat as discussed above which reads on claims 1, 5-7. Nagata also teaches wherein when the amount of active agent varies depending upon the kind of compound used, the disease of target, the tendency of infestation, the degree of damage, the condition of environment, the kind of formulation used, etc. and they specifically teach seed treatment as a mode of application ([0045]) and they teach wherein in the case of a dust or granule which is used per se the use amount is appropriately selected so that the active agent becomes 0.1 g to 5 kg per 10 acres and when used as an emulsifiable concentrate or wettable powder the use amount is appropriately selected so that the active agent becomes 0.1 ppm to 10,000 ppm ([0046-0047]).
Further because ‘140 in view of Nagata teaches the claimed method steps then it would obviously also be suppressing lodging damage of small grain cereals as claimed as this would happen by performing the claimed method steps (Claim 8) and further reads on the seeds that have been treated with compound (1) as claimed because Nagata teaches the compounds can be used by treating seeds with the compositions comprising compound (1) to control wheat fungal diseases which reads on treating wheat seeds with the claimed composition (which read on claim 9), especially since Forster teaches that the application of other fungicide treatments to seeds, specifically cereals seeds, more specifically wheat, barley, rye, oats, reduces lodging/increases lodging resistance ([0009]; Abstract; [0003-0009]; [0012]; [0013-0014]; [0018]). Thus, it would be obvious that by treating the seeds with the claimed composition would also obviously and/or be very likely to reduce lodging since seed treatment/coating with other fungicides was already known in the art to reduce lodging.
Regarding the limitation of the claimed compounds being applied to the seeds in amounts of from .01 to 10 g with respect to 1 kg of the seed of the small grain cereals, both of ‘140 and Nagata do not specifically teach wherein the amount of the claimed compound (1) applied to the wheat seeds (e.g. by submersion/immersion) is from 0.01 to 10 g with respect to 1 kg of the seed of the small grain cereals as is instantly claimed in claims 1, 5-9. However, this deficiency in ‘140 and Nagata is addressed by WO2012165511A1, especially since as discussed above Nagata teaches that the application amount varies depending upon the kind of compound used, etc. and as such can be readily optimized by one of ordinary skill in the art.
WO2012165511A1 (‘511) teaches applying applicant’s claimed dichloroisothiazole (1), which ‘511 refers to as Compound 1, to different small grain cereal seeds to those instantly claimed which reads on the claimed step of treating a seed of a small grain cereal(s), with at least one dichloroisothiazole compound, ‘511 specifically teaches treating rice seeds with effective amounts of the claimed dichloroisothiazole (1) to control fungal diseases, and wherein the claimed dichloroisothiazole (1) is applied to the seeds in amounts of 0.3 to 0.7 g per 150 g of rice seeds, which reads on the claimed amounts of 0.01 to 10 g per 1 kg of seeds of the small grain cereals (see claims; abstract; ~ paragraphs 6-8; see paragraph beginning with: On the other hand, 3-(3,4-dichloroisothiazol-5-ylmethoxy)-1,2-benzothiazole-1,1-dioxide..; Paragraph beginning with: That is the embodiment of the present invention is as follows…; Paragraph beginning: In the present invention, 3-(3,4-dichloroisothiazol-5-ylmethoxy)-1,2-benzothiazole-1,1-dioxide, which is a compound represented by the following formula;). Thus, it would have been obvious for one of ordinary skill in the art to optimize the amount of applicant’s claimed compound (1) being used to treat the weed seeds as taught by the combination of ‘140 and Nagata to be the newly claimed amounts of 0.01 to 10 g per 1 kg of seeds of the small grain cereals because it was already known in the art to treat other small grain cereals with amounts of compound (1) which read on the newly claimed ranges in order to control fungal diseases in other small grain cereals, e.g. rice. “[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).
Thus, the instantly claimed method(s) are obvious when taken in view of US7714140 (‘140) in view of Nagata (US20090137646), Forster, and WO2012165511A1 because it would have been obvious to optimize the amounts of compound (1) to be applied to the wheat seeds to control wheat fungal diseases because it was already known in the art to use the claimed compound in the claimed amounts to treat seeds to control fungal infections, specifically wheat diseases, which would obviously mean that wheat seeds are envisioned to be treated and as such it would be obvious to optimize the amounts of compound (1) used to treat wheat seeds as taught by the combination of ‘140 and Nagata especially since, “[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).
Claim Rejections - 35 USC § 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.
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.
Claim(s) 1, 5-7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2012165511A1 and JP2015044791.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claim 1, ‘511 teaches applying applicant’s claimed dichloroisothiazole (1), which ‘511 refers to as Compound 1, to different small grain cereal seeds to those instantly claimed which reads on the claimed step of treating a seed of a small grain cereal(s), with at least one dichloroisothiazole compound, specifically wherein the small grain cereal of ‘511 is rice, and it is rice seeds which are being treated with effective amounts of the claimed dichloroisothiazole (1) to control fungal diseases, and wherein the claimed dichloroisothiazole (1) is applied to the seeds in amounts of 0.3 to 0.7 g per 150 g of rice seeds, which reads on the claimed amounts of 0.01 to 10 g per 1 kg of seeds of the small grain cereals (see claims; abstract; ~ paragraphs 6-8; see paragraph beginning with: On the other hand, 3-(3,4-dichloroisothiazol-5-ylmethoxy)-1,2-benzothiazole-1,1-dioxide..; Paragraph beginning with: That is the embodiment of the present invention is as follows…; Paragraph beginning: In the present invention, 3-(3,4-dichloroisothiazol-5-ylmethoxy)-1,2-benzothiazole-1,1-dioxide, which is a compound represented by the following formula;).
Regarding claim 6, ‘511 teaches applying/treating the seeds with applicant’s dichloroisothiazole (1) by powder coating which reads on the claimed dust coating, smearing, spraying or immersing (see claim 1; Abstract; ~paragraphs 6-8; see paragraph beginning with: On the other hand, 3-(3,4-dichloroisothiazol-5-ylmethoxy)-1,2-benzothiazole-1,1-dioxide..; Paragraph beginning with: That is the embodiment of the present invention is as follows…; Paragraph beginning: In the present invention, 3-(3,4-dichloroisothiazol-5-ylmethoxy)-1,2-benzothiazole-1,1-dioxide, which is a compound represented by the following formula;).
Regarding claim 7, ‘511 teaches that applicant’s dichloroisothiazole (1) can be combined with other active agents selected from insecticides, fungicides, etc. used to control rice pests (see paragraph beginning with: Furthermore, in the present invention, if desired, another rice pest control agent…).
Regarding claim 9, ‘511 teaches seeds, specifically rice seeds, which are treated with the same amounts of applicant’s dichloroisothiazole (1), for controlling fungal diseases, specifically rice blast (see paragraph beginning with: The content ratio of Compound 1 in the drug is usually selected in the range of…; Paragraph beginning: The application amount of Compound 1 in the present inventiuon is about…; Paragraph beginning: In the present invention, 3-(3,4-dichloroisothiazol-5-ylmethoxy)-1,2-benzothiazole-1,1-dioxide, which is a compound represented by the following formula; Claims 1-5, particularly 1 and 4;).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1, 5-7, and 9, ‘511 does not teach wherein the seeds being treated are the specifically claimed types of small cereal seeds, e.g. wheat, barley, oats, rye, specifically wheat. Though as discussed above ‘511 does teach treating other small cereal seeds, specifically rice, with the claimed dichloroisothiazole (1) in order to control fungal diseases. However, this deficiency in ‘511 is addressed by ‘791.
‘791 teaches formulation comprising applicant’s formula (1) and an additional active agent, specifically for controlling pests, specifically fungal pests and which can be applied to seeds as a seed dressing (abstract; claims; see paragraph beginning with: “The pest control composition of the present invention…seed coatings…”; see sentence/section beginning with: “(4) A method in which the agrochemical composition according to any one of (1) to (4) is sprayed on seeds, tubers…or a horticultural crop.”; “wheat powdery mildew (Erysiphae graminis…)”). ‘791 further teaches wherein the fungal diseases to be controlled with the claimed compound of dichloroisothiazole (1) include wheat powdery mildew (Erysiphe graminis) and as such the seeds envisioned to be treated with the claimed dichloroisothiazole (1) obviously include wheat seeds (See section beginning with “specific diseases are listed as non-limiting examples…wheat powdery mildew (Erysiphae graminis…”). The examiner notes that wheat powdery mildew is the same disease taught to be treated in the instant application, for instance in test example 2 of the instant application. ‘791 further teaches that the active ingredient concentration can be appropriately changed depending on the form of the preparation, the method to be applied, the purpose, the timing, the location, the occurrence of pests, and the like. (See paragraph starting with, “The active ingredient concentration can be appropriately changed depending…”).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have used the claimed dichloroisothiazole (1) to treat other small grain cereal seeds, e.g. wheat via the claimed methods of immersion, spraying, dusting, etc. because it was already known in the art to treat the seeds of other cereals, specifically rice, with the same/claimed amounts of the claimed active agent dichloroisothiazole (1) via the same methods of application as is discussed above in order to control fungal pathogens and ‘791 obviously envisions controlling wheat powdery mildew which affects wheat and teaches treating seeds by spraying the seeds and as such obviously envisions treating wheat seeds, because you would have to be treating wheat and wheat seeds in order to control wheat powdery mildew, etc. Thus, it would be obvious to optimize the amount of applicant’s dichloroisothiazole (1) applied to seeds, specifically wheat seeds in order to control wheat powdery mildew because ‘791 teaches that the active ingredient concentration can be appropriately changed depending on the form of the preparation, the method to be applied, the purpose, the timing, the location, the occurrence of pests, and the like and it would have been obvious to start with known effective amounts used to treat other small cereal seeds, e.g. rice to control fungal pathogens, e.g. the amounts expressly taught by ‘511 and to then optimize the amounts used on other small cereals based on the combined teachings of ‘511 and ‘791 as discussed above.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that 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, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2012165511A1 (‘511), JP2015044791 (‘791), and Forster et al. (US20090325802).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claim 8, ‘511 teaches applying applicant’s claimed dichloroisothiazole (1) to different small grain cereal seeds to those instantly claimed which reads on the claimed step of treating a seed of a small grain cereal(s) with at least one dichloroisothiazole compound, specifically wherein the small grain cereal of ‘511 is rice, and it is rice seeds which are being treated with effective amounts of the claimed dichloroisothiazole (1) to control fungal diseases, and wherein the claimed dichloroisothiazole (1) is applied to the seeds in amounts of 0.3 to 0.7 g per 150 g of rice seeds, which reads on the claimed amounts of 0.01 to 10 g per 1 kg of seeds of the small grain cereals (see claims; abstract; ~ paragraphs 6-8).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claim 8, ‘511 does not teach wherein applicant’s dichloroisothiazole (1) is used to suppress lodging damage in the specifically claimed small grain cereals, e.g. wheat, barley, rye, and/or oats. However, this deficiency/deficiencies in ‘511 is/are addressed by ‘791 and Forster.
‘791 teaches formulation comprising applicant’s dichloroisothiazole (1) and an additional active agent, specifically for controlling pests, specifically fungal pests and which can be applied to seeds as a seed dressing (abstract; claims; see paragraph beginning with: “The pest control composition of the present invention…seed coatings…”; see sentence/section beginning with: “(4) A method in which the agrochemical composition according to any one of (1) to (4) is sprayed on seeds, tubers…or a horticultural crop.”; “wheat powdery mildew (Erysiphae graminis…)”). ‘791 further teaches wherein the fungal diseases to be controlled with the claimed compound of dichloroisothiazole (1) include wheat powdery mildew (Erysiphe graminis) and as such the seeds envisioned to be treated with the claimed dichloroisothiazole (1) obviously include wheat seeds (See section beginning with “specific diseases are listed as non-limiting examples…wheat powdery mildew (Erysiphae graminis…)…”). The examiner notes that wheat powdery mildew is the same disease taught to be treated in the instant application, for instance in test example 2 of the instant application. ‘791 further teaches that the active ingredient concentration can be appropriately changed depending on the form of the preparation, the method to be applied, the purpose, the timing, the location, the occurrence of pests, and the like. (See paragraph starting with, “The active ingredient concentration can be appropriately changed depending…”).
Forster teaches that the application of other fungicide treatments to seeds, specifically cereals seeds, more specifically wheat, barley, rye, oats, reduces lodging/increases lodging resistance ([0009]; Abstract; [0003-0009]; [0012]; [0013-0014]; [0018]).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious that the treated wheat seeds which are treated with the claimed amounts of applicant’s dichloroisothiazole (1) as taught by the combined prior art of ‘511 and ‘791 would obviously also be suppressing lodging whether or not it was previously recognized by the prior art because the combined prior art already teaches that it was known/obviously envisioned to treat wheat seeds with applicant’s dichloroisothiazole (1) because ‘791 teaches that it was known to use dichloroisothiazole (1) to treat seeds to control fungal pathogens/fungal diseases, specifically the instantly disclosed wheat powdery mildew (Erysiphae graminis) and wherein the it was known in the art to optimize the amount/concentration of active ingredient/dichloroisothiazole (1) depending on the form of the composition/preparation, the mode of application, the purpose (e.g. disease/fungal pathogen to be treated, plant/crop type being treated, etc.), the timing, the location, the occurrence of pests, etc. and it would be obvious to optimize the amounts of dichloroisothiazole (1) applied to the wheat seeds to fall within the claimed range because ‘511 teaches applying applicant’s claimed dichloroisothiazole (1) to different small grain cereal seeds to those instantly claimed specifically rice, with overlapping effective amounts of the claimed dichloroisothiazole (1) to control fungal diseases to the effective amounts instantly claimed, specifically amounts of 0.3 to 0.7 g per 150 g of rice seeds, which reads on the claimed amounts of 0.01 to 10 g per 1 kg of seeds of the small grain cereals.
It also would have been obvious that the claimed active steps as taught by the combination of prior art would also reduce lodging because the active steps of the claimed method were already known in the art as is taught by the combined references as discussed above and this is a result effective of the application step which is taught by/rendered obvious by the combined references. Further, because Forster teaches applying seed dressings/coatings to seeds which can comprise other fungicides were useful for reducing lodging of plants growing from the coated/treated seeds and as such one of ordinary skill in the art would obviously expect that other seed coatings/dressings comprising fungicides would also afford this property to the plants developing from the coated seeds and as such it would be obvious to try the seed coating methods taught by ‘511 and ‘791 in order to develop other fungicidal seed coatings which reduce lodging.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that 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, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 1, 5-7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jp2007211002A (‘002), JP2015044791 (‘791), and WO2012165511A1 (‘511).
Applicant’s claims are as discussed above
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1 and 5-6, ‘002 teaches applicant’s claimed dichloroisothiazole (3) (which ‘002 calls compound No. 1, see for instance table 1) is very useful for controlling small grain cereal diseases, specifically wheat fungal diseases, more specifically it has a high control rate against wheat blight and wheat powdery mildew (which are some of the same diseases instantly disclosed) and teaches the claimed active steps of the claimed method wherein the dichloroisothiazole (3) can be applied to seeds, which would broadly and/or obviously include wheat seeds, when the diseases being controlled are wheat fungal diseases by spraying (See abstract; claims; paragraph beginning with: “The plant disease control agent for agricultural and horticultural use according to the present invention can be used…”; Paragraph beginning with: “Next, specific diseases are given as non-limiting examples….wheat powdery mildew (Erysiphe graminis), wheat blight fungus (Septoria nodorum), wheat rust (Puccinia recondita)…” Paragraph beginning with: “The plant disease control agent for agricultural and horticultural use of the present invention has a high…”;).
Regarding claim 7, ‘002 teaches wherein the treating step can further comprise combining the claimed dichloroisothiazole (3) with at least one ingredient selected from insecticides or fungicides, etc. (see Paragraph beginning with: “Furthermore, the agricultural and horticultural plant disease control agent of the present invention includes, in the above-mentioned various preparation forms…”).
Regarding claim 9, because ‘002 teaches treating seeds with the claimed compounds and wherein the fungal diseases which are highly effectively controlled include wheat fungal diseases, ‘002 obviously envisions treating wheat seeds with the claimed compounds when they are controlling wheat diseases by the seed treatment that is disclosed, and as such also obviously envisions wheat seeds treated with the claimed dichloroisothiazole (3) (See abstract; claims; paragraph beginning with: “The plant disease control agent for agricultural and horticultural use according to the present invention can be used…”; Paragraph beginning with: “Next, specific diseases are given as non-limiting examples….wheat powdery mildew (Erysiphe graminis), wheat blight fungus (Septoria nodorum), wheat rust (Puccinia recondita)…” Paragraph beginning with: “The plant disease control agent for agricultural and horticultural use of the present invention has a high…”).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1, 5-7, and 9, ‘002 does not teach applying the claimed amounts of dichloroisothiazole (3) is from 0.01 to 10 g with respect to 1 kg of seeds of small grain cereals. However, this deficiency in ‘002 is addressed by ‘791 and ‘511.
‘791 teaches formulation comprising applicant’s dichloroisothiazole (1) and an additional active agent, specifically for controlling pests, specifically fungal pests and which can be applied to seeds as a seed dressing (abstract; claims; see paragraph beginning with: “The pest control composition of the present invention…seed coatings…”; see sentence/section beginning with: “(4) A method in which the agrochemical composition according to any one of (1) to (4) is sprayed on seeds, tubers…or a horticultural crop.”; “wheat powdery mildew (Erysiphae graminis…)”). ‘791 further teaches wherein the fungal diseases to be controlled with the claimed compound of dichloroisothiazole (1) include wheat powdery mildew (Erysiphe graminis) and as such the seeds envisioned to be treated with the claimed dichloroisothiazole (1) obviously include wheat seeds (See section beginning with “specific diseases are listed as non-limiting examples…wheat powdery mildew (Erysiphae graminis…)…”). The examiner notes that wheat powdery mildew is the same disease taught to be treated in the instant application, for instance in test example 2 of the instant application. ‘791 further teaches that the active ingredient concentration can be appropriately changed depending on the form of the preparation, the method to be applied, the purpose, the timing, the location, the occurrence of pests, and the like (See paragraph starting with, “The active ingredient concentration can be appropriately changed depending…”).
‘511 teaches applying applicant’s claimed dichloroisothiazole (1) to different small grain cereal seeds to those instantly claimed which reads on the claimed step of treating a seed of a small grain cereal(s) with at least one dichloroisothiazole compound, specifically wherein the small grain cereal of ‘511 is rice, and it is rice seeds which are being treated with effective amounts of the claimed dichloroisothiazole (1) to control fungal diseases, and wherein the claimed dichloroisothiazole (1) is applied to the seeds in amounts of 0.3 to 0.7 g per 150 g of rice seeds, which reads on the claimed amounts of 0.01 to 10 g per 1 kg of seeds of the small grain cereals (see claims; abstract; ~ paragraphs 6-8).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have developed the instantly claimed method of controlling fungal diseases in small grain cereals, specifically the claimed small grain cereals, by treating a seed of the small grain cereals with at least one of the claimed dichloroisothiazole compounds because it was already known in the art to treat seeds of small grain cereals, specifically rice (‘511) and obviously wheat seeds when ‘002 teaches treating wheat fungal diseases, with the claimed dichloroisothiazoles to control these fungal diseases, and wherein seed treatment is an expressly taught method of applying/using the composition to control these wheat fungal diseases. Additionally, it would have been obvious to optimize the amount of the dichloroisothiazole compound applied to treat the seeds to the claimed amounts because ‘511 teaches that overlapping amounts/amounts which read on the claimed amounts were known to be useful for treating other small grain cereals, i.e. rice, to control fungal pathogens and it would have been obvious to optimize the amounts taught by ‘511 to be the same amounts claimed for treating the claimed small grain cereals because ‘791 teaches that the active ingredient concentration can be appropriately changed depending on the form of the preparation, the method to be applied, the purpose, the timing, the location, the occurrence of pests, and the like, and the courts have previously determined that, “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). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a). Further it would be obvious to use the claimed amounts as are taught by ‘511 as a starting point for determining the claimed effective amounts because these are already known effective amounts for treating other small grain cereals, i.e. rice and as such would be an obvious starting point for determining effective amounts for treating other small grain cereal seeds in order to control fungal diseases in these seeds/plants especially since the active agents were already known to be effective for treating fungal diseases of wheat, etc. via seed application as per ‘002 and the combined references.
From the teachings of the references, it is apparent that 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, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2007211002A (‘002), JP2015044791 (‘791), WO2012165511A1 (‘511), and Forster (US20090325802).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claim 8, ‘002 teaches applicant’s claimed dichloroisothiazole (3) (which ‘002 calls compound No. 1, see for instance table 1) and teaches the claimed active steps of the claimed method wherein the dichloroisothiazole (3) can be applied to the seeds, e.g. wheat seeds in order to control wheat diseases by spraying, and is very useful for controlling small grain cereal diseases, specifically wheat fungal diseases, more specifically it has a high control rate against wheat blight and wheat powdery mildew (See abstract; claims; paragraph beginning with: “The plant disease control agent for agricultural and horticultural use according to the present invention can be used…”; Paragraph beginning with: “Next, specific diseases are given as non-limiting examples….wheat powdery mildew (Erysiphe graminis), wheat blight fungus (Septoria nodorum), wheat rust (Puccinia recondita)…” Paragraph beginning with: “The plant disease control agent for agricultural and horticultural use of the present invention has a high…”).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claim 8, ‘002 does not teach wherein applicant’s dichloroisothiazole (3) is used to suppress lodging damage in the specifically claimed small grain cereals, e.g. wheat, barley, rye, and/or oats in the instantly claimed amounts. However, this deficiency/deficiencies in ‘002 is/are addressed by ‘791, ‘511, and Forster.
‘791 teaches formulation comprising applicant’s dichloroisothiazole (1) and an additional active agent, specifically for controlling pests, specifically fungal pests and which can be applied to seeds as a seed dressing (abstract; claims; see paragraph beginning with: “The pest control composition of the present invention…seed coatings…”; see sentence/section beginning with: “(4) A method in which the agrochemical composition according to any one of (1) to (4) is sprayed on seeds, tubers…or a horticultural crop.”; “wheat powdery mildew (Erysiphae graminis…)”). ‘791 further teaches wherein the fungal diseases to be controlled with the claimed compound of dichloroisothiazole (1) include wheat powdery mildew (Erysiphe graminis) and as such the seeds envisioned to be treated with the claimed dichloroisothiazole (1) obviously include wheat seeds (See section beginning with “specific diseases are listed as non-limiting examples…wheat powdery mildew (Erysiphae graminis…)…”). The examiner notes that wheat powdery mildew is the same disease taught to be treated in the instant application, for instance in test example 2 of the instant application. ‘791 further teaches that the active ingredient concentration can be appropriately changed depending on the form of the preparation, the method to be applied, the purpose, the timing, the location, the occurrence of pests, and the like (See paragraph starting with, “The active ingredient concentration can be appropriately changed depending…”).
‘511 teaches applying applicant’s claimed dichloroisothiazole (1) to different small grain cereal seeds to those instantly claimed which reads on the claimed step of treating a seed of a small grain cereal(s) with at least one dichloroisothiazole compound, specifically wherein the small grain cereal of ‘511 is rice, and it is rice seeds which are being treated with effective amounts of the claimed dichloroisothiazole (1) to control fungal diseases, and wherein the claimed dichloroisothiazole (1) is applied to the seeds in amounts of 0.3 to 0.7 g per 150 g of rice seeds, which reads on the claimed amounts of 0.01 to 10 g per 1 kg of seeds of the small grain cereals (see claims; abstract; ~ paragraphs 6-8).
Forster teaches that the application of other fungicide treatments to seeds, specifically cereals seeds, more specifically wheat, barley, rye, oats, reduces lodging/increases lodging resistance ([0009]; Abstract; [0003-0009]; [0012]; [0013-0014]; [0018]).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have to have developed the instantly claimed method comprising the steps of applying the claimed compound(s) (3) and/or (1) to the claimed small grain cereal seeds, specifically wheat seeds, as the active step of the claimed method because it was already known in the art to apply the claimed compound(s), specifically applicant’s compounds (1) and (3) to wheat and/or wheat seeds in order to control fungal diseases in the wheat (‘002 and ‘791) and it would have been obvious to optimize the amount of the active compound of formula (3) and/or (1) which is being applied to the seeds because it was known in art to apply the claimed compounds to other small grain cereals in the claimed amounts and/or amounts which read on/overlap the claimed amounts as is taught by ‘511, and it was also known to optimize/appropriately change the concentration of the active agent depending on the form of the preparation, the method to be applied, the purpose, the timing, the location, the occurrence of pests, and the like (See paragraph starting with, “The active ingredient concentration can be appropriately changed depending…”). Because it is known, “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). It also would have been obvious that the claimed method would also reduce lodging because the active steps of the claimed method were already known in the art as is taught by the combined prior art above and because Forster teaches that applying seed dressings/coatings to seeds which can comprise other fungicides were useful for reducing lodging of plants growing from the seeds and as such one of ordinary skill in the art would obviously expect that other seed coatings/dressings comprising fungicides would also afford this property to the plants developing from the coated seeds.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that 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, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 1, 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN107027773 and WO2012165511A1.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1 and 5, ‘773 teaches combinations comprising dichlobentiazox which is applicants dichloroisothiazole (1) and teaches applying the composition to seeds in amounts of 0.0001 to 1kg/100kg of seeds and wherein the combinations are useful for controlling fungal diseases, specifically fungal diseases in wheat, e.g. wheat powdery mildew, wheat black smut, wheat stalk black powdery mildew, when leaf rust, wheat stem rust, etc. and as such would obviously envision applying their compositions to wheat seeds as claimed (see abstract; paragraph beginning: “The composition of the invention can be used in various methods, The use; and spraying in a conventional manner…or seed treatment…; see paragraph beginning with: specific examples can be mentioned as some representative composition for plant diseases…through the paragraph ending with rice weevil…and the like).
Regarding claim 7, ‘773 teaches wherein their combination comprising dichlobentiazox also comprises isotianil which is an additional fungicide and as such reads on claim 7 and further comprises at least one additional fungicide or insecticide (See abstract).
Regarding claim 8, ‘773 does not specifically teach a method for suppressing lodging damage of small grain cereals. However, as discussed above ‘773 broadly teaches treating wheat seeds with the claimed amounts of the claimed dichloroisothiazole (1) as is discussed above because they teach treating seeds for controlling fungal infections with the claimed amounts of dichlobentiazox and they specifically teach controlling wheat fungal diseases and as such obviously envision treating wheat seeds with their compositions and by performing the method steps of treating the seeds with the claimed amounts of the claimed active agents would obviously lead to the claimed suppressing lodging damage (see abstract; paragraph beginning: “The composition of the invention can be used in various methods, The use; and spraying in a conventional manner…or seed treatment…; see paragraph beginning with: Specific examples can be mentioned as some representative composition for plant diseases…through the paragraph ending with rice weevil…and the like).
Regarding claim 9, because ‘773 teaches controlling wheat diseases via applying combinations comprising the claimed dichlobentiazox/dichloroisothiazole (1) to seeds or crops to control wheat fungal diseases as discussed above, it is obviously also treating wheat seeds to control these diseases and would also obviously envision/include/read on the claimed wheat seeds treated with the claimed amounts of dichlobentiazox (see abstract; paragraph beginning: “The composition of the invention can be used in various methods, The use; and spraying in a conventional manner…or seed treatment…; see paragraph beginning with: Specific examples can be mentioned as some representative composition for plant diseases…through the paragraph ending with rice weevil…and the like).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
‘773 does not teach wherein the seeds are treated by spraying or the other means with the claimed dichlobentiazox. However, as discussed above ‘773 does teach wherein the compositions can be applied to seeds in the claimed amounts. However, this deficiency in ‘773 is addressed by ‘511.
Regarding claim 6, ‘511 teaches applying/treating the seeds with applicant’s dichloroisothiazole (1) by powder coating which reads on the claimed dust coating, smearing, spraying or immersing (see claim 1; Abstract; ~paragraphs 6-8; see paragraph beginning with: On the other hand, 3-(3,4-dichloroisothiazol-5-ylmethoxy)-1,2-benzothiazole-1,1-dioxide..; Paragraph beginning with: That is the embodiment of the present invention is as follows…; Paragraph beginning: In the present invention, 3-(3,4-dichloroisothiazol-5-ylmethoxy)-1,2-benzothiazole-1,1-dioxide, which is a compound represented by the following formula;).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have treated the seeds of ‘773 by the claimed smearing, spraying, etc. as is instantly claimed because these are conventional means of applying compositions to seeds as is taught by ‘551.
It also would have been obvious to one of ordinary skill in the art to develop the claimed methods and treated seeds when looking to ‘773 because ‘773 teaches treating seeds with overlapping amounts of the claimed dichloroisothiazole (1) and wherein the combination comprising applicant’s dichloroisothiazole (1)/dichlobentiazox is useful for treating/controlling wheat fungal diseases, including wheat downy mildew, etc. Thus, it would be obvious to one of ordinary skill in the art to treat wheat and wheat seeds with the claimed amounts of the claimed active agents in order to control these infections and also suppress lodging because ‘773 broadly teaches the claimed active steps as is discussed above and obviously envisions treating wheat seeds and wheat in order to control the wheat fungal infections that they report controlling in their disclosure.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that 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, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
Applicant’s arguments with respect to the double patenting rejection over US7714140 were considered but are not persuasive at this time. Specifically, applicants argue that the double patenting rejection over US7714140 is improper because the claims of US7714140 are not obvious over the copending claims and that the obviousness rejection can only be the instant claims compared to the claims of ‘140, specifically applicant’s argue that obviousness double patenting is similar to, but not necessarily the same as that for a 103 rejection. The examiner notes that in obviousness double patenting rejections it is the claims of ‘140 in view of prior art together that are used to render obvious the instant claims and which make a proper obviousness double patenting rejection.
Applicants first argue that the instant claim is directed to a method for controlling a small grain cereals disease, and claim 8 is directed to a method for suppressing lodging and both claims recite a treating step, specifically “treating a seed of a small grain cereals with at least one dichloroisothiazole compound or salt thereof…” and applicant’s argue that this step is not recited by US7714140, and further argue that US7714140 does not recite the specifically claimed dichloroisothiazole compounds (1), etc. or when the specifically claimed dichloroisothiazole are applied in the specifically claimed amounts to the specifically claimed seeds. The examiner respectfully disagrees with applicant’s arguments, specifically because US7714140 specifically claims that applicant’s dichloroisothiazole (1) is useful for controlling agricultural and horticultural plant diseases which are not limited in scope (see claims 1-6) and specifically claims compositions comprising applicant’s dichloroisothiazole (1) in agricultural or horticultural plant disease controlling agent(s) as claim 3 clearly envisions applicant’s dichloroisothiazole (1) as one of 4 possible compounds which is claimed in claim 3 and then they clearly claim agricultural and horticultural plant disease controlling agents containing as an active ingredient the compounds according to claim 3 which is only 4 compounds and as such the claimed dichloroisothiazole (1) is clearly envisioned.
Secondly, the examiner respectfully points out that as discussed above and herein the instant double patenting rejection is an obviousness double patenting and as such the double patenting rejection is not solely over US7714140, but is actually over US7714140 in view of US20090137646 and the other secondary references. Specifically, applicant’s argue that because US20090137646 is the PGPub from which US7714140 claims priority that it cannot cure deficiencies in US7714140. The examiner respectfully disagrees because it is the claims from ‘140 which are being used whereas US20090137646 qualifies as prior art and is being used for its disclosure and as such not everything in the disclosure is in the claim