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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/16/26 has been entered.
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 formulations 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, 5-9 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 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
Applicants did not file any new arguments with their request for continued examination. Applicant’s amendments to the claims did overcome the rejection with respect to the compound of formula (3) which is hereby withdrawn. As applicant’s did not file new arguments the examiner will address the arguments from the response after-final, filed 04/15/26, which were considered again but are still not persuasive at this time.
Applicant’s first argue the double patenting rejections and that their amendments would overcome the examiner previous issues with applicants results not being commensurate in scope. The examiner appreciates applicant’s amendments to make their claims more commensurate in scope with their argued unexpected results. However, the examiner believes that applicant’s claims still have issues with obviousness and the prior art of record. Because as discussed above Nagata already teaches seed treatment as a method of applying the compositions comprising applicant’s compound (1), which is applicant’s now claimed compound, 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 instant compound (1) which is applicant’s now claimed compound 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 still 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. 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]). Thus, contrary to applicants arguments, the unexpected results are still not enough to overcome the obviousness taught by the prior art which specifically teaches using the claimed compound which can be applied to seeds to treat fungal pathogens that cause known wheat diseases and as such it would be obvious to use this active on wheat seeds to treat phytopathogenic fungi which are known to infect wheat and for which the claimed compound is known to have fungicidal activity as is taught by Nagata when applied to seeds. Applicants argue that their additional examples show that not all 1,2-benzisothiazole derivatives disclosed as plant disease controlling agents in the art are highly applicable to seed treatment for small grain cereals. The examiner respectfully points out that applicants are claiming a specific compound which is disclosed in the prior art as exhibiting fungicidal activity against a variety of phytopathogenic organisms including fungal diseases of wheat and is taught in the prior art to be applied to seeds in the same/overlapping amounts to those instantly claimed. As such the examiner maintains that it would have been obvious for one of ordinary skill in the art to expect the claimed method to work based on the teachings of Nagata as discussed above. Thus, it appears that applicants argued results are a difference in degree rather than a difference in kind. That is to say that the claimed compound works better on seeds for wheat treatment than other compounds tested by applicants. However, the prior art Nagata teaches that this compound is useful for treating seeds of other small grains, e.g. rice, at the same application rates and Nagata teaches wherein diseases which can be treated with the claimed compound include the claimed fungal 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 teaches that compound (1) is useful for treating/controlling the above organisms which cause wheat diseases and is useful for seed treatment, the examiner maintains that it would have been obvious to use the compound 1 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 and Nagata teaches 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]). The examiner notes that while applicants only argued for disease control via seed treatment the claims are not limited to only this method and the rejections of claims 8 and 9 are maintained for the reasons discussed above as they were not argued by applicants.
Thus, the examiner respectfully disagrees with applicants arguments at this time and maintains the double patenting rejection for the above reasons.
Regarding the arguments with respect to the 103 rejection, the examiner notes that while applicant's do have data showing that the claimed compound has high/good activity against small grain cereals, e.g. wheat, etc. when applied by seed treatment as compared to foliage treatment and the claims now being made commensurate in scope with these results is appreciated by the examiner, this was not the only issue to be addressed with respect to applicant’s claims as the examiner also previously noted for instance in response to the arguments with respect to the rejection over CN107027773A and in the discussion of the declaration results filed 09/05/25, that CN107027773A teaches seed treatment with the claimed compound 1/dichlorbentiazox in amounts which overlap those claimed and wherein the seeds treated can be wheat seeds to control the same fungal wheat diseases instantly disclosed/claimed (e.g. wheat powdery mildew (Blumeria graminis)) was known in the art and the examiner stated in the response to arguments against this rejection CN107027773A and in the discussion of the declaration that the argued unexpected results did not appear to be sufficient to overcome the obviousness rejection not only because they were not commensurate in scope at that time, but also because the prior art CN107027773A already teaches that it was known to use applicant's claimed compound 1 in a seed treatment for various crop seeds, including wheat seeds, to control the same diseases instantly claimed/disclosed. While applicants have amended their claims to be more commensurate in scope with their argued results, the amendments still do not place the claims in condition for allowance because this was not the only issue with the previous claims as was noted in the advisory action and in the response to arguments in the previous final rejection the examiner also noted that CN107027773A already teaches treating seeds with the claimed compound 1 to control diseases in crops including the claimed/ disclosed wheat diseases then CN107027773A is obviously being used on wheat seeds to control these wheat diseases and would obviously already be achieving the argued unexpected results whether or not these results were specifically recognized by CN107027773A, because CN107027773A teaches treating seeds to control various diseases including the claimed/disclosed wheat diseases, e.g. wheat powdery mildew (Blumeria graminis), and therefore this prior art obviously envisions treating wheat seeds. Thus, whether or not applicants have compared their prior art to Nagata, etc. these argued unexpected results still do not appear to be actually unexpected based on the teachings of CN107027773A in view of '551, for instance, which together teach that dichlorbentiazox/applicant's compound 1 is effective for treating seeds in the claimed/overlapping amounts to control wheat diseases including wheat powdery mildew (Blumeria graminis), and as such clearly envisions teaching wheat seeds to control these diseases and as such applicants argued unexpected results would be occurring when CN107027773A's dichlorbentiazox containing compositions are used on wheat seeds to control wheat diseases which are disclosed in a list of diseases which can be treated and as such, it does not appear that applicant's argued unexpected results are actually unexpected in light of the teachings of CN107027773A (in view of '551) as was previously explained.
Applicants also further argue that compound 5 from Nagata ‘140 and Nagata ‘646 exhibits much lower control effects and that applicant’s results are unexpected when looking at additional test examples 3-1 and 3-2 which demonstrate that applicant’s compound (1) exhibits remarkably high control effects against small grain cereal diseases when applied at the claimed rates. The examiner respectfully disagrees that these results are unexpected in light of the teachings as discussed above in the rejection and with respect to this argument which was made in the arguments to the double patenting rejection and is addressed above.
Applicants also note that in their additional test example 2 in the declaration that seed treatment with compound 1 did not cause phytotoxicity to the seeds of small grain cereals. This is result effective of the application of the active to the seeds which is taught/rendered obvious by the prior art as discussed in each of the rejections above. Specifically, as discussed above Nagata teaches seed treatment as a method of applying the compositions comprising applicant’s compound (1) (now applicant’s claimed compound) 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 teaches that compound (1) is useful for treating/controlling the above organisms which cause wheat diseases and is useful for seed treatment it would have been obvious to use the compound 1 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]), and as discussed above CN107027773A already teaches treating seeds with the claimed compound 1 to control diseases in crops including the claimed/ disclosed wheat diseases then CN107027773A is obviously being used on wheat seeds to control these wheat diseases and would obviously already be achieving the argued unexpected results whether or not these results were specifically recognized by CN107027773A, because CN107027773A teaches treating seeds to control various diseases including the claimed/disclosed wheat diseases, e.g. wheat powdery mildew (Blumeria graminis), and therefore this prior art obviously envisions treating wheat seeds with the claimed compound to control the claimed small grain fungal diseases, e.g. wheat fungal diseases. Thus, CN107027773A in view of '551, as discussed above, together teach that dichlorbentiazox/applicant's compound 1 is effective for treating seeds in the claimed/overlapping amounts to control wheat diseases including wheat powdery mildew (Blumeria graminis), and as such clearly envisions teaching wheat seeds to control these diseases and as such applicants argued unexpected results would be occurring when CN107027773A's dichlorbentiazox containing compositions are used on wheat seeds to control wheat diseases which are disclosed in a list of diseases which can be treated and as such, it does not appear that applicant's argued unexpected results are actually unexpected in light of the teachings of CN107027773A (in view of '551) as was previously explained. Thus, respectfully the examiner believes that applicant’s argued unexpected results are not really unexpected when taken in view of the combined teachings of the prior art as discussed above and incorporated herein at this time.
Applicants then argue that their additional test examples 3-1 and 3-2 compare compound 5 disclosed in Nagata with compound 1 that is instantly claimed which is also disclosed in Nagata as compound 1. Applicant’s argue that their compound 1 which again the examiner points out is taught by Nagata, show that a seed treatment exhibited high control effects against both of wheat powdery mildew and wheat septoria blotch as compared to the control and compound 5 exhibited lower control than compound 1. The examiner respectfully points out the method is for effectively controlling small grain cereals diseases in wheat, and Nagata teaches that their treatments can be seed treatments for effective control of wheat fungal diseases with compound 1 (and the combined prior art) which together teach the claimed methods and still render obvious the claimed methods for the reasons discussed above and incorporated herein.
Applicants then argue that seed treatment is more likely to cause crop injury. The examiner respectfully points out that applicants have not demonstrated any unexpected results with the claimed compounds regarding seed/crop injury. Do the instantly claimed compounds cause significantly less injury than other structurally similar dichloroisothiazoles? The prior arts Nagata and CN107027773A for instance as discussed above clearly envision seed treatment with the claimed compound (1) and other dichloroisothiazoles and teaches wherein these compounds are useful for controlling small grain cereal diseases, specifically fungal diseases of wheat, and as such one would obviously readily envision that wheat seeds, e.g. applicant’s claimed small grain cereal seeds, can be treated with the compounds/compositions comprising these compounds to control small grain cereal fungal diseases as has been discussed above.
Applicants argue that just because the compounds have demonstrated effectiveness in controlling fungal diseases with foliage treatment does not mean that it is also effective in a seed treatment. The criteria for obviousness is a reasonable expectation of success not an absolute guarantee of success. In the instant case, the combination of the prior arts as set forth in the rejections above teach that seed treatments with the claimed compound (1)/applicant’s claimed compound are envisioned, and the diseases to be treated and controlled with the claimed dichloroisothiazoles, e.g. cmpd (1) include the claimed/disclosed small grain cereal fungal diseases, specifically wheat fungal diseases. Thus, in order to control these diseases seed treatment is disclosed and as such would obviously be envisioned by one of ordinary skill in the art based on the teachings of of the prior art as discussed above with a reasonable expectation of success since seed treatment is expressly disclosed as a means of applying/administering the claimed active compound to plants/plant parts.
Thirdly, applicants argue on pg. 8 and with respect to their declaration, that the declaration and comparative results demonstrate that not all 1,2-benzoisothiazole derivatives which are used as plant disease controlling agents are useful for wheat seed treatment. The examiner respectfully points out that this declaration has some issues which are discussed with respect to the declaration below. Further, the prior art, e.g. ‘791, specifically teaches/exemplifies the claimed compounds, specifically compound (1), and teaches wherein these compounds are broadly useful for treating wheat seeds to control fungal disease in wheat as discussed above, and further the comparison compounds are not single variable comparison compounds but are in fact compounds which have multiple structural differences from the instant compound to which they are being compared and as such the comparison data would be expected to be different/yield different results as was previously discussed when the examiner initially addressed this declaration.
Thus, 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 as is discussed above.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIN E HIRT/Primary Examiner, Art Unit 1616
Prosecution Insights