DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendments received 02/09/2026 have been entered. Claims 1, 8-10, 16-22, and 24-36 are pending. Any objection or rejection previously set forth in the Office Action mailed 11/07/2025 not maintained herein has been overcome and is withdrawn.
Examiner has considered Applicant’s arguments regarding the rejection of claims 1, 8-10, 15-22, and 24-35 under 35 U.S.C. 112(a) for failing to comply with the written description requirement and finds the arguments persuasive in part, specifically regarding the phrases “(S,S) configuration” and “(R,R) configuration”. The rejection is otherwise maintained in part as below.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-22 and 24-35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 16-22 and 24-35 recite or require the limitation “the compound”. It is unclear which compound is being referred to as claim 1 sets forth two compounds, formula (Ic) and formula (Ib).
Clarification and/or correction is required, no new matter is permitted.
Claim Rejections - 35 USC § 112(a)
Claims 1, 8-10, 16-22, and 24-35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “a compound in (R,R) configuration according to formula (Ib)” and the following:
PNG
media_image1.png
89
608
media_image1.png
Greyscale
These amendments constitute as new matter as they are not supported by the instant disclosure at the time of filing. The structure for B in formula (Ib) was not present in the instant disclosure at the time of filing, nor is there any description of formula (Ib) wherein B is phenyl substituted at carbons 2 and 4 by R11 and R12. Moreover, regarding the claimed enantiomeric ratio, Applicant points to page 4 of the specification which states “the ratio of the compound of formula (Ia) to its enantiomer (the compound of formula (Ib)) must be greater than 1:1”. This does not adequately describe the ratio of formula (Ic) to formula (Ib). Correction is required.
Claims 25 and 26 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for metalaxyl-M, sedaxane, thiamethoxam, and cyantraniliprole, does not reasonably provide enablement for fungicides and insecticides generally. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The claims are directed toward a method of treating infestation of corn plants by phytopathogenic microorganisms of genus Fusarium comprising applying a composition comprising an enantiomeric mixture of formula (Ic) and formula (Ib). Claims 25 and 26 are further directed toward additionally applying a second fungicide and an insecticide. The specification does not define that which is intended in the use of “fungicide” and “insecticide”. Moreover, Applicant does not set forth examples of particular species of fungicides and insecticides to be predictably combined with compounds of formula (Ic), except for in the working examples wherein metalaxyl-M, sedaxane, thiamethoxam, and cyantraniliprole are combined with Compound 1 (p. 11 of specification). The limitations “fungicide” and “insecticide” read on thousands of potential compounds that are neither supported nor contemplated by the instant disclosure, either by species alone or in combination with any of the claimed compounds.
Allowable Subject Matter
Claim 36 is allowed.
Response to Arguments
Applicant's arguments filed 02/09/2026 have been fully considered but they are not persuasive.
Regarding the rejection of claims 1, 8-10, 16-22, and 24-35 under 35 U.S.C. 112(a) for reciting new matter, Applicant argues that the structure of formula (Ib) appears at p. 3, line 35, and that the structure of B is implicitly supported by formula (Ia) and (Ib) existing as a racemate and that formula (Ic) depicts the enantiomer of B (p. 9-13 of Remarks). This is not persuasive. First, the disclosure of a genus encompassing a subgeneric limitation does not necessarily constitute adequate description of a subgenus. "Whatever may be the viability of an inductive-deductive approach to arriving at a claimed subgenus, it cannot be said that such a subgenus is necessarily described by a genus encompassing it and a species upon which it reads." In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972). Second, in terms of the structure of B as it pertains to formula (Ib), the instant specification discloses formula (Ic) (from which Applicant has apparently derived the structure of B) which is a subgenus of formula (Ia); formula (Ib); “B is a mono or di-halogen substituted phenyl” (p. 3, line 26); and that formula (I) is a racemic mixture of formula (Ia) and (Ib). Elements of these embodiments have been cherry-picked from the specification to set forth a subgenus of formula (Ib) wherein B is the specific moiety as below.
PNG
media_image2.png
146
378
media_image2.png
Greyscale
However, choosing elements from a “laundry list” does not constitute an adequate description of a narrower limitation. See, for example, Fujikawa v. Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996). Examiner additionally notes that claim 1 depicts formula (Ib) with substituents R1-R5 which are not supported by the disclosure as filed.
Examiner suggests amending claim 1 to be directed toward the species Fusarium graminearum and a composition comprising a compound of formula (Ic) rather than an enantiomeric mixture of formula (Ic) and (Ib).
Regarding the rejection of claims 25 and 26 under 35 U.S.C. 112(a) scope of enablement, Applicant argues that at least claims 1, 16, 21, and 24 are implicitly acknowledged to be enabled, and that claims 25 and 26 would be enabled absent evidence of inoperability of fungicides and/or insecticides generally (p. 13 of Remarks). This is not persuasive.
Claims 25 and 26 read on an incredibly broad array of agents that could be considered “insecticides” or “fungicides” in the art. The instant specification provides no guidance as to the scope of the intended function or identity of the claimed “insecticides” or “fungicides” generally, to the extent that the claims read on thousands of compounds, the majority of which may be inoperable in combination with the instant invention. Given that the chemical arts, including the development of insecticidal and fungicidal treatments, are considered to be unpredictable, one of ordinary skill in the art would not be able to readily practice the full scope of the claims in order to control infestation of corn plants by Fusarium graminearum in combination with compounds of formula (Ic) and/or (Ib) and another generic insecticide or fungicide when only a handful of insecticides or fungicides are contemplated and tested by the instant disclosure. Enablement for a single compound cannot provide enablement for the breadth of claims sought in arts which are unpredictable. Ex parte Hitzeman, 9 USPQ2d 1821 (BPAI 1987) (a single embodiment may provide broad enablement in cases involving predictable factors, but more is required in cases involving unpredictable factors, such as chemical or physiological activity); In re Shokal. 242 F.2d 771, 113 U.S.P.Q. 283, 285 (C.C.P.A. 1957) (a single species is seldom if ever, sufficient to support a generic claim); Lilnrer, 503 F.2d 1380, 183 USPQ 288 (CCPA 1974) (proof of utility for the preferred species does not necessarily establish the utility of the remaining members of the genus).
Furthermore, while it is not the function of the specification to specify impossible or inoperative species (In re Anderson, 176 U. S. P. Q. 331 (C.C.P.A. 1973); In re Angstadt, 190 U.S.P.Q. 214, 219 (C.C.P.A. 1976)), a rejection under the first paragraph of Section 112 is proper if the claims contain a significant number of seemingly inoperative embodiments. In re Corkill, 771 F.2d 1496, 226 U.S.P.Q. 1005 (Fed. Cir. 1985).
Examiner suggests amending claims 25 and 26 to recite the insecticides and/or fungicides as in claims 27-30, for which the claims are enabled.
Conclusion
Claim 36 is allowed. Claims 1, 8-10, 16-22, and 24-35 are rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE E BRAUN whose telephone number is (703)756-4533. The examiner can normally be reached M-F 8:30am-5:00pm ET.
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, Jeffrey Murray can be reached at (571) 272-9023. 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.
/M.E.B./Examiner, Art Unit 1624 03/26/2026
/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624