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 .
DETAILED ACTION
Response to Amendment
Acknowledgment is made of the receipt and entry of the amendment filed on 07/11/2025. Claims 1, 5-7 and 13-14 rejected under 35 U.S.C. §102 (a)(1) and (a)(2) as being anticipated by YAO et al. (WO 2016/109301 A1) are withdrawn in light of amendment to claim 1.
Election/Restriction
Applicant elected with traverse of Group I, drawn to a fungicidal composition comprising a mixture of component (A) and (B), and the species of (A) and (B) having following structure(s), in the reply filed on 12/02/2024.
PNG
media_image2.png
194
569
media_image2.png
Greyscale
As noted in last office action, although the elected component A (i.e. metarylpicoxamid), CAS # 2376210-14-7 is encompassed by general formula I, the structure of the elected component species are NOT explicitly disclosed or identified in working examples of fungicidal mixtures in instant specification.
PNG
media_image3.png
795
965
media_image3.png
Greyscale
The instant elected component (B), N-methoxy-N-[[4-[5-(trifluoromethyl)-1,2,4-oxadiazol-3-yl]phenyl]methyl]cyclopropanecarboxamide, CAS # 2093177-34-3 (See STN search Note), has following structure:
PNG
media_image4.png
399
726
media_image4.png
Greyscale
Claims 1, 5-14, 17-26 and 28 read on the elected invention/species.
Claim 3-4 recite component (A) species that do not read on the elected component A species, and remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claims 15-16 and 27 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The fungicidal composition comprising enantiomer of the elected species component(A) and elected component (B), or non-elected component(B) species (e.g. inpyrfluxam, benzovindiflupyr, pydiflumetofen, etc. ) remain rejected under following 102 and 103 rejections. Other non-elected species are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected species. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species.
Status of Claims
Claims 1, 3-28 are pending in the instant application.
Claims 3-4,15-16 and 27 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim.
Claims 1, 5-14, 17-26 and 28 are currently under examination.
Action Summary
Applicant's Remarks filed 07/11/2025 have been fully considered. Any objection and rejection found in the previous Office Action and not repeated herein has been withdrawn in view of amendment and Applicant’s remarks. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant's argument are fully considered. Claims 1, 5-7 and 13-14 rejected under 35 U.S.C. §102 (a)(1) and (a)(2) as being anticipated by YAO et al. (WO 2016/109301 A1) are withdrawn in light of amendment to claim 1. Claims 1, 5-14 and 17-21 are now rejected under 35 U.S.C. §103 as being obvious over YAO, necessitated by amendment.
Maintained Rejections ( See Response to Argument following rejections):
1) Claims 1, 5-14, 17-26 and 28 are rejected as Improper Markush Grouping;
2) Claims 1, 5-14, 17-26 and 28 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement;
3) Claims 1, 5-7, 13-14, 17-22, 26 and 28 are rejected under 35 U.S.C. §102 (a)(2) as being anticipated by Loy et al. ( WO 2019/173665 A1).
4) Claims 1, 5-14, 17-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Loy et al. (WO 2019/173665 A1).
5). Claims 1, 5-14, 17-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Loy et al. (WO 2019/173665 A1), in view of Stierli et al. (WO 2017055473 A1, family member of US 10899724 B2/ US 20180273494 A1).
6). Double patenting rejections over US patent Nos.11974572, 10899724, 11066375, 10501425 and 11180462, in view of Loy are maintained since Loy anticipate instant claim 1. Double patenting rejections over US patent Nos. 11291205, 11395489, 11535594 and 11629138, in view of Stierli are maintained.
Applicant’s argument regarding double patenting rejections over US patent No 11291205 is NOT persuasive. Reference claims are directed to picolinamide compound of Formula I that are very similar to instantly claimed component (A) wherein instant R3 and R4 together with the carbon atom to which they are attached form a cyclopropyl, cyclobutyl or cyclohexyl ring.
PNG
media_image5.png
116
290
media_image5.png
Greyscale
PNG
media_image6.png
26
258
media_image6.png
Greyscale
Reference claim 6 recite R5 are each independently hydrogen or C1-C4alkyl. Reference claim 8 recites R6 is hydrogen, C1-C4alkyl. According to MPEP 2144.09 (I), A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Priority
This instant application 17/594,263 filed October 8,2021, is a 371 national stage application of International Application No. PCT/EP2020/060073 filed April 8, 2020, which claims priority to EP 19168328.3 filed April 10, 2019.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. The certified copy of EP 19168328.3 was filed on 10/08/2021.
Specification(Maintained)
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
Instant claims are directed to composition comprising a mixture of components (A) and (B) as active ingredients. The elected composition species comprising a mixture of both elected component A and elected component B are required to be disclosed and supported by instant specification. The elected component A species or enantiomer thereof, e.g. metarylpicoxamid, CAS # 2376210-14-7, is NOT explicitly disclosed or identified in working examples in instant specification.
Instant specification discloses 17 compound species of component A (e.g. X1 through X 17) (See Table 1 and Table X ), and working examples of formulation without specific active ingredients mixture/combination of specific components (A) and (B) (See page 122). Instant specification does NOT explicitly disclose or identify working example of composition comprising mixture of the elected component A and the elected component B, or any working example of composition comprising mixture of the elected component A and specific component B. Thus, instant specification fails to provide proper antecedent basis for the claimed subject matter, e.g. fungicidal composition comprising mixture of the elected component A or enantiomer thereof (metarylpicoxamid), and component B genus.
Instant specification disclose various chemicals/drugs by names. The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112 – Improper Markush Group (Maintained)
Claims 1, 5-14, 17-26 and 28 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping of component (B) species and pesticides species do not share both a substantial structural feature and/or a common use that flows from the substantial structural feature.
A Markush claim contains an “improper Markush grouping” if: (1) The species of the Markush group do not share a single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a "single structural similarity” when they belong to the same recognized physical or chemical class or to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the specification or known in the art to be functionally equivalent (see Federal Register, Vol. 76, No. 27, Wednesday, February 9, 2011, p. 7166, left and middle columns, bridging paragraph).
The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons:
Claim 1 and its dependent claims recite a composition comprising a mixture of components (A) and (B) as active ingredients, wherein components (B) are selected from improper Markush group of vast variety of chemical compound alternatives(e.g. benzovindiflupyr, fluxapyroxad,…etc.) that do not share a substantially structural similarity or belong to the same recognized chemical class. For example, claims 22 and 28 recite component (B) selected from N-methoxy-N-[[4-[5-(trifluoromethyl)-1,2,4-oxadiazol-3-yl]phenyl]methyl]cyclopropanecarboxamide (the elected component B species), having following structure:
PNG
media_image7.png
143
320
media_image7.png
Greyscale
, and 3-(difluoromethyl)-1-methyl-N-((3R)-1,1,3- trimethyl-2,3-dihydro-1H-inden-4-yl)-1H-pyrazole-4-carboxamide( (inpyrfluxam) having following structure:
PNG
media_image8.png
197
212
media_image8.png
Greyscale
.
Since there is nothing common to the Markush alternative chemical species, one can conclude that the instantly claimed component (B) are structurally different. The component (B) species fail to share a substantially structural similarity or any substantial structural feature or common activity that naturally flows from the substantial structural feature. Thus, not all members recited in this improper Markush group of component (B) belong to the same recognized physical/ chemical class.
Claim 13 recites the composition further comprises one of more pesticides selected from vast variety of fungicide, insecticide, bactericide, acaricide or a biological agent (e.g. Bacillus thuringiensis, Bacillus thuringiensis delta endotoxin, baculovirus, entomopathogenic bacteria, virus and fungi). It’s noted that biological agent (e.g. entomopathogenic bacteria, virus, fungi) and small molecule fungicide /insecticide do not belong to the same physical/ chemical class.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided).
Applicant argues “grouping of component (B) is proper. Specifically, claim 1 recites "[a] fungicidal composition comprising a mixture of components (A) and (B) as active ingredients .... " Here, the claim literally illustrates the "common use" of the various components within component (B)” (Remarks, bridging page 17-18/30)
RESPONSE: As illustrated in last office action and reiterated above, instant claims recite pages of chemical names that do NOT share a substantial structural feature or belong to the same recognized structural class, and the alleged “common use” do NOT naturally flow from the different structures. An ordinary skilled in the art would not recognize the compounds species are fungicidal from the recitation of compound names comprising vast variety of structures. In last office action, the examiner already included suggestions to amend claims reciting only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature. As such, the Improper Markush rejection is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 5-14, 17-26, 28 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 ((Maintained). 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 composition genus comprising a mixture of components (A) genus and components (B) genus . This is a written description rejection, rather than an enablement rejection under 35 U.S.C. 112, first paragraph. Applicant is directed to the MPEP 2163 and Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112, 1st "Written Description" Requirement, Federal Register, Vol. 66, No. 4, pages 1099-1111, Friday January 5, 2001.
MPEP 2163.02 states “ Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention, and that the invention, in that context, is whatever is now claimed.”
Instant claims are drawn to composition comprising a mixture of components (A) and (B) as active ingredients wherein recited component A genus and component B genus encompass vast variety of species that have different structure, different chemical/physical properties, different biological activity, etc. The Applicant is required to provide adequate written description and evidence of possession of the claimed fungicidal composition genus comprising mixture of both component A genus and component B genus. Instant specification disclosed working examples of formulation without identification of active ingredients mixture of specific components (A) and specific (B) (See page 122).
MPEP 2163 II states; “The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A) above), reduction to drawings (see i)(B) above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus (see i)(C) above)”. While applicants are not required to disclose every species encompassed by a genus, the description of the genus is achieved by the recitation of a representative number of species falling within the scope of the claimed genus. “A representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus” MPEP 2163 II.
Regarding the elected component A species or enantiomer thereof, i.e. metarylpicoxamid, CAS # 2376210-14-7(See STN search note), is NOT explicitly disclosed in instant specification. Instant specification does NOT explicitly disclose working example of composition comprising the elected component A and the elected component B, or any working example comprising specific component A and specific component B.
Regarding component (B), instant claims recite vast variety of component (B) that do NOT belong to the same recognized physical/ chemical class. Regarding the elected component (B) species, N-methoxy-N-[[4-[5-(trifluoromethyl)-1,2,4-oxadiazol-3-yl]phenyl]methyl]cyclopropanecarboxamide (CAS # 2093177-34-3, and other non-elected species (e.g. inpyrfluxam), they are only recited among a long laundry list of chemicals that might be used as component (B) to combine with compound of Formula I. However, a "laundry list" disclosure of possible component (B) and pesticide does not constitute a written description of every species in a genus because it would not "reasonably lead" those skilled in the art to the composition comprising any particular component (B) and pesticide species.
Claim 13 recites composition comprises one of more pesticides selected from a laundry list of vast variety of fungicide, insecticide, bactericide, acaricide or a biological agent that do NOT belong to the same physical/ chemical class. Instant specification does not disclose working example of formulation comprising mixture of both component A, component B , and further comprise instantly claimed additional pesticide.
In the absence of sufficient recitation/working sample of composition comprising mixture of various components (A) and (B) species, one of skill in the art would not recognize from the disclosure that the applicant was in possession of the claimed composition genus. The specification does not clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed. Applicant is reminded that MPEP 2161 II makes clear that “ The written description requirement is separate and distinct from the enablement requirement”.
Applicant argues “component (B), as recited in claim 1, is not a "true genus." A true genus would be, e.g., if component (B) generically recited a "fungicide" or a "pesticide." However, claim 1 does not. Rather, claim 1 recites a list of alternatives” (Remarks, page 19).
RESPONESE: Instant claim 1 recites two pages of component B having different structures as alternative and an ordinary skilled in the art would not recognize what species/alternative is considered as representative of component B from the laundry list of alternatives.
More importantly, the written description rejection is directed to combination genus comprising a mixture of components (A) and (B) as active ingredients wherein recited component A genus and component B genus encompass vast variety of species that have different structure, different chemical/physical properties, different biological activity, etc. There would be millions of combination comprising different component A and different component B with substantial variation within instantly claimed genus. Instant specification dose NOT explicitly disclose the elected component A species or enantiomer thereof, i.e. metarylpicoxamid. Instant specification does NOT explicitly disclose working example of composition comprising the elected component A and the elected component B, or any working example comprising specific component A and specific component B. In absence of sufficient working examples that represent vast variation within the genus, an ordinary skilled in the art would not recognize from the disclosure that the applicant was in possession of the claimed combination genus comprising vast variety of component A and component B. As such, the Written Description rejection is maintained.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5-7, 13-14, 17-22, 26 and 28 are rejected under 35 U.S.C. §102 (a)(2) as being anticipated by Loy et al. (WO 2019/173665 A1, patent family of US 11155520 B2 /US 20190276404 A1) (maintained).
Regarding instantly claimed component (A) recited in 1, 17-21, Loy discloses picolinamide compound of Formula I as fungicides and composition comprising mixture/combination of picolinamides and other pesticides, for control or prevention of fungal attack on a plant (See abstract, [0004]-[0006],[0038]; claims 1, 10-24).
PNG
media_image9.png
158
223
media_image9.png
Greyscale
, wherein
PNG
media_image10.png
186
322
media_image10.png
Greyscale
PNG
media_image11.png
609
768
media_image11.png
Greyscale
Loy discloses a preparation of compound of Formula I, (compound species that are encompassed by or very similar to instant claimed compound of Formula I) (e.g. compound 266, 278, etc., See Table 1) and fungicidal activity thereof (See Example A-K, [0091]-[00114]). Compound 278 of Loy is enantiomer of instant elected component (A) (i.e. metarylpicoxamid) which reads on instant claims 1, 17-21 wherein R1 is propanoyloxy, R2 is methyl, R3 is methyl, R4 is hydrogen, R5 is methyl substituted phenyl. Please refer to Loy Table 1 for complete compound species that read on instantly claimed component (A), compound of Formula I.
PNG
media_image12.png
152
398
media_image12.png
Greyscale
PNG
media_image13.png
195
480
media_image13.png
Greyscale
Regarding instantly claimed component (B) recited in claims 1, 5-6, 22, 28, Loy discloses picolinamide may be combined with other fungicides to form fungicidal mixtures and synergistic mixtures thereof, wherein other fungicides may include inpyrfluxam, benzovindiflupyr, pydiflumetofen, etc.(See 0039]). Please refer to Loy for complete compound species that read on instantly claimed component (B).
Regarding the ratio of component (A) to component (B) recited in instant claim 7, Loy discloses picolinamide compounds of Formula I and fungicides/pesticidal compound in the combination be present in a weight ratio of from 1:100 to 100:1 (SEE [0038]).
Regarding other pesticide recited in claim 13, Loy discloses picolinamide may be combined with other pesticides, including insecticides (e.g. abamectin, acephate, amitraz,etc.), nematocides, miticides, , bactericides, and herbicide or combinations thereof(See [0038], [0040]-[0041). Please refer to Loy for complete compound species that read on instantly claimed other pesticide.
Regarding inactive ingredients of fungicidal composition recited in instant claims 14 and 26, Loy teaches formulation comprising picolinamide compound of Formula I with phytologically acceptable carrier, adjuvant surfactants ( See [0028], [0036]- [0037]).
As elaborated, Loy discloses fungicidal composition comprising picolinamide compound of Formula I (e.g. compound 278), in combination with other fungicide as component (B) (e.g. inpyrfluxam, benzovindiflupyr, pydiflumetofen, etc.), and additional pesticides, including insecticides and bactericide. It’s noted instant claims do not recite specific combination of specific component(A) and component (B). Thus, Loy anticipate instant claimed fungicidal composition.
Applicant argues Loy does not disclose the identical invention in as complete detail as is claimed. “component A in claim 1 is more tailored than formula I of Loy …Formula (I) of Loy includes more variables with more diversity and more generality… The picolinamide compound of Formula I of Loy, as relied upon by the Examiner, are innumerable(Remarks, page 21-23/30).
RESPONSE: Applicant’s argument is NOT persuasive. Instant specification does NOT even explicitly disclose the elected species.
Loy explicitly disclosed compound species with defined substituents, e.g. compound 266 and 278 (See Table 1) that fall within instant claimed genus. Loy explicitly disclosed preparation/ characterization and biological activity of compound 278 which is instantly elected species. As MPEP 2131.02 states: "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989). A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED. “A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. The Board compared the facts to the situation in which the compound was found in the Merck Index, saying that "the tenth edition of the Merck Index lists ten thousand compounds. In our view, each and every one of those compounds is ‘described’ as that term is used in [pre-AIA ] 35 U.S.C. 102(a), in that publication."). Id. at 1718. See also In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982)”.
Applicant’s argument about combination with component B is NOT persuasive. Instant claims are directed to combination genus, NOT specific combination of specific component(A) and component (B). Loy explicitly disclosed compound 278 (i.e. metarylpicoxamid), combination of Loy’s compound 278 in combination with component B (e.g. inpyrfluxam, benzovindiflupyr, pydiflumetofen, etc.) disclosed by Loy would fall within instant claimed combination genus. Thus, Loy anticipates instant claimed fungicidal composition mixture.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claims 1, 5-14 and 17-21 are rejected under 35 U.S.C. §103 as being unpatentable over YAO et al. (WO 2016/109301 A1, Applicant’s IDS dated 10/08/2021)(necessitated by amendment) .
Regarding instantly claimed component (A), YAO teaches fungicidal compound of Formula I, having following structure wherein X is hydrogen Y is Q (See [0004], claims 1-8) that read on instant claimed core structure of Formula I:
PNG
media_image14.png
160
267
media_image14.png
Greyscale
PNG
media_image15.png
305
407
media_image15.png
Greyscale
PNG
media_image16.png
427
550
media_image16.png
Greyscale
Yao teaches preparation of compound of Formula I, compounds species (See Table 1) that are very similar to instant claimed compound of Formula I ( e.g. 120, 123, 161, 183, 197-200, 210-212 etc.), and fungicidal activity thereof(See Table 4-6).
PNG
media_image17.png
176
426
media_image17.png
Greyscale
PNG
media_image18.png
141
301
media_image18.png
Greyscale
Regarding instantly claimed component (B) recited in claims 1 and 5-6, Yao discloses formulation comprising combinations of compound of Formula I and other pesticidal compound (e.g. fungicides, insecticide, herbicide, etc.) to form fungicidal mixtures and synergistic mixtures thereof, in a weight ratio of from 1:100 to 100: 1, wherein the other fungicide may include difenoconazole, azoxystrobin, copper oxide, etc. (See [0031]-[0034], claim 11). Please refer to Yao for complete compound species that read on instantly claimed component (B).
Regarding the ratio of component (A) to component (B) recited in instant claim 7, Yao discloses picolinamide compounds of Formula I and fungicides/pesticidal compound in the combination be present in a weight ratio of from 1:100 to 100:1 (SEE [0031]). Where 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. MPEP 2144.05. It’s noted instant claims do not recite specific combination of specific component(A) and component (B). It would have been obvious to one of the ordinary skill in the art to explore the weight ratio of component (A) to component (B) , based on Yao’s teaching, together with experimentation/optimization based on general knowledge of fungicide/pesticide and arrive at the instantly claimed range with reasonable expectation of success..
Regarding other pesticide recited in claim 13, Yao discloses picolinamide may be combined with other pesticides, including insecticides (e.g. abamectin, acephate, amitraz, etc.), nematocides, miticides, , bactericides, and herbicide or combinations thereof(See [0033]). Please refer to Yao for complete compound species that read on instantly claimed other pesticide.
Regarding inactive ingredients of fungicidal composition recited in instant claim 14, Yao teaches formulation comprising compound of Formula I with phytologically acceptable carrier, adjuvant surfactants ( See [0029], [0030]).
Yao also teaches method of control of a fungi pathogen applying composition comprising compound of Formula I and another pesticide ( See [0035], claim 12).
As elaborated, Yao discloses fungicidal composition comprising picolinamide compound of Formula I (e.g. compound 198) that’s very similar to instantly claimed component A , in combination with other fungicide as component (B) (e.g. difenoconazole, azoxystrobin, etc.), and additional pesticides, including insecticides and bactericide.
It’s noted claim 1 is amended reciting R3 is methyl, R4 is hydrogen or methyl to overcome rejection anticipated by Yao under 35 USC§ 102. According to M.P.E.P. § 2144.09, A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
In instant case, the difference between the disclosed species by Yao and instantly claimed compounds are hydrogen vs methyl and methyl vs alkyl group.
PNG
media_image19.png
296
829
media_image19.png
Greyscale
Generally, methyl in replacement of hydrogen is not deemed a patentable distinction absent evidence of superior, unexpected results, since one of ordinary skilled in the art would at once envisage the subject matter of methyl in replacement of hydrogen based on Grimm’s Hydride
Displacement Law: “Atoms anywhere up to four places in the periodic system before an inert
gas change their properties by uniting with one to four hydrogen atoms, in such a manner that the
resulting combinations behave like pseudoatoms, which are similar to elements in the groups one to
four places respectively, to their right”. For example, Yao teaches R11 is H or methyl, R1 is hydrogen or alkyl. The difference between methyl (C1 alkyl) and C2-C4 alkyl groups are considered as homologs. As stated in MPEP § 2144.08 II subsection II. A. 4.(c), "Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties." As stated in MPEP 2144 .09 II : “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007) (5(S) stereoisomer of ramipril obvious over prior art mixture of stereoisomers of ramipril.)”. MPEP 2144 .09 III “Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979) (Claimed and prior art compounds were both directed to heterocyclic carbamoyloximino compounds having pesticidal activity. The only structural difference between the claimed and prior art compounds was that the ring structures of the claimed compounds had two carbon atoms between two sulfur atoms whereas the prior art ring structures had either one or three carbon atoms between two sulfur atoms. The court held that although the prior art compounds were not true homologs or isomers of the claimed compounds, the similarity between the chemical structures and properties is sufficiently close that one of ordinary skill in the art would have been motivated to make the claimed compounds in searching for new pesticides.)”.
It’s noted instant claims do not recite specific combination of specific component(A) and component (B). One of ordinary skill in the art would have had reasonable expectation of success in producing the claimed invention based on the teachings of prior art and optimization based on general knowledge of fungicidal /pesticidal composition. Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 1, 5-14, 17-26, 28 are rejected under 35 U.S.C. 103 as being unpatentable over Loy et al. (WO 2019/173665 A1) (maintained).
The collective teachings of Loy are elaborated in preceding 102 rejection and applied as before. Loy collectively teaches fungicidal composition comprising picolinamide compound of Formula I (e.g. compound 278), in combination with other fungicide as component (B) (e.g. inpyrfluxam, benzovindiflupyr, pydiflumetofen, etc.), and additional pesticides, including insecticides and bactericide.
Regarding the ratio of component (A) to component (B) recited in instant claim 7-12, Loy discloses picolinamide compounds of Formula I and fungicide/pesticidal compound in the combination be present in a weight ratio of from 1:100 to 100:1 (SEE [0038]). Where 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. MPEP 2144.05. It’s noted instant claims do not recite specific combination of specific component(A) and component (B). It would have been obvious to one of the ordinary skill in the art to explore the weight ratio of component (A) to component (B) , based on Loy’s teaching, together with experimentation/optimization based on general knowledge of fungicide/pesticide and arrive at the instantly claimed range with reasonable expectation of success..
According to MPEP 2144.09 (I), A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
It’s noted instant claims do not recite specific combination of specific component(A) and component (B). One of ordinary skill in the art would have had reasonable expectation of success in producing the claimed invention based on the teachings of prior art and optimization based on general knowledge of fungicidal /pesticidal composition. Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Applicant argues about the Graham factors to establish a prima facie obviousness, the size of genus, express teachings, structure similarity. etc.(Remarks, page 24-27/30).
RESPONSE: First, as discussed above, Loy anticipates instant claimed combination genus.
Applicant’s argument is based on non-obviousness analysis when prior art does not expressly disclose particular claimed species or subgenus. In instant case, Loy explicitly disclosed instant elected component A and component B, thus anticipates instantly claimed combination genus. As MPEP 2131.02 states: "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." Please note the examination is response to Applicant’s election, and other non-elected species are withdrawn from further consideration pursuant to 37 CFR 1.142(b).
The difference of instant claimed invention and Loy under 35 USC§ 103 is the ratio of component A to compound B recited in claims 8-12. Loy disclosed picolinamide compounds of Formula I and fungicide/pesticidal compound in the combination be present in a weight ratio of from 1:100 to 100:1 (SEE [0038]). Where 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. MPEP 2144.05.
Claims 1, 5-14, 17-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Loy et al. (WO 2019/173665 A1), in view of Stierli et al. (WO 2017055473 A1, family member of US 10899724 B2/ US 20180273494 A1)(maintained) .
The collective teachings of Loy is elaborated in preceding 102 and 103 rejection and applied as before. Loy collectively teaches fungicidal composition comprising picolinamide compound of Formula I (e.g. compound 278), in combination with other fungicide as component (B) (e.g. inpyrfluxam, benzovindiflupyr, pydiflumetofen, etc.), and additional pesticides, including insecticides and bactericide.
Loy is silent about the elected component (B), N-methoxy-N-[[4-[5-(trifluoromethyl)-1,2,4-oxadiazol-3-yl]phenyl]methyl]cyclopropanecarboxamide (CAS # 2093177-34-3, See STN search Note)
Stierli teaches microbiocidal 1,2,4-oxadiazole compounds of Formula I useful as a fungicides, fungicide composition comprising aforementioned oxadiazole compounds for controlling or preventing infestation of plants, or non-living materials by phytopathogenic microorganisms, preferably fungi (See abstract, Table T1, claims 1-15)
PNG
media_image20.png
180
420
media_image20.png
Greyscale
Stierli teaches 1,2,4-oxadiazole compound species that are encompassed or very similar to oxadiazole component(B) species recited in claim 1, 5-6, 22 and 28 (See Table T1, ). Stierli explicitly teaches compound 1. 2 which is the elected component (B), and other non-elected oxadiazole component(B) (See Table T1 on page 91, 105).
PNG
media_image21.png
143
463
media_image21.png
Greyscale
PNG
media_image22.png
192
685
media_image22.png
Greyscale
Stierli teaches 1,2,4-oxadiazole compound may be admixed with one or more additional active ingredients such as a pesticide, fungicide, synergist, herbicide, bactericides, biological agents: where appropriate additional active ingredient may result in synergistic activities(See page 45, lines 5-40; pages 46-50). Please refer to Stierli for complete compound species that read on instantly claimed fungicide/pesticide.
Stierli teaches composition further comprising at least an agrochemically-acceptable diluent, carrier, adjuvants, etc.(See page 5, line 14-16; page 42; claim 13).
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846,850, 205 USPQ 1069, 1072 {CCPA 1980) See MPEP 2144.06.
It would have been obvious for an ordinary skilled in the art to combine Loy’s picolinamide fungicidal compound with Stierli’s oxadiazole fungicidal compound to form a fungicidal composition comprising picolinamide and oxadiazole fungicidal compound as active ingredients. The skilled artisan would be motivated to combine the elements because both Loy and Stierli teach combination with other fungicides to form potential synergistic fungicidal mixtures thereof. Where 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. MPEP 2144.05. It would have been obvious to one of the ordinary skill in the art to further explore combination of component (A) and component (B), and weight ratio thereof , based on Loy’s and Stierli’s teaching, together with experimentation/optimization based on general knowledge of fungicide/pesticide and arrive at the instantly claimed invention. The combined teachings of prior art, together with optimization based on general knowledge of fungicidal /pesticidal would provide alternative fungicidal mixture/ composition comprising picolinamide and oxadiazole compound as active ingredients which might have synergistic effect for fungicidal activity.
It’s noted instant claims do not recite specific combination/mixture of specific component(A) and component (B). One of ordinary skill in the art would have had reasonable expectation of success in producing the claimed invention based on the combined teachings of prior art and optimization based on general knowledge of fungicidal /pesticidal composition. Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Applicant argues “ it is unclear why a person of ordinary skill in the art would specifically select
the elected component (A) from Loy, and then choose to combine it with the specifically select
the elected component (B) from Stierli. Accordingly, reconsideration and withdrawal are
respectfully requested”.
RESPONSE: Please note instant claims are directed to fungicidal composition mixture/ combination genus, NOT specific combination of the elected component A and component B. Instant specification does NOT even disclose the specific combination of the elected component A and component B. The combination of the elected component A and B is just an illustrated example that falls within instantly claimed combination genus. Loy teaches component A as fungicidal agent, Stierli teach component B as fungicidal agent, both Loy and Stierli teach combination with other fungicides to form potential synergistic fungicidal mixtures thereof. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846,850, 205 USPQ 1069, 1072 {CCPA 1980), See MPEP 2144.06.
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 requir