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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 5, 2026 has been entered.
Priority
The present Application, filed January 24, 2022, is a national stage filing under 35 U.S.C. § 371 of International Patent Application No. PCT/IB2020/056828, which claims priority to U.S. Provisional Patent Application No. 62/877, 180, filed July 22, 2019.
Status of the Claims
In the amendment filed January 5, 2026, claims 37-38 and 40 are canceled and claims 25, 37, and 39 are amended. In the amendment filed March 30, 2026, claims 1, 9, 13, 23, 36, 41, and 47-49 are canceled; new claims 50-55 are added; and claims 15, 25, 42, 45, and 46 are amended. Claims 15, 17, 19, 21, 25, 39, 42-46, and 50-55 are currently pending.
Previous Rejections and/or Objections
Any objections and/or rejections raised in the previous Office Action but not reiterated below are considered to have been withdrawn.
Notes on claim interpretation:
With respect to claim 15, the recitation that, “b) the method is effective for recuing leaf necrosis by at least 25%” is an intended result that cannot be given patentable weight. “A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Minton v. Nat'l Ass'n. of Sec. Dealers, 336 F.3d 1373, 1381 (Fed. Cir. 2003 – emphasis added to quotation). See also MPEP § 2111.04(I), which makes clear that this rule of claim construction is not limited to clauses marked off by the term “whereby,” but is applicable to functionally equivalent clauses having terms such as “wherein” or other functionally equivalent terms. In the present case, the clause simply omits the introductory term (e.g. “whereby,” being instead marked off with “b)”), but the clause itself plainly recites an intended result.
Similarly with respect to claim 17, and regarding the wherein clauses (a)-(e), each of these is an intended result that cannot be given patentable weight for the same reason. Namely, each of these terms recites an intended result of the type envisioned in Minton, in which a particular method outcome is recited, but the recitation does not limit or alter the manner in which the method is performed.
As such, any prior art methods teachings method steps indistinguishable from those of instant claims 15 and 17 (i.e. the method steps of claim 15) will be understood as teaching the method of claims 15 and 17.
Similarly, the clause of claim 25 reciting, “to thereby protect the plant from fungal attack,” is understood similarly as an intended result having no patentable weight.
Claim Rejections-- 35 USC § 103 – Modified in view of amendment
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.
Claims 15, 17, 19, 21, 25, 39, 42-46, and 51-52 are obvious over Owen and Guan:
Claims 15, 17, 19, 21, 25, 39, 42-46, and 51-52 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent No. 9,532,570 to Owen et al. (hereinafter, “Owen”), in view of the non-patent publication, Design, synthesis and antifungal activity of new substituted difluoromethylpyrimidinamine derivatives, J. Fluorine Chem., 201, pgs. 49-54 (2017) by Guan et al. (hereinafter, “Guan”).
Reference here is to Applicant’s remarks of March 30, 2026, as they substantially encompass the remarks of January 5, 2026. In its Remarks, Applicant first argues that a prima facie case of obviousness has not been established because the record provides no evidentiary support for the presumption that mechanistical and structural similarity alone is sufficient to establish obvious substitution in a synergistic combination and because a large number of SDHIs are known in the art and the record provides no rationale for selecting fluindapyr amongst the known SDHIs for combining with the compound of Formula I at the claimed ratios (pg. 9 of Applicant’s Supplemental Amendment of March 30, 2026). This argument has been fully considered but is not found persuasive.
Owen expressly teaches synergistic combinations of the compound of Formula I and an SDHI. Thus, while Owen expressly mentions six SDHIs, its teaching is not limited to those six. There are on the order of one-to-two dozen SDHI fungicides not expressly mentioned by Owen (see, for example, the non-patent publication, SDHI Fungicides, a page of the Fungicide Resistance Action Committee website, obtained in 2026 at the url www.frac.info/frac-teams/working-groups/sdhi-fungicides/). Putting aside for a moment, the ratios, it would have been obvious to try any of the other eighteen or so SDHIs and one would have had a reasonable expectation of success in achieving a synergistic combination with the compound of Formula I, as taught by Owen. Furthermore, four of the six SDHIs expressly mentioned by Owen are of the pyrazole-carboxamide structural category. It would have been particularly obvious to try, and one particularly would have had a reasonable expectation of success, in achieving a synergistic combination with another of this type of SDHI, such as fluindapyr, with the compound of Formula I.
With respect to the different weight ratios, it is noted that, even as amended, the weight ratio range of claim 15 overlaps with (and encompasses) the weight range ratio of Owen. As stated in the Office Action, an overlapping range is prima facie obvious, particularly where there is no evidence of criticality in the difference.
Applicant next argues that cited references do not teach the newly added element of claim 15 that the method is effective for reducing leaf necrosis by at least 25%. However, as noted above, this element is understood as an intended result that is not afforded patentable weight in the method claim, because it does not modify the manner in which the method is performed. As such, it cannot distinguish from the prior art.
Applicant further argues that claim 42 is further nonobvious because the application density recited in claim 42 is allegedly substantially different from the application density taught by Owen. Applicant notes that Owen teaches “the compound of Formula I and an SDHI can be applied at a ground concentration of between about 40 g/ha and about 725 g/ha,” while claim 42 recites the amount of the compound of Formula I is from 1 g/ha to 10 g/ha. This is a comparison of unlike numbers, however, because Owen discusses the amount of the compound of Formula I and SDHI, whereas claim 42 recites the amount of the compound of Formula I alone. When one combines the total fungicide density of Owen with the weight ratio of Owen, the application density in fact overlaps. For example, if total fungicide in the method of Owen is applied at 40 g/ha at a weight ratio of 1:3 (as disclosed for Formula I:benzovindiflupyr), the application density for the compound of Formula I would be 10 g/ha. In short, there is not the substantial difference in application densities that is asserted by Applicant.
Referring briefly to the remarks of January 5, 2026, Applicant further contended that the present claims are not obvious over the teachings of the prior art in view of the presently disclosed findings of synergy between fluindapyr and the compound of Formula I. While not expressly stated as such, this appears to be an argument that the prima facie case of obviousness is rebutted by surprising or unexpected results, in particular the observation of synergy. This argument is unpersuasive, however, because this is precisely the type of synergy expressly taught by Owen, for SDHIs in general, as well as for specific SDHIs closely related to fluindapyr. As such, this result cannot be considered unexpected.
The rejections, modified in view of the amendments, are substantially maintained.
Reiterated, albeit slightly modified, rejection:
Claim 15 recites a method for treating a plant or locus against fungal infection comprising applying:
(i) an amount of a compound of Formula I
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, and
(ii) an amount of fluindapyr wherein the weight ratio of the compound of formula I to fluindapyr is from 12.8:1 to 1:100. As amended, claim 15 further recites that the method is effective for reducing leaf necrosis by at least 25%. As noted above, this element is regarded as an intended result that is not afforded patentable weight.
Owen teaches, inter alia, a synergistic fungicidal mixture, comprising a fungicidally effective amount of the compound of Formula I:
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and at least one additional fungicide in which the at least one additional fungicide is a succinate dehydrogenase inhibitor (SDHI) (col. 1, line 66 – col. 2, line 3). It will be noted that the compound of Formula I of instant claim 1 is the same as the compound of Formula I of Owen. Owen further teaches methods for the control of fungal pathogen attack on a plant (a method for treating a plant against fungal infection) comprising applying to the plant a fungicidally effective amount of a synergistic composition (e.g. a composition having a compound of Formula I and a SDHI) – see, e.g. col. 22, lines 24-29). As noted above, Owen teaches the composition is synergistically fungicidal against Septoria tritici (SEPTTR) within a concentration ratio range of about 1:28 to about 8:1 (col. 15, lines 26-30). While the weight ratio of instant claim 15 is not identical to the concentration ratio of Owen, the instant ratio is encompassed by the ratio of Owen. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, (CCPA 1976).
Owen further explicitly teaches several exemplary SDHIs, including fluxapyroxad and benzovindiflupyr (col. 2, lines 15-19). Owen does not specifically teach that the additional fungicide/SDHI is fluindapyr, however it would have been obvious to one of ordinary skill in the art to utilize fluindapyr as the SDHI of Owen, because fluindapyr was known in the art to be a succinate dehydrogenase inhibitor fungicide, identical in mechanism and comparable in activity and structure to several of the SDHIs of Owen. See, for example, Guan.
Guan teaches the synthesis of difluoromethylpyrimidinamine derivates and testing them for activity as SDHI fungicides (Abstract). Guan compares the newly synthesized compounds to known SDHI fungicides such as benzovindiflupyr and fluindapyr, noting that SDHIs such as benzovindiflupyr and fluindapyr have attracted widespread attention as a newly emerging category due to their outstanding performance especially fighting against Asian soybean rust (pg. 49, right column, second sentence; also see Fig. 1). It thus would have been obvious to use standard SDHI, fluindapyr, as an SDHI in the synergistic fungicidal mixture of Owen in place of the explicitly stated SDHIs of Owen such as the mechanistically and structurally comparable benzovindiflupyr.
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Above: Fig. 1 of Guan, showing structural similarity of Fluindapyr to other SDHIs, particularly to Benzovindiflupyr, and captioned “recently published representative SDHI fungicides for controlling rust disease.”
Claim 15 recites a method for treating a plant or locus against fungal infection comprising applying an amount of a compound of Formula I and an amount of at least one fungicide (A) as recited in claim 1. Owen teaches methods for the control of fungal pathogen attack on a plant (a method for treating a plant against fungal infection) comprising applying to the plant a fungicidally effective amount of a synergistic composition (e.g. a composition having a compound of Formula I and a SDHI) – see, e.g. col. 22, lines 24-29). As noted above, Owen teaches the composition is synergistically fungicidal against Septoria tritici (SEPTTR) within a concentration ratio range of about 1:28 to about 8:1 (col. 15, lines 26-30). While the weight ratio of instant claim 15 is not identical to the concentration ratio of Owen, the instant ratio is encompassed by the ratio of Owen. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, (CCPA 1976).
With respect to claim 17, as noted above the wherein clauses of claim 17 are understood as intended results that do not carry patentable weight, and claim 17 is therefore obvious for the same reason that claim 15 is obvious. With respect to claim 19, Owen teaches for example that the synergistic compositions can be applied to the seeds of plants for the control of various fungi (col 22, lines 35-40). The instant specification indicates that plant seeds constitute “propagation material” within the meaning of claim 19 (pg. 13, third paragraph). With respect to claim 21, Owen teaches that a composition having the compound of Formula I and an SDHI can be applied at a ground concentration of between about 40 g/ha and about 725 g/ha. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257 (CCPA 1976).
With respect to claim 25, Owen teaches applying the fungicidal mixture to the seeds of plants for the control of various fungi (col 22, lines 35-40). Thus one would have had a reasonable expectation of success in protecting seedlings (i.e. plants) from fungal infection by applying the mixture of Owen and Guan to seeds. See, for example, the non-patent publication, Understanding Fungicide Seed Treatments, Southern States website, obtained at the url: southernstates.com/blogs/agronomy-insights/understanding-fungicide-seed-treatments, (hereinafter, “Southern States”), having a first publication year of 2023 according to the web archive (web.archive.com). Southern States indicates that:
Fungicide seed treatments help protect the developing seedling during the highly vulnerable period from planting through early vegetative growth stages (≈V1-V2). After planting, seed treatment fungicides protect the seed coat and may move into a limited area of soil around the seed. Many active ingredients can be taken up by the seedling roots and moved to developing stem/foliar tissues through the conductive tissues of the plant as the seedling develops.
Southern States, Basics of Fungicide Seed Treatments
With respect to claim 39, Owen teaches that the combination of the compound of instant Formula I and an SDHI can be useful for controlling soybean rust (claim 25), and is synergistically fungicidal against Septoria tritici (SEPTTR) within a concentration ratio range of about 1:28 to about 8:1 (col. 15, lines 26-30). While the weight ratio of instant claim 39 is not identical to the concentration ratio of Owen, the instant ratio is encompassed by the ratio of Owen. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, (CCPA 1976).
With respect to claim 42, Owen teaches that a composition having the compound of Formula I and an SDHI can be applied at a ground concentration of between about 40 g/ha and about 725 g/ha. As discussed above, this range is at least close to, and arguably overlaps with, the range of claim 42, when one factors in that the density of Owen is for the combination of the compound of Formula I and the SDHI, rather than for the former alone. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). This is particularly true where, as here, there is no evidence of criticality of the recited values. Claims 51 and 52 are obvious for the same reason as is claim 42.
With respect to claim 43, Owen teaches for example that the synergistic compositions can be applied to the seeds of plants for the control of various fungi (col 22, lines 35-40). With respect to claim 44, Owen teaches that the synergistic composition is useful in a protectant or eradicant (i.e. curative) fashion, and can be applied in a protective context (to plants not yet infected) or a curative context (to plants already infected) – see, for example Tables 1 and 2. With respect to claim 45, Owen teaches real examples in which fungicides such as benzovindiflupyr were applied individually (contemporaneous) or as two-way mixtures with the compound of Formula I (simultaneous) – see col. 23, lines 56-64. With respect to claim 46, Owen teaches that the mixtures are effective to cure and prevent leaf blotch of wheat (Septoria tritici infection). Such infection would intrinsically involve leaf necrosis (see, for example, the non-patent publication, Septoria Tritici Blotch of Wheat, Univ. California Integrated Pest Management website, obtained at the url ipm.ucanr.edu/agriculture/small-grains/septoria-tritici-blotch-of-wheat (published at least by 2009), which states that symptoms of wheat blotch include lesions that end as grayish tan necrotic areas with small, black specks inside the dead areas (first paragraph)). As such, one would have had a reasonable expectation of success in reducing leaf necrosis by performing the method of Owen and Guan.
Claim 55 is obvious over Owen, Guan, and Jiang:
Claim 55 is rejected under 35 U.S.C. § 103 as being unpatentable over Owen, in view of Guan, further in view of the non-patent publication, Rapid analysis of tristyrylphenol ethoxylates in cucumber-field system using supercritical fluid chromatography–tandem mass spectrometry, Food Chem., 266, pgs. 119-125 (2018) by Jiang et al. (hereinafter, “Jiang”).
Claim 55 recites the method of claim 15, wherein the compound of Formula I and fluindapyr are applied in combination with at least one stabilizing surfactant that is derivative of polyalkylene oxide polyaryl ether.
Owen and Guan are applied to claim 55 as to claim 15, and Owen further teaches that disclosed formulations can further contain adjuvant surfactants to enhance properties such as deposition and penetration onto the target organism (col. 21), lines 64-66). Owen teaches that suitable adjuvant surfactants include ethoxylated nonyl phenols and several other varieties, but does not explicitly teach the use of polyalkylene oxide polyaryl ether-based surfactants. It would have been obvious to use such a surfactant in the composition of Owen and Guan however, because common polyalkylene oxide polyaryl ether surfactants were known in the art to be widely used in agrochemical compositions and to have largely superseded surfactants taught in Owen. See, for example, Jiang.
Jiang teaches a method for quantifying tristyrylphenol ethoxylates (a type of polyalkylene oxide polyaryl ether surfactant) residual in plant tissues to which agrochemical formulations have been applied (Abstract). As background, Jiang teaches that tristyrylphenol ethoxylates are commonly used as adjuvants in agrochemical formulations and furthermore, that with the phase-out of nonylphenol-based surfactants, are the most widely used category of surfactants in agrochemical applications produced in large volume. It thus would have been obvious to replace the ethoxylated nonyl phenols of Owen with the now far more common tristyrylphenol ethoxylates of Jiang.
Double Patenting – Modified in View of Amendment
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 15, 17, 19, 21, 25, 39, 42-46, 51-52, and 55 are rejected for nonstatutory double patenting over the ’534 patent, Guan, and Jiang:
Claims 15, 17, 19, 21, 25, 39, 42-46, 51-52, and 55 are rejected for nonstatutory double patenting over the ’560 patent, Guan, and Jiang:
Claims 15, 17, 19, 21, 25, 39, 42-46, 51-52, and 55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,045,534 to Owen et al. (hereinafter, “the ’534 patent”), in view of Guan and Jiang. Claims 15, 17, 19, 21, 25, 39, 42-46, 51-52, and 55 are also rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,127,560 to Owen et al. (hereinafter, “the ’560 patent”), in view of Guan and Jiang.
Claim 1 of the ’534 patent recites a synergistic fungicidal mixture comprising a compound of instant Formula I and at least one additional fungicide that is an SDHI, while claim 5 of the ’534 patent recites a method for preventing or curing fungal pathogen attack on a plant comprising applying an effective amount of the same mixture to a locus of the fungus. Claim 2 of the ’534 patent recites a concentration ratio range that overlaps with the weight ratios of the instant claims, such as instant claim 1, while claims 7-10 of the ’534 patent recite ground coverage concentration ranges of the fungicidal components that overlap with and/or are adjacent to the ground coverage concentrations of the instant claims (e.g. instant claim 21).
Similarly, claim 1 of the ’560 patent recites a synergistic fungicidal mixture comprising a compound of instant Formula I and at least one additional fungicide that is an SDHI (specified as benzovindiflupyr), while claim 13 of the ’560 patent recites a method for preventing or curing fungal pathogen attack on a plant comprising applying an effective amount of the same mixture to the plant. Claim 1 of the ’560 patent further teaches concentration ratios of SDHIs closely related to fluindapyr that are comparable to the concentrations ranges of the instant claims, while claim 14 of the ’560 patent teaches ground coverage concentrations for SDHIs that are comparable to the instantly claimed concentration ranges. Arriving at preferred concentrations would have been a matter for the instantly claimed compositions would have been a matter of routine optimization.
As noted above, Guan teaches that the fluindapyr of instant claim 1 was known in the art as an SDHI fungicide and Jiang teaches the use of the cited surfactant. As such, the fungicidal combinations and methods of use of the instant claims overlap in scope with the fungicidal mixtures and methods of use of the ’534 patent, and the former are therefore subject to the nonstatutory double patenting rejection.
Claims 15, 17, 19, 21, 25, 39, 42-46, 51-52, and 55 are rejected for nonstatutory double patenting over Owen, the ’534 patent, Guan, and Jiang;
Claims 15, 17, 19, 21, 25, 39, 42-46, 51-52, and 55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of Owen in view of the ’534 patent , and further in view of Guan and Jiang.
Claim 1 of Owen recites a synergistic composition comprising a compound of Formula I and at least one additional fungicide selected from the group consisting of various fungicides, including benzovindiflupyr. Claim 16 of Owen recites a method for control of fungal pathogen attack on a plant, the method comprising applying the same synergistic combination. While Owen does not recite ground coverage rates (in g/ha) or generalized fungicide concentration ratios applicable to SDHIs broadly, these features are taught by the ’534 patent, for example, which is available as prior art for this rejection. Guan and Jiang applied as above.
Claims 15, 17, 19, 21, 25, 39, 42-46, 51-52, and 55 are rejected for nonstatutory double patenting over the ’954 patent, Owen, Guan, and Jiang:
Claims 15, 17, 19, 21, 25, 39, 42-46, 51-52, and 55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-14 of U.S. Patent No. 11,632,954 to Grabarnick et al. (hereinafter, “the ’954 patent”) in view of Guan and Jiang.
The claims of the ’954 patent are directed generally to different polymorphs of flumetylsulforim (the compound of instant Formula I). Claim 13 of the ’954 patent recites a synergistic composition comprising a compound of Formula I and at least one additional fungicide. Claim 14 of the ’954 patent recites a method for control of fungal pathogen attack on a plant, the method comprising applying the same synergistic combination. Claim 14 does not explicitly recite an identity of the additional fungicide, however it would have been obvious to utilize fluindapyr as the additional fungicide, in view of the teachings of Owen and Guan, for the reasons addressed above.
Guan teaches design and synthesis of novel SDHI fungicides (Abstract). Guan further teaches, inter alia, that benzovindiflupyr and fluindapyr were known in the art as common difluoromethylpyrimidinamine fungicides that are SDHIs (similar structure and mechanism of action, with comparably effective performance against nuisance fungi such as Asian soybean rust (Fig. 1 and pg. 49, right column). It therefore would have been obvious to substitute the benzovindiflupyr in the compositions and methods of the ’954 patent with the fluindapyr of Guan. Jiang is applied as above.
Claims 15, 17, 19, 21, 25, 39, 42-46, 51-52, and 55 are provisionally rejected for nonstatutory double patenting over the ’569 application, Guan, and Jiang:
Claims 15, 17, 19, 21, 25, 39, 42-46, 51-52, and 55 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-38 of U.S. Patent Application No. 18/902,569 to Owen et al. (hereinafter, “the ’569 application”) in view of Guan, and Jiang. Aside from the claims, the ’569 application corresponds to U.S. Patent Application Publication No. 2025/0017208.
Claims 20 of the ’569 application recites a synergistic composition comprising a compound of Formula I and at least one additional fungicide that is a SDHI. The claims of the 569 also recite concentration ratio ranges and application rates (in g/ha) that overlap or are adjacent to those of the instant claims. The claims, along with Guan and Jiang, are applied to the instant composition claims as described above.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 50 and 53-54 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/ALEXANDER K. SHOWALTER/Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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