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 .
New Examiner of Record
The new examiner of record is Erin Hirt. An updated search and further consideration has prompted the new grounds of rejection in this second non-final office action which are presented herein. In this second non-final office action, the examiner is examining applicant’s elected species, inpyrfluxam,
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, referred to by its IUPAC name in the instant claims 3-(difluoromethyl)-N-[(R)-2,3-dihydro-1,1,3-trimethyl-1H-inden-4-yl]-1-methyl-1H-pyrazole-4-carboxamide and not the unelected species fluxapyroxad which was wrongly examined by the previous examiner as the elected species. Thus, the claims being examined in this office action are 1-2, 4, 9, 11, 14-17. Claims 3, 5-8 are withdrawn as being directed to a non-elected invention at this time. Based on the examiner’s search she is maintaining the election of species requirements for the fungicides in the combinations as claimed but is rejoining the method claims in light of the examiner’s search. Thus, as discussed above the claims being examined in this office action are 1-2, 4, 9, 11, 14-17.
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 14-17 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.
The claims broadly embrace treating/controlling any and all known and unknown plant diseases of any type with the claimed combination of antifungal agents.
The specification discloses treating/controlling a variety of fungal plant diseases with the claimed combination of active agents. However, the specification is silent on treating/controlling diseases caused by bacteria or viruses or insects, etc. which are all within the scope of the claimed plant diseases. Thus, the specification fails to disclose any scope plant diseases which can be controlled or treated, etc. beyond the broad scope of plant fungal diseases instantly disclosed. Thus, it is clear that Applicants' claims to controlling any and all known and unknown plant diseases caused by any and all causes is based in large part on conjecture. Thus, the claimed control of the entire scope of any and all known and unknown plant diseases was not known in the prior art at the time of the instant invention by Applicants, and include diseases yet to be discovered.
As the specification fails to describe controlling/treating any other plant disease except those caused by phytopathogenic fungi it is clear that applicants do not have written description support for controlling any and all known and unknown plant diseases caused by and known or unknown cause as is instantly claimed.
Applicant's attention is also directed to In re Shokal, 113 USPQ 283 (CCPA 1957), wherein it is stated:
It appears to be well settled that a single species can rarely, if ever, afford sufficient support for a generic claim. In re Soll, 25 CCPA (Patents) 1309, 97 F2d 623, 38 USPQ 189; In re Wahlforss, 28 CCPA (Patents) 867, 117 F2d 270, 48 USPQ 397. The decisions do not however fix any definite number of species which will establish completion of a generic invention and it seems evident therefrom that such number will vary, depending on the circumstances of particular cases. Thus, in the case of small genus such as the halogens, consisting of four species, a reduction to practice of three, perhaps even two, might serve to complete the generic invention, while in the case of a genus comprising hundreds of species, a considerably larger number of reductions to practice would probably be necessary.
As stated in MPEP 2163 II: If the application as filed does not disclose the complete structure (or acts of a process) of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. The instant specification is devoid of a description for controlling the numerous possible known and yet to be discovered plant diseases. The specification merely discloses controlling diseases caused by phytopathogenic fungi. Thus, Applicants have failed to demonstrate possession of controlling the numerous possible known and unknown plant diseases which are instantly claimed. Disclosure of function alone is little more than a wish for possession; it does not satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (written description requirement not satisfied by merely providing “a result that one might achieve if one made that invention”); In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming a rejection for lack of written description because the specification does “little more than outline goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate”).
The disclosed examples of diseases controlled by the claimed combination, does not constitute an adequate description to demonstrate possession of controlling all of the innumerable possible known or yet to be discovered plant diseases caused by bacteria, viruses, insects, etc. which are instantly claimed. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail such that the Artisan can reasonably conclude that the inventor(s) had possession of the claimed invention. Such possession may be demonstrated by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and/or formulae that fully set forth the claimed invention. Possession may be shown by an actual reduction to practice, showing that the invention was “ready for patenting”, or by describing distinguishing identifying characteristics sufficient to show that Applicant was in possession of the claimed invention (January 5, 2001 Fed. Reg., Vol. 66, No. 4, pp. 1099-11).
Overall, what these statements indicate is that the Applicant must provide adequate description of such core structure and function related to that core structure such that the Artisan of skill could determine the desired effect. Hence, the analysis above demonstrates that Applicants have not described the numerous possible known and yet to be discovered plant diseases which can be controlled with the claimed fungicidal combination beyond those fungal diseases disclosed in the instant specification. As such, the Artisan of skill could not predict that Applicant possessed any additional plant disease species, except for fungal plant diseases disclosed in the claims.
Therefore, the breadth of the claims as reading on controlling any and all known or unknown plant diseases, which include those yet to be discovered; in view of the level of knowledge or skill in the art at the time of the invention, and the limited information provided in the specification, an Artisan of skill would not recognize from the disclosure that Applicant was in possession of controlling the numerous possible known and unknown plant diseases, at the time the application was filed. Thus, it is concluded that the written description requirement is not satisfied.
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 1-2, 4, 9, 11, 14-17 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 1-2 are indefinite because the claims each contain at least one phrase in curly brackets and/or regular brackets. For instance, there appears to be an ending “]” in claim 1 after the word “atom” and it is unclear where the other bracket is meant to be present in the claim or if this is typo, and it is also unclear if these phrases within the brackets and/or curly brackets are meant to be part of the claim or not as it pertains to examination for prior art purposes. If these phrases are meant to be part of the claim then the brackets/curly brackets should be removed which would overcome these rejections.
Claim 4, 9, 11, and 14-17 are also rejected because they depend either directly or indirectly from claim 1 and do not resolve the ambiguities in that claim.
Claim 14 is indefinite because it recites “the foliage” which lacks antecedent basis because not all plants have foliage (e.g. liverworts) and because no mention of foliage has been made previously.
Claim 15 is indefinite because it recites “the soil” which lacks antecedent basis because not all plants grow in soil (e.g. hydroponically grown plants) and because no mention of soil has been made previously.
Claim 16 is indefinite because it recites “the roots” which lacks antecedent basis because not all plants have roots (e.g. liverworts) and as such roots are not inherent/do not inherently have antecedent basis and because no mention of roots has been made previously.
Claim 17 is indefinite because it recites “the seeds” which lacks antecedent basis because not all plants have seeds/produce seeds (e.g. ferns) and as such seeds are not inherent/do not inherently have antecedent basis and because no mention of seeds has been made previously.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-2, 4, 9, 11, 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAK-AGUCHI et al. (WO 01/00562 A1; 01/04/2001) and Sumitomo (JP2016199589A, espacenet and Derwent machine translations attached, examiner tried to cite both but ended up relying mostly on the paragraph numbers in the espacenet translation).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-2, and 4, SAK-AGUCHI et al. at abstract and entire document teach the application of applicant’s elected species
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which is compound I-1 in SAK-AGUCHI, and corresponds to SAK-AGUCHI’s
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(where X and Y are CH; R1, R2, R3 are H; W being oxygen) is applied to plants for fungal disease control, and therefore SAK-AGUCHI teaches the instantly claimed and elected compound(s) of formula I (the instant E being phenyl; R1 being CH3; L being oxygen; A is CH for instance)
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(see entire document; Table 1, compound I-1; abstract; claims; Paragraph beginning: “The compound of the present invention can be used as a fungicide for agricultural and horticultural use in fields, paddy fields, orchards, tea gardens, meadows, turf, and the like…”; paragraph beginning, “Specific examples of the application method of the compound of the present invention include foliage application, soil treatment, seed disinfection, and the like…”; paragraph beginning: “When the compound of the present invention is used as an active ingredient in an agricultural and horticultural fungicide, the application rate of the active…”;).
Regarding claims 1-2, 4, 14-17, SAK-AGUCHI also teaches wherein their fungicidal actives which include the claimed formula (I), e.g. I-1 which corresponds/is applicant’s elected species can be combined with other fungicidal actives to improve the efficacy and these other agricultural fungicides and teaches methods of using their compounds and/or compositions thereof to control fungal diseases in/on seeds, roots, soil, foliage via application of/applying effective amounts of the compounds and/or compositions thereof to the plants, soil which in treating the soil would also be treating the roots in the soil, seeds, foliage etc. to treat plants in need of said control (See entire document; Table 1, compound I-1; abstract; claims; paragraph beginning, “Specific examples of the application method of the compound of the present invention include foliage application, soil treatment, seed disinfection, and the like…”; paragraph beginning: “When the compound of the present invention is used as an active ingredient in an agricultural and horticultural fungicide, the application rate of the active…”; Paragraph beginning: “The compound of the present invention can be used as a fungicide for agricultural and horticultural use in fields, paddy fields, orchards, tea gardens, meadows, turf, and the like…”;). SAK-AGUCHI’s additional active agents, e.g. fungicides, which could be/can be combined with their I-1 which is applicant’s elected species of the instant formula I would broadly include the instantly elected, inpyrfluxam,
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, referred to by its IUPAC name in the instant claims 3-(difluoromethyl)-N-[(R)-2,3-dihydro-1,1,3-trimethyl-1H-inden-4-yl]-1-methyl-1H-pyrazole-4-carboxamide and/or the fluxapyroxad which was a non-elected species that the new examiner is unclear about why the previous examiner examined this species instead of the elected inpyrfluxam because while SAK-AGUCHI exemplifies other fungicides it does not limit the fungicides with which the claimed compound of formula (I) can be combined to only those exemplified in the disclosure.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)/ Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Regarding claims 1-2, 4, 9, 11, 14-17, SAK-AGUCHI does not teach wherein the additional actives which can be combined with the elected compound of formula (I) are the specifically claimed fungicides, specifically the instantly elected inpyrfluxam or wherein these combinations are present in the claimed ratios now required, e.g. 1:1. However, these deficiencies in SAK-AGUCHI are addressed by Sumitomo.
Sumitomo (JP2016199589A) teaches combinations which comprise applicant’s elected inpyrfluxam in combination with other fungicides which are not limited in scope and which are effective for controlling plant diseases when applied to seeds, foliage, soil which invariably treats the roots of plants, planted in said soil in effective amounts and wherein the ratios of the combinations of inpyrfluxam to the other fungicides is routinely determined by one of ordinary skill in the art as it depends on the type of crop to be treated the type of pest to be controlled, treatment time, treatment method, etc. (See paragraph/section beginning/containing, “In the treatment of the present carboxamide compound to a crop or a crop cultivation area, at least one component selected from the following groups (B) to (E) can be used in addition… through the end of the sections discloses the per 100 kg”; ([0023]); entire document; [0006-0024]; abstract; claims). It would have been obvious to one of ordinary skill in the art to have at first tested for instance a 1:1 to ratio of formula (I) to the elected inpyrfluxam as a 1:1 ratio is the easiest ratio to formulate and use for controlling plant diseases and this commonly tested/easy ratio to formulate is well within the instantly claimed ratio ranges (see entire document and specific sections cited above).
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have combined the claimed inpyrfluxam fungicide as taught by Sumitomo with the claimed fungicide of formula (I) as taught by SAK-AGUCHI because it is known "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).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4, 9, 11, 14-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over all claims of U.S. Patent No. 12714103 (‘103) in view of SAK-AGUCHI et al., WO 01/00562 A1 and Sumitomo (JP2016199589A). ‘103 teaches compositions for controlling plant diseases comprising the same compound of formula (I) that is instantly elected (methyl (2Z)-2-(2-methyl-5-phenylphenoxy)-3-methoxy-2-propenoate) with different secondary actives from the instantly elected inpyrfluxam. ‘103 does not specifically claim the secondary herbicide claimed or the methods claimed. However, this would have been obvious when taken in view of Sumitomo and Sakaguchi.
Regarding claims 1-2, and 4, SAK-AGUCHI et al. at abstract and entire document teach the application of applicant’s elected species
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which is compound I-1 in SAK-AGUCHI, and corresponds to SAK-AGUCHI’s
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(where X and Y are CH; R1, R2, R3 are H; W being oxygen) is applied to plants for fungal disease control, and therefore SAK-AGUCHI teaches the instantly claimed and elected compound(s) of formula I (the instant E being phenyl; R1 being CH3; L being oxygen; A is CH for instance)
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(see entire document; Table 1, compound I-1; abstract; claims; Paragraph beginning: “The compound of the present invention can be used as a fungicide for agricultural and horticultural use in fields, paddy fields, orchards, tea gardens, meadows, turf, and the like…”; paragraph beginning, “Specific examples of the application method of the compound of the present invention include foliage application, soil treatment, seed disinfection, and the like…”; paragraph beginning: “When the compound of the present invention is used as an active ingredient in an agricultural and horticultural fungicide, the application rate of the active…”;).
Regarding claims 1-2, 4, 14-17, SAK-AGUCHI also teaches wherein their fungicidal actives which include the claimed formula (I), e.g. I-1 which corresponds/is applicant’s elected species can be combined with other fungicidal actives to improve the efficacy and these other agricultural fungicides and teaches methods of using their compounds and/or compositions thereof to control fungal diseases in/on seeds, roots, soil, foliage via application of/applying effective amounts of the compounds and/or compositions thereof to the plants, soil which in treating the soil would also be treating the roots in the soil, seeds, foliage etc. to treat plants in need of said control (See entire document; Table 1, compound I-1; abstract; claims; paragraph beginning, “Specific examples of the application method of the compound of the present invention include foliage application, soil treatment, seed disinfection, and the like…”; paragraph beginning: “When the compound of the present invention is used as an active ingredient in an agricultural and horticultural fungicide, the application rate of the active…”; Paragraph beginning: “The compound of the present invention can be used as a fungicide for agricultural and horticultural use in fields, paddy fields, orchards, tea gardens, meadows, turf, and the like…”;). SAK-AGUCHI’s additional active agents, e.g. fungicides, which could be/can be combined with their I-1 which is applicant’s elected species of the instant formula I would broadly include the instantly elected, inpyrfluxam,
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, referred to by its IUPAC name in the instant claims 3-(difluoromethyl)-N-[(R)-2,3-dihydro-1,1,3-trimethyl-1H-inden-4-yl]-1-methyl-1H-pyrazole-4-carboxamide and/or the fluxapyroxad which was a non-elected species that the new examiner is unclear about why the previous examiner examined this species instead of the elected inpyrfluxam because while SAK-AGUCHI exemplifies other fungicides it does not limit the fungicides with which the claimed compound of formula (I) can be combined to only those exemplified in the disclosure.
Regarding claims 1-2, 4, 9, 11, 14-17, ‘103 and SAK-AGUCHI do not teach wherein the additional actives which can be combined with the elected compound of formula (I) are the specifically claimed fungicides, specifically the instantly elected inpyrfluxam or wherein these combinations are present in the claimed ratios now required, e.g. 1:1. However, these deficiencies in SAK-AGUCHI and ‘103 are addressed by Sumitomo.
Sumitomo (JP2016199589A) teaches combinations which comprise applicant’s elected inpyrfluxam in combination with other fungicides which are not limited in scope and which are effective for controlling plant diseases when applied to seeds, foliage, soil which invariably treats the roots of plants, planted in said soil in effective amounts and wherein the ratios of the combinations of inpyrfluxam to the other fungicides is routinely determined by one of ordinary skill in the art as it depends on the type of crop to be treated the type of pest to be controlled, treatment time, treatment method, etc. (See paragraph/section beginning/containing, “In the treatment of the present carboxamide compound to a crop or a crop cultivation area, at least one component selected from the following groups (B) to (E) can be used in addition… through the end of the sections discloses the per 100 kg”; ([0023]); entire document; [0006-0024]; abstract; claims). It would have been obvious to one of ordinary skill in the art to have at first tested for instance a 1:1 to ratio of formula (I) to the elected inpyrfluxam as a 1:1 ratio is the easiest ratio to formulate and use for controlling plant diseases and this commonly tested/easy ratio to formulate is well within the instantly claimed ratio ranges (see entire document and specific sections cited above).
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have combined the claimed inpyrfluxam fungicide as taught by Sumitomo with the claimed fungicide of formula (I) as taught by ‘103 and SAK-AGUCHI because it is known "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).
Claims 1-2, 4, 9, 11, 14-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-8 of U.S. Patent No. 12520843 (‘843) in view of SAK-AGUCHI et al., WO 01/00562 A1 and Sumitomo (JP2016199589A). ‘843 teaches compositions for controlling plant diseases comprising the same compound of formula (I) that is instantly elected with different secondary actives from the instantly elected inpyrfluxam. ‘843 does not specifically claim the secondary herbicide claimed or the methods claimed. However, this would have been obvious when taken in view of Sumitomo and Sakaguchi.
Regarding claims 1-2, and 4, SAK-AGUCHI et al. at abstract and entire document teach the application of applicant’s elected species
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which is compound I-1 in SAK-AGUCHI, and corresponds to SAK-AGUCHI’s
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(where X and Y are CH; R1, R2, R3 are H; W being oxygen) is applied to plants for fungal disease control, and therefore SAK-AGUCHI teaches the instantly claimed and elected compound(s) of formula I (the instant E being phenyl; R1 being CH3; L being oxygen; A is CH for instance)
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(see entire document; Table 1, compound I-1; abstract; claims; Paragraph beginning: “The compound of the present invention can be used as a fungicide for agricultural and horticultural use in fields, paddy fields, orchards, tea gardens, meadows, turf, and the like…”; paragraph beginning, “Specific examples of the application method of the compound of the present invention include foliage application, soil treatment, seed disinfection, and the like…”; paragraph beginning: “When the compound of the present invention is used as an active ingredient in an agricultural and horticultural fungicide, the application rate of the active…”;).
Regarding claims 1-2, 4, 14-17, SAK-AGUCHI also teaches wherein their fungicidal actives which include the claimed formula (I), e.g. I-1 which corresponds/is applicant’s elected species can be combined with other fungicidal actives to improve the efficacy and these other agricultural fungicides and teaches methods of using their compounds and/or compositions thereof to control fungal diseases in/on seeds, roots, soil, foliage via application of/applying effective amounts of the compounds and/or compositions thereof to the plants, soil which in treating the soil would also be treating the roots in the soil, seeds, foliage etc. to treat plants in need of said control (See entire document; Table 1, compound I-1; abstract; claims; paragraph beginning, “Specific examples of the application method of the compound of the present invention include foliage application, soil treatment, seed disinfection, and the like…”; paragraph beginning: “When the compound of the present invention is used as an active ingredient in an agricultural and horticultural fungicide, the application rate of the active…”; Paragraph beginning: “The compound of the present invention can be used as a fungicide for agricultural and horticultural use in fields, paddy fields, orchards, tea gardens, meadows, turf, and the like…”;). SAK-AGUCHI’s additional active agents, e.g. fungicides, which could be/can be combined with their I-1 which is applicant’s elected species of the instant formula I would broadly include the instantly elected, inpyrfluxam,
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, referred to by its IUPAC name in the instant claims 3-(difluoromethyl)-N-[(R)-2,3-dihydro-1,1,3-trimethyl-1H-inden-4-yl]-1-methyl-1H-pyrazole-4-carboxamide and/or the fluxapyroxad which was a non-elected species that the new examiner is unclear about why the previous examiner examined this species instead of the elected inpyrfluxam because while SAK-AGUCHI exemplifies other fungicides it does not limit the fungicides with which the claimed compound of formula (I) can be combined to only those exemplified in the disclosure.
Regarding claims 1-2, 4, 9, 11, 14-17, ‘843 and SAK-AGUCHI do not teach wherein the additional actives which can be combined with the elected compound of formula (I) are the specifically claimed fungicides, specifically the instantly elected inpyrfluxam or wherein these combinations are present in the claimed ratios now required, e.g. 1:1. However, these deficiencies in SAK-AGUCHI and ‘843 are addressed by Sumitomo.
Sumitomo (JP2016199589A) teaches combinations which comprise applicant’s elected inpyrfluxam in combination with other fungicides which are not limited in scope and which are effective for controlling plant diseases when applied to seeds, foliage, soil which invariably treats the roots of plants, planted in said soil in effective amounts and wherein the ratios of the combinations of inpyrfluxam to the other fungicides is routinely determined by one of ordinary skill in the art as it depends on the type of crop to be treated the type of pest to be controlled, treatment time, treatment method, etc. (See paragraph/section beginning/containing, “In the treatment of the present carboxamide compound to a crop or a crop cultivation area, at least one component selected from the following groups (B) to (E) can be used in addition… through the end of the sections discloses the per 100 kg”; ([0023]); entire document; [0006-0024]; abstract; claims). It would have been obvious to one of ordinary skill in the art to have at first tested for instance a 1:1 to ratio of formula (I) to the elected inpyrfluxam as a 1:1 ratio is the easiest ratio to formulate and use for controlling plant diseases and this commonly tested/easy ratio to formulate is well within the instantly claimed ratio ranges (see entire document and specific sections cited above).
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have combined the claimed inpyrfluxam fungicide as taught by Sumitomo with the claimed fungicide of formula (I) in the combinations of ‘843 and SAK-AGUCHI because it is known "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).
Response to Arguments/Remarks
Applicant’s amendments to the claims and arguments/response which points out that the previous examiner did not actually examine the elected species of invention, etc. have prompted the new grounds of rejection by the new examiner of record in this second non-final office action.
Applicants argue/comment that they have incorporated claim 10 which the previous examiner merely objected to for depending on a rejected base claim and that in doing this they have placed the instant claims in condition for allowance. The new examiner of record, respectfully disagrees that this amendment places the claims in condition for allowance based on the new grounds/reasons of rejection which are presented above in the new rejections under 103 and 112. Thus, the examiner has issued the new second non-final office action which addresses applicants elected species and the claims related to those specific species as is explained herein.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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