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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 20 November 2025 has been entered.
Status
Applicant’s response dated 20 November 2025 to the previous Office action dated 20 August 2025 is acknowledged. Pursuant to amendments therein, claims 1, 12, and 17-29 are pending in the application.
The claim objection made in the previous Office action is withdrawn in view of applicant’s claim amendments.
The rejections under 35 U.S.C. 103 made in the previous Office action is/are withdrawn in view of applicant’s claim amendments, but new (modified) rejection(s) under 35 U.S.C. 103 is/are made herein in view of applicant’s claim amendments.
Information Disclosure Statement
The information disclosure statement filed 20 November 2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Specifically, copies of the two foreign patent documents were not provided. It has been placed in the application file, but the information referred to therein has not been fully considered.
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.
Claim(s) 1, 17, and 19-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Decor et al. (WO 2016/066644 A1; published 06 May 2016; of record) as evidenced by Arango Isaza et al. (PLOS Genetics, 11 August 2016, 12(8), pages 1-36; of record).
Decor et al. discloses use of N-(Phenylcycloalkyl)carboxamides and N- (Phenylcycloalkyl)thiocarboxamides for the control of phytopathogenic microorganisms in agriculture, wherein a compound of formula (I) is applied to the phytopathogenic microorganisms, their habitat, the plant, the seed thereof, plant parts, plant propagation material or the soil on which the plants are grown or intended to be grown in an effective amount (abstract) wherein the plant may be bananas (page 72 line 31 to page 73 line 10) wherein the microorganisms may be fungi (page 74 lines 12-14) such as mycosphaerella fijiensis (page 75 line 7) wherein a compound of formula (I) is compound 179 (i.e., corresponding to instant compound 1 as cis isomer) (pages 100, 98) wherein the compound can be an optical or chiral isomer thereof or racemic or scalemic mixture thereof (page 7 lines 18) wherein the compound of formula (I) may be in compositions (page 72 lines 9-12) wherein an effective amount is an amount of the inventive compound which is sufficient to control the phytopathogenic microorganism in a satisfactory manner or to eradicate the phytopathogenic microorganism completely, wherein the application rate may vary within a relatively wide range (page 8 lines 11-16) wherein treatment of plant parts with the compound of formula (I) may be an application rate of 50-300 g/ha (page 89 lines 1-8) wherein seedlings may be treated (page 83 line 1) wherein banana plants are observed and evaluated for disease after administration and efficacy of treatment in preventing/eliminating disease may be at least 70% (Examples L-Z3) wherein application is accomplished in a customary manner such as watering (page 80 lines 17-19).
As evidenced by Arango Isaza et al., mycosphaerella fijiensis is also known as Pseudocercospora fijiensis (title; Abstract; Introduction).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Decor et al. as discussed above and to apply a composition comprising an effective amount of compound 179 and/or an optical or chiral isomer thereof or racemic or scalemic (i.e., mixtures of enantiomers in different proportions) mixture thereof (i.e., instant compound 1 as cis isomer such as formula Ic) to banana plants or banana propagation material or soil on which bananas are grown (i.e., locus thereof) or intended to be grown to control phytopathogenic fungi mycosphaerella fijiensis (i.e., Pseudocercospora fijiensis), with a reasonable expectation of success, particularly also given that stereoisomers/enantiomers are prima facie obvious per MPEP 2144.09(II).
Regarding the claimed recitation of ratio of the compound of formula (Ic) to its corresponding cis-enantiomer as greater than 4:1, since the claim does not positively recite the presence of such corresponding cis-enantiomer in the composition other than the recitation of such ratio, and since the ratio is open-ended, such recitation of ratio encompasses the composition comprising no such amount of corresponding cis-enantiomer since the ratio has no upper limit and thus encompasses no amount of corresponding cis-enantiomer. See, e.g., MPEP 2173.05(c)(II)(“the term ‘up to’ includes zero as a lower limit”, and thus a lack of a lower or upper limit encompasses zero/none with respect to such upper or lower (non)limit).
Regarding claim 17, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Decor et al. as discussed above and to practice the method of Decor et al. as discussed above wherein the banana plants are observed and evaluated for disease Pseudocercospora fijiensis (i.e., identifying the banana plant as under disease pressure from Pseudocercospora fijiensis) after administration.
Regarding claim 19, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Decor et al. as discussed above and to practice the method of Decor et al. as discussed above wherein treatment with the compound of formula (I) is an application rate of 50-300 g/ha. Such range of 50-300 overlaps the claimed range of about 200, and a prima facie case of obviousness exists where prior art and claimed ranged overlap per MPEP 2144.05(I).
Regarding claim 20, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Decor et al. as discussed above and to practice the method of Decor et al. as discussed above wherein administration is by watering wherein application rate is optimized for effectiveness of treatment by varying such application rate by watering through routine experimentation per MPEP 2144.05(II), given that Decor et al. discloses that application is by watering and application rate may vary.
Regarding claim 21, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Decor et al. as discussed above and to practice the method of Decor et al. as discussed above wherein the banana plant is a seedling.
Regarding claim 22, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Decor et al. as discussed above and to practice the method of Decor et al. as discussed above wherein the banana plants are observed and evaluated for disease Pseudocercospora fijiensis after administration (i.e., monitoring the banana plant for development of Pseudocercospora fijiensis).
Regarding claim 23, the method of Decor et al. as discussed above has an efficacy of at least 70%, which overlaps the claimed range of about 25-81% (i.e., about 1.52/6.18 to 3.08/3.82), and a prima facie case of obviousness exists where prior art and claimed ranged overlap per MPEP 2144.05(I).
Regarding claims 27-28, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Decor et al. as discussed above and to practice the method of Decor et al. as discussed above wherein treatment with the compound of formula (I) is an application rate of 50-300 g/ha. Such range of 50-300 is the same as or overlaps the claimed ranges of about 50-300 and about 150-300, and a prima facie case of obviousness exists where prior art and claimed ranged overlap per MPEP 2144.05(I).
Regarding claim 29, compound 179 and/or an optical or chiral isomer thereof or racemic or scalemic (i.e., mixtures of enantiomers in different proportions) mixture thereof (i.e., instant compound 1 as cis isomer such as formula Ic) of Decor et al. is the same compound as claimed and thus necessarily/inherently has the same properties of the claimed compound per MPEP 2112.01(II)(compositions that are physically the same must have the same properties) including that the compound is solid, or the compound is an optical or chiral isomer thereof or racemic or scalemic (i.e., mixtures of enantiomers in different proportions) mixture thereof, which are presumed to have the same properties including solidity per MPEP 2144.09(I) and (II) (presumed expectation that compounds similar in structure possess similar properties).
Claim(s) 1, 12, 17, and 19-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Decor et al. as applied to claims 1, 17, and 19-29 above, and further in view of Helie (US 2014/0038950 A1; published 06 February 2014; of record).
Decor et al. is relied upon as discussed above.
Decor et al. does not disclose drench application as in claim 12.
Helie discloses plant treatment (title) wherein methods of anti-fungal treatment include foliar and trunk spraying application, granular soil surface, soil drench, soil injection, and trunk injection (abstract).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Decor et al. and Helie by using a drench application as in Helie in the method of Decor et al. as discussed above, with a reasonable expectation of success, wherein the results of such substitution of drench application for the application of Decor et al. would have predictably resulted in suitable application of the compound of Decor et al. for antifungal treatment of the banana plants or banana propagation material or soil on which bananas are grown or intended to be grown in the method of Decor et al.
Claim(s) 1 and 17-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Decor et al. as applied to claims 1, 17, and 19-29 above, and further in view of Pajot (Cahiers ORSTOM, Serie Entomologie Medicale et Parasitologie, 1975, Vol. 13, No. 3, pages 135-164, Abstract record 22 May 1976; of record).
Decor et al. is relied upon as discussed above.
Decor et al. does not disclose banana plant density as in claim 18.
Pajot discloses that banana plantations may have about 1000-1700 banana plants per hectare (abstract).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Decor et al. and Pajot by application of the method of Decor et al. as discussed above to banana plants in a banana plantation having about 1000-1700 banana plants per hectare per Pajot, with a reasonable expectation of success, wherein the results of such application would have predictably resulted in suitable application of the compound of Decor et al. for antifungal treatment of the banana plants or banana propagation material or soil on which bananas are grown or intended to be grown in the method of Decor et al. Such range of about 1000-1700 banana plants per hectare overlaps the claimed range of about 1500, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Response to Arguments
Applicant's arguments regarding obviousness filed 20 November 2025 have been fully considered but they are not persuasive.
Applicant argues that Decor et al. is silent as to enantiomers of compound 179, and it is unclear why the specific claimed isomer would have been selected, and MPEP 2144.09 relates to compounds per se rather than methods (remarks page 6). In response, Decor et al. specifically recites that the compound can be an optical or chiral isomer thereof or racemic or scalemic mixture thereof (page 7 lines 18), and an obviousness rejection based on close structural similarity is founded on the expectation that compounds similar in structure will have similar properties per MPEP 2144.09(I) rather than relying upon a specific suggestion in the prior art to select the claimed isomer, and MPEP 2144.09 does apply to method claims as evidenced by MPEP 2144.09(II) discussing caselaw, In re Langer, 465 F.2d 896, 175 USPQ 169 (CCPA 1972), involving a process of use claim.
Conclusion
No claims are allowed.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617