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 .
Status of Claims
Claims 1, 4-6, 9-17 are pending; claims 1, 4-6, and 9-12 are examined. Claims 13-17 are currently withdrawn from further consideration as being drawn to a nonelected invention.
Applicant’s arguments, filed 09/17/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 (New Ground of Rejection)
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, 4-6, and 9-12 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.
Claim 1 recites at least one de-complexing agent “selected from the group comprising”, which renders the claim indefinite because the scope of the claim is unclear. As a Markush grouping is a closed group of alternatives, it is unclear what other alternatives are intended to be encompassed by the claim since the term “comprising” requires a material selected form an open list of alternatives. See MPEP § 2173.05(h)(I).
Claims 4-6 and 9-12 are rejected as they depend from claim 1.
Claim Rejections - 35 USC § 103 (Maintained)
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, 4-6, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Machado et al. (US 2019/0150430 A1, 05/23/2019, IDS reference) (hereinafter Machado).
Machado discloses a stable fungicidal oil liquid formulation comprising at least one dithiocarbamate fungicide, at least one co-fungicide including triazole fungicides and strobilurin fungicides, and an agrochemically acceptable non-aqueous liquid carrier (abstract, [0041]). The dithiocarbamate fungicide includes mancozeb ([0048]). The triazole fungicide includes prothioconazole ([0049]). The formulation may comprise at least one surfactant, including block copolymers such as ethylene oxide-propylene oxide block copolymers ([0065]) in amounts of about 0.1-40 wt. % based on the total weight of the composition ([0067]).
As noted by Example 3 on p. 22, line 18 and p. 23, lines 2-3 of the instant Specification, ethylene oxide/propylene oxide block copolymer is also known as poly(ethylene glycol)-block-poly(propylene glycol)-block-poly(ethylene glycol). Thus the surfactant of Machado meets the at least one de-complexing agent as instantly claimed.
The prior art is not anticipatory insofar as the combination of mancozeb, prothioconazole, and ethylene oxide-propylene oxide block copolymers must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143(1)(A).
While the prior art does not specifically disclose a complexed prothioconazole, as noted by p.4, lines 9-10 and 32-33 of the instant Specification, conazole fungicides form stable complexes when surrounded by metal ions, and a complexed conazole refers to conazole fungicide in cohesion with a stabilizer forming a complex. Page 7, lines 25-29 of the instant Specification further states that mancozeb has free Mn+ and Zn+ ions available to complex with a conazole fungicide, acting as a stabilizer. Accordingly, where the composition of Machado, made obvious above, comprises prothioconazole and mancozeb, they are reasonably expected to form a complexed prothioconazole as instantly claimed, whether recognized or not. See MPEP 2112(III).
Regarding the amounts of the at least one de-complexing agent, the claimed amounts (i.e. from 0.1% w/w to 50% w/w) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. 0.1-40 wt. %). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 6, Machado further discloses the amount of the dithiocarbamate fungicide may be about 0.1-80 wt. % based on the total weight of the composition ([0056]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claims 9-11, Machado further discloses wherein the strobilurin fungicide may also include azoxystrobin ([0050]).
As noted by p.11, lines 12-15 of the instant Specification, azoxystrobin, a strobilurin fungicide, is a quinone outside inhibitor.
Regarding claim 12, Mercado further discloses wherein the amount of the triazole fungicide and the strobilurin fungicide together may be present in a concentration of about 0.1-30 wt. %, based on the total weight of the composition ([0057]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have selected an amount of the triazole fungicide and an amount of the strobilurin fungicide, such that the amounts together is within the range of about 0.1-30% by weight of the composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Response to Arguments
Applicant asserts Machado is completely silent on the inclusion of a stabilizing agent and a de-complexing agent, wherein the de-complexing agent facilitates breaking of the complexed conazole-stabilizer complex and free conazole can be made available for its activity; Machado is also silent on the application recovery.
The Examiner is not persuaded by the Applicant’s argument. Although Machado does not disclose using a claimed de-complexing agent in facilitating breaking a conazole-stabilizer complex, rationale different from Applicant’s is permissible. It is not necessary for the prior art to suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP § 2144(IV). Thus, it is not necessary for Machado to disclose using a claimed de-complexing agent for the same reasons as the Applicant, which is to facilitate breaking a conazole-stabilizer complex. As such, the Applicant’s argument is unpersuasive.
Applicant further asserts the composition as claimed in claims 1-15 is found to be superior to Machado because of the inclusion of the de-complexing agents, which is completely absent in Machado.
The Examiner is not persuaded by the Applicant’s argument. As discussed in the rejection above, Machado explicitly discloses in para. [0065] the inclusion of surfactants including block copolymers such as ethylene oxide-propylene oxide block copolymers, which is noted in Example 3 of the instant Specification to be synonymous to poly(ethylene glycol)-block-poly(propylene glycol)-block-poly(ethylene glycol) as instantly claimed.
Applicant asserts the compositions according to the present disclosure show enhanced activity in various experimental conditions, and the distinctive feature of the present disclosure is not known from Machado. The citations, either taken alone or in combination with any other documents of the prior art, do not provide a person skilled in the art with guidance as to implementation of the claimed technical solution, thus the cited reference does not render the presently claimed subject matter obvious.
The Examiner is not persuaded by these arguments. The rationale for obviousness has been detailed in the rejection supra, and the Examiner’s rationale need not be the same as Applicant’s to establish obviousness. Applicant asserts unexpectedness of results when a claimed de-complexing agent is added in comparison to compositions where no de-complexing agent is added, However, as discussed above, Machado discloses the inclusion of the same de-complexing agent as instantly claimed. As such, the compositions as instantly claimed are made obvious and Applicant’s argument is unpersuasive.
Moreover, regarding allegations of unexpected results, Applicant has the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. See MPEP § 716.02(b)(II). Applicant has explained that various statements referenced in the specification support their position, but these cannot take the place of evidence in the record. See MPEP § 716.01(c)(II). For example, Applicants have referenced Table 5/Figure 1, and alleges that Example 3 (having a de-complexing agent),
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272
632
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compared with Example 6 (without de-complexing agent),
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248
632
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shows unexpectedly improved application recovery and comparable efficacy when compared to compositions wherein the prothioconazole is not existing in the complexed form (p.8, ¶4 of Remarks). However, Table 5 (shown below):
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380
548
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demonstrates that prothioconazole, complexed with mancozeb as a stabilizer, at 250 g/L (row 2), has a 94% application recovery; while examples 3 and 6, comprising prothioconazole 540 g/L, mancozeb, and 80 g/kg WG have 81% and 32% recovery rate, respectively (rows 3 and 4). Such results do not appear to demonstrate the alleged unexpectedness, since mancozeb also acts as a stabilizer to form complexed conazole as explained in the instant Specification. Thus, it is unclear to the Examiner how row 2, comprising stabilized prothioconazole and no de-complexing agent, differs from row 4, comprising the same stabilized prothioconazole and no-de-complexing agent; and how row 3 shows unexpected results when comparing with row 2.
Regarding allegations of unexpected results, although Applicant does not appear to have presented potential evidence to demonstrate unexpectedness of the results, even assuming to the contrary and purely arguendo that unexpected results might eventually be shown, even then the probative value of the evidence as compared to the invention as claimed would have to then be determined, i.e., the claims would have to be “commensurate in scope” with the showing. MPEP § 716.02(d). See also MPEP § 2145. The examples of Examples 1-4 employ specific components in specific percentages, and even if Applicant were to show unexpected results, they would be have been obtained, for example, not with the broad class of “stabilizers” (claim 1) or “a fertilizer” (claim 5) generally, but instead with specific species. Note for example, Examples 1-4 at pages 21-23 of the instant specification use mancozeb as the stabilizer. Applicant would need to explain how such specific species are “reasonably representative” of the more broadly claimed subject matter of the claims.
It is further noted that Examples 1-4 include a combination of sodium lignosulfonate and recited species as the at least one de-complexing agent. Applicant would need to explain how such specific combinations are “reasonably representative” of the instantly claimed subject matter of the claims, which do not recite sodium lignosulfonate.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY M TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Friday 10:00 AM - 6:00 PM EST.
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/LUCY M TIEN/Examiner, Art Unit 1612
/FREDERICK F KRASS/Supervisory Patent Examiner, Art Unit 1612