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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 25, 2025 has been entered.
Claims 1, 8, 10 and 12-13 are pending in the application. Claims 1 and 13 have been amended. Claims 1, 8, 10 and 12-13 will be examined.
Status of the Claims
The objection of claim 3 because of the following informalities is withdrawn due to cancellation of claim 3.
The rejection of claims 1-6, 8-14, and 16-18 rejected under 35 U.S.C. 103 as being unpatentable over Gongora et al. (WO 2018/025192) in view of Kisuno et al. (EP 0 788 740) is withdrawn due to Applicant’s amendment of the claims.
The following rejections are newly added. They constitute the complete set of rejections presently being applied to the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 recites “said blend is present in an amount from about 0.1% to about 30% by weight of the composition”. Independent claim 1 from which claim 8 depends now has the limitation of “ wherein said blend is present in an amount from 0.1% to 30% by weight of the composition”. While claim 8 uses the language of “from about”, this language does not further limit independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
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 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN102258039, Translation) in view of Kisuno et al. (EP 0 788 740). Kisuno et al. cited by the Applicant on the IDS dated 5/3/2022. Zhang translation from FIT Database used as English Translation.
Applicant’s Invention
Applicant claims a stable fungicidal composition comprising prothioconazole, mancozeb, and a blend of high molecular weight and low molecular weight formaldehyde-aromatic sulfonic acid condensates surfactants or a salt thereof, wherein said blend is present in an amount from 0.1% to 30% by weight of the composition, and wherein the high molecular weight condensate is a polymer condensate having a numbered average molecular weight more than 5000.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Regarding claim 1, Zhang teaches a sterilizing composition containing prothioconazole and thiocarbamate (page 1, Abstract, Translation). Zhang teaches the weight ratio of prothioconazole to mancozeb is 1:1 to 1:20 (page 2, paragraph [0008], Translation).
Regarding claim 1, Zhang teaches the composition contains at least one surface active agent when administered to facilitate dispersing he active components in water. The surfactant is known by those skilled in the art and can be selected from one or several kinds of dispersant (page 2, paragraphs [0013] and [0014], Translation).
Zhang teaches the dispersant is selected from bis (alkyl) naphthalene sulfonate formaldehyde condensate (page 2, paragraph [0015], Translation).
Zhang teaches in several examples compositions comprising prothioconazole, mancozeb, and naphthalene sulfonic acid formaldehyde condensation product sodium salt (page 5, Example 1, paragraphs [0047] –[0048]; page 6, Example 9, paragraphs [0063]-[0064], Translation).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Zhang does not specifically disclose a blend of high molecular weight and low molecular weight formaldehyde-aromatic sulfonic acid condensate surfactants, a salt thereof, wherein the blend is present in an amount from 0.1% to 30% by weight of the composition, and wherein the high molecular weight condensate is a polymer condensate having a numbered average molecular weight more than 5000. It is for this reason Kisuno et al. is added as a secondary reference.
Regarding claim 1, Kisuno et al. teach a stable aqueous suspension of composition particles each including a core formed from a solid or liquid particle and a coating layer formed on a core particle and including at least one high molecular weight surfactant compound having an average molecular weight of 1100 or more and at least one low molecular weight surfactant compound having an average molecular weight of 1100 or less (Abstract).
Kisuno et al. teach the compounds comprise azole fungicides and carbamate fungicides (col. 7, lines 18-21; lines 39-40).
Regarding claim 1, Kisuno et al. teach high molecular weight surfactant compounds have average molecular weight of more preferably 2,000 to 1,000,000, still more preferably 3,000 to 700,000 (col. 8, lines 51-56).
Kisuno et al. teach examples of high molecular weight surfactant compounds include melamine sulfonic acid-formaldehyde polycondensation products (col. 9, lines 24-25).
Regarding claim 6, Kisuno et al. teach the average molecular weight of the low molecular weight surfactant compounds is preferably in the range of from 100 to 1100, more preferably 300 to 1100 (col. 9, lines 54-58-col. 10, lines 1-7).
Regarding claims 1 and 8, Kisuno et al. teach the high and low molecular weight surfactant components are present in a total amount of 0.2 to 30% by weight based on the total weight of the aqueous solution (page 16, col. 29, ones 44-48, claim 14).
Finding a prima facie obviousness Rationale and Motivation
(MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date
of the claimed invention to combine the teachings of Zhang and Kisuno et al. and formulate a composition with a blend of high molecular weight and low molecular weight formaldehyde-aromatic sulfonic acid condensates surfactants. Zhang teaches a sterilizing composition containing prothioconazole and thiocarbamate, specifically, with mancozeb as the thiocarbamate, as exemplified in the examples. One of ordinary skill in the art would have been motivated to add a blend of high molecular weight and low molecular weight formaldehyde-aromatic sulfonic acid condensates surfactants to the compositions taught because Zhang teaches that surfactants are added to the compositions, including naphthalene sulfonic acid formaldehyde condensation product sodium salt. One of ordinary skill in the art would have found it obvious to substitute any surfactant, including a blend of high molecular weight and low molecular weight formaldehyde sulfonic acid condensates in the compositions, especially in water-based (aqueous) suspensions based on the teachings of Kisuno et al. Kisuno et al. teach the addition of a blend of high molecular weight and low molecular weight formaldehyde sulfonic acid condensates formulate stable aqueous suspensions. Also, based on the teachings of Kisuno et al. carbamate and azole fungicides are actives that are used in the suspension. As such, the skilled artisan would have been motivated to add a blend of high molecular weight and low molecular weight formaldehyde sulfonic acid condensate to the prothioconazole and mancozeb fungicidal compositions to form stable aqueous compositions with a reasonable expectation of success, as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007).
Likewise, one of ordinary skill in the art would have been motivated to use 0.1% to 30% by weight of the blend because Zhang teaches the surface active agent is 5 to 30% of the total weight of the composition. Further, Kisuno et al. teach the high and low molecular weight surfactant components are present in a total amount of 0.2 to 30% by weight based on the total weight of the aqueous solution. As such, one of ordinary skill in the art would have found it obvious to use the teachings of the prior art to determine the optimal amount of the blend to use in the compositions with a reasonable expectation of success. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Therefore, the claimed 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.
Claim(s) 10, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN102258039, Translation) in view of Kisuno et al. (EP 0 788 740) as applied to claims 1 and 8 above, and further in view of Oliveira et al. (US 2017/0332637). Kisuno et al. cited by the Applicant on the IDS dated 5/3/2022. Zhang translation from FIT Database used as English Translation.
Applicant’s Invention
Applicant claims a stable fungicidal composition comprising prothioconazole, mancozeb, and a blend of high molecular weight and low molecular weight formaldehyde-aromatic sulfonic acid condensates surfactants or a salt thereof, wherein said blend is present in an amount from 0.1% to 30% by weight of the composition, and wherein the high molecular weight condensate is a polymer condensate having a numbered average molecular weight more than 5000. Applicant claims the composition further comprising at least one co-pesticide.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Zhang and Kisuno et al. with respect to the 35 U.S.C. 103 rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Zhang and Kisuno et al. do not specifically disclose the composition further comprises at least one co-pesticide, as claimed in claim 10, the co-pesticide is a strobilurin fungicide, as claimed in claim 12, or the co-pesticide is azoxystrobin or trifloxystrobin, as claimed in claim 13. It is for this reason Oliveira et al. is added as a secondary reference.
Regarding claim 10, Oliveira et al. teach a fungicidal combination comprising: (i) mancozeb, (ii) prothioconazole, and (b) a strobilurin fungicide selected from the group consisting of azoxystrobin…dimoxystrobin…and trifloxystrobin (page 8, claim 1; page 8-9, claim 2).
Regarding claims 12 and 13, Oliveira et al. teach a fungicidal combination wherein the combination comprises mancozeb, prothioconazole, and azoxystrobin (page 9, claim 7). Oliveira et al. teach the fungicidal combination wherein the combination comprises mancozeb, prothioconazole, and trifloxystrobin (page 9, claim 10).
Oliveira et al. teach adjuvants and ancillary ingredients may be used to formulate such pre-formulated compositions and may employ wetters, adhesives, dispersants or surfactants (page 7, paragraph [0127].
Finding a prima facie obviousness Rationale and Motivation
(MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date
of the claimed invention to combine the teachings of Zhang, Kisuno et al., and Oliveira et al. and add a co-pesticide to the composition. Zhang teaches a sterilizing composition containing prothioconazole and thiocarbamate, specifically, with mancozeb, as exemplified in the examples. One of ordinary skill in the art would have been motivated to add additional fungicides to the compositions taught by Zhang, as modified by Kisuno et al., because it is known in the art to add additional active agents to increase the spectrum of activity of the compositions. One of ordinary skill in the art would have been motivated to add a strobilurin fungicide to the compositions comprising prothioconazole and mancozeb taught by Zhang because these compositions are known in the prior art, as taught by Oliveira. In addition, in view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional fungicides set forth prima facie obvious subject matter. Therefore, the skilled artisan would have been motivated to formulate a composition comprising mancozeb, azoxystrobin, and prothioconazole or mancozeb, prothioconazole, and trifloxystrobin with a reasonable expectation of success, as these compositions are taught in the prior art.
Therefore, the claimed 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.
Response to Arguments
Applicant’s arguments with respect to claims 1, 8, 10, and 12-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The examiner will address Applicant’s arguments regarding unexpected results.
Applicant argues that numerous examples in accordance with the claimed invention, which include comparison examples. The retention observation demonstrated stable formulations as evidenced by the superior suspensibility over a prolonged period of time, whereas the comparative examples dropped over the same time period. In response to Applicant’s argument, evidence of nonobviousness must be commensurate in scope with that of the claimed subject matter. The composition taught in Example 1 comprises mancozeb, prothioconazole, lignosulfonate, blend of high and low molecular weight formaldehyde-aromatic sulfonic acid condensate and defoamer. The data does indicate the composition in Example 1 has better stability based on suspensibility when compared to Example 3 that comprises a similar composition wherein the difference is the surfactant. As noted, the data must be commensurate in scope with the claimed invention. The composition taught in Example 2 comprises mancozeb, azoxystrobin, prothioconazole, sodium lauryl sulfate, a blend of high and low molecular weight formaldehyde-aromatic sulfonic acid condensate, defoamer. The composition taught in Example 5 comprises mancozeb, prothioconazole, trifloxystrobin, lignosulfonate, sodium lauryl sulphate, blend of high and low molecular weight formaldehyde-aromatic sulfonic acid condensate, sodium salt of xylene sulphonate, defoamer, and precipitated silica. The data does indicate the compositions of Examples 2 and 5 have better stability based on suspensibility when compared to Example 4 that comprises a similar composition wherein the difference is the surfactant. However, independent claim 1, which the Example 1 is based, is directed to a stable fungicidal composition comprising prothioconazole, mancozeb, and a blend of high molecular weight and low molecular weight formaldehyde-aromatic sulfonic acid condensates surfactants or a salt thereof, wherein said blend is present in an amount from 0.1% to 30% by weight of the composition, and wherein the high molecular weight condensate is a polymer condensate having a numbered average molecular weight more than 5000. In example 1 the blend of high and low molecular weight formaldehyde-aromatic sulfonic acid condensate is 7.00% wt./wt. In example 2, the blend of high and low molecular weight formaldehyde-aromatic sulfonic acid condensate is 6.00% wt./wt. In example 5, the blend of high and low molecular weight formaldehyde-aromatic sulfonic acid condensate is 5.00% wt./wt. It cannot be determined if the use of the blend of high and low molecular weight formaldehyde-aromatic sulfonic acid condensate at 5.00%, 6.00% or 7.00% wt./wt. is demonstrative of the results if less than 5%, specifically 0.1% or more than 7%, specifically 30% will provide the same results. While Applicant does not have to exemplify data across the entire range, a trend must be shown. Applicant has not proven to provide a trend in the exemplified data which would allow the skilled artisan to reasonably extend the probative value thereof. See In re Kollmann and Irwin, 201 USPQ 193 (C.C.P.A. 1979).
As such, Applicant has not established nonobvious evidence that is commensurate in scope with that of the claimed subject matter.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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/ANDRIAE M HOLT/ Examiner, Art Unit 1614
/ALI SOROUSH/ Supervisory Patent Examiner, Art Unit 1614