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 .
Response to Amendment
The amendment filed on 3/12/2026 in response to the Non-Final rejection of 12/12/2025 is acknowledged and has been entered.
Claims 1 and 8-15 are currently pending an under consideration.
The following species consistent the reply filed on 8/08/2025 is under consideration:
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, wherein A is 2-trifluoromethyl-pyrid-3-yl, and R11 and R12 are both chloro.
Information Disclosure Statement
The information disclosure statement filed on 3/12/2026 is acknowledged and has been considered except where lined through.
Claim Interpretation
Claim 1 recites a method of controlling or preventing infestation of a plant by macrophomina spp comprising applying a compound of formula (I). Thus, the instant claims appear to encompass two different “populations” or times in which the compound of formula (I) could be applied to the plant. For example, “controlling” insinuates that the plant has the infestation by macrophomina spp prior to application of the compound of formula (I) which appears to be consistent with the examples within the specification. “Preventing” the infestation reasonably conveys that the plant has not yet gotten the infestation at the time of application of compound of Formula (I). For examination purposes, “preventing” reads on application of compound I to any plant that has not yet been infested with macrophomina spp.
Rejections Maintained, but Amended in view of Applicants Amendments:
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.
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.
Claim(s) 1 and 8-15 remain rejected under 35 U.S.C. 103 as being unpatentable over Bayer Cropscience (WO2016/066644A1, 2016-05-06, IDS) referred to herein as Bayer in view of Garrido et al. (Genes, Genomes and Genomics 2011; 5(Special Issue 1): 24-39) and Syngenta Participations, AG (WO2015/003951A1, 2015-01-15, IDS) referred to herein as Syngenta.
Bayer teaches the use of N-(Phenylcycloalkyl)carboxamides or 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 soil on which the plants are grown or intended to be grown in an effective amount (abstract). With regards to the compound of formula (I), Bayer teaches compounds of formula I have the general structure
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(page 90). In particular, Bayer teach a specific compound having the general structure of formula I, wherein B is cBu (e.g. cyclobutyl), X1 is H, X2 is H, X3 is Cl, X4 is H, X5 is Cl, Z1 is H, Z2 is H, T is O and A is 2-(trifluoromethyl)-pyridinyl-2-yl in the Cis orientation (cmpd 179, page 100). With regards to the plants, Bayer teaches that useful plants include, but are not limited to, strawberries (page 73). With regards to the phytopathogenic microorganism, Bayer teaches that phytopathogenic microorganisms, in particular phytopathogenic fungi include fungal diseases on roots and stem bases caused by charcoal rot (Macrophomina phaseolina) (page 77, lines 8-10). Moreover, Bayer teaches a number of in vitro test cell tests wherein compound 179 showed efficacy in a number of cell lines including, but not limited to, Alternaria alternata, Botrytis cinerea and Rhizoctonia solani, (examples A-K).
Bayer does not specifically select strawberries as the plant, Macrophomina phaseolina as the fungal disease or compound 179 as the compound for the treatment or prevention of fulfil pathogen infestation. Moreover, Bayer does not specifically teach that compound 179 which is in the cis orientation has the (S,S) stereo configuration, wherein if the composition also contains the (R,R) stereo-confirmation, the weight ratio of the (S,S) stereo configuration to the (R,R) stereo configuration is greater than about 1:1.
Garrido et al. discuss the main leaf, fruit, crown and root strawberry fungal diseases. With regards to the leaf diseases, the reference teaches that fungal pathogens causing leaf disease includes, but is not limited to, Alternaria alternata, Macrophomina phaseolina and Rhizoctonia solani (Table 1). With regards to the fruit disease, the reference teaches fungal pathogens causing fruit diseases includes, but is not limited to, Botrytis cinerea and Rhizoctonia solani (Table 2). With regards to the crown and root diseases, the reference teaches fungal pathogens causing root and crowns diseases include, but are not limited to, Macrophomina phaseolina and Rhizoctonia solani (Table 3).
Syngenta teaches cis substituted 4-membered carboxamides useful as nematicides having the generic structure
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(page 1, lines 6-10). Syngenta further teaches that a potential side product in the synthesis of the compound of formula I is the enantiomer of the compound formula I, e.g. compounds of formula (1aa):
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, wherein in compositions comprising both the compound of formula (I) and formula (Iaa), the ratio of the compound of formula (I) to its enantiomer (the compound of formula (Iaa)) must be greater than 1:1 (pages 2-3, lines 21 to line 10). Specifically, the WO document teaches a compound having the structure
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wherein Y is CH2, R1 is H, R13 and R14 are 2-Cl and 4-Cl respectively, R15 is H and A is
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(P.15, 61.1) which reads on the elected species (Table P and Table 61). With regards to the nematocidal activity, the WO document teaches that the compound are useful for controlling or destroying pests such as insects and/or fungi which occur on plants such as fruit plants, wherein the compounds of formula I have a very advantageous spectrum of activities for protecting against attach and damage by fungi and nematodes (page 55, lines 19-36). Moreover, the WO document teaches that the compounds of the formula I are also suitable for protection of plant propagation material such a seeds, fruit, tubers or nursery plants wherein the compound is treated prior to planting (page 61, lines 13-15). With regards to the plant, the WO document teaches that suitable target plants include strawberries (page 62, lines 3-5). Moreover, Syngenta teaches that compound 61.1, as a preventative, showed a greater than 80% reduction in Meloidogyne spp. (Root-knot nematode) galling (page 135, lines 14-38).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to modify the composition taught by Bayer to having a ratio of greater than 1:1 of the (S,S) stereo configuration to the (R,R) stereo configuration in view of the teachings of Syngenta. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Both Bayer and Syngenta teach the same compound, wherein Syngenta teaches that a potential side product in the synthesis of the compound of formula I is the enantiomer of the compound formula I, e.g. compounds of formula (1aa):
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, wherein in compositions comprising both the compound of formula (I) and formula (Iaa), the ratio of the compound of formula (I) to its enantiomer (the compound of formula (Iaa)) must be greater than 1:1 (pages 2-3, lines 21 to line 10
Additionally, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to apply compound 179 to strawberries as taught by Bayer in view of the teachings of Garrido et al. One of ordinary skill in the art would have been motivated to make such a selection, with a reasonable expectation of success, because:
- Bayer teaches a number of in vitro test cell tests wherein compound 179 showed efficacy in numerous in vitro cell assays containing fungal pathogens such as Alternaria alternata, Botrytis cinerea and Rhizoctonia solani; and
-Garrido et al. teaches that all of these fungal pathogens cause either leaf, fruit or crown and root disease.
NOTE: The above portion of the rejection addresses the prevention aspect of the claims since prevention does not require that the plant actually have the claimed fungal pathogen.
Moreover, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to try applying compound 179 as taught by Bayer to strawberries infected by Macrophomina phaseolina in view of the teachings of Garrido et al. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Garrido et al. teaches that there are a number of fungal pathogens including Macrophomina phaseolina which cause either leaf, fruit or crown and root disease; and
-Bayer teaches that a number of in vitro test cell tests wherein compound 179 showed efficacy in numerous in vitro cell assays containing fungal pathogens such as Alternaria alternata, Botrytis cinerea and Rhizoctonia solani.
NOTE: Although the rejection has been amended, in view of Applicants amendments, the Examiner would like to take the opportunity to respond to Applicants arguments. In response to the previous rejection, Applicants contend that Bayer fails to disclose or suggest the (S,S) stereo configuration of (formula Ia) and optionally the (R,R) stereo configuration of formula Ib, as well as the weight ratio of greater than 1:1 if the compound of formula (Ib) is present.
In response to this argument, the Examiner has amended the rejection to include Syngenta whom discloses that a potential side product in the synthesis of the compound of formula I is the enantiomer of the compound formula I, e.g. compounds of formula (1aa):
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, wherein in compositions comprising both the compound of formula (I) and formula (Iaa), the ratio of the compound of formula (I) to its enantiomer (the compound of formula (Iaa)) must be greater than 1:1 (pages 2-3, lines 21 to line 10).
Moreover, Applicants argue that Garrido does not cure Bayer’s deficiencies because Garrido merely identifies fungal pathogens affecting strawberries and discusses disease management strategies in general terms, without any disclosure or suggestion that compound 179, or any compound of Formula (I) is effective against Macrophomina spp.
These arguments have been carefully considered, but are not found persuasive.
In response to applicant's argument, the examiner recognizes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As noted above, Bayer teaches that the compounds of Formula (I) are useful for treating phytopathogenic microorganisms, in particular phytopathogenic fungi include fungal diseases on roots and stem bases caused by charcoal rot (Macrophomina phaseolina) and Garrido et al. teaches that there are a number of fungal pathogens including Macrophomina phaseolina which cause either leaf, fruit or crown and root disease. Thus, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to try applying compound 179 as taught by Bayer to strawberries infected by Macrophomina phaseolina in view of the teachings of Garrido et al. It should be noted that obviousness does not require absolute predictability, but at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (See MPEP 2143.02).
Lastly, Applicants contend that the Examiner has failed to consider the unexpected results in the specification as filed, wherein the claimed method delivered complete control at 44 days and maintained strong and durable protection through 65 days after application which is in stark contrast to the industry benchmark fluopyram which exhibited only moderate early activity and lost almost all efficacy by 65 days (see Specification, 14-16 and Tables at page 19-20).
In response to Applicants arguments pertaining to unexpected results, the Examiner has reviewed the specification and cannot find any reference to unexpected. Thus, Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. Assuming, arguendo, that Applicants assertion of unexpected results have merit, the examiner recognizes that evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (See MPEP 716.02(c). As noted above, Bayer teaches that the compounds of Formula (I) are useful for treating phytopathogenic microorganisms, in particular phytopathogenic fungi include fungal diseases on roots and stem bases caused by charcoal rot (Macrophomina phaseolina) and Garrido et al. teaches that there are a number of fungal pathogens including Macrophomina phaseolina which cause either leaf, fruit or crown and root disease. Thus, there is a reasonable expectation that a compound of Formula (I) would also work on strawberries. It is noted that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (See MPEP 716.02). Moreover, the claims are broad in the breadth of the compounds claimed, the amounts used and the plant tested In the instant case, the tests in the specification only used one compound at one application rate on one type of plant. As such, the asserted unexpected results do not appear to be commensurate in scope with the breadth that is being claimed.
Claim(s) 1 and 8-15 remain rejected under 35 U.S.C. 103 as being unpatentable over Syngenta Participations, AG (WO2015/003951A1, 2015-01-15, IDS) referred to herein as Syngenta in view of Desaeger, Johan. 2019.”Meloidogyn Hapla, the Northern Root-Knot Nematode, in Florida Strawberries and Associated Double-Cropped Vegetables: ENY-070 IN1224, 10 2018”.
(Note: the below rejection address the prevention aspect encompassed by the claims as described above which does not require the plant to be infected with the pathogenic microorganism).
Syngenta teaches cis substituted 4-membered carboxamides useful as nematicides having the generic structure
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(page 1, lines 6-10). Syngenta further teaches that a potential side product in the synthesis of the compound of formula I is the enantiomer of the compound formula I, e.g. compounds of formula (1aa):
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, wherein in compositions comprising both the compound of formula (I) and formula (Iaa), the ratio of the compound of formula (I) to its enantiomer (the compound of formula (Iaa)) must be greater than 1:1 (pages 2-3, lines 21 to line 10). Specifically, the WO document teaches a compound having the structure
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wherein Y is CH2, R1 is H, R13 and R14 are 2-Cl and 4-Cl respectively, R15 is H and A is
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(P.15, 61.1) which reads on the elected species (Table P and Table 61). With regards to the nematocidal activity, the WO document teaches that the compound are useful for controlling or destroying pests such as insects and/or fungi which occur on plants such as fruit plants, wherein the compounds of formula I have a very advantageous spectrum of activities for protecting against attach and damage by fungi and nematodes (page 55, lines 19-36). Moreover, the WO document teaches that the compounds of the formula I are also suitable for protection of plant propagation material such a seeds, fruit, tubers or nursery plants wherein the compound is treated prior to planting (page 61, lines 13-15). With regards to the plant, the WO document teaches that suitable target plants include strawberries (page 62, lines 3-5). Moreover, Syngenta teaches that compound 61.1, as a preventative, showed a greater than 80% reduction in Meloidogyne spp. (Root-knot nematode) galling (page 135, lines 14-38).
Syngenta does not specifically teach specifically select compound 61.1 for application to strawberries.
Desaeger teaches that root-knot nematodes (Meloidogyne spp.) (RKN) are the most common and destructive plant-parasitic nematodes globally, wherein while it has not been considered a major problem in Florida yet diagnostic studies conducted recently have confirmed a wider distribution of RKN than previously thought (Importance, History and Distribution).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to have applied 61.1 as taught by Syngenta to strawberries for the prevention or treatment of root-knot nematodes (Meloidogyne spp.) in view of the teachings of Desaeger. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Syngenta teaches that compound 61.1, as a preventative, showed a greater than 80% reduction in Meloidogyne spp. (Root-knot nematode) galling; and
-Desaeger teaches that while Root-Knot nematode (Meloidogyne spp.) has not been considered a major problem in Florida yet diagnostic studies conducted recently have confirmed a wider distribution of RKN than previously thought.
In response to this rejection, Applicants contend that the Examiners interpretation of “prevention” is flawed because it fails to consider the “correct” interpretation of preventing which indicates that the plant is attacked. Thus, if the plant sis never attacked, nothing has been prevented.
These arguments have been carefully considered, but are not found persuasive.
In the instant case, the Examiner does not agree with Applicants assertion that prevention indicates that the plant has to be attacked. In particular, the specification does not appear to define prevention to encompass that the plant is attacked. It is the examiners opinion that their interpretation of prevention, e.g. the plant has not yet gotten the infestation at the time of application of compound of Formula (I) is a reasonable interpretation. As such, application of the compound to any plant such as for the control of root-knot nematodes as taught by the prior art would read on prevention from macrophomina spp.
Applicants further point to the unexpected results as discussed above. However, the examiner recognizes strawberry plants where inoculated with 2 grams of the infested millet prior to treating with the compound. As such, this argument does not appear to be consistent with the rejection set forth above, wherein the plant has not been infected by macrophomina spp.
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 and 8-15 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,867,371 in view of Desaeger, Johan. 2019.”Meloidogyn Hapla, the Northern Root-Knot Nematode, in Florida Strawberries and Associated Double-Cropped Vegtables: ENY-070 IN1224, 10 2018”.
The US Patent claims a method of controlling pests in the soil, the method comprising, applying to the soil a composition comprising
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, wherein the pest is a nematode.
The US Patent does not specifically claim administering the compound to a strawberry plant.
Desaeger teaches that root-knot nematodes (Meloidogyne spp.) (RKN) are the most common and destructive plant-parasitic nematodes globally, wherein while it has not been considered a major problem in Florida yet diagnostic studies conducted recently have confirmed a wider distribution of RKN than previously thought (Importance, History and Distribution).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to have applied the compound claimed by the US Patent to strawberries for the prevention or treatment of root-knot nematodes (Meloidogyne spp.) in view of the teachings of Desaeger. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- -Desaeger teaches that while Root-Knot nematode (Meloidogyne spp.) has not been considered a major problem in Florida yet diagnostic studies conducted recently have confirmed a wider distribution of RKN than previously thought.
In response to this rejection, Applicants request reconsideration in view of at least the amendments to claim 1.
These arguments have been considered, but are not found persuasive.
In the instant case, the US Patent claims a compound with appears to be the (S,S) stereo configuration and is silent on the (R,R) stereo configuration. As such, since the (R,R) stereo configuration is optional in the instant claims, the claims encompass a composition comprising only the (R,R) stereo configuration.
Claims 1 and 8-15 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,053,201B2 to Hone and Jones (2021-07-06) in view of Garrido et al. (Genes, Genomes and Genomics 2011; 5(Special Issue 1): 24-39).
The US Patent claims a method of controlling crops of useful plants against damages caused by nematode pests or fungi and protecting plants from propagation material against damages caused by fungi, comprising treating the plants with a composition comprising
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.
The US Patent does not specifically claim administering the compound to a strawberry plant or that the fungi is Macrophomina phaseolina.
Garrido et al. discuss the main leaf, fruit, crown and root strawberry fungal diseases. With regards to the leaf diseases, the reference teaches that fungal pathogens causing leaf disease includes, but is not limited to, Alternaria alternata, Macrophomina phaseolina and Rhizoctonia solani (Table 1). With regards to the fruit disease, the reference teaches fungal pathogens causing fruit diseases includes, but is not limited to, Botrytis cinerea and Rhizoctonia solani (Table 2). With regards to the crown and root diseases, the reference teaches fungal pathogens causing root and crowns diseases include, but are not limited to, Macrophomina phaseolina and Rhizoctonia solani (Table 3).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to modify the method claimed by the US Patent to treat strawberries as a preventative against fungal damage in view of the teachings of Garrido et al. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Garrido et al. teaches that numerous fungal pathogens cause either leaf, fruit or crown and root disease.
NOTE: The above portion of the rejection addresses the prevention aspect of the claims since prevention does not require that the plant actually have the claimed fungal pathogen.
Moreover, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to modify the method claimed by the US Patent to try and treat strawberries infected by Macrophomina phaseolina in view of the teachings of Garrido et al. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Garrido et al. teaches that there are a number of fungal pathogens including Macrophomina phaseolina which cause either leaf, fruit or crown and root disease; and
In response to this rejection, Applicants request reconsideration in view of at least the amendments to claim 1.
These arguments have been considered, but are not found persuasive.
In the instant case, the US Patent claims a compound with appears to be the (S,S) stereo configuration and is silent on the (R,R) stereo configuration. As such, since the (R,R) stereo configuration is optional in the instant claims, the claims encompass a composition comprising only the (R,R) stereo configuration.
Claims 1 and 8-15 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8 and 11 of U.S. Patent No. 12446582B2 to Kenneth Mckee (2025-10-21) in view of Bayer Cropscience (WO2016/066644A1, 2016-05-06, IDS) and Garrido et al. (Genes, Genomes and Genomics 2011; 5(Special Issue 1): 24-39).
The US patent claims a method of controlling or preventing infestation of cereal plants by Fusarium pseudograminearum comprising applying to a crop of plants, the locus thereof, or seed thereof a compound of the formula
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.
The US Patent does not claim that the method is used to control or prevent infestation of strawberry plants by Macrophomina phaseolina.
Bayer teaches the use of N-(Phenylcycloalkyl)carboxamides or 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 soil on which the plants are grown or intended to be grown in an effective amount (abstract). With regards to the compound of formula (I), Bayer teaches compounds of formula I have the general structure
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(page 90). In particular, Bayer teach a specific compound having the general structure of formula I, wherein B is cBu (e.g. cyclobutyl), X1 is H, X2 is H, X3 is Cl, X4 is H, X5 is Cl, Z1 is H, Z2 is H, T is O and A is 2-(trifluoromethyl)-pyridinyl-2-yl in the Cis orientation which is identical to the application claimed in both the instant application and the US Patent (cmpd 179, page 100). With regards to the plants, Bayer teaches that useful plants include, but are not limited to, strawberries (page 73). With regards to the phytopathogenic microorganism, Bayer teaches that phytopathogenic microorganisms, in particular phytopathogenic fungi include fungal diseases on roots and stem bases caused by charcoal rot (Macrophomina phaseolina) (page 77, lines 8-10). Moreover, Bayer teaches a number of in vitro test cell tests wherein compound 179 showed efficacy in a number of cell lines including, but not limited to, Alternaria alternata, Botrytis cinerea and Rhizoctonia solani, (examples A-K).
Garrido et al. discuss the main leaf, fruit, crown and root strawberry fungal diseases. With regards to the leaf diseases, the reference teaches that fungal pathogens causing leaf disease includes, but is not limited to, Alternaria alternata, Macrophomina phaseolina and Rhizoctonia solani (Table 1). With regards to the fruit disease, the reference teaches fungal pathogens causing fruit diseases includes, but is not limited to, Botrytis cinerea and Rhizoctonia solani (Table 2). With regards to the crown and root diseases, the reference teaches fungal pathogens causing root and crowns diseases include, but are not limited to, Macrophomina phaseolina and Rhizoctonia solani (Table 3).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to modify the method claimed in the US Patent so as to apply the compound to strawberries in view of the teachings of Bayer and Garrido et al. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Bayer teaches a number of in vitro test cell tests wherein compound 179 showed efficacy in numerous in vitro cell assays containing fungal pathogens such as Alternaria alternata, Botrytis cinerea and Rhizoctonia solani; and
-Garrido et al. teaches that all of these fungal pathogens cause either leaf, fruit or crown and root disease.
NOTE: The above portion of the rejection addresses the prevention aspect of the claims since prevention does not require that the plant actually have the claimed fungal pathogen.
Moreover, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to try modifying the method claimed by the US Patent to apply the compound to strawberries infected by Macrophomina phaseolina in view of the teachings of Bayer and Garrido et al. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Garrido et al. teaches that there are a number of fungal pathogens including Macrophomina phaseolina which cause either leaf, fruit or crown and root disease; and
-Bayer teaches that a number of in vitro test cell tests wherein compound 179 showed efficacy in numerous in vitro cell assays containing fungal pathogens such as Alternaria alternata, Botrytis cinerea and Rhizoctonia solani.
In response to this rejection, Applicants request reconsideration in view of at least the amendments to claim 1.
These arguments have been considered, but are not found persuasive.
In the instant case, the US Patent claims a compound with appears to be the (S,S) stereo configuration and is silent on the (R,R) stereo configuration. As such, since the (R,R) stereo configuration is optional in the instant claims, the claims encompass a composition comprising only the (R,R) stereo configuration.
Claims 1 and 8-15 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 17783859 or over at least claim 1 of copending Application No. 17765540 or over at least claim 1 of copending Application No. 17425158 or over at least claims 1 and 8-10 of copending application 17425119 in view of Bayer Cropscience (WO2016/066644A1, 2016-05-06, IDS) and Garrido et al. (Genes, Genomes and Genomics 2011; 5(Special Issue 1): 24-39).
All of the copending application listed above claim a method of controlling or preventing an infestation within a plants by a particular microorganism comprising applying to a crop of plants, the locus thereof, or seed thereof a compound of the formula
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.
For example, the 17783859 application claims that the plant is a peanut plant and the microorganism is Cercospora. The 17765540 application claims that the plant is a banana plant and the microorganism is Pseudocercospora fijiensis. The 17425158 application claims that the plant is a soybean and the microorganism is of the family Corynesporascaceae. The 17425119 application claims that the plant is corn and the microorganism is Fusarium graminearum.
The claims of the copending applications differ from the instant application in that the method is used to control or prevent infestation of strawberry plants by Macrophomina phaseolina.
Bayer teaches the use of N-(Phenylcycloalkyl)carboxamides or 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 soil on which the plants are grown or intended to be grown in an effective amount (abstract). With regards to the compound of formula (I), Bayer teaches compounds of formula I have the general structure
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(page 90). In particular, Bayer teach a specific compound having the general structure of formula I, wherein B is cBu (e.g. cyclobutyl), X1 is H, X2 is H, X3 is Cl, X4 is H, X5 is Cl, Z1 is H, Z2 is H, T is O and A is 2-(trifluoromethyl)-pyridinyl-2-yl in the Cis orientation which is identical to the application claimed in both the instant application and the US Patent (cmpd 179, page 100). With regards to the plants, Bayer teaches that useful plants include, but are not limited to, strawberries (page 73). With regards to the phytopathogenic microorganism, Bayer teaches that phytopathogenic microorganisms, in particular phytopathogenic fungi include fungal diseases on roots and stem bases caused by charcoal rot (Macrophomina phaseolina) (page 77, lines 8-10). Moreover, Bayer teaches a number of in vitro test cell tests wherein compound 179 showed efficacy in a number of cell lines including, but not limited to, Alternaria alternata, Botrytis cinerea and Rhizoctonia solani, (examples A-K).
Garrido et al. discuss the main leaf, fruit, crown and root strawberry fungal diseases. With regards to the leaf diseases, the reference teaches that fungal pathogens causing leaf disease includes, but is not limited to, Alternaria alternata, Macrophomina phaseolina and Rhizoctonia solani (Table 1). With regards to the fruit disease, the reference teaches fungal pathogens causing fruit diseases includes, but is not limited to, Botrytis cinerea and Rhizoctonia solani (Table 2). With regards to the crown and root diseases, the reference teaches fungal pathogens causing root and crowns diseases include, but are not limited to, Macrophomina phaseolina and Rhizoctonia solani (Table 3).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to modify the method claimed in the copending applications so as to apply the compound to strawberries in view of the teachings of Bayer and Garrido et al. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Bayer teaches a number of in vitro test cell tests wherein compound 179 showed efficacy in numerous in vitro cell assays containing fungal pathogens such as Alternaria alternata, Botrytis cinerea and Rhizoctonia solani; and
-Garrido et al. teaches that all of these fungal pathogens cause either leaf, fruit or crown and root disease.
NOTE: The above portion of the rejection addresses the prevention aspect of the claims since prevention does not require that the plant actually have the claimed fungal pathogen.
Moreover, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to try modifying the method claimed by the copending applications to apply the compound to strawberries infected by Macrophomina phaseolina in view of the teachings of Bayer and Garrido et al. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Garrido et al. teaches that there are a number of fungal pathogens including Macrophomina phaseolina which cause either leaf, fruit or crown and root disease; and
-Bayer teaches that a number of in vitro test cell tests wherein compound 179 showed efficacy in numerous in vitro cell assays containing fungal pathogens such as Alternaria alternata, Botrytis cinerea and Rhizoctonia solani.
This is a provisional nonstatutory double patenting rejection.
The majority of Applicants arguments appear to be similar to each other. Thus, the examiner will address the arguments to US Application No 17/783,859, but the response would also apply to the other US Applications above.
In response to US Application No. 17/783,859, Applicants notes that the instant application has a patent term filing date of December 3, 2020 and the ‘859 application has the same patent term filing date of December 3, 2020 and therefore, only requires the “One-Way test of Distinctness” (MPEP 804.II.B.4). Thus, Applicants contend that the instant claims are directed to a method of controlling disease infestation of genus Macrophomina spp, whereas the claims of the ‘859 application are directed to controlling infestation of Cercospora, a distinct and different phytopathogenic microorganism from Macrophomina spp. As such, Applicants assert that the instant application would not have been anticipated by, or an obvious variation of the ‘859 application. Furthermore, Applicants assert that since the provisional rejection relies on Bayer and Garrido which are defective for the reasons above, the provisional rejection should be withdrawn.
These arguments have been carefully considered, but are not found persuasive.
In response to Applicants arguments, the Examiner acknowledged and does not dispute that controlling infestation of Cercospora does not anticipate controlling disease infestation of genus Macrophomina spp. However, for the reasons set forth above, these appear to be obvious variants. The examiner has responded to Applicants arguments pertaining to the use of Bayer and Garrido above and incorporated herein.
Note: The examiner has removed the provisional rejections over US Application No.’s 17/425,133 and 16/955,443 since Applicants have pointed out that these have been allowed and issued. In view of this, the examiner has converted these provisional rejections into non-provisional double patenting rejections as set forth below.
Claims 1 and 8-15 remain rejected on the ground of nonstatutory double patenting as being unpatentable over at least claim 1 of U.S. Patent No. 12,575,569 or at least claim 1 of US Patent No 12,317,897 in view of Bayer Cropscience (WO2016/066644A1, 2016-05-06, IDS) and Garrido et al. (Genes, Genomes and Genomics 2011; 5(Special Issue 1): 24-39).
US Patent No. 12,575,569 claims a method of controlling or preventing an infestation within a plants by a particular microorganism comprising applying to a crop of plants, the locus thereof, or seed thereof a compound of the formula
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wherein the plant is a rice plant and the microorganism is Gibberella fujikuroi.
US Patent No 12,317,897 claims a method of controlling or preventing an infestation within a plants by a particular microorganism comprising applying to a crop of plants, the locus thereof, or seed thereof a compound of the formula
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wherein the plant is tomato and the microorganism is from Alternaria solani.
The claims of US Patents differ from the instant application in that the method is used to control or prevent infestation of strawberry plants by Macrophomina phaseolina.
Bayer teaches the use of N-(Phenylcycloalkyl)carboxamides or 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 soil on which the plants are grown or intended to be grown in an effective amount (abstract). With regards to the compound of formula (I), Bayer teaches compounds of formula I have the general structure
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(page 90). In particular, Bayer teach a specific compound having the general structure of formula I, wherein B is cBu (e.g. cyclobutyl), X1 is H, X2 is H, X3 is Cl, X4 is H, X5 is Cl, Z1 is H, Z2 is H, T is O and A is 2-(trifluoromethyl)-pyridinyl-2-yl in the Cis orientation which is identical to the application claimed in both the instant application and the US Patent (cmpd 179, page 100). With regards to the plants, Bayer teaches that useful plants include, but are not limited to, strawberries (page 73). With regards to the phytopathogenic microorganism, Bayer teaches that phytopathogenic microorganisms, in particular phytopathogenic fungi include fungal diseases on roots and stem bases caused by charcoal rot (Macrophomina phaseolina) (page 77, lines 8-10). Moreover, Bayer teaches a number of in vitro test cell tests wherein compound 179 showed efficacy in a number of cell lines including, but not limited to, Alternaria alternata, Botrytis cinerea and Rhizoctonia solani, (examples A-K).
Garrido et al. discuss the main leaf, fruit, crown and root strawberry fungal diseases. With regards to the leaf diseases, the reference teaches that fungal pathogens causing leaf disease includes, but is not limited to, Alternaria alternata, Macrophomina phaseolina and Rhizoctonia solani (Table 1). With regards to the fruit disease, the reference teaches fungal pathogens causing fruit diseases includes, but is not limited to, Botrytis cinerea and Rhizoctonia solani (Table 2). With regards to the crown and root diseases, the reference teaches fungal pathogens causing root and crowns diseases include, but are not limited to, Macrophomina phaseolina and Rhizoctonia solani (Table 3).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to modify the method claimed in the US Patents so as to apply the compound to strawberries in view of the teachings of Bayer and Garrido et al. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Bayer teaches a number of in vitro test cell tests wherein compound 179 showed efficacy in numerous in vitro cell assays containing fungal pathogens such as Alternaria alternata, Botrytis cinerea and Rhizoctonia solani; and
-Garrido et al. teaches that all of these fungal pathogens cause either leaf, fruit or crown and root disease.
NOTE: The above portion of the rejection addresses the prevention aspect of the claims since prevention does not require that the plant actually have the claimed fungal pathogen.
Moreover, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to try modifying the method claimed by the US Patent to apply the compound to strawberries infected by Macrophomina phaseolina in view of the teachings of Bayer and Garrido et al. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Garrido et al. teaches that there are a number of fungal pathogens including Macrophomina phaseolina which cause either leaf, fruit or crown and root disease; and
-Bayer teaches that a number of in vitro test cell tests wherein compound 179 showed efficacy in numerous in vitro cell assays containing fungal pathogens such as Alternaria alternata, Botrytis cinerea and Rhizoctonia solani.
Conclusion
Therefore, No claim is allowed.
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 BRANDON J FETTEROLF whose telephone number is (571)272-2919. The examiner can normally be reached M-F 6AM-4PM.
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BRANDON J. FETTEROLF, PHD
Primary Patent Examiner
Art Unit 1626
/BRANDON J FETTEROLF/ Primary Examiner, Art Unit 1626