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 .
DETAILED ACTION
An amendment was filed 2/24/2026. Claims 2-3, 5-7 and 16-17 are cancelled.
The rejection of claims 4, 8-11 and 13-14 under 35 U.S.C. 112(b) is withdrawn in light of the amendment.
The rejection of claims 1, 4 and 8-14 under 35 U.S.C. 112(a) as failing to comply with the written description requirement is withdrawn in light of the claim amendment limiting the active compound to (3R)-3-(2- chlorothiazol-5-vl)-8-methyl-5-oxo-6-phenyl-2,3-dihvdrothiazolof3,2-alpyrimidin-8-ium- 7-olate or clothianidin and limiting the enzyme to cutinase.
The rejection of claims 1 and 8-10 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being clearly anticipated by Poulose et al. is withdrawn in light of the claim amendment to claim 1 requiring application to seeds. Poulose does not teach application to seeds.
Claims 1, 4, 8-15 and 18-24 are pending. Claims 15 and 18--23 are withdrawn. Claims 1, 4, 8-14 and 24 are under examination herein.
Priority
This application is a 371 of PCT/EP2020/087358 filed 12/21/2020 which claims benefit of 62/952,606 filed 12/23/2019. The effective filing date of the instant application is December 23, 2019.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Modified rejection necessitated by amendment: Claims 1, 4, and 12-14 remain rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being clearly anticipated by Russell et al. (WO 2019/236717 A1, published on December 12, 2019; previously cited).
Regarding claim 1, Russell teaches methods for controlling or preventing pathogenic damage and/or pest damage in a plant propagation material, a plant, part of a plant and/or plant organ; comprising applying on the plant, part of the plant, plant organ, plant propagation material or a surrounding area thereof a phytoprotective agent comprising an enzyme and an insecticide (description p.1, Summary paragraph 2). Russell teaches a method comprising foliar application of a composition comprising an effect amount of a phytoprotective agent to a plant and/or plant part (Russell p.23 claim 1), wherein the phytoprotective agent comprises an enzyme, optionally having chitosanase, chitinase, cutinase, protease and/or lipase activity (Russell p.23 claim 4). Russell teaches that plant propagation material refers to a plant part from which a whole plant can be generated, including cuttings, rhizomes, seeds, tubers and cells/tissues that can be cultured into a whole plant (description p.4, last paragraph). Russell further teaches that the compositions of the present disclosure may be applied to plant parts including on-seed application (description p.4, paragraph 4). Russell teaches compositions of the present invention comprise one or more pesticides listed including but not limited to clothianidin (p.16, paragraph [6]).
The limitation “wherein the plant roots and shoots resulting from the treated seeds are protected” is a desired effect resulting from the active method steps of applying at least one active compound of clothianidin and a cutinase directly or indirectly to the seeds, and thus protection of the roots and shoots would necessarily result from practicing the method.
Regarding claim 4, Russell teaches that crops includes plants transformed by the use of recombinant DNA techniques (relevant to transgenic plant) (description p.10, 2nd full paragraph). Russell further teaches that crops or seed material thereof can also be resistant to multiple types of pests, so-called stacked transgenic events when created by genetic modification (relevant to wherein the seeds are from a transgenic plant) (description p.10, 2nd full paragraph).
Regarding claim 12, Russell teaches the phytoprotective agent is in an amount/concentration of about 0.0001 to about 95% or more by weight of the composition, which anticipates the claimed range with sufficient specificity (description p.24, claim 9).
Regarding claim 13, Russell teaches a method of controlling or preventing pest damage in a plant propagation material, a plant, part of a plant comprising applying on the plant, part of the plant, plant propagation material or a surrounding area thereof an effective amount of a composition comprising a phytoprotective agent (description p.23, claim 3). Russell teaches delivery of the phytoprotective agent to a plant part or plant growth medium (e.g. soil) without having an unduly adverse effect on plant growth and/or yield (relevant to protected from the attack by soil pests or foliar pests) (description p.2, paragraph 5).
Regarding claim 14, Russell teaches crops of useful plants to be protected comprise cereals, citrus fruit, grapevines, ornamentals, beet, legumes, beans, pumpkins, cucumbers, melons, tomatoes, peanuts, pepper (description p.10, 2nd paragraph) and plant propagation material including seeds (p. 4, last paragraph).
Response to Arguments
Applicant argues that Russell et al. does not disclose the claimed method of application of the recited active compound and a cutinase to seeds, wherein the plant roots and shoots resulting from the treated seeds are protected (See Remarks dated 2/24/2026, p.8, Claim Rejections – 35 USC §102 – Anticipation).
Applicant's arguments filed February 24, 2026 have been fully considered but they are not persuasive. As discussed above, Russell teaches applying a composition comprising a phytoprotective agent and an enzyme. Russell teaches applying the composition to plant propagation material including seeds. Russell further teaches an insecticide selected from clothianidin, an enzyme selected from cutinase. Thus, Russell teaches all the required elements of the claimed method, and anticipates the claimed method for the reasons discussed above.
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.
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.
New rejection necessitated by amendment: Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Russell et al. (WO 2019/236717 A1, published on December 12, 2019; previously cited) in view of Poulose et al. (EP 0 272 002, published on June 22, 1988, previously cited).
The teachings of Russell et al. is discussed above.
Regarding claims 8-10, Russell does not teach wherein the cutinase comprises an amino acid sequence having at least 85% identity to SEQ ID NO:1 (claim 8); an amino acid sequence having at least 85% identity to SEQ ID NO:2 (claim 9) or an amino acid sequence having at least 85% identity to SEQ ID NO:3 (claim 10).
However, Poulose teaches the amino acid sequence of a cutinase (lipase) from Pseudomonas putida ATCC 53552 (description p.3). This cutinase is identical to the amino acid sequence of instant SEQ ID NO:1 (relevant to claim 8). This cutinase is 99.6% identical to the amino acid sequence of instant SEQ ID NO:2 (relevant to claim 9). This cutinase is 93.8% identical to the amino acid sequence of instant SEQ ID NO:3 (relevant to claim 10). Poulose further teaches a method of increasing the effect of agricultural chemicals comprising teaching a plant with a plant depolymerase enzyme concurrently with administration of the agricultural chemical (abstract). Poulose teaches that typical agricultural chemicals include herbicides, fungicides, and insecticides including chemical and microbial pesticides (description p.2, lines 13-14). Poulose teaches cutinases are preferred lipases and available from a variety of sources (description p.2, lines 41-42).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the cutinase of Russell with the cutinase of Poulose in the method of Russell. Each of Russell and Poulose teach applying a composition comprising cutinase to plant seeds. One of ordinary skill in the art would reasonably expect that replacing one known cutinase with another would predictably result in a composition comprising cutinase that could be used to treat seeds, and the sequences of cutinases comprising at least 85% identity to the amino acid sequences of instant SEQ ID NO:1, 2 and 3 were known in the art at the time of invention.
New rejection necessitated by amendment: Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Russell et al. (WO 2019/236717 A1, published on December 12, 2019; previously cited) in view of Herbst et al. (DE102017209870 A1, published on December 13, 2018; previously cited). As the original DE102017209870 A1 is in German, an English translation is relied upon for support.
The teachings of Russell et al. and Panday et al. are discussed above.
Regarding claim 11, Russell does not teach wherein the enzyme cutinase comprises an amino acid sequence having at least 85% identity to SEQ ID NO:4.
However, Herbst teaches a lipase having an amino acid sequence SEQ ID NO:1, which is 87.5% identical to the sequence of instant SEQ ID NO:4. Herbst identifies the sequence as being a lipase from Pseudomonas stutzeri (title).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the cutinase of Russell with the cutinase of Herbst in the method of Russell. One of ordinary skill in the art would reasonably expect that replacing one known lipase with another would predictably result in a composition comprising an active compound and an enzyme that would protect plants, because it would amount to replacing one known lipase with another, and the sequence of instant SEQ ID NO:4 was known in the art at the time of invention.
New rejection necessitated by amendment: Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Russell et al. (WO 2019/236717 A1, published on December 12, 2019; previously cited) in view of Narine et al. (WO 2014/167084 A1, published on October 16, 2014; previously cited).
The teachings of Russell et al. are discussed above.
Regarding claim 24, Russell does not teach (3R)-3-(2-chlorothiazol-5-yl)-8-methyl-5-oxo-6-p henyl-2 ,3-dihydrothiazolo [3,2-a] pyrimidin-8-ium-7-olate.
However, Narine teaches insecticidal substituted pyrimidinium compounds for combating invertebrate pests (description p.1, lines 3-5). Narine teaches that invertebrate pests and in particular insects, arthropods and nematodes destroy growing and harvested crops, thereby causing large economic loss to the food supply (description p.1, lines 10-12). Narine teaches that compounds having good pesticidal activity and showing broad activity spectrum against a large number of different invertebrate pests, especially against difficult to control insects, arachnids and nematodes are desirable, and substituted pyrimidinium compounds of the general formula (I) including their stereoisomers, salts and particularly agriculturally or veterinary acceptable salts, their tautomers and their N-oxides can achieve these objectives (description p.1, lines 15-24). Narine teaches the synthesis of (3R)-3-(2-chlorothiazol-5-yl)-8-methyl-7-oxo-6-phenyl-2 ,3-dihydrothiazolo [3,2-a] pyrimidin-4-ium-5-olate (description p.79-84, Examples 1-3 and Table spanning p.84-92).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace clothianidin used by Russell with a substituted pyrimidinium compound taught by Narine to arrive at a composition comprising cutinase and (3R)-3-(2-chlorothiazol-5-yl)-8-methyl-5-oxo-6-phenyl-2 ,3-dihydrothiazolo[3,2-a] pyrimidin-8-ium-7-olate. Each of Russell and Narine teach the protection of plants using a composition comprising an active ingredient and an enzyme adjuvant. One of ordinary skill in the art would have been motivated to select an active compound known to have insecticidal properties as taught by Narine, because Narine teaches that substituted pyrimidinium compounds have insecticidal properties and can protect against a large number of different invertebrate pests such as insects, arachnids and nematodes. One of ordinary skill in the art would have found it beneficial to select an active compound that would prevent the destruction of crops and protect the food supply.
Response to Arguments
Applicant argues that claim 1 has been amended to recite a method comprising application of an active compound (i.e. clothianidin or (3R)-3-(2-chlorothiazol-5-yl)-8-methyl-5-oxo-6-phenyl-2,3-dihydrothiazolo[3,2-a]pyrimidin-8-ium-7-olate) and a cutinase to seeds, wherein the plant roots and shoots resulting from the treated seeds are protected (See Remarks dated 2/24/2026, p.8 last sentence to top of p.9). Applicant argues that neither Poulose nor any of the other cited references alone or in combination teach or suggest application of the active compound/cutinase to seeds, especially wherein the plant roots and shoots resulting from the treated seeds are protected (See Remarks dated 2/24/2026, p.9, 2nd paragraph). Applicant argues that the claimed method resulted in the surprising and unexpected results of improved uptake of the active compounds through the seed and thus improved insecticide efficacy relative to controls (See Remarks dated 2/24/2026, p.9 3rd paragraph).
Applicant's arguments filed February 24, 2026 have been fully considered but they are not persuasive. As discussed in the rejection above, Russell teaches the application of a composition comprising clothianidin and cutinase to seeds. Panday teaches that insecticide treatment of seeds was effective up to 61 days post germination, thereby teaching “wherein the plant roots and shoots resulting from the treated seeds are protected”. Nadine teaches the active compound (3R)-3-(2-chlorothiazol-5-yl)-8-methyl-7-oxo-6-phenyl-2 ,3-dihydrothiazolo [3,2-a] pyrimidin-4-ium-5-olate, and teaches its efficacy against invertebrate pests. Poulose teaches a method of increasing the effect of agricultural chemicals comprising treating a plant with a depolymerase enzyme concurrently with administration of the agricultural chemical. Thus, the instant claims are obvious over the teachings in the prior art for the reasons set forth in the rejection above.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEEPA MISHRA whose telephone number is (571) 272-6464. The examiner can normally be reached Monday - Friday 9:30am - 3:30pm EST.
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/DEEPA MISHRA/Examiner, Art Unit 1657
/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657