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
Applicant’s amendment dated 20 January 2026, in which claims 16, 20, 21, 23, 26, 28 have been amended, is acknowledged.
Claims 16-30 are pending in the instant application.
Claims 16-30 are examined herein.
Response to arguments of 20 January 2026
In view of Applicant’s amendment of 20 January 2026, the objections to claims 16, 20, 21, 23 are herein withdrawn. New objections are made below, based on Applicant’s amendment of 20 January 2026.
The Declaration of Olga Dubey, Sylvain Dubey, Katia Gindro and Sylvain Schnee, under 37 C.F.R. 1.130(a), submitted on 20 January 2026, is acknowledged and considered.
Applicant has relied on the exception under 35 U.S.C. 102(b)(2)(A) to overcome the rejection of claims 16-30 under 35 U.S.C. 102(a)(2) and the rejection of claims 16-30 under 35 U.S.C. 103 over Dubey et al. (US 2021/0259251) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(2).
In view of the Declaration of Olga Dubey, Sylvain Dubey, Katia Gindro and Sylvain Schnee, under 37 C.F.R. 1.130(a), submitted on 20 January 2026, the rejection of claims 16-30 under 35 U.S.C. 102(a)(2) and the rejection of claims 16-30 under 35 U.S.C. 103 over Dubey et al. (US 2021/0259251), are herein withdrawn.
On 20 January 2026, Applicant has filed a terminal disclaimer against co-pending U.S. Patent Application 18/576,319. As a result, the provisional rejection to claims 16-30 on the ground of nonstatutory obviousness-type double patenting over claims of co-pending U.S. patent application 18/576,319, is herein withdrawn.
Applicant’s arguments (Remarks of 20 January 2026, pages 8-9) against the rejection of claims 16-30 on the ground of nonstatutory obviousness-type double patenting over claims of U.S. patent 12,167,731 have been considered. Applicant argues (page 8) that claims 1-8 of US’731 do not recite the relative concentration of the two active compounds as presently claimed. Applicant argues (page 9) that the instantly claimed concentration ranges are not an obvious optimization but establish critical and synergistic windows that are neither disclosed nor suggested by the claims of US’731. Applicant argues (page 9) strong synergy at the 99/1 ratio (1% 8MSOOH) in the instant claims.
In response, these arguments are not persuasive. Claims 1-8 of U.S. patent 12,167,731 are drawn to a fungicide composition comprising the combination of at least two compounds, wherein the combination of at least two compounds is a mixture of 1-Isothiocyanato-8-(methylsulfonyl)-octane and 1-Isothiocyanato-8-(methylsulfinyl)-octane, wherein the EC.sub.50 of the combination is lower than the EC.sub.50 of each component of the combination against a fungal pathogen and/or wherein the combination index (CI) of the combination is <1.
Thus, claims 1-8 of U.S. patent 12,167,731 teach a synergistic mixture (CI<1) of 1-Isothiocyanato-8-(methylsulfonyl)-octane and 1-Isothiocyanato-8-(methylsulfinyl)-octane.
Claims 1-8 of U.S. patent 12,167,731 are silent regarding the relative ratio of 8-methylsulfonyl-octyl-(8MSOOH) and 8-methylsulfinyl-octyl-isothiocyanate (8MSOH) present in the compositions tested.
"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPO2d 1655, 1658 (Fed. Cir. 1990).
Alternatively, determining the relative ratio of two compounds in a disclosed synergistic fungicidal mixture is routine, well within the skill of the artisan.
For this reason, the rejection of claims 16-30 on the ground of nonstatutory obviousness-type double patenting over claims of U.S. patent 12,167,731 is herein maintained.
New/modified objections and rejections are made based on Applicant’s amendment of 20 January 2026.
Claims objection
Claims 16, 21, 23, 26, 28 are objected to because the term “a mixture” could read
--a synergistic mixture--.
Claim 16 is objected to because the recitation (on the last line in claim 16) “of said combination of said two active compounds” should read --of the mixture (of two active compounds).--
Claims 17, 18 are objected to because the recitation (on the last line in the claims) “of the combination of said two active compounds” should read --of the mixture (of two active compounds).--
Claims 21, 22, 23, 24, 26 are objected to because the recitation (on the last line in the claims) “of the combination of said two active compounds” should read --of the mixture (of two active compounds).—
Claim 28 is objected to because the recitation “comprising a combination of two active compounds consisting of a mixture of […]” could read --comprising a synergistic mixture of--.
Claims 28-30 are objected to because the recitation (on the last line in the claims) “of said/the combination of said two active compounds” should read --of the mixture.--
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 16-30 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8 of U.S. patent 12,167,731 (cited in PTO-892 of 17 October 2025). Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-8 of U.S. patent 12,167,731 anticipate or render obvious instant claims.
Claims 1-8 of U.S. patent 12,167,731 are drawn to a fungicide composition comprising the combination of at least two compounds, wherein the combination of at least two compounds is a mixture of 1-Isothiocyanato-8-(methylsulfonyl)-octane and 1-Isothiocyanato-8-(methylsulfinyl)-octane or a mixture of 1-Isothiocyanato-8-(methylsulfonyl)-octane and 1-Isothiocyanato-9-(methylsulfinyl)-nonane, wherein the EC.sub.50 of the combination is lower than the EC.sub.50 of each component of the combination against a fungal pathogen and/or wherein the combination index (CI) of the combination is <1; claim 2 is drawn to a method for the prevention or treatment of fungal pathogens in plants comprising treating the plants with a fungicidal composition according to claim 1; claims 7-8 are drawn to a disinfectant composition in oral hygiene or sanitary articles comprising the combination of 1-Isothiocyanato-8-(methylsulfinyl)-octane/1-Isothiocyanato-8-(methylsulfonyl)-octane, wherein the EC.sub.50 of the combination is lower than the EC.sub.50 of each component of the combination against a fungal pathogen and/or wherein the combination index (CI) of the combination is <1.
Thus, claims 1-8 of U.S. patent 12,167,731 teach a synergistic mixture (CI<1) of 1-Isothiocyanato-8-(methylsulfonyl)-octane and 1-Isothiocyanato-8-(methylsulfinyl)-octane, and a method for the prevention or treatment of fungal pathogens in plants with said fungicidal composition.
Claims 1-8 of U.S. patent 12,167,731 are silent regarding the relative ratio of 8-methylsulfonyl-octyl-(8MSOOH) and 8-methylsulfinyl-octyl-isothiocyanate (8MSOH) present in the compositions tested.
"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPO2d 1655, 1658 (Fed. Cir. 1990).
Alternatively, determining the relative ratio of two compounds in a disclosed synergistic fungicidal mixture is routine, well within the skill of the artisan.
As such, claims 1-8 of U.S. patent 12,167,731 anticipate or render obvious instant claims 16-30.
Conclusion
Claims 16-30 are rejected.
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 IRINA NEAGU whose telephone number is (571)270-5908. The examiner can normally be reached Mon-Fri 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY S. LUNDGREN can be reached at (571)272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA NEAGU/Primary Examiner, Art Unit 1629
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