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 . Claims included in the prosecution are claims 1 and 10-28.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/16/2026 has been entered.
Applicants' arguments, filed 03/16/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 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.
1. Claims 1, 10-16, and 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Harigae et al., (US 2020/0288714 A1, filed 11/13/2018) (hereinafter Harigae).
Harigae discloses an agricultural or horticultural chemical agent containing an azole derivative as an active component ([0001]). Preferable azole derivatives are disclosed in Tables 1-8 and correspond to the chemical formula (Ia) ([0067-0068]):
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Suitable azole derivatives include Compound No. I-1, wherein R1 is H, R2 is OMe, (R3)n is 2-Cl, (R4)m is 4-Cl, and Y is O (Table 1). Compound No. I-1 represents the compound methyl 2-hydroxy-2-(2-chloro-4-(4-chlorophenoxy)phenyl)-3-(1H-1,2,4-triazol-1-yl)propanoate (i.e. methyl 2-[2-chloro- 4-(4-chlorophenoxy)phenyl]-2-hydroxy-3-(1,2,4-triazol-I-yl)propanoate ([0240]). Another suitable azole derivative include Compound No. I-122, wherein R1 is H, R2 is OMe, (R3)n is 2-CF3, (R4)m is 4-Cl, and Y is O (Table 1). Compound No. I-122 represents the compound methyl 2-(4-(4-chlorophenoxy)-2-(trifluoromethyl)phenyl)-2-hydroxy-3-(1H-1,2,4-triazol-1-yl)propanoate (i.e., methyl 2-[4-(4-chlorophenoxy)-2-(trifluoromethyl)phenyl]-2-hydroxy-3-(1,2,4-triazol-1-yl)propanoate) ([0297]). The agricultural or horticultural chemical agent can be combined with a known other active ingredient to increase the performance as the agricultural or horticultural chemical agent. Examples of the known other active ingredient may include known active ingredients contained in a germicide, an insecticides, a miticide, a nematicide, or a plant growth regulator ([0136]). Suitable germicides include mandestrobin (typo misspelling “madestrobin” in prior art) ([0141]), and pyriofenone ([0151]). The agricultural or horticultural chemical agent is used by mixing the azole derivative with a solid carrier or liquid carrier, a surfactant, and other pharmaceutical preparation adjuvants and forming a pharmaceutical preparation ([0129]). The agricultural or horticultural chemical agent controls the effect of various plant diseases such as soybean stem Phytophthora rot, cucumber gray Phytophthora rot (Phytophthora capsici) ([0122]-[0123]) and controls Septoria tritici ([0561]). The agricultural or horticultural chemical agent can be utilized in all of plants ([0125]). The agent may also be used in a seed (i.e., plant propagation material) coating treatment ([0168]). The concentration and the amount of use vary depending on the dosage form, the time when it is used, the usage, the location of use, and the target crop ([0172]).
Harigae discloses compositions containing methyl 2-[2-chloro- 4-(4-chlorophenoxy)phenyl]-2-hydroxy-3-(1,2,4-triazol-I-yl)propanoate (i.e., component (A)) ([0240]), methyl 2-(4-(4-chlorophenoxy)-2-(trifluoromethyl)phenyl)-2-hydroxy-3-(1H-1,2,4-triazol-1-yl)propanoate (i.e., component (A)) ([0297]), and mandestrobin (i.e., component (B)) ([0141]). Together these would provide a composition as claimed instantly. The prior art is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP 2143(I)(A).
Regarding the claimed weight ratio range of (A) to (B) in claims 1, 10, 19-21, and 25-26, Harigae does not disclose the weight ratio of (A) to (B) claimed in the instant application. However, Harigae teaches that the concentration and the amount of use of the agricultural or horticultural chemical agent (i.e., component (A)) vary depending on the dosage form, the time when it is used, the usage, the location of use, and the target crop. Thus, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at an amount of component (A) depending on the dosage form, time when it is used, usage, location of use, and target crop. Harigae also discloses wherein the germicide (i.e., component B) is used to increase the performance of the agricultural or horticultural chemical agent (i.e., component A). Thus, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at an amount of component B depending on level of increase performance desired. Once one has arrived at an amount of agricultural or horticultural chemical agent (i.e., component (A) and germicide (i.e., component (B)), there would then be a ratio of (A) to (B). Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed ratio depending on the factors discussed above. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A).
Regarding claims 11 and 12 reciting wherein the composition comprises both component (B) and a further active ingredient, Harigae does not disclose specifically wherein the agricultural or horticultural chemical agent may be combined with more than one germicide. However, since Harigae discloses the use of various germicides individually, the use of the individual species in combination would have been obvious since it is prima facie obvious to combine two compositions, each of which is taught by Harigae to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea for combining them flows logically from their having been individually taught in the prior art. See MPEP 2144.06.
2. Claims 17 and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over Harigae et al., (US 2020/0288714 A1, filed 11/13/2018) (hereinafter Harigae) in view of Matsuzaki et al. (Antifungal activity of metyltetraprole against the existing Qol-resistant isolates of various plant pathogenic fungi, Nov. 26, 2019) (hereinafter Matsuzaki).
The teachings of Harigae are discussed above. Harigae does not teach wherein the composition comprises metyltetraprole.
However, Matsuzaki discloses wherein metyltetraprole is active against the QoI-resistant isolates of Zymoseptoria tritici (i.e., septoria tritici) with the mutation G143A in their cytochrome b gene (abstract).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Harigae discloses wherein the composition comprises known other active ingredients to increase the performance of the agricultural or horticultural chemical agent and the agricultural or horticultural chemical agent controls the effect of various plant diseases such as Septoria tritici. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated metyltetraprole into the composition of Harigae since it is a known and effective agent that controls Septoria tritici as taught by Matsuzaki.
Response to Arguments
Applicant argues that they are not required to show unexpected results over the entire range of properties possessed by a chemical compound or composition. The evidence of unexpected results in the specification allows a skilled artisan to ascertain a trend in the exemplified data that would allow him or her to reasonably extend the probative value thereof.
The Examiner does not find Applicant’s argument to be persuasive. As discussed previously, the tables cited to support a finding of unexpected results only demonstrate synergy using Compound A-1.3 of the instant application, which corresponds to Methyl 2-[4-(4-chlorophenoxy)-2- (trifluoromethyl)phenyl]-2-hydroxy-3-(1 ,2,4-triazol-1-yl)propanoate, as noted on page 4, lines 12-13 of the instant specification, but the cited examples do not provide evidence of synergy for the other claimed variations of instantly claimed formula I. Further, as noted above, the synergistic ratios of Compound A-1.3 to the representative compound of instantly claimed compound B derived from tables 8-23 above vary depending on which representative compound of instantly claimed compound B is being combined with Compound A-1.3 and evidence of synergistic activity is not found in the cited tables across the entire claimed weight ratio of (A) to (B) is in the range of about 100:1 to about 1:100, 20:1 to 1:40, 12:1 to about 1:25, 5:1 to about 1:15, about 2:1 to about 1:5, about 1:700 to about 30:1, and about 1:40 to 20:1, for all claimed synergistic combinations of (A) and (B) as noted above. Lastly, synergistic activity is noted only for Corynespora assiicola, Mycosphaerella arachidis syn. Cercospora arachidicola, Septoria glycines, and Septoria tritici and cannot be extrapolated to the entire claimed Corynespora fungus, a Mycosphaerella fungus, a Septoria fungus families. Thus, the data found in Tables 8-23 of the instant specification to support a synergistic fungal effect of compositions comprising mixtures of (A) and (B) is not commensurate in scope with the claims.
The Examiner maintains this position. MPEP 716.02(d) states wherein the showing of unexpected results must be reviewed to see if the results occur the entire claimed range. The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In the instant case, Applicant has not shown wherein there is a trend with using Compound A-1.3 such that one would extend the probative value thereof to the other compounds being claimed. It is not clear how a trend can be ascertained from the exemplified data in the specification when the exemplified data only uses Compound A-1.3. One of ordinary skill in the art would not reasonably expect a compound comprising trifluoromethyl to be reasonably representative of a compound comprising chloro instead since different metals and functional groups affect chemical and physical properties.
Additionally, as discussed previously, the claims are also not commensurate in scope since the claims recite an (A) to (B) weight ratio of 100:1 to about 1:100 and not all ratios within this range are synergistic. For example, in Table 16 a synergistic effect is noted when Compound A-1.3 is used with ipflufenoquin against Septoria glycines in a ratio of 12:245 but not 3:125. Applicant has not addressed this argument.
Furthermore, as discussed previously, synergistic activity is noted only for Corynespora assiicola, Mycosphaerella arachidis syn. Cercospora arachidicola, Septoria glycines, and Septoria tritici and cannot be extrapolated to the entire claimed Corynespora fungus, a Mycosphaerella fungus, a Septoria fungus families. Applicant has not addressed this argument. Matsuzaki teaches in the abstract of needing to test metyltetraprole against various isolates of Zymoseptoria tritici. Thus, supporting wherein synergistic activity for some species cannot be extrapolated to the entire genus. As such, Applicant’s argument is unpersuasive.
Conclusion
Claims 1 and 10-28 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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