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 .
Status of claims
Pending claims 1-3, 5-12, 14, and 17-20 have been examined on the merits.
Withdrawn Rejections
The rejection of Claims 1-4, 10 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Shuang-Yu et al. Acta Agriculturae Universitatis Jiangxiensis, 41(2), Page 249-257, March, 2019 (cited on the IDS of March 27, 2023), in view of Ren et al. (WO 2006066308) (cited on the IDS of March 7, 2023), Ploetz RC. Phytopathology. 2015;105(12):1512-1521 is withdrawn due to the Claim Amendments and Cancellation.
The rejection of claims 5-9, 11- 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Shuang-Yu, Ren, Ploetz as applied to claims 1-4, 10 and 14-19 in further view of Eastman (https://www.eastman.com/content/dam/eastman/corporate/en/literature/t/
tam8064.pdf), Ren et al. (WO 2006066308) is withdrawn due to the Claim Cancellation.
New Grounds of Rejection due to Claim Amendment and Cancellation
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office
action.
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.
Claims 1-3, 10, 14, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Shuang-Yu et al. Acta Agri Univers Jiangxiensis, 41(2), Page 249-257,
March, 2019 (cited on the IDS of March 27, 2023), in view of Ren et al. (WO 2006066308) (cited on the IDS of March 7, 2023), Labrada et al., https://www.fao.org/fileadmin/
templates/agphome/documents/Methyl_Bromide/globrepo.pdf (Retrieved 12/08/2025), Ploetz RC. Phytopathology. 2015;105(12):1512-1521.
Regarding claims 1-3, 10, 14 and 17-19, Shuang-Yu (abstract, page 249-250) teaches the use of soil disinfectants such as allyl isothiocyanate, to control soil-borne pathogens, including but not limited to Fusarium oxysporum f. sp. cubence race 4 (Foc4); and it is important to note that Fusarium oxysporum f. sp. cubense Tropical Race 4 (Foc TR4) is a subgroup within Foc4. This is supported by Ploetz (page 1512-1516) discloses that both Foc and Foc TR4 are subgroup of Race 4 and they can both infect mussa spp. (bananas and plantains). Additionally, while Shuang-Yu does not explicitly mention spores, hyphae or hyphal, it is common knowledge in the art that fungi infection usually spreads through the use of spores and hyphae. As evidenced by Chen (page 2), Foc TR4 hyphae and spores on the debris of banana plant fall into soil through rains and initiate a new infection cycle (Chen, D., Ju, M., Xie, J. et al. Phytopathol Res 6, 53 (2024).).
Furthermore, while Shuang-Yu does not explicitly teach reduction of Foc TR4 infection in musa field soil, however, Shuang-Yu (page 249-250) teaches allyl isothiocyanate is a very effective soil disinfectant to control banana fursarium, including but not limited to Foc4. Furthermore, Ploetz (page 1512-1513) teaches that all banana and plantain belong to the genus of Musa and the F. oxysporum f. sp cubense, particular subsgroups such as M. acuminata and M. balbisiana. Given that allyl isothiocyanate is known to be effective against Foc4, a person of ordinary skill in the art (POSITA) would understand that applying allyl isothiocyanate to soil used for growing musa species (bananas) is intended to target the fusarium genus, including specific RACE4 of which included subgroup such as Foc4, Foc TR4, M. acuminata and M. balbisiana. Therefore, it would have been obvious to a POSITA to modify the teachings of Shuang-Yu in view of Ploetz to include Foc TR4, M. acuminata and M. balbisiana, among the fusarium subgroups to be targeted by allyl isothiocyanate and arrive at the claimed invention.
Regarding propagule count, Shuang-Yu (page 252, Table 1) teaches allyl isothiocyanate inhibitory rate against Fusarium oxysporum f. sp. cubence to be at least 20%. While Shuang-Yu does not explicitly teach propagule count, however, Shuang-Yu (page 250 and 252) discloses the fungal population as CFU, colony diameter measurement, and inhibitory rate, where the combined data reflects aspects of propagule count and viability. Thus, a POSITA would recognize these data allow assessment of the fungi’s ability to germinate and grow. Given inhibitory rate is typically calculated from changes in these parameters, thus, a POSITA would consider the data to reflect a reduction in propagule survival or growth rate, or to indicate a reduction of propagule by at least 20% in the allyl isothiocyanate treated group (Shuang-Yu; page 252, Table 1). Furthermore, while Shuang-Yu does not explicitly teach a reduction by at least 70%, however, Shuang-Yu’s disclosure of “at least 20%” expressly encompasses reduction greater than 20%; and thus, inherently includes reduction by 70% or more.
Shuang-Yu does not explicitly teach methyl isothiocyanate.
However, Ren (page 5, line 23-31 bridged page 3, lines 1-3) teaches that methyl isothiocyanate (MITC) and allyl isothiocyanate belong to the same class of compounds (isothiocyanates); and that both are referred as the preferred isothiocyanate derivatives. This teaching strongly indicates that MITC and allyl isothiocyanate could be equivalent or at least interchangeable, thus a POSITA would reasonably infer that either one can be used to control fusarium species such as Foc4 and Foc TR4 and arrive at the claimed invention. Therefore, it would be obvious for a POSITA to modify the combined teachings of Shuang-Yu and Ploetz in view of Ren by exchanging allyl isothiocyanate with MITC to arrive at the claimed invention, because of MITC and allyl isothiocyanate shared properties and overlapping uses, especially as biofumigants or antifungal agents.
Regarding liters per hectare, Eastman (page 10) teaches dose rates in l/ha, however, Eastman does teach 500-5,000 liters per heactare.
However, Labrada (page 49) teaches the following:
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When converting to field-application units, 100-800 ml/m2, this corresponds to 1000-8000 L/ha, which overlaps the claimed range. Therefore, it would have been obvious to a POSITA, to modify Shuang-Yu’s teachings and arrive at the claimed invention, because Labrada discloses volumetric rates that are standard practice for achieving effective fumigant distribution.
Regarding the number of days after applying the composition, the combined teachings of Shuang-Yu, Ren and Ploetz does not explicitly teach a specific time frame to plant after treated the soil. Given that treating the soil before planting is a basic and obvious principle of soil-borne disease management; thus, it would have been obvious for a POSITA to treat the soil to planting in order to significantly reduce fusarium species levels and thereby decrease the risk of infection in the new crop. In addition, the number of days to wait after treatment and the quantity to plant after treatment are matters of routine optimization that a POSITA would determine based on the specific condition and the levels of fusarium reduction achieved after treatment. This is supported by the specification (page 60, line 1-3) discloses plants were transplanted 21 days after treatment. This disclosure further demonstrates that a POSITA would recognize the need for a waiting period between fumigation and planting, due to the persistence and phytotoxicity of MITC residues in the treated soil.
Claims 5-9, 11-12 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Shuang-Yu, Ren, Ploetz as applied to claims 1-4, 10 and 14-19 in further view of
Eastman (https://www.eastman.com/content/dam/eastman/corporate/en/literature/t/
tam8064.pdf), Ren et al. (WO 2006066308).
The combined teachings of Shuang-Yu, Ren and Ploetz teach a method of reducing fusarium wilt of banana such as Foc TR4 with application of MITC on a banana mussa field. However, the combined teacings of Shuang-Yu, Ren and Ploetz do not teach metam sodium and metam potassium.
Regarding claims 5-7, Eastman (page 12) teaches metam sodium and metam potassium are both salts of N-methyldithiocarbamate; and once applied to the soil they start decomposing into methyl isothiocyanate (MITC). Eastman (page 14) teaches that MITC is very effective against fungi including but not limited to fusarium spp. Therefore, it would have been obvious to a POSITA to modify Shuang-Yu’s teachings in view of Ren, Ploetz and Eastman to arrive at the claimed invention, a composition comprising N-methyldithiocarbamate salts or MITC, to be applied to a musa field against banana fusarium.
Regarding claims 8-9, Ren (page 10, lines 13-30) teaches carbon dioxide was added to ethyl formate + methyl isothiocyanate mixture, to act as a solvent/propellant to disperse the chemicals as aerosols particles. Ren (page 11, lines 3-7) the formulation may also be applied as a liquid, gas, or vapor. Furthermore, Eastman (page 13) also teaches that water is a solvent for both metam sodium and metam potassium.
Regarding claims 11, Eastman (page 13) teaches metam sodium and metam potassium can be used at a concentration 510 g/L and 690 g/L, respectively.
Regarding claim 20, Eastman (page 16-17) teaches the various choice for metam sodium and metam potassium application technique in soil disinfection including but not limited to such as goose foot or blade injection and deep shanks.
Response to Argument
Applicant’s argument on the distinction between greenhouse or pots experiment and Musa field experiments, is not persuasive. This is because, the combined teachings of the prior art clearly teach the same soil-treatment principle against the same soil-borne pathogen, Fusarium genus, as an example, using MITC, a well-known soil fumigant widely used to control fusarium wilt in bananas. In fact, even if the combined prior art does not explicitly mention Musa fields, Eastman discloses solid disinfection with MITC for controlling Fusarium, thus a POSITA would understand that the soil-treatment methods apply equally to Musa fields, because soil-borne pathogen, the fumigant’s mode of action, and the steps of soil application do not change between greenhouse and Musa field environment; because approach to controlling soil-borne pathogens is the same.
Applicant’s argument that Ploetz teaches away from using chemical treatment to manage banana wilt in favor of using disease resistant cultivars. Applicant also argues that Ploetz teaches that resistant cultivars are the only consistently effective way to manage Fusarium wilt. Applicant’s argument is not persuasive because, while Ploetz teaches resistant cultivars as one of the management strategies, this not an endorsement of moving away from chemical treatment such as MITC. It is important to highlight that Ploetz’s statement about resistant cultivars, is to reflect the historical reality of what has been most commonly used, not a prescriptive statement that chemical treatments are inherently ineffective or discourage. Additionally, Ploetz discusses biological, chemical, and cultural measures, noting their inconsistent results, but never explicitly dismisses them outright. In this context, it evident that Ploets indicates that resistant cultivars are not universally effective and that other approaches, including chemical or soil-treatment strategies, still remains viable approach, especially as complement to resistance. Therefore, Ploetz does not teach away from chemical treatment; rather, Ploetz highlights the deficiencies of the current methods in a way that would motivate a POSITA to explore additional or improved chemical-based solution, such as MITC.
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Furthermore, it is important to highlight that the combined prior art teaches Fusarium spp., including fusarium odoratissimum, and the use of MITC against Fusarium spp. to control fusarium species, which causes Fusarium wilt in Musa plants. Thus, a POSITA would recognize that the soil-treatment methods apply equally to Musa fields, because soil-borne pathogen, the fumigant’s mode of action, and the steps of soil application do not change between environment; because approach to controlling soil-borne pathogens is the same.
Applicant argues that none of the prior art teaches the appropriate rate, Applicant’s argument is not persuasive because Labrada (page 49) teaches the following:
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When converting to field-application units, 100-800 ml/m2, this corresponds to 1000-8000 L/ha, which overlaps the claimed range. Therefore, it would have been obvious to a POSITA, to modify Shuang-Yu’s teachings and arrive at the claimed invention, because Labrada discloses volumetric rates that are standard practice for achieving effective fumigant distribution.
Conclusion
Therefore, claims 1-3, 5-12, 14, and 17-20 are rejected.
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/P.P.E./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622