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 1, 3, and 5-18 are pending.
Applicant’s election without traverse of claim 3 in the reply filed on 06/03/2025 is acknowledged.
Claims 1 and 5-18 remain withdrawn.
Claim 3 is currently under consideration to the extent that it reads upon Applicant’s elected species.
It is noted that in the process of searching the instantly elected species, the Examiner previously came across art that read upon Dazomet. As such, the Examiner extended the species election to also include Dazomet.
Rejections Maintained and Made Again in view of Applicant’s 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) 3 (the only claim currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable over Vincente (2014) and Teminco (2018).
Vincente teaches that Fusarium wilt or Panama disease is caused by Fusarium oxysporum cubensis – Tropical Race 4 (TR4) (see entire document, for instance, page 1, top slide). Vincente further teaches applying Dazomet as a sanitation and disinfection agent for pre-planting control of soil diseases (see entire document, for instance, page 9, top slide).
Vincente, while teaching that Dazomet is useful for sanitizing and disinfecting soil from Fusarium oxysporum cubensis – Tropical Race 4 (TR4) does not expressly articulate the depth of said application.
Teminco teaches soil diseases that are detrimental to plants include Fusarium oxysporum, which is found at 60+ cm deep (see entire document, for instance, page 6). Teminco further teaches application of active agents, such as metam sodium, by injection allows the product to be applied at a depth of 10-40cm deep (see entire document, for instance pages 12 and 21). Teminco further teaches that it can be necessary to very the amount of the active agent in order to achieve efficient soil treatment results (see entire document, for instance, page 9).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention to apply Dazomet at 40 cm in order to reduce Fusarium oxysporum cubensis – Tropical Race 4 (TR4) in soil which Musa plants will be grown. One would have been motivated to do so since Teminco teaches that injection applies active agents 10-40 cm deep, wherein Fusarium oxysporum is taught as being present at 60+ cm deep. As such, one would have been motivated to apply the agent at 40 cm to allow the application to be close to the target, namely, the Fusarium oxysporum cubensis – Tropical Race 4 (TR4). There would be a reasonable expectation of success since Dazomet is a known agent for sanitizing and disinfecting soil from Fusarium oxysporum cubensis – Tropical Race 4 (TR4) wherein Teminco teaches the application of agents against soil diseases at depths of 40cm.
It further would have been obvious to one of ordinary skill in the art to optimize the amount of the active utilized. One would have been motivated to do so in order to achieve efficient soil treatment results as indicated by Taminco. There would be a reasonable expectation of success since the amount of the composition is taught as being a result effective variable, wherein the desired result of efficient soil treatment is directly tied to the amount of the composition being utilized. It is noted that MPEP 2144.05 states: "Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
With regard to the steps of allowing the composition to convert to MITC, it is noted that a product cannot be separated from its properties, wherein the Dazomet (or metam sodium) would necessarily convert to MITC since MITC is a degradation product that occurs when the Dazomet (or metam sodium) is applied. Further, regarding the step of allowing the MITC to reduce viable Foc TR4 propagule count in the soil by at least 15%, it is noted that, again, a product cannot be separated from its properties, wherein the Dazomet (or metam sodium) would necessarily have the effect of reducing the Foc TR4 in the soil since this is a property of the composition.
Response to Arguments
Applicant argues in the Remarks filed 09/30/2025 that the prior art does not teach the amount of the composition as newly claimed. Applicant’s argument is not found persuasive against the ground of rejection set forth above. Specifically, the prior art motivates one of ordinary skill in the art to optimize the amount of the active agent in order to arrive at an efficient soil treatment result. Therefore, Applicant’s argument is not found persuasive.
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.
Claim 3 (the only claim currently under consideration) is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/907496 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a method of reducing Fusarium oxysporum f. sp. cubense Tropical Race 4 (Foc TR4) (a.k.a. Fusarium odoratissimum) propagules in soil of a Musa field, comprising applying a composition comprising 500-5000 L/ha of methyl isothiocyanate (MITC) or a compound that produces MITC as a degradate (or a functional equivalent or alternative thereof), wherein application of the composition reduces Foc TR4 propagule count in the soil by at least 15% compared to the Foc TR4 propagule count in the soil before treatment which directly overlaps the instantly claimed claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant argues in the Remarks filed 09/30/2025 that the copending claims do not recite the depth of the composition, and therefore, the double patenting rejection should be withdrawn. Applicant’s argument is not found persuasive. It is noted that the instant claims recite methyl isothiocyanate OR a compound that produces MITC as a degradate at least 40 cm below the surface of the soil. Since the copending claims teach methyl isothiocyanate, the copending claims are not required to teach “a compound that produces MITC as a degradate at least 40 cm below the surface of the soil.”
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TREVOR LOVE/Primary Examiner, Art Unit 1611