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 .
This Office Action is in response to Applicant’s amendment filed June 10, 2025. Claims 1-4, 9-22, 24-25, and 27 are pending in the application. Claims 1, 2, 9, and 11 have been amended. Claims 1-4, 9-22, 24-25, and 27 will be examined.
Information Disclosure Statement
Receipt of Information Disclosure Statement filed March 28, 2025 is acknowledged.
Status of the Claims
The rejection of claims 1-4, 9-25, and 27 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to Applicant’s amendments to claims 1, 2, 9, and 11.
The rejection of claims 1, 3, 4, 9, 15, 20, 24, and 27 under 35 U.S.C. 103 as being unpatentable over Runia et al. Publication (2007, Comm. Appl. Biol. Science, Runia et al.) is withdrawn due to Applicant’s amendment to independent claim 1.
The rejection of claims 1, 3-4, 9-24, and 27 under 35 U.S.C. 103 as being unpatentable over Coleman et al. (US 2018/0049441) in view of Runia et al. Publication (2007, Comm. Appl. Biol. Science, Runia et al.) is withdrawn due to Applicant’s amendment to the claims.
The rejection of claims 2 and 25 under 35 U.S.C. 103 as being unpatentable over Coleman et al. (US 2018/0049441) in view of Runia et al. Publication (2007, Comm. Appl. Biol. Science, Runia et al.) as applied to claims 1, 3-4, 9-24, and 27 above, and further in view of Maymon Abstract (2018, Disease Notes, Maymon et al.) is withdrawn due to Applicant’s amendment to the claims.
The rejection of claim 17 under 35 U.S.C. 103 as being unpatentable over Coleman et al. (US 2018/0049441) in view of Runia et al. Publication (2007, Comm. Appl. Biol. Science, Runia et al.) as applied to claims 1, 3-4, 9-24, and 27 above, and further in view of Ren et al. (US 2009/0012158) is withdrawn due to Applicant’s amendment to the claims.
The rejection of claims 1-4, 9, 15-22 and 24-25 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 13, 14, 15, 16, 17, 18, and 19 of copending Application No. 17/907,487 (‘487) is withdrawn due to the abandonment of copending Application No. ‘487.
The rejection of claims 1-4, 9, 11, 12, 15-22, 24-25, and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-11, 13-14, and 20 of copending Application No. 17/907,496 (‘496) is maintained.
The rejection of claims 1-4, 9, 15-22, 24-25, and 27 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 7-13 and 18 of copending Application No. 17/907,501 (‘501) is maintained.
Rejections not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New Rejections Necessitated by Amendment filed 6/10/2025 and IDS filed 3/28/2025
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 21 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 21 recites “wherein the composition comprises: 300-700 grams of methyldithiocarbamate equivalents per liter of composition”. Claim 21 is dependent from claim 1. Claim 1 has been amended to add the limitation of “wherein the composition includes 300-700 grams of methyldithiocarbamate equivalents per liter of composition”. With the addition of this limitation to independent claim 1, claim 21 no longer further limits independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
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, 3-4, 9-22, 24, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Coleman et al. (US 2018/0049441) in view of Runia et al. Publication (2007, Comm. Appl. Biol. Science, Runia et al.) and Pasche et al. Publication (2014, Am. J. Potato Res., Pasche et al.). Pasche et al. cited by Applicant on the IDS dated 3/28/2025.
Applicant’s Invention
Applicant claims a method of treating soil with a composition comprising methyl isothiocyanate (MITC) or a compound that produced MITC as a degradate, the method comprising: applying the composition to the soil at two depths between 0 cm and 60 cm below the soil surface, wherein a first depth is at least 40 cm below the soil surface and a second depth of 0 to less than 40 cm below the soil surface, wherein the composition includes 300-700 grams of methyldithiocarbamate equivalents per liter of composition, and wherein the composition is applied to the soil at a rate of 750-3,000 liters per hectare. Applicant claims a method of treating soil with a composition comprising methyl isothiocyanate (MITC) or a compound that produces MITC as a degradate, the method comprising: applying the composition to the soil at two depths between 0 centimeter and 60 cm below the surface, wherein a first depth is at least 40 cm below the surface and a second depth is 0 to less than 40 com below the surface; and blending the soil such the composition and/or degradate derived therefrom is distributed throughout the soil at a depth of 0 cm to at least 60 cm, wherein the composition includes 300-700 grams of methyldithiocarbamate equivalents per liter of composition, and wherein the composition is applied to the soil at a rate of 750-3,000 liters per hectare.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Regarding claim 1, Coleman et al. teach a stable concentrated solution of a dithiocarbamate fumigant and an inorganic polysulfide compound. The dithiocarbamate is preferably a salt of methyldithiocarbamate, for example an alkali salt (page 3, paragraph 18).
Regarding claim 1, Coleman et al. teach advantageously, the treatment is applied below the surface of the soil, particularly at a depth of about 2 inches or more below the surface of the soil, for example below 4 inches below the surface of the soil. Often treatment is applied at more than one depth, for example at 4 inches depth and at 8 inches depth (page 6, paragraph 36).
Regarding claims 1 and 21, Coleman et al. teach “active ingredients” here, are at least 2 pounds of active ingredients per gallon (240 g/L), more preferably at least 2.5 pounds of active ingredients per gallon (300 g/L), more preferably at least 2.75 pounds of active ingredients per gallon (330 g/L). A practical maximum is about 5 pounds of active ingredients per gallon (less than 600 g/L) (pages 4-5, paragraph 26), which falls within the range of 300-700 grams per liter, as currently claimed.
Regarding claims 9, 10, 11, 14, and 22, Coleman et al. teach soil was placed in a bucket, treated with appropriate LLS/Metam mixture in correct volume of water, thoroughly mixed/agitated, and left sealed for 24 hours to simulate a water seal or tarp (page 13, paragraph 88).
Regarding claims 12 and 13, Coleman et al. teach applying includes mechanically disturbing the soil so as to assist movement of the calcium polysulfide solution through the soil (page 5, paragraph 31).
Regarding claims 15 and 18, Coleman et al. teach when an application rate of metam sodium is expressed as gallons per acre, it is understood that a gallon contains 4.25 pounds of sodium methyldithiocarbamate per gallon, and one gal./acre sodium metam solution such as Sectagon®-42 is equivalent to 4.76 kg/ha of metam sodium (page 4, paragraph 23).
Regarding claim 16, Coleman et al. teach the solution can optionally contain added stabilizers, antifreeze agents, wetting agents, and penetrating agents (page 4, paragraph 25).
Coleman et al. teach the invention also relates to treating soil pathogens (fungi, bacteria, and nematodes) with the concentrated solution (page 3, paragraph 18).
Regarding claims 15 and 19, Coleman et al. teach when an application rate of potassium metam is expressed as gallons per acre, it is understood that a gallon contains 5.63 pounds of potassium methyldithiocarbamate per gallon, and one gal./acre potassium metam solution such as Sectagon®-54 is equivalent to 6.3 kg/ha of potassium methyldithiocarbamate (page 4, paragraph 23).
Regarding claim 20, Coleman et al. teach metam is a commonly used fumigant. Metam is rapidly converted to MITC in soil (page 2, paragraph 10).
Regarding claim 24, Coleman et al. teach a field test was performed in small plots in a grower's location in near Moses Lake, Wash. using commercial equipment, shanking the product 8-9 inches into the ground (page 11, paragraph 75).
Coleman et al. teach Location 1 was treated with 45 gallons per acre of Sectagon®, the metam sodium solution, which is equivalent to 191 pounds of methyldithiocarbamate per acre (page 11, paragraph 76). 45 gallons per acre is equivalent to 420 liters per hectare.
Regarding claim 27, Coleman et al. teach a concentrated solution as described above is used to treat soil. It can be important to use concentrated liquids for application subsurface using a shank or other such mechanical device (page 7, paragraph 40).
Coleman et al. teach results in more uniform effectiveness of metam, possibly due to lower rates of degradation by adverse soil conditions, increased soil retention, or improved distribution of the metam or methyl isothiocyanate (MITC) in soil (page 6, paragraph 36).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Coleman et al. do not specifically disclose applying the composition to the soil at a rate of 750-3,000, liters per hectare, two depths between 0 cm and 60 cm below the soil surface, wherein a first depth is at least 40 cm below the soil surface and a second depth is 0 to less than 40 cm below the soil surface, as claimed in claims 1 and 9; the first depth is 40-45 cm below the soil surface, as claimed in claim 3; or wherein the second depth is 0-40 cm below the soil surface, as claimed in claim 4. It is for this reason the Runia Publication and the Pasche Publication are added as secondary references.
Regarding claims 1, 9, and 15, Runia et al. teach several dosages of metam sodium (MS), trade name Monam, were applied with rotary spading injection (page 688, Materials and Methods, paragraph 2).
Regarding claims 1, 9, and 24, Runia et al. teach objects were 300 l and 600 l of Monam (510 g MS/l)/ha, both injected at 14 cm depth and rotovated through the furrow until 28 cm depth (page 688, Materials and Methods, paragraphs 2).
Regarding claim 4, Another treatment was application of 600 l of Monam/ha, injected 20 cm depth and rotavated through 40 cm of soil (page 688, Materials and Methods, paragraphs 2).
Regarding claim 20, Runia et al. teach metam-sodium with the active ingredient methyl isothiocyanate (MIT) (page 687, Summary).
Runia et al. teach that from the tables it can be seen that 600 l of Monam/ha, irrespective of the injection depth, was far more effective in comparison with 300 l of Monam/ha. The efficacy in the soil layer of 0 to 30 cm depth was at least 99% against both nematodes and in the soil layer of 30 to 50 cm depth at least 90% efficacy was achieved with 600 l of Monam/ha (page 688, Results, Nematode analysis).
Regarding claim 27, Runia et al. teach dosages of metam sodium and injection depths were tested for efficacy against Meloidogyne fallacy, all applied with rotary spading injection (page 687, Introduction).
Pasche et al. teach the effects of fumigation injection depth, metam sodium rate and soil temperature at time of injection on the soil population of V. dahlia. Pasche et al. teach that metam sodium (sodium methyldithiocarbamate) via shank injection at a single depth of 25 cm or split 50:50 in a dual application at depths of 15 cm and 25 cm using commercial fumigation equipment (page 279, col. 2, Materials and Methods, paragraph 2). Pasche et al. teach the soil was ripped to a depth of 45 cm with a DMI chisel plow prior to fumigation at rates including 655 l/ha (page 280, col. 1, lines 1-3). Pasche et al. teach that the principal breakdown product of metam sodium in soil is methyl isothiocyanate (MITC), a highly toxic biocide with significant potential for volatilization (page 279, col. 1, first full paragraph).
Finding a prima facie obviousness Rationale and Motivation
(MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Coleman et al., Runia et al., and Pasche et al. to determine the optimal depth to apply metam sodium. Coleman et al. teach a stable concentrated solution of a dithiocarbamate fumigant and an inorganic polysulfide compound. The dithiocarbamate is preferably a salt of methyldithiocarbamate, for example an alkali salt. Coleman et al. teach advantageously, the treatment is applied below the surface of the soil, particularly at a depth of about 2 inches or more below the surface of the soil, for example below 4 inches below the surface of the soil. Often treatment is applied at more than one depth, for example at 4 inches depth and at 8 inches depth. 2 inches to 8 inches is equivalent to 5.08 cm to 20.32 cm. Coleman et al. teach results in more uniform effectiveness of metam, possibly due to lower rates of degradation by adverse soil conditions, increased soil retention, or improved distribution of the metam or methyl isothiocyanate (MITC) in soil. Runia et al. teach the efficacy in the soil layer of 0 to 30 cm depth was at least 99% against both nematodes and in the soil layer of 30 to 50 cm depth at least 90% efficacy was achieved with 600 l of Monam/ha. Pasche et al. teach that metam sodium (sodium methyldithiocarbamate) is applied via shank injection at a single depth of 25 cm or split 50:50 in a dual application at depths of 15 cm and 25 cm using commercial fumigation equipment. One of ordinary skill in the art would have been motivated to use the teachings of Runia et al. and Pasche et al. to determine the first and second depths to apply metam sodium to the soil in Coleman et al. Since Coleman et al. and Pasche et al. establish that metam sodium treatments are applied at more than one depth, one of ordinary skill in the art would have found it obvious to use experimentation within the limited ranges taught by Runia et al. of 30 to 50 cm, which provides at least 90% efficacy. 40-45 cm below the soil surface falls within the range of 30 to 50 cm depth, as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007). In addition, the adjustment of particular conventional working conditions is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
Regarding the application rate of 750-3,000 liters per hectare, Coleman et al. teach Location 1 was treated with 45 gallons per acre of Sectagon®, the metam sodium solution, equivalent to 191 pounds metam sodium per acre, which is equivalent to 45 gallons per acre and also equivalent to 420 liters per hectare. Runia et al. teach the efficacy in the soil layer of 0 to 30 cm depth was at least 99% against both nematodes and in the soil layer of 30 to 50 cm depth at least 90% efficacy was achieved with 600 l of Monam/ha. Pasche et al. teach the soil was ripped to a depth of 45 cm with a DMI chisel plow prior to fumigation at rates including 655 l/ha. It would have been obvious to one of ordinary skill in the art to use the teachings of the prior art to optimization and adjust the application rate of methyl isothiocyanate in the soil. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Response to Arguments
Applicant's arguments filed June 10, 2025 have been fully considered but they are not persuasive. Applicant argues Coleman teaches a treatment that includes two actives, a polysulfide and metam salts and that combinations aren’t taught in the instant claims. In response to Applicant’s argument, Applicant use the transitional phrase “comprising”, which indicates that other compounds and actives can be added to the composition used in the method. In addition, independent claim 17, which is rejected in a later rejection, is directed to the addition of additional components. As such, it would have been obvious to one of ordinary skill in the art to use an additional compound, such as polysulfide, as taught by Coleman et al. Applicant argues that Coleman teaches 4.76 kg/ha, and the current claims of the instant application are much higher than what is taught by Coleman. Applicant argues that Coleman teaches away from the application as high as 2100 kg/ha, which is necessary for adequate treatment for microbes such as fusarium. Applicant argues that if one of ordinary skill in the art practices Runia in view of Coleman, one would not arrive at an adequate soil treatment process. In response to Applicant’s argument, Applicant’s claims are directed to an application range of 750-3,000 liters per hectare, which indicates that application rates lower than 2100 kg/ha, can be applied. In addition, Applicant’s argument are directed to a different unit of measure than what is claimed. Further, Coleman et al. teach Location 1 was treated with 45 gallons per acre of Sectagon®, the metam sodium solution, equivalent to 191 pounds metam sodium per acre, which is equivalent to 45 gallons per acre is equivalent to 420 liters per hectare. Runia et al. teach the efficacy in the soil layer of 0 to 30 cm depth was at least 99% against both nematodes and in the soil layer of 30 to 50 cm depth at least 90% efficacy was achieved with 600 l of Monam/ha. Newly added reference, Pasche et al. teach the soil was ripped to a depth of 45 cm with a DMI chisel plow prior to fumigation at rates including 655 l/ha. It would have been obvious to one of ordinary skill in the art to use the teachings of the prior art to optimization and adjust the application rate of methyl isothiocyanate in the soil. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Claims 2 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Coleman et al. (US 2018/0049441) in view of Runia et al. Publication (2007, Comm. Appl. Biol. Science, Runia et al.) and Pasche et al. Publication (2014, Am. J. Potato Res., Pasche et al.) as applied to claims 1, 3-4, 9-22, and 27 above, and further in view of Maymon Abstract (2018, Disease Notes, Maymon et al.). Pasche et al. cited by Applicant on the IDS dated 3/28/2025.
Applicant’s Invention
Applicant claims a method of treating soil with a composition comprising methyl isothiocyanate (MITC) or a compound that produced MITC as a degradate, the method comprising: applying the composition to the soil at two depths between 0 cm and 60 cm below the soil surface, wherein a first depth is at least 40 cm below the soil surface and a second depth of 0 to less than 40 cm below the soil surface, wherein the composition includes 300-700 grams of methyldithiocarbamate equivalents per liter of composition, and wherein the composition is applied to the soil at a rate of 750-3,000 liters per hectare. Applicant claims a method of treating soil with a composition comprising methyl isothiocyanate (MITC) or a compound that produces MITC as a degradate, the method comprising: applying the composition to the soil at two depths between 0 centimeter and 60 cm below the surface, wherein a first depth is at least 40 cm below the surface and a second depth is 0 to less than 40 com below the surface; and blending the soil such the composition and/or degradate derived therefrom is distributed throughout the soil at a depth of 0 cm to at least 60 cm, wherein the composition includes 300-700 grams of methyldithiocarbamate equivalents per liter of composition, and wherein the composition is applied to the soil at a rate of 750-3,000 liters per hectare. Applicant claims the composition is applied in an amount effective for treating Fusarium oxysporum f. sp. cubense Tropical Race 4.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Coleman et al., the Runia Publication (Runia et al.), and the Pasche Publication (Pasche et al.) with respect to the 35 U.S.C. 103(a) rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Coleman et al., Runia et al., and Pasche et al. do not specifically disclose the composition is applied in an amount effective for treating Fusarium oxysporum f. sp. cubense Tropical Race 4 (Foc TR4) or planting at least one Musa tree in the treated soil after applying the composition. It is for this reason the Maymon Abstract is added as a secondary reference.
Maymon et al. teach Fusarium wilt, caused by the soilborne pathogen Fusarium oxysporum f. sp. cubense (Foc) is a major fungal pathogen of banana worldwide (page 1). Plants treated with a strain of F. oxysporum f. sp. melonis race 1.2 (Fom) specific to melon and water served as separate controls. Inoculated plants were then planted in a soil mix (Green90; Evenari.co.il) in 750-ml pots under 30°C and 16/8-h light/darkness photoperiod conditions. Ten replicate plants were treated each with the TR4 and Fom isolates, and water control (page 2). Maymon et al. teach all affected plants, approximately eight in Shfeya and 20 in Ein Gev, were destroyed (by injecting plants with 200 ml of 50% petroleum and 50% Roundup, drip irrigating with 500 liters/ha of metam sodium), irrigation terminated, trenches dug, and the area fenced and cordoned off to avoid entry of humans and stray animals, to prevent further spread. Regular surveys in adjacent banana fields have not revealed any new cases of disease to date (page 3).
Finding a prima facie obviousness Rationale and Motivation
(MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Coleman et al., Runia et al., Pasche et al., and Maymon et al. and use metam sodium to treat Fusarium oxysporum f. sp. cubense Tropical Race 4 (Foc TR4). Coleman et al. teach a stable concentrated solution of a dithiocarbamate fumigant and an inorganic polysulfide compound. The dithiocarbamate is preferably a salt of methyldithiocarbamate, for example an alkali salt. Coleman et al. teach advantageously, the treatment is applied below the surface of the soil, particularly at a depth of about 2 inches or more below the surface of the soil, for example below 4 inches below the surface of the soil. Often treatment is applied at more than one depth, for example at 4 inches depth and at 8 inches depth. Coleman et al. teach the invention also relates to treating soil pathogens (fungi, bacteria, and nematodes) with the concentrated solution. Maymon et al. teach Fusarium wilt, caused by the soilborne pathogen Fusarium oxysporum f. sp. cubense (Foc) is a major fungal pathogen of banana worldwide. Banana is a Musa tree. Since Coleman et al. teach the treatment of soil pathogens, fungi, one of ordinary skill in the art would have been motivated to use metam sodium to treat Fusarium oxysporum f. sp. cubense (Foc) because Maymon et al. teach all affected plants, approximately eight in Shfeya and 20 in Ein Gev, were destroyed by drip irrigating with 500 liters/ha of metam sodium. Likewise, one of ordinary skill in the art would have been motivated to plant banana trees, Musa trees, that have been treated with metam sodium because Maymon et al. teach that treated areas are protected from Fusarium oxysporum f. sp. cubense (Foc) as evidenced by regular surveys in adjacent banana fields did not reveal any new cases of disease.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Response to Arguments
Applicant's arguments filed June 10, 2025 have been fully considered but they are not persuasive. Applicant argues Maymon doesn’t provide sufficient teaching to overcome the deficiencies of Coleman in view of Runia, because Maymon doesn’t teach the use of MITC Material at the adequate levels per hectare to be useful for the treatment of Fusarium. In response to Applicant’s argument, Maymon was added to provide a motivation to use metam sodium to treat Fusarium oxysporum f. sp. cubense Tropical Race 4 (Foc TR4), particularly in Musa plants. Coleman et al. teach a stable concentrated solution of a dithiocarbamate fumigant and an inorganic polysulfide compound. The dithiocarbamate is preferably a salt of methyldithiocarbamate, for example an alkali salt. Coleman et al. teach advantageously, the treatment is applied below the surface of the soil, particularly at a depth of about 2 inches or more below the surface of the soil, for example below 4 inches below the surface of the soil. Often treatment is applied at more than one depth, for example at 4 inches depth and at 8 inches depth. Coleman et al. teach the invention also relates to treating soil pathogens (fungi, bacteria, and nematodes) with the concentrated solution. Maymon et al. teach Fusarium wilt, caused by the soilborne pathogen Fusarium oxysporum f. sp. cubense (Foc) is a major fungal pathogen of banana worldwide. Banana is a Musa tree. Since Coleman et al. teach the treatment of soil pathogens, fungi, one of ordinary skill in the art would have been motivated to use metam sodium to treat Fusarium oxysporum f. sp. cubense (Foc) because Maymon et al. teach all affected plants, approximately eight in Shfeya and 20 in Ein Gev, were destroyed by drip irrigating with 500 liters/ha of metam sodium. Since Maymon et al. teach the application of metam sodium at 500 liters/ha, one of ordinary skill in the art would have been motivated to use teachings of the prior art of record to determine the amount of MITC to use in the composition, as indicated hereinabove. It would have been obvious to one of ordinary skill in the art to use the teachings of the prior art to optimization and adjust the application rate of methyl isothiocyanate in the soil. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Coleman et al. (US 2018/0049441) in view of Runia et al. Publication (2007, Comm. Appl. Biol. Science, Runia et al.) and Pasche et al. Publication (2014, Am. J. Potato Res., Pasche et al.) as applied to claims 1, 3-4, 9-22, 24, and 27 above, and further in view of Ren et al. (US 2009/0012158). Pasche et al. cited by Applicant on the IDS dated 3/28/2025.
Applicant’s Invention
Applicant claims a method of treating soil with a composition comprising methyl isothiocyanate (MITC) or a compound that produced MITC as a degradate, the method comprising: applying the composition to the soil at two depths between 0 cm and 60 cm below the soil surface, wherein a first depth is at least 40 cm below the soil surface and a second depth of 0 to less than 40 cm below the soil surface, wherein the composition includes 300-700 grams of methyldithiocarbamate equivalents per liter of composition, and wherein the composition is applied to the soil at a rate of 750-3,000 liters per hectare. Applicant claims a method of treating soil with a composition comprising methyl isothiocyanate (MITC) or a compound that produces MITC as a degradate, the method comprising: applying the composition to the soil at two depths between 0 centimeter and 60 cm below the surface, wherein a first depth is at least 40 cm below the surface and a second depth is 0 to less than 40 com below the surface; and blending the soil such the composition and/or degradate derived therefrom is distributed throughout the soil at a depth of 0 cm to at least 60 cm, wherein the composition includes 300-700 grams of methyldithiocarbamate equivalents per liter of composition, and wherein the composition is applied to the soil at a rate of 750-3,000 liters per hectare.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Coleman et al. and the Runia Publication (Runia et al.) and the Pasche Publication (Pasche et al.) with respect to the 35 U.S.C. 103(a) rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Coleman et al., Runia et al., and Pasche et al. do not specifically disclose the composition comprises N-octyl pyrrolidone (NOP), ethylformate, or a combination thereof. It is for this reason Ren et al. is added as a secondary reference.
Ren et al. teach new pesticide compositions comprising alkyl formate and an isothiocyanic ester and methods of delivering fumigants and methods of pest control using combinations of fumigants (Abstract). Ren et al. teach surprisingly compositions of alkyl formate with isothiocyanic esters show markedly improved rates of disinfection of rain in quicker times and lower concentrations (page 3, paragraph 45). Ren et al. teach the fumigant compositions are prepared by dissolving the isothiocyanic ester in the alkyl formate. Ethyl formate and methyl isothiocyanate were found to be stable when formulated and stored (page 3, paragraph 47).
Finding a prima facie obviousness Rationale and Motivation
(MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Coleman et al., Runia et al., Pasche et al. and Ren et al. and add ethyl formate to the composition. Coleman et al. teach a stable concentrated solution of a dithiocarbamate fumigant and an inorganic polysulfide compound. The dithiocarbamate is preferably a salt of methyldithiocarbamate, for example an alkali salt. Coleman et al. teach the solution can optionally contain added stabilizers, antifreeze agents, wetting agents, and penetrating agents. One of ordinary skill in the art would have been motivated to add an additional fumigant to the compositions taught by Coleman et al. especially since Ren et al. teach ethyl formate and methyl isothiocyanic ester show markedly improved rates of disinfestation of grain in quicker times and lower concentrations. In addition, in view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional fumigants set forth prima facie obvious subject matter.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Response to Arguments
Applicant's arguments filed June 10, 2025 have been fully considered but they are not persuasive. Applicant argues that Coleman in view of Runia and further in view of Ren does not teach the current claims. Applicant argues that Ren does not provide the sufficient teaching to arrive at the current claims. In response to Applicant’s argument, Ren was added to provide a motivation to add ethyl formate to the composition. Coleman et al. teach a stable concentrated solution of a dithiocarbamate fumigant and an inorganic polysulfide compound. The dithiocarbamate is preferably a salt of methyldithiocarbamate, for example an alkali salt. Coleman et al. teach the solution can optionally contain added stabilizers, antifreeze agents, wetting agents, and penetrating agents. The examiner maintains that one of ordinary skill in the art would have been motivated to add an additional fumigant to the compositions taught by Coleman et al. especially since Ren et al. teach ethyl formate and methyl isothiocyanic ester show markedly improved rates of disinfestation of grain in quicker times and lower concentrations. In addition, in view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional fumigants set forth prima facie obvious subject matter.
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 1-4, 9, 11, 12, 15-25, and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-11, 13-14, and 20 of copending Application No. 17/907,496 (‘496). Although the claims at issue are not identical, they are not patentably distinct from each other because each is drawn to a method of treating soil with a composition comprising methyl isothiocyanate (MITC) or a compound that produces MITC as a degradate, the method comprising: applying the composition to the soil at two depths between 0 cm and 60 com below the soil surface, wherein a first depth is at least 40 cm below the soil surface and a second depth is 0 to less than 40 cm below the soil. Each claims the methyl isothiocyanate or a compound that produces MITC as a degradate treats Fusarium oxysporum f. sp. cubense Tropical Race 4 (Foc TR4) (claims 1, 2, and 9, instant application; claim 1, copending Application No. ‘496). Each claims the plant is in a Musa field or a Musa tree (claim 25, instant application; claims 4 and 15, copending Application No. ‘496). Each claims the compound that produces MITC as a degradate comprises: metam sodium, metam potassium, metam ammonium, or dazomet (claim 15 instant application; claim 5, copending Application No. ‘496). Each claims the metam sodium comprises sodium N-methyldiothiocarbamate; or methyldithiocarbamic acid sodium salt (claim 18, instant application; claim 6, copending Application No. ‘496). Each claims the metam potassium comprises: potassium N-methyldiothiocarbamate; or methyldithiocarbamic acid potassium salt (claim 19, instant application; claim 7, copending Application No. ‘496). Each claims the formulation further comprises a surfactant…a fragrance, or a combination of two or more thereof (claim 16, instant application; claim 8, copending Application No. ‘496). Each claims the composition comprising N-octyl pyrrolidone and ethyl formate (claim 17, instant application; claim 9, copending Application No. ‘496). Each claims the composition forms methyl isothiocyanate when applied to the soil (claim 20, instant application; claim 10, copending Application No. ‘496). Each claims the composition comprises 300-700 grams of methyldithiocarbamate equivalents per liter of solution (claim 21, instant application; claim 11, copending Application No. ‘496). Each claims the soil has a holding capacity, and at the time of treatment, contains water at a level of: 40% -80% of the water holding capacity of the soil (claim 22, instant invention; claim 12, copending Application No. ‘496). Each claims the composition is applied to the soil at a rate of: 500-5000 liters per hectare (claim 23, instant invention; claim 13, copending Application No. ‘496). Each claims the soil is in the field (claim 24, instant invention; claim 14, copending Application No. ‘496). Each claims planting at least one Musa tree in the treated soil after applying the composition (claim 25, instant invention; claims 4 and 15, copending Application No. ‘496). Each claims applying the composition to the soil comprises one or more of: injection application using shank/chisel blade drawn by a tractor or other motorized machine (claim 27, instant application; claim 20, copending Application No. ‘496). For these reasons, one of ordinary skill in the art would conclude that the invention defined in the instant claims is obvious over the claims of copending application ‘496.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4, 9, 15-25, and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 7-13 and 18 of copending Application No. 17/907,501 (‘501). Although the claims at issue are not identical, they are not patentably distinct from each other because each is drawn to a method of treating soil with a composition comprising methyl isothiocyanate (MITC) or a compound that produces MITC as a degradate, the method comprising: applying the composition to the soil at two depths between 0 cm and 60 com below the soil surface, wherein a first depth is at least 40 cm below the soil surface and a second depth is 0 to less than 40 cm below the soil . Each claims the methyl isothiocyanate or a compound that produces MITC as a degradate treats Fusarium oxysporum f. sp. cubense Tropical Race 4 (Foc TR4) (claims 1, 2, and 9, instant application; claims 1, 3, 5, and 7, copending Application No. ‘501). Each claims the plant is in a Musa field or a Musa tree (claim 25, instant application; claims 1, 3, and 5, copending Application No. ‘501). Each claims the compound that produces MITC as a degradate comprises: metam sodium, metam potassium, metam ammonium, or dazomet (claim 15 instant application; claim 8, copending Application No. ‘501). Each claims the metam sodium comprises sodium N-methyldiothiocarbamate; or methyldithiocarbamic acid sodium salt (claim 18, instant application; claim 9, copending Application No. ‘501). Each claims the metam potassium comprises: potassium N-methyldiothiocarbamate; or methyldithiocarbamic acid potassium salt (claim 19, instant application; claim 10, copending Application No. ‘501). Each claims the composition comprising N-octyl pyrrolidone and ethyl formate (claim 17, instant application; claim 9, copending Application No. ‘496). Each claims the composition comprises 300-700 grams of methyldithiocarbamate equivalents per liter of solution (claim 21, instant application; claim 11, copending Application No. ‘501). Each claims the soil has a holding capacity, and at the time of treatment, contains water at a level of: 40% -80% of the water holding capacity of the soil (claim 22, instant invention; claim 12, copending Application No. ‘501). Each claims the composition is applied to the soil at a rate of: 500-5000 liters per hectare (claim 23, instant invention; claim 13, copending Application No. ‘501). Each claims applying the composition to the soil comprises one or more of: injection application using shank/chisel blade drawn by a tractor or other motorized machine (claim 27, instant application; claim 18, copending Application No. ‘501). For these reasons, one of ordinary skill in the art would conclude that the invention defined in the instant claims is obvious over the claims of copending application ‘501.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The examiner notes applicants request to hold the double patenting rejections in abeyance.
The rejection of claims 1-4, 9, 11, 12, 15-22, 24-25, and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-11, 13-14, and 20 of copending Application No. 17/907,496 (‘496) is maintained.
The rejection of claims 1-4, 9, 15-22, 24-25, and 27 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 7-13 and 18 of copending Application No. 17/907,501 (‘501) is maintained.
Conclusion
No claims are allowed.
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).
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on March28, 2025 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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