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 .
A NEW EXAMINER HAS TAKEN OVER PROSECUTION OF THE CURRENT APPLICATION.
DETAILED ACTION
Status of Claims
Claims 1-15 and 17-21 are pending in the instant application. Claims 18-21 are new claims and drawn to the elected invention of group I. Claims 9-15 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1-8 and 18-21 are under examination.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 1/5/2026 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 9/3/2025.
Status of Rejections
35 USC § 102
The rejection of claims 1-3 and 5-8 is maintained.
Applicant’s arguments, see Remarks, filed 1/5/2026, with respect to the rejection set forth in the Non-Final Office Action mailed 9/3/2025, have been fully considered but are not found persuasive.
To reiterate the rejection of record by the previous examiner:
Claims 1-3, 5-8 and 16 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Görtz et al. WO 2015/011166 A1.
Görtz teaches a method of “reducing damage of plants and plant parts…caused by phytopathogenic fungi,” such as “Corynespora cassiicola (leaf spot) on soybeans and ornamental plants,” by applying a composition comprising compound (I-1),
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, (I-2),
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, or (I-3),
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, in combination with a “biological control agent.” Görtz 3:11-4:3, 44:5-8 and 53:13-36. Görtz defines “plant parts” as “all above ground and below ground parts and organs of the plants” including “propagating material, for example, cuttings, corms, rhizomes, runners and seeds.” Görtz 44:19-22.
Görtz’s teachings anticipate claims 1-3, 5-8 and 16, which encompass controlling Corynespora cassiicola on soybeans by applying to the plant or plant propagation materials an effective amount of a compound selected from:
3-(4,4-difluoro-3,3-dimethyl-3,4-dihydroisoquinolin-1-yl)quinoline,
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, and 3-(4,4,5-trifluoro-3,3-dimethyl-3,4-dihydroisoquinolin-1-yl)quinoline
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Applicants argue that the claims are not anticipated since Gortz is not directed to three specific compounds but to a “generic grouping”. This is found unpersuasive. It was pointed out explicitly by the examiner that compounds I-1, I-2, and I-3 (which are recited in the instant claims) are disclosed in the document at page 3. The document also teaches the claimed method of use employing these specific compounds. The mere additional disclosure of a generic grouping of compounds as in Formula I at page 2 does not obviate the rejection of record since the document discloses the recited chemical species and their methods of use. Thus the rejection is maintained.
35 USC § 103
The rejection of claims 1-8 is maintained with respect to Görtz et al. WO 2015/011166A
Applicant’s arguments, see Remarks, filed 1/5/2026, with respect to the rejection set forth in the Non-Final Office Action mailed 9/3/2025, have been fully considered but are not found persuasive.
To reiterate the rejection of record:
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Görtz et al. WO 2015/011166A.
Görtz teaches a method of “reducing damage of plants and plant parts…caused by phytopathogenic fungi,” such as “Corynespora cassiicola (leaf spot) on soybeans and ornamental plants,” by applying a composition comprising compound (I-1),
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, (I-2),
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, in combination with a “biological control agent.” Görtz 3:11-4:3, 44:5-8 and 53:13-36. Görtz defines “plant parts” as “all above ground and below ground parts and organs of the plants” including “propagating material, for example, cuttings, corms, rhizomes, runners and seeds.” Görtz 44:19-22.
Compared to the claims, Görtz teaches the embodiment of instant claim 1, comprising controlling Corynespora cassiicola on soybeans by applying to the plant or plant propagation materials an effective amount of a compound selected from:
3-(4,4-difluoro-3,3-dimethyl-3,4-dihydroisoquinolin-1-yl)quinoline and 3-(4,4,5-trifluoro-3,3-dimethyl-3,4-dihydroisoquinolin-1-yl)quinoline.
Görtz does not explicitly teach planting the treated propagation material, as required by claim 4. However, a PHOSITA would have been motivated to both treat and plant the propagation material (e.g., soybean seeds) because the treated material is intended to be propagated, which requires planting. The PHOSITA would have had a reasonable expectation that the treated material seeds could successfully be planted because the seeds were intended to be planted and the PHOSITA would have had common knowledge of how to plant seeds.
The reasons stated in the maintained 102 rejection are applicable here and thus the rejection is maintained.
Double Patenting
The rejection of claims 1-8 is maintained in reference to copending Application Nos. 18/837,494, 18/560,899, 18/000,605, 17/905,472, 17/905,487.
Applicant’s arguments, see Remarks, filed 1/5/2026, with respect to the rejection set forth in the Non-Final Office Action mailed 9/3/2025, have been fully considered but are not found persuasive.
Applicant’s arguments stem from that the ODP rejections should be removed since the claims are in condition for allowance. However this argument is found moot since there are remaining rejections. Thus the rejections are maintained or will be held in abeyance as requested by Applicant.
New Objections and Rejections
Claim Objections
Claims 1-8 and 18-21 are objected to for the following informality:
In claims 1 and 18, the following compound in red should have commas and not periods between the numbers:
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Thus the claim and claims dependent on it are objected to. Correction is required.
Claim Rejections – Improper Markush Grouping Rejection
Claims 18-21 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 706.03(y).
In re Harnish, 206 USPQ 300, 305, says, “ …we think it should be clear from our actions in Weber and Haas II that we there recognized the possibility of such a thing as an "improper Markush grouping." The court went on to reverse the rejection, (which had been made by the Board under Rule 196(b)) but not on the lack of a specific statutory basis but rather, “Clearly, they are all coumarin compounds which the board admitted to be "a single structural similarity." We hold, therefore, that the claimed compounds all belong to a subgenus, as defined by appellant, which is not repugnant to scientific classification (see claim 1 below for pictorial example):
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Under these circumstances we consider the claimed compounds to be part of a single invention so that there is unity of invention…” Thus, the rejection was overturned because of the specific facts in the case. The Markush group was held proper in that case, as was the case also in Ex parte Price 150 USPQ 467, Ex parte Beck and Taylor, 119 USPQ 100, and Ex parte Della Bella and Chiarino 7 USPQ2d 1669. Cases where the Markush group was held improper include Ex Parte Palmer, 7 USPQ 11, In re Winnek, 73 USPQ 225, In re Ruzicka, 66 USPQ 226, Ex parte Hentrich, 57 USPQ 419, Ex parte Barnard, 135 USPQ 109, Ex parte Reid, 105 USPQ 251, Ex parte Sun and Huggins, 85 USPQ 516, In re Thompson and Tanner, 69 USPQ 148, In re Swenson, 56 USPQ 180, and In re Kingston, 65 USPQ 371.
Indeed, as was stated in Ex parte Haas, 188 USPQ 374, “The rejection of a claim as containing an improper Markush grouping has a relatively long history in Office practice. The Court of Customs and Patent Appeals, at least as far back as 1942, has recognized that a rejection may be based upon the Examiner's holding that the claim has an improper Markush group. See In re Swenson, 30 CCPA 764, 132 F.2d 336, 56 USPQ 180 , citing Ex parte Palmer, 398 OG 707, 1930 CD 3.”
It should be noted that in Harnish, there was a substantial structural feature from which the common use flowed and that the claimed compounds all belong to a subgenus. That is exactly what is lacking in this case, as there is no substantial structural feature when viewing the compound as a whole. The Markush grouping is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
The species embraced by the claims contain a myriad of different chemical scaffolds (e.g. isoquinolines, quinolines, etc.) where clearly classifying said groups as one subgeneric group would be repugnant to scientific classification. Thus, the first requirement is not met as described above. Secondly, there is little evidence provided that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
The examiner recommends that the claims should be amended to include only species that share a single structural similarity and a common use (e.g. drawn to compounds containing a quinoline core) to overcome the rejection.
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).
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 BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN MCDOWELL/
Primary Examiner, Art Unit 1624
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