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 is a Final Office action.
Election/Restrictions
Applicant's election with traverse of Group (I) in the reply filed on August 8, 2025 is acknowledged. Group (I), drawn to a method of using (controlling or preventing infestation of plants by a phytopathogenic microorganisms Corynespora cassiicola, Cercospora sojina and/or Cercospora kikuchii comprising applying a fungicidally effective amount of 2-[2-(7,8-difluoro-2-methylquinolin-3-yloxy)-6-fluoropheny1|propan-2-ol), embraced by claims 1-6 and 14 was elected by Applicant. The Examiner addressed the traversal in the previous office action, and therefore the requirement is still deemed proper and is therefore made FINAL.
Claims 1-13 are pending and claims 1-6 are under examination. Claims 7-13 are currently withdrawn based on the lack of unity.
Withdrawn Rejections/Objections
Any outstanding rejection/objection that is not maintained in this office action has been withdrawn or rendered moot in view of Applicant's amendments and/or remarks.
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Shibayama et al. US 2012/0289702 A1.
Shibayama et al. teach agricultural fungicides “more preferably” comprising a compound of Formula (III),
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233
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. Shibayama ⁋ 28-35. “The fungicide [] has an excellent fungicidal capacity over a wide variety of filamentous fungi, such as bacteria which belong to Oomycetes, Ascomycetes, Deuteromycetes, or Basidiomycetes” and may be applied to crops “through seed treatment, foliar spraying, soil application or submerged application.” Shibayama ⁋ 193. Examples include preventing “Target leaf spot (Corynespora cassiicola)” on cucumbers and “Purple blotch (Cercospora kikuchii)” on soybean. Shibayama ⁋
194-219 (esp. 197 and 219). Table 6 provides structures of Formula (III), such as compound 125,
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265
348
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. Shibayama 24 and 29. Compound 125 showed activity against several bacteria, including Cucumis sativas on cucumber. See example 1, 2 and 4.
The instant claims require controlling/preventing infestation of Corynespora cassiicola and/or Cercospora kikuchii by applying the prior art compound 125 (i.e., 2-[2-(7,8-difluoro-2-methylquinolin-3-yloxy)-6-fluorophenyl]propan-2-ol of the structure
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) on plants or propagation material thereof. A PHOSITA would have been motivated to use compound 125 to target Corynespora cassiicola and/or Cercospora kikuchii on plants, such as cucumber and soybean, because Shibayama explicitly teaches such uses for compounds of Formula (III). Since Shibayama teaches the fungicides comprising compound (III) have “excellent fungicidal capacity over a wide variety of filamentous fungi” including “Target leaf spot (Corynespora cassiicola)” on cucumbers and “Purple blotch (Cercospora kikuchii)” on soybean, and since compound 125 is a compound of Formula (III), a PHOSITA would have had a reasonable expectation that compound 125 would exhibit fungicidal activity towards Corynespora cassiicola and/or Cercospora kikuchii on plants, such as cucumber and soybean. Therefore, claims 1, 3-6 and 14 would have been obvious.
Regarding claim 2, which requires applying the fungicidal compound “to a propagation material; and planting the propagation material,” a PHOSITA would have been motivated to apply compound 125 to propagation material such as seeds and to plant the treated seeds, because Shibayama teaches applying the compound “through seed treatment” and then sowing the seeds. See, e.g., Shibayama ⁋ 193 and ⁋ 415 (“Cucumber seeds [] contaminated by cucumber wilt bacteria [] were treated with the emulsion of the compound according to the present invention []. The seeds were sowed [].”). Since Shibayama explicitly teaches “seed treatment” and exemplified treating seeds and sowing them, a PHOSITA would have had a reasonable expectation that cucumber and soybean seeds could have been treated successfully with compound 125 for controlling/preventing Corynespora cassiicola and/or Cercospora kikuchii.
Thus, the claims are rendered obvious.
Applicant traverses by stating, “It is well established that the mere fact that a claimed species or subgenus is encompassed by a prior art genus does not, by itself, make the claim obvious. MPEP 2144.05(I) and In re Baird, 16 F.3d 380 (Fed. Cir. 1994). The Examiner must determine whether a person of ordinary skill in the art would have had a reason to select the claimed species or subgenus from the disclosed prior art genus. MPEP 2144.08(II)(4). Among the factors relevant to this inquiry are: the size of the genus (here, enormous); express teachings (here, broad and general); and the predictability of the technology (here, low, based on certain compounds being listed in only certain tests).”
This is not persuasive. The reference teaches the exact species found in claim 1, see Table 6, compound 125. The reference further teaches these compounds have fungicidal activity, see page 1, paragraph [0008], see also paragraph [0193], which states “The fungicide according to the present invention may be used to prevent various diseases that occur in the cultivation of agricultural crops including flowers, turf, and grass through seed treatment, foliar spraying, soil application or submerged application.” Moroever, the reference teaches Corynespora cassiicola and/or Cercospora kikuchii in paragraphs [0197] and [0219].
Applicant further states, “In context, Shibayama's teachings related to effectiveness against Cornynespora cassiicola and/or Cercospora kikuchii are general descriptions for formula (III) and the plethora of compounds encompassed therein. Despite this, Shibayama fails to provide any specific guidance for controlling or preventing infestation of plants by Corynespora cassiicola, Cercospora sojina, or Cercospora kikuchii using the compound 2-[2-(7,8-difluoro-2-methylquinolin-3-yloxy)-6-fluorophenyl]propan-2-ol.”
This is also not persuasive. The fungicidally effective amount is a result-effective variable, and therefore, obvious. 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. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 105 USPQ 233, 235 (CCPA 1955). The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the solvents taught by the cited references), 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.
Applicant further notes, “Indeed, Shibayama does not illustrate that every compound is equally effective against every pest. To the contrary, Compound 125 is not listed as meeting threshold activity in, e.g., Example 6 (Fusarium oxysporum), Example 5 (Fusarium oxysporum), and Example 3 (Magnaporthe grisea)-half of the examples. Yet, these are pathogens referenced in the general list relied on by the Examiner.
Rather, to the extent that Compound 125 is listed as meeting threshold activity in Example 1 against Venturia inaequalis (apple scab), in Example 2 against Botrytis cinerea (cucumber gray mold), and in Example 4 against Magnaporthe grisea (rice neck rot). The Examiner has failed to establish why this activity would motivate a person of ordinary skill in the art to apply Compound 125 to Corynespora cassiicola, Cercospora sojina, or Cercospora kikuchii. Shibayama does not test any compound against Corynespora cassiicola, Cercospora sojina, or Cercospora kikuchii to provide any guidance on the many necessary selections.”
This is also unpersuasive. A prior art disclosure is not limited to its working examples or to its preferred embodiments, but must be evaluated for what it teaches those of ordinary skill in the art. Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); In re Boe, 355 F. 2d 961, 965, 148 USPQ 507, 510 (CCPA 1966). The reference teaches the exact claimed compound as having antifungal activity and discloses Corynespora cassiicola and/or Cercospora kikuchii as treatable fungi.
Thus, the rejection is maintained.
Double Patenting
The provisional rejection of claims 1-6 and 14 on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 7-15 of copending Application No. 17/905,487 (reference application) is withdrawn based on the abandonment of the ‘487 application.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 (the claims have been corrected from the previous office action) of U.S. Patent No. 12527322 (updated from co-pending application 18000605, where the citations in the disclosure are from the ‘605 specification). Although the conflicting claims are not identical, they are not patentably distinct from each other because the ‘605 application discloses a composition comprising a compound of formula (I-A1) and a component (B), such as ipflufenoquin, and a method of use thereof for controlling Corynespora disease, such as Corynespora cassiicola, on “plants or on propagation material thereof.” See, e.g., claims 1 and 10 and specification p. 29 (lines 17-35, esp. 34-35). A “more preferred” method comprises applying the composition to “useful plants selected from the group consisting of wheat, barley, rice, soybean, apples, almonds, cherries, raspberries, grapes, cucumbers, peanuts, tomatoes, strawberries, citrus and bananas.” ‘605 p. 42-43 bridging paragraph. The specification defines “plants” as “all physical parts of a plant, including seeds, seedlings, saplings, roots, tubers, stems, stalks, foliage, and fruits.” ‘605 29:36-37. The compositions “are particularly effective to control or prevent phytopathogenic diseases [] such as… Corynespora cassiicola, preferably on tomatoes.” ‘605 37:1-14.
It has been held that combinations of two or more compositions each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is to be used for the very same purpose. In re Susi, 58 CCPA 1074, 1079-80, 440 F.2d 442, 445, 169 USPQ 423, 426 (1971); In re Crockett, 47 CCPA 1018, 1020-21, 279 F.2d 274, 276-77, 126 USPQ 186, 188 (1960). Thus, combining them flows logically from having been individually taught in prior art.
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. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 105 USPQ 233, 235 (CCPA 1955). The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the solvents taught by the cited references), 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.
Since a PHOSITA would have looked to the specification for how to use the composition of reference claim 1, they would have been motivated to apply the composition to plants, such as soybean and tomatoes (or seeds thereof before planting), for controlling Corynespora cassiicola; thereby rendering obvious instant claims 1-6.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 (the claims have been corrected from the previous office action) of U.S. Patent No. 12532884 (updated from co-pending application 17905472, where the citations in the disclosure are from the ‘472 specification).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘472 application patent discloses a composition comprising a compound of formula (I) and a component (B), such as ipflufenoquin. See, e.g., claim 1. The specification teaches that the “composition of the invention may be used to control plant diseases,” including Corynespora cassiicola and Cercospora sojina, affecting plants such as cucumber, tomato, beans, and soybeans, “especially phytopathogenic fungi (such as Phakopsora pachyrhizi) on soy bean plants.” ‘472 18:17-19 and bridging paragraphs of 18-19 and 20-21. The specification defines “plants” as “all physical parts of a plant, including seeds, seedlings, saplings, roots, tubers, stems, stalks, foliage, and fruits.” ‘472 17:31-32.
It has been held that combinations of two or more compositions each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is to be used for the very same purpose. In re Susi, 58 CCPA 1074, 1079-80, 440 F.2d 442, 445, 169 USPQ 423, 426 (1971); In re Crockett, 47 CCPA 1018, 1020-21, 279 F.2d 274, 276-77, 126 USPQ 186, 188 (1960). Thus, combining them flows logically from having been individually taught in prior art.
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. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 105 USPQ 233, 235 (CCPA 1955). The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the solvents taught by the cited references), 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.
Since a PHOSITA would have looked to the specification for how to use the composition of reference claim 1, they would have been motivated to apply the composition to plants, such as soybean and tomatoes (or seeds thereof before planting), for controlling Corynespora cassiicola and/or Cercospora sojina; thereby rendering obvious instant claims 1-6.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10-19 (corrected from previous office action) of copending Application No. 18560899 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘899 application discloses a composition comprising a compound of formula (I) and a component (B), such as ipflufenoquin (B-137), and a method of use thereof for controlling fungal pests. See, e.g., claims 1 and 13. The specification teaches that the “compositions according to the invention are particularly useful” for controlling diseases such as “Cercospora kikuchii in soybeans” and that the “composition may be applied in furrow or directly to a seed before or at the time of planting.” See ‘899 33:3-8 and 38:12-20.
It has been held that combinations of two or more compositions each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is to be used for the very same purpose. In re Susi, 58 CCPA 1074, 1079-80, 440 F.2d 442, 445, 169 USPQ 423, 426 (1971); In re Crockett, 47 CCPA 1018, 1020-21, 279 F.2d 274, 276-77, 126 USPQ 186, 188 (1960). Thus, combining them flows logically from having been individually taught in prior art.
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. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 105 USPQ 233, 235 (CCPA 1955). The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the solvents taught by the cited references), 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.
Since a PHOSITA would have looked to the specification for how to use the composition of reference claim 1, they would have been motivated to apply the composition to soybeans (or seeds thereof before planting) in order to target Cercospora kikuchii; thereby rendering obvious instant claims 1-6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10-28 (corrected from previous office action) of copending Application No. 17905136 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘136 application discloses a composition comprising component (A) and component (B), wherein component (B) comprises a compound such as ipflufenoquin, and a coated plant propagation material thereof. See, e.g., claims 1 and 16-17. The specification teaches using the claimed composition for “controlling leaf spot diseases on plants” such as “Corynespora cassiicola (target spot of soybean, target leaf spot of tomato).” ‘136 p. 18 (lines 11-13) and p. 20 (lines 15-24).
It has been held that combinations of two or more compositions each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is to be used for the very same purpose. In re Susi, 58 CCPA 1074, 1079-80, 440 F.2d 442, 445, 169 USPQ 423, 426 (1971); In re Crockett, 47 CCPA 1018, 1020-21, 279 F.2d 274, 276-77, 126 USPQ 186, 188 (1960). Thus, combining them flows logically from having been individually taught in prior art.
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. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 105 USPQ 233, 235 (CCPA 1955). The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the solvents taught by the cited references), 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.
Since a PHOSITA would have looked to the specification for how to use the composition of reference claim 1, they would have been motivated to apply the composition to plants, such as soybean and tomatoes (or seeds thereof before planting), for controlling leaf spot caused by Corynespora cassiicola; thereby rendering obvious instant claims 1-6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant requested “that the non-statutory double patenting rejections be held in
abeyance until claims in one or more applications are found allowable.”
Thus, the rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 SUSANNA MOORE whose telephone number is (571)272-9046. The examiner can normally be reached Monday - Friday, 10:00 am to 7:00 pm.
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/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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