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 .
Election/Restrictions
Applicant’s response to the restriction/ election requirement from 9/17/2025 is acknowledged. Applicant has made the following election:
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Because Applicant did not note any errors in the restriction/ election requirement, the election is deemed to be without traverse.
On further consideration of the art the restriction/ election requirement is hereby withdrawn.
The restriction/ election requirement is hereby MADE FINAL. Claims are pending, and have been examined herewith across their breadth.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 10-28 are rejected 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.
Claim 1 recites the limitation "“A fungicidal composition comprising: (a) the compound of Formula 1" (emphasis added) in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Since this is the first appearance of the claim term “compound of Formula 1”, it should be preceded by “a”, not “the”.
Applicant’s claim 1 recites: “A fungicidal composition comprising: (a) the compound of Formula 1 (including all stereoisomers), N-oxides, and salts thereof”. It is unclear why the claim using different forms, setting “(including all stereoisomers)” in brackets, and then following up with “N-oxides, and salts thereof”, and how the two differ. Stated differently, it is unclear if what is intended instead is: “A fungicidal composition comprising: (a) a compound of Formula 1 stereoisomers, N-oxides, and salts thereof”. Alternatively, it is unclear whether, in view of the brackets set separately from the rest of the claim limitation, Applicant intends instead to only capture all stereoisomers of the claim, but not racemic mixtures thereof.
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.
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.
Claims 1 and 10-28 are rejected under 35 U.S.C. 103 as being obvious over WO 2020/097012 A1 to Bereznak et al. (“Bereznak”, of record)1.
The applied reference has a common assignee and inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Bereznak discloses compounds of Formula (I), which encompass Applicant’s claimed species of compound 63.
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(Abstract).
Bereznak specifically discloses compound 63 of Applicant’s claims.
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(p. 87).
Bereznak further discloses compositions thereof with formulations auxiliaries and additives, e.g. solvents for preparing solutions. (p. 56, l. 19-38).
Bereznak discloses that the compounds and/or composition provide control of diseases caused by a broad spectrum of fungal plant pathogens, e.g. Phakopsora pachyrhizi. (p. 60, ll. 18-20, Table 1-1). The uses include for seed treatment. (p. 62, ll. 18-25).
Per Bereznak, a composition of the present invention can further comprise a fungicidally effective amount of at least one additional fungicidal active ingredient having a similar spectrum of control but a different site of action. (p. 64, ll. 31-36.). In this regard, Bereznak discloses, based on mode of action, the addition of a vast spectrum of additional active component (b) compounds:
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(p. 65, l. 8- p. 66, l.15).
Applicant’s claims encompass the following component (b) fungicides. Applicant has submitted declaration evidence attesting to synergy, in the Declaration filed under 37 CFR 1.132, of Dr. Byron Vega-Jimenez from 9/17/2025 (“Jimenez Declaration”), solely for the compounds noted in bold, for comparison as to the broad scope of Applicant’s claims.
“(b3) demethylation inhibitor fungicides selected from azaconazole, bitertanol, bromuconazole, buthiobate, cyproconazole, difenoconazole, diniconazole, econazole, epoxiconazole, etaconazole, fenarimol, fenbuconazole, fluquinconazole, flusilazole, flutriafol,hexaconazole, imazalil, imibenconazole, ipconazole, ipfentrifluconazole, mefentnifluconazole, metconazole, myclobutanil, nuarimol, oxpoconazole, pefurazoate, penconazole, prochloraz,propiconazole, prothioconazole, pyrifenox, pyrisoxazole, quinconazole, simeconazole,tebuconazole, tetraconazole, triadimefon, triadimenol, triarimol, tnflumizole, triforine, triticonazole, uniconazole and uniconazole-P:
(b5) amine/morpholine fungicides selected from aldimorph, dodemorph, fenpropidin, fenpropimorph, piperalin, spiroxamine, tridemorph and trimorphamide:
(b7) succinate dehydrogenase inhibitor fungicides selected from benodanil, benzovindiflupyr, bixafen, boscalid, carboxin, fenfuram, flubeneteram, fluindapyr, fluopyram, flutolanil, fluxapyroxad, furametpyr, inpyrfluxam, isofetamid, isoflucypram, isopyrazam, mepronil, oxycarboxin, penflufen, penthiopyrad, pydiflumetofen, pyrapropoyne, pyraziflumid, sedaxane and thifluzamide:
(b9) anilinopyrimidine fungicides selected from cyprodinil, mepanipyrim and pyrimethanil:
(b11) quinone outside inhibitor fungicides selected from azoxystrobin, coumoxystrobin, dimoxystrobin, enoxastrobin, famoxadone, fenamidone, fenaminstrobin, flufenoxystrobin, fluoxastrobin, kresoxim-methyl, mandestrobin, metominostrobin, orysastrobin, picoxystrobin, pyraclostrobin, pyrametostrobin, pyraoxystrobin, pyribencarb, triclopyricarb and trifloxystrobin:
(b16b) melanin biosynthesis inhibitor-polyketide synthase fungicides selected from tolprocarb:
(b17) keto reductase inhibitor fungicides selected from fenhexamid, fenpyrazamine, ipflufenoquin and quinofumelin;
(b21) quinone inside inhibitor fungicides selected from amisulbrom, cyazofamid and fenpicoxamid:
(b39) complex I NADH oxidoreductase inhibitor fungicides selected from diflumetonm, fenazaquin and tolfenpyrad:
(b43) benzamide fungicides selected from fluopicolide and fluopimomide:
(b45) quinone outside inhibitor, stigmatellin binding fungicides selected from ametoctradin:
(b47) cyanoacrylate fungicides selected from phenamacril:
(b48) polyene fungicides selected from natamycin;
(b49) oxysterol binding protein inhibitor fungicides selected from oxathiapiprolin and fluoxapiprolin:
(b52) multi-site activity fungicides such as copper oxychloride, copper sulfate, copper hydroxide, Bordeaux composition (tribasic copper sulfide), elemental sulfur, ferbam, mancozeb, maneb, metiram, propineb, thiram, zinc thiazole, zineb, ziram, folpet, captan, captafol, chlorothalonil, dichlofluanid, tolyfluanid, guazatine, iminoctadine albesilate, iminoctadine triacetate, anilazine, dithianon, quinomethionate and fluoroimide; and
(b54) fungicides other than component (a) and component (b) selected from aminopyrifen, bethoxazin, cyflufenamid, dichlobentiazox, dipymetitrone, dodine, ferimzone, flometoquin, florylpicoxamid, flutianil, metyltetraprole, neo-asozin, picarbutrazox, pyrrolnitrin, tebufloquin, tolnifanide and N-(2,2,2-trnfluoroethyl)-2-[[4-[5-Cnfluoromethy])-1, 2,4-oxadiazol-3-yl|phenyl|methyl]-4-oxazolecarboxamide.”
Bereznak has both broad and specific disclosure concerning these compounds, which includes Applicant’s specifically claimed compounds, and which also includes specific disclosure of the classes of compounds, which Applicant has claimed, but for which Applicant has not provided any synergy data, e.g. (b 39)- (b49). Moreover, it outlines with specificity the mode of action of the various classes of compounds, based on which it is apparent that synergy shown for one class of compounds, certainly does not provide a reasonable expectation of success for synergy based on a completely based on a completely different mode of action.
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[. . .]
(p. 66, l. 26- p. 73, l. 24).
Bereznak discloses that the rations of the mixing partners of compounds can be between about 1:3000 and about 3000:1, about 1:300 and about 300:1, or about 1:30 and about 30:1 (p. 34, ll. 31-34). This encompasses Applicant’s claimed ratios.
To the extent that some of Applicant’s claims are more narrowly directed to compounds, for which Applicant has shown synergy, it is noted that the claims are still not commensurate in scope with the synergy shown because claim 1 is not directed to recite that the composition comprises “a synergistically effective amount” of the claimed component (a) and component (b) compounds. Further, it is not clear from either the Jimenez Declaration, or from Applicant’s specification, what amounts and/ or ratios Applicant used when it performed its experiments to demonstrate synergy. It does appear, however, that Applicant did not vary the amounts, while conducting the experiments. Based on that, as well as based on the very broad ratio of component (a) and component (b) compounds further specifically claimed in dependent claims, e.g. as in claim 25- from 125:1 to 1:125, it appears that Applicant does not support across the breadth of claims, which is commensurate in scope with the synergy data shown.
For the foregoing reasons, it would have been obvious to a person of skill in the art before the effective filing date of the claimed invention to combine component (a) and component (b) compounds, and to use them in a composition, and a method for protecting a plant from a rust, based on the disclosure of Bereznak, with a reasonable expectation of success. The skilled artisan would have been motivated to do so, since Bereznak specifically provides disclosure for doing so with the broad genus of compounds of component (a), and specifically discloses as an example of a component (a) compound Applicant’s claimed compound 63.
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 and 10-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. US 11,634,393 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose overlapping subject matter.
The claims of the instant application are directed to:
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[. . .]
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[. . .]
The claims of the issued patent are directed to:
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[. . . ]
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It is further apparent from the Specification of the issued patent that it encompasses within the genus of Formula I Applicant’s specifically claimed compound 63. (Table A, col. 86). It is further apparent from the Specification of the issued patent that it encompasses as “(b) at least one additional fungicide” of claim 8, the specific additional compounds claimed by Applicant. (See cf col. 67-74).
Accordingly, it would have been obvious to a person of skill in the art before the effective filing date of the claimed invention, based on the disclosure of the issued patent, to combine in a fungicidal composition Applicant’s particularly claimed compound with an at least one additional fungicide, and to use this composition in a method of controlling plant diseases caused by fungal plant pathogens, with a reasonable expectation of success. The skilled artisan would have been explicitly motivated to do so, because the claimed genus of Formula I of the issued patent explicitly discloses within its scope Applicant’s specifically claimed compound 63, and further because the at least one additional fungicide of component (b) also encompasses overlapping compounds with Applicant’s claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SVETLANA M IVANOVA whose telephone number is (571)270-3277. The examiner can normally be reached 8:30-5:00.
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, Kortney L. Klinkel can be reached at (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SVETLANA M IVANOVA/Primary Examiner, Art Unit 1627
1 Bereznak also published as US 11634393 B2 over which a double patenting rejection has further been made below.