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 .
Status of the Claims
Claims 1, 7-8, and 10-22 are pending in the present application. Acknowledgment is made of Applicant’s amendments filed December 09th, 2025, addition of claims 16-22, and cancelation of claims 2-6.
Election/Restrictions
Applicant’s election without traverse of claims 1-7 in the reply filed on August 18, 2025 is reiterated.
Applicant’s election without traverse of compound I-655, depicted below, as a combination partner (B) in the reply filed on August 18, 2025 is reiterated.
PNG
media_image1.png
241
276
media_image1.png
Greyscale
Claims 8 and 10-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 18, 2025.
Claims 16-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 18, 2025.
Claims 1 and 7 are currently under examination as they relate to the elected invention, group I, and the elected species of a combination of Compound I-655 and prothioconazole.
Priority
This application claims foreign priority to EP20176911.4, filed May 27th, 2020, and is a 371 of PCT/EP2021/063964, filed May 26th, 2021.
Withdrawn Rejections
Improper Markush Rejection
Applicant’s amendment to claim 1 and subsequent claiming of 6 structurally similar compounds selected from (A) and amended group of further active compounds (B) overcomes the rejection of claims 1 and 7. Thus, the rejection has been withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s amendment to claim 1 and subsequent claiming of 6 structurally similar compounds selected from (A) and amended group of further active compounds (B) overcomes the rejection of claims 1 and 7. Thus, the rejection has been withdrawn.
Claim Rejections - 35 USC § 102
The previous rejection of claims 1 and 7 under 35 USC § 102 no longer holds in view of the amended scope of these claims. Thus, the rejection has been withdrawn.
Double Patenting
The previous rejection of claims 1 and 7 under double patenting no longer holds in view of the amended scope of these claims. The claims of U.S. Application No. 17/297,984, since issued as US Patent No. 12,414,565 B2 after the mailing of the non-final rejection, do not recite or render obvious the presently claimed combinations as amended in claim 1. Thus, the rejection has been withdrawn.
New Rejections/Objections – Necessitated by Amendment
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.
Claims 1 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (WO 2020/109391, cited in the previous Office action) in view of Walters (Mycopathologia 2004, 157, 87-90) as evidenced by CAS Registry No. 2435604-64-9 (Database Registry Chemical Abstracts Service, Columbus, Ohio, Accession No. RN 41855-11-2) and Lobb (Fatty Acid Classification and Nomenclature).
Chen teaches compounds of the following formula (I) (claim 1):
PNG
media_image2.png
164
355
media_image2.png
Greyscale
In a particular embodiment, Chen teaches compound I-655, wherein R1 = H;
R7 = Cl; R8 = methyl; T = O, Q = 3-cyclopropyl-2-fluorophenyl; and (CR2R3)n-(CR4R5)m-R6 = 2-(2,4-dimethylphenyl)-2,2-difluoroethyl (p. 147). This structure is depicted below:
PNG
media_image3.png
540
556
media_image3.png
Greyscale
As evidenced by CAS Registry No. 2435604-64-9, this is 6-chloro-3-(3-cyclopropyl-2-fluorophenoxy)-N-[2-(2,4-dimethylphenyl)-2,2-difluoroethyl]-5-methylpyridazine-4-carboxamide, (section “OTHER NAMES”), this is the same compound as instantly elected I-655 and the first compound recited in instant claim 1, p. 8.
Chen teaches a composition comprising at least one compound of formula (I) and at least one agriculturally suitable auxiliary (claim 11), which includes carriers and/or surfactants (p. 79, lines 18-19). Chen teaches the surfactant may be a fatty acid (p. 80, lines 12-15). Chen teaches the composition can be mixed with other active ingredients like fungicides (p. 81, lines 19-20) and herbicides (p. 94, lines 1-2) including oleic acid (p. 95, line 19). As evidenced by Lobb, oleic acid is a C18 fatty acid (p. 3, Table 1.1). Especially preferred fungicides include prothioconazole (p. 81, line 30).
In addition, Chen teaches a method of controlling phytopathogenic fungi comprising applying such a composition to plants (claim 12). Chen teaches non-limiting examples of fungal diseases which may be treated with the composition include Pythium ultimum and Rhizoctonia solani (p. 102, line 3; section starts p. 100, line 20). In specific embodiments, Chen teaches the in vivo use of a composition comprising I-655 against Alternaria brassicae (pp. 307-308; I-655 found on p. 308, line 24), Botrytis cinerea (pp. 308-310; I-655 found on p. 310, line 14), Pyrenophora teres (pp. 310-311; I-655 found on p. 311, line 24), Sphaerotheca fuliginea (pp. 311-313; I-655 found on p. 313, line 2), and Colletrotrichum lindemuthian (pp. 313-314; I-655 found on p. 314, line 11). Thus, Chen teaches the use of I-655 as a fungicide effective in vivo against a range of fungi.
Chen does not teach the use of C12-C24 fatty acids in the composition as fungicides per se.
Walters teaches the use of linolenic acid and linoleic acid against Rhizoctonia solani and Pythium ultimum (abstract, lines 1-3). Linolenic acid and linoleic acid are both C18 fatty acids (p. 87, left, para. 1, lines 1-2).
Regarding claim 1, the courts have recognized that combining equivalents known for the same purpose supports a prima facie case of obviousness. See MPEP 2144.06: "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious); and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023) (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine).
Because Chen teaches compositions of compounds of their formula I, including compound I-655, are useful against Pythium ultimum and Rhizoctonia solani, that such compositions can include prothioconazole as an especially preferred active ingredient, and such compositions can be formulated with a fatty acid, and because Walters teaches linolenic and linoleic acid are also useful against Pythium ultimum and Rhizoctonia solani, it would have been obvious to one of ordinary skill in the art prior to the filing of the instant application to make a composition comprising compound I-655, prothioconazole, and a mix of C18 fatty acids because each agent works independently to treat Pythium ultimum and Rhizoctonia solani and thus there is an expectation that the combination would be useful for the same purpose. Moreover, the skilled artisan would have been motivated to utilize linoleic acid and linolenic acid as the fatty acid of the compositions taught by Chen since the prior art teaches these fatty acids have the benefit of being useful against the same fungi, Rhizoctonia solani and Pythium ultimum.
Regarding claim 7, it would be obvious to add a surfactant because Chen teaches adding an agriculturally acceptable auxiliary, including a surfactant.
Taken together, all this would result in the invention of instant claims 1 and 7 with a reasonable expectation of success.
Conclusion
Claims 1 and 7 are rejected.
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 OLIVER D. HEES whose telephone number is (571)272-9840. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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, AMY L. CLARK can be reached at (571) 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/O.D.H./Examiner, Art Unit 1628
/Rayna Rodriguez/Primary Examiner, Art Unit 1628
Prosecution Insights