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 .
Claim Status
Applicants have an incorrect status identifier in claim 11, which was previously withdrawn as per applicant’s response to the restriction/election of species and the previous office action mailed 12/31/25. The claim status for claim 11 should be (withdrawn, currently amended) not (currently amended) as in the instant claim set. Applicants are reminded to use the proper claim status identifiers as per MPEP 714.
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 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.
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.
Claim(s) 1, 6, 9-10, 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harigae et al. (WO2019093522 (from IDS), with US20200288714 being used solely as an English translation for citation purposes), and further in view of Fought et al. (EP2597951) and Lohmann et al. (WO2014/095994, from IDS).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 6, and 9, Harigae teaches compositions comprising applicant’s compound (A)
PNG
media_image1.png
235
358
media_image1.png
Greyscale
which is very useful as a fungicide, and which can be combined with other known active agents to increase the performance wherein the specific active agents that the claimed compound can be combined with include the claimed fluopyram, penflufen, pydiflumetofen, inpyrfluxam, isoflucypram, fluoxastrobin, and trifloxystrobin (see entire document; [0140-0141]; Table 1, compound I-1; [0122-0125]; [0135-0137]; [0549-0550]; [0558]; [0561]; examples).
Regarding claims 10, and 12-14, Harigae teaches wherein their compositions which comprise applicant’s A and can further comprise applicant’s B and/or C are useful for forming compositions and products with carriers and/or surfactants for controlling harmful microorganisms including phytopathogenic fungi which reads on the claimed composition for controlling one or more harmful microorganisms in crop protection… and the claimed products which are only distinguished by their intended uses (e.g. for control of one or more harmful microorganisms in crop protection…, for treatment of a transgenic plant, for treatment of a seed because these intended uses do not structurally change the products being claimed and as such are not being afforded patentable weight (See entire document; [0140-0141]; Table 1, compound I-1; [0122-0125]; [0135-0137]; [0549-0550]; [0558]; [0561]; examples; [0121-0130], [0129-0132, carriers, surfactants]; [0136]; [0173-0176]).
Regarding claim 15, Harigae teaches using their compositions which comprise applicant’s A and can further comprise applicant’s B and/or C are useful for treating seeds and as such renders obvious the claimed seeds which are treated with the claimed composition(s) and/or combinations (See entire document; [0167-0169, seeds treated]; [0140-0141]; Table 1, compound I-1; [0122-0125]; [0135-0137]; [0549-0550]; [0558]; [0561]; examples; [0121-0130], [0129-0132, carriers, surfactants]; [0136]; [0173-0176]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)/ Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Harigae does not specifically teach the claimed combinations in the claimed broad ratio ranges of claim 1 or wherein the exactly 1 compound (B) and 1 compound (C) is present.
Harigae does teach wherein the claimed (A) can be mixed with the same fungicides instantly claimed to form effective combinations and Harigae further teaches that the concentration and amount of use of their active compounds, e.g. applicant’s claimed A, vary depending on the dosage form, the time when it is used, the usage, the location of use, and the target crop, and thus it is possible to increase or decrease them without adhering to the ranges explicitly disclosed. Thus, it would be obvious to one of ordinary skill in the art at the time of the instant filing to optimize the amounts of active agents, e.g. the claimed A, B, and C, to afford the most effective fungicidal combinations, e.g. weight ratios of 1:1:1 of A:B:C would be the easiest starting point and falls within the ratio ranges claimed in claim 1, because it is known that “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. ;[W]here 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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), and further it is also known to combine known fungicidal actives, e.g. all of the claimed active components A, B, and C together to form a new fungicidal combination because, “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 reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It also would have been obvious to form the claimed combinations of claims 6 and 9, e.g. applicant’s (A) with only fluopyram (2.005) and only trifloxystrobin (3.020) as the exactly 1 claimed (B) and (C) components as instantly claimed because each of these active agents is known in the art to be useful for controlling fungi pathogens and each of fluopyram and trifloxystrobin are known to be compatible for combination with applicant’s A since they are disclosed in Harigae as being useful for combining with applicant’s A and the subcombination of fluopyram and trifloxystrobin is known in the art to exhibit synergy as taught by Fought (See entire document; claims; [0007-0012]; [0015-0018]; [0041-0042]; [0054]; examples; [0045-0048]).
One of ordinary skill in the art would be motivated to select fluopyram and trifloxystrobin for combination with applicant’s A because the subcombination of fluopyram and trifloxystrobin is already known in the art and known to be synergistic. Thus, it would be obvious to add applicant’s A in effort to broaden the scope of activity against microorganisms and to effect at least additive and possibly synergism between the three actives since the subcombination of fluopyram and trifloxystrobin was already known to exhibit synergy as taught by Fought (See entire document; claims; [0007-0012]; [0015-0018]; [0041-0042]; [0054]; examples; [0045-0048]).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the 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, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the previous claim objections and 112(a) and 112(b) rejections which are hereby withdrawn.
Applicant’s amendments to the claims have prompted the revised grounds of rejection presented herein. Applicant’s arguments with respect to the 103 rejection have been fully considered but were not persuasive at this time. These arguments insofar as they pertain to the revised grounds of rejection are addressed herein.
Applicants first argue that the introduction of the component ratios has overcome the prior art of record. They further argue that their test results presented in tables A1-H3 of the application demonstrate that the specified active ingredients in the claimed ratios demonstrate synergistically enhanced fungicidal activity and that this activity is unobvious and overcomes the prior art of record. They argue that their broad ratio ranges are supported by their data and that these broad ratio ranges all show synergy, that within these broad ranges they can vary their components without losing the synergistic effect. They argue that the prior art does not disclose these synergistic effects applicants have found. The examiner respectfully disagrees. Firstly, applicant’s argued results are not commensurate in scope with applicant’s claims specifically there are multiple instances within applicant’s cited tables which do not appear to be synergistic and/or do not provide synergy that is statistically significant, see for instance in table A1 the first 5 examples listed on pg. 65, and other 3 part mixtures on that page many/most of which either exhibit no synergy or it isn’t clear that the synergy is of statistical significance, e.g. (observed 93, expected 91), (observed 99, expected 100), (observed 100, expected 98), (observed 96, expected 92), etc. and these very close values, e.g. not synergistic and/or the argued synergy appears to not be of actual statistical significance continues throughout the other tables applicant’s argue exhibit synergy. Thus, contrary to applicants arguments, respectfully, the examiner does not agree that applicants have demonstrated synergy throughout the broad range of ratios instantly claimed with all of the claimed combinations of active agents, and the examiner maintains that because applicant’s synergistic results are not commensurate in scope with applicant’s claims as they are currently written the instantly claimed combination remains obvious for the reasons discussed above and which are incorporated herein. Further, it is applicant’s burden to establish that their argued unexpected results are significant. Specifically,
the evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
Applicants then argue that because Fought is directed to methods of providing effective control of harmful microorganisms and do not impact the activities of beneficial microorganisms but does not teach the claimed combinations are synergistic as applicant’s assert their combinations are, specifically the combinations of fluopyram and trifloxystrobin. The examiner respectfully disagrees. Firstly, because Fought and the secondary references teach the claimed combinations. Additionally, as applicant’s argued synergistic results are not commensurate in scope with the instant claims for the reasons discussed above it would be obvious to one of ordinary skill in the art to optimize the ratios of A:B and A:C to read on the instantly claimed ratios, e.g. 1:1 and 1:1 as that would be the easiest a first ratio that one of ordinary skill in the art would routinely try and which falls within the instantly claimed ranges and as such it would be obvious for one having ordinary skill in the art to optimize the amounts/ratios of applicant’s A, B, and C to read on the claimed ratio ranges in order to form the most effective fungicidal combinations for use in controlling phytopathogenic fungi effectively. 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. “[W]here 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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Applicants then argue that Fought does not recognize synergy with the specifically claimed combinations. The examiner respectfully points out that the instant claims are not limited to only combinations which achieve statistically significant synergy because applicant’s claims are not commensurate in scope with the argued synergistic results as has been discussed above. Thus, the instantly claimed combination, compositions thereof, and methods are still obvious when taken in view of the prior art for the reasons which are discussed above which are incorporated herein especially since the instant claims are not commensurate in scope to applicants argued unexpected/synergistic results for the reasons already discussed above.
Applicants also further argue that Fought does not teach synergy with the combination of two actives but that they do see synergy sometimes when adding a third active agent. The examiner first respectfully points out that nothing in the instant claims actually excludes other active ingredients from being present in claimed combinations, compositions, and/or products contrary to applicants arguments. The instant claims use comprising language which is open-ended and excludes nothing. Further as discussed above, applicants own arguments about the instant synergy are not persuasive at this time because applicants claims are not commensurate in scope with the argued unexpected results for the reasons discussed above which are incorporated herein.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the revised/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 Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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, Sue X Liu can be reached at 571-272-5539. 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.
/ERIN E HIRT/Primary Examiner, Art Unit 1616
Prosecution Insights