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 .
New Examiner of Record
The new examiner of record is Erin Hirt.
Election/Restrictions
Applicant's election with traverse of group I, claims 1, 6-10, and 12-15 in the reply filed on 9/22/25 is acknowledged. The traversal is on the ground(s) that the groups are linked by a single general inventive concept and that restriction is improper specifically that the combination comprising the claimed (a), (b), and (c) as they have amended the claim makes a contribution over the prior art. The examiner respectfully disagrees. The combination of known fungicides together is obvious 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). Secondly, as discussed in the restriction requirement Harigae teaches applicant’s compound A and teaches wherein A can be combined with applicant’s B and C as is discussed below as well, and it would be obvious to select the specific B and C actives claimed to go with applicant’s A because the combination of fluopyram and trifloxystrobin is already known in the art and known to be synergistic as taught by Fought. 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]) and it is obvious to combine known effective fungicidal active agents, in order to form new broad spectrum effective fungicidal combinations for the same purpose which have a reasonable expectation of having synergy since the subcombination of fluopyram and trifloxystrobin was already known to exhibit synergy.
The requirement is still deemed proper and is therefore made FINAL.
Duplicate Claims—Warning
Applicant is advised that should claim 12 be found allowable, claims 13-14 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). In the instant case the claims are to a product which need only comprise the active compound combination according to claim 1 or a composition thereof in any amount/concentration, wherein the only difference in the claims is the intended use, e.g. the “for treatment of a transgenic plant” language. The intended use of a claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art (See MPEP 2111.01(II)). In the instant case, the intended use does not result in a structural difference between claims 12, 13, and 14 as they are currently written.
Claim Objections
Claim 6 is objected to because of the following informalities: the claim is missing the word “and” immediately before the last item in the list of the Markush grouping. Appropriate correction is required.
Claim Rejections - 35 USC § 112—written description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10 and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. These claims recite an intended use of “for controlling/control of one or more harmful microorganisms in crop protection and/or in protection of one or more materials”.
The specification discloses examples wherein the claimed combinations and compositions and products thereof are useful for killing microorganisms, specifically bacteria and fungi ([0168]). The specification is silent however on killing viruses which are microorganisms and would fall within the claimed scope of microorganisms. The specification merely discloses various groups/families of fungi which are killed with the claimed compositions, and several bacterial pathogens which can be controlled with the disclosed combinations ([0169]; [0174]; [0210-0211]).
However, the specification fails to disclose any viral pathogens which can be controlled with the claimed composition. Thus, it is clear that Applicants' description of structure and activity regarding the control of any and all known and unknown microorganisms on the skin. The ability to control every microorganism which includes any and all bacteria, fungi and virus with the claimed compounds/compositions was not known in the prior art at the time of the instant invention by Applicants, and include controlling microorganisms that are yet to be discovered.
As the specification fails to describe controlling any and all microorganisms in agricultural and/or materials applications, e.g. lumber, etc. beyond a wide spectrum of fungal pathogens and just a few bacterial pathogens does not constitute a substantial portion of the claimed microorganism genus for controlling any and all microorganisms as is the intended use of the claimed compositions/products.
Applicant' s attention is also directed to In re Shokal, 113 USPQ 283 (CCPA 1957), wherein it is stated:
It appears to be well settled that a single species can rarely, if ever, afford sufficient support for a generic claim. In re Soll, 25 CCPA (Patents) 1309, 97 F2d 623, 38 USPQ 189; In re Wahlforss, 28 CCPA (Patents) 867, 117 F2d 270, 48 USPQ 397. The decisions do not however fix any definite number of species which will establish completion of a generic invention and it seems evident therefrom that such number will vary, depending on the circumstances of particular cases. Thus, in the case of small genus such as the halogens, consisting of four species, a reduction to practice of three, perhaps even two, might serve to complete the generic invention, while in the case of a genus comprising hundreds of species, a considerably larger number of reductions to practice would probably be necessary.
As stated in MPEP 2163 II: If the application as filed does not disclose the complete structure (or acts of a process) of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. The instant specification is devoid of a description for the numerous possible microorganisms that are to be controlled with the claimed combinations/compositions and this includes viruses and bacterial and fungal species that are yet to be discovered. The specification merely discloses controlling a wide variety of fungal pathogens and few bacteria species/groups as discussed/cited above. Thus, Applicants have failed to demonstrate possession of controlling any and all microorganisms as is instantly claimed (because they lack any disclosure or evidence of controlling viruses). Disclosure of function alone is little more than a wish for possession; it does not satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (written description requirement not satisfied by merely providing “a result that one might achieve if one made that invention”); In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming a rejection for lack of written description because the specification does “little more than outline goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate”).
The disclosed bacterial species and fungal species being controlled with their composition(s), does not constitute an adequate description to demonstrate possession of controlling all microorganisms (which includes viruses) as claimed. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail such that the Artisan can reasonably conclude that the inventor(s) had possession of the claimed invention. Such possession may be demonstrated by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and/or formulae that fully set forth the claimed invention. Possession may be shown by an actual reduction to practice, showing that the invention was “ready for patenting”, or by describing distinguishing identifying characteristics sufficient to show that Applicant was in possession of the claimed invention (January 5, 2001 Fed. Reg., Vol. 66, No. 4, pp. 1099-11).
Overall, what these statements indicate is that the Applicant must provide adequate description of such core structure and function related to that core structure such that the Artisan of skill could determine the desired effect. Hence, the analysis above demonstrates that Applicants have not described any ability to control viruses which are encompassed by the genus of controlling all microorganisms. As such, the Artisan of skill could not predict that Applicant possessed any additional species, except for controlling bacteria and fungi with the claimed composition.
Therefore, the breadth of the claims as reading on controlling any and all microorganisms which would include viruses including those yet to be discovered; in view of the level of knowledge or skill in the art at the time of the invention, and the limited information provided in the specification, an Artisan of skill would not recognize from the disclosure that Applicant was in possession of controlling any viruses (which fall within the scope of microorganisms) let alone all microorganisms as is instantly claimed, at the time the application was filed. Thus, it is concluded that the written description requirement is not satisfied.
Claim Rejections - 35 USC § 112(b)
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.
Claim 6 is 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 6 recites the limitation "(I)" as part of each active combination. However, claim 1 never references of uses (I) for any of the active agents. Based on the other components in the combinations having identifiers which are used in claim 1, the examiner believes (I) is meant to be applicant’s (A). However, as the claims are currently written, there is insufficient antecedent basis for this limitation in the claim.
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, 6-10, 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)
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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 claims 1, 6-8 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 with in the ratio ranges claimed in claims 7-8, 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.
Conclusion
No claims are allowed.
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.
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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.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616