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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 12, 2026 has been entered.
Claims 1, 7, and 9-15 are pending in the application. Claim 1 has been amended. Claims 1, 7, and 9-15 will be examined.
Status of the Claims
The rejection of claims 1, 7, and 9-15 under 35 U.S.C. 103 as being unpatentable over Harigae et al. (WO 2019/093522) in view of Lohmann et al. (WO 2014/095994) is maintained.
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.
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.
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.
Claims 1, 7, and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Harigae et al. (WO 2019/093522) in view of Lohmann et al. (WO 2014/095994). Harigae et al. and Lohmann et al. cited by Applicant on the IDS dated 10/14/2022. Harigae et al. US 2020/0288714 is the English equivalent of WO 2019/093522 being used for translation purposes.
Applicant’s Invention
Applicant claims an active compound combination comprising (A) as compound (A) methyl 2-[2-chloro-4-)4-chlorophenoxy)phenyl]-2-hydroxy-3-(1,2,4-triazol-1-yl) propanoate, (B) as compound (B) at least one further active compound selected from (1.018) prothioconazole and (5.013) mancozeb, and (C) as compound (C) at least one further active compound selected from (2.005) fluopyram, (2.017) penflufen, (2.027) inpyrfluxam, (2.038) isoflucypram, (2.060) cyclobutrifluram, (3.012) fluoxastrobin, (3.020) trifloxystrobin and (3.030) metyltetraprole, wherein the weight ratio of compound (A) to compound(s) (B) is from 10:1 to 1:10 and the weight ratio of compound (A) to compound(s) (C) is from 1000:1 to 1:000.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Harigae et al. teach the azole derivative has excellent germicidal action to many germs capable of causing diseases in plants, and has reduced chemical injury to the plants. The chemical agent containing the azole derivative of the present invention as an active ingredient exhibits the high controlling effect on various plant diseases and exerts effects to reduce the chemical injury (page 2, paragraph 32, translation).
Regarding claims 1 and 2, Harigae et al. teach the synthesis of methyl-2-(2-chloro-4-(4-chlorophenoxy)phenyl)-2-hydroxy-3-(1H-1,2,4-triazol-1-yl)propanoate (I-46) (page 29, paragraph 242, translation). Compound 1-46 is instant compound (I-1).
Regarding claims 1, 7, and 9, Harigae et al. teach the sterol biosynthesis-inhibiting compound may prothioconazole (page 22, paragraph 138, translation).
Regarding claims 1, 7, and 10, Harigae et al. teach the succinate dehydrogenase-inhibiting compounds (SDHI compounds) may include fluopyram, inpyrfluxam, isoflucypram, and penflufen (page 22, paragraph 40, translation).
Regarding claim 1, Harigae et al. teach the strobilurin-based compound may include fluoxastrobin and trifloxystrobin (page 22, paragraph 141, translation).
Regarding claims 1 and 7, Harigae et al. teach the compound having multiple reactive points include mancozeb (page 22, paragraph 145, translation).
Regarding claim 11, Harigae et al. teach the agricultural or horticultural chemical agent is used by mixing the azole derivative (I), which is the active ingredient, with a solid carrier or liquid carrier (diluent), and a surfactant (page 21, paragraph 4).
Regarding claim 12, Harigae et al. teach the agricultural or horticultural chemical agent shows the controlling effect on various plant diseases (page 19, paragraph 122, translation). Harigae et al. teach the agricultural or horticultural chemical agent can also be used, in addition to the treatments of stems and leaves such as a foliage application, by seed treatments including treatments of bulbs and tubers, irrigation treatments, and non-foliage treatments such as a water surface treatment (page 24, paragraph 167, translation).
Regarding claim 13, Harigae et al. teach the plant may include plant cultivars obtained by a conventional breeding method such as crossbreeding or plasmogamy, and gene recombination plants and plant cultivars obtained by a gene manipulation. The gene recombination plants and plant cultivars include herbicide-resistant crops, pest-resistant crops into which insecticidal protein-producing genes are integrated, disease-resistant crops into which genes capable of producing substance inducing disease resistance, taste-increasing crops, yield-increasing crops, preserving property-improving crops, yield-increasing corps, and the like (page 20, paragraph 125, translation).
Regarding claims 14 and 15, Harigae et al. teach when the agent is used in the seed treatment, the chemical agent is stuck to the seeds by mixing the hydrating agent and the powder agent with and stirring them, or immersing the seeds in the diluted hydrating agent. The seed treated with the agricultural or horticultural chemical agent are utilized in the same manner as in usual seeds (page 24, paragraph 168, translation).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Harigae et al. do not specifically disclose examples of the compound combinations recited in claim 7, the weight ratio of compounds (A) to compounds (B) is from 10:1 to 1:10 and the weight ratio of compounds (A) to compounds (C) is from 1000:1 to 1:1000. It is for this reason Lohmann et al. is added as a secondary reference.
Lohmann et al. teach compositions comprising 1) as component I a compound of formula (I) and 2) as component II an active ingredient selected from the groups A) to O (Abstract). Lohmann et al. teach
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and sterol biosynthesis inhibitors, including prothioconazole (page 1, lines 5-33-page 2, lines 1-34); thio- and dithiocarbamates, including mancozeb (page 3, line 35).
Lohmann et al. each teach a further embodiment is a three-component composition, comprising a component I, component II selected from sterol biosynthesis inhibitors, specifically component II, which is prothioconazole and component III is an insecticide (page 83, lines 4-11).
Lohmann et al. teach the weigh ratios for the three components are component I to component II 1:1 to 1:2, component I to component III 1:3 to 1:6 (page 82, lines 16-18).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of Harigae et al. and Lohmann et al. and formulate a composition comprising 3 components. Harigae et al. teach the instantly claimed compound, methyl-2-(2-chloro-4-(4-chlorophenoxy)phenyl)-2-hydroxy-3-(1H-1,2,4-triazol-1-yl)propanoate. Harigae et al. teach the active ingredient can be combined with other fungicides including sterol biosynthesis-inhibiting compounds, such as prothioconazole, which is a compound B of the instant invention. Harigae et al. teach the compound having multiple reactive points include mancozeb, which is a compound B of the instant invention. Harigae et al. teach compounds that can be combined with the instantly claimed compound include fluopyram, inpyrfluxam, isoflucypram, and penflufen, which are compound C of the instant invention. Lohmann et al. teach compound I with similar structures to the instantly claimed compound I are combined in compositions with 3 components. The additional fungicides are the same sterol biosynthesis-inhibiting compounds and succinate dehydrogenase-inhibiting compounds taught by Harigae et al. It is known in the art to formulate ternary fungicidal compositions, as taught by Lohmann et al. to increase the activity of the fungicide. As such, one of ordinary skill in the art would have found it obvious to formulate ternary compositions comprising methyl-2-(2-chloro-4-(4-chlorophenoxy)phenyl)-2-hydroxy-3-(1H-1,2,4-triazol-1-yl)propanoate, prothioconazole, and fluopyram or methyl-2-(2-chloro-4-(4-chlorophenoxy)phenyl)-2-hydroxy-3-(1H-1,2,4-triazol-1-yl)propanoate, prothioconazole and penflufen, with a reasonable expectation of success, as claimed in claim 7. In addition, in view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional fungicides set forth prima facie obvious subject matter.
Regarding the weight ratio, one of ordinary skill in the art would have been motivated to use experimentation and optimization to determine the weight ratio of compound (A) to compound (B) and compound (A) to compound (C). This includes to use the teachings of Lohmann et al., wherein the weight ratios for the three components are component I to component II 1:1 to 1:2, component I to component III 1:3 to 1:6. The weight ratios claimed include 1:1 ratios of component A to component B and component A to component C. As such, one of ordinary skill in the art would have been motivated to use the teachings of Lohmann et al. as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007). In addition, the adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) 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.
Therefore, the claimed 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 because every element of the invention has been fairly suggested by the cited references.
Response to Arguments
Applicant's arguments filed February 12, 2026 have been fully considered but they are not persuasive. Applicant argues that all tests listed in Tables A1-I1 have been conducted with active compound combinations, wherein said ratio is 1:0.2 (i.e. 5:1) or 1:8 and that the (A) : (B) ratio range of 10:1 to 1:10 is supported by the tested ratios. Applicant argues that the test results show that ratio (A) : (C) can be varied within a very broad range without losing the synergistic effect and that the (A) : (C) ratio range of 1000:1 to 1:1000 is reasonably supported by the many tested ratios discloses.
Applicant argues regarding the Examiner’s point of scenarios in the data provided in the Tables, the compound combinations of amended claim 1, the data on file support presence of synergistically enhanced fungicidal efficacy and that those skilled in the art are well aware that experimental proof of synergism is a difficult task.
Applicant submits that the data provided establish synergism for the claimed compound combinations. Applicant points to several Examiner’s objections of particular data, for example (I-1), prothioconazole (1.018) and isoflucypram (2.038). Applicant indicates that the value needs to be interpreted in view of the results found for further mixing ratios and that at mixing ratios 1:0.2:10 and 1:0.2:50, synergistic enhancement of the efficacy of 17% (expected 80%, measured 97%) and 6% (expected 82%, measuered 88%) is observed. Applicant argues taken together and evaluated in the appropriate light, the data in Table A1 prove synergism. Applicant provides similar arguments for data in Tables C1 and A2.
In response to Applicant’s argument, the examiner maintains that evidence of nonobviousness must be commensurate in scope with that of the claimed subject matter. Applicant claims an active compound combination comprising (A) as compound (A) methyl 2-[2-chloro-4-)4-chlorophenoxy)phenyl]-2-hydroxy-3-(1,2,4-triazol-1-yl) propanoate, (B) as compound (B) at least one further active compound selected from (1.018) prothioconazole and (5.013) mancozeb, and (C) as compound (C) at least one further active compound selected from (2.005) fluopyram, (2.017) penflufen, (2.027) inpyrfluxam, (2.038) isoflucypram, (2.060) cyclobutrifluram, (3.012) fluoxastrobin, (3.020) trifloxystrobin and (3.030) metyltetraprole, wherein the weight ratio of compound (A) to compound(s) (B) is from 10:1 to 1:10 and the weight ratio of compound (A) to compound(s) (C) is from 1000:1 to 1:000.
While Applicant has amended independent claim 1 to limit the weight ratio ranges of compound (A) to compound(s) (B) and compound (A) to compound(s) (C), the data is not commensurate in scope with the claimed invention, nor do all combinations appear to be synergistic. As Applicant indicates all tests listed in Tables A1-I1 have been conducted with active compound combinations, wherein said ratio is 1:0.2 (i.e. 5:1) or 1:8 and that the (A) : (B). However, it cannot be determined if more of compound I-1 is used in the mixture, if the same results will be achieved. That is it cannot be determined if the weight ratio of compounds (A) to compound(s) (B) is 10:1, if the same results will be achieved.
While Applicant purports that the weight ratio of compound (A) to compound(s) (C) can be varied within a very broad range without losing the synergistic effect, this is not a convincing argument based on the data. The mixing ratios for compound (A) to compound(s) (C) demonstrated include 1:8;1:10; 1:50; 1:200 and 1:1000. However, it cannot be determined if more of compound I-1 is used in the mixture, if the same results will be achieved. Such as, it cannot be determined if the weight ratio of compounds (A) to compound(s) (C) is 1000:1, if the same results will be achieved.
While Applicant does not have to show every data point, Applicant does have to show a trend. Even with the multitude of data, it cannot be determined if the application of compound (A), as claimed, with (B) prothioconazole or mancozeb, in combination with any of the compound (C) compounds, as claimed, at amended weight ratios of (A) to (B) and (A) to (C), as claimed in independent claim 1, will provide the same purported synergistic activity demonstrated in the examples. Applicant has not proven to provide a trend in the exemplified data which would allow the skilled artisan to reasonably extend the probative value thereof. See In re Kollmann and Irwin, 201 USPQ 193 (C.C.P.A. 1979).
As such, Applicant has not established nonobvious evidence that is commensurate in scope with that of the claimed subject matter.
The claims remain rejected.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614