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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/20/2026has been entered.
Receipt of claim amendments and arguments filed on 03/20/2026 is acknowledged. Claims 1, 3, 5-11, 13-14, 16 and 20-21 are now pending in this application. Rejections and objections not reiterated herein have been withdrawn.
Independent claims 1 and 16 have been amended to recite a composition comprising the compound of formula
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((Ic), (A-1.3)) and the compound of formula
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(inpyrfluxam, indiflin, (A.3.22), (A.3.21)), at a weight ratio of 20:1 to 1:20.
Claims 1, 3, 5-11, 13-14, 16 and 20-21 are the subject of this Office Action.
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.
Claims 1, 3, 5-11, 13-14, 16 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Terteryan-Seiser et al. (WO 2018/202428A1-provided by Applicant in the IDS), in view of Wieja (WO2015/185485-provided by Applicant in the IDS) and further in view of Wachendorff-Newmann (WO 2014/083088A2) and as further evidenced by Gisi (Trans. Br. Mycol. Soc. 85 (2), 299-306 (1985)) and Gisi (Phytopathology 1996 Vol. 86 (11); 1273-1279).
Applicant claims a combination comprising the compound of formula
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(A-1.3) and the compound of formula
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(indiflin, (A.3.22), (A.3.21)), at a weight ratio of 20:1 to 1:20; and method of combating or controlling phytopathogenic fungi Phakopsora pachyrhizi and diseases caused by Phakopsora pachyrhizi.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Teachings of Terteryan-Seiser
Terteryan-Seiser taught synergistic fungicidal mixtures comprising a compound of formula I.A to I.N:
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and, component 2 selected from:
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See pages 21 and 22. The mixtures are to be used against various fungi, including P. pachyrhizi on soybeans (see at least p. 30, line 3; p. 27, lines 16-18).
Compound I.E
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and second component (A.3.22)
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taught by Terteryan-Seiser, are the same components required by the instant claims.
Particularly, Terteryan-Seiser prepared synergistic fungicidal mixtures comprising the same claimed fungicide compound (I.E) together with inhibitors of complex II of formula
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(A.3.28), and formula
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(A.3.24), at weight ratios of 63:1 and 16:1. See pages 130-132 and 162. They also prepared similar synergistic fungicidal combinations containing compounds I.A, I.F, or I.M, together with the same inhibitors of complex II above, at ratios of 63:1, 16:1, 4:1 and 1:1. See specifically, pages 114, 118, 142, 147, 152, 154, 160 and 165-166.
Many formulation examples on p. 108-109 fall within broad ranges of claimed formulations with adjuvants, surfactants or diluents. The agrochemical compositions may comprise between 10% and 60% by weight of active substance (p. 110).
Page 106:
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Examples of composition types are as follows:
Pages 108-109:
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Treatment of seeds can be done by dusting, coating, spraying, or drenching seeds with the composition (see at least pages 110-111). The reference teaches that “in many cases, synergistic effects are obtained”. Also,
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(p. 111).
Formulations were made in DMSO in ratios of 4:1 and 16:1 and diluted with water to the stated concentrations. The formulations are to be applied to various plant materials, such as soy beans for combating fungi, such as Phakopsora pachyrhizi.
Teachings of Wieja
Wieja taught that the compounds of Terteryan-Seiser, such as the compound of formula (I.E)
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of the claims, are used to treat the fungi Phakopsora pachyrhizi on soy beans. See the biological test at page 65 for compound I-14. They additionally taught that a combination with
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(A.3.22 in Terteryan-Seiser) (A.3.21 in Wieja) would be advantageous for combating harmful fungi and that synergistic effects can be obtained. See pages 37, 44-45. At page 46, Wieja disclosed that preferably, the compositions described comprise the active components in synergistically effective amounts.
Teachings of Wachendorff-Newmann
Wachendorff-Newmann taught that
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, and a genus of compound of formula
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, when combined in binary fungicidal mixtures, possess superior synergistic effects against, for example, Phakopsora pachyrhizi on soy beans.
See whole document, particularly Example 2.
Teachings of Gisi
Gisi (1985) explored reasons for the synergistic interactions of fungicides with different modes of action.
Gisi (1996) concluded that synergy is a frequently occurring phenomenon in fungicide mixtures, and that its magnitude depends on the ratio of the components in the mixture and their modes and mechanism of action.
Ascertainment of the Difference Between the Prior Art and the Claims
(MPEP §2141.012)
While Terteryan-Seiser exemplified synergistic fungicidal mixtures comprising the claimed fungicide of formula (I.E)
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together with inhibitors of complex II of formula
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(A.3.24), and formula
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(A.3.28), they did not prepare the combination with the inhibitor of complex II
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(indiflin, (A.3.22)).
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
The fungicidal combination compositions of Terteryan-Seiser containing compounds I.A – I.M and inhibitors of complex II were demonstrated to be synergistic, and were to be applied to plants and seeds for controlling phytopathogenic fungi, including P. pachyrhizi on soybeans. One of ordinary skilled in the art would have been motivated to make a fungicidal combination comprising compound of formula (I.E)
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with inhibitor of complex II compound
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(indiflin, (A.3.22)) for obtaining synergistic mixtures at the ratios that Terteryan-Seiser showed that synergy could be obtained. The ratios are 63:1, 16:1, 4:1 and 1:1, as discussed above. Not only the reference taught that the second component of the fungicidal mixture could be the inhibitor of complex II (A.3.22)
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, but the examples in the reference showed that there is synergy in combinations of the fungicides I.A-I.M, specifically, (I.E)
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, with the inhibitors of complex II of formula
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(A.3.28) and formula
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(A.3.24); and these inhibitors have exactly the same mode of action as, and are very structurally similar to the claimed compound
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(A.3.22). Based on the cited references, the artisan could have predicted that a mixture of fungicide I.E with inpyrfluxam (A.3.22) would exhibit synergy at weight ratios of 63:1, 16:1, 4:1 and 1:1.
Applicant’s arguments were fully considered but were found unpersuasive.
Applicant argues that frequency of terminology is not evidence that every listed combination is synergistic, nor that the skilled person would reasonably expect synergistic activity. The examiner must disagree. The frequent disclosure of “synergy” in the reference, together with the evidence of synergy over a broad range of compositions in all the synergy examples in the reference, evidence that the intention of the reference was to obtain synergy in their combinations and that the ordinary artisan would have reasonably expected to do so.
Applicant argues that the general proposition that synergy occurs in some fungicide combinations is insufficient to establish a general presumption of synergy for a particular combination. In response, the examiner did not just generally propose that synergy occurs in some fungicide combinations. The examiner proposed that synergy occurs in the fungicide combinations of the above prior art because the prior art taught so. In addition, the examiner found that synergy is a frequently occurring phenomenon in fungicide mixtures, particularly when fungicides with different modes of action are used; and this concerns the state of the art. The examiner referred to different WO references provided by Applicant in the IDS. Here, the examiner is also providing the reference Gisi, published 30 years ago, that disclosed:
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Applicant argues that Terteryan-Seiser only makes generic statements that synergy occurs “in many cases” or “can be obtained”. The examiner disagrees, because the reference has plenty examples of mixtures where synergy was obtained. Applicant argues that synergy is not inherent for any two fungicides in a mixture, and that Terteryan-Seiser contains no experimental data against Phakopsora pachyrzhi. In response, Terteryan-Seiser shows examples of synergy over a broad range of compositions containing fungicides I.A – I.M in combination with inhibitors of complex II. In addition, while product claims 1, 3, 5-9, 14, 20 and 21 recite the preamble “a composition suitable for control of phytopathogenic fungi Phakopsora pachyrzhizi”, where claims are directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim, the preamble is not a limitation. See MPEP 2111.02 (II) regarding preamble statements reciting purpose or intended use: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Nevertheless, Terteryan-Seiser also disclosed that the combinations therein are to be used against Phakopsora pachyrzhi. In addition, Wieja taught in biological tests that the claimed fungicide of formula (I.E)
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is used to treat the fungi Phakopsora pachyrhizi on soy beans, and Wachendorff-Newmann taught that binary fungicidal mixtures containing inpyrfluxam possess superior synergistic effects against Phakopsora pachyrhizi on soy beans (see whole document, particularly Ex. 2.).
Applicant further argues that the examiner misunderstands synergism in the context of the present specification and that the correct comparison for the combination treatment of the combinations in the instant application is not with the sum of activity of single agents. Applicant explained the COLBY expected value in a table at page 9 of the arguments. The examiner thanks applicant for the more detailed explanation and comparison of results at the table provided. The examiner evaluated the data and compared that the observed activity of the combination of compound A-1.3 with inpyrfluxam is greater than the COLBY activity only at a weight ratio of 2:1, 8:1 and 4:1. While Applicant argues that this result is unexpectedly synergistic and sufficient to overcome the prima facie case of obviousness, the strong teaching of synergy in the prior art for the claimed combination supports that the person of ordinary skill in the art at the time the invention was filed would have reasonably expected the claimed combination to exhibit synergistic properties.
The secondary considerations in this case do not rise to the level of non-obviousness.
Conclusion
Claims 1, 3, 5-11, 13-14, 16 and 20-21 are rejected. No claim is allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VALERIE RODRIGUEZ-GARCIA/
Primary Examiner, Art Unit 1621 03/27/2026
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