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 .
Claims 1, 3, 5-11, 13-14, 16 and 20-21 are pending in this application. Receipt of applicant’s remarks filed on 07/01/2026 is acknowledged.
Independent claims 1 and 16 encompass a composition comprising the compound of formula
PNG
media_image1.png
124
262
media_image1.png
Greyscale
((Ic), (A-1.3)) and the compound of formula
PNG
media_image2.png
246
158
media_image2.png
Greyscale
(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 Final 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 remain 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
PNG
media_image1.png
124
262
media_image1.png
Greyscale
(A-1.3) and the compound of formula
PNG
media_image3.png
140
216
media_image3.png
Greyscale
(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:
PNG
media_image4.png
322
572
media_image4.png
Greyscale
PNG
media_image5.png
40
550
media_image5.png
Greyscale
and, component 2 selected from:
PNG
media_image6.png
162
594
media_image6.png
Greyscale
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
PNG
media_image1.png
124
262
media_image1.png
Greyscale
and second component (A.3.22)
PNG
media_image3.png
140
216
media_image3.png
Greyscale
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
PNG
media_image7.png
156
220
media_image7.png
Greyscale
(A.3.28), and formula
PNG
media_image8.png
244
160
media_image8.png
Greyscale
(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:
PNG
media_image9.png
132
568
media_image9.png
Greyscale
PNG
media_image10.png
186
578
media_image10.png
Greyscale
Examples of composition types are as follows:
Pages 108-109:
PNG
media_image11.png
120
632
media_image11.png
Greyscale
PNG
media_image12.png
104
632
media_image12.png
Greyscale
PNG
media_image13.png
226
640
media_image13.png
Greyscale
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,
PNG
media_image14.png
128
598
media_image14.png
Greyscale
(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)
PNG
media_image1.png
124
262
media_image1.png
Greyscale
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
PNG
media_image3.png
140
216
media_image3.png
Greyscale
(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
PNG
media_image3.png
140
216
media_image3.png
Greyscale
, and a genus of compound of formula
PNG
media_image15.png
158
272
media_image15.png
Greyscale
, 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)
PNG
media_image1.png
124
262
media_image1.png
Greyscale
together with inhibitors of complex II of formula
PNG
media_image8.png
244
160
media_image8.png
Greyscale
(A.3.24), and formula
PNG
media_image7.png
156
220
media_image7.png
Greyscale
(A.3.28), they did not prepare a combination with the inhibitor of complex II
PNG
media_image3.png
140
216
media_image3.png
Greyscale
(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)
PNG
media_image1.png
124
262
media_image1.png
Greyscale
with inhibitor of complex II compound
PNG
media_image3.png
140
216
media_image3.png
Greyscale
(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)
PNG
media_image3.png
140
216
media_image3.png
Greyscale
, but the examples in the reference showed that there is synergy in combinations of the fungicides I.A-I.M, specifically, (I.E)
PNG
media_image1.png
124
262
media_image1.png
Greyscale
, with the inhibitors of complex II of formula
PNG
media_image7.png
156
220
media_image7.png
Greyscale
(A.3.28) and formula
PNG
media_image8.png
244
160
media_image8.png
Greyscale
(A.3.24); and these inhibitors have exactly the same mode of action as, and are very structurally similar to the claimed compound
PNG
media_image3.png
140
216
media_image3.png
Greyscale
(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 inpyrfluxam is the (R)-enantiomer: 3-(difluoromethyl)-1-methyl-N-[(3R)-1,1,3-trimethyl-2,3-dihydro-1H-inden-4-yl]-1H-pyrazole-4-carboxamide, and that the citations relied on by the examiner fail to disclose the R-configuration. The examiner disagrees because the name used by the references represents both enantiomers. Omitting the configuration label implies both possible stereoisomers. Note that Wachendorff-Newmann evidences that the two stereoisomers, (3R) and (3S), were known and understood under the formula and name of this compound, and both were considered active. See at least pages 4-5, 63 and 65.
Applicant further argues that references Terteryan-Seiser and Wieja have general statements that synergy can occur and that the additional cited references to support that synergy is a frequently occurring phenomenon in fungicide mixtures (Gisi) does not show predictability. However, 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, 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.). Further, Gisi provided that synergy is a frequently occurring phenomenon in fungicide mixtures, particularly when fungicides with different modes of action are used. Thus, while synergy is not 100% predictable, here, in view of the teachings of the references, synergy would have been reasonably expected for the claimed combination.
Applicant states that frequency is not predictability. However, something that occurs frequently lacks rarity, is not special or unusual. In addition, a phenomenon can be frequently observed even though its mechanism may not be completely understood.
Applicant additionally argues that synergy would not be expected against Phakopsora pachyrzhi. Regarding claims 1, 3, 5-9, 14, 20 and 21, these are directed to products. 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. Note that “the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” (Catalina Mktg. Int’l, v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). 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, in regards to all the claims, Wieja taught in biological tests that the claimed fungicide of formula (I.E)
PNG
media_image1.png
124
262
media_image1.png
Greyscale
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.).
While Applicant argues that the 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.
THIS ACTION IS MADE FINAL. 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 VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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, 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.
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.
/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621
Prosecution Insights