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 1-14 and 16 are pending in this application.
Claim 7 stands withdrawn from further consideration as being directed to non-elected subject matter, and claims 1-6, 8-14, and 16 will presently be examined to the extent that the read on the elected invention Group I, which is the composition and method of applying the composition, wherein the composition comprises as active ingredients (I-A1) and (B.1).
Withdrawn grounds of rejections
The ground of rejection of claim 15 (“use” claim) under 35 USC §§ 101 and 112(b) or 112 (pre-AIA ), second paragraph, is rendered moot by the cancellation of said claim in the amendment filed on 12/15/2025.
The ground of rejection of claims 1-6 and 8-14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of amendment to the claims filed on 12/15/2025, which provides clearer images of chemical formulas and corrected indefiniteness issues noted in the previous Office action of 9/15/2025.
The ground of rejection of claims 9-14 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is withdrawn in view of deletion of “or preventing” in the base claim 9.
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.
35 U.S.C. 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 1-5, 8-14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/102345 in view of Holb et al. and Funguran® OH 50WP label.
WO 2018/1023451 discloses aureobasidin A as an agricultural fungicide to treat or control fungal infections in agricultural products, including plants, seeds, fruits, and vegetables (page 1, lines 10-11; page 3; claim 1). It is noted that the cyclic depsipeptide of formula (I-A1) in instant application’s claim 1 has the same structure as aureobasidin A – compare with the structure on page 3 of WO 2018/102345. WO 2018/102345 discloses that aureobasidins A to R are antifungal cyclic depsipeptides produced by Aureobasidium pullulans (page 1, lines 29-30). Activity against five phytopathogenic fungi is known: three Penicillium species, Botrytis cinerea, and Monilinia fructicola (page 2, lines 4-10). Further activity against Alternaria solani and Septoria triticum is disclosed (page 3, lines 6-9). Combined use with “one or more other agents useful to treat, prevent, or control agricultural pests in the field” is disclosed (page 3, lines 18-23; claim 4). Examples of such other active ingredients include antifungal agents such as ilicicolin H, azoxystrobin, and myclobutanil, plant growth regulators, herbicides, insecticides, and acaricides (paragraph bridging pages 3-4). Formulations can comprise 0.1-95 wt% aureobasidin A (page 4, lines 4-5). Formulations with carriers and excipients are disclosed, including soil drench, seed treatment, granular form, and foliar spray (page 3, lines 10-17; page 4, lines 6-12). Use concentration can range from about 0.001 to 1 wt%, and application rate can range 2-1000 g/acre or 0.025 to 5 kg/ha (page 4, lines 13-23). Use of fermentation broth derived from strains of Aureobasidium pullulans as a live cell or cell suspension to treat or control a fungal infection on agricultural products is disclosed (paragraph bridging pages 4-5; page 7, lines 18-25; claims 13-14). “Such fermentation broths contain the antifungal agent aureobasidin A, which need not be isolated, purified, and re-formulated for use as an agricultural fungicide.” (page 5, lines 1-3). Use in agricultural products such as wheat, barley, rice, cherries, raspberries, soybeans, olive, rape, castor-oil plant, grapevines, plant parts, fruits, seeds, cuttings, and cultivars is disclosed (paragraph bridging pages 5-6).
Holb et al.2 (hereinafter, Holb) disclose the antifungal use of copper compounds such as copper hydroxide in combination with Aureobasidium pullulans (see Tables 2-4). Holb discloses that concerns about pesticide residue have generated increased interest in environmentally friendly plant protection, and only natural products such as copper, microorganisms, and biological products are permitted in organic fruit production (paragraph bridging pages 114-115). Boni Protect® forte is disclosed as a commercial biological product containing A. pullulans, which is recommended for the control of fruit rots in strawberries and stone fruits, as well as Monilia blossom and twig blight in stone fruits (page 115, left column). For treating sour cherry cultivars to combat brown rot blossom blight caused by Monilinia laxa, application concentration of copper hydroxide in the form of the product Funguran OH 50 WP ranged from 0.05% to 1.5%, and application concentration of A. pullulans in the form of the product Boni Protect® forte (7.5 x 109 cfu/g) was 0.06% (Table 1; see all of section 2.3). Holb discloses that “All treatments received 0.5% wettable sulphur … at 7-16 day intervals, depending on weather conditions, after fruit set” and a final spray of 2% copper hydroxide was applied in all treatments in all years (page 117, left column). Combination of copper hydroxide and A. pullulans reduced brown rot blossom blight incidence (Table 2), reduced phytotoxicity compared to using copper hydroxide alone (Table 3), and increased yield (Table 4). See also Discussion section 4. Holb states that these results provide an alternative method of controlling fungal infections with organic chemicals (page 118, right column).
Funguran® OH 50WP label discloses copper hydroxide (CAS Reg # 20427-59-2) as an agricultural fungicidal and bactericidal agent. The product is 77 wt% copper hydroxide (page 1)3. Uses in many different crops against many different plant disease agents are disclosed (pages 5-12). The following example application rates are disclosed (id.):
Crop
Disease
Application rate
pound / acre
Application rate
kg / hectare
Avocados
Scab
(caused by Sphaceloma)
2 to 6.3 lbs/a
About 2.2 to 7 kg/ha
Bananas
Sigatoka
(caused by Mycosphaerella)
2 lbs/a
About 2.2 kg/ha
Beans
Bacterial blight
1 to 1.58 lbs/a
About 1.1 to 1.8 kg/ha
Broccoli
Black leaf spot (caused by Alternaria)
1.05 lbs/a
About 1.2 kg/ha
Cherry
Brown rot blossom blight (caused by Monilinia)
2 to 3 lbs/a
About 2.2 to 3.4 kg/ha
Eggplant
Alternaria blight
Phomopsis
1.58 lbs/a
About 1.8 kg/ha
WO 2018/102345 does not explicitly disclose a fungicidal composition comprising a mixture of (A) aureobasidin A and (B.1) copper compound such as copper hydroxide or sulfur. However, WO 2018/102345 teaches combined use of aureobasidin A with another antifungal agent for treating or controlling fungi in agricultural products, and Holb and Funguran® OH 50WP label are evidence that copper hydroxide is a known agricultural fungicide. Holb is also evidence that sulfur is a known agricultural fungicide. The ordinary skilled artisan would have been motivated to combine the agricultural antifungal activities of both (A) aureobasidin A and (B.1) copper hydroxide or sulfur with an expectation of obtaining control of phytopathogens with environmentally friendly, natural products.
New claim 16 further recites, “wherein components (A) and (B) are the only active ingredients.” WO 2018/102345 discloses combination of aureobasidin A with “one or more other agents” for controlling agricultural pests in the field (page 3, lines 18-20), wherein said other agent can be an antifungal agent (claim 4). Thus, it would have been obvious to the ordinary skilled artisan to apply a composition comprising components (A) and (B) as the only active ingredients when antifungal control with such composition is sufficient for a particular field condition.
The claimed weight ratio of 100:1 to 1:100 (A to B.1) and narrower ranges would have been obvious from the known application rates and concentrations of (A) and (B.1). WO 2018/102345 discloses 0.025 to 5 kg/ha of (A) aureobasidin A, and Funguran® OH 50WP label discloses 1.1 to 7 kg/ha of (B.1) copper hydroxide. Also, WO 2018/102345 discloses formulation concentration of 0.1 to 95 wt% and use concentration of about 0.001 to 1 wt% of aureobasidin A; Holb discloses 0.05 to 1.5 wt% copper hydroxide and 0.5% wettable sulfur. Thus, the claimed weight ratios would have been obvious from the prior art application rates and concentration ranges of (A) and (B.1).
Claims 3 and 4 recite additional cyclic depsipeptides of component (I-A), such as aureobasidin E or G. Instant specification page 11, lines 10-11 disclose that component (I-A) encompasses aureobasidins E and G. WO 2018/102345 teaches fermentation broth of A. pullulans as a source of aureobasidin A, which need not be isolated. WO 2018/102345 also teaches that aureobasidins A to R are produced by A. pullulans. Thus, WO 2018/102345 teaches an embodiment that includes antifungal use of aureobasidin A with additional aureobasidins such as E and/or G. Further, it would have been obvious to the ordinary skilled artisan to utilize additional natural antifungal agents to enhance or supplement activity and/or spectrum of control.
Claim 5 recites 20-99.0 wt% or 40-99.99 wt% aureobasidin A. WO 2018/102345 discloses 0.1-95 wt% of aureobasidin A. It would have been obvious to the ordinary skilled artisan to formulate a concentrated composition at the higher end of the concentration range for suitable dilution in the field.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Applicant’s arguments filed on 12/15/2025 have been given due consideration but they were deemed unpersuasive for the following reasons.
Applicant argues that Holb does not teach or disclose “a fungicidal composition including a mixture of components (A) and (B) as active ingredients” (emphasis in the original) wherein component (A) includes a cyclic depsipeptide of formula (I-A1) and component (B) is (B.1) such as copper hydroxide or sulfur. Applicant notes, “Holb only discloses application of A. pullulans, and provides no affirmative evidence that the microorganisms applied in fact produce a depsipeptide of Formula (I-A1).”
The Examiner cannot agree with Applicant’s isolated reading of Holb . The primary reference, WO 2018/102345, teaches that A. pullulans produce aureobasidins A to R, wherein aureobasidin A is component (A), the cyclic depsipeptide of Applicant’s formula (I-A1); and WO 2018/102345 further teaches that fermentation broth of A. pullulans contains aureobasidin A, so it can be used without the extra step of isolation or purification. See the paragraph bridging pages 4-5. WO 2018/102345 also teaches that live cells or cell suspension of A. pullulans can be used (page 4, lines 35-36). Applicant’s own specification admits that fermentation broth of A. pullulans contains the cyclic depsipeptide of formula (I-A), which is inclusive of (I-A1). See instant specification page 15, lines 15-17, in view of pages 1-9. As a result, the ordinary skilled artisan would have expected the combined applications of A. pullulans and copper hydroxide to obtain the combination of components (A) and (B.1), aureobasidin A and copper hydroxide, respectively.
Furthermore, obviousness of the claimed invention arises also from the fact that both components (A) and (B.1) are known agricultural antifungal agents for protection of crops. 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. In re Kerkhoven, 205 USPQ 1069, 1072 (CCPA 1980); In re Crockett, 126 USPQ 186 (CCPA 1960); Ex parte The NutraSweet Co., 19 USPQ2d 1586, 1587 (Bd. Pat. App. & Int. 1991). Even assuming arguendo that Holb does not provide affirmative disclosure of component (A) + component (B.1), individual agricultural antifungal use of (A) and (B.1) on crops is suggestive of their combination. Holb’s combined use of A. pullulans, which is a well-known producer of (A), with (B.1) only adds to the obviousness of combining (A) + (B.1).
Applicant also argues that “Holb actually teaches away from the combination of A. pullulans and copper hydroxide,” because Table 2 shows that the combination of A. pullulans and copper hydroxide “performed worse than copper hydroxide alone in reducing blight” and Table 4 shows that yield of sour cherry “decreased when combining A. pullulans with copper hydroxide” (emphases in the original). The Examiner cannot agree. Applicant is misreading Holb as explained below in three parts.
1. Holb is not exactly a simple comparison of copper hydroxide vs. A. pullulans + copper hydroxide
In Holb’s Tables 2 and 4, copper hydroxide is not used at BBCH 59, 65, and 70 for the combined copper hydroxide + A. pullulans treatment. For example, the application timing of Table 2 should be read like this:
PNG
media_image1.png
334
655
media_image1.png
Greyscale
Holb’s section 3.2 confirms that the combined treatment (“Co-Hydr. + A. pull.”) applied copper hydroxide only at BBCH 53 and 54.
2. Holb’s combination strategy is due to known phytotoxicity of copper hydroxide
Holb is concerned with organic cherry production, wherein blossom blight control efficacy, phytotoxicity, and yield are three related factors to take into account in providing antifungal treatment. Holb states, “lime sulphur and copper compounds caused significant blossom toxicity, especially under wet conditions during the blooming period” (page 115, left column). Holb’s Table 3 shows reduced phytotoxicity when A. pullulans is applied at BBCH 59, 65, and 70. Thus, Holb provides an alternative to using the more active but also more phytotoxic copper hydroxide as the sole active ingredient to manage organic production of crop: Holb teaches adequate control that balances efficacy, phytotoxicity, and yield (page 119, section 5; see also pages 118-119, section 4), especially in wet conditions during the blooming period, by combining copper hydroxide with A. pullulans.
3. Holb teaches the combination of A. pullulans with copper hydroxide
Far from teaching away, Holb clearly and directly teaches the combination of A. pullulans with copper hydroxide, especially when conditions are wet during the blooming period, because copper hydroxide is phytotoxic especially under such conditions. Phytotoxicity from copper hydroxide used alone could be unacceptable especially under wet conditions during the blooming period, so it would have been obvious to the ordinary skilled artisan in organic production systems that efficacy and yield can be balanced against phytotoxicity by adding A. pullulans.
Additionally, Holb’s teaching of A. pullulans + copper hydroxide would have suggested the claimed combination of components (A) + (B.1), because A. pullulans is a well-known producer of component (A), aureobasidin A. But even without such suggestion, it would have been obvious to combine components (A) and (B.1), because both components (A) and (B.1) are known agricultural antifungal agents for protection of crops, as discussed in full above.
Applicant argues further that the Examiner “fails to consider the unexpected results in the Specification as filed.” Applicant points to specification Tables 1 and 2, but the data there are for folpet, which is an organic compound. Activity of folpet and aureobasidin A + folpet would not be predictive of activity of copper hydroxide and aureobasidin A + copper hydroxide, because copper hydroxide is structurally and chemically very different from folpet as shown below, and its activity and interaction with aureobasidin A cannot be extrapolated from activity and interaction of folpet with aureobasidin A:
Folpet
PNG
media_image2.png
224
330
media_image2.png
Greyscale
Copper hydroxide
PNG
media_image3.png
150
726
media_image3.png
Greyscale
Additionally, folpet does not read on the elected invention Group I (inorganic compounds B.1), which is being examined herein; folpet is directed to the non-elected invention Group III (organochlorine compounds B.3).
For these reasons, Applicant’s arguments are deemed unpersuasive, and this ground of rejection must be maintained.
Claims 1-6, 8-14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/102345 in view of Holb, Funguran® OH 50WP label, and Cichewicz et al. (US 2021/0317167; hereinafter, Cichewicz).
This ground of rejection addresses claim 6, which was not included in the previous ground of rejection under 35 USC 103.
Teachings of WO 2018/102345, Holb, and Funguran® OH 50WP label were discussed above in the previous ground of rejection under 35 USC 103, and the discussions there are incorporated herein by reference.
Claims 1-5, 8-14, and 16 were previously rejected as being obvious over WO 2018/102345 in view of Holb, and Funguran® OH 50WP label, and the same reasons apply here for their obviousness under this ground of rejection. The obviousness rationale of claims 1-5, 8-14, and 16 from said previous ground of rejection are incorporated herein by reference.
Cichewicz discloses cyclic depsipeptide-class compounds, which are referred to as persephacins (paragraph 18). Persephacin (1), also known as persephacin A, has good antifungal activity (paragraphs 20, 43) and it can be used in agricultural and horticultural compositions, either alone or with carriers, surfactants, and/or other fungicides in any ratio (paragraphs 117-118).
Claim 6 further requires cyclic depsipeptide of component (I-B). The prior art teaches all three components, (A), (B.1), and (I-B), as having antifungal activity alone or with additional agricultural antifungal active ingredients. The ordinary skilled artisan would have been motivated to combine the antifungal activity and antifungal spectrum of activity of (A), (I-B) such as persephacin A, and (B.1) such as copper hydroxide or sulfur to obtain an environmentally friendly, natural product-based composition for agricultural fungi control. (A) + (B.1) is suggested by the prior art, as previously discussed. Further addition of (I-B) such as persephacin A is suggested by expected addition of its antifungal activity and spectrum of control to (A) + (B.1).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Applicant’s arguments pertaining to this ground of rejection are exactly the same as in the previous ground of rejection. The Examiner’s response to Applicant’s arguments, as fully set forth on pages 8-12 of this Office action, are repeated and incorporated herein by reference. In brief, Applicant’s arguments that the prior art does not teach the claimed composition, Holb teaches away, and the specification provides unexpected results, are found unpersuasive for the full reasons set forth above on pages 8-12 of this Office action. 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. Evidence directed to a non-elected and structurally different chemical compound (folpet) + component (A) cannot be accepted to establish nonobviousness of copper hydroxide + component (A).
For these reasons, all claims must be rejected again. No claim is allowed.
Applicant's amendment necessitated the 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 JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 Cited in the IDS of 11/30/2022.
2 Cited in the IDS of 11/30/2022.
3 There are two different paginations in this document: the label pagination and the EPA document pagination (1/20, 2/20, etc.). The page numbers referred to in this Office action are the label page numbers.