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 .
Information Disclosure Statement
Information disclosure statements were filed on 01/06/2023 and 08/18/2023. Applicant is reminded that without a translated Abstract or full translation, a reference can no be considered.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 2, 4, 11, 13, 18, 19, 26, 36 and 56-61 in the reply filed on 11/20/2025 is acknowledged.
Claims 39-41, 45, 46, 49, and 50 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/20/2025.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the captioning/labeling can not be read clearly. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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.
Claims 2, 11, and 40 are 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 2, ix., a, sets out: together, separately, simultaneously, contemporaneously, or successively.
It is the understanding of this Examiner that the additive effects of the invention occur only when the phthalimide fungicide is paired with another fungicide. In other words, this only occurs when they are administered together, and at the same time. Clarification is requested.
Further it is indefinite as to how together differs from simultaneously or contemporaneously. Administering them separately would also appear to be equivalent to successively. Clarification is requested.
Claims 11(i) and 40, (l) , set out a Markush Group of fungicides which include “natural fungicides’ and “plant extract fungicides”. Both are natural, and the metes and bounds of the Markush Group are indefinite because of the overlap. Correction is requested.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4, 11, 15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO 2012/025912 A1 (Makhteshium Chemical Works).
Makhteshium Chemical Works discloses a method of controlling fungi comprising a phthalimide fungicide and phosponate fungicide (see claims 1, 6, 8, 14 and 18). Specific phthalimide fungicides are listed at [0018]. Applicant uses functional language which does not differentiate from the composition and method of Makhteshium Chemical Works. The claims are anticipated by Makhteshium Chemical Works.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims1, 2, 4, 11, 13, 18, 19, 26, 36 and 56-61 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 9, 10, 12, 13, 18-23 of copending Application No. 18/725,998 (reference application) (US’998). Although the claims at issue are not identical, they are not patentably distinct from each other because US’998 claims:
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The remainder of the claims set out various combinations of different classes fungicides in combination phthalimide fungicides, their ratios (claim 12), and their effects together, used for the same fungicidal purpose as the instantly claimed method. Those of ordinary skill would find it well within their skill to claim the instant method given the claims of US’998. The instant method would therefore have been obvious to one of ordinary skill in the art at the time of filing given the claims of US’998.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS A AZPURU whose telephone number is (571)272-0588. The examiner can normally be reached 9 am- 3 pm, 4 pm-8pm.
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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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/CARLOS A AZPURU/ Primary Examiner, Art Unit 1617 caz