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 .
Detailed Action
Previous Rejections
Applicants' arguments, filed 12/23/25, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
Claims 1, 4-6, 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta et al. (IN 201721031437 A (ATUL LIMITED) in view of Pellacini et al. (WO 2013/186325A1).
Gupta et al. discloses a synergistic ternary composition of azoxystrobin, thiamethoxam (neonicotinoid insecticide) and carbendazim (benzimidazole fungicide) (abstract, examples, claims). The components are discussed as being applied to enhance the growth of plants by reducing the levels of death and yield loss resulting from fungal pathogens and insect pests (abstract, claims). The most preferred range applies azoxystrobin as 1.5 w/w%, thiamethoxam as 30% and carbendazim as 8% (see [0057], examples, claim 9), however also discusses the broadest range to combine of 0.1-20% azoxystrobin, 1%-60 w/w% thiamethoxam and 1-30% w/w of carbendazim. Examples 1-4 shows a composition containing these agents along with adjuvants.
The reference does not teach benzimidazole fungicide as thiophanate. However, as is evident from page Gupta et al. [0034], it is established that thiophanate-methyl and carbendazim are both known to form synergistic combinations with other fungicides/insecticides so merely replacing the carbendazim as an alternate systemic benzimidazole fungicide and it is considered to be an obvious alternative to replace carbendazim with thiophanate-methyl, the skilled person would substitute this alternative with the expectation that similar activity would be achieved. The amount of benzimidazole fungicide is not in the same amount as claimed, however, manipulation of amount for optimum fungicidal effect would be within skill of an artisan since the art teaches the generic fungicidal amount of 8% in the composition. Furthermore, including the composition in a kit or package would be obvious to one of ordinary skill for the ease of convenience.
Pellacini et al. discloses a synergistic compositions for the protection of agrarian crops and the use thereof, see title. The reference teaches use of a carboxamide compound along with one or more of benzimidazoles or azo compounds or insecticidal amides, see pages 2-3. The reference teaches use of thiamethoxam, C41, thiophanate-methyl C25 and azoxystrobin C74, see page 39, see claims 1-2 and claim 7.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the known benzimidazole fungicide thiophanate-methyl in place of carbendazim as taught by Gupta and Pellacini et al. One of ordinary skill would have been motivated to do so because Gupta provides equivalency between the known benzimidazole fungicide thiophanate-methyl and carbendazim and Pellacini et al. explicitly teach that azoxystrobin, thiophanate-methyl and thiamethoxoxam can all be used together for the protection of agrarian crops and the use thereof. Therefore, simple substitution of one benzimidazole fungicide with another would have provided predictable synergistic fungicidal effect and would have made it obvious to one of ordinary skill to have utilized all the three known fungicidal/insecticidal compounds to be sued together with a reasonable expectation of success.
Applicant argues that there is unpredictability in the effectiveness of insecticides with homologs, isomers and analogs. According to Applicant, the degree of unpredictability in the present three-part combination is augmented by the replacement of one benzimidazole fungicide with another (thiophanate-methyl for carbendazim) in combination with strobilurin fungicide (azoxystrobin) and a neonicotinoid fungicide (thiamethoxam). A skilled person cannot jump to the conclusion that the combination of azoxystrobin, thiophanate-methyl and thiamethoxam will automatically and necessarily have improved or even comparable fungicidal and insecticidal properties compared to the combination of azoxystrobin, carbendazim and thiamethoxam. The unpredictability of replacement of thiophanate-methyl for carbendazim is further augmented by the significant differences in the chemical structures of the two compounds. although considered a benzimidazole fungicide, thiophanate-methyl does not have a benzimidazole chemical structure. Moreover, the aromatic amino groups in thiophanate-methyl are highly functionalized with electronegative heteroatoms, N, O, and S. In contrast, the aromatic amino group of carbendizam is functionalized with a single methoxy carbonyl group. The skilled person in the art can have no expectation that these significantly different compounds will provide comparable fungicidal and insecticidal activity in combination with azoxystrobin (strobilurin fungicide) and thiamethoxam (insecticide) when used in the claimed amounts.
Applicant’s arguments are fully considered but is not persuasive. As discussed in the rejections above, the reference by Pellacini et al. explicitly teach that azoxystrobin, thiophanate-methyl and thiamethoxam can all be used together for the protection of agrarian crops and in a synergistic manner with a carboxamide compound. Therefore, applicant’s assertion that there is unpredictability in the fungicidal activity is not persuasive. Pellacini explicitly teaches use of one or more of the compounds discussed above which provides synergistic effect in terms of protection of agrarian crops due to their fungicidal/insecticidal properties. Additionally, as discussed in the rejections of record that it is evident from page Gupta et al. [0034], it is established that thiophanate-methyl and carbendazim are both known to form synergistic combinations with other fungicides/insecticides so merely replacing the carbendazim as an alternate systemic benzimidazole fungicide and it is considered to be an obvious alternative to replace carbendazim with thiophanate-methyl, the skilled person would substitute this alternative with the expectation that similar activity would be achieved. Burden is on applicant to provide substantial experimental evidence to prove that there will be unpredictability in combining azoxystrobin, thiophanate-methyl and thiamethoxam for crop protection or plant propagation.
Applicant argues that Gupta teaches that the most effective composition has a reduced dose of carbendazim of 8.0 g a.i./10 kg seed. Gupta might disclose that carbendazim may be present in an amount ranging from 1-30% w/w (para. [0056]). However, the results presented suggest otherwise. Based on these results, the skilled person skilled in the art will not be motivated to change the benzimidazole fungicide from carbendazim to thiophanate-methyl and further to increase the amount of benzimidazole fungicide from 8.0% w/w taught by Gupta to 10 to 20% w/w.
These arguments are not persuasive because the generic range of the amount of benzimidazole fungicide is taught by the reference which is 1-30% w/w and one of ordinary skill would have manipulated the amount in order to obtain optimum fungicidal results by performing experimental manipulations.
Action is final
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SNIGDHA MAEWALL whose telephone number is (571)272-6197. The examiner can normally be reached Monday thru Friday; 8:30 AM to 5PM.
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/SNIGDHA MAEWALL/Primary Examiner, Art Unit 1612
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