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 .
Applicant’s amendment filed August 12, 2025 is acknowledged. Claims 1 and 3-20 are pending in the application. Claims 1, 8, and 10 have been amended.
Election/Restrictions
Applicant's election with traverse of Group 1, claims 1-14, has amended component (1) to a single compound as the component (1) species
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, and bifenthrin insecticide as the component (2) species, in the reply filed on August 12, 2025 is acknowledged. The traversal is on the grounds that Groups I to VII lack unity of invention because there is no special technical feature in view of Karri (WO2019123195). Applicant argues that Karri fails to disclose or suggest that combinations of compound of formula (I) which is now restricted to compound (I-III) and at least one insecticidally active compound (II) or fungicidally active compound (III) produce a synergistic pesticidal effect. In response to Applicant’s argument, the corresponding special technical feature has changed due to Applicant’s amendment, to limit the compound of formula (1) to a single species of the compounds disclosed by Karri et al. This is not found persuasive because while Applicant has amended the claim set, as of August 12, 2025, to change the scope of the claims, the claims that were examined for the issued Restriction Requirement did not have the amended limitations. In addition, Karri et al. does provide a teaching of compound (I-III) in the form of compound 4 (page 84, Table 1, compound 4) and that bifenthrin is one of the insecticides that can be combined with the compounds of compound (1). It is also noted that Groups II-VII are directed to different products and methods of use. As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories: (1) A product and a process specially adapted for the manufacture of said product; or (2) A product and a process of use of said product; or (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or (4) A process and an apparatus or means specifically designed for carrying out the said process; or (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process. Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c). As noted, Applicant’s claims are directed to multiple products and methods of use. Therefore, unity of invention does not exist.
Applicant argues that the claimed subject matter possess a special technical feature which is the synergistic interaction between compounds of Formula (I) which is restricted to (I-III) and component (2), which results in enhanced pesticidal activity. In response to Applicant’s argument, the presence or absence of purported synergistic effect does not determine unity of invention.
Applicant argues that examining all species would not place an undue burden on the Examiner. In response to Applicant’s argument, Applicant claims 33 different classes of insecticides and 17 different classes of fungicidally active compounds (III). Of the 33 different classes of insecticides, there are 372 individual insecticides claimed. There is a burden to search 33 different classes of insecticides, as they would require different fields of search (including searching different classes/subclasses or electronic resources, or employing different search queries) and the prior art applicable to one species would not likely be applicable to another species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4, 6, 7, 8, 10 and 14-20 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 with traverse in the reply filed on August 12, 2025.
Claims 1 and 3-20 are pending in the application. Claims 4, 6, 7, 8, 10 and 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions and species, there being no allowable generic or linking claim. Claims 1, 3, 5, 9, 11, 12, and 13 will presently be examined to the extent they read on the elected subject matter of record.
Priority
This application is a National Stage Entry of PCT/IB2021/056717 filed July 26, 2021, which claims benefit to India Foreign Application No. 202011032003 filed July 27, 2020.
Information Disclosure Statement
Receipt of Information Statements filed January 26, 2023 is acknowledged.
Claim Interpretation
Applicant indicates that the “and/or” language concerning compounds (II) and (III) has been amended to “or”. However, the “or” has a strike-through, wherein the claim reads on compounds (II) and compound (III). Based on Applicant’s election of bifenthrin as the species of compound (II), the claims will be examined as compound (II) or compound (III).
Claim Objections
Claim 3 is objected to because of the following informalities: missing capitalization of Bacillus species. There are several Bacillus species named in lines 98-100 wherein Bacillus is not capitalized. For example, in line 98 bacillus thuringiensis or bacillus sphaericus. It should be Bacillus thuringiensis or Bacillus sphaericus. All citations of Bacillus should be capitalized. Appropriate correction is required.
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 1, 3, 5, 9, 11, 12, and 13 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.
The following structure is recited in claim 1
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. With Applicant’s amendment to claim 1, the substituents R1, R2, R3, R4, Z and E are no longer defined in claim 1. Applicant claims a specific compound for component (1) (I-III) 6-(3-bromo-1-(3-chloropyridin-2-yl)-1H-pyrazole-5-carboxamido)-N-isopropyl-5-methylpyrazolo[1,5-a]pyridine-7-carboxamide. Applicant should either cancel the structure or provide definitions for substituents R1, R2, R3, R4, Z and E that read on the elected species. In addition, the use of (I-III) is also not required.
Claims 3, 5, 9, 11, 12, and 13 are dependent from claim 1 and are therefore, also rejected.
Regarding claim 3, line 99, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is unclear if “bacillus thuringiensis subsp. Israelensis…and Cry34/35Ab1” are a part of the claimed invention.
Claim 3, line 162 contains the trademark/trade name Rynaxypyr®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe chlorantraniliprole and, accordingly, the identification/description is indefinite.
Claim 3, line 163 contains the trademark/trade name Cyazypyr®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe cyantraniliprole and, accordingly, the identification/description is indefinite.
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.
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, 3, 5, 9, 11, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable Karri et al. (WO 2019/123195). Karri et al. cited by Applicant on the IDS filed 1/26/2023.
Applicant’s Invention
Applicant claims a pesticidal mixture comprising a mixture of pesticidally active compound of formula (I), oxides or salts thereof as a component (1)
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wherein component (1) is (I-III) 6-(3-bromo-1-(3-chloropyridin-2-yl)-1H-pyrazole-5-carboxamido)-N-isopropyl-5-metylpyrazolo[1,5-a]pyridine-7-carboxamide and at least one insecticidally active compound (II) or at least one fungicidally active compound (III) as a component (2), wherein at least one insecticidally active compound (II) selected from the group consisting of (II-1)-(II-33) or at least one fungicidally active compound (III) selected from the group consisting of: (A)-(Q). Applicant elected bifenthrin as component (2).
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Regarding claim 1, Karri et al. teach compositions for controlling or preventing insect and mite pests. The composition comprises a biologically effective amount of the compound of Formula (I) and at least one additional component selected from the group consisting of surfactants and auxiliaries (page 38, lines 21-23).
Regarding claim 1, Karri et al. teach compound 6-(3-bromo-1-(3-chloropyridin-2-yl)-1H-pyrazole-5-carboxamido)-N-isopropyl-5-metylpyrazolo[1,5-a]pyridine-7-carboxamide (page 84, Table 1, Compound 4).
Regarding claims 1, 5, and 9, Karri et al. teach the biologically active compounds or agents with which compounds can be formulated include bifenthrin (page 55, line 4).
Karri et al. teach in Example A: Compound 4 recorded more than 70% mortality of Helicoverpa armigera (page 133, lines 23-33-page 134, lines 1-13). In example B: compound 4 recorded more than 70% morality against Spodoptera litura (page 134, lines 13-31-page 135, lines 1-2).
Regarding claim 11, Karri et al. teach examples of suitable auxiliaries are solvents, adjuvants, emulsifiers and surfactants (page 39, lines 15-18, page 40, lines 1-33).
Regarding claim 13, Karri et al. teach various other pesticides, e.g. insecticides are added to the active substances. These agents are admixed with the compositions in a weight ratio of 1:100 to 100:1 (page 44, lines 15-19).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Karri et al. do not specifically disclose examples of compound (III-I) and bifenthrin or the weight ratio of component (1) and said component (2) is in a weight ratio of 1000:1 to 1:1000, as claimed in claim 12.
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Karri et al. and formulate a composition comprising compound (III-I), 6-(3-bromo-1-(3-chloropyridin-2-yl)-1H-pyrazole-5-carboxamido)-N-isopropyl-5- methylpyrazolo[1,5-a]pyridine-7-carboxamide and bifenthrin. Karri et al. teach compound 4, 6-(3-bromo-1-(3-chloropyridin-2-yl)-1H-pyrazole-5-carboxamido)-N-isopropyl-5- methylpyrazolo[1,5-a]pyridine-7-carboxamide. Karri et al. teach various other pesticides, e.g. insecticides are added to the active substances, including bifenthrin. One of ordinary skill in the art would have been motivated to combine compound 4 and bifenthrin because it is known in the insecticidal art to combine multiple insecticides to improve the efficacy of the insecticides. One of ordinary skill in the art would have been motivated to choose compound 4, 6-(3-bromo-1-(3-chloropyridin-2-yl)-1H-pyrazole-5-carboxamido)-N-isopropyl-5- methylpyrazolo[1,5-a]pyridine-7-carboxamide, because it is one of the compounds tested against different insects that provide more than 70% mortality to the insects. In addition, in view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional insecticide set forth prima facie obvious subject matter.
Regarding the limitation of component (1) and component (2) is in a weight ratio of 1000:1 to 1:1000, as claimed in claim 12, Karri et al. teach various other pesticides, e.g. insecticides are added to the active substances. These agents are admixed with the compositions in a weight ratio of 1:100 to 100:1. One of ordinary skill in the art would have been motivated to use experimentation and optimization to determine the optimal amount of the claimed insecticides to use in the composition, including increasing the amount of insecticide. The skilled artisan would have been motivated to adjust the amount of compound 4 and bifenthrin in the composition to eradicate the harmful insects. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Examiner’s Note
Applicant asserts synergistic effects with combination of compound (I-III) and the insecticidally active compound (II) in the traversal of the Restriction Requirement. The examiner notes that while Applicant has tested a number of compositions comprising compound (I-III) and different component (2)s, the data is not commensurate in scope with the claimed invention. Applicant claims a pesticidal mixture comprising a mixture of pesticidally active compound of formula (I), oxides or salts thereof as a component (1)
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wherein component (1) is (I-III) 6-(3-bromo-1-(3-chloropyridin-2-yl)-1H-pyrazole-5-carboxamido)-N-isopropyl-5-metylpyrazolo[1,5-a]pyridine-7-carboxamide and at least one insecticidally active compound (II) or at least one fungicidally active compound (III) as a component (2), wherein at least one insecticidally active compound (II) selected from the group consisting of (II-1)-(II-33) or at least one fungicidally active compound (III) selected from the group consisting of: (A)-(Q). It cannot be determined if the results demonstrated in the tests are indicative of results that will be seen over the full scope of independent claim 1. For example, it cannot be determined if the results for compound (III) and bifenthrin is indicative of the results for compound (III) and all other pyrethroids/pyrethrins, as claimed in claims 1, 3, and 5. In addition, pyrethroids/pyrethrins is only one class of insecticides. Wherein Applicant claims 33 different classes of insecticides and 17 different classes of fungicidally active compound (III). Applicant has not established nonobvious evidence that is commensurate in scope with that of the claimed subject matter.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614