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 Status
Claim 2 is cancelled.
Claims 1 and 3-8 are pending.
Priority
Applicant states that the international application PCT/BR2021/050376 as filed is a faithful English translation of priority document BR102020018053-3. That is not sufficient. MPEP 214 states: “If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.” Applicant has not done so.
Specification
Acknowledgement is made of the corrections to the specification filed 4/20/26.
Withdrawn rejections
Applicant's amendments and arguments filed 4/20/26 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn. Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph; and claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Applicant’s amendments and arguments are persuasive.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Bristow (US20160249616) and Ammermann et al. (US20050101639) and Messerschmidt et al. (US8153561) and Finch (US8618022) and Damaceno et al. (US20110257166).
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103, the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103.
Applicant claims:
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182
726
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488
788
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The term “m/m” is interpreted as mass/mass percentage.
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a pesticide research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from pesticidal compositions and methods of application— without being told to do so. In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1 and 3-8, Bristow teaches compositions and methods of treating soybean rust by applying a composition to a plant comprising a strobilurin fungicide and a triazole fungicide (Claims 1 and 20; [0012]), which would be at the site of infection on the plant, where the strobilurin fungicide is picoxystrobin (Claims 2 and 5) and the triazole fungicide is prothioconazole (Claim 3) where the strobilurin fungicide is present between 5-95% by weight of the composition and the triazole fungicide is present is present between 1-70% by weight of the composition (Claims 10-11) or in a ratio of from 25:1 to 1:25 (Claim 12). Those amounts overlap the amounts claimed. MPEP 2144.05(I): In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Bristow teach adding auxiliaries that will be apparent to the person skilled in the art [0023]. Bristow teach formulations with 0.6% 1,2-benzisothiozolin-3-one and 10% propylene glycol [0105] and water [0076-0077]. The 0.6% of the preservative 1,2-benzisothiozolin-3-one touches on the claimed range of 0.1-0.50% w/w and renders it obvious. See MPEP 2144.05(I): “Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).”
Bristow also teach adding 11.25% of 2% xanthan gum with the balance of water [0099] and 5% tristyrylphenol ethoxylates [0098]. Bristow teach adding polymeric stabilizers known in the art [0026] and anti-foam agents such as polydimethylsiloxanes [0028] and preservatives [0029]. Bristow teach adding one or more surfactants that are known in the art and commercially available [0025].
Regarding claims 1 and 3-8, Ammermann et al. teach a synergistic combination of prothioconazole and picoxystrobin (Claims 1 and 3) in a weight ratio of 20:1 to 1:20 (Claim 7). All sorts of surfactants are named [0069] as well as fillers/solid carriers [0072].
Regarding claims 1 and 3-8, Messerschmidt et al. teach inert ingredients approved by the Environmental Protection Agency that include:
Silicon dioxide (Column 29, line 24);
Xanthan gum (Column 30, line 27);
Propylene glycol (Column 32, line 14);
Polyvinylpyrrolidone (Column 35, line 28);
Dodecanol, ethoxylated monoether with sulfuric acid, sodium salt (Column 35, lines 36-37);
Polyethylene-polypropylene glycol monobutyl ether (Column 36, lines 18-29);
Dimethylsiloxanes (Column 40, lines 47);
Triethanolamine compound with poly(oxyethylene) tristyrylphenyl ether phosphate (Column 44, lines 64-66);
Poly(oxy-1,2-ethanediyl), alpha.sulfo-omega [tris(l-phenylethyl)phenoxy ]-ammonium salt (Column 45, lines 22-24);
Methyl methacrylate-methacrylic acid monomethoxypolyethylene glycol methacrylate copolymer (Column 45, lines 25-27 (The same CAS number as used by Applicant in Table 3);
Polyoxyethylene tristyrylphenol phosphate, potassium salt (Column 46, lines 15-16).
Regarding claims 1, 3-5 and 7, Finch teaches aqueous compositions of picoxystrobin and prothioconazole (Claims 1-2 and 19) with 0.5 to 15% by weight of at least one surfactant where “Suitable surfactants are well known to the skilled person as are processes for the preparation thereof; they are also commercially available, e.g. under the trade names mentioned below in each case. (Column 7, lines 35-45). Surfactants include poly(ethylene glycol block propylene glycol) butylether (Column 22, lines 18-19) and the comb polymer of methyl methacrylate, methacrylic acid (Column 22, lines 23-24) and alkaline metal salts of phosphates of (poly)ethoxylated di- or tristyrylphenols (Column 9, lines 2-3) and name CAS-No. 119724-54-8 which is commercially available as Atlox® 4913 (Uniqema) (Column 13, lines 34-35) with xanthan gum thickener (Column 22, line 34). But see column 7, line 65 through column column 13, line 35.
Regarding claims 1, 5 and 7, Damaceno et al. teach aqueous compositions comprising prothioconazole and picoxystrobin and surfactants such as at least one dispersant selected from the group consisting of methacrylic acid-methyl methacrylate-polyethyleneglycol graft copolymer, tristyrylphenolethoxylates and/or propylene oxide/ethylene oxide block copolymer (Abstract; claims 1-3 and 9; [0055-0057]) and commonly employed additives [0060]. Damaceno et al. teach embodiments with combined surfactants/dispersants and propylene glycol and xanthan gum [0093, 0099, 0106, 0120].
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
1. The difference between the instant application and Bristow is that Bristow do not expressly teach the surfactant system and all the claimed additives in the amounts claimed. This deficiency in Bristow is cured by the teachings of Ammermann et al., Finch, Damaceno et al. and Messerschmidt et al.
1. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the composition of Bristow with the surfactant system claimed with the inert ingredients claimed, as suggested by Ammermann et al., Finch, Damaceno et al. and Messerschmidt et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because Ammermann et al. establish a synergism between the prothioconazole and picoxystrobin within the ratios taught by Bristow. So, the artisan would select those active agents within those ratios and optimize the amounts to 19.45 to 21.03% prothioconazole and 16.21 to 18.28% picoxystrobin with a reasonable expectation of success. With regard surfactant system, not only does Finch and Damaceno et al. point the artisan to several of the claimed surfactants for use with prothioconazole and picoxystrobin aqueous compositions in an overlapping amount of the claimed range, but also these are simply well-known surfactants available to the ordinary artisan for use as approved by the Environmental Protection Agency. All Applicant appears to have done is select known surfactants and other inert additives from a list of known ingredients for use in the composition to treat soybean rust. "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention.” (Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327 65 USPQ at 301 (1945)). Thus, selecting 2-7% m/m of each component in the systems of: polyethylene polypropylene glycol monobutyl ether and phosphated polyoxyethylene trisylphenol, potassium salt or polyethylene polypropylene glycol monobutyl ether and triethanolamine compound with poly( oxyethylene) tristyrylphenol ether phosphate or poly(oxy-1,2-ethanediyl), alpha-sulfo-omega-(2,4,6-tris(lphenylethyl) phenoxy)ammonium salt and methyl methacrylate-methacrylic acid copolymer or dodecanol, monoether ethoxylated with sulfuric acid and triethanolamine compound with poly(oxyethylene) tristyrylphenol ether phosphate or methyl methacrylate-methacrylic acid copolymer; phosphated polyoxyethylene trisylphenol, potassium salt is not inventive without more. Especially when Damaceno et al. teach embodiments with combined surfactants/dispersants as discussed above. Optimizing the amount of each component is well within the skill of the ordinary artisan to obtain the desired product with a reasonable expectation of success. See MPEP 2144.05 (II) (A): “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)…see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."). "The mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of a person having ordinary skill in the art." In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). Accordingly, the ordinary artisan can readily select the claimed components and optimize their amount to within the claimed ranges with no change in the synergism of the prothioconazole and picoxystrobin and do so with a reasonable expectation of success.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant’s arguments filed 4/20/26 have been carefully considered but are not persuasive.
On pages 9-10 of remarks, Applicant summarizes the teachings of the references in the rejection. With regard to Bristow’616, Applicant states: “Bristow '616 broadly teaches the use of strobilurin and triazole fungicides to increase crop yield, including combinations such as azoxystrobin + tebuconazole. However, the reference focuses on general yield enhancement, not on formulation engineering or environmental impact reduction. Specifically, the reference does not disclose or suggest the specific combination of prothioconazole and picoxystrobin.” However, this is misleading as Bristow’616 names picoxystrobin to be combined with the triazole fungicide prothioconazole (Claims 1, 3 and 4) as members of a limited number of active agents and renders that combination obvious. In fact, it was held that “[d]isclos[ure of] a multitude of effective combinations does not render any particular formulation less obvious." Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Furthermore, Bristow’616 specifically names the fungal disease soybean rust (Claim 20), which is in the intended use of the instantly claimed composition (Claim 1: “A fungicidal composition for the treatment of soybean rust”). Moreover, Bristow’616 teach that enhanced or synergistic effect is expected [0022, 0073] and concentrates are taught (Claim 18; [0074, 0083, 0108, 0110] Examples 1-4, 8). Bristow’616 is not relied upon by the Examiner for teaching all the claimed surfactant system components. It is impermissible to attack references singly when the Examiner relies upon the combined teachings of the references, nor may they attack a reference for not teaching a limitation of the claim when the Examiner has explicitly relied upon another reference as teaching that limitation. See In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Similarly, the other references are relied upon as characterized by the Examiner and not as characterized by Applicant. Applicant is reminded that the test for obviousness is "what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 4I3, 425 (CCPA I98I) (MPEP 2145(III)).
On page 11 of remarks, Applicant discusses several technical advancements including: 1) high concentration formulation; 2) surfactant system engineering designed to: Enhance leaf deposition and spreading; Improve absorption and translocation; Minimize fungicide loss due to rain and drift; 3) agronomic efficiency and selectivity; 4) environmental and economic benefits; and 5) resistance management.
Applicant asserts that: “The presently claimed formulations of Prothioconazole and Picoxystrobin provide these ingredients at a concentration higher than contemplated in the cited references blended with a key set of surfactants.” However, Bristow’616 teaches concentrates of the claimed prothioconazole and picoxystrobin and the claimed surfactant system is of known components for their respective functions. Applicant submits that the specific combination of ingredients recited in the present claims is not prima facie obvious over the collection of cited references. However, Applicant has not provided a side-by-side comparison with objective evidence with the closest prior art in order for the Examiner ascertain if the claimed surfactant system is indeed non-obvious.
On pages 11-12 of remarks, Applicant asserts that: “The Examiner should also consider that the specifically described formulations of the claims provide advantages in the application of the fungicide that are not expected by a skilled artisan who reads the collection of references cited. The specific surfactants ensure an adequate balance of the composition, promoting greater efficacy in disease management and greater environmental safety.” However, Bristow’616 teaches an expectation of enhanced and/or synergistic action in disease management and the compositions are environmentally friendly [0088]. Applicant argues: “The surfactant blends recited reduce fungicide losses due to rainwater washout after application, and improve deposition, and spreading on the leaf surface. They also facilitate fungicide absorption and penetration into the leaves, and improve translocation within the plants. The claimed formulations also improve spray application, reducing evaporation along the path from the spray tip to the biological target. Liquid films are formed on leaf surfaces through droplet coalescence, thus promoting greater efficacy in controlling Asian rust and leaf spot in soybeans and other diseases in various agricultural crops.” However, none of these functional properties are claimed and there has been no comparison with the closest prior art. See MPEP 716.02(e). It appears to the Examiner that the ordinary artisan in this art is well aware that surfactant blends are intended to reduce fungicide losses due to rainwater washout after application, and improve deposition, and spreading on the leaf surface. In fact, Bristow’616 teach that surfactants and adherents are known in the art, commercially available and “Their use in the formulation of the compositions will be apparent to the person skilled in the art.” [0023]. And Bristow’616 teach that: “The fungicidal composition optionally includes one or more surfactants which are preferably non-ionic, cationic and/or anionic in nature and surfactant mixtures which have good emulsifying, dispersing and wetting properties, depending on the nature of the active compound to be formulated. Suitable surfactants are known in the art and are commercially available.” [0025] Consequently, in view of the combined references, the selection of prothioconazole and picoxystrobin for the treatment of soybean rust in combination with surfactants/dispersants that reduce losses during the application process is obvious to the ordinary artisan.
On page 12 of remarks, Applicant directs the Examiner’s attention to “prototype 4”, described in claim 5, and Table 14 where experimental data show that after seven days of exposure to decomposition processes, particularly photolysis, the technologies incorporated into Prototype 4 were effective in promoting progressive absorption and protecting prothioconazole. Respectfully, the Examiner has a different perspective. Concerning Table 14, it appears that only the concentration of active ingredients was varied. Applicant comments: “the association of OFA-T 0143/2017 (prothioconazole 240 g.L-1 + picoxystrobin 200 g.L-1) increases the residual and control of Asian soybean rust.” [0178] Table 14 does not appear to indicate any criticality of the surfactant system but rather the concentration of active ingredients for treatment of Asian rust in soybean crop. However, in looking to Bristow’616, in Table A [0112] Britow’616 teaches application of 250 g picoxystrobin and 250 g triazole actives singly as well as combined in various amounts to young soybean plants inoculated with white mold [0111] and demonstrated that the combination of actives was synergistic for the yield. It is then mere optimization of the concentration of components taught by Bristow’616 to achieve synergistic control of soybean rust with a reasonable expectation of success. See MPEP 716.01(d): Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988). Furthermore, it appears that the observed synergism by Applicant in Table 14 is due to the concentration of active ingredients and does not have anything to do with the surfactant system at all. Regarding the decomposition and photolysis assertions, the Examiner has no basis to ascertain if these findings are significant improvements or not. They could merely be latent benefits of the prior art composition. Respectfully, Applicant’s arguments are not persuasive.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after review of all the facts, Applicant’s arguments are not persuasive. The Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts, which is more convincing than the evidence which has been offered in opposition to it.
Conclusion
No claims are allowed.
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 ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
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/ERNST V ARNOLD/Primary Examiner, Art Unit 1613
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