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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
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).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1, 3, 5, 9, 14, 16, 29, 33, 35-37, 39, 40, 53, and 54, drawn to a composition comprising a trialkyl sulfonium chloride according to general formula (A)
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wherein R1 represents -CH3; R2 represents -CH3; and R3 represents –(CH2)n-CH3, wherein n is an integer within the range of from 17 to 31; or a solvate thereof; wherein the trialkyl sulfonium chloride is present in the composition in a content of more than 0.1wt%, relative to the total weight of the composition.
Group II, claim 44 , drawn to a method for controlling or combating pests and/or improving plant health comprising contacting the pests, their habitat, materials or plants to be protected against attack by the pests, the soil, the lotus where the plant is growing, the lotus where the plant is to grow or propagation material with a pesticidally effective amount of a composition according to claim 1.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a composition comprising a trialkyl sulfonium chloride according to general formula (A)
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wherein R1 represents -CH3; R2 represents -CH3; and R3 represents –(CH2)n-CH3, wherein n is an integer within the range of from 17 to 31; or a solvate thereof; wherein the trialkyl sulfonium chloride is present in the composition in a content of more than 0.1wt%, relative to the total weight of the composition, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Young et al. (Lipids Vol 26, No. 11, pages 957-959 (1991); cited in the IDS filed 04/12/2024) in view of Sato (US 6569809; issue date: 05/27/2003). Young discloses a composition comprising a bromide salt of n-octadecyldimethylsulfonium ion in a agriculturally acceptable composition (abstract). Young does not disclose the chloride salt. Sato discloses that bromide and chloride are both agriculturally acceptable salt forming ions (col 7, lines 20-25).
During a telephone conversation with Kurt Briscoe on 11/12/2025 a provisional election was made with traverse to prosecute the invention of Group I, claims 1, 3, 5, 9, 14, 16, 29, 33, 35-37, 39, 40, 53, and 54. Affirmation of this election must be made by applicant in replying to this Office action. Claim 44 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claims 1, 3, 5, 9, 14, 16, 29, 33, 35-37, 39, 40, 53, and 54 are under current examination.
Claim Objections
Claim 5 is objected to because of the following informalities: In claim 5 the phrase octadecyl dimethyl sulfonium chloride or n-octadecyl dimethyl sulfonium chloride is redundant because claim 1, from which claim 5 depends, already imposes the limitation that R3 is a normal alkane having 17-31 CH2 groups. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 37 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Enablement is considered in view of the Wands factors (MPEP 2164.01(A)). These include:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
All of the Wands factors have been considered with regard to the instant claims, as discussed below:
(A) The breadth of the claims/(B) The nature of the invention:
The claims are directed to a combination of an trialkylsuflonium chloride antifungal agent with another antifungal agent; wherein broad classes of additional antifungal agents are claimed only in terms of their functional activity. Specifically, Applicant claims antifungal agents that are capable of performing the following functions: (1) inhibitors of the ergosterol synthesis;(2) inhibitors of the respiratory chain at complex I or II; (3) inhibitors of the respiratory chain at complex III; (4) inhibitors of the mitosis and cell division; (5) compounds capable of having a multisite action; (6) compounds capable of inducing a host defense; (7) inhibitors of the amino acid and/or protein biosynthesis; (8) inhibitors of the ATP production; (9) inhibitors of the cell wall synthesis; (10) inhibitors of the lipid and membrane synthesis; (11)inhibitors of the melanine biosynthesis; (12) inhibitors of the nucleic acid synthesis; (13) inhibitors of the signal transduction; (14) compounds capable of acting as uncoupler. The functional category “inhibitors of the signal transduction” will be taken as exemplary. The scope of molecules that could fall within the category of inhibitors of signal transduction is enormous. The phrase encompasses any substance that is capable of interfering with any signal transduction pathway within any species of fungus. Different signal transduction pathways regulate all of the physiological functions of a fungus species, including filamentous growth, mating, pheromone response, appressorium development, virulence sporulation, to name just a few (Lengeler, table of contents, page 746). Once a signaling pathway target has been selected, there are multiple points that could be inhibited within the signaling cascade, and targets may be inhibited by interfering directly with enzyme activity (see Cornet, page 342, where inhibiting the specific PacC/Rim pathway is described) or by disrupting protein-protein interactions (Santos: abstract).
(C) The state of the prior art/(E) The level of predictability in the art:
The field of inhibiting signal transduction in fungi is an area of active research. Chang discloses that global emergence of antifungal resistance threatens the limited arsenal of available treatments and emphasizes the urgent need for alternative antifungal agents (abstract). Song discloses that plant diseases caused by fungal phytopathogens have led to significant economic losses in agriculture worldwide. The management of fungal diseases is mainly dependent on the application of fungicides, which are not suitable for sustainable agriculture, human health, and environmental safety. Thus, it is necessary to develop novel targets and green strategies to mitigate the losses caused by these pathogens (abstract). However, signal transduction is highly complex in terms of the number of pathways involved as well as the potential for crosstalk among different recognized pathways (Lengeler, page 746). In view of the sheer number of potential targets, the unpredictability of drug design in general, and the danger of unexpected interactions among signaling pathways, the level of predictability in the art of inhibitors of fungal signal transduction is very high.
(D) The level of one of ordinary skill:
The artisan of ordinary skill would have an advanced degree such as a Ph.D. in the field of agrochemical formulations science and synthetic organic chemistry. Thus, the level of skill is very high.
(F) The amount of direction provided by the inventor/(G) The existence of working examples:
Other than listing the categories of additional antifungal agent exactly as recited in the claim (see page 18), no further direction or examples are provided in the specification.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
In view of the foregoing the quantity of experimentation required to make and use the full scope of the instant invention, as claimed, is undue.
Claim 37 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant is referred to the Guidelines on Written Description published at FR 66(4) 1099-1111 (January 5, 2001) (also available at www.uspto.gov). The following passage is particularly relevant:
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant identifying characteristics, i.e. structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between structure and function, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus.
A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within a genus, one must describe a sufficient number of species to reflect the variation within the genus. What constitutes a "representative number" is an inverse function of the skill and knowledge in the art. Satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that applicant was in possession of the necessary common attributes or features of the elements possessed by the members of the genus in view of the species disclosed. In an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus.
For Example MPEP 2163 states, in part,
An adequate written description of a chemical invention also requires a precise definition, such as by structure, formula, chemical name, or physical properties, and not merely a wish or plan for obtaining the chemical invention claimed. See, e.g., Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 927, 69 USPQ2d 1886, 1894-95 (Fed. Cir. 2004) (The patent at issue claimed a method of selectively inhibiting PGHS-2 activity by administering a non-steroidal compound that selectively inhibits activity of the PGHS-2 gene product, however the patent did not disclose any compounds that can be used in the claimed methods. While there was a description of assays for screening compounds to identify those that inhibit the expression or activity of the PGHS-2 gene product, there was no disclosure of which peptides, polynucleotides, and small organic molecules selectively inhibit PGHS-2. The court held that “[w]ithout such disclosure, the claimed methods cannot be said to have been described.”).
With respect to the genus embraced by the claims, the scope of the claimed genera “(1) inhibitors of the ergosterol synthesis;(2) inhibitors of the respiratory chain at complex I or II; (3) inhibitors of the respiratory chain at complex III; (4) inhibitors of the mitosis and cell division; (5) compounds capable of having a multisite action; (6) compounds capable of inducing a host defense; (7) inhibitors of the amino acid and/or protein biosynthesis; (8) inhibitors of the ATP production; (9) inhibitors of the cell wall synthesis; (10) inhibitors of the lipid and membrane synthesis; (11)inhibitors of the melanine biosynthesis; (12) inhibitors of the nucleic acid synthesis; (13) inhibitors of the signal transduction; (14) compounds capable of acting as uncoupler” is enormous and only the phrase “inhibitors of the signal transduction” will be taken as exemplary. The claim limits the other antifungal agents only in terms of function. The scope of molecules that could fall within the category of inhibitors of signal transduction is enormous. The phrase encompasses any substance that is capable of interfering with any signal transduction pathway within any species of fungus. Different signal transduction pathways regulate all of the physiological functions of a fungus species, including filamentous growth, mating, pheromone response, appressorium development, virulence sporulation, to name just a few (Lengeler, table of contents, page 746). Once a signaling pathway target has been selected, there are multiple points that could be inhibited within the signaling cascade, and targets may be inhibited by interfering directly with enzyme activity (see Cornet, page 342, where inhibiting the specific PacC/Rim pathway is described) or by disrupting protein-protein interactions (Santos: abstract).
With respect to disclosure of a representative number of species, the level of skill of an artisan in the field of biologically derived wound dressing as well as the level of knowledge in the prior art and the predictability of the prior art must be considered. The artisans of skill in the field of antifungal compounds or formulations would be an individual with an advanced degree such as a Ph.D. in agricultural formulations science or synthetic organic chemistry, thus, the level of skill is high. The level of unpredictability in the art of antifungal formulations is high. Using information provided in the prior art, one of ordinary skill in the art would not be able to readily predict which of the biopolymers embraced by the claim language would not be able to readily predict which substances would effectively inhibit signal transduction in a fungal pathogen. The field of inhibiting signal transduction in fungi is an area of active research. Chang discloses that global emergence of antifungal resistance threatens the limited arsenal of available treatments and emphasizes the urgent need for alternative antifungal agents (abstract). Song discloses that plant diseases caused by fungal phytopathogens have led to significant economic losses in agriculture worldwide. The management of fungal diseases is mainly dependent on the application of fungicides, which are not suitable for sustainable agriculture, human health, and environmental safety. Thus, it is necessary to develop novel targets and green strategies to mitigate the losses caused by these pathogens (abstract). However, signal transduction is highly complex in terms of the number of pathways involved as well as the potential for crosstalk among different recognized pathways (Lengeler, page 746). In view of the sheer number of potential targets, the unpredictability of drug design in general, and the danger of unexpected interactions among signaling pathways, the level of predictability in the art of inhibitors of fungal signal transduction is very high. Thus, although the level of ordinary skill in the art is high, the predictability and level of knowledge available in the prior art is very low. The bar for written description of the claimed genus of substances that effectively act as signal transduction inhibitors in fungi is therefore high.
As noted above, in order to satisfy the written description requirement under 35 USC 112(a), the original disclosure may provide a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant identifying characteristics, i.e. structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between structure and function, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus.
In the instant case, no examples, reduction to drawings, or disclosure of relevant identifying characteristics coupled to a known or disclosed correlation between structure and function has been provided.
The functional language recited in claim 1 claiming other antifungal agents that are “(1) inhibitors of the ergosterol synthesis;(2) inhibitors of the respiratory chain at complex I or II; (3) inhibitors of the respiratory chain at complex III; (4) inhibitors of the mitosis and cell division; (5) compounds capable of having a multisite action; (6) compounds capable of inducing a host defense; (7) inhibitors of the amino acid and/or protein biosynthesis; (8) inhibitors of the ATP production; (9) inhibitors of the cell wall synthesis; (10) inhibitors of the lipid and membrane synthesis; (11)inhibitors of the melanine biosynthesis; (12) inhibitors of the nucleic acid synthesis; (13) inhibitors of the signal transduction; (14) compounds capable of acting as uncoupler” appears to be merely a wish or plan for obtaining the invention as claimed, consistent with the patent at issue in University of Rochester vs. G.D. Searle & Co. In view of the foregoing the claims are rejected under 35 USC 112(a) as failing to satisfy the written description requirement.
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, 14, 16, 29, 33, 35-37, 39, 40, 53, and 54 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 1, line 9 recites "...a total weight of the composition...". This language renders the claim indefinite because it suggests that there could be greater than one total weight, raising the question of whether the entire amount of each substance in the composition is included in calculating the total weight used as the denominator in the percentage. Amending the claim to recite "the total weight" would obviate the rejection. This will not raise concerns over antecedent basis because any composition inherently possesses a total weight.
In claim 33 (k), the phrase “other organic matter” appears to be distinguishing the claimed organic matter from something else; however, the claim does not specify what is included or excluded by the phrase “other organic matter”. Therefore one having ordinary skill in the art cannot unambiguously ascertain the scope of the instant invention, as claimed.
Claim 37 recites the limitations “(1) inhibitors of the ergosterol synthesis;(2) inhibitors of the respiratory chain at complex I or II; (3) inhibitors of the respiratory chain at complex III; (4) inhibitors of the mitosis and cell division; … (7) inhibitors of the amino acid and/or protein biosynthesis; (8) inhibitors of the ATP production; (9) inhibitors of the cell wall synthesis; (10) inhibitors of the lipid and membrane synthesis; (11)inhibitors of the melanine biosynthesis; (12) inhibitors of the nucleic acid synthesis; (13) inhibitors of the signal transduction” throughout the claim. There is insufficient antecedent basis for this limitation in the claim.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Claim Rejections - 35 USC § 103
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.
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 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.
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, 3, 5, 9, 14, 16, 29, 33, 35-37, 39, 40, 53, and 54 are rejected under 35 U.S.C. 103 as being unpatentable over Sirvins et al. (FR2467547; publication year: 04/30/1981; citing the English machine translation; cited in the IDS filed 04/12/2024) in view of Ratts et al (US 3478154; issue date: 11/11/1969).
With regard to claim 1, Sirvins discloses that compounds according to the following formula have antifungal properties:
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R1 and R2 are preferably lower alkyls and R is an alkyl group having greater than 6 carbons, preferably C12, 16, and C18 and X is a halogen (see page 2). This corresponds to the trialkyl sulfonium chloride of general formula (A) recited in the instant claims because “lower alkyl” embraces instant R1 and R2 methyl groups and the range in number of hydrocarbons for R overlaps with the range recited in the instant claims for R3 of instant formula (A). Moreover, Sirvins specifically describes octadecyldimethylsulfonium ions (i.e. a compound wherein the corresponding elements of instant formula (A) are: R1 and R2 are -CH3 and n is 17, in the structure above page 2).
Sirvins discloses halogen salts but does not disclose a chloride salt of the trialkylsulfonium compounds.
Ratts, in the analogous art of alkyl sulfonium agents having antifungal properties (title, col 1) discloses that halogen salts for such compounds include chlorine in addition to bromine or iodine (col 1, lines 30-35).
It would have been prima facie obvious to one of ordinary skill to synthesize the chloride salt of the antifungal trialkyl sulfonium compounds disclosed by Sirvins because one having ordinary skill would have recognized chlorine as a member of the small genus of halogens, and therefore a suitable counterion. One having ordinary skill would also have realized from Ratts that sulfonium halides retain their fungicidal activity when chlorine is the halogen. See MPEP 2144.07.
With regard to claims 1 and 29, Sirvins is silent the amount of trialkyl sulfonium chloride; however, Ratts states “[t]he exact concentration of the fungicidal or insecticidal agents of this invention employed in combatting or controlling fungi or insects can vary considerably provided the required dosage (i.e. a toxic amount) is supplied to the respective organisms or environment, and provides a range of from 0.001 to 50% by weight in a liquid or 0.1 to 25% in a solid (col 8, lines 33-46). Thus, one having ordinary skill would have recognized that related compounds have varied efficacy depending upon the target, and it would have been merely a matter of routine for one of ordinary skill to test several concentrations to determine the optimal amount of the trialkyl sulfonium fungicide to treat a given fungal pathogen. See MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
With regard to claims 3 and 5, as noted above Sirvins discloses octadecyldimethyl sulfonium halide (i.e. n of instant general formula (A) = 17).
With regard to claims 9, 14, 33, 35, 53, and 54, Sirvins does not provide formulation details; however, Ratts provides guidance for formulating similar sulfonium fungicides for agricultural use (col 8). It would have been prima facie obvious to follow the guidance of Ratts in formulating Sirvin’s trialkyl sulfonium to treat pathogenic fungi in agriculture because one having ordinary skill would have recognized it to be suitable for this purpose. See MPEP 2144.07. More specifically, Ratts describes formulating the sulfonium fungicides in solid or liquid carriers such as aqueous solutions or emulsions (water as a carrier; limitation of instant claims 9, 14, and 53) and powdered clay or talc (i.e. a natural soil mineral; limitation of instant claims 9, 33, and 54). The compositions may contain typical additives including spreading agents and humectants (limitations of instant claim 35).
With regard to claims 36, 37, it would have been prima facie obvious to also include the fungicides disclosed by Ratts in the composition because these substances were known to serve the same purpose (see MPEP 2144.06). Ratts’ fungicides fall within the scope of “other fungicides”.
With regard to claims 39 and 40, Ratts discloses formulating sulfonium fungicides as concentrates that is mixed prior to use with water or solid extender (i.e. a pre-mix concentrate that is later combined to form an agricultural composition comprising the composition according to claim 1 and a diluent).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Sirvins et al. (FR2467547; publication year: 04/30/1981; citing the English machine translation; cited in the IDS filed 04/12/2024) and Ratts et al (US 3478154; issue date: 11/11/1969) as applied to claims 1, 3, 5, 9, 14, 16, 29, 33, 35-37, 39, 40, 53, and 54 above, and further in view of Crooks et al. (WO2019222813; publication date: 11/28/2019).
The relevant disclosures of Sirvins and Ratts are set forth above. Neither reference discusses the pH of the composition.
Crooks, in the analogous art of agrochemical compositions to be applied to plants or plant growth area, discloses that the pH of compositions should be adjusted such that they are suitable for application to plants (page 2, lines 8-11).
It would have been prima facie obvious to adjust the fungicidal composition of Sirvins/Ratts to have a pH compatible with plants. The artisan of ordinary skill would have been motivated to do so in order to ensure that the treatment to remove pathogenic fungi does not have the unintended side-effect of harming the plant it was intended to help. One would have had reasonable expectation of success because accounting for the effects of pH on a composition was routine as of the instant effective filing date.
Claims 1, 3, 5, 9, 14, 16, 29, 33, 35-37, 39, 40, 53, and 54 are rejected under 35 U.S.C. 103 as being obvious over Steinberg et al. (WO2020201698; publication date: 10/08/2020; available as prior art under 35 USC 102(a)(2): effectively filed date: 04/042019; cited in the IDS filed 04/112/2024).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Steinberg discloses a composition comprising octadecyldimethyl sulfonium chloride (pages 4-5; limitations of instant claims 1, 3, and 5) that may be in a solution, suspension, emulsion powder, granule etc. (i.e. contain a carrier; page 5; limitation of instant claim 9). With regard to claims 1 and 29, Steinberg discloses concentrations in amounts of from at least 0.1 pg/mL (page 5). This range overlaps with the range required by the instant claims as it has no upper limit on amount of trialkylsulfonium fungicide. See MPEP 2144.05. The composition may include a carrier having a solvent, which may be water (page 5; limitations of instant claims 9, 14, and 53) and may also comprise wetting agents, spreading agents, drift control agents, foaming agents, dyes, thickening agents, deposition agents (stickers), water conditioning agents, humectants, pH buffers, de-foaming agents, anti-foaming agents, UV absorbents, surfactants, oil carriers, crop oils, crop oil concentrates (COCs), vegetable oils, methylated seed oils (MSOs), petroleum oils, silicone derivatives, and nitrogen fertilizers (Steinberg, claim 7; limitations of instant claim 35). The composition may be in the form of granules or powders (pages 5 and 10). The carrier may contain a wax resin (i.e. “other organic matter”; page 10; limitations of instant claims 9, 33, and 54). Steinberg also discloses a C18 quaternary ammonium antifungal agent (i.e. an “other fungicide”; page 4; limitations of instant claims 36 and 37). It would have been prima facie obvious to combine the sulfonium and ammonium fungicides disclosed by Steinberg because both were known to serve the same purpose as of the instant effective filing date (see MPEP 2144.06). The composition can be buffered to a pH at which a specific antifungal agent is most active (page 6). It would have been prima facie obvious to adjust the pH of the composition to optimize efficacy in view of the guidance provided by Steinberg. For this reason, the examiner does not consider the range in pH recited in instant claim 16 to patentably define over the cited prior art. See MPEP 2144.05.
With regard to claims 39 and 40, as noted above, Steinberg discloses a range in concentration of the octadecyldimethylsulfonium compound as low as 0.1pg/mL, with no upper limit. The examiner considers the upper end of this range to embrace the claimed “pre-mix concentrate” and the lower end of the range to embrace the agricultural composition comprising the composition according to claim 1 and a diluent (e.g. the water and other adjuvants disclosed by Steinberg).
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.
Claims 1, 3, 5, 9, 14, 29, 35-37, 39, 40, and 53 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 14, 15, and 19 of copending Application No. 17600678 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia the claims of the ‘678 application embrace an antifungal composition comprising octadecyldimethyl sulfonium chloride dissolved or suspending in an aqueous carrier and comprising adjuvants selected from inter alia wetting agents, spreading agents, drift control agents, foaming agents, dyes, thickening agents, deposition agents (stickers), water conditioning agents, humectants, pH buffers, and further comprising an additional (i.e. other) antifungal agent, which the examiner considers to embrace more than one of the antifungal compounds of claim 1 of the ‘678 application. With regard to claims 1 and 29, the examiner considers it a matter of routine to optimize the amount of active agent to achieve the claimed antifungal effect. With regard to claims 39 and 40, the examiner notes that these claims do not require a specific amount of the composition of general formula (A), but rather recite an intended use (pre-mix concentrate) and effectively recite product by process language (a composition necessarily formed by combining the composition of instant claim 1 with a carrier). As it is obvious to optimize the amount of the antifungal agent to achieve the claimed effect of treating a fungal infestation, the examiner does not consider the limitations of instant claims 39 and 40 to patentably define over the invention claimed in the cited copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 33 and 54 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 14, 15, and 19 of copending Application No. 17600678 (reference application) as applied to claims 1, 3, 5, 9, 14, 29, 35-37, 39, 40, and 53 above and further in view of Ratts et al (US 3478154; issue date: 11/11/1969).
The relevant limitations of the ‘678 application are set forth above. The claims are silent with respect to the solid carriers required by claims 33 and 54.
Ratts describes formulating the sulfonium fungicides in solid carriers such as powdered clay or talc (i.e. a natural soil mineral; limitation of instant claims 9, 33, and 54).
It would have been prima facie obvious to formulate the trialkylsulfonium salts of the 678 claims as in a solid carrier comprising talc or clay because one of ordinary skill would have recognized this as routine practice as of the instant effective filing date. See MPEP 2143(A).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 14, 15, and 19 of copending Application No. 17600678 (reference application) as applied to claims 1, 3, 5, 9, 14, 29, 35-37, 39, 40, and 53 above and further in view of Crooks et al. (WO2019222813; publication date: 11/28/2019).
The relevant limitations of the ‘678 application are set forth above. The claims are silent with respect to the pH of the composition.
Crooks, in the analogous art of agrochemical compositions to be applied to plants or plant growth area, discloses that the pH of compositions should be adjusted such that they are suitable for application to plants (page 2, lines 8-11).
It would have been prima facie obvious to adjust the fungicidal composition of the ‘678 application to have a pH compatible with plants. The artisan of ordinary skill would have been motivated to do so in order to ensure that the treatment to remove pathogenic fungi does not have the unintended side-effect of harming the plant it was intended to help. One would have had reasonable expectation of success because accounting for the effects of pH on a composition was routine as of the instant effective filing date.
Claims 1, 3, 5, 9, 29, 36, 37, 39, and 40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 21-23, 33, 46, 78, 81, 82, 97, 100, 101, and 128 of copending Application No. 18029754 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘754 application embrace an composition comprising at least 0.01% by weight of octadecyldimethyl sulfonium chloride further comprising another antifungal agent (the examiner considers “another antifungal agent to embrace another fungicide) as a pre-mix concentrate or in a diluent, i.e. a carrier. With regard to claims 1 and 29, the range recited for amount of trialkyl sulfonium salt in the ‘754 application overlaps with or embraces the range recited in the instant claims. When prior art ranges overlap with the range recited in the instant claims, a prima facie case of obviousness exists (see MPEP 2144.05).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 14, 33, 35, 53, and 54 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 21-23, 33, 46, 78, 81, 82, 97, 100, 101, and 128 of copending Application No. 18029754 (reference application) as applied to claims 1, 3, 5, 9, 29, 36, 37, 39, and 40 above, and further in view of Ratts et al (US 3478154; issue date: 11/11/1969).
The relevant limitations of the ‘754 application are set forth above. The claims are silent with respect to the solid carriers required by claims 14, 33, 53, and 54 and are also silent with regard to the additives recited in instant claim 35.
Ratts provides guidance for formulating similar sulfonium fungicides for agricultural use (col 8). It would have been prima facie obvious to follow the guidance of Ratts in formulating the trialkyl sulfonium of the ‘754 application to treat pathogenic fungi in agriculture because one having ordinary skill would have recognized it to be suitable for this purpose. See MPEP 2144.07. More specifically, Ratts describes formulating the sulfonium fungicides in solid or liquid carriers such as aqueous solutions or emulsions (water as a carrier; limitation of instant claims 14, and 53) and powdered clay or talc (i.e. a natural soil mineral; limitation of instant claims 33, and 54). The compositions may contain typical additives including spreading agents and humectants (limitations of instant claim 35).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 14, 33, 35, 53, and 54 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 21-23, 33, 46, 78, 81, 82, 97, 100, 101, and 128 of copending Application No. 18029754 (reference application) as applied to claims 1, 3, 5, 9, 29, 36, 37, 39, and 40 above, and further in view of Crooks et al. (WO2019222813; publication date: 11/28/2019).
The relevant limitations of the ‘754 application are set forth above. The claims are silent with respect to the pH of the composition.
Crooks, in the analogous art of agrochemical compositions to be applied to plants or plant growth area, discloses that the pH of compositions should be adjusted such that they are suitable for application to plants (page 2, lines 8-11).
It would have been prima facie obvious to adjust the fungicidal composition of the ‘754 application to have a pH compatible with plants. The artisan of ordinary skill would have been motivated to do so in order to ensure that the treatment to remove pathogenic fungi does not have the unintended side-effect of harming the plant it was intended to help. One would have had reasonable expectation of success because accounting for the effects of pH on a composition was routine as of the instant effective filing date.
Claims 1, 3, 5, 9, 14, 16, 29, 33, 35-37, 39, 40, 53 and 54 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 8, 11, 16, 21, 22, 27, 34, 38, 43-46, 48, 52, 57, and 62-64 of copending Application No. 18286904 (reference application) in view of Ratts et al (US 3478154; issue date: 11/