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 1-15 are currently pending. Claim 1 is independent.
Priority
Instant application claims priority as follows:
PNG
media_image1.png
46
586
media_image1.png
Greyscale
PNG
media_image2.png
62
586
media_image2.png
Greyscale
Election Requirement
Applicant’s election with traverse of species compound of formula
PNG
media_image3.png
102
240
media_image3.png
Greyscale
, found as the first compound in claim 6, in the reply filed on November 14, 2025 is acknowledged. Applicant’s traversed election of the species fluxapyroxad as component (2), is also acknowledged. Claims 1-15 appear to encompass both elected species.
The traversal is on the grounds that the present specification shows that the claimed combination produces an unexpected and synergistic fungicidal effect. Applicants also argue that no lack of unity of invention was raised during the international phase and that there wouldn’t be an undue burden on the examiner in examining all species.
The examiner must disagree for the following reasons: The Written Opinion of the ISA at page 5 states that “the subject matter of claims 1-15 does not involve an inventive step”. Whether a particular technical feature makes a “contribution” over the prior art, and therefore, constitutes a “special technical feature”, is considered with respect to novelty and inventive step (see MPEP 1850). Arguments that the search would not impose a serious burden on the Office are not germane to the showing of Lack of Unity
In addition, the USPTO is not bound by the determinations of the International Search Authority. The USPTO can, at any time before the final action, find that a national stage application lacks unity of invention and restrict the case accordingly. 37 CFR 1.499:
PNG
media_image4.png
159
617
media_image4.png
Greyscale
However, in view of the prior art found, the examiner is hereby withdrawing the election of species requirement. The election of species requirement is hereby withdrawn.
Examination
The compounds of Formula (I) as in claim 1 have been fully searched.
Specification Objections
The disclosure is objected to because of the following informalities:
The amendment filed on May 25, 2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “the contents of which are incorporated by reference herein”. See page 1.
MPEP 211.02(a) states that “When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a) ).”
PNG
media_image5.png
194
658
media_image5.png
Greyscale
The instant application is a 371 application which has an International filing date of November 29, 2021. The incorporation by reference statement is being added by way of a Preliminary Amendment filed on May 25, 2023, which is after the instant application’s International filing date. Therefore, the “incorporation by reference” statement being added is deemed new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 12-15 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.
Claims 12 and 13 are rejected as indefinite since they recite a product “for controlling or preventing agricultural crops and/or horticultural crops against diseases caused by …”. It appears that the claims are attempting to limit a product based on a particular application without setting forth any active method steps. See MPEP 2173.05(q):
“Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
In addition, if product claims 12-13 would claim method steps of using the product, a single claim which claims both a product and the method steps of using the product is indefinite (see MPEP 2173.05(p)II).
Claim 14 recites “use of agrochemical composition” without an active step. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP 2173.05(q).
Claim 15 recites the limitation "
PNG
media_image6.png
22
426
media_image6.png
Greyscale
". There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the case that claims 12 and 13 are claiming an intended use, the claims are drawn to a product, and an intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. In the instant case, the intended use does not create a structural difference and the body of the claim does not depend on the intended use for completeness but rather can stand alone. Consequently, the intended use is not limiting. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 14 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to a “use” per se. The claimed recitation of a use, without reciting any active steps, results in a claim which is not a proper process claim under 35 U.S.C. 101. See MPEP 2173.05(q).
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 1-13 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 7, 9, of copending Application No. 17/310,038 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the compositions comprising the species of instant claim 6 (which read on all pending claims) and the additional active fungicide, herbicide, etc., were covered by claims 4, 7 and 9 of the reference application and would have been obvious in view of claims 4, 7 and 9 of the copending application. Regarding the method for controlling infestation of useful plants by pathogenic fungi of instant claim 15, this would have been found obvious from the methods for controlling phytopathogenic microorganisms and fungi from copending claims 10-19.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Copending claim 4 recites:
PNG
media_image7.png
52
660
media_image7.png
Greyscale
PNG
media_image8.png
232
656
media_image8.png
Greyscale
and at page 11:
PNG
media_image9.png
59
654
media_image9.png
Greyscale
, within others.
Copending claims 7 and 9 claim compositions comprising the compound of formula (I) and one or more active compounds as follows:
PNG
media_image10.png
114
656
media_image10.png
Greyscale
; and
PNG
media_image11.png
174
660
media_image11.png
Greyscale
The compounds underlined above are compounds of claim 6 of this application, and were claimed and covered by the copending claims. These are the compounds comprised in the compositions of copending claims 7 and 9, which contain the additional active compatible compound selected from fungicides, etc.
Ascertainment of the difference between the copending claims and the instant claims (MPEP §2141.02)
The copending claims do not recite that the second active compound referred to as component (2) in the instant claims is selected from the group of (A) to (R), such as fluoxapyroxad of group (B).
Additionally, for claims 10-11, the copending claims do not recite further comprising agriculturally acceptable additives.
Finding of prima facie obviousness--rational and motivation. (MPEP §2142-2413)
The additional active compatible compound selected from fungicides, etc., that are covered by the combination compositions of copending claims 7 and 9 were exemplified at paragraphs [0344] and [0345]:
PNG
media_image12.png
162
356
media_image12.png
Greyscale
PNG
media_image13.png
116
356
media_image13.png
Greyscale
Taken from the second active compound (A) to (O) incorporated from the reference:
PNG
media_image14.png
62
642
media_image14.png
Greyscale
Note all the second active compounds (A) to (O) taught by the prior art at pages 76-90.
It would have been prima facie obvious to one of ordinary skill in the art to select any of the second active components (A) to (O), including fluxapyroxad, from the disclosure of the invention claimed in the copending application and to combine them with the particular exemplified and claimed compounds of the copending claims since these are the embodiments that provide support to and fall within the scope of claims 7 and 9 of the copending application.
This rejection is proper under MPEP 804 II. B. 2. (a):
Further, those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized "that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim," but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. According to the court, one must first "determine how much of the patent disclosure pertains to the invention claimed in the patent" because ONLY "[t]his portion of the specification supports the patent claims and may be considered." The court pointed out that "this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined." In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014), the court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
Regarding instant claims 10-11, it would have been prima facie obvious to include agriculturally acceptable additives, such as solvents or diluents, in the agricultural compositions of the copending claims 7 and 9 because this is what is done in the agrochemical arts. Specific examples of auxiliaries and solvents to be selected were present in the reference application disclosure (at least paragraph [0256]).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-15 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-4:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621