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 .
Claim Status
Claims 1-4 and 8-12 are rejected.
No claims are allowed.
Maintained Claim Objections
Claim 1 is objected to because of the following informalities: the term “and” should be recited between the first and second active components. Appropriate correction is required.
Response to Applicant’s Arguments
Applicant argues that amendments to claim 1 overcome the previous objection.
Applicant’s argument has been fully considered but found not to be persuasive. Applicant has not inserted “and” between the first and second active components.
Maintained 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.
1. Claims 1-2, 4, and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Loy et al., (US 11,155,520 B2, filed March 08, 2019) (hereinafter Loy) in view of Hoffman et al., (WO 2018/177894 A1, Oct. 04, 2018) (cited by applicant on IDS 07/10/2023) (hereinafter Hoffman).
Loy discloses picolinamides of Formula I and their use as fungicides (Abstract). Formula I includes the formula:
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, and any enantiomers or diastereomers thereof (i.e., [(1 S,2S)-1 -methyl-2-(o-tolyl)propyl] (2S)-2-[(4-methoxy-3- propanoyloxy-pyrid ine-2-carbonyl)am ino]propanoate of the instant formula
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) (Claim 1). Preferably, the compounds are applied in the form of a formulation, comprising one or more of the compounds of Formula I with a phytologically acceptable carrier, such as a liquid (col 3, lines 28-32). The compound can be used in a method for the control prevention of fungal attack on a plant, the method including the steps of applying a fungicidally effective amount of one or more of the compounds described above to at least one of the fungus, the plant, and an area adjacent to the plant (col 2, lines 17-21). The compounds have broad ranges of activity against fungal pathogens (col 11, lines 62-63) including but not limited to, causing agent of rust of soybean (Phakopsora pachyrhizi) (i.e., phytopathogenic fungi) (col 12, lines 2-3). The compounds are used in an amount of that kills or inhibits the plant disease for which control is desired, but is not significantly toxic to the plant, generally be from about 0.1 to about 1000 ppm (parts per million), with 1 to 500 ppm being preferred. The exact concentration of compound required varies with the fungal disease to be controlled, the type of formulation employed, the method of application, the particular plant species, climate conditions, and the like (col 12, lines 21-29). The compounds may also be combined with other fungicides to form fungicidal mixtures and synergistic mixtures thereof to control a wider variety of undesirable diseases (col 5, lines 61- 66) such as tebuconazole (col 6, line 66).
Loy differs from the instant claims insofar as not disclosing wherein the compound is combined with N-methoxy-N-[[4-[5-(trifluoromethyl)-1 ,2,4-oxadiazol-3- yl]phenyl]methyl]cyclopropanecarboxamide of the formula
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, .
However, Hoffman discloses a fungicidal composition comprising a mixture of components (A) and (B) as active ingredients (Claim 1), wherein component (A) is N-methoxy-N-[[4-[5-(trifluoromethyl)-1 ,2,4-oxadiazol-3-yl]phenyl]methyl]cyclopropanecarboxamide (compound X.01) (Claim 2). Table X shows compound X.01 with the structure
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(top of page 4). The compounds of Formula (I) (including any one of compounds X.01 to X.25) may be used in controlling or preventing phytopathogenic diseases, especially phytopathogenic fungi (such as Phakopsora pachyrhizi) on soy bean plants (page 36, lines 29-32).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Loy discloses wherein the fungicidal composition comprises other fungicides. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated N-methoxy-N-[[4-[5-(trifluoromethyl)-1 ,2,4-oxadiazol-3- yl]phenyl]methyl]cyclopropanecarboxamide of the formula
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into the composition of Loy since it is a known and effective fungicide as taught by Hoffman.
Regarding the limitation of claim 9 reciting “wherein the mixture is applied in an amount of from 0.01 g to10 kg per 100 kg of plant propagation material,” as discussed above, Loy teaches wherein the exact concentration of compound required varies with the fungal disease to be controlled, the type of formulation employed, the method of application, the particular plant species, and climate conditions. Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art through routine optimization to have arrived at the claimed application amount depending on the fungal disease to be controlled, the type of formulation employed, the method of application, the particular plant species, and climate conditions, as taught by Loy.
2. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Loy et al., (US 11,155,520 B2, filed March 08, 2019) (hereinafter Loy) in view of Hone et al., (WO 2019/158476 A1, Aug. 22, 2019) (cited by applicant on IDS 07/10/2023) (hereinafter Hone).
The teachings of Loy are discussed above, but Loy does not teach wherein the compound is combined with N-[2-(2,4-dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine- 3-carboxamide of formula
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.
However, Hone discloses crystalline forms of N-[2-(2,4-dichlorophenyl)cyclobutyl]-2- (trifluoromethyl)pyridine-3-carboxamide of formula (I), compositions comprising said crystalline forms and methods of their use as fungicides (Abstract). Formula(I) is:
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(Claim 1).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Loy discloses wherein the fungicidal composition comprises other fungicides. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated N-[2-(2,4-dichlorophenyl)cyclobutyl]-2- (trifluoromethyl)pyridine-3-carboxamide of formula
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into the composition of Loy since it is a known and effective fungicide as taught by Hone.
3. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Loy et al., (US 11,155,520 B2, filed March 08, 2019) (hereinafter Loy) in view of Hoffman et al., (WO 2018/177894 A1, Oct. 04, 2018) (cited by applicant on IDS 07/10/2023) (hereinafter Hoffman) and further in view of Pedersen, (WO 2007/028387 A1, March 15, 2007) (hereinafter Pedersen).
As discussed above, Loy and Hoffman make obvious the limitations of claims 1 and 10-11 but do not teach use of the composition for controlling P. meibomiae on soybeans.
However, Pedersen discloses concentrated liquid formulations comprising triazole fungicides for the control of harmful fungi (Abstract). Tebuconazole is a suitable triazole fungicide (page 5, line 10). The formulations are effective in controlling Phakopsora meibomiae (page 12, line 20).
Loy discloses wherein the composition comprises tebuconazole, as discussed above. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to use the composition of Loy for controlling P. meibomiae on soybeans, as tebuconazole is effective for controlling Phakopsora meibomiae, as taught by Pedersen.
Response to Applicant’s Arguments
Applicant argues that they have surprisingly found that the fungicidal effects of the claimed binary mixture can be increased synergistically. The data in the present specification clearly show an unexpected synergistic effect of the claimed mixture. This effect could not have been predicted from the prior art.
The Examiner does not find Applicant’s argument to be persuasive. It is not apparent from Applicant’s showing that Compound I with Compound II-1 or Compound II-2 are synergistic. Applicant argues that synergy was determined using the well-known and long-used Colby formula and a synergistic effect is shown by a comparison of observed efficacy versus calculated efficacy. However, it is not clear how a comparison of observed efficacy versus calculated efficacy shows synergism. It is unclear what needs to be shown in the comparison to show synergism occurring. The specification provides no explanation. Also, Compound I, Compound II-1, and Compound II-2 each alone do not have calculated efficacy values. Thus, if Applicant is arguing that synergism is shown by having a calculated efficacy according to Colby (%) value, Applicant’s argument is unpersuasive since the specification discloses on page 16, lines 29-30 wherein an efficacy of 0 means that the infection level of the treat plants corresponds to that of the untreated control plants and an efficacy of 100 means that the treated plants were not infected. Thus, it is unclear how each of those compounds do not have a calculated efficacy value since they have to be either be ineffective and have a value of zero or effective and have a value greater than zero. Moreover, the specification does not provide the Colby formula. Therefore, it is unclear how the formula relates to efficacy or even to synergism. As such, since Applicant’s showing has a lot of ambiguity, Applicant has not shown wherein the claimed invention is unexpected by being synergistic and Applicant’s argument is unpersuasive.
Furthermore, purely arguendo, even if Applicant’s showing was probative of unexpected results, claim 1 would not be commensurate in scope with the showing. Claim 1 does not recite any amounts for the active components. Loy teaches that the disease-inhibiting and phytologically acceptable amount of compound I will generally be from about 0.1 to about 1000 ppm (parts per million) (col 12, lines 19-24). The compounds of Hoffman are used in combination in a weight ratio of from 100: 1 to 1 :100. 8 (Claim 7). Thus, because the prior art teaches that the fungicide must be present in a specific amount to be disease-inhibiting and phytologically acceptable and that specific weight ratios are necessary when used in combination, one of ordinary skill in the art would not reasonably expect any and all amounts of the compounds to result in a fungicidal effect and synergy.
Applicant argues that Hone fails to remedy the deficiencies of Loy in view of Hoffman.
Applicant’s argument has been fully considered but found not to be persuasive because
Applicant’s arguments against Loy in view of Hoffman were not persuasive.
Applicant argues that Pedersen fails to remedy the deficiencies of Loy in view of Hoffman.
Applicant’s argument has been fully considered but found not to be persuasive because
Applicant’s arguments against Loy in view of Hoffman were not persuasive.
For the foregoing reasons, the rejections have been maintained.
Conclusion
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 Samantha J Knight whose telephone number is (571)270-3760. The examiner can normally be reached Monday - Friday 8:30 am to 5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.J.K./ Examiner, Art Unit 1614
/TRACY LIU/ Primary Examiner, Art Unit 1614
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