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 Objections
Claim 1 is objected to because of the following informalities: the term “and” should be recited between the first and second active components and between compounds II-1 and II-2. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 8-12 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 recites formula I in the fourth line. The claim is indefinite since it is not clear whether the structure in the fifth line is that of formula I and if not, it is not clear what formula I is.
Claim 8 recites the limitation "the soil or plant propagation material" in the third line. There is insufficient antecedent basis for this limitation in the claim. Neither claim 8 nor the claim from which claim 8 depends upon recite a soil or plant propagation material. Therefore, the scope of the soil or plant propagation material is unclear.
Claim 10 recites the limitation "the soil or plant propagation material" in the third line. There is insufficient antecedent basis for this limitation in the claim. Neither claim 8 nor the claim from which claim 8 depends upon recite a soil or plant propagation material. Therefore, the scope of the soil or plant propagation material is unclear.
Claim 10 recites the limitation "the pathogenic fungi" in the second line. There is insufficient antecedent basis for this limitation in the claim. Claim 10 recites a method for controlling phytopathogenic fungi. It is unclear whether the pathogenic fungi are referring to the phytopathogenic fungi or to another pathogenic fungi.
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.
Conclusion
Claims 1-4 and 8-12 are rejected.
No claims are allowable.
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