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 .
Priority
The instant application is the national stage entry of PCT/IB2021/057761 filed 24 August 2021. Acknowledgement is made of the Applicant’s claim of domestic priority to provisional application 63/069,526 filed 24 August 2020.
Election/Restrictions
Applicant’s election of Group I (claims 121-129) in the reply filed on 26 January 2026 is acknowledged.
Claims 130-140 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 26 January 2026. The traversal is on the grounds that the prior art cited to break unity, Szalay is not prior art based on its filing date. Applicant further argues that there is no support for the cited compound in the priority document of Szalay with the filing date of 11 December 2019. The Examiner agrees and points to Endo et al. (J Antibio. 38(5), 1985, 599-604). Endo teaches octyl pentanedioic acid (below) as well as related pentenedioic acid compounds (pg 602). Endo teaches that these actives are structurally related and have similar inhibitory activity (pg 603, discussion). Therefore, it would have been obvious to modify the octyl pentanedioic acid to comprise a penteneoic acid and expect similar activity.
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The requirement is still deemed proper and is therefore made FINAL.
Applicant’s election of species (E/Z)-2-octyl-2-pentenedioic acid in the reply filed on 26 January 2026 is acknowledged. It is noted that this species, in the context of the claimed method, appears to be free of the art. As such, examination has shifted to alternative species of the claimed invention.
Status of the Claims
Claims 121-140 are pending.
Claims 130-140 are withdrawn.
Claims 121-123 and 126-129 are rejected.
Claims 124-125 are allowable.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries 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 121-122 and 126-129 are rejected under 35 U.S.C. 103 as being unpatentable over Iwata et al. (US 2014/0371288).
Iwata teaches providing a plant disease control composition having excellent control effect against plant diseases [0003]. The compounds of Iwata are taught as being pesticidally acceptable salts, thus implying use as a pesticide [0014]. Iwata teaches synthetic compound 27, which reads on the Markush structure of instant claims 121-122 and 126 wherein claimed R1 is C1 and claimed R2 is C1-CONHR wherein R is then an alkyl group [0016].
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The above compound can be used from 0.1-100% by weight [0022] and can be applied directly to the plants or to the soil in which plants are grown, thus implying application prior to sowing seeds as required in instant claim 128 [0026]. One of the diseases that can be treated or controlled is from Botrytis cinerea, or gray mold [0034], as required in instant claims 127 and 129.
Iwata does not teach applying compound 27 to a plant locus to treat a pest infestation.
It would have been prima facie obvious to prepare compound 27 of Iwata and use it in a method for treating or controlling Botrytis cinerea in plants or soil where plants are grown. It would have further been obvious to apply the agent in amounts of from 0.1-100% directly to the plant or the soil. By applying directly to the plant or soil, the skilled artisan would necessarily be treating a locus against pest infestation. As such, claims 121-122 and 126-129 are rejected as obvious over the prior art.
Claims 121-123 and 126-129 are rejected under 35 U.S.C. 103 as being unpatentable over Rendina et al. (Pestic Sci 55:236.247 (1999)) as evidenced by WeedingTech (https://www.weedingtech.com/blog/herbicides-and-pesticides-whats-the-difference/).
Rendina teaches using novel herbicides that may be useful for treating plants and targeting the biotin biosynthetic pathway (abstract; pg 236, ¶1). One suitable agent taught by Rendina is the synthetically prepared compound 16 as the HCl salt (pg 238, Table 3), which reads on the Markush structure of instant claims 121-123 and 126.
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Rendina does not teach applying the compounds to plants for the purpose of treating a pest infestation.
Weedingtech teaches that herbicides are a species of pesticide (pg 2).
It would have been prima facie obvious to prepare the herbicide agent of Rendina, which reads on the Markush of instant claims 121-123 and 126, and use it as a pesticide, since an herbicide is a type of pesticide. Although Rendina only hypothesizes treating a plant using their herbicide, it would have been obvious to apply the compound of Rendina to an actual plant or crop for use as a pesticide at any point in the plant lifecycle so as to limit the unwanted pests, as required in instant claims 127-129. As a result of application to the plant, the skilled artisan would necessarily achieve the result of controlling a fungal attack and improving the plant health, as recited in claim 129.
Allowable Subject Matter
Claims 124-125, which are towards specific species of the compound of Formula I, are free of the art as pertaining to a method of treating a pest infestation. As such, claims 124-125 would be allowable if written as an independent claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613
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