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 .
Priority
The instant application, filed 12/20/2022, claims domestic priority to provisional U.S. Application no. 63/292,214 filed 12/21/2021.
Amendments and Claim Status
The amendment filed on 03/30/2026 is acknowledged and entered.
Claims 11, 26, and 27 are amended;
Claims 1-10, 12 are cancelled;
Claims 13-25 remain withdrawn according to 37 CFR § 1.142(b), as being drawn to a non-elected invention and species;
Claims 11 and 13-27 are pending.
Claim Interpretation
This application is subject to the following interpretation:
Claim 11 recites the limitation, “a seed treatment combination for controlling infestation by phytopathogenic fungi,” and further recites “wherein the phytopathogenic fungi is Rhizoctonia solani or Sclerotinia sclerotiorum.
According to the broadest reasonable interpretation set forth by MPEP § 2111.02 (I), these limitations are an intended use of the seed treatment combination. The courts have stated,
("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81.
Thus, the limitation drawn to set forth in the preamble is merely an intended use of the combination, and does not confer patentable weight to the claim itself.
Response to arguments
Applicant’s arguments filed 03/30/2026 with respect to the claim objections and claim rejections under 35 U.S.C. §§ 102 (a)(1) and 103 have been fully considered.
With respect to the objection of claims 26 and 27 for depending on a canceled claim, the amendments to the claims filed 03/30/2026 to amend the claims to depend on claim 11 are sufficient to overcome the grounds of the objection. However, the claims are objected to under a new ground, for using an improper claim status identifier. Therefore, a new objection is set forth, and the objection is maintained.
With respect to the rejection of claims 11 and 26 under 35 U.S.C. § 102 (a) (1) as being anticipated by Zhang (CN 102067862 A, published May 25, 2011), the claim amendments made by Applicant have necessitated the inclusion of a new reference. The arguments made by Applicant are herein addressed.
Applicant has amended the claim to include specific amounts of ipconazole and thiabendazole, removing the disclosure by Zhang from consideration as a prior art rejection under the original statute. As such, the rejection under 35 U.S.C. § 102 (a)(1) is overcome and hereby withdrawn.
However, Li et al. (Plant Disease, Volume 102, pages 1234-1239, published July 2018), hereinafter Li, teaches a seed treatment compositions wherein ipconazole is treated at dosages of 6, 12, and 24 g/ 100kg seeds, which overlap with the instant claims. Further Dababat et al (Nematropica, Vol 44, Article No. 1, published January 21, 2014), hereinafter Dababat teaches a seed treatment composition wherein Thiabendazole was applied at 25, 50, and 100 g/100 kg seed Thus, the teachings of the newly incorporated references meet all the limitations. As such the rejection is not overcome by amendment, and the claims are rendered obvious. A new rejection under 35 U.S.C. § 103 incorporating the teachings of Zhang combined with the teachings of Li and Dababat is set forth and included hereinafter.
Applicant argues that the claim amendments add structural limitations beyond the teachings of Zhang. Specifically, claim 11 requires ipconazole and thiabendazole is the only fungicidal actives, with specific seed-application amounts, and the phytopathogenic control Rhizoctonia solani or Sclerotinia sclerotiorum.
Applicant’s argument is unpersuasive because the intended use recited in the preamble is not given patentable weight. Under MPEP § 2111.02 (II), preamble language reciting purpose or intended use does not limit the claim.
("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81.
In other words, the combination is defined by its ingredients and amounts—and not by what organism it is used to control. The fungal target language is merely a recitation of intended use, and not given patentable weight. If the prior art structure is capable of performing the intended use, the prior art is capable of performing the claimed use, and thus, meets the claims, see MPEP § 2112.02.
Applicant further argues that example 20 of Zhang discloses formulation percentages, and not seed application amounts.
Applicant’s argument is found unpersuasive because formulation percentages are directly convertible to seed application amounts and are known to person of ordinary skill in the art. Furthermore, the teachings of Li and Dababat directly overlap with the instantly claimed ranges. As such, rejection under 35 U.S.C. § 102 (a)(2) is hereby converted to an obviousness rejection under 35 U.S.C. § 103, incorporating the additional teachings of Li and Dababat, and applied to the newly amended claims.
With respect to the rejection of claims 11, 26, and 27 under 35 U.S.C. § 103 as being unpatentable over Bruns et al. (NZ20030528889, published July 29, 2005), hereinafter Bruns, the claim amendments have removed the disclosure by Bruns from consideration as prior art.
As such, the rejection rendered moot and hereby withdrawn.
With respect to the rejection of claims 11 and 26, provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/087,353 (U.S. Publication No. 20230200392 A1), Applicant’s amendment of the instant claims have removed the overlapping subject material. Accordingly, the nonstatutory double patenting rejection is rendered moot, and hereby withdrawn.
Status of Claims
Claims 11 and 13-27 are pending in the instant application. Claims 13-25 are withdrawn from further consideration pursuant to 37 CFR § 1.142(b), as being drawn to a non-elected invention and species. Therefore, claims 11, 26, and 27 read on an elected invention and species and are therefore under consideration in the instant application.
Claim Objections
Claims 11, 26, and 27 are objected to for the following informalities:
Claim 11 currently recites:
“ipconazole, wherein the ipconazole is present in an amount ranging from 1 g/100 kg seeds to 10 g/100 kg seeds;”
This should be amended to recite:
“ipconazole, wherein ipconazole is present in an amount ranging from 1 g/100 kg seeds to 10 g/100 kg seeds”
“and (ii) thiabendazole, is present in an amount ranging from 1 g/100 kg seeds to 75 g/100 kg seeds”
This should be amended to recite:
“and (ii)thiabendazole, wherein thiabendazole is present in an amount ranging from 1 g/100 kg seeds to 75 g/100 kg seeds”
Claim 26 currently recites:
“The seed treatment of claim 11”
This should be amended to recite:
“The seed treatment combination of claim 11”
“wherein the ipconazole is present in an amount ranging from 1 g/100 kg seeds to 10 g/100 kg seeds;”
this should be amended to recite:
“wherein ipconazole is present in an amount ranging from 1 g/100 kg seeds to 10 g/100 kg seeds”
Claim 27 currently recites:
“wherein the thiabendazole is present in an amount ranging from 1 g/100 kg seeds to 75 g/100 kg seeds”
this should be amended to recite:
“wherein thiabendazole is present in an amount ranging from 1 g/100 kg seeds to 75 g/100 kg seeds”
Claims 26 and 27 are objected to for the following informalities:
According to MPEP § 714 II. C. (A), a proper identifier identifying the status of the claim, and reflecting the history of its presentation and amendment, must be present. The MPEP guidance states,
Claims added by a preliminary amendment must have the status identifier (new) instead of (original), even when the preliminary amendment is present on the filing date of the application and such claim is treated as part of the original disclosure. If applicant files a subsequent amendment, applicant must use the status identifier (previously presented) if the claims are not being amended, or (currently amended) if the claims are being amended, in the subsequent amendment. Claims that are canceled by a preliminary amendment that is present on the filing date of the application are required to be listed and must have the status identifier (canceled) in the preliminary amendment and in any subsequent amendment.
Presently, claims 26 and 27 are improperly designated as “Previously presented,” despite being reflected as amended on the claim set filed on 03/30/2026. The proper designation for these claims, is “Currently amended,” according to the above citation of the MPEP.
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 103
The text of those sections of title 35, U.S. Code not included in this action can be found in the prior Office action.
Claims 11, 26 and 27 are rejected under 35 U.S.C. § 103 as being unpatentable over by Zhang (CN 102067862 A, published May 25, 2011) in view of Li et al. (Plant Disease, Volume 102, pages 1234-1239, published July 2018), hereinafter Li, and further in view of Dababat et al (Nematropica, Vol 44, Article No. 1, published January 21, 2014), hereinafter Dababat.
The instant claims are drawn to a seed treatment composition for controlling fungal infestation in crops consisting of ipconazole and thiabendazole, wherein the ipconazole is present in an amount ranging from 1 g/100 kg seeds to 10 g/100 kg seeds, and wherein thiabendazole is present in an amount ranging from 1 g/100 kg seeds to 75 g/100 kg seeds.
Zhang teaches a combination product consisting of ipconazole as a demethylation inhibitor and thiabendazole as a b-tubulin assembly inhibitor (Abstract, claim 1) which exhibits a synergistic effect upon combination (paragraph [0172]). Zhang teaches a weight percentage of ipconazole to thiabendazole is 5-30%:10-50%of Zhang teaches a preferred embodiment, example 20, wherein the ratio of ipconazole to thiabendazole is 1:8.. The teachings of Zhang render obvious the species claimed, which create a synergistic mixture in the claimed invention. Finally, Zhang teaches wherein the composition may be used to treat seedling blight (paragraph [0037]).
Zhang fails to teach specific dosages of ipconazole and thiabendazole for use in seed treatment applications.
The deficiencies of Zhang are remedied by Li, who teaches the treatment of rice seeds with ipconazole at dosages of 6, 12, and 24g/100kg of seeds (Table 2, see instant claims 11 and 26), overlapping with the ranges of the claimed. Like Zhang, Li teaches that combinations which include ipconazole are synergistic in their actions (Abstract, page 1235).
Neither Zhang nor Li teach a specific dosage of thiabendazole to be used in seed treatment applications.
The deficiencies of Zhang and Li are remedied by Dababat, who teaches the use of thiabendazole in dosages of 25, 50, and 100 g/100 kg of seeds in a seed treatment application (Abstract, Figures 1-3, see instant claims 11 and 27). Dababat teaches that seed treatment with thiabendazole is effective at protecting the plant during seedling stages from infections (page 29).
A person having ordinary skill in the art prior to the effective filing date of the instant claims would have found it obvious to apply the teachings of Zhang in a composition comprising ipconazole and thiabendazole with the teachings of Li and Dababat, who provide guidance on specific dosages of each component, in order to develop a more effective composition for seed treatment. Li and Dababat provide experimentally tested and verified amounts which can be applied to the prior art teachings of Zhang, directly, thereby rendering the instant claims prima facie obvious.
Further regarding claim 11 wherein the composition is for controlling fungal infestation in crops by way of seed treatment, these are merely recitations of intended use of the composition. Furthermore, the claimed species are taught in the same amounts by the references. According to MPEP § 2112.01 (I), where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. The courts have stated
See In re Spada "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.").
Therefore, if the prior art structure is capable of performing the intended use, the prior art is capable of performing the claimed use, and thus, meets the claims.
Furthermore, Zhang specifically teaches the prior art has the following beneficial effects: (1) the effective active ingredient ipconazole and the effective active ingredient B in the composition of the present invention are two fungicides with different action mechanisms, and the two will not conflict with each other when mixed; (2) the composition of the present invention has a good synergistic effect within a certain range, the prevention effect is higher than that of a single agent, and the dosage is small; (3) the present invention does not use organic solvents, is not easy to cause phytotoxicity, and is convenient for transportation and storage; (4) the composition of the present invention expands the fungicide spectrum and has special effects on crop diseases such as rice blast, seedling blight, leaf mold, black spot, ring rot, leaf spot, anthracnose, black pox, powdery mildew, etc. (paragraph [0037]). Zhang further teaches determining the mycelium (which is fungus) growth inhibition rate for the combination, and more specifically the inhibition rate of apple ring rot fungus by the combination of ipconazole and thiabendazole (paragraphs [0143]-[0172]). Thus, Zhang specifically teaches that the combinations disclosed therein including ipconazole and thiabendazole are useful to treat fungal crop infections.
With respect to the claimed ranges, which “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). It is noted that the courts have stated
where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that,
“where 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). See MPEP § 2144.05 II.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art. Therefore, routine experimentation is considered prima facie obvious.
With respect to the limitation of a seed treatment composition for controlling fungal infestation by phytopathogenic fungi (Rhizoctonia solani or Sclerotinia sclerotiorum), it is noted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPTQ2d 1161, 1165 (Fed. Cir. 1999). Furthermore, it is respectfully pointed out that a recitation of an intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, since the prior art specifically renders obvious a combination comprising the same components as claimed in amounts that overlap with the amounts as claimed, the combination as taught in the prior art will necessarily be capable of: controlling fungal infestation by phytopathogenic fungi and seed treatment as claimed.
Therefore, all of the limitations of the instant claims are met by the references cited. In the interest of compact prosecution, the application of the aforementioned teachings to each of the individual claims is incorporated herein.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sophia P. Hirakis whose telephone number is +1 (571) 272-0118. The examiner can normally be reached within the hours of 5:00 am to 5:00pm EST, Monday through Friday.
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/SOPHIA P HIRAKIS/Examiner, Art Unit 1623
/KARA R. MCMILLIAN/Primary Examiner, Art Unit 1623
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