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 .
Status of Claims
Receipt of Remarks/Amendments filed on 12/08/2025 is acknowledged. Claims 1-10 and 13 are amended and claims 11-12 are canceled. Claims 13-25 are new. Claims 1-10 and 13-25 are currently pending and are examined on the merits herein.
Priority
The instant application filed 05/08/2023, is a 371 filing of PCT/EP2021/080952, filed 11/08/2021, which claims foreign priority to EP20210118.4, filed 11/26/2020, and EP20206502.5, filed 11/09/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/08/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
Any limitation following the recitation of “optionally” will be interpreted as not being required.
Withdrawn Objection/Rejections
Claim 3 was objected to because of informalities. Applicant’s amendments to claim 3 have overcome the rejection and the rejection is withdrawn.
Claims 2, 5-6, 8-10, and 13 were rejected under 35 U.S.C. 112(b) for being indefinite. Applicant’s amendments to claims 2, 5-6, 8-10 have overcome the rejection and the rejection is withdrawn.
Claims 11-12 were rejected under 35 U.S.C. 112(b) for being indefinite. Applicant’s cancellation of claims 11-12 has rendered the rejection moot and the rejection is withdrawn.
Claim 9 was rejected under 35 U.S.C. 112(d) for improper dependency. Applicant’s amendments to claim 9 have overcome the rejection and the rejection is withdrawn.
Claims 12-13 were rejected under 35 U.S.C. 101 for reciting a use. Applicant’s cancellation of claim 12 and amendment’s to claim 13 have overcome the rejection and the rejection is withdrawn.
Claims 1-13 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Winter as evidenced by Hoekstra. Applicant’s amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
The following rejections are maintained or new as necessitated by amendment:
Claim Rejections - 35 USC § 112(b)
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 3-4 and 20 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 3 and 4 recite various percent amounts. It is unclear what the percentages are based on. For example, are they all % by weight based on the total weight of the composition or are they all % by weight based on total volume or else. For the sake of compact prosecution the percentages will all be interpreted as % by weight based on the weight of the total composition.
Claim 20 recites “the method according to claim 18”. Claim 18 is a composition claim making it unclear what method is being referred to. For the sake of compact prosecution the Examiner is interpreting the claim to be drawn to the method according to claim 19.
Claims 18 and 20 are rejected by virtue of dependency on claim 4.
Claim Rejections - 35 USC § 112(d)
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.
Claim 20 is 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. Claim 20 recites “the method according to claim 18”. Claim 18 is not drawn to a method but rather a concentrated composition. 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. For the sake of compact prosecution the claim will be assumed to be a typographical error and will be interpreted as the method according to claim 19.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-10, 13-14, and 16-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lutz, et al., (WO 2021209360 A1, published 10/21/2021 with effective filing date of 02/06/2020, PTO-892), hereinafter Lutz.
Lutz discloses fungicidal mixtures comprising at least one substituted 3-phenyl-5-(trifluoromethyl)-1,2,4-oxadiazoles (compounds I) and at least one active compound II and methods for controlling phytopathogenic harmful fungi, comprising treating the fungi, their habitat or the seed, the soil or the plants (abstract).
Active compound I may be N-(2-fluorophenyl)-4-[5-(trifluoromethyl)-1 ,2,4-oxadiazol-3-yl]benzamide (I-1) or N-methyl-4-[5-(trifluoromethyl)-1,2,4-oxadiazol-3-yl]benzenecarbothioamide (I-2), both of which read on (B) of instant claim 1.
Active compound II may be II-13 which has the following structure:
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;
II-14, which has the following structure:
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591
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;
or II-15, which has the following structure:
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589
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. Each of these structures (II-13, II-14, and II-15) read on (A) of instant claim 1.
Binary mixtures of the above compound I and compound II are taught in Table M. Examples M.61 through M.75 and M.241 through M.255 disclose different mixtures of I-(1/2) with II-(13/14/15) at various weight ratios (p. 11-14). Such mixtures read on the composition of claim 1. The recitation of “for control of disease caused by phytopathogens” is simply an intended use which the composition of Lutz would be inherently capable of performing. Regardless, Lutz explicitly teaches its compositions as useful for this purpose.
Regarding claim 2, the binary mixtures of Table M above, may additionally comprise at least one further active compound III as component 3), resulting in a ternary mixture. Preferably, the active components in these mixtures are present in a synergistically effective amount (p. 16, lines 6-11). The binary or ternary mixtures of active compounds can be prepared as compositions comprising besides the active ingredients at least one inert ingredient (auxiliary) such as solvents or solid carriers (p. 26, lines 28-37; claim 8). Such a composition reads on a fungicidal composition comprising a fungicidally effective amount of the mixture above (I + II), a suitable carrier, and optionally, an additional pesticide (i.e., component 3).
Regarding claim 3, the agrochemical compositions particularly comprise between 10 and 60%, by weight of active substance (p. 26, lines 39-41). Such a range falls within the instantly claimed range of an active agent. A composition comprising 10 to 60% by weight of actives would inversely comprise 40 to 90% by weight of auxiliaries selected from those taught by Lutz above. Such a range reads on the instantly claimed range of solid or liquid formulation inerts and adjuvants. A surfactant is not explicitly required by instant claim 3 given that it may be present at 0% by weight. As discussed above, the actives comprise mixtures of compounds I and II, which read on instantly claimed (A) and (B).
Regarding claims 4 and 18, the agrochemical composition above which comprises 10 to 60% by weight of active substance also reads on a concentrated composition wherein the active agent is mixtures of compounds I and II, which read on instantly claimed (A) and (B). The recitation of “for dilution by user” is simply an intended use which the agrochemical composition of Lutz would be inherently capable of performing. Regardless, Lutz explicitly teaches diluting the compositions of the invention to provide ready-to-use preparations (p. 27, lines 1-4). The 10 to 60% falls within the instantly claimed ranges.
Regarding claim 5, the agrochemical compositions according to Lutz are systemically effective and can be used in crop protection as fungicides for seed dressing (p. 5, lines 19-21). The auxiliaries discussed above read on diluents. For the purposes of treatment of plant propagation materials, particularly seeds, various formulations are employed and used after two-to-tenfold dilution (p. 26-27, lines 43-4), further reading on a seed dressing formulation comprising a diluent.
Regarding claim 6, the binary and ternary mixtures of Lutz may be converted into customary types of agrochemical compositions, such as capsules (e. g. CS, ZC), (p. 26, lines 14-18).
Regarding claims 7-10, 13, 16, and 19, Lutz discloses methods for controlling phytopathogenic harmful fungi, comprising treating the fungi, their habitat or the seed, the soil or the plants to be protected against fungal attack with an effective amount of mixtures comprising compounds I and compounds II (abstract; claim 14). Specifically, the mixtures may be used for controlling phytopathogenic harmful fungi on soybeans, such as Phakopsora pachyrhizi (i.e., rust disease) (claims 11-12; Ex. B.I). The ready-to-use preparations are prepared by dilution (p. 27, lines 1-4), for example with water or a mixture of acetone and/or dimethyl sulfoxide (Examples A and B).
Regarding claim 14, component 3) is at least one active compound selected from various pesticides such as: copper(ll) oxychloride, copper(ll) hydroxide, copper sulfate, mancozeb, prothioconazole, fluxapyroxad, etc. (p. 16, lines 20-29), all of which read on the instantly claimed additional pesticides.
Regarding claim 17, the composition taught by Lutz is identical to the composition of instant claim 1. Thus, it inherently possesses the ability to control diseases caused by phytopathogens such as those recited in claim 17. Regardless, Lutz explicitly teaches its compositions as useful against Phakopsora pachyrhizi (claims 11-12; Ex. B.I) and Septoria tritici (Ex. A.II).
Claims 21-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Winter, C. H., et al. (BR 102019028250 A2, translated and untranslated copy provided, 07/14/2020, on record), hereinafter Winter as evidenced by Hoekstra , W. J., et al. (WO 2016187201 A2, 11/24/2016, on record), hereinafter Hoekstra.
Winter teaches fungicide mixtures, pesticide compositions, and the use of the mixture and methods to control phytopathogenic pests. The fungicidal mixtures comprise as active components (I) a compound of the formula I and (II) a fungicidal compound II (abstract). Formula I is defined as:
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, wherein R1 may be:
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and R2 may be CH3, R3 and R3’ may be H, R4 may be a 6-membered aryl, R5 may be. -C(=O)CH3, and W may be O ([001]).
More specifically, component (I) may be further defined as component I-14: ((1S,2S)-1-methyl-(2S)-2-[(4-methoxy-3-propanoyloxy-pyridine-2-carbonyl)amino]propanoate 2-(o-tolyI)propyl] ([022]), which reads on (A) of claim 21. Component (II) may be 4-[[6-[2-(2,4-difluorophenyl)-1,1-difluoro-2-hydroxy-3-(5-sulfanyl-1,2,4-triazol-1-yl)propyl]-3-pyridyl]oxy]benzonitrile ([006]).
A table illustrates several two-way synergistic mixtures which include:
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975
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(p. 26-27 of untranslated reference).
The 4-[[6-[2-(2,4-difluorophenyl)-1,1-difluoro-2-hydroxy-3-(5-sulfanyl-1,2,4-triazol-1-yl)propyl]-3-pyridyl]oxy]benzonitrile of Winter appears to differ from the instantly claimed compound of 4-[[6-[2-(2,4-difluorophenyl)- 1,1 -difluoro-2-hydroxy-3-(5-thioxo-4H- 1,2,4-triazol-1-yl)propyl]-3- pyridyl]oxy]benzonitrile in that the compound of Winter has a sulfanyl group (-SH) at the 5 position of the triazole ring while the instantly claimed compound has a thioxo group (=S) at position 5.
Hoekstra teaches 4-((6-(2-(2,4-difluorophenyl)-1 ,1-difluoro-2-hydroxy-3-(5-thioxo-4,5-dihydro-1 H-1 ,2,4- triazol-1 -yl)propyl)pyridin-3-yl)oxy)benzonitrile with formula (I):
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948
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,
where R1 is represented by formula (III)
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([0052]). Formula (I)(III) of Hoekstra appears to be the same as the instantly claimed compound of 4-[[6-[2-(2,4- difluorophenyl)- 1,1 -difluoro-2-hydroxy-3-(5-thioxo-4H- 1,2,4-triazol-1-yl)propyl]-3- pyridyl]oxy]benzonitrile. Hoekstra further teaches that the compounds of its invention may also be present in multiple tautomeric forms and where one or more tautomeric forms exist, the invention expressly includes all such tautomeric forms. For example, compounds of the invention in which R1 is of formula (III) may exist in different tautomeric forms and references one compound includes all such forms. The tautomeric forms of the compound in which R1 is formula (III) are shown in formula (IV) and (V) ([0059]):
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588
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520
613
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.
Thus, Hoekstra provides evidence that the sulfanyl compound of Winter, corresponding to (V) above, will also exist in its tautomeric form, which is the thioxo compound as instantly claimed, corresponding to (IV) above.
Thus, the 4-[[6-[2-(2,4-difluorophenyl)-1,1-difluoro-2-hydroxy-3-(5-sulfanyl-1,2,4-triazol-1-yl)propyl]-3-pyridyl]oxy]benzonitrile of Winter will also exist in its tautomeric form: 4-[[6-[2-(2,4- difluorophenyl)- 1,1 -difluoro-2-hydroxy-3-(5-thioxo-4H- 1,2,4-triazol- 1 -yl)propyl]-3- pyridyl]oxy]benzonitrile, which reads on (B) of claim 21.
Winter further teaches that the weight ratio of compound (I), corresponding to (A), and compound (II), corresponding to (B), in the mixtures is most preferably 20:1 to 1:20, which also includes ratios from 10: 1 to 1:10, 1: 5 to 5: 1, or 1: 1 ([019]). The range of 20:1 to 1:20 falls within the instantly claimed range of claim 21 (i.e., 20:1 to 1:50). The exemplary ratio of 1:1, which constitutes a specific embodiment, falls within the instantly claimed ranges of claim 22-24.
Thus, the mixture of Winter taught above reads fully on the composition of claim 21-24. The recitation of “for control of disease caused by phytopathogens” is simply an intended use which the composition of Winter would be inherently capable of performing. Regardless, Winter explicitly teaches its compositions as useful for this purpose.
Regarding claim 25, Winter teaches its composition as useful for controlling harmful phytopathogenic fungi in soy (claim 12), specifically Phakopsora pachyrhizi and P. meibomiae (i.e., soybean rust) (claim 13; [054]). The method for controlling phytopathogenic pests is characterized by treating the pest, its habitat, breeding areas, its location or the plants to be protected against pest attack, the soil or plant propagation material with an effective amount of the mixture (claim 14; [050]).
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 1-10, 13-14, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Lutz, et al., (WO 2021209360 A1, published 10/21/2021 with effective filing date of 02/06/2020, PTO-892), hereinafter Lutz in view of Winter, C. H., et al. (BR 102019028250 A2, translated and untranslated copy provided, 07/14/2020, on record), hereinafter Winter.
The teachings of Lutz are discussed above.
As discussed above in regards to claim 6, the binary and ternary mixtures of Lutz may be converted into customary types of agrochemical compositions, such as capsules (e. g. CS, ZC) (p. 26, lines 14-18).
The teachings of Lutz differ from that of the instantly claimed invention in that Lutz does not explicitly teach a slow release capsule or a microcapsule as recited in claim 15
Winter teaches fungicide mixtures, pesticide compositions, and the use of the mixture in methods to control phytopathogenic pests. The fungicidal mixtures comprise as active components (I) a compound of the formula I and (II) a fungicidal compound II (abstract). Component (I) may be further defined as component I-14: ((1S,2S)-1-methyl-(2S)-2-[(4-methoxy-3-propanoyloxy-pyridine-2-carbonyl)amino]propanoate 2-(o-tolyI)propyl] ([022]), which is the same as II-14 of Lutz. The pesticide compositions of Winter may be prepared as microcapsules (CS) comprising the fungicidal mixture. Winter also teaches methods of producing said microcapsules through radical polymerization ([039]).
Thus, it would have been prima facie obvious to one or ordinary skill in the art, prior to the effective filing date of the claimed invention, to formulate the capsules taught by Lutz as the microcapsules of Winter, since microcapsules are known and routine in the art as taught by Winter. Winter also teaches methods of forming such microcapsules meaning one of ordinary skill in the art could have easily combined the agrochemical composition of Lutz into the microcapsules of Winter using known methods to predictably generate the instantly claimed formulation. One of ordinary skill in the art would have had a reasonable expectation of success since Lutz and Winter teach compositions and formulations comprising the same active (II-14) which are used in similar methods.
Claims 1-10, 13-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lutz, et al., (WO 2021209360 A1, published 10/21/2021 with effective filing date of 02/06/2020, PTO-892), hereinafter Lutz.
The teachings of Lutz are discussed above.
Lutz further teaches that the amount of compound I-1 in mixtures M.1 to M.180 is preferably 100 g/ha. while the amount of compound I-2 in mixtures M.181 to M.360 is preferably 85 g/ha (p. 15-16, lines 1-5). Also discussed above, the agrochemical compositions of Lutz are typically diluted prior to use (p. 27, lines 1-4; Ex. A and B). When employed in plant protection, the amounts of active substances applied are, depending on the kind of effect desired, from 0.001 to 2 kg per ha (p. 27, lines 11-13).
The teachings of Lutz differ from that of the instantly claimed invention in that Lutz does not explicitly teach the specific amount of compound (A) and/or compound (B) to apply as recited in claim 20.
While Lutz does not explicitly teach the concentrations of claim 20, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to configure the amount of either active to whatever concentration is desired for application. Lutz teaches a starting concentration of g/ha present in the mixtures and suggests dilution prior to application. Lutz teaches that the effect of the fungicide depends on the amount of active applied which may range broadly from 0.001 to 2 kg per ha (i.e., 1-2,000 g/ha). Thus, the amount of each active applied (i.e., compounds I and II) directly impacts the fungicidal effect of the method and would be considered a result-effective parameter. One of ordinary skill in the art could have adjusted the application amount of each active simply by adjusting the dilution factor prior to application, which would entail no more than routine experimentation. The optimization of a result effective parameter is considered within the skill of the artisan. See, In re Boesch and Slaney (CCPA) 204 USPQ 215. This is what research chemists do, optimization of result-effective variables through routine experimentation (MPEP 2144.05 IIA and B). One of ordinary skill in the art would have had a reasonable expectation of success in making such a modification since Lutz teaches every element necessary for one of ordinary skill in the art to perform optimization.
Response to Arguments
Applicant’s arguments, regarding the 102 rejection of claims 1-13 over Winter, filed 12/08/2025, have been considered but are moot because the new ground of rejection for these claims does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. No specific arguments are made against Winter regarding new claims 14-25.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 7:30-5 (Flex).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616