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 .
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-12 and the following species of (A), (B), and (C) in the reply filed on 12/11/2025 is acknowledged.
PNG
media_image1.png
630
860
media_image1.png
Greyscale
The traversal is on the ground(s) that Group II is a use of Group I, and therefore, unity of invention exists, which is not persuasive. As stated in restriction/election requirement dated 09/11/2025 the technical features of components (A) and (B) are not novel and do not make a contribution over the prior art in view of Loy et al. (WO 2019/173665 A1) and Stierli et al. (WO 2017/055473 A1). As such, the common features shared by groups of inventions/species listed above cannot be considered "special technical features”.
The restriction/election requirement is deemed proper and made Final.
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-12 are rejected under 35 U.S.C. 103 as being as being obvious over Loy et al. (WO 2019/173665 A1) in view of Stierli et al. (WO 2017/055473 A1).
Regarding claim 1, Loy discloses a compound of Formula (I) for use in a fungicidal composition (abstract; pg. 101; [0005]).
PNG
media_image2.png
313
542
media_image2.png
Greyscale
Loy does not disclose component (B), such as N-methoxy-N-[[4-[5- (trifluoromethyl)- 1,2,4-oxadiazol-3-yl]phenyl]methyl] cyclopropanecarboxamide.
Stierli teaches microbiocidal oxadiazole derivatives, such as N-methoxy-N-[[4-[5- (trifluoromethyl)- 1,2,4-oxadiazol-3-yl]phenyl]methyl] cyclopropanecarboxamide (pg. 91, hereinafter “Cmpd 1.2”) and teaches their use as a pesticide, especially as a fungicide in agrochemical compositions (abstract; pg. 1, lines 1-5).
PNG
media_image3.png
308
981
media_image3.png
Greyscale
Stierli teaches that the oxadiazole derivatives control or prevent infestation of plants, harvested food crops, seeds or non-living materials by fungi (pg. 1, lines 1-9).
Since Loy generally teaches a fungicidal composition, it would have been prima facie obvious to one of ordinary skill in the art to include Cmpd 1.2, within the teachings of Loy, because Stierli teaches this oxadiazole derivative in an agrochemical composition. An ordinarily skilled artisan would be motivated to use Cmpd 1.2 because Stierli teaches that the oxadiazole derivatives control or prevent infestation of plants, harvested food crops, seeds or non-living materials by fungi (pg. 1, lines 1-9).
Claims 2-3 are rendered prima facie obvious because Loy discloses the compounds are combined with other fungicides, such as prothioconazole, to form fungicidal mixtures [0039].
Claims 4-11 are rendered prima facie obvious because Loy discloses the compound of Formula (I) is present in compositions in an amount of 10 to 90 percent by weight [0030]. It would have been prima facie obvious to include Cmpd 1.2 within the teachings of Loy as previously discussed and Stierli teaches the active agent (i.e., Cmpd 1.2) in an amount of 0.01 to 90% by weight (pg. 51, line 36). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Furthermore, 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. See MPEP 2144.05(II)(A). In this case, the general conditions of the amount of the compound of Formula (I) and Cmpd 1.2 have been taught by the prior art (Loy and Stierli); as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation to achieve the desired fungicidal effect.
Claim 12 is rendered prima facie obvious because Loy discloses the composition further includes an agriculturally acceptable carrier [0005] [0026].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 13-25 of U.S. Patent Application No. 18/252,110.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-28 of U.S. Patent Application No. 17/594,263.
Although the claims at issue are not identical, they are not patentably distinct from each other because the species (composition with components (A), (B), and (C)) recited in the claims of the copending application falls within the genus (composition) recited in the claims of the instant application, and thus reads on the instant claims.
The weight ratio of the components, as recited in the instant claims, would be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,501,425 in view of Loy et al. (WO 2019/173665 A1).
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,899,724 in view of Loy et al. (WO 2019/173665 A1).
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,066,375 in view of Loy et al. (WO 2019/173665 A1).
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,180,462 in view of Loy et al. (WO 2019/173665 A1).
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,974,572 in view of Loy et al. (WO 2019/173665 A1).
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,264,138 in view of Loy et al. (WO 2019/173665 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the composition except for a compound of formula (I).
Loy teaches a compound of Formula (I) for use in a fungicidal composition (abstract; Cmpd. 278, pg. 101; [0005]). Loy teaches the compounds have been found to have significant fungicidal effect particularly for agricultural use [0043].
It would have been prima facie obvious to one of ordinary skill in the art to include a compound of formula (I), within the claims. The ordinarily skilled artisan would have been motivated to formulate the composition to include a compound of Formula (I) because Loy teaches the compounds have been found to have significant fungicidal effect particularly for agricultural use [0043].
The weight ratio of the components, as recited in the instant claims, would be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612