DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 04/22/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claims 1-2 and 12 are objected to because of the following informalities:
In claim 1, the word “or” or “and” should be written before the last listed species of recited component (B) and the comma following the last recited compound should be deleted.
In claim 2, the comma following the last recited compound should be deleted.
In claim 12, the word “A” in line one should be deleted.
Appropriate correction is required.
Election/Restrictions
In the response to election/restriction requirement dated 12/11/2025 the applicant elected the following compound (B.01) as component B:
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Because the specific combination of component A.03 and component B.X is now indicated as potentially allowable subject matter if claim 1 is amended to be commensurate in scope with the showing of unexpected results (see discussion below); the species election of component B has been withdrawn and each of the compounds of component (B) as recited in claim 1 are currently under examination.
Claim Rejections - 35 USC § 103 (Maintained)
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 1-9, 12 and 16-17 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]).
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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).
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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 4-9 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].
Claim 16 is rendered prima facie obvious because it would have been obvious to include Cmpd 1.2 as taught by Stierli, within the teachings of Loy, as previously discussed.
Claim 17 is rendered prima facie obvious because Loy discloses the compounds are combined with other fungicides, such as prothioconazole, to form fungicidal mixtures [0039].
Response to Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive.
Applicant argues at pg. 9 that Loy provides little guidance that would lead a person of ordinary skill to select compound 278 individually, over all of the other compounds disclosed, for use in a fungicidal composition.
The Examiner disagrees, patents are relevant as prior art for all that they contain and nonpreferred or alternative embodiments constitute prior art. See MPEP 2123. Therefore, although Loy has many teachings, the large number of teachings does not detract from teaching the claimed component (Cmpd. 278) for use in a fungicidal composition (abstract; pg. 101; [0005]).
Applicant also argues that Loy provides no guidance that would lead of person of ordinary skill to the class of oxadiazole derivatives, let alone Stierli’s compound 1.2 and that Sterli does not remedy the defects of Loy.
The Examiner disagrees. One of ordinary skill in the art would be motived to include compound 1.2, as taught by Sterli, within the fungicidal composition of Loy because Stierli teaches that oxadiazole derivatives (such as Cmpd 1.2) control or prevent infestation of plants, harvested food crops, seeds or non-living materials by fungi (pg. 1, lines 1-9).
Analysis of Alleged Unexpected Results
Applicant argues at pg. 10 that the biological examples at pg. 58-60 of the as-filed specification demonstrate that the combination of A.03 and B.01 (or B.02, B.03, B.04, B.06, or B.10) show a greater-than-expected fungicidal activity (synergistic effect) in a soybean leaf disk assay.
The Examiner has fully reviewed and considered Tables 1-6 of the specification. The results demonstrate that the fungicidal activity of a composition of A.03 and B.01 (or B.02, B.03, B.04, B.06, or B.10) is greater than expected against Phakopsora pachyrhizi compared to the expected additive activity. These results are demonstrated when the ratio of A.03 to B.01 (or B.02, B.03, B.04, B.06, or B.10) is from 2:1 to 1:2 (i.e., a synergistic effect is observed with this combination of A.03 and B.X at these ratios).
This synergistic effect is unexpected over the prior art.
However, claim 1 is not “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has demonstrated a synergistic effect with the combination of A.03 to B.01 (or B.02, B.03, B.04, B.06, or B.10) at a ratio of 2:1 to 1:2. It is unclear that a comparative composition containing these components in these ratios would be reasonably representative of compositions containing the components in different ratios falling within the broader scope currently claimed.
Dependent claims 10 and 11 are commensurate in scope with the showing of unexpected results.
Potentially Allowable Subject Matter
Claims 10 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The Examiner notes that if the claims are rewritten in allowable form and the withdrawn method claims are rejoined, claim 13 should read “A method…” as there is a lack of antecedent basis for the term “The method”. In addition, the terms “particularly” and “preferably” should be removed from claim 14 as being indefinite language. See MPEP 2173.05.
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 1-9, 12, and 16-17 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 1-9, 12, and 16-17 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 1-9, 12, and 16-17 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 1-9, 12, and 16-17 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 1-9, 12, and 16-17 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 1-9, 12, and 16-17 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).
Response to Double Patenting Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive.
Applicant argues that the double patenting rejections should be reconsidered for the reasons discussed above.
The Examiner disagrees. Claims 1-9, 12, and 16-17 remain rejected on the ground of non-statutory double patenting over the cited patents in view of Loy. The double patenting rejections over claims 10 and 11 have been withdrawn based on the showing of unexpected results (a synergistic effect) with the claimed combination of A.03 and B.X at the claimed ratios, as discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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 Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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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.
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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