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 .
Election/Restrictions
Applicant’s election with traverse of Group I in the reply filed on 01/05/2026 is acknowledged. The traversal is on the ground(s) that the composition comprising the macromolecular complex, triazole fungicide, and aqueous carrier recited in claim 62 is a special feature shared by the pending claims, because prior art Konradi et al. (US20120244095, 09/27/2012) does not disclose the composition of claim 62 for reasons a-d listed below, yet they are not found persuasive because:
Konradi lists hundreds of fungicides that may optionally be added as additional active agent to the imidazolium compound composition.
Konradi teaches compositions that can comprise dithiocarbamate fungicide (e.g., [0821]; Claim 61), chitosan (e.g., [0384]; Claim 61 L)), triazole fungicide (e.g., [0422]; Claim 61), with water as dispersion carrier (e.g., [0478]). It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
lacking rationale for the selections of dithiocarbamates, chitosan and triazole fungicides.
Konradi teaches different fungicides and specific functions for their suitable intended use, e.g., dithiocarbamates such as mancozeb as inhibitors with multi-site action (e.g., Claim 61 H); triazole, tebuconazole are sterol biosynthesis inhibitors (e.g., Claim 61 B); and chitosan is antifungal biocontrol agent (e.g., Claim 61 L). It would be suitable to select these fungicides for multi-functional effects, and combining them flows with logic and provides reasonable expectation of success for achieving enhanced efficacy inhibiting fungal pathogens.
Konradi teaches chitosan, not polycation chitosan.
Konradi teaches chitosan, while being polycation is property of the compound when pH is different. MPEP 2112.01.II states "[p]roducts 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, as indicated in MPEP 2112.01.II. 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."). For this instance, the property of being polycation would necessarily present because chitosan is the same compound that is taught by prior art. Moreover, MPEP 2145 II. states that “prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art”, see In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991).
the macromolecular complex in claim 62 is not formed between neutral chitosan and dithiocarbamate fungicide.
Instant application is a composition application, not a process of making or method invention. How the macromolecular complex form is not going to change the patentability on the product, because as MPEP 2113. I. states "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Furthermore, Krieken et al. (US20150038442, 02/05/2015) teaches the instantly claimed composition as presented in this office action, and the shared technical feature is not a special feature and it does not make a contribution over the prior art. Please take the entire office action below as additional response to the argument.
The requirement is still deemed proper and is therefore made FINAL.
Claims 73-83 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II, III and IV, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/05/2026.
Status of Claims
Primary amendment filed on 06/01/2023 and amendment filed on 10/14/2025 is acknowledged.
Claims 1-61, 64-65, 68, 70-71 are cancelled.
Claims 62-63, 66-67, 72, and 78-81 are amended.
Claims 73-83 are withdrawn with traverse for being drawn to nonelected groups.
Claims 62-63, 66-67, 69, 72 and 84-86 are pending and being examined herein on merits.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 06/01/2023 and 10/14/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Priority
This instant application 18255502, filed on 06/09/2023, is a 371 of PCT/IB2021/061261, filed on 12/02/2021, which claims domestic benefit of 63/194,343, filed on 05/28/2021, and claims foreign priority of India 202011052575, filed on 12/02/2020.
Claim Rejections - 35 USC § 112
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.
Claim 72 is 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.
Claim 72 recites “[T]he composition of claim 70, wherein …”, while claim 70 is a cancelled claim. Therefore, the claim metes and bounds is indefinite. The claim is interpreted based on BRI (Broad Reasonable Interpretation) to depend upon claim 67, because claim 67 mentions lignosulfonate.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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 62-63, 66-67, 69, 72 and 86 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Krieken et al. (US20150038442, 02/05/2015).
Krieken throughout the reference directs to a composition comprising a polyelectrolyte complex comprising a polycation and at least one biocide for protecting an agricultural plant or plant part against a pathogen (e.g., Abstract).
Regarding instant claim 62, Krieken teaches the biocide composition preferably a fungicide aqueous composition (e.g., [0011-0012]) comprising a biocide natamycine and/or phosphite, a polycation selected from the group including epsilon-poly-L-lysine, poly-L-arginine, chitosan oligosaccharide (as chitosan derivative), and chitosan in an aqueous acidic solution (e.g., [0013]). Krieken also teaches that though the most preferred fungicide is natamycin, the composition can comprise two or more fungicides such as a triazole type fungicide, and dithiocarbamate type fungicide such as mancozeb (e.g., [0037]). Krieken exemplifies formulations using CitoCal comprising chitosan and lignosulfonate ([0126], Table 6) with Dithane containing 75% mancozeb [0131] as dithiocarbamate type fungicide in Example 8 (e.g., [0130-0132]), and Example 12 [0157-0158], and CitoCal comprising chitosan or chitosan (or derivative) with fungicide natamycin in formulations 7-10 (e.g., [0167], Table 12) and Example 20 [0193-1094]. Krieken demonstrates that polyelectrolyte comprising chitosan provides a synergistic effect to the used active ingredient (i.e. natamycin) for prevention of Botrytis cinerea stem rot on tomato (e.g., [0176]). MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Regarding the feature “macromolecular complex”, it is interpreted as property of the complex comprising a dithiocarbamate and a polycation, which has already been taught by prior art. Further, as evidenced by instant specification, “macromolecular complex” refers to “structure that is formed by non-covalent interaction of a dithiocarbamate fungicide with a polyelectrolyte, such as at least one polycation” (Pg. 4, Lines 19-21). Since prior art teaches fungicide dithiocarbamate (e.g., [0037]) and polyelectrolyte complex comprising polycation (e.g., Abstract), prior art teaches the composition comprising a macromolecular complex as instantly claimed.
Regarding instant claim 63, Krieken teaches that the fungicides in the composition can include fungicide prothioconazole (e.g., [0037]). MPEP 2112.01.II states "[p]roducts 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, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. For this instance, Krieken teaches fungicide prothioconazole and the compound property as triazole fungicide is inseparable from the taught compound, thus, Krieken teaches triazole fungicide prothioconazole.
Regarding instant claim 66, Krieken teaches that the polycation ion can be chitosan (e.g., Claim 3; [0013]), and exemplifies in banana fruit treatments 8) [0106] and 10) [0108] using chitosan as polycation in the compositions ([0109], Table 4) (corresponding to instant claim 66 b), while in treatment 10) the composition comprising water, chitosan, and natamycin fungicide without polyanion Ca-lignosulfonate (e.g., [0108]-[0109]) (corresponding to instant claim 66 a). As discussed above, Krieken teaches that the composition can comprise two or more fungicides such as a triazole type fungicide, and dithiocarbamate type fungicide such as mancozeb (e.g., [0037]) (corresponding to instant claim 66 c).
Regarding instant claim 67, Krieken teaches that a preferred fungicide can be azoxystrobin or picoxystrobin (e.g., [0036]) (corresponding to instant claim 67 a), and the composition can comprise a lignin compound such as lignosulfonate (e.g., [0013]), as shown in treatment examples #2-4 and #7-9 using lignosulfonate (e.g., [0109], Table 4) (corresponding to instant claim 67 b). MPEP 2112.01.II states "[p]roducts 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, as indicated in MPEP 2112.01.II. Lignosulfonate being dispersant in the fungicide composition is inseparable property of the compound which has been taught by prior art.
Regarding instant claim 69, Krieken teaches that two or more fungicides can be included in the composition, including suitable fungicides mancozeb, prothioconazole (e.g., [0037]), picoxystrobin (e.g., [0036]) (corresponding to instant claim 69 a) and b).
Regarding instant claim 72, Krieken teaches that polyanion such as lignosulfonate provided in an aqueous solution, is added to aqueous polycation acidic solution with pH below 5.5 (e.g., [0013]; [0075]) and biocide can be added at the same step during preparation of the composition. Krieken further indicates that if required, an acid is added to the polycation-polyanion mixture to keep the pH of the mixture below pH=7, preferably below pH=5.5 (e.g., [0013]; [0075]); Krieken specifies that the composition is a suspension concentrate (Claim 8) (corresponding to instant claim 72 a)). Krieken also teaches that lignosulfonates have a molecular weight in the range of about 500 to about 150,000 (g/mol) [0027], overlapping with instantly claimed range between 2000 g/mol and 6500 g/mol.
Regarding instant claim 86, Krieken teaches that the macromolecular complex comprising polycation (e.g., chitosan) is prepared in an aqueous acidic solution with pH 5.5, and Krieken specifies that if required, an acid is added to the biocide and polycation complex to keep the pH of the mixture below pH=7, preferably below pH=5.5 (e.g., [0013]; [0075]), falling within the instantly claimed range of pH 3-6. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
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 62-63, 66-67, 69, 72 and 84-86 are rejected under 35 U.S.C. 103 as being unpatentable over Krieken et al. (US20150038442, 02/05/2015) as applied to claims 62-63, 66-67, 69, 72 and 86 above.
Krieken teaches a fungicide aqueous composition comprising a macromolecular complex comprising fungicides, e.g., dithiocarbamate fungicide such as mancozeb, triazole fungicide prothioconazole, or picoxystrobin, and a polyelectrolyte comprising polycation, e.g., chitosan, epsilon-poly-L-lysine, chitosan derivative and aqueous carrier water, as discussed and applied above to claims 62-63, 66-67, 69, 72 and 86 in detail and incorporated herein.
Krieken further teaches that a drug and a polyelectrolyte in the composition present in a relative amount of between 1:2 and 300:1 (e.g., [0074]), the same as polyelectrolyte to drug ratio between 2:1 and 1:300, while the polyelectrolyte can comprise polyanion and polycation in relative amounts of from 1:2 to 60:1 (w/w) (e.g., Claim 1). Therefore, polycation in the polyelectrolyte can be in the ratio of 1/61 to 2/3, resulting in the composition polycation to drug ratio from (2*2/3) : 1 to (1/61*1) :300, as range about 1.3 :1 to 0.02 :300, equal to about 1:0.7 to 1: 15,000, overlapping with ratio range between 1:50 and 1:80 as recited in instant claim 84.
Krieken teaches the composition comprises biocide (preferably fungicide, e.g., [0067]), concentration of between 0.1 to 90 w/v% in the composition (e.g., Claim 5). Taking into account of water density 1 g/ml, the weight amount overlaps with instantly claimed range of 35-40% in instant claim 85. Krieken also exemplifies in Example 8 a formulation 4) Dithane + CitoCal (equivalent to 2 kg/ha and 1.5 l/ha, respectively) [0129], while Dithane containing 75% mancozeb (as dithiocarbamate fungicide) [0131], CitoCal comprising polycation chitosan [0126], resulting in mancozeb in the formulation amount at about (2*75%)/(2+1.5))= 42.8%, very close to the high end of instantly claimed range.
Krieken does not teach exactly the same ratio range of polycation to dithiocarbamate fungicide as recited in instant claim 84, or the dithiocarbamate fungicide weight amount in the composition as recited in instant claim 85.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, the ratio range of polycation to fungicide in the composition, and fungicide amount overlap with those in prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Conclusion
No claim is allowed.
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/DX.Z./ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616
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