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 .
Receipt of claim amendments and arguments filed on 12/23/2025 is acknowledged. Claims 15-21 have been added. Claim 9 has been canceled. Claims 1-8 and 10-21 are now pending.
Rejections and objections not reiterated herein have been withdrawn.
Claims 1-8 and 10-21 are the subject of this Final Office action.
Priority
The instant application claims priority as follows:
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Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119 or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(a)-(d) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (foreign application EP 20214958.9).
The disclosure of the foreign application fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application and subject matter in the specification. The foreign application does not provide support for Aspergillus flavus and does not provide support for azoxystrobin, isolates resistant to azoxystrobin, resistance development to azoxystrobin, and Aspergillus sensitive or resistant to azoxystrobin. The effective filing date of this application is December 17, 2021.
Regarding the instant claims, the new embodiment disclosed in the application and claims, that is, Aspergillus flavus, entirely pertains to the invention claimed in the Aspergillus genus of the instant claims. The genus Aspergillus particularly encompasses the new subject matter Aspergillus flavus. Thus, claims 1-8, 11-15 and 19 have an effective filing date of December 17, 2021. Similarly, claims that recite azoxystrobin, isolates resistant to azoxystrobin, resistance development to azoxystrobin, and Aspergillus sensitive or resistant to azoxystrobin also would have an effective filing date of December 17, 2021, such as claim 12. However, claims 10, 16-18 and 20-21 have an effective filing date of the foreign application EP 20214958.9 (12/17/2020).
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-5 and 10-14 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Decor et al. (WO 2016/066644 A1), as evidenced by Ali et al. (J. Fungi 2021, 7, 284).
Decor teaches a method for controlling and preventing phytopathogenic fungi by applying the compounds of formula
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and compositions to the seed, the plant or plant parts, the phytopathogenic fungi, their habitat, plant propagation material or the soil on which the plants are grown or intended to be grown. See whole document, particularly the abstract, page 8, 71-72, Table 1 and Examples.
Particularly, compound 179 of Table 1 is of the following structure:
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. This fungicide was tested against different types of fungi, in vitro and in vivo, at Examples C, D, E, F, H, I, J, K, L, M, O, P and Q, and showed at least 70% efficacy. Compositions thereof were made in DMSO, and emulsions in a mixture of DMSO/acetone/Tween 80.
The prior art teaches that the compounds of formula (I) are suitable for protection of seeds of plants, in particular, the seed of cereals, oilseed rape, rice, potatoes, beet, peanut, tomato, onions and other plants. See at least pages 83-84.
The prior art further teaches the following:
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(p.84-85).
Pathogenic fungi disclosed to be treated with the compounds of formula (I) include Aspergillus flavus (at least p. 75, lines 20, 27 and 33) and Aspergillus niger (page 79, lines 3-7). In addition, the following is disclosed at page 77 of the prior art:
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Regarding claim 12, this recites a method for controlling or preventing infestation of plants by a phytopathogenic microorganism from the genus Aspergillus, wherein the phytopathogenic microorganism is resistant to azoxystrobin. Decor does not mention azoxystrobin resistance but it teaches applying the claimed compound to seeds or plant parts, such as to peanuts, tomato and onions, for treating, controlling and preventing Aspergillus spec. Applying cyclobutrifluram to the seeds or plant parts of the prior art, such as to peanuts, which are the same as claimed and which are at risk of infection with azoxystrobin resistant Aspergillus flavus (as evidence by Ali et al.), or simply may be infected with Aspergillus flavus or niger as taught in the prior art, would necessarily control or prevent infestation of the plants by said phytopathogenic microorganism.
The application of the prior art’s compound/formulation, which is the same as claimed, to the prior art plants, the seeds from which they grow or to the locus in which they grow, which are the same as claimed, would have necessarily achieved the claimed control or prevention, even if not recognized by the prior art, since products of identical chemical composition cannot have mutually exclusive properties when applied under the same circumstances, and, as in the present case, to the same subject. The identical compound/formulation applied to the identical subject under the identical circumstances must have the same claimed effect.
See MPEP 2112: “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.” Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004). "[W]hen considering a prior art method, the anticipation doctrine examines the natural and inherent results in that method without regard to the full recognition of those benefits or characteristics within the art field at the time of the prior art disclosure." Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377-78 (Fed. Cir. 2005) ("In some cases, the inherent property corresponds to a claimed new benefit or characteristic of an invention otherwise in the prior art. In those cases, the new realization alone does not render the old invention patentable."). See also MEHL/HIophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).
Thus, the subject matter of instant claims 1-5 and 10-14 has been taught and anticipated by the prior art.
Applicant’s arguments have been carefully considered but were found unpersuasive.
Applicant argues that one of ordinary skill in the art would not “at once envisage” from the lengthy and broadly generic disclosures the claimed method of controlling or preventing infestation of plants by a phytopathogenic microorganism of the genus Aspergillus by applying cyclobutrifluram to a crop of plants, the locus thereof, or propagation thereof.
The examiner does not find this persuasive. According to MPEP 2131.02 II, “A reference that clearly names the claimed species anticipates the claim no matter how many other species are named.” In this case, the prior art reference clearly exemplified the claimed compound and clearly named the claimed fungi species. The reference tested the claimed compound of formula
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, known as compound 179, against different types of fungi, in vitro and in vivo, at Examples C, D, E, F, H, I, J, K, L, M, O, P and Q, and the reference also taught that additional pathogenic fungi could be treated, such as Aspergillus flavus (at least p. 75, lines 20, 27 and 33) and Aspergillus niger (page 79, lines 3-7).
In addition, according to MPEP 2131.02 III, “A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.”
The reference encompasses examples in which various pythopathogenic fungi were prevented or controlled by treatment with the claimed compound cyclobutrifluram. Alternaria alternata (C), Botrytis cinerea (D and M), Fusarium culmorum (E), Leptonosphaeria nodorum (F), Pyricularia oryzae (H), Rhyzoctonia solani (I), Septoria tritici (J and P), Ustilago avenae (K), Alternaria brassicae (L), Pyrenophora teres (O), and Sphaerotheca fuliginea (Q), were efficaciously treated with cyclobutrifluram (at least 70% efficacy). Cyclobutrifluram (compound 179) is clearly a preferred compound of the reference that has a broad-spectrum activity against different species of phytopathogenic fungi. Since the reference also teaches that Aspergillus flavus and Aspergillus niger are to be similarly controlled and treated with the referenced compounds, one would have at once envisaged the claimed control or treatment of Aspergillus flavus and Aspergillus niger with cyclobutrifluram. The reference additionally teaches reducing Aspergillus’ mycotoxins within a smaller group of fungi that produces them (p. 77).
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.
Claim(s) 1-8 and 10-21 are rejected under 35 U.S.C. 103 as being unpatentable over Decor et al. (WO 2016/066644 A1) as above, as evidenced by Ali et al. (J. Fungi 2021, 7, 284) and John Damicone (Soilborne Diseases of Peanut, OSU Extension, 2017) for claims 15-21.
The teachings of Décor haven been discussed above and are incorporated herein. Further teachings of Décor regarding the application rates in the case of seed treatment are as follows:
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(p. 86)
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(p. 89).
John Damicone (2017) teaches how to identify fields under pressure with Aspergillus, and that to control Aspergillus crown rot on peanuts, high quality seeds treated with a fungicide should be planted.
Ascertainment of the Difference Between the Prior Art and the Claims
(MPEP §2141.012)
Décor did not describe the exact application rates/amounts claimed in claims 6-8.
Décor did not describe identifying a field under pressure from Aspergillus as claimed in new claims 15-21.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
The level of ordinary skill in the art is high. Someone using cyclobutrifluram would be trained in agrochemical science and would recognize that the compound has broad activity as anti-fungal and anti-mycoplasma, per teachings of Decor. The antifungal composition comprising the compound cyclobutrifluram disclosed by Decor is to be applied to plants and seeds and is to be used for controlling phytopathogenic fungi, including Aspergillus spec.
Décor disclosed application rates/amounts of 1g to 150g per 100kg of seeds, or 2.5g to 25g per 100kg of seeds, and other rates. Décor does not describe the exact application rates/amounts claimed in claims 6-8. However, differences in result-effective variables will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating the value of the result-effective variable is critical. See MPEP 2144.05. In the instant case, the application rates/amounts of the compound cyclobutrifluram to be applied onto the seeds is considered a result-effective variable that impacts the effectiveness of the treatment. The amounts/rates in the reference above would serve as starting point to figure out optimal amount rates/ranges for effective antifungal activity. A skilled artisan, in view of the recommended application rates in the prior art, would have been capable of optimizing the application amounts. Absent a showing of criticality, optimizing result-effective variables is deemed routine optimization. “[W]here 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). The motivation arises from “the normal desire of scientists or artisans to improve upon what is already generally known” (Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382) through routine experimentation. (MPEP 2144.05 IIA and B).
Regarding identifying a field under pressure from Aspergillus of claims 15-21, it would have been prima facie obvious for one of ordinary skill in the art to identify the field that is under pressure from Aspergillus flavus and Aspergillus niger to then provide the appropriate treatment as disclosed by Décor. This was within the skill of the artisan. For example, the reference John Damicone (2017) teaches how to identify fields under pressure with Aspergillus, and that to control Aspergillus crown rot on peanuts, high quality seeds treated with a fungicide should be planted.
Applicant’s arguments have been carefully considered but were found unpersuasive.
Applicant argue that one of ordinary skill in the art would not “at once envisage” from the lengthy and broadly generic disclosures the claimed method of controlling or preventing infestation of plants by a phytopathogenic microorganism of the genus Aspergillus by applying cyclobutrifluram to a crop of plants, the locus thereof, or propagation thereof.
The examiner does not find this persuasive. In this case, the prior art reference clearly exemplified the claimed compound and clearly named the claimed fungi species. The reference tested the claimed compound of formula
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, known as compound 179, against different types of fungi, in vitro and in vivo, at Examples C, D, E, F, H, I, J, K, L, M, O, P and Q, and the reference also taught that additional pathogenic fungi could be treated, such as Aspergillus flavus (at least p. 75, lines 20, 27 and 33) and Aspergillus niger (page 79, lines 3-7).
The reference encompasses examples in which various pythopathogenic fungi were prevented or controlled by treatment with the claimed compound cyclobutrifluram. Alternaria alternata (C), Botrytis cinerea (D and M), Fusarium culmorum (E), Leptonosphaeria nodorum (F), Pyricularia oryzae (H), Rhyzoctonia solani (I), Septoria tritici (J and P), Ustilago avenae (K), Alternaria brassicae (L), Pyrenophora teres (O), and Sphaerotheca fuliginea (Q), were efficaciously treated with cyclobutrifluram (at least 70% efficacy). Cyclobutrifluram is clearly a preferred compound of the reference that has a broad-spectrum activity against different species of phytopathogenic fungi. Since the reference teaches that Aspergillus flavus and Aspergillus niger are to be similarly controlled and treated with the referenced compounds, and cyclobutrifluram has broad-spectrum activity, one would have been motivated to control and treat Aspergillus flavus and Aspergillus niger with the reference compound cyclobutrifluram. The reference additionally teaches reducing Aspergillus’ mycotoxins within a smaller group of fungi that produces them (p. 77).
Applicant additionally argues that experimental data present in this application demonstrates surprising and unexpected results that could not have been predicted from the cited references. However, Applicant does not explain what results are surprising and unexpected.
The burden is on Applicant to establish evidence of results being unexpected and significant. See MPEP 716.02 (b). Furthermore, the unexpected results should be demonstrated with evidence that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Moreover, evidence as to any unexpected benefits must be "clear and convincing" In re Lohr, 137 USPQ 548 (CCPA 1963), and be of a scope reasonably commensurate with the scope of the subject matter claimed, In re Linder, 173 USPQ 356 (CCPA 1972).
New grounds of objection necessitated by amendment
Applicant is advised that should claim 20 be found allowable, claim 17 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Both claims have the exact same wording:
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Applicant is advised that should claim 21 be found allowable, claim 18 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Both claims have the exact same wording:
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Conclusion
Claims 1-8 and 10-21 are rejected. No claim is allowable.
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 VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621