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
Claims 1-8 are pending in the instant application.
Domestic Benefit
Acknowledgement is made of Applicant’s claim for domestic benefit based on the U.S. Provisional Application No. 63/140,459, filed on January 22nd, 2021. Instant Claims 1-8 are fully supported by this application, and will be evaluated with an effective filing date of January 22nd, 2021.
Information Disclosure Statement
The Information Disclosure Statements received on July 21st, 2023, February 8th, 2024, and January 5th, 2026 have fully considered by the examiner, except where marked with a strikethrough.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any of the errors of which Applicant may become aware of in the specification.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 8 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is drawn to a “use” without positively reciting any steps to a process thereof.
Per MPEP 2173.05(q), “”Use” claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129, USPQ 227, 228 (CCPA 1961)(“one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101”).”
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.
(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 1-4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rajan et. al. (WO 2010/063700; cited on Applicant’s Information Disclosure Statement filed July 21st, 2023; hereinafter referred to as Rajan) as evidenced by CAS Registry File 1228284-64-7 (entered into STN June 24th, 2010; hereinafter referred to as CAS Registry File).
At Page 15, First Paragraph, Rajan teaches a method of controlling or preventing infestation of useful plants by phytopathogenic microorganisms, including phytopathogenic bacteria, by applying a compound of formula I. At Page 23, under Example P3, Rajan teaches the following compound as a compound of formula I:
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As evidenced by CAS Registry File, this compound is 3-(difluoromethyl)-N-methoxy-1-methyl-N-[1-methyl-2-(2,4,6-trichloro-phenyl)ethyl]-1H-pyrazole-4-carboxamide, as recited, for example at instant Claim 1.
Regarding instant Claim 2, at Page 18, Second Paragraph, Rajan teaches, “Therefore the inention also relates to compositions for controlling and protecting against phytopathogenic microorganisms, comprising a compound of formula I and an inert carrier,” thereby reading on the limitation of applying a composition as recited at instant Claim 2.
At Page 15, Last Paragraph, Rajan states, “Furthermore, the novel compounds of formula I are effective against phytopathogenic bacteria and viruses (e.g. against Xanthomonas spp, Pseudomonas spp, …” Each of these species are recited at instant Claims 3 and 4.
At Page 16, First Paragraph, Rajan teaches useful plants suitable for protection include tomatoes and rice, each of which are recited instantly at Claim 6.
At Page 19, Fifth Paragraph, Rajan teaches “Advantageous rates of application are normally from 5g to 2kg of active ingredient (a.i.) per hectare (ha), preferably from 10g to 1kg a.i./ha, most preferably from 20g to 600g a.i./ha.” This “most preferably” range reads on the range instantly recited at Claim 7.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Rajan et. al. (WO 2010/063700; cited on Applicant’s Information Disclosure Statement filed July 21st, 2023; hereinafter referred to as Rajan) as evidenced by CAS Registry File 1228284-64-7 (entered into STN June 24th, 2010; hereinafter referred to as CAS Registry File).
As noted above, Claim 1 is anticipated, as Rajan teaches a method of controlling or preventing infestation of phytogenic bacteria by administering 3-(difluoromethyl)-N-methoxy-1-methyl-N-[1-methyl-2-(2,4,6-trichloro-phenyl)ethyl]-1H-pyrazole-4-carboxamide to a plant. Further, Rajan teaches at Page 15, Last Paragraph, that this compound is effective in treating Xanthomonas spp.
Rajan does not teach controlling or suppressing Xanthomonas campestris, Xanthomonas orycea, or Xanthomonas perforans.
Xanthomonas campestris, Xanthomonas orycea, and Xanthomonas perforans are species of the genus Xanthomonas spp. While Rajan does not teach control or suppression of these species in particular, applying KSR rationale E, it would have been prima facie obvious to try controlling or suppressing the aforementioned species of the genus Xanthomonas spp., as it was known in the art at the time of filing that application of 3-(difluoromethyl)-N-methoxy-1-methyl-N-[1-methyl-2-(2,4,6-trichloro-phenyl)ethyl]-1H-pyrazole-4-carboxamide was effective against the genus.
Taken together, this would result in the practice of Claim 5 with reasonable expectation of success.
Conclusion
Claims 1-8 are rejected.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL JOHN BURKETT whose telephone number is (703)756-5390. The examiner can normally be reached Monday - Friday.
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/D.J.B./ Examiner, Art Unit 1624
/JEFFREY H MURRAY/ Supervisory Patent Examiner, Art Unit 1624