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 .
According to a preliminary amendment filed on July 25, 2023, the applicants have canceled claims 2, 7, 9-12, 14-15, 19-20, 23-28, 31-34, 37 and 40 and furthermore, have amended claims 3-6, 8, 13, 16-18, 21-22, 29-30, 35-36, 38-39 and 41.
Claims 1, 3-6, 8, 13, 16-18, 21-22, 29-30, 35-36, 38-39 and 41-42 are pending in the application.
Claim Rejections - 35 USC § 112
4. 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 8 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation 0.5-50g/100Kg seeds, and the claim also recites 1g/100Kg seeds which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
(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.
Claims 1, 3-6 and 16-17 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Shabtal (WO 2020/095181 A1, cited on applicant’s form 1449).
Shabtal discloses treating fungal infections by compound of formula I. The method of treating fungal infections (see pages 80-81) by compound of formula I (see page 5) disclosed by Shabtal anticipates the instant claims when the fungal pathogen is Venturia inequalis, Cercospora beticola and Phakosora pachyrhizi in the instant claims.
(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, 3-6 and 16-17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shabtal (WO 2020/095181 A1, cited on applicant’s form 1449).
Shabtal discloses treating fungal infections by compound of formula I. The method of treating fungal infections (see pages 80-81) by compound of formula I (see page 5) disclosed by Shabtal anticipates the instant claims when the fungal pathogen is Venturia inequalis, Cercospora beticola and Phakosora pachyrhizi in the instant claims.
The applied reference has a common assigne with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
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.
10. 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.
11. Claims 8, 13, 18, 21-22, 29-30, 35-36, 38-39 and 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Shabtal (WO 2020/095181 A1, cited on applicant’s form 1449).
Shabtal discloses treating fungal infections by compound of formula I. The method of treating fungal infections (see pages 80-81) by compound of formula I (see page 5) disclosed by Shabtal meets all the limitations of instant claims when the fungal pathogen is Venturia inequalis, Cercospora beticola and Phakosora pachyrhizi in the instant claims except that Shabtal does not teach amount of compound applied to treat fungal infection, treat seeds to produce plant resistant to fungal attack or improve ecological safety of a fungicide. However, it would be within routine skill of an artesian to select amount of the compound to teat fungal infection. Furthermore, it would have been obvious to one skilled in the art to treat seeds with compound of formula I disclosed by Shabtal in order to produce plant resistant to fungal infection and improve ecological safety of a fungicide with reasonable expectation of success since Shabtal does teach treating fungal infections with compound of formula I.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARANJIT AULAKH whose telephone number is (571)272-0678. The examiner can normally be reached Monday-Friday 7:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A 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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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621