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 .
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.
Election/Restrictions
Applicant's election of Group I (Claims 1, 9-11, 13, and newly added claims 18-22), compound 316 as the species of Formula I, and difenoconazole as the single species of the additional fungicide in the reply filed on 12/16/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 14-15 and newly added claim 23 (depending from the method of claim 15) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 9, 11, and 19 are withdrawn from consideration as being drawn to a nonelected species.
Claims 1, 10, 13, 18, and 20-22 are currently under examination.
Claim Objections
Claims 10, 13, 18, and 20-22 are objected to because of the following informalities:
“Claim #” should be lowercase in each instance it appears. Appropriate correction is required.
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 1, 10, 13, 18, and 20-22 are rejected under 35 U.S.C. 103 as being as being obvious over Pasteris et al. (WO 2018/187553 A1).
Regarding claim 1, Pasteris discloses compounds of Formula 1 (claim 1)
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and specifically, Cmpd No. 316 (pg. 150-151), which reads on the instant compound of Formula I of claim 1.
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Pasteris discloses that of particular note are combinations of compounds of Formula I with fungicides such as difenoconazole (pg. 133, lines 21-24).
Pasteris is not believed to be anticipatory because Pasteris could be construed as not clearly and unequivocally disclosing the claimed invention or directing those skilled in the art to the claimed invention without any need for picking, choosing and combining various disclosures not directly related to each other by the teachings of the cited reference. While Pasteris discloses compounds of Formula I with fungicides such as difenoconazole (pg. 133, lines 21-24), one would need to choose Cmpd No. 316 taught at pg. 150-151 to be used as the compound of Formula I and difenoconazole from the disclosed list of fungicides taught at pg. 133.
Nevertheless, claim 1 is rendered prima facie obvious over the teachings of Pasteris, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., Cmpd. No. 316 and difenoconazole) were known in the prior art (e.g., Pasteris) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a fungicidal composition) to one of ordinary skill in the art. MPEP 2143.A.
Claims 10 and 18 are rendered prima facie obvious because Pasteris discloses combinations of compounds of Formula I with difenoconazole (pg. 133, lines 21-24).
Claim 13 is rendered prima facie obvious because Pasteris discloses the compositions of the disclosure further include at least one additional component selected form surfactants, solid dilutants, and liquid dilutants (claim 8).
Claims 20-22 are rendered prima facie obvious because Pasteris discloses the weight ratio of the various mixing partners (i.e., difenoconazole; pg. 133, lines 21-24) to the compound of Formula I is between about 1:30 and 30:1 (pg. 135, lines 29-32). Pasteris also teaches that one skilled in the art can easily determine through simple experimentation the biologically effective amounts of active ingredients necessary for the desired spectrum of biological activity (pg. 135, lines 29-36).
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 ratio of a compound of Formula I (i.e., Cmpd. No. 316) and a fungicide (i.e., difenoconazole) have been taught by the prior art; 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 spectrum of biological activity as taught by Pasteris at pg. 135, lines 29-36.
Applicant’s Declaration (12/16/2025)
Applicant argues that the Declaration of Dr. Nikita Gambhir demonstrates unexpected synergy activity of representative compositions comprising compound number 316 in combination with other active fungicides.
The Examiner has fully reviewed and considered the declaration filed 12/16/2025 setting forth a comparison between Cpmd 316 alone, active fungicides alone, and Cpmd 316 + additional active fungicides.
The results (pg. 5-7 of declaration) show a synergistic effect of Cmpd. 316 with the claimed fungicides difenoconazole, flutriafol, prothioconazole, tebuconazole, benzovindiflupyr, fluindapyr, fluxapyroxad, picoxystrobin, pyraclostrobin, fenpicoxamid, mancozeb, and chlorothalonil to varying degrees based on the fungicide, rate applied and ratio of Cmpd 316 to fungicide used.
However, these results do not appear to be unexpected over the prior art as Pasteris teaches the claimed Cmpd 316 and fungicides and teaches that compositions of the compound of the disclosure with other biologically active (particularly fungicidal) compounds results in a greater-than-additive (synergistic) effect (pg. 135-136).
The applicant argues in regards to the “unexpected” synergetic activity (pg. 12 of remarks) that Pasteris does not mention the fungicides mefentrifluconazole, ipfentrifluconazole, inpyrfluxam, pyrapropoyne, flubeneteram, isoflucypram, pydiflumetofen, pyraziflumid, or quinofumelin as claimed, however, (although difenoconazole is the sole elected fungicide), the Examiner notes that no results were shown in the Declaration with these fungicides and it would not be apparent from the results that a similar synergistic effect would be achieved with all fungicides. For example, Cpmd 316 with tebuconazole results in a pronounced synergistic effect (Table 2: row 1) while Cpmd 316 with prothioconazole has much less of an effect (Table 3: last row) even though tebuconazole and prothioconazole are both demethylation inhibitor fungicides.
Finally, assuming purely arguendo that unexpected results have been established, (the Examiner does not believe at this time that they have), the claims would still not be “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has allegedly demonstrated an “unexpected” synergistic effect, but even if this is so then it would only have been shown with the specific fungicides listed above, in specific ratios to Cmpd. 316, and in specific amounts. It is unclear that a comparative composition containing these specific fungicides and in these specific amounts would be reasonably representative of compositions containing additional fungicides and in differing amounts, falling within the broader scope currently claimed.
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, 10, 13, 18, and 20-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,708,358 in view of Pasteris et al. (WO 2018/187553 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite features instantly recited for the composition including the claimed compound of Formula I (claim 9) and a fungicide (claim 11). The claims of U.S. Patent No. 11,708,358 do not recite a specific fungicide recited in the instant claims, such as difenoconazole.
Pasteris discloses combinations of compounds of Formula I with fungicides such as difenoconazole (pg. 133, lines 21-24). Pasteris teaches that compounds of Formula I and fungicides such as difenoconazole are mixtures that are useful in seed treatment (pg. 136, lines 10-12).
It would have been prima facie obvious to one of ordinary skill in the art to include difenoconazole, within the claims. The ordinarily skilled artisan would have been motivated to formulate the composition, as taught by Pasteris, to obtain mixtures that are useful in seed treatment (pg. 133, lines 21-24; pg. 136, lines 10-12).
Conclusion
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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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612