DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 06/15/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103 (Maintained)
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.
Response to Arguments/Analysis of Alleged Unexpected Results
Applicant's arguments filed 06/15/2026 have been fully considered but they are not persuasive.
Applicant argues at pg. 6-7 that the cited reference does not provide any teaching, preference or direction that would have led a skilled artisan to converge on the particular selections of compound number 316 and selection of difenoconazole from a list of possible fungicides at the presently claimed ranges.
The Examiner disagrees. Pasteris discloses that of particular note are combinations of compounds of Formula I with fungicides such as difenoconazole (pg. 133, lines 21-24). 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). Patents are relevant as prior art for all that they contain and nonpreferred or alternative embodiments constitute prior art. See MPEP 2123. Therefore, although Pasteris has many teachings, the large number of teachings does not detract from teaching the combination of Formula I (with Cmpd No. 316 disclosed as a compound of Formula I) and a fungicide such as difenoconazole (pg. 133, lines 21-24). 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.
Applicant argues that the rejection is based on hindsight reconstruction, using Applicant’s disclosure as a roadmap to extract and combine disparate teachings from the prior art.
The Examiner disagrees. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See MPEP 2145 X.A. In the instant case, the combination of Formula I (with Cmpd No. 316 disclosed as a compound of Formula I) with fungicides such as difenoconazole was known in the art (Pasteris) and knowledge was not gleaned from the applicant’s disclosure.
Applicant argues that the effects of varying the ratio of active ingredients is not predictable (i.e., not a result of routine experimentation) and the present application and supporting declaration demonstrate that the claimed combination exhibits synergistic activity which is a non-obvious discovery. Applicant argues that Pasteris does not provide a reasonable expectation that the specific combination of compound 316 and difenoconazole would exhibit the synergistic effects demonstrated in the present Declaration.
The results in Table 2 of the declaration filed 12/16/2025 do show a significant synergistic effect with 320.86 ppm compound 316 and 53.48 ppm difenoconazole (35% observed vs. 4.94% expected). However, a significant synergistic effect is not seen in Table 5 with the combination of compound 316 and difenoconazole in differing amounts (Cmpd 316 (3.33 ppm) and difenoconazole (0.5 ppm) or Cmpd 316 (6.67 ppm) and difenoconazole (0.5 ppm)).
The Examiner agrees that the significant synergistic effect with 320.86 ppm Cmpd 316 and 53.48 ppm difenoconazole is unexpected over the prior art.
However, the claims are not “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has demonstrated an unexpected synergistic effect with Cmpd 316 and difenoconazole, but this has only been shown with a specific application rate/ratio of Compound 316 and difenoconazole. It is unclear that a comparative composition containing these specific amounts would be reasonably representative of compositions containing differing amounts, falling within the broader scope currently claimed, especially as differing amounts/ratios of Compound 316 and difenoconazole were shown in Table 5 to not have a significant synergistic effect. Additionally, not all of the claimed fungicides are shown to have a significant synergistic effect with Cmpd 316. For example (but not limited to), as shown in the specification at pg. 224-232, bixafen (Table B-1), pydiflumetofen (Table E-1), and trifloxystrobin (Table D-1) did not show a significant synergistic effect with Cmpd 316 and in many cases showed less than expected activity .
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).
Response to Arguments
Applicant's arguments filed 06/15/2026 have been fully considered but they are not persuasive.
Applicant argues at pg. 8-9 that the presently claimed subject matter is patentably distinct from the claims of US Patent No. 11,708,358 as it is directed to a specific and non-obvious subject of compositions characterized by both structural limitations and unexpected fungicidal properties.
The Examiner disagrees. Patent No. 11,708,358 claims the specifically claimed compound of formula I (claim 9) and a fungicide. 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). The instant claims are not “commensurate in scope” with the showing of unexpected results, as discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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