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 .
This Office action is in response to Applicant’s amendment filed July 21, 2026. Claims 1-13 and 15-23 are pending in the application. Claims 6, 8, 9, 10, 11, 13, and 15-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and non-elected species. Claims 1-5, 7 and 12 will presently be examined to the extent they read on the elected subject matter of record.
Status of the Claims
The objection to the embedded hyperlink and/or other form of browser-executable code is withdrawn due to the amendment to the specification to cancel the embedded hyperlink.
The objection of claims 1 and 3 because of the misspelling and extra preposition is withdrawn due to Applicant’s amendment to the claims.
The rejection of claims 1-5, 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Siepe et al. (WO 2017/137351) is maintained.
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections are reiterated. They constitute the complete set of rejections presently being applied to the instant application.
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.
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.
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 1-5, 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Siepe et al. (WO 2017/137351). Siepe et al. cited by Applicant in the IDS dated 6/21/2023.
Applicant’s Invention
Applicant claims a mixture, comprising as active components as component 1 a combination of fusaricidin A and fusaricidin B, wherein fusaricidin A and fusaricidin B have the general formula
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wherein an arrow defines a single (amide) bond either between the carbonyl moiety of r and the amino group acid X1 or between the carbonyl group…and wherein a single line without an arrow head defines a single (ester) bond between the carbonyl group of X6 and the hydroxyl group of X1 and fusaricidin A has asparagine as X5 and fusaricidin B has glutamine as X5 and as component 2 a fungicide selected from the group consisting of: spiroxamine…mandipropamid…fosetyl or fosetyl-Al; and wherein the mixture of component 1 and component 2 provides a synergistic fungicidal effect; and a weight ratio of component 1:component 2 is in a range of 300:1 to 1:80.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Regarding claim 1, Siepe et al. teach mixtures of fusaricidins which are pesticidal metabolites produced by the Paenibacillus strains and chemical pesticides (Abstract).
Regarding claim 1, Siepe et al. teach non-limiting examples of fusaricidins isolated from Paenibacillus are designated as fusaricidins A (also called LIF04a) and B (also called LI-F04b) (page 5, lines 37-40).
Regarding claim 1, Siepe et al. teach mixtures comprising as component 1) at least one fusaricidin of formula I,
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.(page 30, lines 5-23).
Siepe et al. teach
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(page 6, lines 15-17, (Table 1).
Siepe et al. teach that Fusaricidins A and B inhibit plant pathogenic fungi such as Fusarium oxysporum (page 7, lines 6-7).
Regarding claim 1, Siepe et al. teach the one pesticide II is selected from mandipropamid (G.3.3), benthiavalicarb (G.3.5), iprovalicarb (G.3.6) (page 11, line 42); valifenalate (G.3.7) (page 11, line 43); spiroxamine (B.2.8) (page 11, line 1); boscalid (A.3.4) (page 9, lines 40-41); fluxapyroxac (page 9, line 42); trifloxystrobin (A.1.17) (page 9, line 11); fosetyl (J.1.6), fosetyl-aluminum (J.1.7) (page 12, line 27). Siepe et al. teach preference is given to mixtures comprising at least one pesticide II selected from (G.3.3) (page 22, lines 41-42).
Regarding claim 1, Siepe et al. teach by applying at least one Paenibacillus strain in any one of the preferred embodiments above with at least one pesticide II from groups A) to N) a synergistic effect can be obtained. (page 62, lines 28-32). Siepe et al. each the mixtures comprise component 1) and component 2) in synergistically effective amount (page 62, lines 33-34).
Regarding claim 1, Siepe et al. teach that the weight ratio of the component 1) and the component 2) depends from the properties of the active components used often n the range of 1:100 to 100:1 (page 63, lines 17-20), which falls within the range of newly added weight ratio of 300:1 to 1:80.
Regarding claim 2, Siepe et al. teach in the mixtures and compositions the weight ratio of component 1) and the component 2) is more preferably in the range of from 1:10 to 10:1 (page 63, lines 17-21; line 37).
Regarding claim 3, Siepe et al. teach the mixtures comprise as component 1) the at least on Paenibacillus strain in the form of spores (page 35, lines 32-33).
Regarding claim 4, Siepe et al. teach the Paenibacillus strains were found to be effective against infestation with plant pathogens including Alternaria spp., Botrytis cinerea, Phytophthora infestans, and Sclerotinia sclerotiorum (page 33, lines 36-40).
Regarding claim 5, Siepe et al. teach the invention further relates to mixtures comprising as component 1) at least one fusaricidin selected from fusaricidin 1A and 1B, which are formula I, wherein R is GHPS and wherein X5 asparagine in case of fusaricidin 1A and X5 is glutamine in case of fusaricidin 1B:
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(page 32, lines 1-5).
Regarding claim 7, Siepe et al. teach it may be preferred that the mixtures and compositions comprise besides at least one Paenibacillus strain as defined in any of the preferred embodiments above, one metabolite thereof (component 1), and a pesticide II (component 2), as component 3) a further pesticide, preferably in a synergistically effective amount (page 64, lines 14-18).
Regarding claim 12, Siepe et al. teach a pesticidal composition comprising a) a composition comprising component 1) as defined and at least one auxiliary; and b) a composition comprising component 2) as defined and at least on auxiliary.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Siepe et al. do not specifically provide examples of combination of fusaricidin A and fusaricidin B or examples wherein the compounds further comprises at least one of the follow compounds 1A or 1B.
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Siepe et al. and use a combination of fusaricidin A and fusaricidin B in the mixture. Siepe et al. teach mixtures comprising as component 1) at least one fusaricidin of formula I and chemical pesticides. Siepe et al. teach that Fusaricidins A and B inhibit plant pathogenic fungi such as Fusarium oxysporum. One of ordinary skill in the art would have been motivated to use both fusaricidin A and fusaricidin B in the compositions comprising additional chemical pesticides since Siepe et al. specifically teach that at last one fusaricidin of formula I, indicating more than one can be used in the compositions.
Regarding the limitation of the mixture of component 1 and component 2 provides a synergistic fungicidal effect, Siepe et al. teach by applying at least one Paenibacillus strain in any one of the preferred embodiments, including fusaricidin A and fusaricidin B, with at least one pesticide II from groups A) to N) a synergistic effect can be obtained. Siepe et al. teach that the elected component 2, mandipropamid, is a preferred compound. Therefore, it would have been obvious to one of ordinary skill in the art that a composition comprising fusaricidin A and fusaricidin B and mandipropamid will provide a composition with a synergistic effect.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Siepe et al. and further add compounds 1A or 1B to the composition. Siepe et al. teach mixtures comprising as component 1) at least one fusaricidin of formula I and chemical pesticides. Siepe et al. teach it may be preferred that the mixtures and compositions comprise besides at least one Paenibacillus strain as defined in any of the preferred embodiments, one metabolite thereof (component 1), and a pesticide II (component 2), as component 3) a further pesticide. One of ordinary skill in the art would have been motivated to add
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as the 3rd fungicide in view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980). It is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three fungicides set forth prima facie obvious subject matter. Therefore, the skilled artisan would have been motivated to add the additional fungicide, with a reasonable expectation of success.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Response to Arguments
Applicant's arguments filed July 21, 2026 have been fully considered but they are not persuasive. Applicant argues that the scope of claim 1 corresponds to the component 2 mixing partner species and ratios for which Colby synergy for component 1:component 2 ratios spanning 250:1 to 1:63 against different species. Applicant argues that nothing in Siepe suggests that the Colby synergy demonstrated in the application examples would have been expected. In response to Applicant’s argument, Siepe et al. specifically teach that the mixtures comprising component 1) and component 2) in a synergistically effective amount. Siepe et al. specifically teach the term “synergistic effect” is understood to refer in particular to that defined by Colby’s formula. See page 62, lines 33-37. Example 1, specifically teaches calculation of the expected efficacy using the Colby’s formula that is demonstrated in Table 28.
Applicant argues that there is no particular suggestion of the particularly recited component 2 compounds in combination with the specific fusaricidin A and fusaricidin B. Applicant argues that Siepe’s Example 11 that demonstrated synergy when combined with a culture of Paenibacillus strain Lu17007(which contains fusaricidin A and fusaricidin B) do not include any of the component 2 species. While the compositions with the culture of Paenibacillus strain Lu17007 do not have examples comprising any of the currently claimed component 2, as amended, there are compositions that comprise Fusaricidin 1a and Fluxapyroxad (Table 28). Instant claim 3 discloses the compositions further comprise Fusaricidin 1a. Based on these teachings, one of ordinary skill in the art would have found it obvious that compositions comprising Fusaricidin A and Fusaricidin B and the claimed components would provide synergistic results.
In addition, instant claim 1 is not commensurate in scope with the data presented in the original specification. While the data does demonstrate better than expected control of various fungal species, the data in not commensurate in scope. The data demonstrates component 1, Fusaricidin, which comprises a mixture of Fusaricidin A and Fusaricidin B, and the currently claimed component 2 fungicides, in a range of 1:63 to 250:1. Applicant claims the weight ratio of component 1:component 2 is in a range of 300:1 to 1:80. It cannot be determined if the same purported unexpected control would be demonstrated when the weight ratio of component 1:component 2 is 300:1 or 1:80. It also cannot be determined if the same unexpected control would be demonstrated with any and all fungal species, as currently claimed. Also, it cannot be determined if the purported synergistic activity would be extended if any and all component 3 fungicides are added to the composition. Evidence of nonobviousness must be commensurate in scope with that of the claimed subject matter. Applicant has not established nonobvious evidence that is commensurate in scope with that of the claimed subject matter.
Conclusion
No claims are allowed.
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 Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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