DETAILED ACTION
Claims 1-15 are currently pending in the instant application.
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 .
Response to Amendment/Arguments
Applicant's amendments and arguments filed 07/14/2026 have been fully considered and entered into the application but they are not persuasive.
Applicant argues that metyltetraprole and metarylpicoxamid are disclosed as alternative members of a group without guidance towards combined use in the prior art. However as stated in the prior rejection, MPEP 2144.06, Section I states that it is obvious to combine equivalents known for the same purpose. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine). In the instant case, both metyltetraprole and metarylpicoxamid are taught as active ingredients for a fungicidal composition. Further, MPEP 2144.06, Section II also states that “additionally, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In reFout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982)”. Both metyltetraprole and metarylpicoxamid are taught to components and active ingredients in a fungicidal composition in the prior art. Although the prior art does not exemplify a single composition having metyltetraprole and metarylpicoxamid, the prior art WO ‘950 teaches compositions having metyltetraprole (see p. 234) in various ratios and discloses metarylpicoxamid as an active component (see claim 5, p. 292).
Applicant argues that the Examiner has relied on impermissible hindsight in applying the prior art of WO ‘950 since there is no specific motivation to combine the two particular compounds of the instant claims. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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 In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Further regarding Applicant’s arguments that WO ‘950 teaches component (A) as essential feature and only a single component (B), although component (A) is required in the prior art of WO ‘950, the instant application does not preclude the inclusion of component (A) given that claim 1 “comprises”. Additionally the prior art teaches that the composition may comprise further components. As both metyltetraprole and metarylpicoxamid are taught as active ingredients for a fungicidal composition, MPEP 2144.06, Section I states that it is obvious to combine equivalents known for the same purpose and further MPEP 2144.06, Section II also states that “additionally, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In reFout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982)”.
Since the prior art suggests the limitations of the claims, namely that metyltetraprole and metarylpicoxamid are taught as active ingredients for a fungicidal composition, the reason to combine said ingredients may be found from MPEP 2144.06 with a reasonable expectation of success as a fungicide. Regarding the weight ratios, WO ‘950 teaches reasonable weight ratios for 2 components of a fungicidal composition, which would be considered a starting point for a composition having 2 active components and it is well known that "in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. See In re Swain et al., 33 C.C.P.A. (Patents) 1250, 156 F.2d 239, 70 USPQ413.
Regarding Applicant’s allegation of unpredictable effects, Applicant cites scientific review article which teaches that synergy is not a fungible property that is demonstrated when a first fungicide is combined with a second fungicide resulting in a synergistic mixture. Applicant further cites the Specification showing synergistic effects demonstrated by the claimed invention. Although the Specification shows synergistic effects, which would be considered an unexpected result, MPEP 716.02(d) states that the unexpected results must be commensurate in scope with the claimed invention. The results from the Specification only show results when compound II-1 is combined with methyltetraprol in a ratio of compound II-1 : methyltetraprol from 1 : 0.063 or 1 : 0.004. No examples having compound II-1 in a higher ratio than methyltetraprol are shown. Further Applicant only shows one example with compound II-2 and methyltetraprol having synergism at a ratio of 63:1.
Additionally regarding claim 5, said claim has another fungicidal compound. Since Applicant cites Weed Technology stating that it is always unclear is two active ingredients will have an antagonistic effect, merely additive effect, or synergistic effect when applied, it is unclear if having another fungicidal compound will affect the synergy of the two claimed ingredients of the fungicidal mixture as a fungicidal compound would be expected to also affect the function of the fungicidal mixture. Thus, for the above mentioned reasons, the rejections have been maintained.
Election/Restrictions
Applicant's election with traverse of Group I, drawn to claims 1-6 and 15 with election of species of 1-[2-[[1-(4-chlorophenyl)pyrazol-3-yl]oxymethyl]-3-methyl-phenyl]-4-methyl-tetrazol-5-one as compound I and [(1S,2S)-1-methyl-2-(o-tolyl)propyl] (2S)-2-[(4-methoxy-3-propanoyloxypyridine-2-carbonyl)amino]propanoate as compound II in the reply filed on 01/16/2026 is acknowledged. The traversal is on the ground(s) that unity of invention is present as evidenced by the ISR. This is not found persuasive because unity of invention is not present since the technical feature (i.e. the fungicidal mixture comprising as active components – compound I and compound II selected from II-1 and II-2) is not a special technical feature because it fails to define a contribution over the prior art as discussed below in the 103(a) rejection. Therefore claims 1-15 are not so linked as to form a single general inventive concept, and there is lack of unity of invention. not considered a unique special technical feature.
Claims 7-14 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/16/2026.
The requirement is still deemed proper and is therefore made FINAL.
In accordance with the MPEP, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species and the claims drawn to the elected species are allowable, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
Applicants' elected species of 1-[2-[[1-(4-chlorophenyl)pyrazol-3-yl]oxymethyl]-3-methyl-phenyl]-4-methyl-tetrazol-5-one as compound I and [(1S,2S)-1-methyl-2-(o-tolyl)propyl] (2S)-2-[(4-methoxy-3-propanoyloxypyridine-2-carbonyl)amino]propanoate as compound II does not appear allowable, therefore the search and examination of the claims has not been extended beyond the elected species (see the following 35 USC 103(a) rejection).
Claim 3 does not read on the elected embodiment and are therefore considered withdrawn claims. Since the elected embodiment is not allowable, subject matter not embraced by the elected embodiment is therefore withdrawn from further consideration. It has been determined the entire scope claimed is not patentable.
Maintained Claim Rejections - 35 USC § 103
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.
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.
Rejection I
Claims 1-2, 4-6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over BURNS et al (see WIPO Pub No. 2021/244950, pub. 12/09/2021 and filed 05/27/2021, which claims priority to EP 20178042.6, filed 06/30/2020, hereafter referred to as WO ‘950).
WO ‘950 discloses fungicidal composition comprising a mixture of components (A) and (B). WO ‘950 teaches that component (B) is a compound selected from metyltetraprole, which corresponds to compound I: 1-[2-[[1-(4-chlorophenyl)pyrazol-3-yl]oxymethyl]-3-methyl-phenyl]-4-methyl-tetrazol-5-one (see line 9, p. 2) as well as metarylpicoxamid, which corresponds to compound II-1: [(1S,2S)-1-methyl-2-(o-tolyl)propyl] (2S)-2-[(4-methoxy-3-propanoyloxypyridine-2-carbonyl)amino]propanoate (see line 19 of p. 3) of instant claim 1. Further, WO ‘950 teaches component (B) is taught in a particularly preferred set of embodiments selected from group consisting of metyltetraprole (see line 6, p. 16) and metarylpicoxamid (see line 19, p. 16). Further preferred compounds include mefentrifluconazole (see line 7, p. 16), which corresponds to a compound of claim 5. Additionally, the composition may comprise one or more further pesticides, which includes copper oxychloride (see claim 12, line 40, p. 293) and an agriculturally acceptable carrier (see claim 13, p. 295). This reads on claims 5-6. The weight ratio of component (A) to component (b) may be from 100:1 to 1:100, etc (see claim 7, p. 292). Regarding claim 15, WO ‘950 teaches that the active ingredients (i.e. the composition) may be mixed with adjuvants to give a suspension and diluted to treat plant propagation material (see p. 121) and exemplifies a formulation containing 28% of active ingredients.
Thus, prior to the filing of the instant application, following the teachings of WO ‘950, it would have been prima facie obvious to combine components metyltetraprole and metarylpicoxamid in order to form a fungicidal composition. MPEP 2144.06, Section I states that it is obvious to combine equivalents known for the same purpose. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine). In the instant case, both metyltetraprole and metarylpicoxamid are taught as active ingredients for a fungicidal composition. Thus, it would obvious to one of ordinary skill in the art to formulate a composition with said components to control or prevent infestation of plants by phytopathogenic microorganisms in order to discover a composition having maximal activity against the desires phytopathogens. MPEP 2144.06, Section II also states that “additionally, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In reFout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982)”.
Regarding the ratios of the compounds in the composition, as stated above, WO ‘950 teaches 100:1 to 1:100 as a starting point for two components in a fungicidal mixture. Thus, one of ordinary skill in the art would be motivated to combine two components known to have activity against fungus using said ratios. MPEP 2114305, Section I teaches that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention). Further, MPEP 2144, Section II(A), states that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It is well known that "in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. See In re Swain et al., 33 C.C.P.A. (Patents) 1250, 156 F.2d 239, 70 USPQ413.
Rejection II
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over BURNS et al (see WIPO Pub No. 2021/244951, pub. 12/09/2021 and filed 05/27/2021, which claims priority to EP 20178040.0, filed 06/30/2020, hereafter referred to as WO ‘951).
WO ‘951 discloses fungicidal composition comprising a mixture of components (A) and (B). WO ‘951 teaches that component (B) is a compound selected from metyltetraprole, which corresponds to compound I: 1-[2-[[1-(4-chlorophenyl)pyrazol-3-yl]oxymethyl]-3-methyl-phenyl]-4-methyl-tetrazol-5-one (see line 11, p. 2) as well as metarylpicoxamid, which corresponds to compound II-1: [(1S,2S)-1-methyl-2-(o-tolyl)propyl] (2S)-2-[(4-methoxy-3-propanoyloxypyridine-2-carbonyl)amino]propanoate (see line 19 of p. 3) of instant claim 1. Further, WO ‘951 teaches component (B) is taught in a particularly preferred set of embodiments selected from group consisting of metyltetraprole (see line 12, p. 21) and metarylpicoxamid (see line 25, p. 21). Further preferred compounds can include mefentrifluconazole (see line 13, p. 21), which corresponds to claim 5. Additionally, WO ‘951 teaches the composition may comprise one or more further pesticides, which includes copper oxychloride (see claim 12, line 6, p. 276) and an agriculturally acceptable carrier (see claim 13, p. 277). The weight ratio of component (A) to component (b) may preferably be from 100:1 to 1:100, etc.
Thus, prior to the filing of the instant application, following the teachings of WO ‘950, it would have been prima facie obvious to combine components metyltetraprole and metarylpicoxamid in order to form a fungicidal composition. MPEP 2144.06, Section I states that it is obvious to combine equivalents known for the same purpose. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine). In the instant case, both metyltetraprole and metarylpicoxamid are taught as active ingredients for a fungicidal composition. Thus, it would obvious to one of ordinary skill in the art to formulate a composition with said components to control or prevent infestation of plants by phytopathogenic microorganisms in order to discover a composition having maximal activity against the desires phytopathogens. MPEP 2144.06, Section II also states that “additionally, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In reFout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982)”.
Regarding the ratios of the compounds in the composition, as stated above, WO ‘950 teaches 100:1 to 1:100 as a starting point for two components in a fungicidal mixture. Thus, one of ordinary skill in the art would be motivated to combine two components known to have activity against fungus using said ratios. MPEP 2114305, Section I teaches that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention). Further, MPEP 2144, Section II(A), states that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It is well known that "in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. See In re Swain et al., 33 C.C.P.A. (Patents) 1250, 156 F.2d 239, 70 USPQ413.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and to include only compound II-1 as the second active component.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN CHENG whose telephone number is (703)756-4699. The examiner can normally be reached M-F, 9AM-6PM PST.
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, Adam Milligan can be reached at 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KAREN CHENG/Primary Examiner, Art Unit 1623
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
