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 .
Amended claims 11-20 are pending. With amendments claims 11-16, 18, 19 are drawn to product and claims 17 and 20 are drawn to process.
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Product claims 11-16, 18 and 19 are examined together.
Rejoinder provision, as previously indicated, is available upon finding of allowability of the product claims.
Applicant’s argument is not persuasive. For example, the argument that Cormish composition includes similar other components, overlooks that the claim with open-ended comprising language is limited to only two components. Also see rejections under obviousness. Applicant is also not responsive to the citations supporting search burden.
Interview summary filed 3/2/2026
This action takes into consideration Applicants response (03/04/2026) to Examiner raised issue with respect to commercial availability of the combination with the weight ratio falling under the scope as limited by the base claim. Applicant confirms that German NPL Cite No. 3, IDS 07/20/2023 is a post-filing document, several months after the priority date of the instant application.
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.
Claims 11-16, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hitoshi JP2003073211 & Alexander WO2008047097 and Bernardini US20080206295 & Lysyk, US20060083726.
Base claims is drawn to a mixture of azoxystrobin and IPBC in a weight ratio of 6:1 to 1:6.
Hitoshi English Translation teaches at claims:
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Hitoshi discloses fungicidal wood preservatives, in particular for use in dip impregnation and pressure impregnation (paragraph [0006]; claim 6). The wood preservatives contain (a) a compound of the strobilurin type, selected from kresoxim-methyl, metominostrobin and azoxystrobin, as well as (b) a further fungicide selected from propiconazole, tebuconazole, cyproconazole, hexaconazole, epoxiconazole, ipconazole, metconazole, prochloraz, IPBC, 4-chlorophenyl-3-iodopropargylformal, 4-methoxyphenyl-3-iodopropargylformal, copper compounds, zinc compounds and quaternary ammonium salts (claims 3-5). Specific examples include a composition containing kresoxim-methyl and IPBC (examples 5-7).
Alexander Abstract teaches an antifungal coating composition, in particular paint, capable of controlling fungi on an Industrial Material said composition comprising combinations of known fungicidal compositions. The composition produce a synergistic fungicidal effect and the composition is particularly suitable for the treatment of Industrial Materials.
Alexander teaches combination of the active ingredients containing azoxystrobin leads to a synergistic fungicidal effect (page 9, lines 7-12; table on page 15).
Alexander teaches combination of the active ingredients containing azoxystrobin leads to a synergistic fungicidal effect (page 9, lines 17-20; second table on page 16).
Alexander while teaching synergistic effect of different combinations as pointed above, does not teach the instant specific combination. Further, neither Hitoshi or Alexander teach the combination of azoxystrobin and IPBC at the weight ratio recited in the claims.
Specification does teach a synergistic effect of the claimed composition in respect of various fungi (Example 3 of the present application).
Azoxystrobin and IPBC are well-established commercially available strobilurin-based fungicide compounds, each of which with different fungicides do exhibit synergistic effect in combination. Therefore, the invention is a selective combination of the inventions by the prior arts done in a manner obvious to one of skill in the art.
Patent for the combination of known elements wherein their functions remain the same withdraws “what is already known into field of its monopoly and diminishes resources available to skilled men”. Sakraida v. Ag Pro, Inc.189 USPQ 449, 425 US 273, (1976).
It would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to combine the instant ingredients for their known benefit since each is well known in the art for treating cancer. This rejection is based on the well-established proposition of patent law that no invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients, In re Sussman, 136 F.2d 715, 718, 58 USPQ 262, 264 (CCPA 1943).
Further 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.).
Limitations of dependent claims (wt %, ratios and excipients).
The pointed out tables of Alexander include amounts of active and inactive ingredients; synergism does depend on amount of the components. See section under Analysis and Colby Equation. Routine optimization (see below) includes therefore renders weight ratios ‘a result effective variable’.
More specifically, as to the limitations of claims wt% of claims 11, 12, 15-19, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The 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).
More specifically, as to the limitations of excipients claim 14, 18-20, see Lysyk, claims 10 and 23 & Bernardini claims 19, 26 and 29 for a list routinely used excipients overlapping with the routinely used excipients in biocide formulations.
Therefore nothing unobvious is seen in the claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIZAL S CHANDRAKUMAR whose telephone number is (571)272-6202. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIZAL S CHANDRAKUMAR/Primary Examiner, Art Unit 1625
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