DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-3, 5-14 and 16-20 are pending.
Withdrawn Rejections
The rejection of claims 1-3, 5-8 and 16-19 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the claim amendments.
The rejection of claim 2 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, is withdrawn in view of the claim amendments.
The rejection of claims 1-6 under 35 U.S.C. 102(a)(1) as being anticipated by Wang (CN 105109231 B) is withdrawn in view of the claim amendments.
The rejection of claims 1-6 under 35 U.S.C. 103 as being unpatentable over Cao (CN 101716183 A) is withdrawn in view of the claim amendments.
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 1-3, 5-12, 14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over van der Krieken et al. (US 2015/0038442 A1).
Regarding claims 1-3, 7-8 and 17, van der Krieken et al. teach an composition comprising natamycin and a polyelectrolyte complex, where the polyelectrolyte complex comprises chitosan as the polycation and lignosulfonate as the polyanion and the polyanion:polycation are present at 1:2 to 60:1 and natamycin is present at 0.1-90% (Claims 1-5; Table 4).
Van der Krieken et al. do not explicitly disclose that the composition also comprises at least one insecticide selected from fipronil, lambda-cyhalothrin, alpha cypermethrin, emamectin benzoate, acetamiprid, clothianidin, imidacloprid, thiacloprid, thiamethoxam, abamectin and chlorantraniliprole, as instantly claimed.
However, van der Krieken et al. teach that a most preferred biocide in a composition according to the invention is a fungicide, preferably natamycin, and a further preferred biocide is a mixture of two or more active ingredients ([0044]). Van der Krieken et al. teach that the composition may further comprise two or more biocides (at 0.1-90%, preferably 10-50%), such as natamycin and an insecticide where the insecticide is selected from a group including acetamiprid, imidacloprid, lambda cyhalothrin, clothianidin, thiacloprid and fipronil, preferably acetamiprid or imidacloprid, diluted in water ([0035], [0039], [0041], [0072]).
Van der Krieken et al. also do not explicitly disclose that the volume-based average particle size of natamycin is between 0.2 and 10 µm, as instantly claimed.
However, van der Krieken et al. teach a method for producing a composition according to the invention, comprising (a) providing an aqueous solution of a polyanion, (b) providing an aqueous acidic solution of a polycation, (c) adding the solution of a polycation to the solution of a polyanion, or vice versa, whereby a precipitate is formed that is crushed, for example by milling, preferably to an average particle size of between 0.2 and 5 micrometer, where after (d) a biocide comprising natamycin and/or phosphite is added. As an alternative, the biocide is added to the solution of at least one of steps a-c ([0057]).
Regarding claims 2 and 16, van der Krieken et al. teach that natamycin is present at 0.1-90 w/v %, more preferred between 1 and 70 w/v %, more preferred between 10 and 50 w/v % ([0035]; Claim 5).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to add a second biocide, preferably acetamiprid or imidacloprid, to the chitosan/lignosulfonate/natamycin composition of van der Krieken et al., thereby arriving at the instant invention. One would be motivated to modify van der Krieken et al. in this manner because van der Krieken et al. suggests that the natamycin may be combined with another biocide, preferably acetamiprid or imidacloprid. Regarding the average particle size, van der Krieken et al. teach that the biocide may be added to the aqueous solution of a polyanion, the aqueous solution of a polycation, or the mixture, whereby a precipitate is formed that is crushed, for example by milling, preferably to an average particle size of between 0.2 and 5 µm ([0057]). Therefore, it would have been obvious to crush the precipitate comprising the natamycin to an average particles size of between 0.2 and 5 µm.
With respect to claim limitations regarding amounts or ratios of components, the teachings of van der Krieken et al. overlap the claims. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). (MPEP § 2144.05(1)) Moreover, 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). (MPEP § 2144.05(1l)) “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Regarding claim 5, van der Krieken et al. teach a composition according to the invention preferably further comprises at least one additional compound selected from the group consisting of a sticking agent, a preservative, a stabilizer, a wax, an antioxidant, an anti-foam forming agent, a thickening agent, a spray oil, an UV-protectant, an anti-freezing agent, a dispersing agent, and a flow additive ([0046]-[0054]).
Regarding claim 6, van der Krieken et al. teach a composition according to the invention optionally further comprises an additional compound selected from a spray oil, for example, a mineral oil. In addition, a dispersing or wetting agent known to a skilled person ([0055]).
Regarding claim 7, van der Krieken et al. teach a method for producing a composition according to the invention, comprising (a) providing an aqueous solution of a polyanion, (b) providing an aqueous acidic solution of a polycation, (c) adding the solution of a polycation to the solution of a polyanion, or vice versa, whereby a precipitate is formed that is crushed, for example by milling, preferably to an average particle size of between 0.2 and 5 micrometer, where after (d) a biocide comprising natamycin and/or phosphite is added. As an alternative, the biocide is added to the solution of at least one of steps a-c ([0057]).
Regarding claim 9, van der Krieken et al. teach protecting an agricultural plant or plant part against a pathogen, including application of the composition to the plant until run off, thus also contacting the soil ([0014], [0067]; Example 10).
Regarding claim 10, van der Krieken et al. teach that the plant preferably is a vegetable, fruit or crop plant ([0066]).
Regarding claim 11, van der Krieken et al. teach contacting crop plants with the composition as detailed above (Examples 3-6, 14-17 and 20).
Regarding claim 12, van der Krieken et al. also teach a method of protecting an agricultural plant and/or preventing and/or reducing and/or eliminating the effect of a pathogen against an agricultural plant, comprising applying to said agricultural plant or to one or more plant parts, specifically the seed, bulb or fruit, the composition as detailed above. Application of the composition to the plant until run off would also include contacting the soil ([0014], [0067]; Example 10).
Regarding claims 14 and 20, van der Krieken et al. teach that the composition may comprise a spray oil ([0055]). Van der Krieken et al. also teach a composition according to the invention is a solid composition, for example a granule, or a liquid, preferably aqueous, composition, more preferably a Suspension. Prior to use, a composition according to the invention comprising at least one biocide comprising natamycin and/or phosphite is preferably dissolved or dispersed in water or diluted with water ([0067]-[0068], [0072]; Examples).
Regarding claims 18-19, van der Krieken et al. teach a polyelectrolyte complex, where the polyelectrolyte complex comprises chitosan as the polycation and lignosulfonate as the polyanion and the polyanion:polycation are present at 1:2 to 60:1 and natamycin is present at 0.1-90% (Claims 1-5; Table 4).
Response to Arguments
Applicant's arguments filed 11 November 2025 have been fully considered but they are not persuasive. Applicant argues that the assertion that van der Krieken describes milling of natamycin to a particle size of 0.2 - 5 microns is not supported by paragraph [0057], which merely teaches that the polyelectrolyte may be milled to a particle size of 0.2 - 5 µm but is silent about milling natamycin, and clearly states that natamycin is added to the previously milled polyelectrolyte.
The examiner respectfully argues that van der Krieken et al. teach a method for producing a composition according to the invention, comprising (a) providing an aqueous solution of a polyanion, (b) providing an aqueous acidic solution of a polycation, (c) adding the solution of a polycation to the solution of a polyanion, or vice versa, whereby a precipitate is formed that is crushed, for example by milling, preferably to an average particle size of between 0.2 and 5 micrometer, where after (d) a biocide comprising natamycin and/or phosphite is added. As an alternative, the biocide is added to the solution of at least one of steps a-c ([0057]). Thus, after addition of natamycin to the solution of at least one of steps a-c, as suggested by van der Krieken et al., the resulting precipitate is crushed to an average particle size of between 0.2 - 5 µm, which would result in natamycin also being milled to an average particle size of between 0.2 - 5 µm.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over van der Krieken et al. (US 2015/0038442 A1) as applied to claims 1-3, 5-12, 14 and 16-20 above, further in view of Stark et al. (WO 2017/043972 A1).
The teachings of van der Krieken et al. are discussed above and repeated herein.
Regarding claim 13, van der Krieken et al. do not explicitly disclose a method for protecting a growth substrate, wherein the growth substrate is a mushroom growth substrate, as instantly claimed.
Stark et al. teaches: 1) a method for protecting a soil and/or a growth substrate, preferably a mushroom growth substrate, comprising applying to said soil and/or growth substrate a composition comprising natamycin; and 2) a method for improving the development and/or yield of an agricultural plant, comprising applying to said plant a composition comprising natamycin (Claims 14-16).
It would have been prima facie obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention that the method of van der Krieken et al. for protecting a plant could be expanded to include improving yield of the plant or protecting mushroom growth substrate, based on the teaching of Stark et al. Because Stark et al. teach that a composition comprising natamycin is effective to accomplish the aforementioned methods, it is reasonable for one of ordinary skill in the art to expect that the composition of van der Krieken et al., which also comprises natamycin, would be similarly effective for improving yield or protecting soil and mushroom growth substrate.
Response to Arguments
Applicant argues that Stark fails to cure the deficiency of van der Krieken as relates to the natamycin particle size. The examiner’s response above is repeated herein.
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 1-3, 5-14 and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,484,583. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘583 claims an antifungal composition comprising natamycin and at least one insecticide that interferes with the nervous system and/or muscular system of insects and nematodes, wherein the insecticide includes emamectin benzoate, fipronil, lambda-cyhalothrin, acetamiprid, clothianidin, imidacloprid, thiacloprid, thiamethoxam, abamectin and chlorantraniliprole. US ‘583 also claims a method for protecting an agricultural plant or plant part, a method for improving the development and/or yield of an agricultural plant, and a method for protecting a soil and/or a growth substrate. Therefore, the antifungal compositions and methods of US ‘583 overlap with the instantly claimed compositions and methods.
Response to Arguments
Applicant requests that the provisional rejection be held in abeyance until such time as allowable subject matter is indicated for the present application. Therefore, the rejection is maintained.
Conclusion
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571) 272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.W.S/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616