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 .
Summary
Claims 2-17 are pending in this office action. Claim 1 has been cancelled. All pending claims are under examination in this application.
Priority
The current application filed on November 14, 2023 is a 371 of PCT/EP2022/063739 filed May 20, 2022. The current application claims foreign priority to EP21175333.0 filed on May 21, 2021.
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 non-obviousness.
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 2-17 are rejected under 35 U.S.C. 103 as being unpatentable over McCarty et al. (Biology and Fertility of Soils, 1989) in view of Cunningham et al. (WO2019/145140A1) and Coqueron et al. (WO2018/060093A1).
[The Examiner is going to introduce each reference and then combine them where appropriate to reject the instant claims.]
1. McCarty et al.
McCarty et al. is regarded as being the prior art closest to the subject-matter of the present application as it teaches inhibition of nitrification in soil by heterocyclic nitrogen compounds (see title). Additionally, McCarty et al. disclose the relationship between the structures of diverse heterocyclic nitrogen (N) compounds and the effectiveness of these compounds for the inhibition of nitrification in soil was studied by determining the effects of different amounts of 12 unsubstituted and 33 substituted heterocyclic N compounds on the production of (NO2-+NO3-)-N in soils incubated at 25 °C for 21 days after treatment with ammonium sulfate. The results showed that unsubstituted heterocyclic N compounds containing two adjacent ring N atoms inhibit
nitrification in soil and that two of these compounds, pyrazole and 1,2,4-triazole, are potent inhibitors. They also showed that several substituted pyrazoles and thiadiazoles are good inhibitors of nitrification in soil (e.g., 3-methylpyrazole and 3,4-dichloro-l,2,5-thiadiazole) (see summary).
2. Cunningham et al.
Cunningham et al. teach silylethynyl hetaryl compounds as nitrification inhibitors (see title). Additionally, Cunningham et al. disclose that the present invention relates to the use of silylethynyl hetaryl compound as nitrification inhibitors (see abstract).
3. Coqueron et al.
Coqueron et al. teach 1,5-substituted imidazole derivatives as fungicides for crop protection (see title). Additionally, Coqueron et al. disclose that the present invention relates to 5-substituted imidazolylmethyl derivatives and related compounds, to processes for preparing these compounds, to compositions and mixtures comprising these compounds, and discloses the use thereof as biologically active compounds, especially for control of harmful microorganisms, such as e.g. phytopathogenic fungi, in crop protection and in the protection of materials and as plant growth regulators (see abstract).
Combination of McCarty et al., Cunningham et al., and Coqueron et al.
Regarding instant claim 10, McCarty et al., Cunningham et al., and Coqueron et al. teach a method for reducing nitrification. The necessary citations within McCarty et al., Cunningham et al., and Coqueron et al. that correspond to instant claim 10 are compiled within Table I.
Table I
Instant Claim 10
McCarty et al., Cunningham et al., and Coqueron et al. Citations
A method for reducing nitrification, comprising treating a plant growing on soil or soil substituents and/or the locus or soil or soil substituents where the plant is growing or is intended to grow with at least one compound of formula I
McCarty et al. disclose the inhibition of nitrification in soil by heterocyclic nitrogen compounds such as 2-ethynylpyridine (see title; abstract; and Table 2 within McCarty et al.).
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McCarty et al. disclose that 2-ethynylpyridine
was the most effective of 21 non-gaseous acetylenic compounds that we evaluated for inhibition of nitrification in soil (see page 208, left column, paragraph 3 within McCarty et al.).
Coqueron et al. disclose the use of 2-chloro-5-ethynyl-pyridine (see page 87, line 22 within Coqueron) as the “western” portion of an intermediate en route to a final product for control of harmful microorganisms, such as e.g. phytopathogenic fungi, in crop protection and in the protection of materials and as plant growth regulators (see abstract within Coqueron et al.).
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Cunningham et al. disclose a silane substituted alkyne in the 2-position and a Cl in the 5-position of a pyridine as a nitrification inhibitor (see page 69, line 10 within Cunningham et al.).
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wherein Z = methyl and RA = Cl.
or a salt, stereoisomer, tautomer or N-oxide thereof as a nitrification inhibitor, wherein in the compound of formula I
R1 is halogen; R2 is halogen, CN, NO2, C1-C4-alkyl, C1-C4-haloalkyl, or C2-C4-alkenyl, wherein each substitutable carbon atom in the aforementioned groups is independently unsubstituted or substituted with one or more, same or different substituents RA: wherein RA is CN, halogen, ORA, NRbRc, C(=O)Ra, C(=O)ORa or C(=O)NRbRc; Ra is H, C1-C4-alkyl, C1-C4-haloalkyl, or phenylmethyl; Rb and Rc are independently of each other selected from H and C1-C4-alkyl; and wherein n is 0, 1, 2, or 3.
The McCarty et al. disclosure establishes that 2-ethynylpyridine and chloro derivatives of pyridine are active nitrification inhibitors (see Table 6 within McCarty et al.).
Truncated Products: The Coqueron et al. disclosure suggests the 2-chloro-5-ethynylpyridine moiety is important in the overall activity. In a similar fashion, Cunningham et al. disclose a silane version which could be removed (truncated) to ascertain the remaining bioactivity.
Furthermore, commercial chemical suppliers for example (such as Aldrich) supply 200 2-ethynyl derivatives (see PTO-892 NPL U). This would allow skilled artisans to easily establish a baseline structure-activity relationship (SAR) baseline. This structure is trivial for a skilled artisan and between commercial sources and straightforward chemical transformations the final targets could be afforded.
Therefore, a skilled artisan (POSITA; person having ordinary skill in the art) would use the teachings of McCarty et al., Coqueron et al., and Cunningham et al. along with commercial sources of substituted ethynyl pyridines to meet all the claim limitations of instant claim 10.
[Henceforth within the office action, all elements of instant claim 10 are taught by the combination of McCarty et al., Cunningham et al., and Coqueron et al.].
Regarding instant claims 2-7 and 13, McCarty et al., Cunningham et al., and Coqueron et al. teach all the necessary synthetic organic chemistry variants. Please see the discussion and citations within instant claim 1 for the relevant rejection text. Furthermore, Cunningham et al. disclose wherein said compound of formula I is used in combination with a fertilizer, thus forming an agrochemical mixture (see claim 7 and claim 8 within Cunningham et al.).
Regarding instant claim 8, McCarty et al., Cunningham et al., and Coqueron et al. teach wherein said compound of formula I is used in combination with a fertilizer. Cunningham et al. disclose wherein said compound of formula I is used in combination with a fertilizer (see claim 7 and claim 8 within Cunningham et al.).
Regarding instant claim 9, McCarty et al., Cunningham et al., and Coqueron et al. teach wherein said reduction of nitrification occurs in or on a plant, in the root zone of a plant, in or on soil or soil substituents, and/or at the locus where a plant is growing or is intended to grow. Cunningham et al. disclose wherein said reduction of nitrification occurs in or on a plant, in the root zone of a plant, in or on soil or soil substituents, and/or at the locus where a plant is growing or is intended to grow (see claim 9 within Cunningham et al.).
Regarding instant claim 11, McCarty et al., Cunningham et al., and Coqueron et al. teach wherein the plant and/or the locus or soil or soil substituents where the plant is growing or is intended to grow is additionally provided with a fertilizer. Cunningham et al. disclose wherein the plant and/or the locus or soil or soil substituents where the plant is growing or is intended to grow is additionally provided with a fertilizer (see claim 11 within Cunningham et al.).
Regarding instant claim 12, McCarty et al., Cunningham et al., and Coqueron et al. teach wherein the application of said compound of formula I and an optional fertilizer is carried out simultaneously or with a time lag. Cunningham et al. disclose wherein the application of said compound of formula I and an optional fertilizer is carried out simultaneously or with a time lag (see claim 12 within Cunningham et al.).
Regarding instant claim 14, McCarty et al., Cunningham et al., and Coqueron et al. teach wherein said fertilizer is a solid or liquid ammonium-containing inorganic fertilizer, a solid or liquid organic fertilizer, or a urea-containing fertilizer. Cunningham et al. disclose wherein said fertilizer is a solid or liquid ammonium-containing inorganic fertilizer, a solid or liquid organic fertilizer, or a urea-containing fertilizer (see claim 14 within Cunningham et al.).
Regarding instant claim 15, McCarty et al., Cunningham et al., and Coqueron et al. teach wherein said plant is an agricultural plant, a vegetable, a silvicultural plant, an ornamental plant, or a horticultural plant, each in its natural or in a genetically modified form. Cunningham et al. disclose wherein said plant is an agricultural plant, a silvicultural plant, an ornamental plant, or a horticultural plant, each in its natural or in a genetically modified form (see claim 15 within Cunningham et al.).
Regarding instant claim 16, McCarty et al., Cunningham et al., and Coqueron et al. teach wherein said fertilizer is selected from the group consisting of NPK fertilizer, ammonium nitrate, calcium ammonium nitrate, ammonium sulfate nitrate, ammonium sulfate, ammonium phosphate, liquid manure, semi-liquid manure, biogas manure, stable manure, straw manure, worm castings, compost, seaweed, guano, formaldehyde urea, anhydrous ammonium, urea ammonium nitrate (UAN) solution, urea sulphur, urea based NPK-fertilizers, and urea ammonium sulfate. Cunningham et al. disclose wherein said fertilizer is selected from the group consisting of NPK fertilizer, ammonium nitrate, calcium ammonium nitrate, ammonium sulfate nitrate, ammonium sulfate, ammonium phosphate, liquid manure, semi-liquid manure, biogas manure, stable manure, straw manure, worm castings, compost, seaweed, guano, formaldehyde urea, anhydrous ammonium, urea ammonium nitrate (UAN) solution, urea sulphur, urea based NPK-fertilizers, and urea ammonium sulfate (see claim 14 within Cunningham et al.).
Regarding instant claim 17, McCarty et al., Cunningham et al., and Coqueron et al. teach wherein said plant is selected from the group consisting of wheat, barley, oat, rye, soybean, corn, potatoes, oilseed, rape, canola, sunflower, cotton, sugar cane, sugar beet, rice, spinach, lettuce, asparagus, cabbage, and sorghum. Cunningham et al. disclose wherein said plant is selected from the group consisting of wheat, barley, oat, rye, soybean, corn, potatoes, oilseed, rape, canola, sunflower, cotton, sugar cane, sugar beet, rice, spinach, lettuce, asparagus, cabbage, and sorghum (see claim 15 within Cunningham et al.).
In the context of instant method claims 2-5 and 8-17 the desired purpose defines an effect that arises from, and is implicit in the method step(s). Thus, where the purpose is limited to stating a technical effect that inevitably occurs during the performance of the claimed method step(s), and is therefore inherent in that/those step(s), that technical effect is not limiting to the subject-matter of the claim. Thus, the present method claims, defining the application/use of the composition and defining its purpose as "use", is anticipated by any document of the state of the art describing a method of application/use although not mentioning this specific use.
Analogous Art
The combination of the McCarty et al., Cunningham et al., and Coqueron et al. references are relevant for the rejection of instant claims 2-17 due to their direct application to the present invention.
Obviousness
It would have been prima face obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the nitrification inhibition composition disclosed by McCarty et al., using the teachings Cunningham et al. and Coqueron et al. to incorporate the necessary claim limitations.
The motivation to combine the McCarty et al., Cunningham et al., and Coqueron et al. references relies on the fact that each citation uses an ethynyl chloropyridine either as part of a constituent or as the main component that exhibits bioactivity in the soil. This “overlap” with the instant application allows all three references to be analogous art.
Starting with McCarty et al., the skilled person only had to try the necessary claimed limitations disclosed by Cunningham et al. and Coqueron et al. The combination of McCarty et al., Cunningham et al., and Coqueron et al. would allow one to arrive at the present application without employing inventive skill. This combination of the nitrification inhibition composition taught by McCarty et al. along with the necessary use of the claimed limitations taught by Cunningham et al. and Coqueron et al. would allow a research and development scientist (POSITA) to develop the invention taught in the instant application. It would have only required routine experimentation to modify the nitrification inhibition composition disclosed by McCarty et al. with the use of the necessary claimed limitations disclosed taught by Cunningham et al. and Coqueron et al. This combined modification would have led to an enhanced nitrification inhibition composition, and thus beneficial for consumers.
Response to Arguments
Applicant's arguments filed March 26, 2026 have been fully considered but they are not persuasive.
The 35 U.S.C. §112(b) rejection was addressed in full by the claim amendments. Therefore, it is withdrawn.
The claim amendments did not necessitate a new ground of rejection.
Applicant Argument: The Applicant argues that the McCarty et al. reference teaches away from using pyridine analogues.
Examiner’s Rebuttal: The Examiner respectfully disagrees. McCarty et al. disclose the following text:
Comparison of the effects of 14 pyridines on oxidation of ammonia in soil (Table 6) showed that 2-ethynylpyridine and 2-chloro-6-(trichloromethyl)pyridine (nitrapyrin) were potent inhibitors of nitrification in soil and were considerably more effective than the other 12 pyridines tested. Nitrapyrin is currently registered for use in the USA as a fertilizer amendment for inhibition of ammonia oxidation in soil, and it is marketed under the trade name N-Severe. Previous work in our laboratory showed that 2-ethynylpyridine was the most effective of 21 non-gaseous acetylenic compounds that we evaluated for inhibition of nitrification in soil (see McCarty page 208, left column, paragraph 3 within McCarty).
Furthermore, one could argue that the 2-ethynylpyridine analogue is more potent as an inhibitor of nitrification in the soil than the pyrazole and 1,2,4-triazole variants identified by McCarty et al. as the best inhibitors of nitrification in the soil.
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So, McCarty et al. does not teach away from using the pyridine nitrification inhibitors. This reference supplies the ethynyl pyridine template to a skilled artisan (POSITA) for ring substitution analysis.
Applicant Argument: The Applicant argues that the Cunningham et al. and Coqueron et al. references do not support a prima facie case of obviousness.
Examiner’s Rebuttal: The Examiner respectfully disagrees. The Cunningham et al. and Coqueron et al. references provide examples of chloro-ethynyl-pyridine derivates within the agriculture arts. These intermediates / analogues support the structure-activity analysis of the 2-ethynyl-pyridine analogue within the McCarty et al. reference.
In this manner, a prima facie case of obviousness is supported herein.
Applicant Argument: The Applicant argues that the claimed halogenated ethynylpyiridine analogue provides unexpected results.
Examiner’s Rebuttal: The Examiner respectfully disagrees. Evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (Claims directed to a method of effecting analgesia without producing physical dependence by administering the levo isomer of a compound having a certain chemical structure were rejected as obvious over the prior art. Evidence that the compound was unexpectedly nonaddictive was sufficient to overcome the obviousness rejection. Although the compound also had the expected result of potent analgesia, there was evidence of record showing that the goal of research in this area was to produce an analgesic compound which was nonaddictive, enhancing the evidentiary value of the showing of nonaddictiveness as an indicium of nonobviousness.). [see M.P.E.P. 716.02(c)]. In this instance, the prior art of record is stronger than the unexpected results. The prima facie case for obviousness presented within the 35 U.S.C. §103 section of this office action affords a “direct pathway” of research for a skilled artisan (POSITA) to develop and obtain similar results as observed by the inventors.
On a scale of patentability, the prima facie case of obviousness outweighs the unexpected results which have been noted by the Examiner.
[Examiner’s Note: Applicant may also argue impermissible hindsight reasoning. However, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight [or piece-meal 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).]
Therefore, the 35 U.S.C. §103 rejection for instant claims 2-17 is maintained.
Conclusion
No claims are allowed.
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.
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/JOHN W LIPPERT III/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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