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 .
Election/Restrictions
Applicant’s election without traverse of fluxapyroxad in the reply filed on 02/09/26 is acknowledged. This elected species reads on claims 1, 6, 18-21, 23-24, 26, 33, and 35. Based on searching the examiner has broadened the search to also include tebuconazole (alone) as a single fungicide in combination with the claimed apyrase inhibitor, prothioconazole (alone) as a single fungicide in combination with the claimed apyrase inhibitor, and difenoconazole (alone) as a single fungicide in combination with the claimed apyrase inhibitor. Thus, the claims under examination in this office action are: Claims 1, 6, 8, 11, 18-21, 23-24, 26, 33-35, and 37.
Claims 2-5, 7, 9-10, 12-17, 22, 25, 27-32, 36, and 38 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to the nonelected species of fungicides, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/09/26.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claim 36 which falls after numbered claim 37 been renumbered claim 38.
Claim 18 is objected to because of the following informalities: the claims contain a ,; together in line 4. Please correct this punctuation error/typo.
Claim 24 is objected to because of the following informalities: the claims are missing a comma after pyraclostrobin.
Claims 33, 35 are objected to because of the following informalities: the claims are missing a comma after fluxapyroxad.
Claims 18, 23-24, 26 are all objected to because they contain capitalization of words which are not proper nouns, e.g. Soya, Rust, Brown, etc.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20-21, and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims are directed to a synergistically effective composition. However, the claim lacks written description as applicant’s specification does not support that all of the possible claimed combinations actually exhibit synergy as is instantly claimed.
The claims broadly embrace a synergistic composition comprising the claimed apyrase inhibitor and at least one of the listed fungicides in instant claim 20.
The specification is silent however on which combinations are synergistic as applicants have not demonstrated the effects of (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide alone to demonstrate that the effects are more than the expected additive result. The prior art Roux does disclose that some of the claimed combinations exhibit synergy as noted in the rejection below.
However, the specification appears to fail to disclose any clear examples of synergistic combinations/compositions comprising the claimed combinations. Thus it is clear that Applicants' description of synergistic compositions/combinations is based in large part on conjecture except for the examples already recognized in the prior art to exhibit synergy.
As the specification fails to describe the structure and activity for the claimed synergistic combinations/compositions, the prior art teaching some of these combinations do exhibit synergy is not enough to support that each and every combination/composition is synergistic s claimed.
Applicant’s attention is also directed to In re Shokal, 113 USPQ 283 (CCPA 1957), wherein it is stated:
It appears to be well settled that a single species can rarely, if ever, afford sufficient support for a generic claim. In re Soll, 25 CCPA (Patents) 1309, 97 F2d 623, 38 USPQ 189; In re Wahlforss, 28 CCPA (Patents) 867, 117 F2d 270, 48 USPQ 397. The decisions do not however fix any definite number of species which will establish completion of a generic invention and it seems evident therefrom that such number will vary, depending on the circumstances of particular cases. Thus, in the case of small genus such as the halogens, consisting of four species, a reduction to practice of three, perhaps even two, might serve to complete the generic invention, while in the case of a genus comprising hundreds of species, a considerably larger number of reductions to practice would probably be necessary.
As stated in MPEP 2163 II: If the application as filed does not disclose the complete structure (or acts of a process) of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. The instant specification is devoid of any clear examples of their combinations exhibiting synergy since the examiner cannot find any instances wherein the (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide was applied or tested alone in order to demonstrate that the claimed combinations do actually exhibit synergy, i.e. greater than the expected additive result. Thus, Applicants have failed to demonstrate possession of all of the claimed synergistic combinations/compositions. Disclosure of function alone is little more than a wish for possession; it does not satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (written description requirement not satisfied by merely providing “a result that one might achieve if one made that invention”); In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming a rejection for lack of written description because the specification does “little more than outline goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate”).
The disclosed examples and prior art teachings which teach some of the combinations do exhibit synergy, do not constitute an adequate description to demonstrate possession of the numerous claimed synergistic combinations. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail such that the Artisan can reasonably conclude that the inventor(s) had possession of the claimed invention. Such possession may be demonstrated by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and/or formulae that fully set forth the claimed invention. Possession may be shown by an actual reduction to practice, showing that the invention was “ready for patenting”, or by describing distinguishing identifying characteristics sufficient to show that Applicant was in possession of the claimed invention (January 5, 2001 Fed. Reg., Vol. 66, No. 4, pp. 1099-11).
Overall, what these statements indicate is that the Applicant must provide adequate description of synergistic combinations/compositions when claiming synergistic combinations/compositions. Hence, the analysis above demonstrates that Applicants have not described the numerous claimed compositions as exhibiting synergy as claimed. As such, the Artisan of skill could not predict that Applicant possessed any synergistic species, except for those already taught by the prior art Roux as cited and explained in the 103 rejection below.
Therefore, the breadth of the claims as reading on numerous synergistic compositions/combinations, including those yet to be discovered; in view of the level of knowledge or skill in the art at the time of the invention, and the limited information provided in the specification, an Artisan of skill would not recognize from the disclosure that Applicant was in possession of the numerous synergistic combinations/compositions claimed, at the time the application was filed. Thus it is concluded that the written description requirement is not satisfied.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 8, 11, 18-21, 23-24, 33-35, and 37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roux et al. (WO2016123191).
Regarding claims 1, 8, 11, 18-21, 24, 33-35, 37, Roux teaches synergistic compositions and methods comprising applying the claimed (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with the claimed tebuconazole or prothioconazole or difenoconazole to seeds or plants at risk of fungal infections (which do not actually have to be infected with any of the claimed fungi), specifically soybean plants and seeds (which are at risk of infection by the claimed Asian soybean rust), and wheat plants and seeds (which are at risk of infection by the claimed downy mildew, brown rust, Septoria and yellow rust) (see entire document; e.g. abstract; all claims; pg. 1, ln. 29-pg. 2, ln. 2 which readily demonstrates/teaches that the claimed compositions can be readily envisioned from the teachings of Roux and were already recognized to be synergistic against fungal infection; pg. 2, ln. 3-pg. 2, ln. 23; pg. 6, ln. 32-pg. 7, ln. 10; AI.15 pg. 10; pg. 2, ln. 30-33; pg. 3, ln. 9-13; pg. 5, ln. 33-pg.6, ln. 15; pg. 6, ln. 16-18; pg. 15, ln. 10-pg. 17, ln. 17). The methods of Roux which accomplish the claimed active steps would inherently be inhibiting fungal infections in seeds or plants at risk thereof including the claimed diseases since the claimed methods do not actually require infection with the claimed diseases they merely require contacting seeds or plants at risk of infection with the claimed compositions/combinations and the claimed combinations which are taught by Roux to be synergistic.
Regarding claim 23, because Roux teaches the claimed combinations of (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with the claimed tebuconazole or prothioconazole or difenoconazole to seeds or plants at risk of fungal infections to provide synergistic control and these amounts are the same/overlap those instantly disclosed to be synergistically effective against the other diseases claimed in claim 23, then Roux also anticipates the instant claim since the instant claim is to the composition itself and the amounts of the active agents present as taught by Roux would lead to the synergistic control of the claimed infections when used in the instant intended use which does not appear to structurally distinguish the instantly claimed compositions from those taught by Roux (see entire document; e.g. abstract; all claims; pg. 1, ln. 29-pg. 2, ln. 2 which readily demonstrates/teaches that the claimed compositions can be readily envisioned from the teachings of Roux and were already recognized to be synergistic against fungal infection; pg. 2, ln. 3-pg. 2, ln. 23; pg. 6, ln. 32-pg. 7, ln. 10; AI.15 pg. 10; pg. 2, ln. 30-33; pg. 3, ln. 9-13; pg. 5, ln. 33-pg.6, ln. 15; pg. 6, ln. 16-18; pg. 15, ln. 10-pg. 17, ln. 17).
Regarding claims 24, 33-35 and 37, Roux teaches wherein the claimed combinations can be used on soybean plants and/or seeds (which are at risk for Asian soybean rust) and wheat plants and/or seed (which is at risk for Yellow rust, Septoria, and downy mildew) and as such Roux reads on/anticipates the claimed method of claim 24 which only requires application/applying to plants or seeds at risk of infection by the claimed pathogens (i.e. the methods do not actually require infection with the claimed phytopathogens) (see entire document; e.g. abstract; all claims; pg. 1, ln. 29-pg. 2, ln. 2 which readily demonstrates/teaches that the claimed compositions can be readily envisioned from the teachings of Roux and were already recognized to be synergistic against fungal infection; pg. 2, ln. 3-pg. 2, ln. 23; pg. 6, ln. 32-pg. 7, ln. 10; AI.15 pg. 10; pg. 2, ln. 30-33; pg. 3, ln. 9-13; pg. 5, ln. 33-pg.6, ln. 15; pg. 6, ln. 16-18; pg. 15, ln. 10-pg. 17, ln. 17).
Roux teaches all limitations of the claims and thereby anticipates the claims.
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.
Regarding wherein the fungicide is the elected fluxapyroxad, claims 1, 6, 18, 20-21, 24, 26, 33, and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roux et al. (WO2016123191) as applied to claims 1, 8, 11, 18-21, 23-24, 33-35, and 37 above and further in view of Windsor et al. (WO2001066792) and EPA (https://web.archive.org/web/20130708155945/https://www3.epa.gov/pesticides/chem_search/reg_actions/registration /fs_PC-138009_02-May-12.pdf), and Ouimette et al. (WO2014105842).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Roux teaches the method(s) and composition(s) of claims 1, 8, 11, 18-21, 23-24, 33-35, and 37 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Roux does not teach wherein the fungicide combined with (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide is the instantly elected fluxapyroxad. However, this deficiency in Roux is addressed by Windsor and EPA.
Windsor teaches that applicant’s claimed apyrase inhibitor as their formula X (pg. 37), and wherein it is known to combine these compounds with fungicides as they are known to act as adjuvants for these pesticides and are known to reducing/reversing MDR in plants and yeast (See entire document; pg. 32, ln. 5-13; claims; pg. 40, ln. 14-pg. 41, ln. 9;
EPA teaches that it was known to use fluxapyroxad to control a broad spectrum of fungal infections in wheat, corn, soybean and a variety of other crops via plant and seed treatment (see entire document; pg. 6 of 19; use profile section; pg. 11 of 19, seed treatment section; executive summary section).
Ouimette teaches that it was known to use combinations comprising fluxapyroxad to control a broad spectrum of fungal infections in wheat and other crops including the claimed Septoria, brown rust, etc. by applying to seeds and/or plants ([0033]; abstract; [0031-0032]; [0011]; claims).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have combined the claimed fluxapyroxad as taught by EPA and Ouimette into the combinations of Roux and/or replaced the triazole fungicide of Roux for the claimed fluxapyroxad as taught by EPA and Ouimette because Windsor teaches that the combinations of applicant’s (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with fungicides wherein the (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide acts as an adjuvant for the fungicides. Thus, it would be obvious to combine (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with other fungicides in order to provide adjuvant activity to other fungicides, e.g. the elected fluxapyroxad, especially since (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide is known in the art to provide improvement to the activity of known fungicides and make the fungicides more effective than when used alone, one of ordinary skill in the art would be motivated to do this in order to have a reasonable expectation of improving the effectiveness of fluxapyroxad in treating/inhibiting fungal infections in crops.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the 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, as evidenced by the references, especially in the absence of evidence to the contrary.
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, 6, 8, 11, 18-21, 23-24, 26, 33, 35, and 37 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12213482 (‘482) in view of Roux et al. (WO2016123191), Windsor et al. (WO2001066792) and EPA (https://web.archive.org/web/20130708155945/https://www3.epa.gov/pesticides/chem_search/reg_actions/registration /fs_PC-138009_02-May-12.pdf), and Ouimette et al. (WO2014105842).
‘482 teaches compositions comprising the claimed (E)-3-methyl-N′-(1-(naphthalen-2-yl)ethylidene) benzohydrazide (enhance) and the claimed tebuconazole or the claimed prothioconazole or the claimed difenoconazole which are synergistic. ‘482 does not specifically claim the claimed methods or teach the claimed enhancer with the elected fluxapyroxad. However, these deficiencies in ‘482 are addressed by Roux, Windsor, EPA, and Ouimette.
Roux teaches synergistic compositions and methods comprising applying the claimed (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with the claimed tebuconazole or prothioconazole or difenoconazole to seeds or plants at risk of fungal infections (which do not actually have to be infected with any of the claimed fungi), specifically soybean plants and seeds (which are at risk of infection by the claimed Asian soybean rust), and wheat plants and seeds (which are at risk of infection by the claimed downy mildew, brown rust, Septoria and yellow rust) (see entire document; e.g. abstract; all claims; pg. 1, ln. 29-pg. 2, ln. 2 which readily demonstrates/teaches that the claimed compositions can be readily envisioned from the teachings of Roux and were already recognized to be synergistic against fungal infection; pg. 2, ln. 3-pg. 2, ln. 23; pg. 6, ln. 32-pg. 7, ln. 10; AI.15 pg. 10; pg. 2, ln. 30-33; pg. 3, ln. 9-13; pg. 5, ln. 33-pg.6, ln. 15; pg. 6, ln. 16-18; pg. 15, ln. 10-pg. 17, ln. 17). The methods of Roux which accomplish the claimed active steps would obviously be inhibiting fungal infections in seeds or plants at risk thereof including the claimed diseases since the claimed methods do not actually require infection with the claimed diseases they merely require contacting seeds or plants at risk of infection with the claimed compositions/combinations and the claimed combinations are taught by Roux to be synergistic.
Regarding claim 23, because Roux teaches the claimed combinations of (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with the claimed tebuconazole or prothioconazole or difenoconazole to seeds or plants at risk of fungal infections to provide synergistic control and these amounts are the same/overlap those instantly disclosed to be synergistically effective against the other diseases claimed in claim 23, then Roux also renders obvious the instant claim since the instant claim is to the composition itself and the amounts of the active agents present as taught by Roux would lead to the synergistic control of the claimed infections when used in the instant intended use which does not appear to structurally distinguish the instantly claimed compositions from those taught by Roux (see entire document; e.g. abstract; all claims; pg. 1, ln. 29-pg. 2, ln. 2 which readily demonstrates/teaches that the claimed compositions can be readily envisioned from the teachings of Roux and were already recognized to be synergistic against fungal infection; pg. 2, ln. 3-pg. 2, ln. 23; pg. 6, ln. 32-pg. 7, ln. 10; AI.15 pg. 10; pg. 2, ln. 30-33; pg. 3, ln. 9-13; pg. 5, ln. 33-pg.6, ln. 15; pg. 6, ln. 16-18; pg. 15, ln. 10-pg. 17, ln. 17).
Roux teaches wherein the claimed combinations can be used on soybeans (which are at risk for Asian soybean rust) and wheat (which is at risk for Yellow rust, Septoria, and downy mildew) and as such Roux reads on/anticipates the claimed method of claim 24 which only requires application/applying to plants or seeds at risk of infection by the claimed pathogens (i.e. the methods do not actually require infection with the claimed phytopathogens) (see entire document; e.g. abstract; all claims; pg. 1, ln. 29-pg. 2, ln. 2 which readily demonstrates/teaches that the claimed compositions can be readily envisioned from the teachings of Roux and were already recognized to be synergistic against fungal infection; pg. 2, ln. 3-pg. 2, ln. 23; pg. 6, ln. 32-pg. 7, ln. 10; AI.15 pg. 10; pg. 2, ln. 30-33; pg. 3, ln. 9-13; pg. 5, ln. 33-pg.6, ln. 15; pg. 6, ln. 16-18; pg. 15, ln. 10-pg. 17, ln. 17).
Windsor teaches that applicant’s claimed apyrase inhibitor as their formula X (pg. 37), and wherein it is known to combine these compounds with fungicides as they are known to act as adjuvants for these pesticides and are known to reducing/reversing MDR in plants and yeast (See entire document; pg. 32, ln. 5-13; claims; pg. 40, ln. 14-pg. 41, ln. 9;
EPA teaches that it was known to use fluxapyroxad to control a broad spectrum of fungal infections in wheat, corn, soybean and a variety of other crops via plant and seed treatment (see entire document; Use pattern and formulation section pg. 2;).
Ouimette teaches that it was known to use combinations comprising fluxapyroxad to control a broad spectrum of fungal infections in wheat and other crops including the claimed Septoria, brown rust, etc. by applying to seeds and/or plants ([0033]; abstract; [0031-0032]; [0011]; claims).
It would be obvious to form the claimed combinations for use in the claimed methods when looking to the combination of ‘482 in view of Roux and the combined references because the claimed combinations were already known in the art to be effective and/or synergistic for inhibiting fungal infections in the same crop species as are instantly disclosed which are at risk for the claimed infections when used in the disclosed amounts which are taught by the combined prior art as discussed above. Further, it would have been obvious to one of ordinary skill in the art at the time of the instant filing to have combined the claimed fluxapyroxad as taught by EPA and Ouimette into the combinations of Roux and/or replaced the triazole fungicide of Roux for the claimed fluxapyroxad as taught by EPA and Ouimette because Windsor teaches that the combinations of applicant’s (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with fungicides wherein the (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide acts as an adjuvant for the fungicides. Thus, it would be obvious to combine (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with other fungicides in order to provide adjuvant activity to other fungicides, e.g. the elected fluxapyroxad, especially since (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide is known in the art to provide improvement to the activity of known fungicides and make the fungicides more effective than when used alone, one of ordinary skill in the art would be motivated to do this in order to have a reasonable expectation of improving the effectiveness of fluxapyroxad in treating/inhibiting fungal infections in crops.
Thus, one of ordinary skill in the art would conclude that the instantly claimed methods and compositions are an obvious variant of the invention of U.S. Patent No. 12213482 (‘482) when taken in view of in view of Roux et al. (WO2016123191), Windsor et al. (WO2001066792) and EPA (https://web.archive.org/web/20130708155945/https://www3.epa.gov/pesticides/chem_search/reg_actions/registration /fs_PC-138009_02-May-12.pdf), and Ouimette et al. (WO2014105842).
Claims 1, 6, 8, 11, 18-21, 23-24, 26, 33, 35, and 37 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11129383 (‘383) in view of Roux et al. (WO2016123191), Windsor et al. (WO2001066792) and EPA (https://web.archive.org/web/20130708155945/https://www3.epa.gov/pesticides/chem_search/reg_actions/registration /fs_PC-138009_02-May-12.pdf), and Ouimette et al. (WO2014105842).
‘383 teaches methods which comprise treating/applying to plants or seeds of the same crops which are at risk of the claimed fungal infections compositions comprising the claimed (E)-3-methyl-N′-(1-(naphthalen-2-yl)ethylidene) benzohydrazide (enhancer) with the claimed tebuconazole or the claimed prothioconazole or the claimed difenoconazole which are synergistic and wherein the same/overlapping amounts of the actives are used in the composition/method as are instantly disclosed. ‘383 does not specifically claim the claimed composition or wherein the crops are at risk of infection by the claimed diseases or teach the claimed enhancer with the elected fluxapyroxad. However, these deficiencies in ‘383 are addressed by Roux, Windsor, EPA, and Ouimette.
Roux teaches synergistic compositions and methods comprising applying the claimed (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with the claimed tebuconazole or prothioconazole or difenoconazole to seeds or plants at risk of fungal infections (which do not actually have to be infected with any of the claimed fungi), specifically soybean plants and seeds (which are at risk of infection by the claimed Asian soybean rust), and wheat plants and seeds (which are at risk of infection by the claimed downy mildew, brown rust, Septoria and yellow rust) (see entire document; e.g. abstract; all claims; pg. 1, ln. 29-pg. 2, ln. 2 which readily demonstrates/teaches that the claimed compositions can be readily envisioned from the teachings of Roux and were already recognized to be synergistic against fungal infection; pg. 2, ln. 3-pg. 2, ln. 23; pg. 6, ln. 32-pg. 7, ln. 10; AI.15 pg. 10; pg. 2, ln. 30-33; pg. 3, ln. 9-13; pg. 5, ln. 33-pg.6, ln. 15; pg. 6, ln. 16-18; pg. 15, ln. 10-pg. 17, ln. 17). The methods of Roux which accomplish the claimed active steps would obviously be inhibiting fungal infections in seeds or plants at risk thereof including the claimed diseases since the claimed methods do not actually require infection with the claimed diseases they merely require contacting seeds or plants at risk of infection with the claimed compositions/combinations and the claimed combinations are taught by Roux to be synergistic.
Regarding claim 23, because Roux teaches the claimed combinations of (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with the claimed tebuconazole or prothioconazole or difenoconazole to seeds or plants at risk of fungal infections to provide synergistic control and these amounts are the same/overlap those instantly disclosed to be synergistically effective against the other diseases claimed in claim 23, then Roux also renders obvious the instant claim since the instant claim is to the composition itself and the amounts of the active agents present as taught by Roux would lead to the synergistic control of the claimed infections when used in the instant intended use which does not appear to structurally distinguish the instantly claimed compositions from those taught by Roux (see entire document; e.g. abstract; all claims; pg. 1, ln. 29-pg. 2, ln. 2 which readily demonstrates/teaches that the claimed compositions can be readily envisioned from the teachings of Roux and were already recognized to be synergistic against fungal infection; pg. 2, ln. 3-pg. 2, ln. 23; pg. 6, ln. 32-pg. 7, ln. 10; AI.15 pg. 10; pg. 2, ln. 30-33; pg. 3, ln. 9-13; pg. 5, ln. 33-pg.6, ln. 15; pg. 6, ln. 16-18; pg. 15, ln. 10-pg. 17, ln. 17).
Roux teaches wherein the claimed combinations can be used on soybeans (which are at risk for Asian soybean rust) and wheat (which is at risk for Yellow rust, Septoria, and downy mildew) and as such Roux reads on the claimed method of claim 24 which only requires application/applying to plants or seeds at risk of infection by the claimed pathogens (i.e. the methods do not actually require infection with the claimed phytopathogens) (see entire document; e.g. abstract; all claims; pg. 1, ln. 29-pg. 2, ln. 2 which readily demonstrates/teaches that the claimed compositions can be readily envisioned from the teachings of Roux and were already recognized to be synergistic against fungal infection; pg. 2, ln. 3-pg. 2, ln. 23; pg. 6, ln. 32-pg. 7, ln. 10; AI.15 pg. 10; pg. 2, ln. 30-33; pg. 3, ln. 9-13; pg. 5, ln. 33-pg.6, ln. 15; pg. 6, ln. 16-18; pg. 15, ln. 10-pg. 17, ln. 17).
Windsor teaches that applicant’s claimed apyrase inhibitor as their formula X (pg. 37), and wherein it is known to combine these compounds with fungicides as they are known to act as adjuvants for these pesticides and are known to reducing/reversing MDR in plants and yeast (See entire document; pg. 32, ln. 5-13; claims; pg. 40, ln. 14-pg. 41, ln. 9;
EPA teaches that it was known to use fluxapyroxad to control a broad spectrum of fungal infections in wheat, corn, soybean and a variety of other crops via plant and seed treatment (see entire document; Use pattern and formulation section pg. 2; ).
Ouimette teaches that it was known to use combinations comprising fluxapyroxad to control a broad spectrum of fungal infections in wheat and other crops including the claimed Septoria, brown rust, etc. by applying to seeds and/or plants ([0033]; abstract; [0031-0032]; [0011]; claims).
It would be obvious to form the claimed combinations for use in the claimed methods when looking to the combination of ‘383 in view of Roux and the combined references because the claimed combinations were already known in the art to be effective and/or synergistic for inhibiting fungal infections in the same crop species as are instantly disclosed which are at risk for the claimed infections when used in the disclosed amounts which are taught by the combined prior art as discussed above. Further, it would have been obvious to one of ordinary skill in the art at the time of the instant filing to have combined the claimed fluxapyroxad as taught by EPA and Ouimette into the combinations of Roux and/or replaced the triazole fungicide of Roux for the claimed fluxapyroxad as taught by EPA and Ouimette because Windsor teaches that the combinations of applicant’s (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with fungicides wherein the (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide acts as an adjuvant for the fungicides. Thus, it would be obvious to combine (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide with other fungicides in order to provide adjuvant activity to other fungicides, e.g. the elected fluxapyroxad, especially since (E)-3-methyl-N'-(1-(naphthalen-2-yl)ethylidene) benzohydrazide is known in the art to provide improvement to the activity of known fungicides and make the fungicides more effective than when used alone, one of ordinary skill in the art would be motivated to do this in order to have a reasonable expectation of improving the effectiveness of fluxapyroxad in treating/inhibiting fungal infections in crops.
Thus, one of ordinary skill in the art would conclude that the instantly claimed methods and compositions are an obvious variant of the inventions of U.S. Patent No. 11129383 when taken in view of in view of Roux et al. (WO2016123191), Windsor et al. (WO2001066792) and EPA (https://web.archive.org/web/20130708155945/https://www3.epa.gov/pesticides/chem_search/reg_actions/registration /fs_PC-138009_02-May-12.pdf), and Ouimette et al. (WO2014105842).
Conclusion
No claims are allowed.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616