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 .
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.
Claim(s) 3-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakaguchi et al. (WO0100562) and Klosowski et al. (Pest Mgmt. Sci., 2015, 72(6), 1211-1215) as evidenced by Discover Magazine (www.magazinediscover.com/2014/01/brazil-soybean-2014/)
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 3-6, Sakaguchi teaches methods of applying effective amounts of their compounds 2-1 to 2-5 for instance which read on the claimed formula (I), wherein applicant’s Q is Q1, L is CH2, E is a phenyl group that is unsubstituted or is substituted with a halogen, R1 is a methyl group, and n=0, and Sakaguchi teaches methods which comprise applying these compounds to plants/crops including soybeans to control fungal diseases and to control diseases caused by other species of Phakopsora in other crops (see entire document; e.g. Equation 1-2 and the following Table 7; compounds 2-1 through 2-5, etc.; see short paragraph beginning with: Green onion rust…soybean purpura…; Paragraph beginning: Grape scab (Elsinoe ampelina)…(Phakopsora ampelopsidis)…; Paragraph beginning: Black spot of citrus…soybean sickness…) wherein the effective amounts of Sakaguchi are dependent upon crop type, disease to be treated/controlled, application method, degree of occurrence of the disease, weather conditions, etc. but are typically 0.01 to 50 g/acre and when diluted with water the application concentration of the compounds is/are typically .001 to 3%, both of which read on the instantly disclosed effective amounts of 0.1-99% by weight based on the total weight of the composition (see entire document; see paragraph beginning: When the compound of the present invention is used as an active ingredient in an agricultural and horticultural fungicide…; paragraph beginning: When the emulsion, wettable powder, suspending agent and the like are diluted with water and applied…; (see entire document; e.g. Equation 1-2 Table 7; compounds 2-1 through 2-5, etc.; see short paragraph beginning with: Green onion rust…soybean purpura…; Paragraph beginning: Grape scab (Elsinoe ampelina)…(Phakopsora ampelopsidis)…; Paragraph beginning: Black spot of citrus…soybean sickness…).
Regarding claims 3-7, Sakaguchi further teaches wherein their W which corresponds to the instant L can be oxygen as claimed and wherein all of the other structural variables are as claimed see for instance compound 1-1 which reads on claim 7, as well as compounds 1-2 through 1-5 for instance (See entire document; equation 1-1 and following table 1, additionally all sections cited above, etc.).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Sakaguchi does not teach wherein soybean rust fungus specifically has the claimed amino acid substitution of F129L on mitochondrial cytochrome b protein with their method. However, Sakaguchi does teach applying effective amounts of the same active agents to soybeans to control other diseases and teaches controlling other rust diseases in other crops caused by Phakopsora. However, this deficiency in Sakaguchi is addressed by Klosowski.
Klowsowski teaches that in South America damage of up to 80% of soybean yield has been reported from Asian soybean rust/soybean rust, Phakopsora pachyrhizi, and that mutations in the target cytochrome b (CYTB) gene may result in reduced sensitivity of pathogens to QoI fungicides because of reduction in fungicide binding affinity owing to the changes in the amino acid sequence, specifically they note that from 2012-2014 soybean fields in Brazil which was in the world’s top two largest producers of soybeans at that time (as evidenced by discover magazine (See entire document, no date but because they were discussing 2014 harvest before it occurred and projected harvests it was clearly more than 1 year before the instant filing date of 2018), were monitored for Phakopsora pachyrhizi, and the strains were isolated and measured for F129L mutations and they found that prior to the instant filing there were areas with up to 100% of the Phakopsora pachyrhizi, having the F129L mutation making them more resistant for QoI fungicides, specifically nearly all monouredinial isolates and population sampled from different seasons and Brazilian regions showed very high frequencies (up to 100%) of the F129L mutation in the CYTB target gene of QoIs (See entire document; introduction; materials and methods; section 3.2 Table 2).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious that when applying the claimed compounds in the effective amounts to soybeans in Brazil which was the world’s second largest producer of soybeans at the time of the study by Klowsowski and as such would clearly be a place the methods and compositions and compounds of Sakaguchi are being employed since Phakopsora pachyrhizi infections are prevalent there as taught by Klowsowski, that one of ordinary skill in the art would have been controlling the claimed soybean rust having the claimed F129L mutations because Sakaguchi teaches methods which include performing the only active step required by the instantly claimed method, specifically applying effective amounts of the claimed compounds to soybeans/soil where soybeans are grown and because Sakaguchi teaches that it was known to apply the same compounds in the same/overlapping effective amounts to soybeans to control various fungal infections especially since as is taught by Klowsowski nearly all monouredinial isolates and population sampled from different seasons and Brazilian regions showed very high frequencies (up to 100%) of the F129L mutation in the CYTB target gene of QoIs. Thus, when treating soybeans in Brazil which was the world’s second largest producer of soybeans at the time of Klowsowski’s study and as such one of ordinary skill in the art when performing Sakaguchi’s method to treat soybean rust (Phakopsora pachyrhizi) would obviously be treating Phakopsora pachyrhizi having the claimed mutations since the claimed mutation is very prevalent in the Phakopsora pachyrhizi found in soybean growing areas of Brazil as discussed above with many fields having 97% or greater levels of this mutation thereby making Phakopsora pachyrhizi/soybean rust infections in soybeans in those areas ubiquitous for having the claimed mutation.
Further, it also would have been obvious to one of ordinary skill in the art to at the very least try applying the claimed compounds in the claimed effective amounts which are taught by Sakaguchi to control the claimed soybean rust fungus having the claimed mutations because firstly as discussed above Sakaguchi teaches that it was known to apply the same compounds in the same/overlapping effective amounts to soybeans to control various fungal infections and secondly because Sakaguchi teaches that the claimed compounds are effective against other phytopathogenic species of the Phakopsora genus which is the genus of the causative agent of the claimed soybean rust fungus having the claimed mutations. Thus, it would be obvious to try antifungal agents which are useful for controlling other phytopathogenic Phakopsora species in order to control the claimed soybean rust fungus having the claimed mutation which also belongs to the Phakopsora genus. One of ordinary skill in the art would be motivated to try the claimed compounds in the claimed method of applying the claimed compounds to soybeans in areas having soybean rust fungus with the F129L mutation because at the time of sampling in Klowsowski to determine the spread of/prevalence of the F129L mutation in 2104 they would not have been aware of the how widespread the mutation was and would obviously be treating the soybeans having soybean rust fungus with known methods, e.g. the claimed compounds via the methods of Sakaguchi, and as such would obviously already be controlling the claimed rust fungus having the claimed mutation whether or not they were aware the fungus had the F129L mutation because the mutation was so prevalent/basically ubiquitous in Brazil in 2014 which is prior to the instant filing date.
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 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 11, 14-17 of copending application No. 17759540 in view of Sakaguchi et al. (WO0100562) and Klowsowski (as cited above) as evidenced by Discover Magazine (www.magazinediscover.com/2014/01/brazil-soybean-2014/).
‘540 teaches applying a narrower scope of the same compound (I) in a composition to plants in effective amounts to control any and all plant diseases which would broadly include the claimed soybean rust having the F129L mutation as claimed. ‘540 does not teach wherein the plants/crops to which the composition/compound is applied in effective amounts are soybeans or specifically wherein the method controls the specifically claimed disease having the claimed mutations or wherein the disease is present in the environment. However, these deficiencies in ‘540 are addressed by Sakaguchi and Klowsowski.
Sakaguchi teaches methods of applying effective amounts of their compounds 1-1 and 1-5 from Table 1 and 2-1 to 2-5 in Table 6 (typo as table 7 is cited) for instance which read on the claimed formula (I), wherein applicant’s Q is Q1, L is CH2, E is a phenyl group that is unsubstituted or is substituted with a halogen, R1 is a methyl group, and n=0, and Sakaguchi teaches methods which comprise applying these compounds to plants/crops including soybeans to control fungal diseases and to control diseases caused by other species of Phakopsora in other crops (see entire document; e.g. equation 1-1 and the following table 1, compounds 1-1 through 1-5, etc.; Equation 1-2 and the following Table 7; compounds 2-1 through 2-5, etc.; see short paragraph beginning with: Green onion rust…soybean purpura…; Paragraph beginning: Grape scab (Elsinoe ampelina)…(Phakopsora ampelopsidis)…; Paragraph beginning: Black spot of citrus…soybean sickness…) wherein the effective amounts of Sakaguchi are dependent upon crop type, disease to be treated/controlled, application method, degree of occurrence of the disease, weather conditions, etc. but are typically 0.01 to 50 g/acre and when diluted with water the application concentration of the compounds is/are typically .001 to 3%, both of which read on the instantly disclosed effective amounts of 0.1-99% by weight based on the total weight of the composition (see entire document; see paragraph beginning: When the compound of the present invention is used as an active ingredient in an agricultural and horticultural fungicide…; paragraph beginning: When the emulsion, wettable powder, suspending agent and the like are diluted with water and applied…; (see entire document; e.g. equation 1-1 and the following table 1, compounds 1-1 through 1-5, etc., e.g. Equation 1-2 Table 7; compounds 2-1 through 2-5, etc.; see short paragraph beginning with: Green onion rust…soybean purpura…; Paragraph beginning: Grape scab (Elsinoe ampelina)…(Phakopsora ampelopsidis)…; Paragraph beginning: Black spot of citrus…soybean sickness…).
Klowsowski teaches that in South America damage of up to 80% of soybean yield has been reported from Asian soybean rust/soybean rust, Phakopsora pachyrhizi, and that mutations in the target cytochrome b (CYTB) gene may result in reduced sensitivity of pathogens to QoI fungicides because of reduction in fungicide binding affinity owing to the changes in the amino acid sequence, specifically they note that from 2012-2014 soybean fields in Brazil which was in the world’s top two largest producers of soybeans at that time (as evidenced by magazinediscover (See entire document, no date but because they were discussing 2014 harvest before it occurred and projected harvests it was clearly more than 1 year before the instant filing date of 2018), were monitored for Phakopsora pachyrhizi, and the strains were isolated and measured for F129L mutations and they found that prior to the instant filing there were areas with up to 100% of the Phakopsora pachyrhizi, having the F129L mutation making them more resistant for QoI fungicides, specifically nearly all monouredinial isolates and population sampled from different seasons and Brazilian regions showed very high frequencies (up to 100%) of the F129L mutation in the CYTB target gene of QoIs (See entire document; introduction; materials and methods; section 3.2 Table 2).
It would have been obvious to form the claimed method when looking to ‘540, Sakaguchi, and Klowsowski because when applying the claimed compounds in the effective amounts to soybeans as taught by the combination of ‘540 and Sakaguchi that one of ordinary skill in the art would have been controlling the claimed soybean rust having the claimed mutations because ‘540 and Sakaguchi together teach methods which include performing the only active step required by the instantly claimed method, specifically applying effective amounts of the claimed compounds to soybeans/soil where soybeans are grown especially since Klowsowski teaches that the soybean rust fungus having the claimed mutations is extremely common and/or nearly/basically ubiquitous in Brazil which was the world’s second largest producer of soybeans at the time of Klowsowski as evidenced by Discover Magazine (See entire document/article). Thus, when the methods of ‘540 and Sakaguchi would be used on soybeans in Brazil then obviously they would already be treating soybean fungus having the claimed mutation whether or not it was recognized because Klowsowski teaches that the mutation is extremely prevalent in the main areas where soybeans are grown in Brazil.
Thus, one of ordinary skill in the art would conclude that the composition and methods disclosed by copending 17759540 in view of Sakaguchi render obvious the claimed method at this time.
Claims 3-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of US Patent No. 12527843 (typo should read 12520843 as cited on previous IDS) (“843 which arose from application ‘527) in view of Sakaguchi et al. (WO0100562) and Klowsowski (as cited above) as evidenced by Discover Magazine (www.magazinediscover.com/2014/01/brazil-soybean-2014/).
‘843 teaches applying a narrower scope of the claimed compound (I) in a composition to plants in effective amounts to control any and all plant diseases which would broadly include the claimed soybean rust having the F129L mutation as claimed. ‘843 does not teach wherein the plants/crops to which the composition/compound is applied in effective amounts are soybeans or specifically wherein the method controls the specifically claimed disease having the claimed mutation. Thus, because no additional active agents are excluded from the claimed method and as such the combinations of ‘843 are not excluded. However, these deficiencies in ‘843 are addressed by Sakaguchi and Klowsowski
Sakaguchi teaches methods of applying effective amounts of their compounds 1-1 and 1-5 from Table 1 and 2-1 to 2-5 in Table 6 (typo as table 7 is cited) for instance which read on the claimed formula (I), wherein applicant’s Q is Q1, L is CH2, E is a phenyl group that is unsubstituted or is substituted with a halogen, R1 is a methyl group, and n=0, and Sakaguchi teaches methods which comprise applying these compounds to plants/crops including soybeans to control fungal diseases and to control diseases caused by other species of Phakopsora in other crops (see entire document; e.g. equation 1-1 and the following table 1, compounds 1-1 through 1-5, etc.; Equation 1-2 and the following Table 7; compounds 2-1 through 2-5, etc.; see short paragraph beginning with: Green onion rust…soybean purpura…; Paragraph beginning: Grape scab (Elsinoe ampelina)…(Phakopsora ampelopsidis)…; Paragraph beginning: Black spot of citrus…soybean sickness…) wherein the effective amounts of Sakaguchi are dependent upon crop type, disease to be treated/controlled, application method, degree of occurrence of the disease, weather conditions, etc. but are typically 0.01 to 50 g/acre and when diluted with water the application concentration of the compounds is/are typically .001 to 3%, both of which read on the instantly disclosed effective amounts of 0.1-99% by weight based on the total weight of the composition (see entire document; see paragraph beginning: When the compound of the present invention is used as an active ingredient in an agricultural and horticultural fungicide…; paragraph beginning: When the emulsion, wettable powder, suspending agent and the like are diluted with water and applied…; (see entire document; e.g. equation 1-1 and the following table 1, compounds 1-1 through 1-5, etc., e.g. Equation 1-2 Table 7; compounds 2-1 through 2-5, etc.; see short paragraph beginning with: Green onion rust…soybean purpura…; Paragraph beginning: Grape scab (Elsinoe ampelina)…(Phakopsora ampelopsidis)…; Paragraph beginning: Black spot of citrus…soybean sickness…).
Klowsowski teaches that in South America damage of up to 80% of soybean yield has been reported from Asian soybean rust/soybean rust, Phakopsora pachyrhizi, and that mutations in the target cytochrome b (CYTB) gene may result in reduced sensitivity of pathogens to QoI fungicides because of reduction in fungicide binding affinity owing to the changes in the amino acid sequence, specifically they note that from 2012-2014 soybean fields in Brazil which was in the world’s top two largest producers of soybeans at that time (as evidenced by magazinediscover (See entire document, no date but because they were discussing 2014 harvest before it occurred and projected harvests it was clearly more than 1 year before the instant filing date of 2018), were monitored for Phakopsora pachyrhizi, and the strains were isolated and measured for F129L mutations and they found that prior to the instant filing there were areas with up to 100% of the Phakopsora pachyrhizi, having the F129L mutation making them more resistant for QoI fungicides, specifically nearly all monouredinial isolates and population sampled from different seasons and Brazilian regions showed very high frequencies (up to 100%) of the F129L mutation in the CYTB target gene of QoIs (See entire document; introduction; materials and methods; section 3.2 Table 2).
It would have been obvious to form the claimed method when looking to ‘843, Sakaguchi, and Klowsowski because when applying the claimed compounds in the effective amounts to soybeans as taught by the combination of ‘843 and Sakaguchi and Klowsowski that one of ordinary skill in the art would have been controlling the claimed soybean rust having the claimed mutations because ‘843 and Sakaguchi together teach methods which include performing the only active step required by the instantly claimed method specifically applying effective amounts of the claimed compounds to soybeans/soil where soybeans are grown and Sakaguchi teaches that it was known to apply the same compounds in the same/overlapping effective amounts to soybeans to control various fungal infections and Klowsowski teaches that these mutations were very common/prevalent and/or nearly/basically ubiquitous in Brazil which was the second largest producer of soybeans in the world at the time of Klowsowski’s study Klowsowski as evidenced by Discover Magazine (See entire document/article). Thus, in controlling soybean rust in Brazil with the methods/compounds of Sakaguch and/or ‘843 one of ordinary skill in the would obviously have already been treating the claimed soybean rust fungus having the claimed mutations based on the teachings of Klowsowski.
Thus, one of ordinary skill in the art would conclude that the composition and methods disclosed by US12520843 in view of Sakaguchi and Klowsowski render obvious the claimed method at this time.
Response to Arguments/Remarks
The updated search by examiner based on applicant’s amendments has prompted the new grounds of rejection presented herein at this time as applicant’s amendments were enough to overcome the previous grounds of rejection under 103. Applicant’s canceling of claims 1-2 have overcome the previous 112(b) and (d) rejections which are hereby withdrawn.
Applicant’s arguments insofar as they pertain to the new grounds of rejection are addressed herein.
Applicants argue that the examiner’s statement that it would have been obvious to try the compounds of Sakaguchi for treating the claimed soybean rust fungus having the claimed mutation because it was known/believed at the time that the claimed soybean rust fungus having the F129L mutation to be not treatable by compounds that could control wild type fungus. The examiner respectfully disagrees because as discussed above the claimed mutation was very prevalent in Brazil which at the time of Klowsowski was the second highest producing country for soybeans in the world. Thus, any crops in Brazil in which the claimed compounds are being used in the method of Sakaguchi as discussed above would have obviously been treating at least some degree of the claimed soybean rust fungus having the claimed mutation since the claimed mutation is extremely prevalent in the (at the time) second highest producing nation for soybeans in the world. Further applicants have presented a declaration and argued this declaration which will be fully addressed for its contents separately below. Applicants argue that it is unexpected that compounds that worked on wild type fungus would actually be effective against the soybean fungus having the claimed mutation. The examiner respectfully disagrees because this mutation was very prevalent in Brazil which was the second highest producing soybean country in the world prior to applicants filing e.g. the time of Klowsowski and the claimed compounds were already known to be used in soybeans and would obviously have been in use in Brazil the second largest producer of soybeans in the world and as such when being used in Brazil would obviously have already been treating the claimed mutations which were already extremely prevalent there whether or not it was recognized by the growers, etc. Thus, the examiner disagrees that the claimed method would not have been known/obvious prior to the instant filing for the reasons discussed above and explained herein.
Applicants argue that the Kitahama declaration demonstrates the effectiveness of the claimed compounds vs the known QoI fungicides azoxystrobin, etc. which were not useful against soybean fungus having the claimed F129L mutation whereas applicants compounds were effective against wild type and against the soybean fungus having the claimed F129L mutation. The examiner respectfully points out that for the reasons discussed above and explained herein these results do not actually seem to be unexpected in light of the teachings of Klowsowski which show that the F129L mutation was highly prevalent in Brazil because in areas of high production of soybeans many of these areas had greater than 90% of the sampled soybean rust fungus had the claimed F129L mutation and as such because the claimed compounds were already known to treat soybeans and would obvious be used in Brazil the country producing the second highest amounts of soybeans in the world and where soybean rust fungus is known to be prevalent and affect soybean crops and as such when the claimed compounds were applied to the soybean crops in Brazil during the time of Klowsowski which is prior to the instant invention as the compounds were known prior to Klowsowski as is taught by Sakaguchi it would have been obvious that the claimed method was already being accomplished when the compounds of Sakaguchi were being applied to soybeans in Brazil. Thus, at this time the examiner is not persuaded by applicant’s results in the declaration because the examiner disagrees that one of ordinary skill in the art would have had no reason to apply the claimed compounds to soybeans in areas having soybean rust fungus with the F129L mutation, because at the time of the soybean rust sampling in Klowsowski to determine the spread of the F129L mutation they would not be aware of the mutation and would be treating the crops as was already known in the art for the claimed fungus, e.g. the methods taught by Sakaguchi, and as such would be controlling the claimed rust fungus having the claimed mutation whether or not they were aware the fungus had the F129L mutation because the mutation was so prevalent/basically ubiquitous in Brazil in 2014 which is prior to the instant filing date.
Applicants then argue that the double patenting rejection over copending 17759540 is overcome for the same reasons as discussed above. The examiner respectfully disagrees for the reasons discussed above which are incorporated herein. Applicants did not argue the double patenting rejection over ‘843 which was properly cited on IDS but which contained a typo in the action which has been addressed. As such, this rejection has been updated to address applicant’s new claims/new claimed compound scope.
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.
Declaration under 1.132
Kazuki Kitahama provided a declaration under 1.132, filed 07/24/26. The Declaration meets the formal requirements. In the most relevant part, the Declaration presents data which compares the fungicidal activity of several of the claimed compounds at two different application rates against both wild type and F129L mutated soybean rust fungus vs other common QoI inhibitors azoxystrobin, etc. at the same application rates against both wild type and F129L mutated soybean rust fungus. The data shows that the instantly claimed compounds were effective at the lower application rate in wild type soybean rust fungus and at both application rates against soybean rust fungus having the F129L mutation whereas the azoxystrobin, etc. were effective against wild type at both application rates and have no effectiveness against the F129L mutated soybean rust fungus.
A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the
Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d
1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than
merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5)
whether the prima facie case is sufficiently strong that allegedly superior results are insufficient
to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed.
Cir. 2007)). The relevant criterion here is )
whether the prima facie case is sufficiently strong that allegedly superior results are insufficient
to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed.
Cir. 2007)). The examiner has carefully reviewed the Declaration, including the data presented in the Declaration.
In the most relevant part of the declaration Kazuki Kitahama demonstrates that the claimed compounds are effective in both WT and F129L mutated soybean rust fungus which is unexpected and not recognized by the prior art and would not have been obvious to one of ordinary skill in the art. The examiner respectfully points out that for the reasons discussed above and explained herein these results do not actually seem to be unexpected in light of the teachings of Sakaguchi in view of Klowsowski which show that the F129L mutation was highly prevalent in Brazil because in areas of high production of soybeans many of these areas had greater than 90% of the sampled soybean rust fungus had the claimed F129L mutation and as such because the claimed compounds were already known to treat soybeans and would obvious be used in Brazil the country producing the second highest amounts of soybeans in the world and where soybean rust fungus is known to be prevalent and affect soybean crops and as such when the claimed compounds were applied to the soybean crops as is taught by Sakaguchi specifically in Brazil which would be a place the compounds/compositions of Sakaguchi would be used because of the high amounts of soybeans produced and the prevalence of soybean rust infections as discussed in Klowsowski, and as such during the time of Klowsowski which is prior to the instant invention as the claimed, the instantly claimed compounds were known to be used in soybeans to treat soybean fungal infections prior to Klowsowski as is taught by Sakaguchi it would have been obvious that the claimed method was already being accomplished when the compounds of Sakaguchi were being applied to soybeans growing in Brazil because as is taught by Klowsowski the F129L mutation in the soybean rust fungus is nearly ubiquitous. Thus, at this time the examiner is not persuaded by applicant’s results in the declaration because the examiner disagrees that one of ordinary skill in the art would have had no reason to apply the claimed compounds to soybeans in areas having soybean rust fungus with the F129L mutation because at the time of sampling in Klowsowski to determine the spread of/prevalence of the F129L mutation they were not aware of the how widespread the mutation was and would obviously be treating the soybeans having soybean rust fungus with known methods, e.g. the methods of Sakaguchi, and as such would be controlling the claimed rust fungus having the claimed mutation whether or not they were aware the fungus had the F129L mutation because the mutation was so prevalent/basically ubiquitous in Brazil in 2014 which is prior to the instant filing date.
Thus, the examiner is not persuaded by this evidence at this time, and for the above reasons, the examiner maintains that it would have been obvious to one of ordinary skill in the art at the time of the instant filing to have developed the claimed reaction conditions when looking to the prior art references as combined at this time.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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, Sue X 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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/ERIN E HIRT/ Primary Examiner, Art Unit 1616
