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 .
New Examiner of Record
There is a new examiner of record in this application, Erin Hirt.
Election/Restrictions
The new examiner is withdrawing the previous election of species requirement since all compounds claimed do have a common property as a fungicide for soybean rust. Thus, any election of species, etc. previously made by applicants is deemed unnecessary and the examiner’s search was not at all limited to or focused on the elected species but was on the broader compound scope of formula (I) in general. Pursuant to the procedures set forth in MPEP § 821.04(a), the previous restriction/election of species requirement is withdrawn and the entire claim scope of compounds is hereby rejoined and examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Interpretation
The examiner notes that the “for controlling soybean rust fungus having an amino acid substitution of F129L on mitochondrial cytochrome b protein” is the intended use of the claimed method as the only active step of applying an effective amount of the claimed compounds of formula (I) to soybeans or soil where soybean is grown. It does not actually require the soybeans to be infected with said soybean rust or in need of said controlling. Thus, any application of the disclosed effective amounts of the claimed compounds to soybeans/their soil is interpreted to read on the claimed method at this time.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-2 are indefinite because the claims recite multiple phrases (which are not chemical formula or alternative names of substances or abbreviations which are allowable uses of parentheses in claims) in parentheses (e.g. ( )), curly brackets (e.g. { }) and brackets (e.g. [ ]) it is unclear if these phrases are meant to be limitations which are read into the claim or not. If they are meant to be part of the claim removing the brackets, curly brackets, and parentheses would overcome this rejection.
Claims 1-2 are also indefinite because they repeatedly use double/duplicate optional language, e.g. “may be optionally” which would mean that it is optional that it is optionally substituted, and as such it is unclear whether applicants are requiring the substitution or it is optional in each instance this language is used. Based on the specification and examples the examiner is interpreting the substitutions to be optional. Thus, replacing the phrases may be optionally with “may be substituted” or “is optionally substituted” would overcome this rejection.
The examiner kindly and respectfully requests applicant’s assistance in ensuring that each instance of the each of the above issues are addressed in their next response as both issues are present in the claims in multiple instances.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 2 depends from claim 1 which expressly recites that E represents…each may be optionally substituted with one or more substituents selected from Group D. However, claim 2 recites that E represents… each may be optionally substituted with one or more substituents selected from Group C, and group C is different from group D and nothing in claim 1 recites that the groups of E can be substituted with group C which is a different collection of substituents than those claimed in group D. Thus, it appears that claim 2 is improperly broadening the scope of substituents from those recited in claim 1 from which it depends. This same issue is also found in the description of R7 in this claim. Because for instance if in claim 2, E or R7 are phenyl, this phenyl reads on the C6-C10 aryl groups disclosed in the definitions of E or R7 in claim 1 which can be substituted with substituents from group D as per claim 1, not group C as claimed in claim 2.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakaguchi et al. (WO0100562).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-2, Sakaguchi teaches methods of applying effective amounts of their compounds 2-1 to 2-5 in Table 6 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…).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Sakaguchi does not teach the claimed intended use of controlling soybean rust fungus having an amino acid substitution of F129L on mitochondrial cytochrome b protein via 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 and nothing in the instantly claimed method actually requires the soybeans to be infected with the claimed soybean rust fungus or be in need of said control as the claims are currently written.
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 as taught by Sakaguchi that one of ordinary skill in the art would have been controlling the claimed soybean rust having the claimed 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 especially since nothing in the instantly claimed active step of the method requires that the soybeans being treated actually be in need of said control and/or be infected with said soybean rust fungus having the amino acid substitution of F129L on mitochondrial cytochrome b protein and further 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.
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 because of their known ability to control other phytopathogenic Phakopsora infections, with a reasonable expectation of success.
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 1-2 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).
‘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. However, as discussed above the only active step required by the instantly claimed method is applying effective amounts of the claimed compounds to soybeans/soil where soybeans are grown and nothing in the instantly claimed active step of the method actually requires that the soybeans being treated actually be in need of said control and/or be infected with said soybean rust fungus having the amino acid substitution of F129L on mitochondrial cytochrome b protein. Thus, application to any soybean would be accomplishing applicant’s intended use of the claimed method step of controlling soybean rust fungus having an amino acid substitution of F129L on mitochondrial cytochrome b protein. However, this deficiency in ‘540 is addressed by Sakaguchi.
Sakaguchi teaches methods of applying effective amounts of their compounds 2-1 to 2-5 in Table 6 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…).
It would have been obvious to form the claimed method when looking to ‘540 and Sakaguchi 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 nothing in the instantly claimed active step of the method requires that the soybeans being treated actually be in need of said control and/or be infected with said soybean rust fungus having the amino acid substitution of F129L on mitochondrial cytochrome b protein and further 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.
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 ‘540 and 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 because of their known ability to control other phytopathogenic Phakopsora infections, with a reasonable expectation of success.
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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of US Patent No. 12527843 (“843 which arose from application ‘527) in view of Sakaguchi et al. (WO0100562).
‘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. However, as discussed above the only active step required by the instantly claimed method is applying effective amounts of the claimed compounds to soybeans/soil where soybeans are grown and nothing in the instantly claimed active step of the method actually requires that the soybeans being treated actually be in need of said control and/or be infected with said soybean rust fungus having the amino acid substitution of F129L on mitochondrial cytochrome b protein. Thus, application to any soybean would be accomplishing applicant’s intended use of the claimed method step of controlling soybean rust fungus having an amino acid substitution of F129L on mitochondrial cytochrome b protein and no additional active agents are excluded from the claimed method and as such the combinations of ‘843 are not excluded However, this deficiency in ‘843 is addressed by Sakaguchi.
Sakaguchi teaches methods of applying effective amounts of their compounds 2-1 to 2-5 in Table 6 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…).
It would have been obvious to form the claimed method when looking to ‘843 and Sakaguchi because when applying the claimed compounds in the effective amounts to soybeans as taught by the combination of ‘843 and Sakaguchi 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 especially since nothing in the instantly claimed active step of the method requires that the soybeans being treated actually be in need of said control and/or be infected with said soybean rust fungus having the amino acid substitution of F129L on mitochondrial cytochrome b protein and further 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.
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 ‘843 and 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 because of their known ability to control other phytopathogenic Phakopsora infections, with a reasonable expectation of success.
Thus, one of ordinary skill in the art would conclude that the composition and methods disclosed by US12520843 in view of Sakaguchi render obvious the claimed method at this time.
Conclusion
No claims are allowed.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIN E HIRT/Primary Examiner, Art Unit 1616