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 .
Status of the Claims
Claims 2, 7, 8, 10, 14, 20, 24, and 25 were previously cancelled. Claims 1, 3-6, 9, 11-13, 15-19, 21-23, and 26 are pending. Claims 21-23 stand withdrawn without traverse.
Claims 1, 3-6, 9, 11-13, 15-19, and 26 are under current examination.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-6, 9, 11-13, 15-17, 19, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Hou et al (CN104255743; publication date: 01/07/2015; citing the English machine translation; cited in the IDS filed 08/15/2023) in view of Pfeiffer et al. (US 2007/0191227; publication date: 08/16/2007; cited in the IDS filed 08/15/2023).
Regarding claims 1, 5, and 17, Hou discloses a bactericidal composition comprising kasugamycin and Thiodiazole-copper, and the ratio of quality and the number of copies of these substances is 10:1-1:100 (Hou: claim 1).
Hou does not disclose copper glycinate.
Pfeiffer discloses that copper glycinate (0011) is a copper salt useful for controlling pathogenic fungi (abstract) and that copper has been used in agriculture for controlling phytopathogenic fungi (0002).
It would have been prima facie obvious to use copper glycinate as the copper salt in Hou’s invention because one having ordinary skill would have recognized that it also served the same purpose of microbial control (see MPEP 2144.06).
With regard to the limitations of instant claims 5 and 17 requiring the composition to be “agricultural” the composition disclosed by Hou is considered to fall within the scope of “agricultural composition because it is for treatment of crops.
With regard to claims 1, 4, 6, 17, and 19, as noted above Hou discloses a range in ratio of kasugamycin and a different copper containing substance of from 10:1 to 1:100. This would have given one of ordinary skill a starting point to optimize the proportions of kasugamycin to copper glycinate to achieve optimal control over phytopathogenic fungi. See MPEP 2144.05(II)(A): Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With regard to instant claims 9 and 17, the composition disclosed by Hou may be an aqueous emulsion (i.e. a liquid).
With regard to claims 5, 11, and 17, Pfeiffer discloses that surfactants, herbicides, fungicides, other pesticides (0206). It would have been obvious to add these classes of active agents to Hou’s composition. One having ordinary skill would have been motivated to do so in order to provide additional agricultural benefits to the composition and would have had reasonable expectation of success because these were routinely used categories of ingredient in the art.
With regard to claims 12 and 13, as noted above, Pfeiffer teaches adding surfactants to the composition. Pfeiffer discloses further that alkylphenyl polyglycol ethers are suitable examples of surfactants for such compositions (0042). It would have been prima facie obvious to add a alkylphenyl polyglycol ethers to the composition because one having ordinary skill would have recognized this as a suitable and routine excipient in agricultural compositions. See MPEP 2144.07.
With regard to claims 15 and 16, the formulations in general contain between 1-80% by mass of both agents combined. Thus, Hou provides a suitable range in weight ratio for kasugamycin to copper salt. The examiner does not consider the limitations on percentage of kasugamycin and copper glycinate to patentably define over the cited prior art because optimizing amount of active substance to achieve antimicrobial effect would have been merely routine for one of ordinary skill as of the instant effective filing date. See MPEP 2144.05, as noted supra.
With regard to claim 26, Pfeiffer teaches adjuvants which are suitable for the formulation are generally understood as meaning the following classes of substances: Surfactants such as wetters, stickers or dispersants, antifoams, thickeners, carriers, antifreeze agents and bactericides (0033, 0034) and usually, 0.1 to 99% by weight of carriers are present in solid formulations. Other adjuvants usually amount to 0.1 to 30% by weight (0035). Thus, one having ordinary skill would have understood that surfactants such as those alkylphenyl polyglycol ethers can be used in a range of 0.1 – 30% by weight of the formulation. This range overlaps with the range required by the instant claims. See MPEP 2144.05.
Claims 3 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hou et al (CN104255743; publication date: 01/07/2015; citing the English machine translation; cited in the IDS filed 08/15/2023) in view of Pfeiffer et al. (US 2007/0191227; publication date: 08/16/2007; cited in the IDS filed 08/15/2023) as applied to claims 1, 4-6, 9, 11-13, 15-17, 19, and 26 above, and further in view of Verbruggen et al. (US 20040167144; publication date: 08/26/2004).
The relevant disclosures of Hou and Pfeiffer are set forth above. Neither reference discloses kasugamycin hydrochloride hydrate.
Verbruggen teaches that both kasugamycin and kasugamycin hydrochloride hydrate were known to serve the same purpose as fungicides as of the instant effective filing date (0066).
It would have been prima facie obvious to use kasugamycin hydrochloride hydrate as the source of kasugamycin in Hou’s invention because this substance was known to serve the same purpose as of the instant effective filing date. See MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 02/27/2026 have been fully considered but they are not persuasive.
On page 6, Applicant argues that Hou is not cited for teaching a generic copper salt system with kasugamycin and that one having ordinary skill would not have extrapolated the amount of the specific copper-containing substance disclosed by Hou to a different copper-containing substance, copper glycinate, copper monoglycinate, or copper diglycinate and expect the same level of performance. Applicant argues that Pfeiffer does not supply the missing motivation and reasonable expectation of success or that the substitution would have been predictable in terms of performance. Applicant argues further that the reasoning in the rejection does not provide an explanation as to why one of ordinary skill would have been motivated to substitute copper containing substances, as proposed by the examiner. On page 7, Applicant argues that one having ordinary skill would have lacked expectation of success in optimizing the amount of each active using the ratio disclosed in the prior art.
With regard to Applicant’s arguments that there was no motivation to combine the cited references, the examiner refers Applicant to MPEP 2145(X)(A) which states: Applicants may also argue that the combination of two or more references is “hindsight” because “express” motivation to combine the references is lacking. However, there is no requirement that an “express, written motivation to combine must appear in prior art references before a finding of obviousness.” See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). See MPEP § 2141 and § 2143 for guidance regarding establishment of a prima facie case of obviousness. (Emphasis added.) In the instant case, as explained in the rejection, it would have been prima facie obvious to use copper glycinate as the copper salt in Hou’s invention because one having ordinary skill would have recognized that it also served the same purpose of microbial control (see MPEP 2144.06).
With regard to the argument that one having ordinary skill could not have inferred a starting point for optimization of the ratio of copper glycinate to kasugamycin, the examiner respectfully disagrees. The artisan of ordinary skill would have been an individual with an advanced degree, e.g. a Ph.D. in agrochemistry. "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."). See MPEP 2141.03 and 2144.05(II)(A). In the instant case, the ordinary artisan is a highly skilled and well-trained individual who would have had the understanding and resources to test multiple concentrations of each active to determine optimal working ranges.
With regard to Applicant’s argument that one having ordinary skill would have lacked expectation of success, the examiner reminds Applicant that “Obviousness does not require absolute predictability of success.” Id. at 903, 7 USPQ2d at 1681." In the instant case, expectation of success is derived from the fact that both copper-containing substances contain the copper ion, and both were already recognized as having antimicrobial activity.
On page 7, Applicant points to experiments in the instant specification as showing an unexpectedly superior performance of the claimed composition over each active individually.
Please refer to MPEP 716.02(b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
In the instant case, no side-by-side comparison to the closest prior art has been presented, specifically the combination of copper and kasugamycin taught in the cited prior art. As such, Applicant has not met the burden to overcome an obviousness rejection with a persuasive showing of unexpected results.
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, 4-6, 9, 11-13, 15-17, 19, and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-20, 22, and 23 of copending Application No. 18729576; and
claims 1-9, 11,14, 16, and 17 of copending Application No. 18548122
in view of Pfeiffer et al. (US 2007/0191227; publication date: 08/16/2007; cited in the IDS filed 08/15/2023).
Inter alia, the claims of the ‘576 and ‘122 applications embrace an agrochemical composition for application to plants comprising kasugamycin and a copper salt.
The claims of the ‘576 and ‘122 applications do not mention copper glycinate.
Pfeiffer discloses that copper glycinate (0011) is a copper salt useful for controlling pathogenic fungi (abstract) and that copper has been used in agriculture for controlling phytopathogenic fungi (0002).
It would have been prima facie obvious to use copper glycinate as the copper salt in the invention of the ‘576 and ‘122 applications because one having ordinary skill would have recognized that it also served the same purpose of microbial control (see MPEP 2144.06).
With regard to the limitations of instant claims 5 and 17 requiring the composition to be “agricultural” the composition disclosed by Hou is considered to fall within the scope of “agricultural composition because it is for treatment of plants.
With regard to the ratio of kasugamycin to copper glycinate as well as the percentages of kasugamycin and of copper glycinate required by the instant claims, the examiner considers it a matter of routine to optimize fungicidal effect of the composition by adjusting doses of the active fungicides contained therein. See MPEP 2144.05(II)(A): Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With regard to instant claims 9, 17, and 18, Pfeiffer discloses such compositions may be aqueous and emulsified (0203). It would have been prima facie obvious to formulate the composition of the ‘576 and ‘122 applications as such because this was a routinely used general formulation type as of the instant effective filing date (see MPEP 2143(I)(A)).
With regard to claim 11, Pfeiffer discloses that surfactants, herbicides, fungicides, other pesticides (0206). It would have been obvious to add these classes of active agents to the composition of the ‘576 and ‘122 applications. One having ordinary skill would have been motivated to do so in order to provide additional agricultural benefits to the composition and would have had reasonable expectation of success because these were routinely used categories of ingredient in the art.
With regard to claims 12 and 13, as noted above, Pfeiffer teaches adding surfactants to the composition. Pfeiffer discloses further that alkylphenyl polyglycol ethers are suitable examples of surfactants for such compositions (0042). It would have been prima facie obvious to add a alkylphenyl polyglycol ethers to the composition because one having ordinary skill would have recognized this as a suitable and routine excipient in agricultural compositions. See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection.
Claims 3 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-20, 22, and 23 of copending Application No. 18729576; and
claims 1-9, 11,14, 16, and 17 of copending Application No. 18548122
in view of Pfeiffer et al. (US 2007/0191227; publication date: 08/16/2007; cited in the IDS filed 08/15/2023) as applied to claims 1, 4-6, 9, 11-13, 15-17, 19, and 26 above, and further in view of Verbruggen et al. (US 20040167144; publication date: 08/26/2004).
The relevant limitations of the cited applications and disclosure of Pfeiffer are set forth above. None discloses kasugamycin hydrochloride hydrate.
Verbruggen teaches that both kasugamycin and kasugamycin hydrochloride hydrate were known to serve the same purpose as fungicides as of the instant effective filing date (0066).
It would have been prima facie obvious to use kasugamycin hydrochloride hydrate as the source of kasugamycin in the invention claimed in the cited applications because this substance was known to serve the same purpose as of the instant effective filing date. See MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 02/27/2026 have been fully considered but they are not persuasive.
On pages 7-8, Applicant argues that the present application and those of the copending applications are not in condition for allowance, a double patenting rejection cannot be properly determined and requests that the provisional rejections be held in abeyance until patentable subject matter is identified in two patent properties.
Regarding Applicant's argument that the double patenting rejections should be held in abeyance, the double patenting rejections apply to the claims as they are currently written, therefore these double patenting rejections are maintained. Further, Applicants’ request to hold the rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the rejection is maintained in the absence of a terminal disclaimer.
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 KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617
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