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 .
DETAILED ACTION
Claims 1-16 and 18-20 are pending in the present application file.
Response to Amendment
The amendment filed July 22, 2026 have been acknowledged and entered in the present application file. Objections and rejections that do not appear below have been overcome by Applicant’s amendments and/or traversal. Therefore, arguments pertaining to these objections and rejections will not be addressed.
Previous Claim Rejections - 35 USC § 103
Claims 9-10, 12 and 14 were previously rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/076750 A1 (Cerezo-Galvez et al.; Publication Date: 4/25/2019; International Filing Date: 10/12/2018), in view of WO 2020/126648 (Vermeer et al.; International Filing Date: 12/10/2019).
Applicant has amended the claims and traversed the previous rejection on grounds In re Kerkhoven is not applicable in the present application as Cerezo-Galvez does not disclose compound (B-1) or other compounds (B) as a mixing partner with compound (A), and Vermeer does not disclose compound (B-1) in combination with compound (A) or any structurally related compound. Applicant traverses the rejection further on grounds the presently claimed combination of compound (A) with a compound (B), such as compound (B-1), exhibits unexpected results with respect to synergistic insecticidal activity (see page 15 of Applicant’s remarks filed July 22, 2026).
The Examiner has considered the amendment and traversal fully but must disagree for the following reasons.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP 2145(IV) as well.
The previous rejection is based on the combination of Cerezo-Galvez and Vermeer together. Although each individual reference may not disclose the claimed combination, the combination of the two references, which are each directed to insecticidal compositions, serve as the basis of reasonable expectation of success a person of ordinary skill would have at arriving at the inventions of the present claims as well as the prima facie case of obviousness previously set forth.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. The court held "it is not necessary in order to establish a prima facie case of obviousness...that there be a suggestion or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by applicant," and concluded that here a prima facie case was established because "[t]he art provided the motivation to make the claimed compositions in the expectation that they would have similar properties." In re Dillon, 919 F.2d at 693, 16 USPQ2d at 1901 (emphasis in original).
It is not necessary for the prior art to disclose explicitly where compound (A) and compound (B-1) are in combination or where the combination comprising the combination of compound (A) and compound (B-1) has the same utility as one newly discovered by Applicant. As both Cerezo-Galvez and Vermeer disclose the insecticidal compositions comprising compound (A) and compound (B-1), respectively, the prior art provides the motivation to one of ordinary skill to prepare a composition comprising the combination of compounds with the expectation that they would have insecticidal properties as well.
The fact that a person having ordinary skill in the art might have considered multiple possible combinations that would be expected to result in similarly useful compounds does not constitute a teaching away or lack of motivation regarding any one of them. See, for instance, Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 10 U.S.P.Q.2d 1843 (Fed. Cir. 1989).
Cerezo-Galvez discloses an active compound combination comprising at least one compound of the formula (I), corresponding to present compound of formula (I), for the control of animal and microbial pests as well as a plant strengthening agent with very good insecticidal, acaricidal and nematicidal properties. Cerezo-Galvez discloses where combinations comprising the compound of formula (I) demonstrate synergistic insecticidal effect (see Examples A-C on pages 37-42 of Cerezo-Galvez). Vermeer also teaches formulations comprising a plurality of insecticidal agents, where the agents can be selected from a group consisting of multiple classes of compounds (see pages 3-4 of Vermeer). Although the prior art teaches combinations with various classes of insecticidal agents, Cerezo-Galvez and Vermeer do not teach away from the use of a combination comprising compound (A) and/or compound (B-1) as a potential insecticidal composition.
It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See MPEP 2144(IV).
The remarks filed 07/22/2026 as they relate to unexpected results have been considered but they are not found persuasive since they are arguments of counsel, which cannot take the place of evidence in the record. See MPEP 716.01(c). The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. Applicant is invited to submit the additional data supporting synergistic activity in the form of a declaration on the record.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02 (d) and MPEP 716.02 (e). Applicant refers to alleged unexpected results; however, even if the results were considered unexpected, the results would not be commensurate in scope with the scope claims. Further, the results provided do not occur over the entire claimed range. Further, the results provided do not occur over the entire claimed range (a composition comprising any amount of compound (A) and any amount of compound (B-1)) of present claim 9.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., synergy between compound (A) and compound (B-1)) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
It would have been obvious to one of ordinary skill in the art to form a third composition comprising a compound of present formula (I), as disclosed by Cerezo-Galvez, as well as nicofluprole (CAS 1771741-86-6), for the purposes of preparing an insecticidal composition. As both compositions and components have been disclosed to have insecticidal action, there would be a reasonable expectation of success.
The previous rejection is maintained in an amended form necessitated by Applicant’s amendments.
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.
Claims 9-12, 14, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/076750 A1 (Cerezo-Galvez et al.; Publication Date: 4/25/2019; International Filing Date: 10/12/2018), in view of WO 2020/126648 (Vermeer et al.; International Filing Date: 12/10/2019).
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Cerezo-Galvez discloses an active compound combination comprising at least one compound of the formula (I) and at least one active compound of group (II) which is selected from (a) Insecticide Groups (IRAC classification groups) (28), or (b) compounds of formula (IIa) or (IIb) or (IIc) or (IId), is highly suitable for the control of animal and microbial pests as well as a plant strengthening agent with very good insecticidal, acaricidal and nematicidal properties.
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See pgs. 1-3, 7-9 as well as claims 1 and 13-15. The compound of formula (I) of Cerezo-Galvez corresponds to a compound of present formula (I) of component (A).
Cerezo-Galvez discloses the following regarding the additional customary additives in the active compound combination:
The active compound combinations according to the invention can be converted to the customary seed dressing formulations, such as solutions, emulsions, suspensions, powders, foams, slurries or other coating compositions for seed, and also ULV formulations. These formulations are prepared in a known manner, by mixing the active compound combinations according to the invention with customary additives such as, for example, customary extenders and also solvents or diluents, colorants, wetting agents, dispersants, emulsifiers, antifoams, preservatives, secondary thickeners, adhesives, gibberellins and also water.
See present claim 12.
Cerezo-Galvez discloses where the compounds in the active compound combinations are present in weight ratios from 50:1 to 1:50, and even more preferred ratio of 5:1 to 1:5. See page 11, lines 1-15. See present claims 10-11, 14 and 18-20.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
Cerezo-Galvez does not disclose where the active compound combination comprises nicofluprole (present compound B-1).
Finding of prima facie obviousness --- rationale and motivation (See
MPEP § 2142-2143)
Vermeer discloses insecticidal active ingredient - matrix particles and insecticidal compositions comprising such insecticidal active ingredient - matrix particles, as well as to methods and uses of such insecticidal formulations.
Vermeer provides “More preferably the at least one insecticidal active ingredient of the invention is selected from the chemical classes of isoxazolines, meta-diamides, arylpyrazolheteroarylamides and arylpyrazolarylamides and/or is active on the g-aminobutyric acid (GABA) receptor.” See pg. 3, lines 3-5.
Vermeer further teaches “the class of arylpyrazolheteroarylamides and arylpyrazolarylamides that can be preferably used in connection with the present invention are described e.g. in WO 2015/067647 A1 and WO 2015/067646 A1, which are herewith incorporated by reference. Preferably this class relates to 2-chloro-N-cyclopropyl-5-{1-[2,6-dichloro-4-(l,1,1,2,3,3,3-heptafluoropropan-2-yl)phenyl]-1H-pyrazol-4-yl}-N-methylnicotinamide.” See pg. 3, lines 19-23.
Vermeer discloses where “even more preferably, the at least one insecticidal active ingredient of the invention is selected from the group of: 2-chloro-N-cyclopropyl-5-{1-[2,6-dichloro-4-(l,1,1,2,3,3,3-heptafluoropropan-2-yl)phenyl]-1H-pyrazol-4-yl}-N-methylnicotinamide (CAS 1771741-86-6)”. See pg. 3, lines 31-32 to pg. 4, lines 1-2.
It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Cerezo-Galvez discloses an active compound combination comprising at least one compound of the formula (I), corresponding to present compound of formula (I), for the control of animal and microbial pests as well as a plant strengthening agent. Vermeer discloses insecticidal compositions comprising such insecticidal active ingredient - matrix particles, including preferably nicofluprole (CAS 1771741-86-6). It would have been obvious to one of ordinary skill in the art to form a third composition comprising a compound of present formula (I), as disclosed by Cerezo-Galvez, as well as nicofluprole (CAS 1771741-86-6), for the purposes of preparing an insecticidal composition. As both compositions and components have been disclosed to have insecticidal action, there would be a reasonable expectation of success.
Therefore, the present claims are prima facie obvious.
Conclusion
Claims 1-8, 13, and 15-16 are withdrawn
Claims 9-12, 14, and 18-20 are rejected.
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 QUINCY A MCKOY whose telephone number is (703)756-4598. The examiner can normally be reached Monday - Thursday 8:00 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUINCY A. MCKOY/
Patent Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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