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 .
Claims 1-20 are pending in this application.
Applicant’s election without traverse of compound B-3a as the single species of component B in the reply filed on 6/22/2026 is acknowledged. Claims 1-20 will presently be examined to the extent that they read on the elected species.
Use claim – claim 20
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because “Use of” a composition as recited in claim [20 does not fall within at least one of the categories of patent eligible subject matter recited in 35 U.S.C. 101: process, machine, manufacture, or composition of matter.
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.
Claim 20 is 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.
“Use of” of a substance as recited in claim 20 fails to recite a process step. It is therefore an incomplete process claim if that were the intended category of invention. The claim is indefinite for this reason.
Applicant is advised that claim 20 will not be further examined on the merits because it is directed to non-statutory subject matter.
35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 and 15-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for reducing or controlling damage to a plant, does not reasonably provide enablement for preventing damage to a plant. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The claims recite or read on preventing damage to a plant. The breadth of the claims is extraordinary – any type of damage (drought, flood, tornado, fire, heat, insect pest, animal pest, nematode pest, disease, etc.) is prevented with no limit on duration.
Even though the level of ordinary skill is high, so is the level of unpredictability in preventing any type of damage to a plant with no limit on the type of damage and duration of preventing effect. The state of the prior art has not been able to obtain such efficacy.
The specification does not disclose direction for preventing of all types of damage to a plant. Working example on specification page 73 discloses in vitro tests for controlling Spodoptera littoralis larvae, which is a cotton leafworm. Controlling an insect in a laboratory plate does not have any correlation to controlling, let alone preventing, other types of pests or damages from other causes such as drought, flood, fire, fungal pests, bacterial pests, nematode pest, etc.
For these reasons, the quantity of experimentation needed to use the invention to the full extent claimed, based on the content of the disclosure, would be undue.
Consequently, claims 1-7 and 15-19 fail to find adequate enabling support for preventing damage to a plant.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 2-3, 5-6, 9-10, 12, 14, and 16-19 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.
(1) Claim 2 recites a preferable feature and a more preferable feature. Recitation of preferable features renders the claims indefinite because it is ambiguous whether the preferred features, including even more preferable features, are limiting, exemplary, or optional.
(1a) The same or similar issue is noted in claims 3, 9, 10, 14, 16, 18, and 19.
(1b) Similar issue is noted in claim 5: “especially from 2:1 to 1:2, advantageously about 1:1” (emphasis added). Same type of indefinite language is noted in claims 6, 12.
(2) Claim 17 refers to formula (I) and component (B) compounds as “defined above” without a reference to another claim. This is indefinite claim language.
Prior art-based ground of rejection
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.
35 U.S.C. 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.
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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over the combined teachings of Orimoto et al. (US 2018/0297978; hereinafter, Orimoto) in view of Jeschke et al. (WO 2016/180802; hereinafter, Jeschke).
Orimoto (US 2018/0297978) discloses the compound of formula (I) as set forth in instant claims under examination. Orimoto’s compound is designated as compound 5 (paragraphs 831, 833), and Orimoto’s compounds are disclosed for controlling harmful arthropods (e.g., paragraphs 5, 610-694), and they can be mixed with other insecticidal, miticidal, nematicidal, or fungicidal active ingredients (claim 15) and carrier (claim 20). Table 50 discloses compound 5 in combination with various structurally diverse agricultural active compounds at various ratios of compound 5 to second actives, including 1:1 and 10:1 (page 85). Broader ratio range is disclosed, including 10:1 to 1:10 (paragraph 609). Application to arthropod, their habitat, plant, soil, seed, or bulb is disclosed (claims 16-19). Application rate of compound 5 of 1-10,000 g/10,000 m2 is disclosed, which is equal to 1-10,000 g/ha (paragraph 770). Diluted use concentration of 0.01-10,000 ppm is disclosed, which is approximately equal to 0.000001 to 1 wt% (paragraph 770). For seed application, 0.001 to 100 g/kg of seed or 0.02 to 20 g/kg of seed is disclosed (paragraph 779). Application and protection of crops is disclosed (paragraphs 780-783), which include crop plants that synthesize toxins with insecticidal activity (paragraph 788). Orimoto’s compound can be formulated with various carriers and additives such as surfactants, and concentration of the active compound can range from 0.01 to 95 wt% (paragraph 759-760).
Jeschke (WO 2016/180802)1 discloses enantiomerically pure or enantiomerically enriched N-[[2-fluoro-4-[2-hydroxy-3-(3,4,5-trichlorophenyl)-3-(trifluoromethyl)-1-pyrrolidinyl]phenyl]methyl]-cyclopropane carboxamide
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See page 2 of the original document. Jeschke’s Formula (Ia) compound is the (2S,3S) diastereomer (original document, page 2, lines 10-14; original document page 59, line 30 to page 63; original document, pages 78-79, data for compound of “Beispiel 1”), which corresponds to the elected B-3a as set forth in instant claims under examination. Jeschke’s compound is suitable for plant protection and controlling insects, arachnids, and nematodes (translation page 9, first paragraph; paragraph bridging pages 9-13). Plants to be treated include genetically modified plants and seeds thereof, which produce toxins such as Cry2Ab, Cry9c, Cry1F (original document, paragraph bridging pages 44-45; paragraph bridging translation pages 26-27). For seed treatment, 0.001-50 g/kg of seed or 0.01-15 g/kg of is disclosed (translation page 30, second paragraph). Formulation with carriers and additives such as surfactants is disclosed (translation pages 14-15). Concentration range of the active ingredient of 0.5-90 wt% is disclosed (translation page 16, first full paragraph). Combination with other fungicides, acaricides, insecticides, and other active ingredients is disclosed for widening the spectrum of action, to extend the duration of action, increase the speed of action, to control resistance (translation pages 16-26, see from “mixtures” on page 16 to page 26).
Orimoto does not explicitly disclose a combination of compound of formula (I) with compound B-3a. However, Orimoto teaches combining the activity of formula (I) compound with other active ingredients. Jeschke teaches that combining compound B-31 with other active ingredients provide numerous advantages, which include widening the spectrum of action, extending the duration of action, increasing the speed of action, and controlling development of resistance
For these reasons, the ordinary skilled artisan would have found it obvious to combine the compounds of formula (I) and B-3a to control damage to plants caused by various pests that are controlled by said compounds, as claimed. All dependent claim features are suggested by the cited prior art references, including ratio range, application rates, pests to be controlled, formulation additives, concentration, and genetically modified plants to be treated, as detailed above.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
In this regard, the experimental data disclosed in the specification that pertain to results for formula (I) + B-3a on page 73 have been given due consideration, but the results were deemed insufficient. First, data for each individual active ingredient applied alone, without the other active ingredient, was not provided. Colby conclusion, by itself, is not sufficient under the facts of this application. The Colby formula is not conclusive evidence of nonobviousness. In Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Int. 1992), the Honorable Board held:
generalizations such as the Colby formula are not particularly useful. The Colby equation inherently results in an expectation of a less than additive effect for any combination of herbicides.
Thus, the raw data for components of the tested combination is needed to fully evaluate Applicant’s results (i.e., review the data from which the Colby conclusion was made). Second, the results appear to show greater than “expected” activity (as asserted in the table on specification page 73) only when the application amount is very low, i.e., when one or both ingredients are applied at significantly less than effective amounts. The claims are not limited to such low application amounts or low concentrations. Thus, evidence of nonobviousness, if any, is not commensurate in scope with that of the claims.
For the foregoing reasons, all claims must be rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 Jeschke is in the German language. A machine translation is provided herewith. Where needed, both the original document and the machine translation a
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