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 .
Response to Amendments
Applicant’s amendments to the claims of April 23, 2026, in response to the Office Action of December 23, 2025, are acknowledged.
Response to Arguments
Applicant indicates that the rejection is a “four-way” combination and that the claims require at least 40% lactamide compound.
Applicant argues that Mertoglu teaches up to 45% lactamide compound, but the preferred concentration is lower. Further, Applicant argues that the examples provide a much lower concentration. It is unclear why a POSA would combine OXTP and MFX in a composition having at least 40% lactamide.
Applicant also notes that Mertoglu indicates that it is especially preferred to not include any further pesticide. Applicant argues that Mertoglu indicates that usually, MFX wouldn’t be used because it has a solubility of about 26 g/L.
Applicant appears to allege unexpected results by noting that the Specification teaches OXTP and MFX provides for temperature stability while reducing toxicity of the active ingredients. The examples provided in the Specification are taught to include 2.8% OXTP and 16.8% MTX as well as 65.1% lactamide. Stability and eye irritancy were shown to be good in both Examples 1 and 2.
The examiner has considered Applicant’s arguments and allegations and responds to each below. The examiner first addresses Applicant’s traversal of the obviousness rejection before addressing the allegations of unexpected results.
The rejection of record is primarily based on two references. Cohen teaches oxathiapiprolin (OXPT) is a new fungicide with high efficacy against plant pathogens. Mixtures were compared including one with OXPT and mefenoxam (MFX) in a weight ratio of 1:3. “Of the four mixtures, OXPT+MFX outperformed, with the highest preventive, curative, translaminar, and systemic efficacies. In the field, OXPT+MFX was superior to other fungicides in controlling late blight epidemics induced by MFX-insensitive isolates.” Abstract. In field experiments a synergy factor was calculated suggesting a synergy between OXPT+MFX. See p16, 4th full par. The examiner notes that a ratio of 1:3 OXPT to MFR is included in claim 4, which includes a ratio of 1:3 in the form of percentages of OXPT to MFX of 5:15 and 10:30, e.g. Cohen also teaches percentage of OXPT to MXF in a ready to use mixture of 7% and 21%, respectively. See Table 1, p3. This falls within the claimed ranges.
Thus, the active agents claimed are taught to be synergistic and taught for use in claimed ratios. Mertoglu is the secondary reference that is cited to teach emulsifiable concentrates comprising pesticides. The pesticides can include metalaxyl-M and oxathiapiprolin. While there are many pesticides listed, a POSA would understand the synergy of the claimed combination in view of Cohen. Further, Mertoglu teaches using up to 45% lactamide. The examiner notes that this is a proper teaching and it overlaps the claimed percentage. Further, a teaching is not erased merely because there are more preferential concentrations nor is it a teaching away.
The examiner adds the following references in response to the claims that are directed to using higher concentrations of N,N-dimethyl lactamide.
Figley et al., (US2018/0303087) teaches a liquid pesticidal composition comprising up to 90% of a solvent. The solvent can be chosen from an example that includes N,N-dimethyl lactamide. See par. 18. An emulsion can be formed from an emulsifiable concentrate. See par. 25. The use of up to 90% N,N-dimethyl lactate is claimed. See prior art claim 13. While many pesticides can be used, one includes metalaxyl. See par. 16.
Further, Mertoglu et al., (US2017/0064959) (‘Mertoglu2”) teaches emulsifiable concentrate compositions comprising the disclosure of Mertoglu1, wherein the amount of N,N-dimethyl lactamide (par. 223) can be included at the slightly higher percentage of 50%.
In view of Mertoglu2 and Figley, a POSA would understand that a high concentration of lactamide solvent can be used including up to 50% and even higher when necessary.
With regard to Applicant’s allegations of unexpected results, the examiner notes that the compositions shown to be allegedly unexpected were tested at specific percentages. As such, if the allegation is that of critical concentrations, there does not appear to be a claim that is commensurate in scope with a composition comprising 2.8% OXTP and 16.8% MTX as well as 65.1% lactamide. The examiner notes that the claims include no percentage of oxathiapiprolin, at least 5% metalaxyl-M, and at least 40% lactamide. Thus, the broadest claim differs from the examples by 25% for lactamide, 13.8 % for MTX.
The examiner notes that unexpected results means unexpectedly superior as compared to the closest prior art and the claims must be commensurate in scope with any showing. As noted above, the claims are not commensurate in scope with the showing because the claims are not limited the concentrations claimed nor are they close. Moreover, it is not clear what specific component gives rise to the unexpected result. The results show that Example 1 has less adverse irritation than Example 2, although they are both temperature stable. However, Example 2 uses dimethyl amide ether as a solvent and uses 7 percent less MTX, while Example 1 uses 0.4% less OXTP and uses N,N-dimethyl lactamide solvent. The closest prior art recognizes a synergy with the combination of MTX and OXTP. It is not clear that the results shown-even if commensurate in scope with the percentages claimed, show unexpected results. Data is not provided showing a statistically significant advantage as compared to the combination set forth by the prior art and that such showing is unexpected. Examples 1 and 2 both show good stability, which may or may not differ from the prior art and Example 1 provides slightly less eye irritancy. It is not clear if this is a product of using slightly less OXPT.
The totality of the prior art shows that the advantage of the claimed combination with a known solvent for use in higher concentrations. Emulsifiers and dispersants are commonly used in pesticide and fungicide compositions and are taught for use in claimed concentrations. Thus, it would be obvious to arrive at the claimed compositions in view of the prior art.
Unexpected results in the form of a statistically significant showing that is commensurate in scope with the claims as compared to the closest prior art has not been established. The claimed active agents MTX and OXTP are recognized as synergistic when used together. The claimed lactamide compounds are known to be a usable solvent in concentrations of up to 50%, and more generically, up to 90% of a liquid pesticidal composition. As such, a POSA would be able to optimize a known synergistic mixture with a known solvent to arrive at the claimed product through nothing more than routine experimentation.
Status of the Claims
Claims 1-4, 6-12, and 14-22 are pending and examined.
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.
Claims 1-4, 6-12, and 14-22 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen et al., “Oxathiapiprolin-based fungicides provide enhanced control of tomato late blight induced by mefenoxam-insensitive Phytophthora infestans,” PLOS One September 27, 2018, in view of Mertoglu et al., (US2017/0049097), in view of Figley et al., (US2018/0303087), in view of Mertoglu et al., (US2017/0064959) (‘Mertoglu2”), in view of in view of Boyce et al., (U.S. Pat. No. 4,138,402), and in view of Street et al., (US2011/0318272).
Cohen teaches oxathiapiprolin (OXPT) is a new fungicide with high efficacy against plant pathogens. Mixtures were compared including one with OXPT and mefenoxam (MFX) in a weight ratio of 1:3. “Of the four mixtures, OXPT+MFX outperformed, with the highest preventive, curative, translaminar, and systemic efficacies. In the field, OXPT+MFX was superior to other fungicides in controlling late blight epidemics induced by MFX-insensitive isolates.” Abstract. In field experiments a synergy factor was calculated suggesting a synergy between OXPT+MFX. See p16, 4th full par. The examiner notes that a ratio of 1:3 OXPT to MFR is included in claim 4, which includes a ratio of 1:3 in the form of percentages of OXPT to MFX of 5:15 and 10:30, e.g. Cohen also teaches percentage of OXPT to MXF in a ready to use mixture of 7% and 21%, respectively. See Table 1, p3. This falls within the claimed ranges.
Cohen does not teach the claimed lactamide.
Mertoglu teaches a composition for controlling phytopathogenic fungi and undesired vegetation, mites, insects by applying the concentrate or emulsion to pests, their environment, crops, soil, plants, etc. See par. 1. The lactamide can include one with a claimed formula (I). See par. 4. A lactamide includes N,N-dimethyl lactamide. See par. 197. The lactamide can be used in a concentration of up to 45%. See par. 21. Pesticides that can be used include fungicides and at least one can be used. The fatty acid amide hydrolase inhibitors that can be used is oxathiapiprolin. See par. 45. The nucleic acid synthesis inhibitors the can be used include metalaxyl-M. See par. 33. Emulsifiers and dispersants can be used as excipients. See par.’s 172 and 173.
Mertoglu does not teach identical concentrations of claimed components.
Figley teaches a liquid pesticidal composition comprising up to 90% of a solvent. The solvent can be chosen from an example that includes N,N-dimethyl lactamide. See par. 18. An emulsion can be formed from an emulsifiable concentrate. See par. 25. The use of up to 90% N,N-dimethyl lactate is claimed. See prior art claim 13. While many pesticides can be used, one includes metalaxyl. See par. 16.
Further, Mertoglu2 teaches emulsifiable concentrate compositions comprising the disclosure of Mertoglu, wherein the amount of N,N-dimethyl lactamide (par. 223) can be included at the slightly higher percentage of 50%.
In view of Mertoglu2 and Figley, a POSA would understand that a high concentration of lactamide solvent can be used including up to 50% and even higher when necessary.
Boyce teaches a fungicide composition comprising 3-10% dispersing agent, up to 50% solvent, and 2-20% emulsifiers. See Abstract.
Similarly, Street teaches a pesticidal composition comprising 1-20% emulsifier. See par. 47.
With regard to claims 18 and 19, the examiner notes that these claims do not alter the composition of claim 1. It appears that these claims do not alter the concentrate, but rather identify a particular manner of use. See Specification at par. 63.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); and 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).
It would have been prima facie obvious to a person having ordinary skill in the art prior to the filing of the instant application to combine the teachings of Cohen, Mertoglu, Figley, Mertoglu2, Boyce, and Street to arrive at the claimed method. One would do so because Cohen teaches the claimed combination to be synergistically advantageous as a ready to use fungicide mixture at claimed concentrations. Mertoglu teaches using the claimed lactamide in fungicide compositions with claimed excipients for application to the claimed targets and include the claimed fungicide components as usable therein. Mertoglu2 and Figley teach pesticidal compositions that use N,N-dimethyl lactamide as a solvent and provide for its’ use up to 50% and even up to 90% of an overall composition. Finally, while optimizable parameters, Boyce and Street more particularly set out the use of fungicides with the claimed concentrations of emulsifiers and dispersing agents. As such, there is a reasonable and predictable expectation of success in arriving at the claimed compositions at the claimed concentrations and ratios for the claimed uses. As noted above, unexpected results that are commensurate in scope with the claims and are shown to be unexpectedly superior as compared to the closest prior art have not yet been established.
As such, no claim is allowed.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 JARED D. BARSKY whose telephone number is (571)-272-2795. The examiner can normally be reached on Monday through Friday from 8:30 to 5:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Amy L. Clark can be reached on 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JARED BARSKY/Primary Examiner, Art Unit 1628
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