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 .
Priority
This application was filed 01/04/2024. Non-Final rejection was mailed 03/27/2026. Applicant responded on 06/29/2026 and amended the claims such that claims 1 and 41-49 are before the Examiner.
Previous Rejections:
The rejection of claim 1 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subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, as stated in paper dated 03/27/226, is withdrawn in view of applicant’s arguments and amendments in paper dated 06/29/2026.
The rejection of claims 1-10, 12, 14-16, 19-22 and 39-40 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by USPGPub 20230270113, as stated in paper dated 03/27/2026, is withdrawn in view of applicants Statement of Common Ownership under 35 USC 102(b)(2)(C).
The rejection of claims 1-10, 12, 14-16, 19-22 and 39-40, now claims 1 and 41-49 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO2012/025912, is uphled. WO teaches fungicidal compositions of multiple fungicides to treat fungal infestations on crops. The combination of fungicides have synergistic activity (abstract). The fungicide is a phthalimide fungicide. Folpet is specifically mentioned in paragraphs 10, 12, 13, 19 and 21. Captan is taught in paragraph 19. Crops that are covered include banana and olives and others are taught in paragraph 36. The phytopathogenic fungi are taught in paragraphs 39-40. The rate applied is taught in paragraphs 41-43. Paragraph 49 teaches that the combination can include a suspension. Granules and their formulation is taught in paragraph 52. The advantage as taught by the Wo is that the composition has a synergistic effect which improves the quality of harvested crops. This is an anticipatory rejection of the claims.
Applicants argue in paper dated 03/27/2026 that the OSA would not be motivated to choose the specific captan or folpet to obviate the instant methods. However, the rejection is anticipatory and not obviousness rejection. WO teaches the synergistic combination of two active ingredients. Captan and folpet are specifically taught. The crops banana and olives are specifically taught. The specific fungus is taught. And all of this is taught as a synergistic combination. This rejection is upheld.
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 and 41-49 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/725998 (USPGPub20250089720) and copending Application No. 18/004603 (USPGPub20230270113) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the same combination of fungicides (captan and folpet) are used to treat the same fungal infestation on the same crops, banana and olives. Same combination. Same crops. Same fungus.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D MARGARET M SEAMAN whose telephone number is (571)272-0694. The examiner can normally be reached M-F 8am-4pm Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D MARGARET M SEAMAN/Primary Examiner, Art Unit 1625
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