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 1-19 are pending in a Response of 06/08/2026.
Election/Restriction
Applicant's election without traverse of Group I, claim 1-11, 15 and 19 in the Reply filed on 06/08/2026 is acknowledged. Additionally, Applicants’ election of the following species without traverse is acknowledged: “methyl 2-[2-chloro-4-(4-chlorophnoxy)phenyl]-2-hyroxy-3-(1,2,4-triazol-1-yl)propanoate (I-1) for compound (A) and “metarylpicoxamid” for compound (B) which reads on claims 1-11, 15 and 19. By way of application’s election, claims 12-14 and 16-18 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) and there being no allowable generic or linking claim. Since the election was made without traverse, the requirement is still deemed proper and is therefore made FINAL.
As a result, claims 1-11, 15 and 19 are examined on the merits to which the following grounds of rejections are applicable.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/08/2024 was filed before the mailing date of the instant first action on the merits. The submission thereof is in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statement has been considered by the examiner, and signed and initialed copy is enclosed herewith.
Claim Objections
Claim 8 is objected to a minor informality under 37 CFR 1.75.
Claim 8 recites (14’), (15’), but there is no proper conjunction word “and” therebetween. Appropriate correction is requested.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-11, 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Tateishi et al. (CA3135695A1, IDS of 08/08/2024) in view of Blum et al. (US2023/0276805A1, effective filing date of 05/27/2021).
Applicant claims a composition comprising an active compound combination comprising: Compound A including Methyl 2-[2-chloro-4-(4-chlorophenoxy)phenyl]-2-hydroxy-3-(1H-1,2,4-triazol-1-yl)propanoate (elected species), and Compound B including metarylpicoxamid (elected species)
filed on 06/08/2026.
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of an agricultural chemical compounds research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from fungicide and/or pesticide medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Tateishi discloses a bactericidal agent-containing composition for agricultural or horticultural use, which has low toxicity to human bodies and animals and excellent handling safety and can exhibit an excellent controlling effect against a wide range of plant diseases and a high bactericidal activity against pathogenic bacteria for plant diseases (abstract); the bacterial agent-containing composition includes primary bacterial agents of methyl 2-hydroxy-2-(2-chloro-4-(4-chlorophenoxy)pheny1)-3-(1H-1,2,4-triazole-1-yl)propanoate ([0149]) (elected species of azole compound A I-1) which is also called as “carmeconazole” (instant claims 1, 6 and 7, in part); the composition further includes fenpicoxamid, florylpicoxamid, ([0078]) and cyproconazole, difenoconazole, epoxiconazole, fenbuconazole, fenhexamid, etc.([0082]) which reads on the claimed fungicidally other active component (instant claims 8-9); the amount of primary active ingredient is used in the formulated agricultural or horticultural fungicide is e.g., from 0.1 to 95%, preferably from 0.5 to 90% by weight, and more preferably from 2 to 80% by weight ([0103]), and the content of the other active ingredient is from 0.1 to 95%, preferably from 0.5 to 90% and more preferably from 2 to 80% ([0105]), the amount of active ingredients is, for examples, from 0.01 to 10,000g and preferably from 0.1 to 1,000g for 100 kg of seeds ([0118]), or per 1m2 of agricultural or horticultural area ([0119]), and the concentration and amount of active ingredients used can be increased or decreased without regard to the above range, as it depends on the formulation, time of use, method of use, location of use, and target crops ([0122]), and therefore, it would have been obvious to optimize the prior ranges (each 0.1-95%) of azole and other active ingredient of Tateishi with the claimed ratio of 5,000:1 to 1:5,000 depending on the formulation type, time of use, method of use, location of use, target crops, etc. in the absence of criticality (instant claim 10); the formulation further comprises carrier (diluent), a surfactant ([0105]) and [0107], [0110]-[0111]) (instant claim 11); and the formulation is applied to the seeds for seed coating treatment by mixing and stirring a wettable powder and a powder with the seeds, or by dipping the seeds in a diluted wettable powder ([0118])(instant claims 15 and 19).
The difference between the instant application and Tateishi is that Tateishi does not expressly teach compound B metarylpicoxamid of instant claims 1-7. This deficiencies are cured by the teachings of Blum.
Blum discloses fungicidal compositions comprising a mixture of components (A) and (B) wherein component (B) discloses azoxystrobin, trifloxystrobin, pyraclostrobin, picoxystrobin, coumoxystrobin, metyltetraprole, cyproconazole, tebuconazole, difenoconazole, hexaconazole, propiconazole, fenhexamid, prothioconazole, mefentrifluconazole, prochloraz, fenpropidin, fenpropimorph, metarylpicoxamid and various species of claims 1 and 5 of prior art ([0014], [0351], claims 1 and 5 of prior art that reads on the claimed components (B) and/or (C); and the composition is applied to the plant for controlling or preventing infestation of plant (abstract) or seed or crops such as transgenic plant ([0200] and [0206]); the amount of a composition to be applied, will depend on various factors, such as the compounds employed; the subject of the treatment, such as, for example plants, soil or seeds; the type of treatment, such as, for example spraying, dusting or seed dressing; the purpose of the treatment, such as, for example prophylactic or therapeutic; the type of fungi to be controlled or the application time ([0287]); component (B) is used in an amount of 0.001 to 50g per kg of seed, preferably 0.01 to 10g per kg of seed ([0290]). Therefore, it would have been to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the weight ratio of carmeconazole (I-1) to metarylpicoxamid, as suggested by the amounts of Tateishi and Blum, with the claimed weight ratio from the skill and knowledge of the ordinary artisan depending on the various factors as noted above (see [0287]).
Although the applied art does not expressly teach the claimed combination, selecting the claimed elected species of Compounds A and B would be a matter of choice or design among various components, and in particular, selecting and rearranging active compound elements of the applied art for the same purpose of providing fungicide would be obvious for the following reasons:
One of ordinary skill would be motivated to do this because a reference is analyzed using its broadest teachings. MPEP 2123 [R-5].
Where, as here, the specific combination of features claimed is disclosed within the broad teachings of the references but the references of Tateishi and Blum do not disclose the specific combination of elements in a specific embodiment or in a working example (e.g., combination of carmeconazole (A I-1) and metarylpicoxamid (B), “picking and choosing” within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989).
However, "when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious". KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). "[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious", the relevant question is "whether the improvement is more than the predictable use of prior art elements according to their established functions." (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that "[a] person of ordinary skill is ... a person of ordinary creativity, not an automaton." Id. at 1742.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearrange the disclosed elements (carmeconazole from Tateishi, and metarylpicoxamid from Blum) for the same purpose of controlling or killing fungi and embodiments of the cited references to prepare the instantly claimed composition. Such a rearrangement by a person of ordinary skill in the art who is not an automaton to yield the instantly claimed invention is within the purview of the ordinary skilled artisan upon reading the cited reference and would yield predictable results of killing or controlling fungi in the plants.
Further, this rejection is based on the well-established proposition of patent law that no invention resides in combining old ingredients of known properties of fungicide where the results obtained thereby are no more than the additive effect of the ingredients, In re Sussman, 1943 C.D. 518. From MPEP 2143 A: “…all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at ___, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson ’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).” Accordingly, unless there is evidence to show the claimed combination leads to the unexpected results, the instant invention is obvious over the applied art in combination.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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/KYUNG S CHANG/ Primary Examiner, Art Unit 1613
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