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 .
Claim Status
Claims 1-15 are pending. Claims 9-15 are withdrawn. Claims 1-8 are rejected.
Election/Restrictions
Applicant's election with traverse of Group I and the combination of compound I.b as component (A) and metarylpicoxamid as component (B) in the reply filed on August 13th, 2026, is acknowledged. The traversal is on the ground(s) that the International Search Authority for the national stage application found that claims 1-15 comply with the requirement of unity of invention. Applicant further argues:
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This is not found persuasive because even though Groups I and II are drawn to a product and its method of use the groups lack a special technical feature that makes a contribution over the prior art as set forth in the rejection below.
The requirement is still deemed proper and is therefore made FINAL.
Applicant’s elected combination is not allowable therefore search and examination is limited to the elected species. Any subject matter presented beyond this scope was discovered incidental to the search and has been presented in the interest of compact prosecution.
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 13th, 2026.
Claim Rejections - 35 USC § 112(b)
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 8 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.
Regarding claim 8, the term "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
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.
Claim(s) 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021183707 A2 by Pasteris et al. cited in the IDS filed 03/22/2024.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
The prior art teaches “fungicidal halomethyl ketones and hydrates and their mixtures” (title). Regarding instant claims 1 and 4, the prior art discloses a fungicidal composition comprising component (a) 1-[[4-[[(1Z)-2-ethoxy-3,3,3-trifluoro-1-propen-1-yl]oxy]phenyl]methyl]-1H-pyrazole-4-carboxylate (instant compound I.b) and an additional fungicidal component (b) such as inpyrfluxam (page 266, claim 7; page 84, lines 13-19). The compound of component (a) possesses ethyl for R1 as required by instant claims 2 and 3.
Regarding instant claim 5, the prior art teaches that component (b) is present in a fungicidally effective amount in the composition (page 95, lines 18-21).
Regarding instant claim 6, Pasteris et al. disclose an embodiment wherein the weight ratio of component (a) to component (b) is between about 1:3000 and about 3000:1 which embraces the instant ratio.
Pasteris et al. teach compositions wherein component (b) comprises at least one fungicidal compound from two different classes of fungicides therefore the prior art composition comprises a further pesticide as required by instant claim 8 (pages 267-269, claims 8 and 9).
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
Pasteris et al. teach each of the components required by instant claims 1-6 and 8 but do not teach an embodiment in which the fungicidal composition was prepared with instant compound I.b and inpyrfluxam.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
A person of ordinary skill seeking to control plant diseases caused by fungal plant pathogens would have been motivated to prepare fungicidal compositions comprising the compounds referenced above as suggested by Pasteris et al.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2021183707 A2 by Pasteris et al. as applied to claims 1-6 and 8 above, and further in view of WO 2019173665 A1 by Loy et al. as evidenced by National Center for Biotechnology Information. "PubChem Compound Summary for CID 139473168, Metarylpicoxamid" PubChem, https://pubchem.ncbi.nlm.nih.gov/compound/Metarylpicoxamid. Accessed 3 September, 2026.
Pasteris et al. disclose a fungicidal composition comprising component (a) 1-[[4-[[(1Z)-2-ethoxy-3,3,3-trifluoro-1-propen-1-yl]oxy]phenyl]methyl]-1H-pyrazole-4-carboxylate, and component (b) which comprises at least one fungicidal compound from two different classes of fungicides. The prior art suggests inpyrfluxam which is a Succinate dehydrogenase inhibitor (SDHI) and Quinone inside inhibitor (Qil) fungicides which include picolinamide fungicides (page 28, line 22- page 29, line 1; page 31, lines 11-16); however, Pasteris et al. do not suggest metarylpicoxamid as a picolinamide fungicide.
Loy et al. teach “picolinamides as fungicides” (title) and disclose compound 278 on page 101:
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The compound is commonly known as metarylpicoxamid as evidenced by the PubChem Compound Summary for CID 139473168 provided by the National Center for Biotechnology Information (page 1). Loy et al. further disclose that the compound is useful for protection of plants against phytopathogenic organisms (paragraph [0025]). Accordingly, a person of ordinary skill seeking to optimize the fungicidal composition of Pasteris et al. would have been motivated to test formulations with various picolinamide fungicides within component (b) such as metarylpicoxamide or compound 287 as disclosed by Loy et al.
Conclusion
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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