DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-15 are pending and under consideration in this action.
Examiner Suggestions
With regards to Claim 9, for improved readability and flow, Examiner suggests amending the claim to add “wherein” (or the like) before “the plant propagation material”.
Claim Rejections - 35 USC § 112
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, 13, and 15 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.
Claim 2 recites Markush group language for the type of formulation. However, the recitation of “selected from the group comprising” renders the claim indefinite because it is unclear what additional formulation types are encompassed by the claim. It is noted that the proper Markush group language is “selected from the group consisting of…and….”
Claim 3 recites Markush group language for the type of cereal crop (in line 2), type of row group (line 3), and the type of oilseed crop (line 6). However, the recitation of “selected from the group comprising” renders the claim indefinite because it is unclear what additional specific crops are encompassed by the claim. It is noted that the proper Markush group language is “selected from the group consisting of…and….”
Claim 15 recites in lines 1-3 applying flupyrimin to a locus of a plant, a plant part, a plant propagation material, or a part thereof, i.e., in the alternative and only requiring application to one of the listed loci. In light of this, lines 4-7 as currently written (in particular, “and” in line 5), is unclear as to whether application is required to both (i) locus of a plant, plant part, or a growing plant and (ii) a plant propagation material), or if lines 4-7 are intended to indicate that if flupyrimin is applied to a locus of a plant, plant part, or a growing plant, then it is applied in the amount ranging from 50-500 g ai/ha, and if flupyrimin is applied to a plant propagation material, then it is applied in an amount ranging from 0.5-10 g ai/kg.
For the purposes of examination below, the second interpretation will be applied: claim 15 requires application of flupyrimin to a locus of a plant, a plant part, a plant propagation material, or a part thereof, and lines 4-7 indicate how much is applied depending on the application loci selected.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 9, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kagabu et al. (Kagabu) (US 2016/0205933 A1; published Jul. 21, 2016).
Kagabu discloses an amine derivative compound of formula (I) a method of controlling pests such the compound (abstract; para.0026). A major object of the invention is to provide pesticides which have excellent control effects against various planthoppers that are all major insect pests today in the field of paddy rice cultivation, which have a high activity even against pesticide-resistant planthoppers, and which reduce the chances for the exposure of workers to the pesticide during use in, e.g., soil treatment, seed treatment, and seedling box treatment, and thus can be safely employed (para.0025).
With regards to Claims 1 and 9, among the most preferred compounds of formula (I) for use is Compound No. 212: (N-[1-((6-chloropyridin-3-yl)methyl)pyridine-2(1H)-ylidene]-2,2,2-trifluoroacetamide (flupyrimin) (para.0169-0170, 0179; Table 5). The compounds for formula (I), formulations containing these compounds, and mixtures of these with other pest control agents may be suitably applied to, for example, plants, plant propagation materials (e.g., seeds, plant foliage, roots, germinated plants, and seedlings), and soils (para.0198).
With regards to the preamble of Claim 1, a method of regulating and improving plant growth, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP 2111.02(II). In the present case, although Kagabu does not appear to explicitly disclose wherein the method is for regulating and improving plant growth, Kagabu explicitly discloses performing the claimed active step with the claimed active ingredient, flupyrimin. Furthermore, Kagabu’s method is directed to controlling pests on plants, e.g., rice. It would follow that controlling pests on a plant would in turn improve the plants’ growth compared to without control of the pest. Thus, absent evidence to the contrary, Kagabu’s method as discussed above reads on the preamble as claimed.
With regards to Claims 2, 3, and 5, the active ingredient (flupyrimin) may be formulated in any desired form, including flowable concentrate and granules (para.0190).
With regards to Claim 4, the active ingredient content within the aforementioned formulations are not particularly limited, but is typically set to from 0.5 to 10 wt.% in granules (para.0197). Kagabu exemplifies a granule formulation wherein flupyrimin is present in an amount of 2 wt.% of the formulation (para.0501).
With regards to Claim 6, Kagabu discloses that the active ingredient content within the aforementioned formulations are not particularly limited (para.0190). Kagabu exemplifies a flowable concentrate wherein the active ingredient is present in an amount of 25 wt.% of the formulation (para.0507).
With regards to Claims 12 and 13, Kagabu exemplifies application of flupyrimin on rice seedlings (para.0540-0541).
With regards to Claim 14, the compounds of formula (I) may be used in admixture with insecticides. Among the suitable insecticides include diazinon (reading on acetylcholinesterase inhibitor) (para.0219).
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.
The factual inquiries 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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kagabu et al. (Kagabu) (US 2016/0205933 A1; published Jul. 21, 2016).
The teachings of Kagabu as they apply to Claims 1-6, 9, and 12-14 are set forth above and incorporated herein. Additional relevant teachings of Kagabu are set forth herein below.
Kagabu further discloses that the effective dose may be suitable decided while taking into consideration such factors as the properties of the compound, the type and amount of the target of application, the length of the subsequent penetration and translocation step, and the temperature (para.0209).
With regards to Claims 7, 8, and 15, in the case of foliar application, the dose of the compound of formula (I) (flupyrimin) is preferably from 0.1 g to 10 kg, and more preferably from 1 g to 1 kg, per 10 ares of cultivated land (10g to 100 kg ai/ha) (para.0209). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
With regards to Claims 10, 11, and 15, in the case of application to seeds, the dose of the compound of formula (I) (flupyrimin) is preferably from 1 g to 10 kg, and more preferably from 10 g to 1 kg/10 kg of seed (1-100 g ai/kg of seed) (para.0209). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Furthermore, with regards to the preamble of Claims 1 and 15, a method of regulating and improving plant growth, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP 2111.02(II). In the present case, although Kagabu does not appear to explicitly disclose wherein the method is for regulating and improving plant growth, Kagabu explicitly discloses performing the claimed active step with the claimed active ingredient, flupyrimin. Kagabu also discloses performing the method with concentrations and application ranges that overlap with those recited in the dependent claims. Furthermore, Kagabu’s method is directed to controlling pests on plants, e.g., rice. It would follow that controlling pests on a plant would in turn regulate and improve the plants’ growth compared to without control of the pest. Thus, absent evidence to the contrary, Kagabu’s method as discussed above reads on the preamble as claimed.
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 instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/704,200 (Copending 200).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping methods that require the application of flupyrimin to a locus of a plant, a plant part, or plant propagation material.
The primary difference between the instant claims and the cited claims of Copending 200 is that the instant claims recite a method of regulating and improving plant growth as the preamble, whereas the cited claims of Copending 200 recite a method of controlling infestation of corn insects as the preamble. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP 2111.02(II). In the present case, although Copending 200 does not explicitly claim wherein the method is for regulating and improving plant growth, Copending 200 explicitly claims performing the claimed active step with the claimed active ingredient, flupyrimin. Copending 200 also claims performing the method with concentrations and application ranges that overlap with those recited in the dependent claims. Furthermore, Copending 200’s method is directed to controlling pests on plants. It would follow that controlling pests on a plant would in turn regulate and improve the plants’ growth compared to without control of the pest. Thus, absent evidence to the contrary, Copending 200’s method is not patentably distinct from that of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12, 14, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/704,216 (Copending 216) in view of Kagabu et al. (Kagabu) (US 2016/0205933 A1; published Jul. 21, 2016).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping methods that require the application of flupyrimin to a locus of a plant, a plant part, or plant propagation material.
The primary differences between the instant claims and the cited claims of Copending 216 is that (i) the instant claims recite a method of regulating and improving plant growth as the preamble, whereas the cited claims of Copending 216 recite a method of controlling infestation of corn insects as the preamble, and (ii) Copending 216 does not appear to explicitly claim the application rate as recited in the instant claims 10 and 11. This is a prima facie obvious modification in view of Kagabu, whose teachings are set forth above and incorporated herein.
With regards to difference (i), if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP 2111.02(II). In the present case, although Copending 216 does not explicitly claim wherein the method is for regulating and improving plant growth, Copending 216 explicitly claims performing the claimed active step with the claimed active ingredient, flupyrimin. Copending 216 also claims performing the method with concentrations and application ranges that overlap with those recited in the dependent claims. Furthermore, Copending 216’s method is directed to controlling pests on a sugarcane plant (a row crop). It would follow that controlling pests on a plant would in turn regulate and improve the plants’ growth compared to without control of the pest. Thus, absent evidence to the contrary, Copending 216’s method is not patentably distinct from that of the instant claims.
With regards to difference (ii), Copending 216 claims application of flupyrimin to plant propagation material in its method of controlling insect pests in sugarcane plantations. As discussed above, Kagabu discloses the application of flupyrimin to plant propagation material to control pests. In light of Kagabu’s disclosure that a dose of flupyrimin for such methods is known to be in the range of 1-100 g ai/kg of seed, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 216 with the teachings of Kagabu, and apply flupyrimin to sugarcane seeds at a rate 1-100 g ai/kg of seed). One of ordinary skill in the art would have been motivated with a reasonable expectation of success in doing so as Kagabu discloses that such an application rate is known for when flupyrimin is applied to seeds in order to control pests, and Copending 216 is directed to application of flupyrimin to control pests.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-15 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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/MONICA A SHIN/Primary Examiner, Art Unit 1616