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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. EP21205679.0, filed on 10/29/2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04/29/2024, 07/01/2025, 04/24/2026 are being considered by the examiner.
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 3-7, 9-12, 16 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.
The term “room temperature” in claim 3 is a relative term which renders the claim indefinite. The term “room temperature ” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Room temperature is not given a definition in the specification. One of ordinary skill in the art would not know the scope of the invention because room temperature can have many possible meanings that may or not be included in the scope of the claim. For example room temperature can differ significantly from summer to winter. A walk in freezer is also has a room temperature that is much lower than a person’s comfortable living conditions. Thus the scope of room temperature is unclear.
The applicant is recommended to replace room temperature with a numerical temperature value.
The term “about” in claims 4-7, 9-12 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification does not define the term about and thus one of ordinary skill in the art would not know the scope of the claim. For example is ±10% of the value considered about that value? What of ±20%, ±30%, etc.?
Regarding claim 16, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. It is unclear if the additional limitations in the last three lines of claim 16 are optional or required due to the preferably phrase. For the purposes of examination these limitations were interpreted as optional.
Claim Rejections - 35 USC § 102
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.
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.
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.
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.
Claim(s) 1-13 and 15-16 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ge (Ge et al., CN 105532710 A, 2016-05-04, IDS, English translation) as evidenced by PPDB (PPDB, Pesticide Properties DataBase, Metalaxyl-M (Ref: CGA 329351), 05/25/2026).
The reference Ge teaches “Based on the above, the purpose of this invention is to provide a novel and highly efficient seed treatment composition.
It is used to control underground pests such as grubs, wireworms, cutworms, aphids, planthoppers, and thrips, as well as wheat diseases such as net blight, sheath blight, take-all, damping-off, gray mold, downy mildew, Phytophthora, and Pythium” [0009] and “A seed treatment composition containing thiamethoxam, wherein the active ingredients of the seed treatment composition are a ternary compound of the insecticide thiamethoxam, the fungicide fludioxonil, and the highly effective metalaxyl-M, and the remainder are auxiliary ingredients” [0011].
The reference Ge teaches “Example 4: Granules, 1-50 parts of thiamethoxam; 0.1-20 parts of fludioxonil; 0.1-20 parts of high-efficiency metalaxyl-M; 1-10 parts of wetting and dispersing agent; 0.1-5 parts of thickener; 0.1-5 parts of defoamer; castor oil, balance to make up” [0019] and “The specific implementation scheme of the pesticide formulation prepared from the seed treatment composition of the present invention is as follows:” [0015].
This anticipates claims 1-2, 4-7, 10-12, 16.
The reference PPDB provides evidence that metalaxyl-M as mentioned in example 4, of Ge, is also known as mefenoxam (see page 1).
This anticipates claim 8-9.
Since the specification does not indicate what is specifically required in the composition of claim 1 besides fludioxonil, and castor oil to make the composition effective for wherein the fludioxonil does not crystalize when the composition is exposed to temperatures between 38°C and 50°C followed by room temperature to 5°C storage the claims are interpreted as any combination of these ingredients would have these effects as this would be the broadest reasonable interpretation. The composition of claim 1 should routinely provide such an effect required by claims 3 and 13, or the skilled person faces undue burden in determining which combinations of components will fulfil this requirement.
This anticipates claim 3 and 13.
The reference Ge teaches “This invention relates to the field of pesticide compound technology, and in particular to an insecticidal and fungicide seed treatment composition comprising a ternary compound of the insecticide thiamethoxam, the fungicide fludioxonil, and the highly effective metalaxyl” [0002]. This anticipates claims 15.
It is believed that Ge anticipates the claims with regards to the radios and % w/w, however, for the sake of completeness of prosecution, purely arguendo and with regards to this particular ground of rejection only, it will be presumed that the prior art differs from the instant claims insofar as picking and choosing is required to obtain the correct ratios and % w/w from those listed.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified Ge to obtain the instant invention because the desired ratios and % w/w are suggested within example 4. One would have a reasonable expectation of success because these ratios are suggested by the reference. One would be motivated to do so to produce a pesticide of the reference invention. The specific combination of features claimed is disclosed within the broad generic ranges taught by the reference but such “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, it must be remembered that “[w]hen 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.
Claim(s) 1 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WU (WU et al., CN 108077322 A, 2018-05-29, IDS, English translation) as evidenced by PubChem (PubChem, Flufenacet, 2005-08-08) as evidenced by ATSDR (ATSDR, Public Health Statement Dichlorvos, 1997) as evidenced by Thin-Film Materials (Thin-Film Materials, Calcium Oxide Powder (CaO): Properties, Production, Applications, and Industrial Value, November 17, 2025).
The reference WU teaches “This invention relates to the field of crop disease and pest control technology, specifically to a novel environmentally friendly pesticide formulation” [0002] and “Pesticides refer to a class of drugs used in agricultural production to kill insects, fungi, and harmful animals (or weeds) in order to protect and promote the growth of plants and crops” [0004].
The reference WU teaches “The novel environmentally friendly pesticide formulation is characterized by comprising the following raw materials in parts by weight: 12-16 parts quicklime powder, 11-14 parts pyraclostrobin, 11-14 parts flufenacet, 11-14 parts dichlorvos, 21-26 parts fludioxonil, 2-6 parts talc, 6-10 parts castor oil, 13-15 parts Isatis tinctoria leaf, 17-23 parts Viola yedoensis, 32 36 parts Dryopteris crassirhizoma, 7-9 parts Mahonia fortunei, 11-16 parts Artemisia argyi bark, and 2-4 parts stabilizer” [0008].
This anticipates claims 1.
The instant specification acknowledges “Examples of strobilurin-type fungicides that are useful include, without limitation, azoxystrobin, dimoxystrobin, famoxadone, fluoxastrobin, kresoxim-methyl, 15 metominostrobin, picoxystrobin, pyraclostrobin…”[ 0019].
The reference Pubchem provides evidence that Flufenacet is an agrochemical “Flufenacet is a thiadiazole herbicide which is applied to the soil surface or incorporated preemergence in field corn, corn grown for silage, or soybeans to control certain annual grasses and broadleaf weeds”(page 2).
The reference ATSDR provides evidence that Dichlorvos is an agrochemical, “Dichlorvos is a synthetic organic chemical used as an insecticide” (page 1).
The reference Thin-Flim Materials evidence that quicklime is an agrochemical, “Calcium Oxide Powder—commonly known as quicklime—is one of the most widely used inorganic compounds in global industry. Its chemical simplicity (CaO), strong reactivity toward moisture and acids, high thermal stability, and low cost make it indispensable across metallurgy, environmental engineering, chemical synthesis, construction materials, agriculture, and emerging high-tech applications”(page 1) and
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This anticipates claim 14.
Claim(s) 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ip.com( ip.com, "Compositions comprising a pesticide and an oil which exhibit reduced chemical degradation of the pesticide upon storage when applied to seeds", ip.com, IPCOM000240541D, 2015. https://priorart.ip.com/IPCOM/000240541, IDS).
The reference ip.com teaches adding fludioxonil and castor oil together (example A.138, page 3). This is the active step of instant claim 17. The improvement to the reduced crystallization is inherent to the active step of the method. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter which there is reason to believe includes functions that are newly cited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter shown to be in the prior art does not possess the characteristic relied on” (205 USPQ 594, second column, first full paragraph).
This anticipates claim 17.
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 1-16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/717,877 in view of Ge (Ge et al., CN 105532710 A, 2016-05-04, IDS, English translation) as evidenced by PPDB (PPDB, Pesticide Properties DataBase, Metalaxyl-M (Ref: CGA 329351), 05/25/2026) further in view of WU (WU et al., CN 108077322 A, 2018-05-29, IDS, English translation) as evidenced by PubChem (PubChem, Flufenacet, 2005-08-08) as evidenced by ATSDR (ATSDR, Public Health Statement Dichlorvos, 1997) as evidenced by Thin-Film Materials (Thin-Film Materials, Calcium Oxide Powder (CaO): Properties, Production, Applications, and Industrial Value, November 17, 2025).
The application ‘877 claims:
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This helps to teach claims 1-16.
The application ‘877 does not specifically teach fludioxonil with castor oil (all claims), the ratios or weight % of claims 4-7, 9-12, specifically with mefenoxam (claims 8-9, 12), four additional agrochemicals(claim 14).
The secondary references teach that all needed changes would be obvious as outlined in the 102/103 rejections (which are incorporated herein by reference).
It would have been prima facie obvious to one of ordinary skill in the art to have modified application ‘877 with WU and Ge to obtain the instant invention because all three teach fludioxonil with castor oil for making pesticide compositions and Ge teaches the desired ratios and % w/w are suggested within example 4. One would have a reasonable expectation of success because these ratios and compounds are suggested by the references for the same purpose as agrochemicals. One would be motivated to do so to produce a pesticide of the reference invention to protect seeds with suggested ratios of pesticides and known additional pesticides from WU instead of doing additional work to try to come up with unknown compositions . The specific combination of features claimed is disclosed within the broad generic ranges taught by the reference but such “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, it must be remembered that “[w]hen 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.
This is a provisional nonstatutory double patenting rejection.
Claim 17 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of copending Application No. 19/476,952 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because :
Application ‘952 claims:
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This anticipates claim 17.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-17 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON AZAR SALAMATIAN whose telephone number is (703)756-4584. The examiner can normally be reached Mon-Thurs 7:30am-5pm EST Friday 7:30-4pm EST (every other Friday off).
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/A.A.H./ Examiner, Art Unit 1627
/Kortney L. Klinkel/ Supervisory Patent Examiner, Art Unit 1627
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