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 .
DETAILED ACTION
This office action is in response to the Response to Election/Restriction filed 07 August 2026 for application 18/705,851 filed 29 April 2024, 371 of PCT/EP2022/079484 filed 21 October 2022, claiming priority from PCTCN2021127248 filed 29 October 2021. Claims 1, 4-12 and 14-15 are amended. Claims 2-3 are canceled. Currently, claims 1 and 4-15 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on is acknowledged. The traversal is on the ground(s) that 1) the ISA found that the application contained unity, 2) under 37 CFR 1.475(b) the application falls under the category of (2) a product and a process of use of said product, and 3) there is a failure to establish a lack of unity because the common technical feature is not only a mixture of component (A) and (B) but also the claimed weight ratio of component (A) to component (B) being “from 100:1 to 1:90”… neither discloses or suggests a mixture of the two as stated in claim 1. This is not found persuasive because 1) there is no requirement that the Examiner is required to agree with the ISA opinion, 2) the presence of any particular invention categories does not remove the requirement for a common technical feature and the Applicant does not state what the common technical feature between Groups I and II allegedly makes contribution over the prior art, and 3) as the independent claim and all dependent claims require either fludioxonil or N-[(1,2-cis)-2-(2,4-dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide, making either one a common technical feature. Furthermore, there is no requirement that the common technical feature encompass every element of the independent claim as is required in a 35 U.S.C. 102 anticipation rejection.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07 August 2026.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 4-11 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by O’Sullivan et al. (4-membered ring carboxamides used as nematicides, WO 2015/003951 A1, 2015; entered into the IDS on 29 April 2024).
O’Sullivan discloses N-[(1S,2S)-2-(2,4-dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide (pg. 85, line 30). They also disclose the use of Fludioxonil (pg. 77, line 8) as a way to broaden the activity of the composition (pg. 64, lines 32-36), with guidance on ratios of combinations of any of the two ingredients to give the desired synergistic action including ratios of 100:1 to 1:99 (pgs. 78-79, lines 36- line 7, pg. 79).
As such, O’Sullivan anticipates claim 1.
Regarding the limitations of claim 4 are met as O’Sullivan discloses the (1R, 2R) enantiomer (pg. 114, table 60, entry 60.9 & 60.38) and discloses that the preparation of N-[(1S,2S)-2-(2,4-dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide yields a mixture with 99.7% ee favoring the desired isomer. As such, the ratio of the (1S, 2S) enantiomer to (1R, 2R) enantiomer is technically greater than 4:1. Furthermore, O’Sullivan teaches that diastereomer mixtures can be obtained depending on which starting materials and procedures have been chosen can be separated in a known manner into pure diastereomers or racemates on the basis of the physicochemical differences (pg. 54, lines 25-29).
Concerning the limitations of claim 5 are met as O’Sullivan discloses the preparation of the (1S, 2S) enantiomer in a mixture with 99.7% ee. As the applicant doesn’t define the term pure, this reported ee is regarded as pure for the purposes of the invention’s application.
Pertaining to the limitations of claims 6-9 are met as O’Sullivan discloses the use of Fludioxonil (pg. 77, line 8) as a way to broaden the activity of the composition (pg. 64, lines 32-36), with guidance on ratios of combinations of any of the two ingredients to give the desired synergistic action including ratios of 100:1 to 1:99 (pgs. 78-79, lines 36- line 7, pg. 79).
With respect to the limitations of claim 10 are met as O’Sullivan discloses the use of other pesticides including petroleum oils (pgs. 65, line 28 – pg. 78, line 17).
With regards to the limitations of claim 11 are met as O’Sullivan discloses agriculturally acceptable liquid and solid carriers (pg. 57, lines 21-36), surfactants (pg. 57, line 37 – pg. 58, line 38), and formulation adjuvants (pg. 59 line 34 – pg. 60, line 29).
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 (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 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 non-obviousness.
Claims 1 and 4-11 are rejected under 35 U.S.C. 103 as being unpatentable over O’Sullivan et al. (4-membered ring carboxamides used as nematicides, WO 2015/003951 A1, 2015; entered into the IDS on 29 April 2024) in view of R. Latin (Combination fungicides for improved turfgrass disease control, GCM, June 2021).
O’Sullivan discloses N-[(1S,2S)-2-(2,4-dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide (pg. 85, line 30). They also disclose the use of Fludioxonil (pg. 77, line 8) as a way to broaden the activity of the composition (pg. 64, lines 32-36), with guidance on ratios of combinations of any of the two ingredients to give the desired synergistic action including ratios of 100:1 to 1:99 (pgs. 78-79, lines 36- line 7, pg. 79). 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.
Latin reinforces this by teaching that combination fungicide products are marketed by most manufacturers including the product Instrata which includes Azoxystrobin, Propiconazole and Fludioxonil. Latin describes the combinatorial approach as advantageous over single agent because of several factors including 1) reaching more pathogens, 2) increasing potency, 3) limiting exposure to each active ingredient, reducing selection pressure, risk of mutation and therefore managing resistance .
As such, it would be prima facie obvious, to the person of ordinary skill in the art, before the effective filing date, to consider combining N-[(1S,2S)-2-(2,4-dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide with Fludioxonil in ratios that achieve the desired outcome as disclosed by O’Sullivan, motivated by the rationale laid out by Latin.
Summary
Claims 1 and 4-11 are rejected under 35 U.S.C. 102(a)(1), 35 U.S.C. 102(a)(2), and 35 U.S.C. 103.
Conclusion
No claims are allowed.
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/ALLEN CHAO/Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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