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
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. PCTCN2021127251, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. A claim by claim analysis indicated a lack of support in priority application PCTCN2021127251 for wheat fusarium head blight and thus a priority date of 10/21/2022 was used for claim 16. A priority date of 10/29/2021 was used for the remaining claims.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/29/2024 is being considered by the examiner.
Claim Objections
Claims 1-2, 5-7, 11-18 are objected to because of the following informalities: N-[(1,2 cis)- 2-(2,4-dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide is repeated twice in claim 1. Appropriate correction is required.
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 13-16 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.
Regarding claim 15, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For example it is unclear if the cereal must be rice under the scope of the claim.
Regarding claims , the phrase "especially phytopathogenic fungi" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For example it is unclear if the phytopathogenic diseases must be phytopathogenic fungi under the scope of the claim.
The term “useful” in claims 13-16 is a relative term which renders the claim indefinite. The term “useful” 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 provides no definition for ascertaining what would be considered a useful plant but instead only gives examples on page 11. One of ordinary skill in the art would not know what might be considered useful under the scope of this claim because for example many plants may be useful to one person and not another. Trees for example are useful for timber but useless to farmers. Grass might be useful to sports fields but considered a weed in a garden. Dandelions are often considered weeds but are edible plants.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 recites “isomer”, which is understood to read on any compound with the same molecular formula. The specification does not recite the structure necessary to achieve the claimed function and does not limit to geometric isomers. The recitation of the invention includes all those possible isomeric forms (e.g. geometric isomers) and mixtures thereof does not lead one skilled in the art to believe that applicant has possession of any and all isomers. The claim encompasses a multitude of components with different structures and different mechanisms of action (e.g. ether would be an isomer of ethanol (i.e., completely different structures/functions)), and there is nothing in the prior art to indicate any compound isomer can be used as a suitable alternative for another in the manner claimed.
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.
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, 11, 12, 13, 14, 15, 16, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over HONE (HONE et al., WO 2019158476 A1, 2019-08-22, IDS) in view of FABRI (FABRI et al., WO2018198009A1, 2018-11-01, IDS).
The reference HONE teaches “WO2013/14381 1 discloses methods for preparing the compound cis-N-[2-(2,4- dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide which is a racemate of the two enantiomers N-[(1 S,2S)-2-(2,4-dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide and N-[(1 R,2R)-2-(2,4-dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide. Cis-N-[2-(2,4- dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide is exemplified in Table 57, example 57.01” (page 1), The reference also teaches “The invention relates to crystalline forms of N-[2-(2,4-dichlorophenyl)cyclobutyl]-2- (trifluoromethyl)pyridine-3-carboxamide of formula (I), compositions comprising said crystalline forms and methods of their use as nematicides or fungicides.”(abstract) and “Agrochemical compositions comprising cis-N-[2-(2,4-dichlorophenyl)cyclobutyl]-2- (trifluoromethyl)pyridine-3-carboxamide or its enantiomer N-[(1 S,2S)-2-(2,4-dichlorophenyl)cyclobutyl]- 2-(trifluoromethyl)pyridine-3-carboxamide have generically been disclosed in both WO2013/14381 1 and WO2015/003951. However, the application of certain types of formulations is dependent on the particular form, i.e. polymorphic or amorphous form, used to prepare the formulation. For example, if the form used to prepare a suspension concentrate (SC) is not stable in such a SC formulation, polymorphic conversion might occur in the formulation leading to unwanted crystal growth. Such crystal growth may be detrimental because it may lead to thickening and potentially solidification of the formulation which can in turn lead to blockages in application equipment, e.g. in spray nozzles in agricultural application machinery. Hence, there is a need to provide stable crystalline forms of the above compound to prepare agricultural or pharmaceutical formulations thereof”(page 1). Which is the same compound as instant component A as shown below (abstract).
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The reference also teaches “As mentioned previously, it is crucial for the successful application of an agrochemical and/or pharmaceutical formulation that the crystalline form is stable in the particular formulation environment. Flowable concentrates for seed treatment (FS) formulations were prepared for both Form A and Form B. The only difference between the two formulations was the polymorphic form used, all of the other components were identical. The formulations were tested for the crucial stability according to a temperature cycling test which is shown in Figure 12. The formulations were analyzed under a microscope (40x) for possible crystal growth which can have detrimental consequences such as thickening and potentially solidification of the formulation which can in turn lead to blockages in application equipment, e.g. in seed coating equipment or in spray nozzles in agricultural application machinery. Pictures were taken of the formulations at (i) start (Figures 13a and 14a), (ii) immediately after the temperature cycling test (Figures 13b and 14b) and (iii) two days at room temperature (RT) after the temperature cycling test (Figures 13c and 14c). The pictures are shown for the formulation comprising Form A in Figures 13a, 13b and 13c and the pictures for the formulations comprising Form B in Figures 14a, 14b and 14c. One can see in Figures 13a and 14a that both formulations did not exhibit any crystal growth before the temperature cycling test. Figure 13b exhibited clear crystal growth after the temperature cycling test. Storing the formulation for another two days at RT led to even further crystal growth (Figure 13c). Surprisingly and unexpected, the same temperature cycling test showed for the formulation comprising Form B no such crystal growth, see Figures 14b and 14c. This is unexpected as both polymorphic forms were shown to be chemically stable in the formulations tested, i.e. no compound degradation was observed. However, Form B was found to be surprisingly resistant to crystal growth when exposed to typical storage conditions. Hence, agrochemical or pharmaceutical compositions comprising the crystalline Form B are preferred.
The agrochemical compositions comprising the polymorphic Form B or C have a very advantageous spectrum of activities for protecting animals and useful plants against attack and damage by nematodes, in particular protecting useful plants against attack and damage by nematodes.
The agrochemical compositions comprising the polymorphic Form B or C have a very advantageous spectrum of activities for protecting animals and useful plants against attack and damage by fungi, in particular protecting useful plants against attack and damage by fungi.
The agrochemical compositions comprising the polymorphic Form B or C may be used for controlling or destroying pests which occur in particular on plants, especially on useful plants and ornamentals in agriculture, in horticulture and in forests, or on organs, such as fruits, flowers, foliage, stalks, tubers, seeds or roots, of such plants, and in some cases even plant organs which are formed at a later point in time remain protected against these pests. The agrochemical compositions of the invention are preventively and/or curatively valuable active ingredients in the field of pest control, even at low rates of application, which can be used against pesticide resistant pests such as insects and fungi, and have a very favorable biocidal spectrum and are well tolerated by warm-blooded species, fish and plants”(pages 4-5) and “1.1 Form A Methods for preparing Form A have been disclosed in WO2015/003951 (Example P5). An example for preparing Form A is as follows… to isolate N-[(1 S,2S)-2-(2,4-dichlorophenyl)cyclobutyl]-2- (trifluoromethyl) pyridine-3-carboxamide (141.6 g)…
1.2 Form B
Form A was dissolved in 10% water/methanol in a HPLC vial. The solvent was allowed to evaporate at room temperature.
…
1.3 Form C
cis-N-[2-(2,4-dichlorophenyl)cyclobutyl]-2-(trifluoromethyl)pyridine-3-carboxamide racemate
…“(page 21-22).
The reference HONE teaches “Normally, in the management of a crop a grower would use one or more other agronomic chemicals in addition to the crystalline polymorph of the present invention. Examples of agronomic chemicals include pesticides, such as acaricides, bactericides, fungicides, herbicides, insecticides, nematicides, as well as plant nutrients and plant fertilizers.
Accordingly, the present invention provides for the use of a composition according to the present invention together with one or more pesticides, plant nutrients or plant fertilizers. The combination may also encompass specific plant traits incorporated into the plant using any means, for example conventional breeding or genetic modification.
The mixtures of the polymorph Form B or C with other active substances may also have further surprising advantages which can also be described, in a wider sense, as synergistic activity. For example, better tolerance by plants, reduced phytotoxicity, insects can be controlled in their different development stages, or better behaviour relating to production, for example grinding or mixing, storage or use.”(page 13-14) and “Preferred mixtures are indicated below where the polymorph Form B or C is indicated as Ί”: Compositions comprising an adjuvant include I + compounds selected from the group of substances consisting of petroleum oils”(page 14). This helps to teach claims 1, 11, 14, 17.
The reference HONE teaches “The polymorphs of the invention may be applied in unchanged form but is more preferably incorporated into agrochemical or pharmaceutical compositions, in particular agrochemical compositions, by conventional means. Accordingly, in a third aspect, there is provided an agrochemical or pharmaceutical composition comprising the crystalline form according to the first aspect (Form B) or any of the embodiments of the first aspect and at least one acceptable, agrochemically and/or pharmaceutically, carrier or diluent. In a fourth aspect, there is provided an agrochemical or pharmaceutical composition comprising the crystalline form according to the second aspect (Form C) or any of the embodiments of the second aspect and at least one acceptable, agrochemically and/or pharmaceutically, carrier or diluent”(page 4). This helps to teach claim 12.
The reference also teaches “ Accordingly, in a fifth aspect, there is provided a method of protecting crops of useful plants against damages caused by nematodes or fungi, which comprises treating the plants or the locus thereof with a composition according to the third or fourth aspects or any embodiments of the third or fourth aspects, in particular treating the plants or the locus thereof with a composition according to the third aspect or any embodiments of the third aspect.
In a sixth aspect, there is provided a method of protecting plant propagation material against damages caused by nematode or fungi, which comprises treating the plant propagation material with a composition according to the third or fourth aspects or any embodiments of the third or fourth aspects, in particular treating the plant propagation material with a composition according to the third aspect or any embodiments of the third aspect”(pages 7-8). This helps to teach claim 13.
The reference HONE teaches “Suitable target plants are for the compositions of the invention, in particular, cereals, such as wheat, barley, rye, oats, rice…”(page 8). This helps to teach claim 15.
The reference HONE does not teach Phenamacril (all claims).
The reference FABRI teaches “Phenamacril has the chemical name ethyl (2EZ)-3-amino-2-cyano-3- phenylacrylate. It is a cyanoacrylate fungicide, which is known to control certain fungi such as fusarium. Benzamacril has the chemical name (EZ)-3- [benzyl(methyl)amino]-2-cyanoacrylic acid, which is another cyanoacrylate fungicide. Monogenic resistance to a new fungicide, JS399-19, in Gibberella zeae (Chen et.al. Plant Pathology (2009) 58, 565-570) teaches discovery of five new Phenamacril resistant isolates for fusarium head blight. There is therefore, a need for resistance management that will allow increased control and decreased resistance.
It has been found that the addition of a cyanoacrylate fungicide such as phenamacril or benzamacril or a combination thereof to benzovindiflupyr leads to a synergistic action with broad spectrum control. It was surprising that the addition of a benzovindiflupyr to the cyanoacrylate fungicides resulted in an enhancement of the efficacy, and a surprising reduction in fungal disease incidence, seen only when these actives are combined. As will be demonstrated in the examples, the synergistic effect of the present combination is far superior to the combinations of the prior art.
These surprising advantages of the combinations of the invention were not observed when the either benzovindiflupyr or either of the cyanoacrylate fungicides were not present in the combination, or when benzovindiflupyr was replaced by similar compounds. Therefore, these unexpected advantages of the combination of the present invention could be attributed to synergism between the two active compounds or class of compounds of the present invention.
Thus, in an aspect, the present invention provides a fungicidal combination comprising:
(a) benzovindiflupyr; and
(b) phenamacril or benzamacril or a combination thereof.
The combination of the present invention may be used to control a broad spectrum of plant diseases, such as: Disease in rice: Blast (Magnaporthe grisea), Helminthosporium leaf spot (Cochliobolus miyabeanus), sheath blight (Rhizoctonia solani), and bakanae disease (Gibberella fujikuroi).
Diseases in wheat: powdery mildew (Erysiphe graminis), Fusariuin head blight (Fusarium graminearum, F. avenacerum, F. culmorum, Microdochium nivale), rust (Puccinia striiformis, P. graminis, P. recondita), pink snow mold (Micronectriella nivale), Typhula snow blight (Typhula sp . ), loose smut (Ustilago tritici), bunt (Tilletia caries), eyespot (Pseudocercosporella herpotrichoides), leaf blotch (Mycosphaerella graminicola), glume blotch (Stagonospora nodorum), septoria, and yellow spot (Pyrenophora tritici-repentis) ” (page 4-5) and “In an aspect, the present invention may provide a combination comprising: (a) benzovindiflupyr;
(b) phenamacril or benzamacril or a combination thereof; and
(c) at least another agrochemical. In an embodiment, said at least another agrochemical may be selected from a fungicide, insecticide, herbicide, biocide, plant growth regulator, plant activator, fertilizers and the like.
In an embodiment, said at least another agrochemical is a fungicide”(page 11-12). This helps to teach claim 1 and 16.
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 HONE with FABRI because both disclose fungicidal compositions for the same purpose of protecting useful plants from fungi. It thus would have been obvious to combine the cyclobutrifluram compositions of HONE with the Phenamacril compositions of FABRI to form a third composition for the very same purpose of protecting useful plants from fungi. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One would have a reasonable expectation of success because both compounds are suggested for combination with additional anti-fungi compounds. One would be motivated to do so because HONE teaches mixtures of the polymorph Form B or C with other active substances may also have further surprising advantages which can also be described, in a wider sense, as synergistic activity. For example, better tolerance by plants, reduced phytotoxicity, insects can be controlled in their different development stages, or better behaviour relating to production, for example grinding or mixing, storage or use.(page 13-14)
The unexpected results in the instant specification have been considered. However, unexpected results must be commensurate in scope with the claimed invention to be persuasive. The instant claims are not commensurate in scope compared to the unexpected results because they are not limited to the ratios in the examples, the concentrations in the examples, the stereoisomers in the examples, the carriers in the examples, the pesticide combinations that are in the examples, or the fungal pathogens the examples were tested against.
Claim(s) 1, 2, 5-7, 11, 12, 13, 14, 15, 16, 17, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over HONE (HONE et al., WO 2019158476 A1, 2019-08-22, IDS) in view of FABRI (FABRI et al., WO2018198009A1, 2018-11-01, IDS) further in view of O'SULLIVAN (O'SULLIVAN et al., WO 2013143811 A1, 2013-10-03).
The references HONE and FABRI has been discussed supra (and are incorporated by reference herein) and do not disclose the specific ratios of claims 2, 5-7 or 18.
The reference O'SULLIVAN teaches (page 15-27):
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The reference O'SULLIVAN teaches “A compound of formula (I) has been found to control the damage caused by a pest and/or fungi”(page 32) and “Compounds of this invention are effective for controlling nematode, insect, acarid pests and/or fungal pathogens of agronomic plants, both growing and harvested, when employed alone, they may also be used in combination with other biological active agents used in agriculture, such as one or more nematicides, insecticides, acaricides, fungicides, bactericides, plant activator, molluscicide, and pheromones (whether chemical or biological). Mixing the compounds of the invention or the compositions thereof in the use form as pesticides with other pesticides frequently results in a broader pesticidal spectrum of action. For example, the formula (I) compounds of this invention may be used effectively in conjunction or combination with pyrethroids, neonicotinoids, macrolides, diamides, phosphates, carbamates, cyclodienes, formamidines, phenol tin compounds, chlorinated hydrocarbons, benzoylphenyl ureas, pyrroles and the like.
The activity of the compositions according to the invention can be broadened considerably, and adapted to prevailing circumstances, by adding, for example, one or more insecticidally, acaricidally, nematicidally and/or fungicidally active agents. The combinations compounds of formula (I) with other insecticidally, acaricidally, nematicidally and/or fungicidally active agents may also have further surprising advantages which can also be described, in a wider sense, as synergistic activity. For example, better tolerance by plants, reduced phytotoxicity, pests or fungi can be controlled in their different development stages or better behaviour during their production, for example during grinding or mixing, during their storage or during their use”(page 40).
The reference O'SULLIVAN teaches “The mass ratio of of any two ingredients in each combination is selected as to give the desired, for example, synergistic action. In general, the mass ratio would vary depending on the specific ingredient and how many ingredients are present in the combination. Generally, the mass ratio between any two ingredients in any combination of the present invention, independently of one another, is from 100:1 to 1 :100, including from 99:1 , 98:2, 97:3, 96:4, 95:5, 94:6, 93:7, 92:8, 91 :9, 90:10, 89:1 1 , 88:12, 87:13, 86:14, 85:15, 84:16, 83:17, 82:18, 81 :19, 80:20, 79:21 , 78:22, 77:23, 76:24, 75:25, 74:26, 73:27, 72:28, 71 :29, 70:30, 69:31 , 68:32, 67:33, 66:34, 65:45, 64:46, 63:47, 62:48, 61 :49, 60:40, 59:41 , 58:42, 57:43, 56:44, 55:45, 54:46, 53:47, 52:48, 51 :49, 50:50, 49:51 , 48:52, 47:53, 46:54, 45:55, 44:56, 43:57, 42:58, 41 :59, 40:60, 39:61 , 38:62, 37:63, 36:64, 35:65, 34:66, 33:67, 32:68, 31 :69, 30:70, 29:71 , 28:72, 27:73, 26:74, 25:75, 24:76, 23:77, 22:78, 21 :79, 20:80, 19:81 , 18:82, 17:83, 16:84, 15:85, 14:86, 13:87, 12:88, 1 1 :89, 10:90, 9:91 , 8:92, 7:93, 6:94, 5:95, 4:96, 3:97, 2:98, to 1 :99. Preferred mass ratios between any two components of present invention are from 75:1 to 1 :75, more preferably, 50:1 to 1 .50, especially 25:1 to 1 :25, advantageously 10:1 to 1 :10, such as 5:1 to 1 :5, for example 1 :3 to 3:1 . The mixing ratios are understood to include, on the one hand, ratios by mass and also, on other hand, molar ratios.
Examples of application methods for the compounds of the invention mad compositions thereof, that is the methods of controlling pests / fungi in the agriculture, are spraying, atomizing, dusting, brushing on, dressing, scattering or pouring - which are to be selected to suit the intended aims of the prevailing circumstances”(page 58).
This helps to teach claims 2, 5-7 or 18.
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 HONE and FABRI with O'SULLIVAN because all disclose fungicidal compositions for the same purpose of protecting useful plants from fungi and because O'SULLIVAN and HONE disclose the same compound. Thus it would have been obvious to use the ratios of compounds of those structures ( as taught by O'SULLIVAN) with combinations of other fungicidal compositions and optimize the ratio of compounds for synergy. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955.) It thus would have been obvious to combine the cyclobutrifluram compositions of HONE and O'SULLIVAN with the Phenamacril compositions of FABRI to form a third composition for the very same purpose of protecting useful plants from fungi. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One would have a reasonable expectation of success because both compounds are suggested for combination with additional anti-fungi compounds. One would be motivated to do so because HONE teaches mixtures of the polymorph Form B or C with other active substances may also have further surprising advantages which can also be described, in a wider sense, as synergistic activity. For example, better tolerance by plants, reduced phytotoxicity, insects can be controlled in their different development stages, or better behaviour relating to production, for example grinding or mixing, storage or use.(page 13-14).
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, 2, 5-7, 11, 12, 13, 14, 15, 16, 17, 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-15 of copending Application No. 18/705,851, over claims 12 of copending Application No. 17/905,487 in view of HONE (HONE et al., WO 2019158476 A1, 2019-08-22, IDS) in view of FABRI (FABRI et al., WO2018198009A1, 2018-11-01, IDS) further in view of O'SULLIVAN (O'SULLIVAN et al., WO 2013143811 A1, 2013-10-03).
The application ‘851 claims:
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342
654
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media_image7.png
159
725
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media_image8.png
166
761
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media_image9.png
309
662
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media_image10.png
549
750
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The application ‘487 claims:
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media_image11.png
169
1115
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media_image12.png
180
1129
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media_image13.png
287
1108
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This helps to teach claims 1, 2, 5-7, 11, 12, 13, 14, 15, 16, 17, 18.
The applications do not specifically teach Phenamacril and cyclobutrifluram (all claims).
The secondary references teaches that all needed changes would be obvious as outlined in the 103 rejection (which is incorporated herein by reference).
It would have been prima facie obvious to one of ordinary skill in the art to have modified the applications ‘851 and ‘487 with HONE, FABRI and O'SULLIVAN because all disclose fungicidal compositions for the same purpose of protecting useful plants from fungi and because O'SULLIVAN and HONE disclose the same compound as applications ‘851 and ‘487. Thus it would have been obvious to use the ratios of compounds of those structures ( as taught by O'SULLIVAN) with combinations of other fungicidal compositions and optimize the ratio of compounds for synergy. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955.) It thus would have been obvious to combine the cyclobutrifluram compositions of HONE and O'SULLIVAN and applications ‘851 and ‘487 with the Phenamacril compositions of FABRI to form a third composition for the very same purpose of protecting useful plants from fungi. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One would have a reasonable expectation of success because both compounds are suggested for combination with additional anti-fungi compounds. One would be motivated to do so because HONE teaches mixtures of the polymorph Form B or C with other active substances may also have further surprising advantages which can also be described, in a wider sense, as synergistic activity. For example, better tolerance by plants, reduced phytotoxicity, insects can be controlled in their different development stages, or better behaviour relating to production, for example grinding or mixing, storage or use.(page 13-14).
This is a provisional nonstatutory double patenting rejection.
Conclusion
Claims 1, 2, 5-7, 11, 12, 13, 14, 15, 16, 17, 18 are rejected.
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/A.A.H./ Examiner, Art Unit 1627
/Kortney L. Klinkel/ Supervisory Patent Examiner, Art Unit 1627
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