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
This application is a 371 of PCT/EP2022/083279 11/25/2022. 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. EP 21210867.4, filed on 11/26/2021.Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-15 are pending and under examination.
Claim Objections
Claims 2-8 and 10-13 are objected to because of the following informalities: Claims 2-8 should recite –The composition--, instead of “a composition”, and claims 10-13 should recite
–The method--, instead of “a method”. The claims are dependent, and are drawn to the respective composition and method recited in the preamble of their independent claims, and should include appropriate antecedent basis. 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 1-15 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.
The metes and bounds of claim 1 are rendered uncertain by the phrase “or combinations thereof” in claim 1, line 6, because it is not clear whether Applicant is referring to a combination of the compound of (A) and at least one of (B), or a combination of the two compounds of (B). If the latter, this phrase should read --or a combination thereof--.
The metes and bounds of claim 4 are rendered uncertain by the phrase “wherein (A) comprises a compound selected from…” in claim 4, line 2, because it is not clear if these compounds (I.a, I.b, and I.c) are in addition to at least one compound previously recited as comprising (A) in claim 1, or if these are select compounds chosen from formula (I) of (A) in claim 1.
The metes and bounds of claim 8 are rendered uncertain by the phrase “further pesticides” and “preferably one or more other fungicides” in claim 8, line 2, because it is not clear what the Applicant is intending as a required limitation of the claim. Claim 1 recites a composition, but does not recite that either compound is a pesticide, so it is not clear if the Applicant means in claim 8, that there are pesticides in addition to the compounds previously recited in claim 1, or if the Applicant is claiming that the pesticides of claim 8 are selected from the compounds previously recited in claim 1. Secondly, since the claim initially recites “one or more further pesticides, preferably one or more further fungicides, insecticides or herbicides”, it is not clear if Applicant is claiming that the fungicides, insecticides or herbicides, are selected from the group of the preferable pesticides, or if the composition further comprises fungicides, insecticides or herbicides in addition to the pesticides.
The metes and bounds of claims 9 and 15 are rendered uncertain because the term “useful plants” in claims 9 and 15 is a relative term which renders the claim indefinite. The term “useful plants” 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. Further, the metes and bounds of claim 15 are rendered uncertain by the phrase “in particular rust diseases on useful plants, more particularly comprising soybeans and/or cereals, and/or or the enhancement of growth of such useful plants”, in claim 15 lines 2-4, because it is unclear what is a required limitation of the claim, and what is merely the Applicant’s preference.
Claim 10 recites the limitation "the phytopathogen" in claim 10, lines 1-2. However, the independent claim 9 recites “phytopathogens”. It is not clear whether the Applicant intends for “the phytopathogen” in claim 10 to be one singular species of the broad genus of phytopathogens recited in claim 9, or if the Applicant is merely referring to the broad genus of phytopathogens in the singular form, wherein the phytopathogen could still refer to any number of species within the phytopathogen genus. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "comprising when using for treating seed" in claim 14, lines 1. However, claim 9, from which claim 13 depends, does not recite any seed. Therefore, it is not clear whether “comprising when using for treating seed” is in addition to the limitations in claim 9, or if its only further defining a limitation recited in claim 9, such as the locus or propagation material. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the coating" in claim 14, line 1. However, the claim only recites “a coated plant propagation material”, and there is no recitation of any coating prior to this claim. There is insufficient antecedent basis for this limitation in the claim.
The metes and bounds of claim 15 are rendered uncertain by the phrase “The use of a composition…” in claim 15, line 1, because it is not clear whether Applicant is claiming the composition as a product while merely describing its use, or is intending to claim a method of using the composition, as there are no active method steps recited in the claim.
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
The lack of clarity renders the claims indefinite since the resulting claims do not clearly set forth the metes and bounds of the patent protection desired.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 is drawn to a composition according to claim 1, comprising as component (B) a fungicidally effective amount of a compound selected from flufenoxadiazam and metarylpicoxamid, or combinations thereof. This is not further limiting from the subject matter that was recited in independent claim 1, wherein a composition comprises component B, which comprises at least one compound selected from flufenoxadiazam and metarylpicoxamid, or combinations thereof. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 15 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific asserted utility or a well-established utility.
With regard to claim 15, the recitation of “use..” renders the claim uncertain and fails to point out a specific process or utility. It is unclear if Applicant is intending to claim a product, or a method of treating a disease. In addition, claim 15 depends on a product claim (i.e., claim 1), and therefore must be directed to the same statutory category.
Claim 15 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
(Of Note: For the purpose of examination, Examiner is construing the claim 15 as either a product or method claim.)
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 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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bereznak, J. F., et. al. (WIPO Publication WO2020/097012 A1; Published 5/14/2020), in view of Desbordes, P., et. al. (WIPO Publication WO 2020/178307 A1; Published 9/10/2020), further in view of Loy, B. A., et. al. (WIPO Publication WO 2019/173665 A1; Published 9/12/2019).
Bereznak teaches a Formula 1, as shown below
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156
306
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Below is the Applicant’s Formula I, for reference
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110
385
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Bereznak’s Formula 1 teaches the Applicant’s Formula I, wherein R4 of Bereznak is taught to be C1-C3 alkoxy, W is taught to be O, R3 is taught to be hydrogen, Y is taught to be CR7aR7b, wherein R7a and R7b are taught to be hydrogen, A is taught to be
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99
96
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, or
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102
128
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, while Applicant teaches the corresponding X on the five-membered ring to be nitrogen or -CH-, R1 and R2 of Bereznak is taught to be halogen, and Q is taught to be CR6 wherein R6 is further hydrogen, C1-C6 alkyl, or C1-C6 alkoxy, corresponding to R as taught by Applicant to be the same.
Bereznak also teaches the compounds of formula (I) are to be used as fungicides (See Page 1; Summary) and are tested against both wheat rust (Puccinia recondita f. sp, tritici) and soybean rust (Phakopsora pachyrhizi) species (See Page 91; Test B and D). In particular, Bereznak teaches that the Applicant’s select structure I.a, as claimed in claim 4 and shown below,
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117
304
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has an optimal activity against the aforementioned wheat and soybean rust species, showing 100% disease control (See Page 94; Compound 63).
Applicant’s select species I.b, and I.c, shown below respectively,
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100
345
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121
341
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similarly show 100% disease control in the aforementioned wheat and soybean rust species,
in TABLE A as taught by Bereznak (See Page 92; Compound 3, and Page 93; Compound 41). NOTE: Compounds I.a, I.b, and I.c, as claimed in claim 4, correspond to the chemical names claimed in claim 7.
An INDEX TABLE A can be found on Page 85, from which the compounds of Bereznak and the corresponding compounds of Applicant can be determined.
Bereznak also teaches that the compounds of Formula 1 are intended to be included in a composition with at least one other fungicidal compound (See Page 26; lines 1-5)
Thus far, Bereznak provides motivation to one having ordinary skill in the art to pursue the Applicant’s formula 1, in particular the select species claimed (I.a, I.b, and I.c) showing optimal activity for the claimed cereal and soybean rust diseases, in a composition with other compounds having fungicidal activity for the same diseases.
Bereznak does not teach flufenoxadiazam or metarylpicoxamid as part of an overall composition in combination with a compound of formula I.
However, Desbordes teaches that flufenoxadiazam (referred to as N-(2-fluorophenyl)-4-[5-(trifluoromethyl)-1,2,4-oxadiazol-3-yl]benzamide (See Page 118; Line 25), as made evident by NIH. Flufenoxadiazam (compound), Pubchem. [online], [retrieved on 5/5/2025], can be selected to be added as a further active compound to a composition along with an alternative compound that is also taught to act as a fungicide (See Page 1; Lines 1-25), and further teaches that this combination can treat cereals and soybean from fungal infection (See Page 68; Lines 14-19) as well as treat rust disease (Phakopsora pachyrhizi) (See Page 55; Lines 28-32).
Neither Bereznak nor Desbordes teach metarylpicoxamid.
However, Loy teaches that metarylpicoxamid, shown as compound no.278 on Page 101, as made evident by NIH. Metarylpicoxamid (compound), Pubchem. [online], [retrieved on 5/5/2025], also has fungicidal activity against rust of soybean (Phakopsora pachyrhizi) (See Page 16; Paragraph 0045) and can be used in combination with other fungicides in a composition to treat fungal infections (See Page 8; Paragraph 0039).
In particular, Loy provides motivation to pursue metarylpicoxamid as a potential anti-fungal agent relative to the other species taught by Loy, through Table 6 showing that metarylpicoxamid (Compound 278) has an A rating for treating (PHAKPA) as both a prophylactic measure (1DP – 1 Day Protectant), as well as a curative measure (3DC – 3 Day Curative) (See Pages 196-198; Table 6), wherein the A rating denotes a > 80 % control of fungal pathogen (See Page 192; Table 3).
In regards to the Applicant’s limitation in claim 6 drawn to a composition according to claim 1, wherein the weight ratio of component (A) to component (B) is in the range of from 2000 : 1 to 1 : 1000, Bereznak teaches that additional agents that are used in a composition along with a compound of Formula 1 (Applicant’s compound) are in a ratio of 1:3000 to about 3000:1 (See Page 82; lines 31-31), and further teaches that one skilled in the art can easily determine through simple experimentation the biologically effective amounts of active ingredients necessary for the desired spectrum of biological activity (See Page 82; Lines 34-36). While Examiner acknowledges the ratio taught by Bereznak is a broader range than the Applicant’s ratio of 2000:1 to 1:2000, the high degree of overlap between the ratios, in light of Bereznak’s suggestion that these ratios are to be routinely optimized by one having ordinary skill in the art to reach desired biological activity, supports Examiner’s position that the Applicant’s ratio is obvious and would be expected to be routinely optimized by one having ordinary skill in the art, before the Applicant’s effective filing date (MPEP 2144.05).
In regards to the Applicant’s limitation in claim 12 drawn to a method according to claim 9, comprising applying component (A) at a rate of 5 to 2000 g a.i./ha in association with 1 to 5000 g a.i./ha of component (B), Bereznak teaches that the compounds of formula 1 (Applicants formula I), are prepared at a concentration of 3% of the final volume of solution (See Page 91; Lines 4-8), and that the spray mixture is typically applied at a rate of 1 to 5 liters per hectare (See Page 56; Lines 35-36), which results in 300 – 1500 grams of the active ingredient per hectare (g a.i/ha) (3%=3g/100ml= 300g/L/hectare) (3%=3g/100ml= 1500g/5L/hectare). This rate of 300 – 1500 grams/hectare (assuming 1 – 5 Liters/hectare), falls within the Applicant’s claimed range of 5 to 2000 g a.i/ha of compound A. Loy teaches that metarylpicoxamid is applied at 121.5 g/ha (See Page 194; Table 5 (compound 278)) teaching Applicant’s range of 1 to 5000 g g a.i/ha of compound B.
In regards to the Applicants limitation in claim 13 drawn to a method according to claim 9, comprising when using for treating seed, applying 0.001 to 50 g of at least a compound of component (A) per kg of seed, and 0.001 to 50 g of at least a compound of component (B) per kg of seed, Bereznak teaches that seed and seedlings can normally be protected when seed is treated with a compound of Formula 1 (Applicant’s formula I) at a rate of from about 0.001 g (more typically about 0.1 g) to about 10 g per kilogram of seed (See Page 64; Lines 9-10), which teaches the Applicant’s range of Compound A. Desbordes teaches that the application rate of each single active ingredient is generally between 0.001 and 15 g per kilogram of seed, preferably between 0.01 and 5 g per kilogram of seed (See Page 70; Lines 25-26) wherein the active ingredient can be flufenoxadiazam (See Page 118; Line 24-25 – No.15.082).
In regards to the Applicants limitation in claim 14 drawn to a coated plant propagation material, wherein the coating comprises a composition according to claim 1, Bereznak recites:
“Therefore, typically a seed coating composition of the present invention comprises a biologically effective amount of a compound of Formula 1 and a film former or adhesive agent. Seeds can be coated by spraying a flowable suspension concentrate directly into a tumbling bed of seeds and then drying the seeds. Alternatively, other formulation types such as wetted powders, solutions, suspoemulsions, emulsifiable concentrates and emulsions in water can be sprayed on the seed. This process is particularly useful for applying film coatings on seeds. Various coating machines and processes are available to one skilled in the art” (See Page 57; Lines 5-12).
Through this recitation, Bereznak teaches a coated plant propagation material, wherein the coating comprises a composition according to claim 1.
In the instant case, Bereznak, Desbordes, and Loy provide adequate teaching, suggestion, or motivation to one having ordinary skill in the art, before the Applicant’s effective filling date, to use the Applicant’s compound of formula (I), particularly select species I.a, I.b, and I.c, having optimal activities against wheat and soybean rust species as taught by Bereznak, in a composition along with flufenoxadiazam and metarylpicoxamid, both taught by Desbordes and Loy respectively to be useful for wheat and soybean rust, wherein the composition is further used in a coated plant propagation material, and wherein the composition is further used in a method, wherein the composition is applied to plants, particularly wheat and soybean, that are afflicted with a phytopathogen, particularly rust pathogens, using the instantly claimed amounts of active ingredients.
One skilled in the art would have been motivated and have had reasonable expectation of success to combine the teachings in these references prior to the applicant’s effective filling date.
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to combine these teachings and develop a composition comprising the Applicant’s compound of formula (I), including select species I.a, I.b, and I.c, along with flufenoxadiazam and metarylpicoxamid, as well as a coated plant propagation material using the composition, and a method wherein the composition is applied to plants, particularly wheat and soybean, that are afflicted with a phytopathogen, particularly rust pathogens, using the instantly claimed amounts of active ingredients.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OROD MOTEVALLI whose telephone number is (571)272-6026. The examiner can normally be reached Monday - Friday 10:00AM - 6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L Clark can be reached at (571) 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OROD MOTEVALLI/ Examiner, Art Unit 1628
/AMY L CLARK/ Supervisory Patent Examiner, Art Unit 1628
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