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 filed on 6/21/2024, is a national stage application of PCT/EP2022/085844, filed 12/14/2022, which claims benefit of the foreign application filed in Europe, EP21216791.0 on 12/22/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/21/2024 is being considered by the examiner.
Claim Status
Claims examined: 1-15
Claims rejected: 1-15
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 4, 5, 9-11, 14, and 15 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 claims 4, 5, and 10, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9 contains the trademarks/trade names “Afla-Guard®”, and “Taegro®”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademarks/trade names are used to identify/describe a biofungicide based on non-toxigenic strain of Aspergillus flavus, and a biofungicide based on a strain of Bacillus amyloliquefaciens,
and, accordingly, the identification/description is indefinite.
Regarding Claim 11, it is unclear whether the applicant is limiting the scope of the term “biocide” to “preservative”, as it is listed in parentheses.
Regarding claim 14, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 15 attempts to claim “use of an organic acid selected from a compound of Formula (I), as a chemical stabilization agent for florypicoxamid in a fungicidal composition, wherein the organic acid is present at 0.02 to 1.5% by weight of the composition”, but does not recite any steps involved in the process to render the claims definite. Reciting that the organic acid is used as a chemical stabilization agent without adding any steps for the method, is not enough to render the claims as definite.
Claim Rejections - 35 USC § 101
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.
Claim 15 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the use of an organic acid without active steps cannot be considered a process, and does not fall into the other statutory categories of manufacture, machine, or composition of matter.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Gallup (Courtney Gallup et al., “Use of an Acylic Picolinamide compound as a fungicide for control of phytopathogenic fungi in row crops”, WO 2018204434 A1, Pub. Date 11/08/2018, as cited on IDS) in view of Albrecht (Dr. Konrad Albrecht et al., “Liquid Pesticidal Agents In the Form Of A Suspension Concentrates”, EP 0110174 A1, Pub. Date: 1984-06-13, machine translation).
Regarding Claims 1, 7, and 8, Gallup teaches “a method of controlling fungal diseases in a row crop that is at risk of being diseased comprising the steps of: contacting at least a portion of a plant and/or an area adjacent to a plan with a composition including compound I”, see below for compound I, known as florylpicoxamid (Claim 1, Pg. 42).
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Regarding Claim 2, Gallup teaches a composition containing florylpicoxamid as an emulsifiable concentrate (Pg. 2 [0009]).
Regarding Claim 3, Gallup teaches emulsifiers as ethoxylated alkyl phenols and carboxylic esters (Pg. 4 [0014]).
Regarding Claim 6, Gallup teaches “dialkyl amides of various fatty acids, particularly the dimethyl amides of fatty glycols and glycol derivatives such as the n-butyl ether, ethyl ether or methyl ether of diethylene glycol, and the methyl ether of triethylene glycol and the like” (Pg. 4, [0015]).
Regarding Claim 9, Gallup discloses pydiflumetofen as an additional fungicidal active ingredient (Pg. 7, [0022]).
Regarding Claims 11, Gallup teaches “Compound I may be dissolved in an inert carrier, which is either a water-miscible solvent or a mixture of water-immiscible organic solvents, and emulsifiers” (Pg. 3 [0013]), and disclosed nonionic and anionic emulsifiers as embodiments (Pg. 4 [0014]).
Regarding Claim 12, Gallup teaches a composition containing “compound I and a phytologically acceptable carrier material” (Pg. 2, [0007]), and discloses “formulations are applied as aqueous suspensions or emulsions” (Pg. 3, [0011]).
Regarding Claims 13 and 14, Gallup discloses “Another embodiment of the present disclosure is a use of compound I for protection of a plant against attack by a phytopathogenic organism or the treatment of a plant infested by a phytopathogenic organism, comprising the application of compound I, or a composition including compound I to soil, a plant, a part of a plant, foliage, and/or seeds” (Pg. 1, [0006]). Gallup also discloses Mycosphaerella graminicola as a phytopathogenic microorganism frequently found on wheat plants (Pg. 23, [0035]).
Gallup does not teach benzoic acid used in the fungicidal composition.
Albrecht teaches benzoic acid used as a preservative in fungicidal compositions, a compound of instant Formula (I) (Pg. 6, [0017]).
The courts have found, “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 reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)
Regarding claims 1-3, 6-9, and 11-14, it would have been prima facie obvious for one of ordinary skill in the art to combine the method of using florylpicoxamid as an active ingredient in a fungicidal composition disclosed in Gallup, with the method of using benzoic acid as a preservative in a fungicidal composition disclosed in Albrecht because both compounds are taught by the prior art to be used fungicidally, and the composition of florylpicoxamid and benzoic acid used fungicidally is obvious.
Regarding Claim 4, Gallup teaches “Aqueous suspensions including compound I may be dispersed in an aqueous vehicle at a concentration in the range from about 5 to about 50 weight percent, based on the total weight of the aqueous suspension” (Pg. 4, [0016]).
Regarding Claim 5 and 10, Gallup teaches “Compound I and the pesticidal compound in the combination can generally be present in a weight ratio of from 1: 100 to 100: 1” (Pg. 6, [0021]).
Regarding Claims 4, 5, and 10, the courts found that, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.
Therefore, it would have been prima facie obvious for one of ordinary skill in the arts before the effective filing date to optimize the weight percentage of florylpicoxamid and an organic acid in the composition, and the weight ratio of additional active ingredients relative to florylpicoxamid disclosed in Gallup, to arrive at the claimed weight percentage of 1 to 10% for florylpicoxamid in the composition, 0.02 to 1.5% and the weight ratio of an additional fungicidal active ingredient relative to florylpicoxamid of 10:1 to 1:10 because the ranges disclosed in Gallup overlap or completely encompass the ranges disclosed in present claims 4 and 10.
Conclusion
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/C.M.R./ Examiner, Art Unit 1627
/Kortney L. Klinkel/ Supervisory Patent Examiner, Art Unit 1627
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