Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claims 1-16 are pending in this application.
Elected subject matter
Applicant’s election without traverse of (3.1) ametoctradin as the single disclosed species of (B) compound in the reply filed on 5/14/2026 is acknowledged.
Claims 13, 14, and 16 fail to read on ametoctradin, so they are withdrawn from further consideration as being directed to non-elected subject matter. Claims 1-12 and 15 will presently be examined to the extent that they read on the elected subject matter.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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.
Claim 4 is 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.
Claim 4 depends on itself. This is confusing and indefinite.1
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-12 and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the combined teachings of Tsuchiya et al. (WO 2012/025557) and Blasco et al. (US 2007/0173408) in view of Leonard and Issac.
Tsuchiya et al. (WO 2012/025557) disclose the crop protection fungicidal properties of Applicant's compound (A), i.e., compound (I-3); Tsuchiya’s Example compound I-102 on pages 76 is the same as Applicant’s compound (I-3). Formulations with extenders, solvents, diluents, emulsifiers, surfactants are disclosed (page 52, line 4 to bottom of page 53). Mixtures with other known fungicides, bactericides, and insecticides are taught (page 54, lines 13-17; page 59, lines 21-24). Use with both an insecticide and another fungicide is disclosed (page 59, lines 21-24). Synergistic or “superadditive” effects are disclosed, which can be shown as, for example, reduced application rates, widening of activity spectrum, increase in activity of the active ingredients, increased tolerance, increased yield (page 60, lines 6-15). Application rates of 0.1-10,000 g/ha, 10-1000 g/ha, or 50-300 g/ha for treatment of plants, and 2-200 g/100 kg of seed, or 3-150 g/100 kg of seed for seed treatment are disclosed (paragraph bridging pages 58-59). In Example B, 10 ppm of compound I-102 (i.e., Applicant’s compound I-3) was 100% effective against Plasmopara viticola on grapevine plants (page 117). Treatment of transgenic plants and seeds is disclosed (paragraph bridging pages 45-46; page 44, lines 25-30; page 56, lines 1-8; pages 63-66).
Blasco et al. (US 2007/0173408) disclose ametoctradin as a fungicide. Blasco’s compound I-2 in Table I is ametoctradin (paragraph 128). Activity against a broad spectrum of phytopathogenic fungi is disclosed (paragraph 49). Control of multitude of fungi on various cultivated lants and seeds of said plants, including tomatoes, wheat, rye, barley, and other crop plants (paragraph 50). Control of Phytophthora infestans on tomatoes is disclosed as “especially suitable” (paragraphs 51, 62, 76; see page 8, data in Use Example 2 for 250 ppm of compound I-2 against P. infestans). Fungicidal composition can comprise 0.1-95 wt% of ametoctradin (paragraph 79). Application amount can be between 0.01 and 2 kg/ha, and seed treatment amount can be between 1 to 1000 g per 100 kg of seed (paragraph 81). Formulation with emulsifiers, dispersants, and surfactants is disclosed (paragraph 84, 87). Combined use with another fungicide, growth regulator, insecticide, or fertilizer is disclosed, wherein combined use with another fungicide can result in expansion of the fungicidal spectrum of activity (paragraph 108). Various additional fungicides of diverse structures are disclosed, including heterocyclic compounds (paragraphs 109-125). See also claims 1, 8-10.
Leonard2 discloses the industry definition of “resistance” as loss of field control due to a shift in sensitivity (page 906, section2.2). Resistance is managed in the field by, inter alia, mixing chemical pesticides (page 907, section 2.3.3).
Issac3 further discloses the problem of resistant pathogens and teaches combination of fungicides for minimizing the development of resistance (see the entire article, especially the last paragraph on page 39).
Tsuchiya et al. do not specifically exemplify a fungicidal composition comprising (A) compound (I-3) + (B) ametoctradin. However, Tsuchiya et al. clearly teach adding another fungicide. The motivation to add another fungicide is well established in this art – see Leonard and Issac. Even Applicant acknowledges that "there is a constant need to develop novel fungicidal compositions which have advantages over the known compositions" due to resistance problems (specification paragraph 4). Therefore, the ordinary skilled artisan would have found it obvious to combine the fungicidal activity of (I-3) + ametoctradin as claimed herein. See also In re Kerkhoven, 205 USPQ 1069, 1072 (CCPA 1980); In re Crockett, 126 USPQ 186 (CCPA); Ex parte The NutraSweet Co., 19 USPQ2d 1586, 1587 (Bd. Pat. App. & Int. 1991).
Claim 5 is directed to a plant growth regulator composition that contains (I-3) + ametoctradin. Because no other additional ingredient is recited, the properties possessed by the mixture suggested by the prior art, e.g., (I-3) + ametoctradin, would necessarily provide plant growth regulating functionality by at least controlling fungal pathogens and thus providing an improved growth condition for the treated plants.
Claims 9-11 recite weight ratios of A:B that can be 200:1 to 1:100, 500:1 to 1:500, or 1:1 to 1:1000. Based on the application rates disclosed for (I-3) and ametoctradin as discussed above, the claimed weight ratios would have been obvious. The ordinary skilled artisan would have been taught the effective rates of application at which I-3 and ametoctradin are individually effective, and mixture at those rates of application would have obviously obtained the claimed ratio range. For example, Tsuchiya et al. disclose fungicidal efficacy of 10 ppm of compound I-102 (which is the same compound as Applicant’s I-3) and Blasco et al. disclose fungicidal efficacy of 250 ppm ametoctradin, which would obtain 1:25 weight ratio. This is a non-limiting example of prior art application amounts and ratios obtainable therefrom.
Claim 12 requires that the composition is synergistically effective and the only active compounds present are I-3 and ametoctradin.
Regarding the “synergistic” claim feature, Tsuchiya et al. teach synergistic effects when their compounds are combined with other fungicides. Additionally, it is the Examiner’s position that nonobviousness of synergistic claim language must be established through objective evidence for it to be afforded sufficient probative weight. Otherwise, this would become de facto patentable language under section 103. Whether or not synergism is a showing of unexpected results depends on the evidence of synergism compared to the closest prior art. See In re Huellmantel, 139 USPQ 496, 499 (CCPA 1963). Further, in the absence of objective evidence of unexpected synergistic results which is commensurate in scope with that of the claims, synergism as claimed is the necessary result of following the prior art suggestion to combine a thiazolylisoxazoline such as (I-3) with ametoctradin. It is well established that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). In Baxter, the court held that even when the prior art did not expressly disclose hemolysis-suppression feature or property of a blood bag plasticizer, such unrecognized feature or property is insufficient for rebutting a prima facie case of obviousness over a prior art blood bag that utilized the same plasticizer. Id. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”).
Regarding the claim feature that the only active compounds present are I-3 and ametoctradin, such feature would have been obvious to the ordinary skilled artisan because adding additional active compounds would add to the cost of operations. When the conditions of the field are such that control can be effectively obtained with I-3 and ametoctradin, the ordinary skilled artisan would have had insufficient reason to add another fungicide to add to the cost of operations.
All other claim features are obviously suggested by the teachings of the prior art, the discussion of which as set forth above are deemed sufficient.
Specification Table 3 discloses a single data point for I-3 + ametoctradin at 1:500 ratio. The tested ratio is not commensurate in scope with the claimed ratio range because there is no way to evaluate whether results obtained at 1:500 in Table 3 would provide similar results at significantly different ratios such as 200:1, 500:1, 1:1, or even 1:50, wherein contribution of I-3 or ametoctradin would be much greater or smaller and thus provide different interactions. Evidence of nonobviousness, if any, must be commensurate in scope with that of the claimed subject matter. In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Lindner, 173 USPQ 356, 358 (CCPA 1972). In In re Kollman, 201 USPQ 193 (CCPA 1979), a decision involving a synergistic composition with specific ratios claimed, even though there was extensive data for 16:1, 8:1 and 4:1 ratios, the court affirmed the obviousness rejection of claim 1 which was directed to a ratio range of about 1:10 to 20:1. Id. at 199-200. The court held that Appellant’s data was sufficient only for claims 7 and 8, which were directed to 1:1 to 4:1.
For these reasons, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
All claims are rejected. No claim can be allowed at this time.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 For the purpose of prior art-based ground of rejection below, dependency of claim 4 shall be assumed as claim 1 for the sake of expedited prosecution
2 IDS of 8/15/2024, Non-patent literature document no. 4.
3 IDS of 8/15/2024, Non-patent literature document no. 5.
