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 . Claims included in prosecution are claims 1-23 and 29.
Claim Objections
Claim 17 is objected to because of the following informalities: Claim 13 fails to recite the term “or” at the end of the list which appears to be a grammatical error. Please insert “or” between oil seed and legumes. Appropriate correction is required.
Claim 22 is objected to because of the following informalities: Claim 22 recites the phrase “the systemic fungicides is selected from” which seems to be a grammatical error which should recite either “the systemic fungicide is” or “the systemic fungicides are”. Additionally, claim 22 is lacking the term “wherein” following the preamble and prior to “the systemic fungicides”. Appropriate correction is required.
Claim 23 is objected to because of the following informalities: Claim 23 is lacking the term “wherein” following the preamble and prior to “the contact fungicides”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
1. Claims 2, 9, and 22-23 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.
Claim 2 recites “wherein the plant propagation material comprises a seed, rhizome and tuber”. It is unclear how the plant propagation material can be all three simultaneously since a single plant cannot naturally produce a seed, a rhizome, and a tuber all at the same time. It is recommended that the claim be amended to recite “or” instead of “and”, or alternatively to recited “selected from the group consisting of a seed, rhizome and tuber”. For the sake of compact prosecution, the instant claim will be interpreted as the “or” option.
Claim 9 recites a weight per volume concentration without reciting the basis for such a concentration.
Claims 22-23 recite the phrase “selected from the group comprising […]”. Such language is improper Markush language. Claim language defined by a Markush grouping requires selection from a closed group "consisting of" the alternative members. Id. at 1280, 67 USPQ2d at 1196.
Claim Rejections - 35 USC § 102
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.
1. Claim(s) 1-9 and 12-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Honda et al. (EP 1943901, Jul. 16, 2008) (hereinafter Honda) as evidenced by Ranman (Ranman Fungicide, 2026) (hereinafter Ranman).
Honda discloses a method of controlling plant disease comprising attaching at least one fungicidal active compound selected from 3-(3-bromo-6-fluoro-2-methylindol-1-ylsulfonyl)-N,N-dimethyl-1H-1,2,4-triazole-1-sulfonamide, cyazofamid, fluazinam, ethaboxam and benthiavalicarb to a seed of a plant (Abstract). Suitable diseases to be combated include Pythium ultimum (satisfies claim 13-14) (¶ [0078]). Test examples 2-4 of Honda disclose the treatment of seeds with a suspension concentrate of cyazofamid (satisfies claim 1-3, 6-8, & 19) (Test Ex. 2, (¶ [0089]); Test Ex. 3, (¶ [0099]); Test Ex. 4, (¶ [0107]). In each of these examples the cyazofamid painted seed showed much lower incidence of disease as compared to untreated seeds (Tables 2-4). The plant propagation material in Test Ex. 2-4 is a seed (¶ [0089-0110]). Test example 4 discloses treatment with a suspension concentrate of cyazofamid diluted 65-fold to obtain seeds painted at a rate of cyazofamid of 100 g ai/100 kg seed (satisfies claim 4-5 & 15-16) (¶ [0107]). The test examples treat Chinese cabbage, rapeseed, and green pepper seeds (satisfies claim 17-18) (¶ [0089-0110]).
Regarding claim 9, Honda utilizes a suspension concentrate of cyazofamid under the tradename “Ranman” in the test examples (¶ [0090]). As evidenced by Ranman, Ranman comprises 34.5% of cyazofamid, which falls within the instantly claimed range (i.e., 10-60% w/v) (Pg. 1).
Regarding claim 12, test example 4 discloses treatment with a suspension concentrate of cyazofamid to obtain seeds painted at a rate of cyazofamid of 100 g ai/100 kg seed ([0107]). The test examples of Honda utilize a suspension concentrate of cyazofamid under the tradename “Ranman” ([0090]). As evidenced by Ranman, such a formulation comprises 400 grams of cyazofamid per liter of the suspension concentrate (Pg. 1). Thus, the amount of the suspension concentrate (SC) needed in mL per 100 kg of seed can be calculated as such:
100
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An application amount of 250 mL/100 kg seed falls within the instantly claimed range (i.e., 10-300 mL/100 kg seed).
The prior art anticipates the indicated claims because it discloses a method for controlling diseases such as Pythium ultimum where test examples contained cyazofamid and resulted in a lower incidence of disease (i.e., inhibiting fungi) as instantly claimed, to treat seeds such as the ones instantly claimed, and in amounts and concentrations that overlap with those instantly claimed.
Claim Rejections - 35 USC § 103
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.
1. Claim(s) 1-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bayer (EP 2524601, Nov. 21, 2012) (hereinafter Bayer) as evidenced by US EPA (Cyazofamid Pesticide Fact Sheet, Sep. 2004) (hereinafter EPA) and Ranman (Ranman Fungicide, 2026) (hereinafter Ranman).
Bayer discloses a fungicide composition which comprises cyazofamid which may be used in methods for curatively or preventively controlling the phytopathogenic fungi of plants or crops. Furthermore, the composition may be used for the treatment of seed and in a method for protecting a seed (satisfies claim 2-3 & method of claim 15) (Abstract). The composition may further comprise an additional active ingredient such as inhibitors of the respiratory chain, inhibitors of the amino acid and/or protein biosynthesis, host defense inducers etc. (satisfies claim 20-22) (¶ [0013]). Suitable additional actives include prothiocarb, triazoxide, and nickel dimethyldithiocarbamate (satisfies claim 20-21 & 23) (¶ [0013]). The compositions may comprise additional further components, such as surfactants in an amount between 5 and 40 wt. % (satisfies claim 10-11) (¶ [0023]). In general, the compositions comprise between 0.05 and 99 wt. % of the active compound combination (¶ [0026]). The composition may be in the form of suspension concentrates and suspensions (satisfies claim 6-8 & 19) (¶ [0027]). The compositions are suitable for protecting seed of any plant variety employed in agriculture such as wheat, corn, rice, sunflowers, and rapeseed (i.e., canola) (satisfies claim 17-18) (¶ [0039]). Suitable diseases which may be treated include Plasmopara diseases, Phytophthora diseases, and Pythium diseases caused for example by Pythium ultimum (satisfies claim 13-14) (¶ [0092]). The dose of active compound/application rate usually applied in the method of treatment according to the invention is generally and advantageously for seed treatment: from 2 to 250 g per 100 kg of seed (satisfies claim 4-5 & 15-16) (¶ [0098]).
The prior art is not anticipatory insofar as this combination must be selected from different lists/locations in the reference. It would have been obvious, however, to have formulated a method for inhibiting phytopathogenic fungi comprising administering cyazofamid, as instantly claimed, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding claim 9, 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(I). As evidenced by EPA, cyazofamid has the tradename “RanmanTM 400SC” (Pg. 1). As evidenced by Ranman, Ranman comprises 34.5% of cyazofamid. Accordingly, because the range recited in the instant claims overlaps with the amount disclosed by the prior art, the amount disclosed by the prior art meets the instantly recited limitation.
Regarding claim 12, 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(I). As discussed above, Bayer discloses wherein the active ingredient in the suspension concentrate is applied in an amount of 2 to 250 g per 100 kg of seed. As evidenced by EPA, cyazofamid has the tradename “RanmanTM 400SC” (Pg. 1). As evidenced by Ranman, such a formulation comprises 400 grams of cyazofamid per liter of the suspension concentrate (Pg. 1). Thus, the amount of the suspension concentrate (SC) needed in mL per 100 kg of seed can be calculated as such:
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As such, the application amount would range from 5 mL/100 kg seed to 625 mL/100 kg seed. Accordingly, because the range recited in the instant claims lies within the range disclosed by the prior art, the range disclosed by the prior art meets the instantly recited limitation.
Therefore, the teachings of Bayer, as evidenced by EPA and Ranman, render obvious claims 1-23.
2. Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bayer (EP 2524601, Nov. 21, 2012) (hereinafter Bayer) in view of Ahm (US 6,578,317, Jun. 17, 2003) (hereinafter Ahm).
The teachings of Bayer are discussed above.
Bayer differs from the instant claims insofar as not disclosing the further step of contacting the cyazofamid with perlite and placing said components between two layers of paper.
However, Ahm discloses a germinating unit for germination of seeds comprises two material layers of paper and a seed placed between said two material layers. A mixture of a carrier and additives is placed between the material layers, said additives being permanently or loosely bound to said carrier (Abstract). The germination unit results in a controlled germination of the plant seed, and which after a completed germination is suited for being mechanically bedded out in the soil at a desired interval and a desired depth as well (col 1, line 39-42). Suitable carriers include perlite (col 1, line 66-67). Suitable additives include fungicides (col 2, line 5). The germinating unit may comprise water such that the seeds and the roots do not drown in water (col 2, line 19-20).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have formulated the method of Bayer to further include the step of utilizing the germination unit of Ahm and contacting it with cyazofamid as the fungicide motivated by the desire to germinate seeds which are treated with the fungicide and which have a controlled germination and which after a completed germination are suited for being mechanically bedded out in the soil at a desired interval and a desired depth as taught by Ahm.
Therefore, the combined teachings of Bayer and Ahm render obvious claim 29.
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.
1. Claims 1-23 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 and 24-25 of copending Application No. 18/832,605 in view of Bayer (EP 2524601, Nov. 21, 2012) (hereinafter Bayer).
The copending claims differ from the pending claims insofar as reciting a method for improving plant growth.
However, Bayer discloses a fungicide composition which comprises a combination of a phosphorous acid derivative and cyazofamid which may be used in methods for curatively or preventively controlling the phytopathogenic fungi of plants or crops. Furthermore, the composition may be used the treatment of seed and in a method for protecting a seed (Abstract). The composition may be used in methods of treating plants in need of better growth and/or increased harvest yields (Claim 11).
Accordingly, it would have been obvious to one of ordinary skill in the art to have utilized the cyazofamid of the pending claims in a method for improving plant growth since it may be used in such methods as taught by Bayer.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Claims 1-23 and 29 are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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/A.A./Examiner, Art Unit 1612
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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