DETAILED ACTION
This office action is in response to applicant’s filing dated August 24, 2026.
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 .
Status of Claims
Claims 1-16 are pending in the instant application. Acknowledgement is made of Applicant's remarks filed August 9, 2024.
Election/Restrictions
Applicant’s election without traverse of Group I, drawn to a method for preventing, treating and/or controlling sheath blight in rice comprising applying an effective amount of benzobicyclon and/or benzobicyclon hydrolysate to a rice seed, a rice plant, or a field of rice plants comprising, or susceptible to, sheath blight in the reply filed on August 24, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The Examiner notes in view of Riediger et al (WO 2019/115343 A1) which teaches Rhizoctonia salani is sheath blight on rice (page 207, lines 28-30), the restriction requirement between Groups I and II is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Applicant’s election of a formulation species comprising azoxystrobin as the elected species in the reply filed on August 24, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 24, 2026.
Claims 1-9 and 12-16 are presently under examination as they relate to the elected species: azoxystrobin.
Priority
The present application is a 371 of PCT/US2023/062220 filed on February 8, 2023, which claims benefit of US Provisional Application No. 63/308,282 filed on February 9, 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 9, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner, except where marked with a strikethrough.
Drawings
Acknowledgement is made of the drawings received on August 9, 2024. These drawings are accepted.
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, 2, 4-9, and 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Riediger et al (WO 2019/115343 A1).
Regarding claims 1, 2, 5, 6, and 12-15, Riedinger teaches a method for controlling phytopathogenic harmful fungi, comprising treating the fungi, their habitat or the seed, the soil or the plants to be protected against fungal attack with an effective amount of the compound I and the compound Il and the compound III (claim 15) wherein the mixture comprises at least one active compound II selected from groups A) to O) and at least one active Compound III selected from groups A) to O) wherein the at least one active compound III is not identical with the at least one active compound II wherein azoxystrobin is a compound from group A and benzobicyclon is a compound of group N) (claim 2). Moreover, Riediger teaches the composition is useful against Rhizoctonia diseases (Rhizoctonia solani) (claims 1, 2, 8, and 12). Riediger teaches Rhizoctonia salani is sheath blight on rice (page 207, lines 28-30). Riediger further teaches compositions can be used in crop protection as foliar fungicides, fungicides for seed dressing and soil fungicides (page 204, lines 25-26).
While the reference may not be anticipatory insofar as one must select azoxystrobin and benzobicyclon from various active compounds to control phytopathogenic harmful fungi and Rhizoctonia salani (sheath blight) in rice from various phytopathogenic harmful fungi as taught in Riedinger, it remains that it would have been obvious to a person of ordinary skill in the art, to have selected azoxystrobin and benzobicyclon in order to arrive composition useful for controlling Rhizoctonia salani (sheath blight) in rice. The skilled person would have been motivated to do so by the unambiguous disclosure of each particular species of compounds individually and alternatively as equally useful in a method of controlling harmful fungi, including Rhizoctonia salani (sheath blight) in rice. This conclusion is supported by the fact that it has long been held in patent prosecution that a reference should be considered as expansively as is reasonably possible in determining the full scope of the contents within its four corners.
Regarding claims 8 and 9, Riediger teaches suitable auxiliaries are liquid carriers or solid carriers.
Taken together, all this would result in the practice of the method of claims 1, 2, 5, 6, 8, 9, and 12-15 with a reasonable expectation of success.
Regarding claim 4, Riedinger teaches when employed in plant protection, the amounts of active substances applied are, depending on the kind of effect desired, from 0.001 to 2 kg per ha, preferably from 0.005 to 2 kg per ha, more preferably from 0.05 to 0.9 kg per ha, and in particular from 0.1 to 0.75 kg per ha. An amount of 0.1 to 0.75 kg per ha is equivalent to about 40 to 304 grams/acre. MPEP 2144.05 states: 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Even a slight overlap in range establishes a prima facie case of obviousness. In re Peterson, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003).
Taken together, all this would result in the practice of the method of claim 4 with a reasonable expectation of success.
Regarding claims 7 and 16, Riediger does not explicitly teach compound I or the azoxystrobin is administered after the benzobicyclon is applied. However, Riediger does teach we have found that simultaneous, that is joint or separate, application of a compound I and a compound Il or successive application of a compound I and of compound Il allows better control of harmful fungi than is possible with the individual compounds alone (synergistic mixtures). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to administer the compounds in successive application where the other agents are administered after the benzobicyclon in view of the teachings of Riediger, thus resulting in the practice of the method of claims 7 and 16 with a reasonable expectation of success.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Riediger et al (WO 2019/115343 A1) as applied to claims 1, 2, 4-9, and 12-16 over above, and further in view of Williams et al (J Agric Food Chem, 2016; 64:4838−4844).
Riediger teaches all the limitations of claim 3 (see above 103 rejection), except wherein the effective amount of the benzobicyclon is applied after permanent flood establishment in rice field.
However, Williams teaches according to the manufacturer’s proposed label, BZB (benzobicyclon) is intended for postflood use on rice fields when flow-through water management is practiced (page 4839, left, 2nd paragraph).
It would have been prima facie obvious to apply the benzobicyclon after permanent flood establishment since the prior art teaches manufacturer’s proposed label, BZB (benzobicyclon) is intended for postflood use on rice fields.
Taken together, all this would result in the practice of the method of claim 3 with a reasonable expectation of success.
Conclusion
Claims 1-9 and 12-16 are rejected.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYNA B RODRIGUEZ whose telephone number is (571)272-7088. The examiner can normally be reached 8am-5:00pm ET, Monday - Thursday.
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/Rayna Rodriguez/ Primary Examiner, Art Unit 1628
