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 .
DETAILED ACTION
Priority and Status of the Claims
1. This application is a 371 of PCT/EP2022/0628845 05/11/2022.
2. Claims 1-18 and 20 are pending in the application.
Claim Rejections - 35 USC § 112
3. 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.
Claim 1-18 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112,
first paragraph (pre-AIA ), because the specification does not reasonably provide
enablement of the instant “dithiocarbamate fungicide”, “strobilurin”, “pyrazole-
carboxamide fungicide”, “benzoylurea insecticide”, “neonicotinoid insecticide”,
“pyrethroid insecticide”, “phenoxy herbicide”, “pyrimidinedione herbicide”, “sulfonylurea
herbicide“, “cyclohexanedione herbicide “, and “benzoic acid herbicide” without
limitation (i.e., no named compounds). The specification does not enable any person
skilled in the art to which it pertains, or with which it is most nearly connected, to make
the invention commensurate in scope with the claim.
ln In re Wands, 8 USPQ2d 1400 (1988), factors to be considered in determining
whether a disclosure meets the enablement requirement of 35 U.S.C. 112, first
paragraph, have been described. They are:
1. the nature of the invention,
2. the state of the prior art,
3. the predictability or Iack thereof in the art,
4. the amount of direction or guidance present,
5. the presence or absence of working examples,
6. the breadth of the claims,
7. the quantity of experimentation needed, and
8. the level of the skill in the art.
In the instant case:
The nature of the invention
The nature of the invention is a composition comprising “dithiocarbamate fungicide”, “strobilurin”, “pyrazole-carboxamide fungicide”, “benzoylurea insecticide”, “neonicotinoid insecticide”, “pyrethroid insecticide”, “phenoxy herbicide”,
“pyrimidinedione herbicide”, “sulfonylurea herbicide“, “cyclohexanedione herbicide “, and “benzoic acid herbicide” without limitation (i.e., no named compounds), see claims 1-2, 7-16 and 20.
The state of the prior art and the predictability or Iack thereof in the art
The state of the prior art is Blasco et al. US 2008/0200334 A1, it discloses a number of fungicide including maneb, metam, metriram, and captan, see column 8.
The amount of direction or guidance present and the presence or absence of working examples
The only direction or guidance present in the instant specification is the exemplified a number of “dithiocarbamate fungicide”, “strobilurin”, “pyrazole-carboxamide fungicide”, “benzoylurea insecticide”, “neonicotinoid insecticide”, “pyrethroid insecticide”, “phenoxy herbicide”, “pyrimidinedione herbicide”, “sulfonylurea herbicide “, “cyclohexanedione herbicide “, and “benzoic acid herbicide” on pages 6-10 of the specification. There are no working examples present for “dithiocarbamate fungicide”, “strobilurin”, “pyrazole-carboxamide fungicide”, “benzoylurea insecticide”, “neonicotinoid insecticide”, “pyrethroid insecticide”, “phenoxy herbicide”,
“pyrimidinedione herbicide”, “sulfonylurea herbicide“, “cyclohexanedione herbicide “, and “benzoic acid herbicide” without limitation (i.e., no named compounds) found in the specification.
The breadth of the claims
The breadth of the claims is the instant “dithiocarbamate fungicide”, “strobilurin”, “pyrazole-carboxamide fungicide”, “benzoylurea insecticide”, “neonicotinoid insecticide”, “pyrethroid insecticide”, “phenoxy herbicide”,“pyrimidinedione herbicide”, “sulfonylurea herbicide“, “cyclohexanedione herbicide “, and “benzoic acid herbicide” without limitation (i.e., no named compounds).
The quantity of experimentation needed
The quantity of experimentation needed is undue experimentation. One of skill in
the art would need to determine what “dithiocarbamate fungicide”, “strobilurin”, “pyrazole-carboxamide fungicide”, “benzoylurea insecticide”, “neonicotinoid insecticide”, “pyrethroid insecticide”, “phenoxy herbicide”,“pyrimidinedione herbicide”, “sulfonylurea herbicide“, “cyclohexanedione herbicide “, and “benzoic acid herbicide” without limitation (i.e., no named compounds) would be prepared by the instant claim 1, if any.
The Ievel of the skill in the art
The Ievel of skill in the art is high. However, due to the unpredictability in the pharmaceutical art, it is noted that each embodiment of the invention is required to be individually assessed for physical characteristics to determine which “dithiocarbamate fungicide”, “strobilurin”, “pyrazole-carboxamide fungicide”, “benzoylurea insecticide”, “neonicotinoid insecticide”, “pyrethroid insecticide”, “phenoxy herbicide”, “pyrimidinedione herbicide”, “sulfonylurea herbicide“, “cyclohexanedione herbicide “, and “benzoic acid herbicide” are prepared. Thus, the specification fails to provide sufficient support of the broad scope of the compounds of the instant claims for the “dithiocarbamate fungicide”, “strobilurin”, “pyrazole-carboxamide fungicide”, “benzoylurea insecticide”, “neonicotinoid insecticide”, “pyrethroid insecticide”, “phenoxy herbicide”,“pyrimidinedione herbicide”, “sulfonylurea herbicide“, “cyclohexanedione herbicide “, and “benzoic acid herbicide”
As a result necessitating one of skill to perform an exhaustive search for which “lipid-lowing drug”, can be prepared of the instant claims in order to practice the claimed invention. Thus, factors such as "sufficient working examples", "the level of skill in the art" and "predictability", etc. have been demonstrated to be sufficiently lacking in the instantly claimed compounds. In view of the breadth of the claim, the chemical nature of the invention, and the lack of working examples regarding the activity of the claimed compositions/compounds in regards to the “lipid-lowing drug” without limitation, one having ordinary skill in the art would have to undergo an undue amount of experimentation to use the invention commensurate in scope with the claims.
Genentech lnc. v. Novo Nordisk A/S (CA FC) 42 USPQ2d 1001, states that “ a
patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion'' and ''patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable''.
Therefore, in view of the Wands factors and ln re Fisher (CCPA 1970) discussed above, to practice the claimed invention herein, a person of skill in the art would have to engage in undue experimentation, with no assurance of success. This rejection can be overcome by incorporation of the “dithiocarbamate fungicide”, “strobilurin”, “pyrazole-carboxamide fungicide”, “benzoylurea insecticide”, “neonicotinoid insecticide”, “pyrethroid insecticide”, “phenoxy herbicide”,“pyrimidinedione herbicide”, “sulfonylurea herbicide“, “cyclohexanedione herbicide “, and “benzoic acid herbicide” (i.e., claims 2, and 7-16) supported by specification into claims 1 and 20 respectively would obviate the rejection.
4. 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 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.
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103(a) 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims under 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 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-18 are rejected under 35 U.S.C. 103(a) as being obvious over Blasco et al. US 2008/0200334 A1.
Applicants claim an agricultural tank-mix composition, comprising: a) an agricultural active composition comprising at least two pesticides selected from dithiocarbamate fungicide, chlorothalonil, glyphosate, flumioxazine, strobilurin fungicide, pyrazole-carboxamide fungicide, benzoylurea insecticide, neonicotinoid insecticide, pyrethroid insecticide, phenoxy herbicide, pyrimidinedione herbicide, sulfonylurea herbicide, cyclohexanediones herbicide and benzoic acid herbicide, and b) a compatibilizer selected from a composition comprising a copolymer comprising units of diisobutylene and methacrylic anhydride or methacrylic acid and C10-C16 alkyl ether sulfate salt, wherein the copolymer is present in an amount of ranging from 0.1 to 5 wt.%, based on a total weight of the agricultural tank-mix composition, see claim1.
Dependent claims 2-18 further limit the scope of compounds, i.e., specific compound of fungicides, insecticides and herbicides, copolymer, and their specific amounts.
Determination of the scope and content of the prior art (MPEP §2141.01)
Blasco et al. ‘334 disclose an agriculture composition comprising maneb, metam, metriram, and captan, and copolymer polymethacrylate or polybutenes, see columns 4 and 8.
Determination of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and Blasco et al. ‘334 is that the instant claims are embraced within the scope of Blasco et al. ‘334. It is noted that the instant claims are silent the scope of fungicide, insecticides and herbicides.
Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claims 1-18 prima facie obvious because one would be motivated to employ compounds/ compositions of Blasco et al. ‘334 to obtain instant invention.
The motivation to make the claimed compounds/composition derived from the known compounds/compositions of Blasco et al. ‘334 would possess similar activity to that which is claimed in the reference.
Conclusion
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
August 13, 2026
