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 .
Information Disclosure Statement
The information disclosure statement (IDS) filed December 2, 2024 was in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the IDS document was considered and a signed copy of the 1449 form is attached.
Priority
The instant application is a 35 USC 371 National Stage Application of international application PCT/IL2023/050558, which claims priority under 35 USC 119(a)-(d) from Indian Application IN202211031741, filed June 2, 2022.
Status of Claims
Currently, claims 1-15 are pending in the instant application and under consideration herein.
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.
Claim(s) 1-2, 5 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2022/053325 (“the ‘325 publication”).
The ‘325 publication teaches a method of protecting cucumbers against root knot nematodes by applying fluensulfone at the time of planting (see Example 2). Note that the units for the application rate in the prior art example are given in liters/ha, which implicitly requires a liquid formulation as required by claim 5. Further, since cucumber is an annual plant, the prior art reads on the required limitations of instant claim 10. Since the prior art teaches all required features of the instant claims, the claims are anticipated.
Claim(s) 1 and 5-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by International Patent Document No. WO. 2019/239358 (“the ‘358 publication”).
The ‘358 publication discloses a method of protecting sugarcane against nematodes (Meloidogyne javanica) by applying fluensulfone at the time of planting (see “Method” on p. 57). The prior art teaches that fluensulfone is applied as an emulsifiable concentrate at a concentration of 480 g/L (see “Materials”), which corresponds to the required limitations of instant claims 5-7. Finally, fluensulfone is applied at many anticipatory application rates, but specifically 1000 mL/ha, for example (Table 5), which reads on the required limitations of claims 8-9. Since the prior art teaches all required features of the instant claims, the claims are anticipated.
Claim(s) 1-4 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0139918 (“the ‘918 publication”).
The ‘918 publication discloses a method of protecting sugar beets against nematodes by applying fluensulfone (“Nimitz”) at the time of planting (see example 6). The prior art further describes where treatments 2-9 and 11 (which includes Nimitz application) are repeated 14 days subsequent to the initial application. Since the prior art teaches all required features of the instant claims, the claims are anticipated.
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 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 nonobviousness.
Claims 1 and 5-15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/239358 in view of CN 111011385.
The rejected claims are drawn to a method of protecting a plant against a nematode attack, comprising application of fluensulfone to the soil or growth medium at the time of planting/transplanting or later. Dependent claims require further limitations on the plant being treated as well as the application rate.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
The ‘358 publication discloses a method of protecting sugarcane against nematodes (Meloidogyne javanica) by applying fluensulfone at the time of planting (see “Method” on p. 57). The prior art teaches that fluensulfone is applied as an emulsifiable concentrate at a concentration of 480 g/L (see “Materials”), which corresponds to the required limitations of instant claims 5-7. Finally, fluensulfone is applied at many anticipatory application rates, but specifically 1000 mL/ha, for example (Table 5), which reads on the required limitations of claims 8-9. Notably, with respect to the total application rate referenced in claims 14-15, the application of fluensulfone at 1000 mL/ha reads on a total application rate of 480 g ai/ha.Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The difference between the ‘358 publication and the instant claims is that the primary reference does not teach the protection of tomato plants nor the particular requirements of .
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2141.02)
To this end, MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at ___, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention." Further, MPEP 2144.06 states that it is obvious to substitute art-recognized equivalents which are known for the same purpose.
In the present case, it would have at least been obvious to try using fluensulfone for the protection of tomato plants against nematode attack. To this end, the ‘385 publication teaches the application of fluensulfone) to the growth medium of tomato plants to protect against tomato root knot nematodes (see Embodiment 3.1 “Control effect on tomato root knot nematode”). The prior art documents are at least reasonably pertinent to one another for being directed to treatment of nematodes with the same active ingredient. It would have been obvious to use a known formulation of fluensulfone (the liquid formulation specifically prepared in the ‘358 publication) to also treat tomato plants. There would have been at least a reasonable expectation of success, given the successful protection of tomato plants using the same active ingredient in the ‘385 publication. Also lending to the reasonable expectation of success, the primary reference describes that the formulation therein is not meant to treat only sugar cane but also lists “vegetables such as…tomatoes” as plants to be treated therein. Therefore, the claimed invention would have been prima facie obvious to the person of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA L. OTTON whose telephone number is (571)270-8683. The examiner can normally be reached Monday - Friday, 8 am - 4 pm EST.
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/ALICIA L OTTON/Primary Examiner, Art Unit 1699
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