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 .
Claim Status
Applicants’ response of September 24, 2026, to the non-final action June 24, 2026, has been entered. Claims 1, 4-8 have been amended, claims 2, 3 and 11-15 have been cancelled, and no claims have been newly added. Accordingly, claims 1 and 4-10 are pending and under current examination.
Withdrawn Claim Rejections - 35 USC §112
Claims 2 and 5 were rejected in the previous Office action mailed June 24, 2026, 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. Applicant has cancelled claim 2 and amended claim 5 to clarify the ratio is a weight ratio. Accordingly, the 112(b) rejection is hereby withdrawn.
Withdrawn Claim Rejections - 35 USC §102
Claims 1, 2, and 4-7 were rejected in the previous Office action mailed June 24, 2026, under 35 U.S.C. 102(a)(2) as being anticipated by Mormile et al. (Pub. No.: WO 2020/021314; Pub. Date: Jan. 30, 2020). Applicant has amended base claim 1 to include the limitation of previous claim 3. The limitations of previous claim 3 were not included in this rejection as they were not obvious over Mormile et al. Accordingly, the 102 type rejection is hereby withdrawn.
Response and Maintained Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Question 1: Do the claim(s) fall into a statutory category of invention?
Yes. Claims 1 and 4-10 remain rejected, in modified form, under 35 U.S.C. 101 because the claimed inventions are directed to a natural phenomenon without significantly more and for reasons of record.
Claim interpretation: Under the broadest reasonable interpretation, the terms of the claim are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. See MPEP 2111.
The claims recite a composition comprising or a fungicidal combination applied to a plant, crop, or part thereof comprising a multi-site fungicide; and salicylic acid, salts or analogues thereof and an agriculturally acceptable excipient wherein the multi-site fungicide is selected from copper, copper sulphate, tribasic copper sulphate, mancozeb, captan, folpet,chlorothalonil, and combinations thereof.
The claimed composition qualifies as a composition of matter. See 35 U.S.C. § 101
Question 2A (prongs 1 and 2): Are the claims directed to a judicial exception that is not integrated into a practical application?
Yes.
With respect to the first prong of Step 2A, whether the claims recites a judicial exception. As explained in MPEP 2106.04(II), a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Salicyclic acid, salts and analogues thereof is derived from willow tree bark (Mormile et al. Pub. No.: WO 2020/021314; Pub. Date: Jan. 30, 2020 page 1 lines 6-10) and copper coper, zinc, sulfur are natural elements and their claimed salts, complexes, and derivatives also occur in nature. The claimed agriculturally acceptable excipient is not limited and includes naturally occurring substances for instance water. As noted the composition and combination are directed to naturally occurring components. Further, the fact that such naturally occurring ingredient may have been formulated into a range and applied to a plant or plant part would not change this outcome (i.e., produce markedly different properties).
Step 2A Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application?
This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. MPEP 2106.04(d)II.
With respect to the second prong of Step 2A, the claims not recite sufficient additional elements that integrate the recited judicial exception (i.e., the product of nature exception(s)) into a practical application, when viewing the additional elements individually and as an ordered combination. The only limitation in addition to the judicial exception would be formulating naturally occurring ingredients into a range and applying the ingredients/compositions to a plant or plant part would not change this outcome (i.e., produce markedly different properties). However, none of these additional limitations would integrate the judicial exception(s) when viewed alone or in combination. For example, merely producing a new formulation by admixing natural ingredients in specific amounts/ratios (even with excipients) was held not to be an integration by the Supreme Court. Funk Brothers recited specific amounts of the bacterial species in the mixture, e.g., claims 6, 7 and 13 … Thus, Appellant’s recitation of a mixture of specific amounts of nature-based products does not support a finding of subject matter eligibility on this record.”). See also Appeal 2017-005470 (13/446,128) (“Appellants' claims are directed to a composition of matter … [comprising a] dosage ratio of Vitamin D3 to 25-0H D3 is from about 6:1 to 1:6; and that a single weekly dosage contains from 7µg to 350 µg each of Vitamin D and 25-0H D3 … However, we cannot structurally distinguish the chemical compositions recited in the claims from those occurring naturally in biological systems. Nor does the fact that Appellants claim different dosage amounts or ratios suffice to add significantly more to the naturally-occurring substances than the administration of the same naturally-occurring substances themselves. Funk Brothers Seed Co. v. Kala Inoculant Co., 333 U.S. 127, 131 (1948) … Consequently, we find that the claims are directed to a judicially created exception to Section 101.”).
With respect to the instant applying step the courts have also identified limitations that did not integrate a judicial exception into a practical application: [1] Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f)
Accordingly, the analysis must continue to step 2B.
Question 2B: Do the claim(s) as a whole recite an inventive concept?
This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. MPEP 2106.05.
No.
In making this Step 2B determination, an evaluation must be performed as to whether there are specific limitations or elements recited in the claim, in addition to the judicial exceptions, that are not well-understood, routine, conventional activity in the field (and not written at a high level of generality) which would be indicative of an inventive concept.
As noted above, the only limitations in addition to the judicial exception would be the use of the multi-site fungicide; salicylic acid, salts or analogues thereof and an agriculturally acceptable excipient as a fungicide in a ratio and dose range by the application to a plant or plant part. However, none of these additional limitations would rise to an inventive concept either (alone or in combination). For example, merely producing a formulation by admixing the salicylic acid and multi-site fungicide in ratios (even with excipients) to be applied would not lead to an inventive concept in view of Funk Brothers wherein “Appellants' claims are directed to a composition of matter … [comprising a] dosage ratio of Vitamin D3 to 25-0H D3 is from about 6:1 to 1:6; and that a single weekly dosage contains from 7 µg to 350 µg each of Vitamin D and 25-0H D3 … However, we cannot structurally distinguish the chemical compositions recited in the claims from those occurring naturally in biological systems. Nor does the fact that Appellants claim different dosage amounts or ratios suffice to add significantly more to the naturally-occurring substances than the administration of the same naturally-occurring substances themselves. Funk Brothers Seed Co. v. Kala Inoculant Co., 333 U.S. 127, 131 (1948) … Consequently, we find that the claims are directed to a judicially created exception to Section 101.”
This position is also consistent with the prior art which indicates the applying various concentrations of the formulation is routine and conventional in the art (Mormile page 6 line 29 through page 7 line 6) .
Conclusion: Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed inventions are directed to a natural phenomenon without significantly more. The claims recite a composition or combination of a fungicide applied to a plant comprising a multi-site fungicide; and salicylic acid, salts or analogues thereof and an agriculturally acceptable excipient wherein the multi-site fungicide is selected from copper, copper sulphate, tribasic copper sulphate, mancozeb, captan, folpet,chlorothalonil, and combinations thereof. Salicyclic acid, salts and analogues thereof is derived from willow tree bark (Mormile et al. Pub. No.: WO 2020/021314; Pub. Date: Jan. 30, 2020 page 1 lines 6-10) and copper coper, zinc, sulfur are natural elements and their claimed salts, complexes, and derivatives also occur in nature. The claimed agriculturally acceptable excipient is not limited and includes naturally occurring substances for instance water. The step of applying various concentrations of the formulation is routine and conventional in the art (Mormile page 6 line 29 through page 7 line 6) and therefore does not amount to significantly more than the judicial exception.
Response to arguments:
To the extent that Applicants’ arguments are pertinent to the standing rejection of the claims , they are addressed as follows:
Applicants traverse the rejection for at least claim 8-10, arguing the application of the composition is simply form than an abstract idea. The claims specially require applying a composition to certain plants, crops, or parts thereof having a fungal infestation.
Applicant’s argument has been fully considered but not found persuasive. The instant rejection is based upon a natural product and not an abstract idea. With respect to Applicant’s argument that the claim requires applying the composition to certain plants, crops, or parts thereof having a fungal infestation this is not persuasive because the claim recites applying to a plant, crop or part thereof of the fungicidally effective composition. Nowhere does the claim limit the application to a plant, crop or part thereof with a fungal infestation. However, if Applicant were to specially amend the claim to the application to a plant, crop, or a prat thereof with a fungal infection this would weigh in favor of the significantly more than the judicial exception for claims 8-10.
Thus, the rejection is maintained for reasons of record and foregoing discussion.
Response and Maintained 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.
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.
Claims 1 and 4-10 remain rejected under 35 U.S.C. 103 as being unpatentable over Mormile et al. (Pub. No.: WO 2020/021314; Pub. Date: Jan. 30, 2020) as evidenced by Merriam-Webster (“control” https://www.merriam-webster.com/dictionary/control 2026) and Fungicides (National Pesticide Information Center. https://npic.orst.edu/ingred/ptype/fungicide.html. Jan. 6, 2026) for reasons of record
Regarding claims 1 and 4-7 Mormile discloses a fungicidal composition comprising a suspension of copper salicylate (abstract) wherein the components of the fungicidal composition comprise salicylic acid 22.51% w/w, a copper compound 16.89 % w/w (corresponding to 10.3% of Cu meta) and 50.66 or 48.71 %w/w water (page 8 and 9 Tables 1 and 2), wherein the copper compound is preferably selected from copper sulfate ( page 3 lines 26-30). The % w/w of salicyclic acid to copper hydroxide are found within the instantly claimed weight ratio range of about 1:100 to 100:1.
Pursuant to MPEP 2131.03
I. A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE
“[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In rePetering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original) (Claims to titanium (Ti) alloy with 0.6-0.9% nickel (Ni) and 0.2-0.4% molybdenum (Mo) were held anticipated by a graph in a Russian article on Ti-Mo-Ni alloys because the graph contained an actual data point corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni and this composition was within the claimed range of compositions.). “If the prior art discloses a point within the claimed range, the prior art anticipates the claim.” UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Regarding claims 8-10, Mormile discloses the fungicidal composition applied to plants such as leaves, stems, and branches. (page 6 lines 26-30), wherein the quality to be applied to obtain the desired effect can be varied depending on factors such as climate, crop, characteristics of the soil, method of application with the overall dose ranging from 0.51 to 121 per hectare of agricultural crop generally provide a sufficient activity (page 7 lines 1-7), wherein the components of the fungicidal composition comprise salicylic acid 22.51% w/w, a copper compound 16.89 % w/w (corresponding to 10.3% of Cu meta) and 50.66 or 48.71 %w/w water (page 8 and 9 Tables 1 and 2) Accordingly, the 0.51 to 121 dose (measured in w/w) would overlap the instantly claimed ranges of 0.1 g ai/ha to about 2000 g/ai/ha. Additionally, the rate of application is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient needed to achieve the desired results depending on factors such as climate, crop, characteristics of the soil, in the method of providing sufficient activity to be an effective fungicide (Mormile page 7 lines 1-7). Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of the application rate would have been obvious at the time of applicant's invention in view of the teachings of Mormile. It is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33; In re Russell, 169 USPQ 426. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”)
With regard with the “controlling fungal disease in a plant or crop or part thereof”, the specification al filled does not provide a definition of control or controlling. The Merriam-Webster dictionary defines control as “to the exercise of restraint, direction, or influence over” and to “reduce the incidence or severity of especially to innocuous levels”. The definition of fungicides are pesticides that kill or prevent the growth of fungi and their spores, that can be used to control the fungi that damages plants as evidenced by (National Pesticide Information Center). Accordingly, the application of the fungicidal compound/composition to a plant or part thereof as disclosed by Mormile as fully set forth above would act to control fungal disease in a plant or crop or part thereof.
It would have been prima facie obvious to one of ordinary skill in the art at the time of invention to combine salicylic acid 22.51% w/w, a copper compound 16.89 % w/w (corresponding to 10.3% of Cu meta) and 50.66 or 48.71 %w/w water (page 8 and 9 Tables 1 and 2), wherein the copper compound is preferably selected from copper sulfate ( page 3 lines 26-30) to be applied to a plant or part thereof to in sufficient dose to act as a fungicidal composition (page 6 lines 26-30), as disclosed by Mormile, as instantly claimed, with a reasonable expectation of success at the time of filing as a matter of design choice. Said design choice amounting to combining prior art elements according to known methods to yield predictable results. On of ordinary skill in the art would be motivated to do so and have a reasonable expectation of success because Mormile had already disclosed an a fungicide comprising the combination of multi-site fungicide and salicylic acid. It would have only required routine experimentation to modify the composition of Mormile for an effective fungicide wherein the multi-site fungicide is copper sulfate found in combination with salicylic acid as required by the claimed invention.
Therefore, the claimed invention would have been prima facie obvious to one of ordinary skill in the art the time of the invention.
Response to arguments:
To the extent that Applicants’ arguments are pertinent to the standing rejection of the claims, they are addressed as follows:
Applicants traverse the rejection arguing unexpected result of the instantly claimed fungicides when used in combination with salicylic acid, salts, or analogues thereof in the form of synergistic efficacy against numerous fungal pathogens and diseases. For example a composition comprising tribasic copper sulphate applied at a rate of 150 g/HA and salicylic acid applied at a rate of 20 g/HA to treat early blight disease causing Alternaria solani exhibited an observed efficacy of 88.4%, more than double its expected efficacy Even greater synergy was observed for a composition comprising tribasic copper sulphate applied at a rate of 5.2 g/HA and potassium salicylate applied at a rate of 0.89 g/HA to treat downy mildew, which exhibited an observed efficacy of 59%, nearly for times greater than its expected efficacy.
Applicant’s argument has been fully considered but not found persuasive. Pursuant to MPEP 716.02(d) unexpected results must be commensurate in scope with the claimed invention.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
The Examples found in the specification disclose specific combinations of salicylic acid or a specific salt thereof with a specific multi-site fungicide in specific amounts of each applied at a very specific rate to a very specific plant. The instant claims are much broader than the examples used in the specification. For example claim 1 or 8 do not recite the specific combination of salicylic acid or salt with the specific multi-site fungicide found in the examples, nor does it include the specific amounts, the rate of delivery, the specific plant, or the species of fungi. The scope of the claims are much broader than the scope of the unexpected results found in the Tables of the specification.
Thus, the rejection is maintained for reasons of record and foregoing discussion.
In order to advance prosecution the Examiner suggests that Applicant may want to narrow the claims to be commensurate in scope with the results recited in the specification.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA R FALKOWITZ whose telephone number is (571)270-3386. The examiner can normally be reached Monday - Friday 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Zachariah Lucas can be reached at (571) 272-0905. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
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