DETAILED ACTION
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 the Claims
Claims 1-9 are pending in the present application.
The examiner recommends amending claim 1, ln. 9 to insert “c)” immediately prior to “at least another”.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 25 May 2025 were filed before the mailing of an Office action. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Numerous documents in the IDSs have been lined through or X out because they are duplicates of documents listed on another IDS, or they do not contain document citations.
Claim Objections
Claims 1 and 4 are objected to because of the following informalities: claim 1, ln. 15, the term propiconazole should not be capitalized; and claim 4, ln. 2, the term soluble should not be capitalized. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 4-7 and 9 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.
Regarding claim 4, the phrase “liquid” in parenthesis renders the claim indefinite because it is unclear whether the limitation in the parenthesis is part of the claimed invention or an example.
Claim 5 recites “the combination may be formed by admixing in a ratio…”. It is unclear whether the limitations following “may be” are optional or required, as the term indicates that the admixing in a ratio is merely an optional limitation.
Claim 6 depends from claim 5 and does not clarify whether the ratio is a required limitation.
Claim 7 recites the limitation "the plant" in line 1. There is insufficient antecedent basis for this limitation in the claim. The examiner recommends Applicant amend claim 7 to insert “in a plant” after “disease”.
Claim 9 recites “the agrochemical active may be selected from…”. It is unclear whether the limitations following “may be” are optional or required, as the term indicates that the types of agrochemical actives listed are merely optional.
Also regarding claim 9, the phrase "and the like" renders the claim indefinite because the claim include elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 is drawn to the combination… wherein the composition is used for foliar application, or applications to plant propagation materials. The recitation of how the composition is used is an intended use for the composition, and the claim does not present additional structural limitations for the compositions previously claimed. Therefore, the claims does not specify a further limitation of the subject matter claimed. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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 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 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Oliveira et al. (US 2016/0360751 A1).
Regarding claims 1-2 and 8, Oliveira et al. teach an improved method of treating soybean rust infection in a host leguminous plant, wherein the improvement comprises treating the plant at the locus of the infection with a dithiocarbamate fungicide, and concurrently, prior or subsequently to the dithiocarbamate fungicide, with at least another fungicide selected from a demethylation inhibitor (i.e., an ergosterol biosynthesis inhibitor fungicide), quinone outside inhibitor, succinate dehydrogenase inhibitor, quinone inside inhibitor or combinations thereof ([0033]). In another aspect, their invention provides a fungicidal combination for treating soybean rust infection in a host leguminous plant, wherein the combination comprises a first dithiocarbamate fungicide, and at least a second fungicide selected from a demethylation inhibitor, quinone outside inhibitor, succinate dehydrogenase inhibitor, quinone inside inhibitor or combinations thereof ([0034]). In another aspect, their invention provides the use of a dithiocarbamate fungicide as a synergist to improve disease control in a host plant infected by soybean rust when applied subsequently, prior or concurrently to at least another fungicide selected from a demethylation inhibitor, quinone outside inhibitor, succinate dehydrogenase inhibitor, quinone inside inhibitor or combinations thereof ([0035]).
Oliveira et al. teach a method for treating soybean rust in a host leguminous plant, wherein the method comprises treating the plant at the locus of the infection with at least one multi-site contact fungicide; and concurrently, prior or subsequently to the multi-site contact fungicide, with at least one systemic fungicide ([0037]). They found that a combination of a multi-site contact fungicide, preferably a dithiocarbamate fungicide, along with a systemic fungicide selected from at least one Qo inhibitor (Quinone outside inhibitors), at least one Qi (quinone inside) inhibitor, at least one DM inhibitor (demethylation inhibitor) or at least one SDH inhibitor (succinate dehydrogenase inhibitors) leads to an unexpected and surprisingly good control of soybean rust ([0077]). Surprisingly, they found that dithiocarbamates, preferably mancozeb or combinations thereof with chlorothalonil, acts as a synergist to improve disease control and plant health of a host legume plant infected with soybean rust when applied concurrently or subsequently to at least two fungicides selected from Qo inhibitors (Quinone outside inhibitors), DM inhibitors (demethylation inhibitor), SDH Inhibitors (succinate dehydrogenase inhibitors), Qi inhibitors (Quinone inside inhibitors) or combinations thereof ([0078]).
Oliveira et al. teach that the multi-site contact fungicides of their invention inhibit fungal growth through multiple sites of action and have contact and preventive activity. In an embodiment, the multi-site contact fungicide may be selected from copper fungicides, sulfur fungicides, dithiocarbamate fungicides, phthalimide fungicides, chloronitrile fungicides, sulfamide fungicides, guanidine fungicides, triazines fungicides and quinone fungicides ([0038]). The chloronitrile fungicide of their invention comprises an aromatic ring substituted with chloro- and cyano-substituents and is preferably chlorothalonil ([0039], [0086], [0091], [0093], [1014]]).
Oliveira et al. teach that in another embodiment, the systemic fungicide of their invention is a succinate dehydrogenase inhibitor fungicide (SDHI). Preferably, the succinate dehydrogenase inhibitor is selected from the group consisting of benodanil, flutolanil, mepronil, fluopyram, fenfuram, carboxin, oxycarboxin, thifluzamide, bixafen, fluxapyroxad, furametpyr, isopyrazam, penflufen, penthiopyrad, sedaxane and boscalid ([0075]).
In an embodiment, the preferred DM inhibitor is preferably a conazole fungicide selected from the group consisting of climbazole, clotrimazole, imazalil, oxpoconazole, prochloraz, prochloraz-manganese, triflumizole, azaconazole, bitertanol, bromuconazole, cyproconazole, diclobutrazol, difenoconazole, diniconazole, diniconazole-M, epoxiconazole, etaconazole, fenbuconazole, fluotrimazole, fluquinconazole, flusilazole, flutriafol, furconazole, furconazole-cis, hexaconazole, imibenconazole, ipconazole, metconazole, myclobutanil, penconazole, propiconazole, prothioconazole, quinconazole, simeconazole, tebuconazole, tetraconazole, triadimefon, triadimenol, triticonazole, uniconazole, perfurazoate and uniconazole-P ([0056]).
In another embodiment, the preferred DM inhibitor is preferably selected from triflumizole, triforine, pyridinitrile, pyrifenox, fenarimol, nuarimol and triarimol ([0057]).
In an embodiment, the systemic fungicide is preferably a quinone outside inhibitor (QoI). In this embodiment, the quinone outside inhibitor is selected from an imidazolinone fungicide, an oxazolidinedione fungicide or a strobilurin fungicide ([0048]).
Thus, their invention provides a method for treating soybean rust in a host leguminous plant, wherein the method comprises treating the plant at the locus of the infection with at least one dithiocarbamate fungicide selected from amobam, asomate, azithiram, carbamorph, cufraneb, cuprobam, disulfiram, ferbam, metam, nabam, tecoram, thiram, urbacide, ziram, dazomet, etem, milneb, mancopper, mancozeb, maneb, metiram, polycarbamate, propineb and zineb, or combinations thereof with chlorothalonil; and concurrently, prior or subsequently to the dithiocarbamate fungicide, with at least one quinone outside inhibitor ([0049]).
In one embodiment, the imidazolinone fungicide is fenamidone ([0051]).
In another embodiment, the oxazolidinedione fungicide is famoxadone ([0052]).
In another embodiment, the strobilurin fungicide is selected from the group consisting of azoxystrobin, mandestrobin, coumoxystrobin, enoxastrobin, flufenoxystrobin, pyraoxystrobin, dimoxystrobin, enestrobin, fluoxastrobin, kresoxim-methyl, metominostrobin, orysastrobin, picoxystrobin, pyrametostrobin, triclopyricarb, fenaminstrobin, pyraclostrobin and trifloxystrobin ([0053]).
Oliveira et al. teach a fungicidal combination comprising: (i) a multi-site contact fungicide selected from (a) a dithiocarbamate fungicide selected from amobam, asomate, azithiram, carbamorph, cufraneb, cuprobam, disulfiram, ferbam, metam, nabam, tecoram, thiram, urbacide, ziram, dazomet, etem, milineb, mancopper, mancozeb, maneb, metiram, polycarbamate, propineb and zineb; or (b) a chloronitrile fungicide, which is chlorothalonil and combinations thereof; (ii) a first systemic fungicide selected from a quinone outside inhibitor, a quinone inside inhibitor, demethylation inhibitor and succinate dehydrogenase inhibitor; and (iii) a second systemic fungicide selected from a quinone outside inhibitor, a quinone inside inhibitor, demethylation inhibitor and succinate dehydrogenase inhibitor ([0092]-[0095]).
Oliveira et al. teach that their invention provides a fungicidal combination comprising mancozeb or chlorothalonil or combinations thereof, at least one strobilurin fungicide selected from trifloxystrobin, picoxystrobin, azoxystrobin or pyraclostrobin and at least one conazole fungicide selected from prothioconazole, tebuconazole, cyproconazole, epoxiconazole, metconazole and tebuconazole ([0111]).
In one embodiment, the preferred strobilurin is trifloxystrobin and the preferred conazole is prothioconazole. Thus, in this embodiment, their invention provides a fungicidal combination comprising mancozeb or chlorothalonil; trifloxystrobin and prothioconazole ([0112]).
In one embodiment, the preferred strobilurin is picoxystrobin and the preferred conazole is tebuconazole. Thus, in this embodiment, their invention provides a fungicidal combination comprising mancozeb or chlorothalonil; picoxystrobin and tebuconazole ([0113]).
In one embodiment, the preferred strobilurin is picoxystrobin and the preferred conazole is cyproconazole. Thus, in this embodiment, their invention provides a fungicidal combination comprising mancozeb or chlorothalonil; picoxystrobin and cyproconazole ([0114]).
In one embodiment, the preferred strobilurin is azoxystrobin and the preferred conazole is cyproconazole. Thus, in this embodiment, their invention provides a fungicidal combination comprising mancozeb or chlorothalonil; azoxystrobin and cyproconazole ([0115]).
In one embodiment, the preferred strobilurin is pyraclostrobin and the preferred conazole is epoxiconazole. Thus, in this embodiment, their invention provides a fungicidal combination comprising mancozeb or chlorothalonil; pyraclostrobin and epoxiconazole ([0116]).
In one embodiment, the preferred strobilurin is pyraclostrobin and the preferred conazole is tebuconazole. Thus, in this embodiment, their invention provides a fungicidal combination comprising mancozeb or chlorothalonil; pyraclostrobin and tebuconazole ([0117]).
In one embodiment, the preferred strobilurin is pyraclostrobin and the preferred conazole is metconazole. Thus, in this embodiment, their invention provides a fungicidal combination comprising mancozeb or chlorothalonil; pyraclostrobin and metconazole ([0118]).
In another embodiment, the preferred strobilurin is trifloxystrobin and the preferred conazole is selected from cyproconazole, propiconazole or tebuconazole. Thus, in this embodiment, their invention provides a fungicidal combination comprising mancozeb or chlorothalonil; trifloxystrobin and at least one compound selected from cyproconazole, propiconazole or tebuconazole ([0119]).
Oliveira et al. do not explicitly disclose a combination comprising at least one succinate dehydrogenase inhibitor fungicide, at least one multi-site fungicide, and at least one other fungicide selected from ergosterol biosynthesis inhibitor fungicides and quinone outside inhibitor fungicides, as instantly claimed. However, Oliveira et al. teach a fungicidal combination comprising: (i) a multi-site contact fungicide selected from (a) a dithiocarbamate fungicide; or (b) a chloronitrile fungicide, which is chlorothalonil and combinations thereof; (ii) a first systemic fungicide selected from a quinone outside inhibitor, a quinone inside inhibitor, demethylation inhibitor and succinate dehydrogenase inhibitor; and (iii) a second systemic fungicide selected from a quinone outside inhibitor, a quinone inside inhibitor, demethylation inhibitor and succinate dehydrogenase inhibitor ([0092]-[0095]).
It would have been prima facie obvious for a person having ordinary skill in the art prior to the effective filing date of the instant claims to prepare the antifungal compositions according to Oliveira et al. comprising chlorothalonil, at least one succinate dehydrogenase inhibitor (e.g., fluxapyroxad, isopyrazam and/or penthiopyrad), and at least one of a demethylation inhibitor (e.g., oxpoconazole, prochloraz, triflumizole, azaconazole, bitertanol, bromuconazole, cyproconazole, difenoconazole, diniconazole, epoxiconazole, etaconazole, fenbuconazole, fluquinconazole, flusilazole, flutriafol, hexaconazole, imibenconazole, ipconazole, metconazole, myclobutanil, penconazole, propiconazole, prothioconazole, simeconazole, tebuconazole, tetraconazole, triadimefon, triadimenol, triticonazole, and perfurazoate), and a quinone outside inhibitor (e.g., fenamidone, famoxadone, azoxystrobin, mandestrobin, coumoxystrobin, enoxastrobin, flufenoxystrobin, pyraoxystrobin, fluoxastrobin, kresoxim-methyl, metominostrobin, picoxystrobin, pyrametostrobin, triclopyricarb, fenaminstrobin, pyraclostrobin and trifloxystrobin). Such would have been obvious because Oliveira et al. teach combinations of fungicides, wherein the combinations preferably include chlorothalonil in combination with at least one first systemic fungicide and at least one second systemic fungicide, wherein the first and second systemic fungicides include succinate dehydrogenase inhibitors, demethylation inhibitors (including ergosterol biosynthesis inhibitors) and quinone outside inhibitors.
A person having ordinary skill in the art would have a reasonable expectation of success in combining the fungicides because Oliveira et al. specifically teach a fungicidal combination comprising mancozeb or chlorothalonil or combinations thereof, at least one strobilurin fungicide selected from trifloxystrobin, picoxystrobin, azoxystrobin or pyraclostrobin and at least one conazole fungicide selected from prothioconazole, tebuconazole, cyproconazole, epoxiconazole, metconazole and tebuconazole; and they also teach that the fungicidal combinations may further comprise a succinate dehydrogenase inhibitor selected from fluxapyroxad, isopyrazam and penthiopyrad. See paragraphs [0092]-[0120]. Oliveira et al. found that the addition of a dithiocarbamate fungicide to at least a demethylation inhibitor or a quinone outside inhibitor or a quinone inside inhibitor or a succinate dehydrogenase inhibitor or combinations thereof greatly increased the activity of the systemic fungicides over the expected disease control and expected yield ([0120]).
Regarding claim 3, Oliveira et al. teach that the composition may also comprise agriculturally acceptable excipients ([0127]).
Regarding claim 4, Oliveira et al. teach that the compositions may be pre-formulated and may be in the form of granules, wettable powders, suspension concentrates, etc. ([0125]).
Regarding claims 6-7, Oliveira et al. teach treating the plant at the locus of infection ([0033], [0037], [0041], [0044], etc.). They teach that the contact protective dithiocarbamate fungicide component of the combination effectively penetrates the dense plant foliage, while the systemic fungicide component effectively prevents the rust pathogen from infecting the remaining portion of the plant effectively reducing the susceptibility of the plant towards the infection. This synergistic complementation was not seen when either the foliar protective fungicide or the systemic fungicide were individually used in isolation, but was observed when the two fungicides were used in conjunction. This synergistic complementation between the contact preventive dithiocarbamate fungicide and a systemic fungicide for the treatment and control of Phakopsora species of fungicides was unexpected and surprising ([0036]).
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tobler et al. (US 2014/0024532 A1).
Regarding claims 1-2 and 8, Tobler et al. teach antifungal compositions comprising (A) a compound of formula I, and (B) at least one compound having fungicidal activity (Abstract). Tobler et al. teach compound A-1.1 (i.e., benzovindiflupyr) ([0063]), and compounds according to (B) include chlorothalonil (142) (i.e., a multi-site contact fungicide), succinate dehydrogenase inhibitors including penthiopyrad, ergosterol biosynthesis inhibitors including triflumizole (834), oxpoconazole (607), azaconazole (40), bromuconazole (96), cyproconazole (207), difenoconazole (247), prothioconazole (685), etc., and quinone outside inhibitors including fenamidone (325), azoxystrobin (47), dimoxystrobin (226), fluoxastrobin (382), kresoxim-methyl (485), etc. ([0014], [0070]-[0073], [0097]-[0107], [0118]-[0123]; Claims 1-16). Tobler et al. teach that the compositions may also comprise more than one of the active components (B), if, for example, a broadening of the spectrum of phytopathogenic disease control is desired. For instance, it may be advantageous in the agricultural practice to combine two or three components (B) with component (A) ([0131]).
Tobler et al. also teach the combination of active ingredients including the compound A-1.1 (i.e., benzovindiflupyr), chlorothalonil, and a compound selected from the group P, such as a strobilurin or an azole fungicide ([0100]-[0116], [0133]-[0135]). Tobler et al. specifically teach compositions comprising the combination of compound A-1.1 (i.e., benzovindiflupyr) and chlorothalonil (Tables B3.8 and B6.14).
It would have been prima facie obvious for a person having ordinary skill in the art prior to the effective filing date of the instant claims to prepare the antifungal compositions according to Tobler et al. comprising compound A-1.1 (i.e., benzovindiflupyr), chlorothalonil, and a second systemic fungicide selected from the group consisting of an ergosterol biosynthesis inhibitor and a quinone outside inhibitor because Tobler et al. teach compositions comprising compound A-1.1 (i.e., benzovindiflupyr), chlorothalonil, and a compound selected from the group P , and further states that a composition may comprise more than one of the active components (B), if, for example, a broadening of the spectrum of phytopathogenic disease control is desired. It may be advantageous in the agricultural practice to combine two or three components (B) with component (A) ([0131]). Tobler et al. also specifically teach that preferred combinations include compound A-1.1 (i.e., benzovindiflupyr), chlorothalonil and fungicides belonging to ergosterol biosynthesis inhibitors and quinone outside inhibitors.
A person having ordinary skill in the art would have a reasonable expectation of success in combining the fungicides because Tobler et al. specifically teach that a composition may comprise more than one of the active components (B), if, for example, a broadening of the spectrum of phytopathogenic disease control is desired.
Regarding claims 2 and 8, Tobler et al. teach that the compositions may also comprise more than one of the active components (B), if, for example, a broadening of the spectrum of phytopathogenic disease control is desired. For instance, it may be advantageous in the agricultural practice to combine two or three components (B) with component (A) ([0131]).
Therefore, a person having ordinary skill in the art would have been motivated to prepare a fungicidal composition comprising component (A) and more than one active component (B), including two, three or more active components (B). A person having ordinary skill in the art would have been motivated to include additional active components (B) if a broadening of the spectrum of phytopathogenic disease control is desired.
Regarding claim 3, Tobler et al. teach that the compositions may comprise an adjuvant ([0207]-[0211]).
Regarding claim 4, Tobler et al. teach that the compositions may be in any conventional form, including the forms instantly claimed ([0207]-[0208]).
Regarding claim 5, Tobler et al. teach that the weight ratio of component (A) to component (B) is from 2000:1 and 1:1000, preferably from 100:1 to 1:100, more preferably from 20:1 to 1:50 ([0190]; Claim 11).
A person having ordinary skill in the art would have been motivated to determine through routine experimentation the proper weight ratio of components when adding more than one component (B). A person having ordinary skill in the art would have been motivated to prepare a composition within the weight ratio of Tobler et al. wherein the combination of active agents would yield a composition that is effective at controlling fungal disease.
Regarding claims 6-7, Tobler et al. teach treating useful plants or plant propagation material ([0059], [0201]-[0202], [0232]-[0233]; Claim 12). Tobler et al. teach applying the composition to the locus of a plant (Claim 12). The amount of a composition according to the invention to be applied, will depend on various factors. Such as the compounds employed; the subject of the treatment, such as, for example, plants, soil or seeds; the type of treatment, such as, for example spraying, dusting or seed dressing: the purpose of the treatment, such as, for example prophylactic or therapeutic; the type of fungi to be controlled or the application time ([0203]).
Regarding claim 9, Tobler et al. teach that the compositions according to the invention may also comprise further pesticides, such as, for example, fungicides, insecticides or herbicides ([0209]).
Claims 5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Oliveira et al. (US 2016/0360751 A1) as applied to claims 1-4 and 6-8 above, further in view of Tobler et al. (US 2014/0024532 A1).
The teachings of both Oliveira et al. and Tobler et al. are discussed above.
Regarding claim 5, Oliveira et al. teach the amount of dithiocarbamate (i.e., chlorothalonil) to be applied may range from 1 kg/ha to 2.5 kg/ha, preferred being 1.5 kg/ha to 2.0 kg/ha ([0122]). Oliveira et al. also teach applying fungicidal compositions at a rate of 1.5 kg/ha of dithiocarbamate (i.e., mancozeb), 0.0425 or 0.06 kg/ha of a demethylation inhibitor (i.e., azoxystrobin, pyraclostrobin, or picoxystrobin; 200 g/l applied at a rate of 300 ml/ha or 85 g/l applied at a rate of 500 ml/ha) and 0.024 kg/ha or 0.03125 kg/ha of a quinone outside inhibitor (i.e., cyproconazole, epoxiconazole, or tebuconazole; 80 g/l applied at 300 ml/ha or 62.5 g/l applied at 500 ml/ha) ([0132]). The weight ratio of chlorothalonil to the third fungicide is (1-2.5):(0.024-1.5), or (41.7-104.2):(1-62.5).
Oliveira et al. states that the dithiocarbamate may be applied in an effective amount so as to act as a synergist to the systemic fungicides of the present invention. However, the appropriate amounts of the fungicides used in the present invention, whether multi-site contact fungicides or systemic fungicides, is not particularly limiting and may be conveniently chosen by a skilled artisan ([0123]).
Oliveira et al. do not explicitly disclose the ratio of the succinate dehydrogenase inhibitor to the multi-site inhibitor and the ergosterol biosynthesis inhibitor and/or quinone outside inhibitor.
Tobler et al. teach that in general, the weight ratio of component (A) to component (B) is from 2000:1 to 1:1000. A non-limiting example for such weight ratios is compound of formula I:compound of formula B-2 is 10:1. The weight ratio of component (A) to component (B) is preferably from 100:1 to 1:100; more preferably from 20:1 to 1:50. They found, surprisingly, that certain weight ratios of component (A) to component (B) are able to give rise to synergistic activity. Therefore, a further aspect of their invention are compositions, wherein component (A) and component (B) are present in the composition in amounts producing a synergistic effect. This synergistic activity is apparent from the fact that the fungicidal activity of the composition comprising component (A) and component (B) is greater than the sum of the fungicidal activities of component (A) and of component (B). This synergistic activity extends the range of action of component (A) and component (B) in two ways. Firstly, the rates of application of component (A) and component (B) are lowered whilst the action remains equally good, meaning that the active ingredient mixture still achieves a high degree of phytopathogen control even where the two individual components have become totally ineffective in such a low application rate range. Secondly, there is a substantial broadening of the spectrum of phytopathogens that can be controlled ([0190]-[0191]).
A person having ordinary skill in the art would have been motivated to determine through routine experimentation the proper weight ratio of fungicidal components according to Oliveira et al. within the ranges taught by both Oliveira et al. and Tobler et al. A person having ordinary skill in the art would have been motivated to prepare a composition within the weight ratios of Oliveira et al. and Tobler et al. wherein the combination of active agents would yield a composition that is effective at controlling fungal disease, and wherein the combinations exhibit a synergistic effect, as reasonably suggested by Oliveira et al. and Tobler et al.
Regarding claim 9, Oliveira et al. do not explicitly disclose a composition comprising the fungicidal combination and an agrochemical active selected from the group consisting of herbicides, insecticides, miticides, acaricides, fertilizers, plant growth regulators, biocides, and the like, as instantly claimed.
Tobler et al. teach that the compositions according to the invention may also comprise further pesticides, such as, for example, fungicides, insecticides or herbicides ([0209]).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare fungicidal compositions according to Oliveira et al. further comprising an additional pesticide, such as, for example, fungicides, insecticides or herbicides, as reasonably suggested by Tobler et al.
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.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,369,585. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘585 specifically claims a fungicidal combination consisting of a) fluindapyr, b) copper oxychloride or sulfur, and c) difenoconazole; a fungicidal composition comprising the fungicidal combination and an excipient; a method of applying the fungicidal combination; and a method of controlling fungal disease.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,376,592. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘592 specifically claims a fungicidal combination consisting of a) fluxapyroxad; b) copper oxychloride; and c) prothioconazole; a fungicidal composition comprising the fungicidal combination and an excipient; a method of treating a plant comprising applying the fungicidal combination to the foliage of the plant or a plant propagation material; and a method of controlling fungal disease in a plant.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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/N.W.S/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
