UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`16/163,381
`
`10/17/2018
`
`Gina Mercia SWART
`
`SYG-0134VA (115701-49)
`
`5708
`
`153842
`BakerHostetler
`
`7590
`
`07/23/2019
`
`Washington Square, Suite 1100
`Washington, DC 20036-5304
`
`EXAMINER
`
`PIHONAK, SARAH
`
`ART UNIT
`
`1627
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/23/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`eofficemonitor @ bakerlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`16/163,381
`Examiner
`SARAH PIHONAK
`
`Applicant(s)
`SWART et al.
`Art Unit
`1627
`
`AIA (FITF) Status
`No
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 6/3/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) C] This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1 and 6—22 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
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`is/are allowed.
`
`Claim(s) 1,6—8 and 22 is/are rejected.
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`Claim(s) fl is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11):] The drawing(s) filed on
`
`is/are: a)C] accepted or b)Ej objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)C] Some**
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) C] Notice of References Cited (PTO-892)
`
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190717
`
`

`

`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application is being examined under the pre—AIA first to invent provisions.
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`Status of Claims
`
`1.
`
`Claims 1 and 6—22 are pending as of the reply and amendments filed on 6/3/2019.
`
`Claims 2—5 have been cancelled. Claims 8—22 are newly added in the amendments.
`
`2.
`
`Claims 1—7 were previously rejected under 103 as being unpatentable over Walter, WO
`
`201241874. Applicants’ reasons for traversal are summarized below and addressed.
`
`Applicants have submitted without acquiescing to the properness of the previous
`
`rejection, claim 1 has been amended to recite (C) as fluazinam, and the examiner’s rejection
`
`does not address compositions where (C) is fluazinam. Applicants have requested withdrawal of
`
`the previous rejection, and direct the examiner’s attention to the examples in the specification
`
`which show the claimed combinations of components (A), (B), and (C) exhibit unexpected,
`
`synergistic results (Exs. B10/B19/B27/B34/B40/B45/B49/B52/B54/B55). Applicants have argued
`
`these results are sufficient to rebut a supposed case of prima facie obviousness.
`
`Applicants’ arguments are not found persuasive. The previous rejection did not address
`
`compositions where component (C) is fluazinam because, as noted by Applicants, this limitation
`
`was not present in the previous set of claims, on which the 103 rejection was made. In addition,
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`Walter does teach fluazinam as an additional antifungal agent for component (B) (see p. 6, line
`
`15—p. 7, line 15), along with the other recited agents for component (B), in combination with 3—
`
`

`

`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 3
`
`(difluoromethyl)—N—methoxy—1—methyl—N—[1—methyl—2—(2,4,6—trichlorophenyl)ethyl]pyrazole—4—
`
`carboxamide. Furthermore, as discussed in the previous office action Walter teaches it is
`
`advantageous to have more than one agent for component (B) in combination with 3—
`
`(difluoromethyl)—N—methoxy—1—methyl—N—[1—methyl—2—(2,4,6—trichlorophenyl)ethyl]pyrazole—4—
`
`carboxamide to broaden the spectrum of antifungal activity. Therefore, the amended claims
`
`would have been prima facie obvious in view of Walter. The examiner has considered the
`
`results referred to in Exs. B10/B19/B27/B34/B40/B45/B49/B52/B54/B55 as shown in the
`
`specification, and agrees that they demonstrate synergy, however, they are not commensurate
`
`in scope with the claims. The data provided in the specification shows that the combination of
`
`(A), (B) and (C) at the weight ratio ranges recited in new claims 9—11 exhibits synergistic
`
`antifungal effects, but the claims are not limited to these weight ranges. Particularly, claims 1,
`
`6—7 do not recite any weight ratio range for (A), (B), and (C), while the range recited in new
`
`claim 8 is considerably broader than the data that supports the synergistic results. See MPEP
`
`716.02(d), where it is stated ”Whether the unexpected results are the result cat unexpectedly
`
`imprcsveci results at a preperty not taught by the prior art, the "ebjective evidence at
`
`penebvieueness must be cemmensurate in scope with the Claims which the evidence is offered
`
`to support." in ether words, the Showing of unexpected reguits must be reviewed to see if
`
`the resuits eccur ever ‘lll'it'i entire claimed range”. in re Clemens, 522 F.2d 1829, 1635, 295 USPQ
`
`283%, 296 {CCPA 1380}, The rejection under 18.3 ever Welter was proper. This rejection will be
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`reiterated, with mediticatiep te address the amended claims.
`
`

`

`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 4
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`Claims 1:7 were previeusly rejeeted fer nonstatutory deuble patenting over the claims
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`of USP 9,808,007; and USP 10,136,644. in response, Appiicants have submitted without
`
`acquiescing to the pmpemess at the rejectien, rewnsideratien of these rejectiens is requested
`
`in View of the present amendments to claim 1. Appiicants have argued in particular, neither the
`
`’35)? not '644 patent recite a campesltien which inciudes tiuazinam, and therefore the present
`
`claims are patentably distinct from the ’OO? and ’644 patents.
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`in ViEW of the amendments to the claims, the rejections for nonstatutert,i double
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`patenting over the claims of the ”OH? and ’644 patents are withdrawn.
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`3.
`
`ti.
`
`5.
`
`Claims 1 and 6—22 were examined.
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`Claims 1, 6—8, and 22 are rejected.
`
`Claims 9-21 are objected to.
`
`Claim Rejections-35 USC § 103
`
`6.
`
`The following is a quotation of pre—AIA 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102, if the differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`1.
`
`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. 1, 148 USPQ 459
`
`(1966), that are applied for establishing a background for determining obviousness under pre—
`
`AIA 35 U.S.C. 103(a) are summarized as follows:
`
`

`

`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 5
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`1. Determining the scope and contents ofthe prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`2.
`
`This application currently names joint inventors. In considering patentability ofthe
`
`claims under pre—AIA 35 U.S.C.103(a), the examiner presumes that the subject matter ofthe
`
`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
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`pre—AIA 35 U.S.C. 103(c) and potential pre—AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre—AIA
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`35 U.S.C.103(a).
`
`Claims 1, 6—8, and 22 is/are rejected under pre—AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Walter et. al., WO 2012/41874 (publ. date 4/5/2012, cited in the IDS).
`
`The claims are directed to a composition suitable for control of diseases caused by
`
`phytopathogens comprising as component (A) 3—(difluoromethyl)—N—methoxy—1—methyl—N—[1—
`
`methyl—2—(2,4,6—trichlorophenyl)ethyl]pyrazole—4—carboxamide; component (B) selected from a
`
`compound of formula VII, isopyrazam, difenoconazole, azoxystrobin, prothioconazole,
`
`tebuconazole, pyraclostrobin, trifloxystrobin, fludioxonil, and cyprodinil; and for component
`
`(C), fluazinam, wherein (A) and (VII) are shown below:
`
`

`

`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 6
`
`
`
`Cl
`
`Cl
`
`Cl
`
`3 -(difluoromethyl)-N-methoxy- 1 -methy1—N— [ 1 -methyl-2-(2,4,6-trichlorophenyl)ethy1]pyrazole-4-carboxamide
`
`(A)
`
`Cl
`
`Cl
`
`3 -difluoromethyl- 1 -methyl- 1 H-pyrazole-4-carboxy1ic acid (9-dichloromethylene-1 ,2,3 ,4-tetrahydro- 1 ,4-
`methano-naphthalen—S-yl)—amide
`
`(VII). The claims are further directed to controlling diseases on useful plants or on propagation
`
`material, and protecting natural substance of plant and/or animal origin comprising applying
`
`the claimed combination.
`
`Walter et. al. teaches a combination for controlling phytopathogenic diseases
`
`comprising components (A) and (B) in a synergistically effective amount, wherein component
`
`(A) is a compound of formula | (Abstract; p. 1, line 13—p. 2, line 13):
`
`

`

`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 7
`
`G
`F
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`
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`
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`
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`
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`
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`
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`
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`
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`
`it:
`
`-
`
`; R1 is hydrogen, halogen, or C1-6 alkyl;
`
`Fig;
`
`Rs
`
`R2=hydrogen, halogen, C1-6 alkyl, C243 alkenyl, C2.6 alkynyl, C343 cycloalkyl—C3.6 alkynyl,
`
`halophenoxy, halophenyl—C3.6 alkynyl, etc.; R3=hydrogen, halogen, or C1.6 alkyl; R4, R5, and
`
`h
`
`R6=independently hydrogen, halogen, or
`
`, with at least one or R4, R5, and R6 being
`
`other than hydrogen; R7=hydrogen, CH3 alkyl, C1.6 haloalkyl, or C1-4 alkoxyalkyl; Rg=hydrogen or
`
`methoxy; or a agrochemically acceptable salt or structural isomer thereof. The compounds for
`
`component (B) are selected from the group consisting of a strobilurin fungicidie, an azole
`
`fungicide, a morpholine fungicide, and various other fungicide compounds, including a
`
`compound of formula (VII) (p. 2, line 14—p. 6, line 13, with emphasis on p. 6, lines 7—8):
`
`

`

`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 8
`
`.
`xx
`elm—A.
`
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`
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`
`.Walter et. al. teaches especially suitable compounds for
`
`component (B) include azoxystrobin, pyraclostrobin, trifloxystrobin, difenoconazole,
`
`prothioconazole, tebuconazole, cyprodinil, isopyrazam, and a compound of formula (VII), as
`
`described above (p. 18, line 20—p. 20, line 6). Fluazinam is also taught to be a suitable
`
`compound for component (B), and is included within a preferred group of compounds (see p. 2,
`
`lines 14—30; p. 6, line 15—p. 7, line 15; p. 11, line 7—p. 12, line 2; p. 18, line 20—p. 19, line 19).
`
`Walter et. al. teaches the weight ratio of component (A) to component (B) to be from 2000:1 to
`
`1:1000, with particular preference given to a weight ratio of 5:1 to 1:5 (p. 21, line 15—p. 22, line
`
`2). Walter et. al. teaches the combination of component (A) and (B) to exert a synergistic effect
`
`on phytopathogen control (p. 22, lines 4—15). Walter teaches determining a synergistic effect by
`
`calculating the expected action for the combination by the Colby formula and comparing to the
`
`actual observed activity (p. 22, lines 17—32). Walter et. al. further teaches combinations
`
`comprising component (A) with more than one of the active components (B), for broadening
`
`the spectrum of disease control, and that in particular, it may be advantageous to combine two
`
`or three components (B) with component (A) (p. 26, lines 6—10). The compound for component
`
`(A) recited in the instant claims is disclosed by Walter et. al. (see p.26, Table 1, compound
`
`1.001). Walter et. al. teaches the combinations of component (A) and component(s) (B) in a
`
`composition with an agriculturally acceptable carrier and optionally a surfactant, in a
`
`

`

`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 9
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`synergistically effective amount (p. 25, line 31—p. 26, line 4; p. 59, lines 20—23). Walter et. al.
`
`teaches controlling phytopathogenic diseases on useful plants or propagation material thereof,
`
`and protecting substances of plant and/or animal origin from fungi attack comprising applying
`
`the combination as discussed above to plants, their locus, or propagation material (p. 1, lines
`
`13—17; p.23, lines 27—33; p. 50, lines 11—15).
`
`It would have been prima facie obvious to one of ordinary skill in the art, at the time of
`
`the invention, to have combined component (A), 3—(difluoromethyl)—N—methoxy—1—methyl—N—[1—
`
`methyl—2—(2,4,6—trichlorophenyl)ethyl]pyrazole—4—carboxamide; component (B), a compound of
`
`formula (VII), isopyrazam, difenoconazole, azoxystrobin, prothioconazole, tebuconazole,
`
`pyraclostrobin, trifloxystrobin, fludioxonil, or cyprodinil; and component (C), fluazinam,
`
`together in a composition, wherein the weight ratio of (A) to (B+C) is from 2000:1 to 1:1000 as
`
`recited in the instant claims, in view of the teachings of Walter et. al. Walter et. al. teaches
`
`synergistic combinations of a compound of component (A), including 3—(difluoromethyl)—N—
`
`methoxy—1—methyl—N—[1—methy|—2—(2,4,6—trichlorophenyl)ethyl]pyrazole—4—carboxamide; and
`
`one or more compounds for component (B), inclusive of isopyrazam, difenoconazole,
`
`azoxystrobin, prothioconazole, tebuconazole, pyraclostrobin, trifloxystrobin, fludioxonil,
`
`cyprodinil, fluazinam, and a compound of formula (VII), wherein the weight ratio of (A) to (B) is
`
`from 2000:1 to 1:1000, for controlling phytopathogenic organisms. As Walter et. al. teaches
`
`that combining component (A) with two compounds of component (B) can be advantageous,
`
`one of ordinary skill in the art would have been strongly motivated to have combined 3—
`
`(difluoromethyl)—N—methoxy—1—methyl—N—[1—methyl—2—(2,4,6—trichlorophenyl)ethyl]pyrazole—4—
`
`carboxamide with a compound of formula (VII), isopyrazam, difenoconazole, azoxystrobin,
`
`

`

`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 10
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`prothioconazole, tebuconazole, pyraclostrobin, trifloxystrobin, fludioxonil, or cyprodinil; and an
`
`additional antifungal, fluazinam, together in a composition in synergistically effective amounts
`
`as determined by the Colby formula, at a weight ratio of (A) to the two compounds for
`
`component (B) of 2000:1 to 1:1000, with the reasonable expectation that improved control of
`
`phytopathogenic diseases would have been provided.
`
`Claim Objections
`
`7.
`
`Claims 9—21 are objected to as being dependent upon a rejected base claim, but would
`
`be allowable if rewritten in independent form including all ofthe limitations of the base claim
`
`and any intervening claims.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this
`
`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee pursuant to 37 CFR 1.136(a)
`
`

`

`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 11
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`will be calculated from the mailing date of the advisory action.
`
`In no event, however, will the
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`statutory period for reply expire later than SIX MONTHS from the date of this final action.
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`Conclusion
`
`8.
`
`Claims 1, 6—8, and 22 are rejected. Claims 9—21 are objected to.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to SARAH PIHONAK whose telephone number is (571)270—7710.
`
`The examiner can normally be reached on Monday—Friday 9:00—5:30 EST.
`
`Examiner interviews are available via telephone, in—person, and video conferencing
`
`using a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Sreeni Padmanabhan can be reached on 571—272—0629. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571—273—8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866—217—9197(toll—free). If you
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`

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`Application/Control Number: 16/163,381
`Art Unit: 1627
`
`Page 12
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`would like assistance from a USPTO Customer Service Representative or access to the
`
`automated information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/SARAH PIHONAK/
`
`Primary Examiner, Art Unit 1627
`
`