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 .
Status of Claims
Amendment filed on 07/06/2026 is acknowledged.
Claims 1 and 17 are amended.
Claims 11 and 16 remain withdrawn. Claim 15 was previously cancelled.
Claims 1-10, 12-14 and 17-20 are pending and being examined on the merits herein.
Priority
This instant application 16972220, filed on 12/04/2020 is a 371 of PCT/EP2019/064795, filed on 06/06/2019, which claims foreign priority to India 201811021198, filed 06/06/2018 and to EP18191693.3, filed on 08/30/2018.
Withdrawn Objections/Rejections
All previous claim Objections/Rejection(s) as set forth in the previous Office action (mailed 03/06/2026) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 07/06/2026.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12 identifier as “previously presented”, which is correct, however, the previous amendment markings remain appearance.
Appropriate correction is required.
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 1-10, 12-14, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Stoller et al. (WO2016026848, 02/25/2016, in record of 03/06/2026) in view of Takhashi et al. (US20140194290, 07/10/2014), Muehlebach et al. (US 20160272638 A1, 09/22/2016), and Koyanagi et al. (Bioiosterism in agrochemicals, 1995, in record of 03/06/2026).
Stoller throughout the refence teaches active heterocyclic derivatives with sulphur containing substituents which can be used as insecticides (e.g. Abstract).
Regarding instant claim 1, Stoller teaches compounds of formula I (e.g., Pg. 97, Claim 1; Pg. 1, Line 11-Pg. 2, Line 16):
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Wherein A is CH or N (Pg. 1, Line 16) (same as A in instant claim 1);
X can be S, SO or SO2 (Pg. 1, Line 32) (corresponding to S(O)n, n=1; and R2-N=SR1=(O)n group as instant claim 1);
R1 can be C1-C4 alkyl (Pg. 2, Line 1) (corresponding to R1 is C1-C4 alkyl in instant claim 1);
X1 can be NR3, wherein R3 can be C1-C4 alkyl (Pg. 2, Line 13) (corresponding to X1 is NR5, and R5 is C1-C4 alkyl in instant claim 1; and also corresponding to G1 is CH and G2 is N in Q1 of instant claim 1);
R2 can be C1-C6 haloalkyl, C1-C4 haloalkylsulfanyl, or C1-C4haloalkylsulfonyl (Pg. 2, Lines 7-9) (corresponding to R4 in Q1 as C1-C6 haloalkyl, C1-C4 haloalkylsulfanyl, or C1-C4haloalkylsulfonyl in instant claim 1);
Q can be C3-C6cycloalkyl, or C3-C6cycloalkyl mono- or poly-substituted by substituents selected from the group consisting of cyano, C1-C4haloalkyl (Pg. 1, Lines 17-18) (corresponding to R3 substituent as hydrogen, C1-C3 haloalkyl, or cyano on cyclopropyl structure in instant claim 1 formula (I)).
and agrochemically acceptable salts, stereoisomers, tautomers and N-oxides of those compounds (Pg. 2, Lines 15-16) (corresponding to instant claim 1 recitation of “or an agrochemically acceptable salt, stereoisomer, enantiomer, tautomer or N-oxide of a compound of formula I”).
Regarding instant claims 2-10, 12-14 and 17, Stoller exemplifies compound P7 (Pg. 60, Lines 20-24):
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The structure of P7 corresponds to instantly claimed features representing A is N in instant claims 2-5, R1 is ethyl in instant claims 2-5, 10 and 12-13, R3 is hydrogen in instant claims 2-5, 10 and 12-13, Q is radical selected from Q1 and X1 is NCH3 as instant claims 6-10 and 12-13, R4 is trifluoromethyl as in instant claims 7-10 and 12-13, while combined Q1, X1 and R4 representing radical Q1-2 in instant claim 14, and R4 as trifluoromethyl reads to C1-C2haloalkyl in instant claim 6. Compound P7 also corresponds to the 4th compound structure in instant claim 17, only differing at substituent on the atom S of ethyl-S=O group.
Stoller exemplifies other similar compounds, e.g., compound P15 (e.g., Pg. 62, Lines 10-14; Pg. 68, Table; structure copied below), which only differs from P7 that A is CH (corresponding to instant claims 2-5, 10 and 12-13) and a cyano substituent on the cyclopropyl group(corresponding to R3 as cyano in instant claims 2-5, 12-13 and 17); or compound P18 (Pg. 68, Table; see structure copied below), only differing from P7 for having a trifluoromethyl substituent on the cyclopropyl group, corresponding to R3 as C1-C3 haloalkyl in instant claims 2 and 10, or R3 as C1-C2haloalkyl in instant claim 3.
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Compound P18
Regarding instant claims 18-20, Stoller teaches compositions comprising pesticidal compounds of formula (I) (e.g., Abstract; Pg. 1, Line 11-Pg. 2, Line 16) and agrochemically acceptable salts, stereoisomers, tautomers and N-oxides of those compounds (e.g., Pg. 2, Lines 15-16), which can be with one auxiliary (e.g., Claim 10); and method for controlling pests comprises applying the compositions to the target pests, to their locus, or to a surface or substrate (e.g., Pg. 43, Lines 1-4) in an effective amount of the pesticidal compositions for controlling such pests (e.g., Pg. 10-14). Stoller teaches many pests (e.g., Pg. 35, Line 1 -Pg. 37, Line 17;), e.g., acarina (Pg. 35, Lines 2-9), insects (e.g., Pg. 46, Lines 2-Pg. 48, Line 22), plant parasitic nematodes (Pg. 39, Lines 5- 27), or molluscs (e.g., Pg. 39, Lines 29-35), are suitable for the treatment method by applying the composition comprising the compounds of formula (I). Stoller exemplifies that the composition can be obtained as a suspension by dilution with water for any desired dilution, and can be used on living plants as well as plant propagation material (e.g., Pg.53, Lines 4-6 and 9-11), and teaches that the method for protection of plant propagation material, for example seeds, such as fruit, tubers or kernels, or nursery plants, against pests of the previously mentioned types (e.g., Claim 12; Pg. 93, Lines 7-10).
Stoller compounds presenting -X-R1 group as S(O)0-2 -R1, e.g., (C1-C4alkyl)-S(O)0-2 (Formula I, e.g., Pg. 97, Claim 1; Pg. 1, Line 11-Pg. 2, Line 16), or ethyl-SO2 in compounds P7, P15 or P18, differ from (C1-C4alkyl)-S(O)1=N-H group in instant claim 1 and R2 is hydrogen as recited in instant claims 1-5, 10 and 12-13, or ethyl-S(O)1=N-H in instant claim 17.
Takahashi throughout the reference teaches pesticidal compounds having excellent controlling effect on pests with structure formula (1) (shown below) (e.g., Abstract).
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Takahashi specifies that a compound represented by the formula (1-1) (Pg. 3):
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Wherein:
A1a represents -NR7a-, R7a can be a C1-C6 alkyl group (corresponding to X1 as NR5 and R5 as -C1-C4 alkyl in instant claim 1),
A3a can represent a nitrogen or CR9a, R9a can be C1-C6 alkyl group, or hydrogen (resulting in the bicyclic structure portion close to instantly claimed Q1 of the 5-atom ring, while differing at G1/G2 as claimed in claim 1),
R1a can be a C1-C6 alkyl group (corresponding to instant claim 1 of R1 as C1-C4 alkyl),
R2a and R4a both are a hydrogen atom (same as instant claim 1),
R3a can be a C1-C6 alkyl group optionally substituted by one or more halogen atoms,
R5a can be C1-C6 haloalkyl group, or -S(O)mR23a (wherein R23a is a C1-C6 haloalkyl group, and m is 0, 1 or 2) (corresponding to instant claim 1 of R4),
N represents 0, 1, or 2.
Muehlebach discloses pesticidal active compounds of following formula (I) with bicyclic heterocycles with sulphur containing substituents (e.g., Abstract; [0004]):
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wherein X is S=N-R10 or S(O)=N-R10, wherein R10 is hydrogen, nitro, cyano, C(O)R26, C(O)OR27, CONR28R29, SO2R30, CONH2, C(S)NH2; or R10 is C1-C6alkyl, C1-C6haloalkyl, C3-C6cycloalkyl, C3-C6 halocycloalkyl or cl -C6alkoxy-Cl-C6alkyl;
R is hydrogen, halogen, C1-C4haloalkyl, OR31 or S(O)nR32 (which differs from cyclopropyl substituent group in instant claim formula (I))
X1 can be N-R3, wherein R3 is C1-C4 alkyl;
X2 is N, CH, C-halogen, C-CN, C--O----C1-C4alkyl, C-S-C1-C4 alkyl, C-SO2----C1-C4alkyl, C-S-phenyl, C-SO2-phenyl or C-SO2----C1-C4halolalkyl (resulting in the bicyclic structure portion close to instantly claimed Q1 of the 5-atom ring, while differing at G1/G2 as claimed in claim 1 and resembling possible exact bicyclic portion structure of Takahashi as presented above),
R1 is cl -C6 alkyl, Cl -C6 haloalkyl, C3-C6 cycloalkyl, C3-C6halocycloalkyl, C2-C6 alkenyl, C2-C6 haloalkenyl or C2-C6alkynyl;
R2 is halogen, C1-C4 haloalkyl, OR31, S(O)nR32, or SF5;
R4 is hydrogen or halogen;
R26 is hydrogen, cl -C6alkyl, cl -C6haloalkyl, C3-C6cycloalkyl, C3-C6halocycloalkyl or C1-C6alkoxy-C1- C6alkyl:
R27, R28, R29, R30 independently of one another are Cl -C6 alkyl, Cl-C6 haloalkyl, C3-C6 cycloalkyl, C3-C6 halocycloalkyl or C1-C6alkoxy-C1-C6alkyl;
R31 and R32 independently of one another are C1-C4 alkyl or Cl -C4 haloalkyl;
n is 0, 1 or 2; and
agrochemically acceptable salts, stereoisomers, enantiomers, tautomers and N-oxides of those compounds.
Muehlebach compound formula shares the exact backbone structure as shown above in Takahashi, while Takahashi teaches the compounds, e.g., formula (1-1) having S(O)n-C1-6alkyl on the single 6-atom ring, are pesticidal compounds having excellent controlling effect on pests.
Muehlebach exemplifies numerous compounds in Table 1 when X is S=N-CN, meanwhile by many variations of X, resulting in Tables 2 to 19, to illustrate and show preferred compounds of formula (I) that can be achieved ( [0063] – [0100]), and Table 6 [0074] corresponding to compounds 6.001 and 6.060 representing compounds of formula (I) wherein X is S(O)=N-H.
Muehlebach indicates the preparation for achieving compounds containing -S(O)=NH substituent can be carried out in principle by methods known to those skilled the art and describes the method in scheme 1 involving steps A, A’, B’, and B with illustration as following [0030-0035].
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It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date to incorporate the conversion method to substitute S(O)1-R1 insecticidal compound taught in Stoller with -S(O)NH-R1 taught by Muehlebach to arrive at the instant invention, especially as shown above, it is known in the field of art, compounds from Takahashi and Muehlebach sharing the same backbones and differing only between S(O)n-R1a (in Takahashi) and –S(O)NH-R1 (in Muehlebach) result in both compounds having effective pest controlling activities. Since Muehlebach and Takahashi, sharing same backbone structure with modification of -S(O)-R1 into -S(O)NH-R1 demonstrates the expected effective pesticidal activity, it would have motivated artisans in the field to modify the substituent of S(O)1-R1 into -S(O)NH-R1 in Stoller, which teaches identical backbone structures of formula (I) (e.g., P7, P15, P18 in Stoller corresponding with instantly claimed Q1 radical when G1 is CH and G2 is N, and R3 as hydrogen, cyano, and C1F3 haloalkyl respectively) to achieve different insecticidal compounds with same pesticidal activity, and would have provided reasonable expectation of success as in Takahashi and Muehlebach. Simple substitution of one known element for another to obtain predictable results renders obviousness. (The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham and listed examples of rationale that may support a conclusion of obviousness).
Moreover, Koyanagi teaches the concept of bioisosterism is one of the sophisticated optimizations found useful for designing new qualified structures that has been applied in various field of agrochemicals, and this principle has proved to be useful as shown by a large number of successes in molecular optimization (e.g., Abstract). Koyanagi states that molecules possessing related structure have similar or antagonistic properties, which introduces the phenomena as bioisosterism (Pg. 15, bottom), and purpose of the bioisosteric approach is the total change induced by the substituent replacement will result in improved potency, selectivity, duration of action, bioavailability, and/or reduction in toxicity (Pg. 16, top paragraph). Koyanagi teaches that bivalent -O-, -S-, CH2, and -NH- are classical isosteres (Pg. 16, Table I). It would have been a routine practice for artisans in the field to carry out isosteres approach and concept to generate similar compounds that would constitute expected insecticidal properties, e.g., backbone structures among Stoller, Takahashi and Muehlebach are isosteres that can be exchangeable, with the demonstration of effective insecticidal activity by modifying group of S(O)-R1 of Takahashi into S(O)NH-R1 in Muehlebach compound, modifying the Stoller compound S(O) group the same way would obviously provide reasonable expectation of success to retain the effective insecticidal activity as evidenced by Muehlebach modifying Takahashi compound.
Additionally, MPEP §2144.06(I) states that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In the instant case, the examiner submits that a person of ordinary skill in the art would have been motivated to modify the respective compounds as discussed above, to prepare the instantly claimed compounds as both Stoller and Muehlebach are directed to the same application (i.e., insecticide), especially with evidence from teaching of Takahashi and Muehlebach that such substituents would constitute similar pesticidal properties. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
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 1-10, 12-14 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-4, 6-8, 10-12 and 15-18 of copending Application No. 18566449 (Hereafter App’449). Although the claims at issue are not identical, they are not patentably distinct from each other.
App’449 recites in claim 1:
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The compound of App’449 claim 1, when A is CH or N, R1 is C1-C4alkyl, R8 is cyanocyclopropyl (resulting instant claimed R3 as cyano), R9 is hydrogen, Q is a radical of Q1, Q2, Q3 or Q4, X1 is NR3, R3 is C1-C4alkyl, R2 is C1-C6haloalkyl, C1-C4haloalkylsulfanyl, C1-C4haloalkylfunlfonyl, and G1 and G2 are independently from each other, N or CH, can represent instantly claimed compound formula (I) in claim 1.
App’449 claims 2-4 relate to compounds containing Q1 in instant claims 1, 6-10, 12-13 and 17, or Q1-2 in instant claim 14; Claims 6-7 relate to compounds containing Q2 in instant claims 1, 6-7 and 10; Claim 8 relates to compounds containing Q3 in instant claim 1; Claims 10-11 relates to compounds containing Q4 in instant claims 1, 6, and 10.
App’449 claim 12 describes a compound of formula I, such as A is CH or N, R1 is ethyl, R8 is cyanocyclopropyl, R9 is hydrogen (corresponding to instant claims 2-5), R2 is trifluoromethyl (corresponding to R4 is trifluroromethyl in instant claims 7-10), Q is Q1 or Q4, relating to the compounds in instant claims 6-10 and 12-14, Claim 15 compounds overlap with those in instant claim 17. Claims 16-18 read on instant claims 1 and 18-20.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments/remarks filed on 07/06/2026 have been fully considered.
35 U.S.C. 112(a) Rejections
Applicant explains that CO2NH2 present in general R3 description of original specification is an obvious clerical error, and therefore the amendment should be regarded as a correction of an obvious clerical error, especially with evidence shown in Scheme 6 that R3 is -CONH2.
The rejection is withdrawn in light applicant’s remarks. However, the specification error should be corrected when allowance of the application is granted.
35 U.S.C. 103 Rejections
Applicant asserts that Takahashi is worse reference than Stoller, reliance on Takahashi is unclear, and applying Takahashi is contrary to USPTO procedure.
One cannot show nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Because "[T]he test for obviousness is what
the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686
F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012). For this instance, Stoller in view of Takahashi, Muehlebach, Koyanagi are combined prior art to teach the obviousness. It is not required that each secondary prior art has to present closer or better structures than the primary prior art, as far as the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Takahashi and Muehlebach share the same structural backbone, which slightly differ from that of Stoller, Takahashi is used to show the insecticidal compound having -S(O)n group can be modified by Muehlebach to have -S(O)NH, still constituting effective insecticidal activity; therefore, modifying the same way from Stoller’s compound, which shares the same backbone as instantly claimed compound, to achieve the instantly claimed compound becomes obvious, because the effective insecticidal activity is demonstrated and can be expected based upon the teaching of Takahashi and Muehlebach. The concept of Koyanagi with isosteres and similar compounds to be modified to retain bioactivity is applied to further affirm the obviousness of modifying similar compounds as shown in Stoller, Takhashi and Muehlebach.
Applicant asserts that Koyanagi supports unpredictability by bioisosteric replacements and points out that the compounds in Stoller, S(O)2-R1 and S(O)NHR1 in instant claims are not isosteres although bivalent -O- and -NH- are classical isosteres as taught by Koyanagi.
Examiner acknowledges such remark. However, despite of Koyanagi teaches that bioisosteric replacement can have unpredictability, Koyanagi still provides conclusion that the concept of bioisosterism is one of the sophisticated optimizations found useful for designing new qualified structures that has been applied in various field of agrochemicals, and this principle has proved to be useful as shown by a large numbers of successes in molecular optimization (e.g., Abstract). As further clarified of Takahashi and Koyanagi’s teaching in combination with Muehlebach and Stoller, the office action as presented above clearly states how the combined prior art teaching establishes the obviousness rejection.
Applicant asserts that the office action involves hindsight reasoning and fails to establish prima facie obviousness of selection in R10 and Q variation, while Muehlebach is not limited to compounds containing S=NH group, the rejection fails to articulate why hydrogen should be selected from this group R10; Stoller shows variation in Q position impacts efficacy.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). For this instance, because the variations of substituents are taught by prior art, selecting a specific substituent would be obvious, especially because prior art Takahashi, Muehlebach and Stoller all teach the similar backbones/ substituents, in addition, Koyanagi provides concept and practice in isostere and similar compound structure modification to achieve similar bioactivity. As presented in this office action (most relevant reasoning paragraphs copied below for reference), the prima facie obviousness is established:
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date to incorporate the conversion method to substitute S(O)1-R1 insecticidal compound taught in Stoller with -S(O)NH-R1 taught by Muehlebach to arrive at the instant invention, especially as shown above, it is known in the field of art, compounds from Takahashi and Muehlebach sharing the same backbones and differing only between S(O)n-R1a (in Takahashi) and –S(O)NH-R1 (in Muehlebach) result in both compounds having effective pest controlling activities. Since Muehlebach and Takahashi, sharing same backbone structure with modification of -S(O)-R1 into -S(O)NH-R1 demonstrates the expected effective pesticidal activity, it would have motivated artisans in the field to modify the substituent of S(O)1-R1 into -S(O)NH-R1 in Stoller, which teaches identical backbone structures of formula (I) (e.g., P7, P15, P18 in Stoller corresponding with instantly claimed Q1 radical when G1 is CH and G2 is N, and R3 as hydrogen, cyano, and C1F3 haloalkyl respectively) to achieve different insecticidal compounds with same pesticidal activity, and would have provided reasonable expectation of success as in Takahashi and Muehlebach. Simple substitution of one known element for another to obtain predictable results renders obviousness. (The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham and listed examples of rationale that may support a conclusion of obviousness).
Moreover, Koyanagi teaches the concept of bioisosterism is one of the sophisticated optimizations found useful for designing new qualified structures that has been applied in various field of agrochemicals, and this principle has proved to be useful as shown by a large number of successes in molecular optimization (e.g., Abstract). Koyanagi states that molecules possessing related structure have similar or antagonistic properties, which introduces the phenomena as bioisosterism (Pg. 15, bottom), and purpose of the bioisosteric approach is the total change induced by the substituent replacement will result in improved potency, selectivity, duration of action, bioavailability, and/or reduction in toxicity (Pg. 16, top paragraph). Koyanagi teaches that bivalent -O-, -S-, CH2, and -NH- are classical isosteres (Pg. 16, Table I). It would have been a routine practice for artisans in the field to carry out isosteres approach and concept to generate similar compounds that would constitute expected insecticidal properties, e.g., backbone structures among Stoller, Takahashi and Muehlebach are isosteres that can be exchangeable, with the demonstration of effective insecticidal activity by modifying group of S(O)-R1 of Takahashi into S(O)NH-R1 in Muehlebach compound, modifying the Stoller compound S(O) group the same way would obviously provide reasonable expectation of success to retain the effective insecticidal activity as evidenced by Muehlebach modifying Takahashi compound.
Additionally, MPEP §2144.06(I) states that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In the instant case, the examiner submits that a person of ordinary skill in the art would have been motivated to modify the respective compounds as discussed above, to prepare the instantly claimed compounds as both Stoller and Muehlebach are directed to the same application (i.e., insecticide), especially with evidence from teaching of Takahashi and Muehlebach that such substituents would constitute similar pesticidal properties. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Double Patenting Rejections
Applicant points out that the copending Application No. 18566449 has a filing date later than the current application. If the double patenting rejection is the only rejection remaining, it should be withdrawn.
Examiner acknowledges this remark. The rejection would be withdrawn if it is the only rejection remaining. For the time being, the rejection maintains.
Please refer to the entire office action as presented above as a complete response to the arguments/remarks.
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).
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/DX.Z./Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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