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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/29/2025 has been entered.
Status of Claims
Amendment filed on 12/29/2025 is acknowledged.
Claims 1-12, 14 and 17 are amended.
Claims 11 and 16 remain withdrawn. Claim 15 previously withdrawn is now cancelled.
Claims 1-10, 12-14 and 17-20 are pending and being examined herein on merits.
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Withdrawn Objections/Rejections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the previous Office action (mailed 06/25/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 12/29/2025.
Claim Objections
Claims 1 and 17 are objected to because of the following informalities:
Claim 1 recites of Q1 “where G1 is CH and G2 is N or G1 and G2 are N”, a comma “,” in front of “or” is required to read as “where G1 is CH and G2 is N, or G1 and G2 are N”. Also the double bond between G1 and G2 in the structure drawing should show clear double lines.
Claim 17 lists compounds in structure forms, wherein a bond between N-N on the 5-atom-ring of 5th compound is missing.
Claim 17 lists the following two compounds appearing to be identical, therefore, one needs to be removed.
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Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-10, 12, 14, and 18-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-4, 10 and 12 each is amended to add “-CONH2” alternative to R3 group. However, this alternative does not find support in general description of the compound with formula (I) in instant specification. This alternative is shown in specific compound examples of instant specification, and the specific compounds having this group are supported, e.g., the 1st compound in Claim 17, but, the entire scope of compounds where R3 is CONH2 does not find support from specification describing compound with formula (I). Therefore, this -CONH2 of R3 introduces new matter into compound of formula (I).
Claims 6-9, 14 and 18-19 are rejected accordingly because they are directly depending on claim 1, and they do not further clarify the issue addressed above in claim 1.
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, PTO-892) in view of Takhashi et al. (US20140194290, 07/10/2014), Muehlebach et al. (US 20160272638 A1), and Koyanagi et al. (Bioiosterism in agrochemicals, 1995, PTO-892).
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,
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;
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 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 in with -S(O)NH-R1 taught by Muehlebach with the insecticidal compound taught in Stoller constituting S(O)0-2-R1 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) from –S(O)NH-R1 (in Muehlebach) result in both compounds having effective pest controlling activities. It would have motivated artisans in the field to modify the substituent of S(O)1-R1 into -S(O)NH-R1 in Stoller 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 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- and -NH- are classical isosteres (Pg. 16, Table I), thus, the compounds in Stoller with substituent group, e.g., S(O)2-R1, are isosteres of S(O)NH-R1 of instant claims. It would have been a routine practice for artisans in the field to carry out isosteres approach to generate similar compounds that would constitute similar insecticidal properties as Stoller and Muehlebach taught.
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 Koyanagi teaching these substituents are isosteres that 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 into instant claims 1 and 18-20.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments/remarks filed on 12/29/2025 have been fully considered.
Applicant’s arguments with respect to claims rejections under 35 U.S.C. 103 over Jung (WO2016023954) in view of Muehlebach have been considered but are moot, because the new ground of rejection does not rely on the “compound W” resulted from Jung or compounds 6.001 and 6.002 from Muehlebach.
Please refer to the entire office action as presented above as a complete response to the arguments/remarks.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616