DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/23/2025 has been entered.
Response to Amendment
Applicant’s response of 09/23/2025 has been received and entered into the application file. Claims 1-6 are pending in this application. Claims 7-13 were previously withdrawn.
Claim Rejections - 35 USC § 103
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Drauz et al. (US 5534541, 1996) and Kruger et al. (WO 2004/024692 A1) as further evidenced by Drug Design Org (Bioisosterism, 2007).
Drauz et al. teach halogen thiophene carboxylic acid derivatives for combating plant disease.
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(Abstract).
Drauz et al. disclose novel substances for combatting plant diseases. The invention also relates to the production of these substances as well as compositions containing at least one of these compounds as active ingredient. The invention relates to the use of these active ingredients or compositions containing them for the protection of plants against attack by harmful microorganisms, e.g., phytotoxic fungi, bacteria, and viruses (col 1, lines 9-15).
Kruger discloses novel heterocyclyl carbonyl aminocyclopropane carboxylic acid derivatives of formula (I) and (IV) (Abstract).
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The substance according to the invention have a strong microbicidal action and can be used to control unwanted microorganisms, such as fungi and bacteria in crop protection and in material protection (page 11, 5th paragraph, translated form).
Drug Design Org discloses that an isopropyl fragment can simply be replaced by cyclopropyl bioisostere (pg 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have created compounds of formula (II) of this present invention which is taught to have microbicidal action. This is taking some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Regarding claim 2, Drauz et al. teach that R6 group can be OH, OR4 or NR5R6 (Abstract, col 2 lines 13-21).
Regarding claim 3, Drauz et al. teach that R7 group can be hydrogen or an alkyl group with 1-3 carbon atoms (Abstract).
Regarding claim 4, Drauz et al. disclose formula (II) wherein R4 is a hydrogen atom (col 22, example 59).
Regarding claim 5, Kruger teaches the cyclopropyl group.
Regarding claim 6, Drauz et al. disclose that the compounds of above formula are used together with auxiliary agents which are conventional in the formulation art and are therefore processed in a known manner (Col 5, lines 32-40).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 17/786151 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim substituted thiophene carboxamides and derivatives thereof. The reference application claims below structure (claim 1). R1, R2, and R3 can be halogen; W can be oxygen; Y can be NR8 wherein R8 can be hydrogen or alkyl; R4 and R5can be hydrogen, alkyl, or C3-C6 carbocycle; Z can be -C(=O)-OR (Refer to claim 1).
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed 09/23/2025 have been fully considered and a new evidentiary reference is incorporated.
Applicant presents the same arguments as previously made in Remarks of 05/22/2025. On page 11-12 of remarks, applicant argues that Kruger’s compound of formula (I) may be substituted by a halogen (thus possibly analogous to the trichloro-substituted thiophene ring in claim 1). Kruger discloses formula (I), in which G represents five-membered or six-membered heterocyclyl (which reads on the five-membered thiophene ring of claim 1), that is substituted by halogen (Abstract). One of ordinary skill in the art would immediately envisage that any combination of halogens can be added – such as trichloro-substituted thiophene ring of instant application’s claim 1. Additionally, Kruger even mentions that the substances according to the invention have a strong microbicidal action and can be used to control unwanted microorganisms, such as fungi and bacteria, in crop protection, which is analogous to instant application (pg 11, 5th paragraph). A prior art reference does not need to describe the identical compound to render a claimed invention obvious, it needs to provide a sufficient basis for one of ordinary skill in the art to create the claimed compound – in this case, Kruger teaches a compound with microbicidal action.
On pages 12-13 of remarks, applicant argues that trichloro-substituted thiophene compound was better than tribromo-substituted compound taught by Drauz. The examiner agrees that the trichloro-substituted compound seem to work as intended by the applicants. However, in combination of Drauz and Kruger, one of ordinary skill in the art would have considered the cyclopropyl group and a five-membered heterocyclyl ring that is substituted by halogen.
On pages 13-14 of remarks, applicant argues that CMP2 has an isopropyl group as compared to different R4 substitutions. The examiner can see that when R4 substitution is isopropyl, the efficacy is 0%. However, cyclopropyl substitution at R4 is not the only compound with >90% efficacy (See page 50, Example C of instant specification). As evidenced by Drug Design Org, one of ordinary skill in the art would routinely experiment with an alternative or bioisosteric replacement of one group for another – in this case would be replacing isopropyl group with cyclopropyl. Per MPEP 2144.09 (I), A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties."
Therefore, claims 1-6 remain rejected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN SEUNGJAI KWON whose telephone number is (571)272-7737. The examiner can normally be reached Mon - Fri 8:00 - 5:00.
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/JOHN SEUNGJAI KWON/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615