-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 .
Applicant’s response dated December 12, 2025 is acknowledged.
Telephone Communication
On December 29, 2025, the examiner left a voicemail for attorney Klecyngier requesting to discuss potential claim amendments of claims 30 and 31 that would place the application in conditions for allowance and to get clarification on claims 22, 23, 25, 27, and 28. The examiner indicated that claims 30 and 31 continue to recite new matter and claims 22, 23, 25, 27, and 28 need clarification in view of amendment of claim 1. Claim 1 was amended to require the compound of formula Ic and an enantiomer of formula Ic, whereas dependent claims 22, 23, 25, 27, and 28 only refer to compound of formula Ic and it is not clear if applicant intended to only refer to the compound of formula Ic or the combination of the compound of formula Ic and the enantiomer of the compound of formula Ic. The examiner gave the attorney till end of January 2, 2026 to return the phone call, otherwise a final rejection will be mailed. As of January 3, 2026 the attorney has not called the examiner back.
Priority
This application is a 371 of PCT/EP2020/05 1309 filed on 01/20/2020, which claims
foreign priority in EP19153247.2 field on 01/23/2019.
Claim Status
In claim amendment submitted on December 12, 2025, claims 1, 11, 17-23, 25-28, 30, and 31 are pending. Claims 2-10, 12-16, 24, and 29 were cancelled. Claims 1, 30, and 31 were amended. All pending claims are examined.
Withdrawn Claim Rejections — 35 USC § 103
Rejections of claims 1, 11, 17-28, 30, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Décor (WO 2016/066644 Al Published May 6, 2016) are withdrawn because claim 1 was amended to require the compound of formula Ic and salts or N-oxides thereof; and an enantiomer of the compound of formula Ic, wherein the ratio of the compound of formula Ic to the enantiomer is greater than 4:1, which are not obvious over Décor. Current rejection was made over compound in example 179 in which the substituents at the two adjacent chiral centers are cis to each other. Décor teaches that the compounds can exist in one or more chiral isomer forms depending on the number of asymmetric centers in the compound. Thus, Décor relates equally to all the optical isomers and to their racemic and scalemic mixtures and to the mixtures of all the possible stereoisomers, in all proportions (page 7 lines 13-18). While, Décor’s teachings encompass scalemic mixtures of compounds such as the compound in example 179, it would not have been obvious to make the mixture using the enantiomer that corresponds to the claimed formula Ic in excess relative to its enantiomer to render the claimed range of ratios obvious. Décor describes the compound in example 179 as cis, which encompasses both enantiomers. A person skilled in the art would not have had a reasonable expectation of success in arriving at the claimed mixture of enantiomers based on the teachings of Décor.
To further clarify the rejection of the now canceled claim 24, the claim did not require the presence of the enantiomer of the compound of formula Ic in the treatment composition. The phrase “wherein the ratio of the compound of formula (Ic) to the enantiomer thereof is greater than 4:1” reads on embodiments where only the one isomer is present, such as 10:0. The cis isomer has two enantiomers, both of which would have been equally obvious.
Withdrawn Double Patenting Rejections
Rejections of claims 1, 11, 17-28, 30, and 31 over claims 1-13 of U.S. Patent No. 11,166,461 B2 (Gaberthueel, Date of Patent November 9, 2021) and Décor are withdrawn in view of amendment of claim 1, which is not obvious over the patented claims and Décor.
Rejections of claims 1, 11, 17-28, 30, and 31 over claims 1-13 of copending Application No. 17/783,455 (reference application) and Décor are withdrawn in view of amendment of claim 1, which is not obvious over the copending claims and Décor.
Rejections of claims 1, 11, 17-28, 30, and 31 over claims 1-11 and 18 of U.S. Patent No. 9,414,589 B2 (of record in IDS dated 05/10/2023) in view of Décor are withdrawn in view of amendment of claim 1, which is not obvious over the patented claims and Décor.
New and Maintained Claim Rejections – 35 USC § 112
Necessitated by Amendment
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 30 and 31 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.
Rejections of claims 30 and 31 are maintained, but modified in view of claim amendments.
Claim 30 was amended to require “a % efficacy of at least 51.22% based on pest severity”. This amendment introduces new matter because the application as filed does not provides support for a range of % efficacies that is at “least 51.22%” and the application does not provide support for % efficacy based on any amount of pest severity. The specification on page 15 provides support for 51.22% efficacy based on 25.00% pest severity. Ground of rejection may be obviated by replacing “of at least 51.22% based on pest severity” with ---of 51.22% based on pest severity of 25.00%---.
Claim 31 was amended to require “a % efficacy of about 51.22% to 73.13% based on pest severity”. This amendment introduces new matter because the application was filed does not provide support for an endpoint of “about 51.22%” and does not provide support for a % efficacy based on any amount of pest severity. The specification on page 15 provides support for 51.22% efficacy based on 25.00% pest severity, and a 79.13% efficacy based on 13.25% pest severity. The application as filed provides said specific % efficacy values at specific % pest severity. Ground of rejection may be obviated by replacing “of about 51.22% to 73.13% based on pest severity” with ---from 51.22% based on pest severity of 25.00% to a % efficacy of 73.13% based on pest severity of 13.25%---.
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 22, 23, 25, 27, and 28 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.
Rejections of claims 22, 23, 25, 27, and 28 are necessitated by amendment of claim 1. Claims 22, 23, 27, and 28 recite applying the compound of formula Ic at a certain application rate. The claims are indefinite because the treatment composition in claim 1 requires the compound of formula Ic and an enantiomer of the compound of formula Ic, and it is not clear if applicant intended to apply the rate of application only to the compound of formula Ic or to the combination of the compound of formula Ic and an enantiomer of compound of formula Ic. In the previous version of claim 1, the designation “formula (Ic)” was used to represent the chemical structure as depicted in the claim and stereoisomers thereof. Thus, it is not clear if the applicant intended for “formula (Ic)” in dependent claims to encompass the compound of formula Ic as drawn in claim 1 and the enantiomer of the compound, or if applicant intended for the compound of formula Ic to only refer to the compound as drawn in claim 1. The specification was reviewed and it does not clarify these ambiguities. The application rates in claims 22, 23, 27 and 28 are from the examples on pages 14-16. The examples refer to the treatment compound as “COMPOUND 1” without further clarification as to what chemical structure(s) is encompassed by “COMPOUND 1”.
Claim 25 requires the trans isomer of the compound of formula Ic to be present up to 20% relative to the combined amount w/w of the compound trans stereoisomer and the compound of formula Ic. The claim is indefinite because it only refers to the compound of formula Ic without mentioning its enantiomer that is required to be in the composition of claim 1. First, it is not clear if applicant intended to include the trans stereoisomer of the compound of formula Ic only or the trans isomer of the compound Ic or the enantiomer of the compound of formula Ic. Compound of formula Ic and its enantiomer both have a trans stereoisomer. Applicant is requested to clarify.
Second, it is not clear if applicant intended to base the concentration of the trans stereoisomer only on the combined amount of the trans stereoisomer and the compound of formula Ic or on the combined amount of the trans stereoisomer, the compound of formula Ic, and the enantiomer of the compound of formula Ic. Based on the first two paragraphs on page 6 of the specification, it appears that the concentration of the trans stereoisomers of the compounds of formula Ic is based on the total weight of the trans stereoisomers, compound of formula Ia, and compound of formula Ib. Compounds Ia and Ib correspond to the claimed compound of formula Ic and an enantiomer of the compound of formula Ic. This ground of rejection may be obviated by amending the claim to make it clear that the trans stereoisomer concentration is based on the combined amount of the trans stereoisomer of the compound of formula (Ic), the compound of formula (Ic), and the enantiomer of the compound of formula (Ic).
Conclusion
Claims 1, 11, 17, 18-21, and 26 are allowed.
Claims 22, 23, 25, 27, 28, 30, and 31 are rejected.
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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALMA PIPIC/
Primary Examiner, Art Unit 1617