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 .
Election/Restrictions
Applicant’s election of Group II, drawn to a method of controlling plant growth, and the following species:
2-amino-5-nitrothiazole having the structure of
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as the elected compound species;
A herbicidal composition that comprises both the elected compound species and an agriculturally acceptable carrier as the elected herbicidal composition species; and
weed as the elected contacting plant species
in the reply filed on October 31, 2024 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 26-36 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 31, 2024.
Please note Applicant elects water (an aqueous solution species) and DMSO (an organic liquid solvent species) as the species of agriculturally acceptable carrier. It is noted that the claims submitted on November 11, 2021 does not have claims drawn to the elected water and the elected DMSO as the agriculturally acceptable carrier species, and therefore the examiner is going to limit the examination to
an agriculturally acceptable carrier; However, to the extent that Applicant amends the claims to include the said species, it would require further search and consideration.
Expansion of Election of Species Requirement
The amendment to the claims necessitated a new search. A reasonable and comprehensive search of the elected compound species conducted by the Examiner discovered a prior art by Beck et al. (US 4,962,102) that anticipates the claimed invention, wherein the prior art teaches a compound no. 3 having the structure of:
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; However, it is noted that the prior art does not teach the elected compound species. In light of this discovery, the search is expanded to the subject matter of the compound species to include the compound no. 3 of Beck et al. in addition to the elected compound species, such that it does not encompass the full scope of the claims.
Action Summary
Claims 37-40 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lemin (US 3,374,082) are withdrawn in light of the amendment filed on May 12, 2025.
Claims 37-40 rejected under 35 U.S.C. 103 as being unpatentable over Schuster et al. (DD271258A1) are withdrawn in light of the declaration under 37 CFR 1.132 filed on May 12, 2025.
Acknowledgement is made of the receipt and entry of the amendment to the specification filed on May 12, 2025, wherein paragraph [0333] has been amended.
Status of Claims
Acknowledgement is made of the receipt and entry of the amendment to the claims filed on May 12, 2025, wherein claims 1-25 and 38-39 are canceled; claims 26-36 and 40 are unchanged; claim 37 are amended; claims 41-44 are newly added.
Claims 26-37 and 40-44 are pending. Claims 26-36 remain withdrawn.
Claims 37 and 40-44 are currently under examination in accordance to the elected species along with the expanded compound species set forth in the Expansion of Species section above.
Priority
The instant application 17/610,470 filed on November 11, 2021 is a 371 of PCT/IL2020/050522 filed on May 13, 2020, which claims priority to, and the benefits of U.S. Provisional Application No.
62/846,826 filed on May 13, 2019 and U.S. Provisional Application No. 62/846,761 filed on May 13, 2019.
Declaration
The declaration under 37 CFR 1.132 filed on May 12, 2025 is sufficient to overcome the rejection of claims 37-40 based upon Schuster et al. (DD271258A1) applied under 35 U.S.C. 103 set forth in the Non-Final Office Action mailed on February 12, 2025; However, said declaration is insufficient to over the new ground of rejection for the reasons addressed in the response to the arguments set forth below.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
In the present case, Pubchem CID Numbers are mentioned throughout the specification to refers to compound species of the claimed invention shown below:
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. While the chemical structure of the claimed compound are recited in the claims, the correspondence between each PubChem CID Number and its chemical structure has not been disclosed. Even though the prior-filed application, U.S. Provisional Application No. 62/846,826 filed on May 13, 2019, appears to be reciting the chemical structures of some PubChem CID number (see paragraph [0213], Table 1 of said application); However, the PubChem CID numbers recite therein are blurry and unreadable; therefore, it is not clear what these Pubchem CID Numbers are being referred to by the Applicant.
Claim Interpretation
The claimed term “controlling”, when construed in light of paragraph [0218] of the specification, is taken to refer to the growth rate of weeds is reduced or even completely inhibited in a given time.
The claimed term “area under cultivation”, when construed in light of paragraph [0199] of the specification shown below:
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, is taken to include any fields set forth therein.
Claim Objections
Claim 37 and 42-43 are objected to because of the following informalities:
Regarding claims 37 and 43, the term “and” is repeated twice in the same sentence shown below:
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, and one of them should be deleted as it appears to be a typographical error. In addition, the term “and” is often use to when multiple options are selected; However, in the context of selecting a structure for R2, it appears that Applicant is intending to use —or— to present choice between one or more options.
Regarding claim 42, the recitation of:
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is missing the term —or— prior to the recitation of “a halo group”. The term —or— should be use to present choice between one or more options.
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 37 and 40-44 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for controlling growth of Amaranthus palmeri by contacting a seed of said Amaranthus palmeri with 8 mL of a 0.5 mg/mL solution comprising the
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,
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or
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as the compound represented by Formula III, does not reasonably provide enablement for controlling the growth of each and every weed species by contacting the weed, any part of the weed, any seed of the weed, or any area under cultivation with any amount of a herbicidal composition comprising any compound species represented by Formula III is not enabled by the instant specification. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
Attention is directed to In re Wands, 8 USPQ2d 1400 (CAFC 1988) at 1404 where the court set forth the eight factors to consider when assessing if a disclosure would have required undue experimentation. Citing Ex parte Forman, 230 USPQ 546 (BdApls 1986) at 547 the court recited eight factors: (1) the nature of the invention; (2) the state of the prior art; (3) the relative skill of those in the art; (4) the predictability or unpredictability of the art; (5) the breadth of the claims; (6) the amount of direction or guidance presented; (7) the presence or absence of working examples; and, (8) the quantity of experimentation necessary. All of the Wands factors have been considered and discussed below:
(1, 5) The breadth of the claims and the Nature of the Invention: As stated in MPEP 2164.05(a), “[t]he initial inquiry” for determining whether the Specification is enabling “is into the nature of the invention, i.e., the subject matter to which the claimed invention pertains.”
Claim 37 recites a method for controlling plant growth, the method comprising contacting the plant, a part of the plant, or an area under cultivation with a herbicidal composition comprising a compound presented by instant Formula III and an agriculturally acceptable carrier, wherein the plant is a weed.
The claimed term “controlling”, when construed in light of paragraph [0218] of the specification, is taken to refer to the growth rate of weeds is reduced or even completely inhibited in a given time.
Therefore, the breadth of the claims pertains to reducing the growth of any weed, any plant, every amount of compound of formula III, and every compound that are encompassed by the formula III.
(2, 3, 4) The state of the prior art, the level of skill in the art, and the predictability or lack
thereof in the art: As stated in MPEP 2164.05(a), “[t]he state of the prior art is what one skilled in the
art would have known, at the time the application was filed, about the subject matter to which the
claimed invention pertains” and, as stated in MPEP 2164.05(b), “[t]he relative skill of those in the art
refers to the skill of those in the art in relation to the subject matter to which the claimed invention
pertains at the time the application was filed.”
As discussed above, the claimed invention pertains to a method of reducing the growth of any weed by contacting the plant, a part of the plant, a seed of the plant, or any area under cultivation with any amount of any herbicidal composition comprising any compound represented by Formula III:
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and any agriculturally acceptable carrier.
According to Wang et al. (Journal of Plant Interactions, 2021. Vol. 16 (1): 422-431), low and high concentration of NO2 can respectively promote and inhibit the growth of tobacco seedlings, with the latter even leading to death (see e.g., p. 427, right column, “4. Discussion” section to p. 428, left column, line 1; abstract). In addition, according to Nusslein et al. (US 4,112,107 A), a compound having the structure of
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are not phytotoxic when used in reasonable amounts and they therefore do not negatively affect the plant growth (see e.g., Col. 1, line 36-44). These cited references demonstrates that growth inhibitory effect of a compound comprising NO2, in this case, a thiazole derivatives, depends on its concentration, because the compound comprising the NO2 moiety does not necessarily reduce the growth of a plant. Furthermore, according to Schuster et al. (DD271258A1; cited in the previous Non-Final Office Action mailed on February 12, 2025), applying a thiazole of the Formula I:
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, wherein R1 is, inter alia, -NH2; R2 is, inter alia, -NO2; and R3 is, inter alia, H, to tobacco at 0.5 to 10 kg/ha is useful for controlling plant viruses (see e.g., claim 1, Formula I of the original copy; p. 3, “presentation of the essence of the invention” section; p. 4, line 1-3 and 6-7). Please note wild tobacco is a weed of almost any open situation, as evidenced by Queensland Government (“Wild tobacco” [Online]). In the present case, the cited reference teaches the thiazole of the Formula I actually protect the tobacco plant, which can be considered as a weed, against viral infection rather than inhibiting its germination; and therefore, the cited reference demonstrates that reducing weed growth by contacting any weed, any part of the weed, any seed of the weed, or any area under cultivation with any amount of any herbicidal composition comprising any compound species represented by Formula III and any agriculturally acceptable carrier is still underdeveloped.
At the time the invention was made, the relative skill of those in the art tasked with identifying
compounds exerting an herbicidal and growth regulating activity would have been high, as the ordinarily skilled artisan would have had an experience with screening techniques such as testing the substance on germinating seeds of monocotyledonous plant and dicotyledonous plant by comparing the results with a control group and a known herbicidal preparation, as evidenced by Vassilev et al. (Doklady Bolgarskoi Akademii Nauk, 1980. Vol. 33: 671-674).
Even though Applicant’s claimed invention may play a role in controlling Amaranthus palmeri by contacting the seed of said weed with a specific amount of composition comprising a specific compound species, it cannot be expected whether any effective amount of the full scope of the compound represented by Formula III can successfully control the growth of any weed species/plant species in every amount for the reasons set forth above.
(6, 7, 8) The amount of guidance given, the presence of working example and the quantitation
of experimentation required:
In view of all of the foregoing, at the time the invention was made, it would have required undue experimentation to practice the entire scope of claimed invention. In the present case, Applicant fails to establish the correlation of each and every PubChem ID Number with the chemical structure of the compound disclosed in the instant specification; therefore, the Examiner cannot determine which compound species encompassed by said Formula III are actually being tested in the working examples. According to the declaration under 37 CFR 1.132 filed on May 12, 2025, the seeds of Amaranthus palmeri were soaked with 8 mL of a 0.5 mg/mL solution comprising the compounds of instant application, DMSO and water to assess the percentage of germination inhibition, in which 3 out of 13 compound species recite therein are a compound represented by instant Formula III:
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; and they are compounds having the structure of:
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, and
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, respectively. It is noted that the herbicidal activity of other compound species against other weed species has not been disclosed. In addition, other amounts of the herbicidal composition comprising the claimed compound have not been tested; thus, one of the relative skill in the art armed with screening techniques could not reasonably predict which compound species encompassed by Formula III could apply in any amount to control the growth for each and every weed species based on the limited disclosure provided. Therefore, it would require an undue experimentation as it is highly unpredictable that contacting any weed, any part of the weed, any seed of the weed, or any area under cultivation with any amount of the claimed herbicidal composition comprising any compound species represented by instant Formula III and an auricularly acceptable carrier would, in fact, be usable across the full scope of the claimed invention to control the growth of said weed.
Accordingly, the method of controlling the growth of each and every weed by contacting the weed, any part of the weed, any seed of the weed, or any area under cultivation with any amount of the claimed herbicidal composition comprising any compound species represented by Formula III is not enabled by the instant specification. To overcome this rejection, Applicant should narrow the scope of the claims such that they bear a reasonable correlation with the disclosure.
Accordingly, claims 40-44 are rejected based on their dependency on a rejected base claim.
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 37 and 40-44 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.
Regarding claim 37,
the recitation of “the area under cultivation” shown below:
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renders the claim indefinite, because it is not clear what “area under cultivation” is being referred to by the Applicant. In order to advance prosecution, the Examiner is examining the term “the area under cultivation” to the extent that the article “the” is replaced with an article –a–, and the term “area under cultivation” is reasonably construed in light of paragraph [0199] of the specification to include any fields.
the recitation of “any combination thereof” at R3 of the claimed formula shown below:
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renders the claim indefinite, for instance, “a hydroxy group” cannot be combined with other R3 alternated group(s) because the oxygen of the hydroxy group cannot form more than two covalent bonds while still adhering to the octet rule. In addition, “hydrogen” cannot be combined with other R3 alternated group(s) because the hydrogen cannot form more than one covalent bond while still adhering to the octet rule.
The recitation of the term “a carboxylic acid derivative” at R of Formula III renders the claim indefinite, because according to the special definition provides in the specification shown below:
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, said term includes those that lacks a carboxy group. Therefore, it is not clear what chemical structures are considered to fall within the scope of “carboxylic acid derivative”. Given that the metes and bounds of the claimed term lacks clarity, one of ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention.
Accordingly, claims 40-44 are rejected based on their dependency on a rejected base claim.
Regarding claim 43, the recitation of “any combination thereof” at R3 of the claimed formula shown below:
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renders the claim indefinite, for instance, “hydrogen” cannot be combined with other R3 alternated group(s) because hydrogen cannot form more than one covalent bond while still adhering to the octet rule.
Claims 37 and 40-44 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
Regarding claim 37, the omitted elements include:
the definition of the claimed term “n” recites in the chemical structure of
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at R2 of Formula III. It is not clear what said term “n” is being referred to by the Applicant. In order to advance prosecution, the Examiner is examining said claim to the extent that n is an integer 1. Accordingly, claims 40-44 are rejected based on their dependency on a rejected base claim that is being incomplete.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 42 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 42, the recitation of “an alkyl group” fails to further limit the subject matter of R3 of Formula III set forth in the claim it depends upon, and that is claim 37. In the present case, claim 37 recites “R3 is selected from… a C1-C5 alkyl group” which is a narrower statement of the limitation; therefore, the recitation of “an alkyl group” does not further limit the “a C1-C5 alkyl group” at R3.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 37 and 40-43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beck et al. (US 4,962,102).
Beck et al. teaches a compound no. 3 having the chemical structure of:
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is a compound of the formula (I):
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(see e.g., Col. 19, line 50-68; abstract). Beck et al. further teaches in Example B, many of the compounds according to the invention exhibit a degree of protective action of between 80 and 90% against Plasmopara viticola in comparison with the untreated control at an active compound concentration of 10 ppm (see e.g., Example B, “Plasmopara test (vines) / protective”). Please note the active compound concentration of 10 ppm is an effective amount of the composition. Beck et al. further teaches in said Example, young plants (vines) are sprayed with a preparation of active compound until dripping wet, and then the plants are inoculated with an aqueous spore suspension of Plasmopara viticola after the spray coating has dried on; wherein the preparation of active compound are produced by mixing 1 part by weight of the active compound with 4.7 parts by weight of acetone and 0.3 part by weight of alkylaryl polyglycol ether, and further diluted with water to give the desired concentration (see e.g., Example B, “Plasmopara test (vines) / protective”). Please note the compound no. 3 taught by Beck et al. is a compound represented by Formula III:
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, wherein: R2 is hydrogen and R3 is chloro. Please note the preparation taught by Beck et al. comprises water as the agriculturally acceptable carrier.
Beck et al. is silent regarding “controlling plant growth… and wherein the plant is a weed”; However, “controlling plant growth… and wherein the plant is a weed” will naturally flow from the teachings of Beck et al. by spraying the effective amount of the composition comprising the same compound (compound no. 3) and agriculturally acceptable carrier (water) to vines until dripping wet. In other words, by practicing the method of Beck et al., the area where the vines are cultivated will necessarily be in contact with the composition taught by the prior art, thus, the claimed weed will also be controlled even though the prior art does not expressly teach it.
Regarding the limitation of “wherein said weed is Amaranthus palmeri” in claim 41, Beck et al. is silent regarding the claimed limitation; However, by following the method of Beck et al. set forth above, the weeds in the area where the vines are cultivated will necessarily be contacted with the composition taught by the prior art, and Amaranthus palmeri will also be controlled even though the prior art does not expressly teach it.
MPEP 2112 I states: “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
Therefore, the claimed invention is being anticipated by Beck et al.
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 37 and 40-44 are rejected under 35 U.S.C. 103 as being unpatentable over Beck et al. (US 4,962,102) as applied to claims 37 and 40-43 above, and further in view of Patani et al. (Chem. Rev. 1996. Vol. 96, 8: 3147-3176) and Duan et al. (CN 106831638 B).
Please note Duan et al. is a Chinese patent cited in the IDS filed on January 11, 2022, and a machine translation of said patent has been provided by the Applicant. The specific portions cited in this instant office action will refer to the sections of the machine translated copy provided by the Applicant.
The teachings of Beck et al. are set forth above and applied as before.
Beck et al. does not teach
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in claim 44.
Patani et al. teaches bioisosterism represents one approach used by the medicinal chemist for the rational modification of lead compounds into safer and more clinically effective agents (see e.g., “introduction” section on p. 3147). Patani et al. further teaches a group of bioisosteres elicit similar biological activity, and have been classified as either classical or nonclassical, wherein the classical bioisosteres are a series of replacements defined by Grimm’s Hydride Displacement Law and Erlenmeyer’s definition of isosteres (see e.g., p. 3148-3149). Patani et al. further teaches chlorine atom is widely used as bioisosteres to interchange with the groups defined by Grimm’s hydride displacement law (see e.g., p. 3153, right column, 2nd paragraph). Patani et al. further exemplified the replacement of hydrogen with chlorine by adapting the Grimm’s Hydride Displacement Law shown below (see e.g., Figure 14; Table 14):
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.
Duan et al. teaches a 5-substituted thiazole amide compounds of formula II:
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demonstrate plant growth regulating and herbicidal activity in plant that can be further used as plant regulator or herbicide to control weeds; wherein the dosage form of the plant growth regulator or herbicide is, inter alia, suspensions or water emulsions (see e.g., claims 1, 7-9). Duan et al. further teaches the compounds formula II includes compound having the structure of:
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(referred to herein as “Compound 2I”) (see e.g., [0247] of the machine translation is equivalent to [0244] of the original patent in chinese).
The difference between the compound no. 3 of Beck and the claimed invention lies on the hydrogen at the R3 of the claimed Formula III shown below:
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.
Although Beck et al. does not expressly teach the elected compound species, it would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to modify the compound no. 3 of Beck et al. in the composition set forth in the method above by substituting the chlorine with hydrogen based on the Grimm’s Hydride Displacement Law taught by Patani et al. One would have been motivated to do so, because Patani et al. teaches chlorine atom is widely used as bioisosteres to interchange with the groups defined by Grimm’s hydride displacement law, including hydrogen, to arrive at a compound that elicits similar biological activity. One would have reasonable expectation of success, because one would have reasonably expected that the modified compound no. 3 of Beck et al. would have successfully exert the same or substantially similar biological activity as the compound no. 3 of Beck, and therefore, by spraying a composition comprising said compound to the plant (vines) will necessarily contact the area where the vines are being cultivated, and that renders obvious the limitation of “controlling plant growth…wherein the plant is a weed”.
Furthermore, in the alternative, it would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to modify the compound no. 3 of Beck et al. in the composition set forth in the method above by substituting the thiazole core containing a chloring atom taught by Beck with thiazole core containing a hydrogen atom taught by Duan based on the structural similarities of Compound 2I of Duan et al. to arrive a compound having weed control and herbicidal properties. One would have been motivated to do so, because Duan et al. teaches the core structure of Compound 2I (
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) as follow:
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that specifically incorporates hydrogen at the 4-position of the 5-nitrothiazol-2-mine, which is equivalent to R3 of Formula III instantly claimed, has the properties of controlling weeds. One would have reasonable expectation of success, because one would have reasonably expected that by replacing the thiazole core containing a chlorine atom of the compound no. 3 of Beck et al. with the thiazole core containing a hydrogen would have successfully exert the same or substantially similar weed control and herbicidal properties as the compound 2I of Duan et al., and therefore, by spraying a composition comprising said compound to weed will successfully control the growth of said weed.
Therefore, the claimed invention is prima facie obvious to one of ordinary skill in the art at the time the application was filed, absent factual evidence to the contrary.
Response to Arguments
All rejections pertaining to claims 38-39 are moot because these claims are cancelled in view of the amendment filed on May 12, 2025.
Applicant’s arguments filed on May 12, 2025 with respect to claims 37 and 40 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant amends independent claim 37 from the recitation of “the herbicidal composition of claim 26”, in which claim 26 is drawn to a herbicidal composition comprising a compound represented by the Formula:
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or an agriculturally acceptable salt thereof to the recitation of “a herbicidal composition comprising a compound represented by Formula III:
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… and the herbicidal composition further comprises an agriculturally acceptable carrier, and wherein the plant is a weed”, which is a narrower statement of the previous limitation. Applicant newly added claims 41-44. These findings demonstrate the amendment changes the scope of the claims, and that necessitates a new search and the new ground of rejection for the reasons set forth herein.
In Summary, Applicant argues the claimed invention demonstrates unexpected results by directing attention to the data presented in Appendix A submitted in the declaration under 37 CFR 1.132 filed on May 12, 2025. Applicant further argues the compounds featuring a nitro group at position 5 of a 2-aminothiazole were found to exhibit a substantially superior herbicidal activity compared to compounds featuring at that position a substituent other than a nitro substituent.
In response, Applicant’s argument is not found persuasive. Applicant’s assertion of unexpected results is not commensurate in scope with the claimed invention. Applicant argues unexpected results are demonstrated in the Appendix A submitted in the declaration under 37 CFR 1.132 filed on May 12, 2025. According to said Appendix A, the seeds of Amaranthus palmeri were soaked with 8 mL of a 0.5 mg/mL solution comprising the compound of the present invention, DMSO and water to assess the percentage of germination inhibition, in which 3 out of 13 compound species recite therein are a compound represented by instant Formula III:
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; and they are the one shaded below:
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. Please note these 3 compound species having the structure of:
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,
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, and
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, respectively.
In contrast, claim 37 broadly recites a method of controlling plant growth, the method comprising contract any plant, any part of the plant, any seed of the plant, or any area under cultivation with a herbicidal composition comprising a compound represented by Formula III:
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and any agriculturally acceptable carrier, and wherein the plant is a weed. It is noted that Applicant only exemplified unexpected results by applying a specific amount of the herbicidal composition (8 mL of a 0.5 mg/mL solution) comprising a specific compound species represented by instant Formula III (including PubChem No. 8486, 3770038, and 321577) to the seeds of a single weed species (Amaranthus palmeri); therefore, the disclosure does not provide adequate basis for concluding that similar germination inhibition results will be obtained by contacting other compound species represented by instant Formula III with any other weed species. In addition, the disclosure also does not adequate basis for concluding that similar germination inhibition would be obtained by applying any effective amount of the herbicidal composition.
According to MPEP 716.02(d), “whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”. In the present case, Appendix A does not disclose the herbicidal property against any other weed species using any other compound species represented by instant Formula III as broadly encompassed by claim 37, thus, it is not commensurate in scope to encompass each and every compound species represented by instant formula III and the full scope of weed species. The disclosure only exemplifies the unexpected result using a specific amount of the herbicidal composition (8 mL of a 0.5 mg/mL solution) and that is not commensurate in scope to encompass any effective amount. These findings demonstrate that applicant’s assertion of unexpected results is not commensurate in scope with the claimed invention, thus, the argument is not persuasive for the reasons set forth herein. Accordingly, the new ground of rejection is applied for the reasons set forth herein.
Conclusion
No claims are allowed.
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/CHIHYI LEE/Examiner, Art Unit 1628 /JEAN P CORNET/Primary Examiner, Art Unit 1628