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 .
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.
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.
Claim(s) 1, 4-6, 8, 11-12, and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schafer et al. (WO1995/06641) in view of Koyanagi et al. (Chapter 2: Bioisosterism in Agrochemicals from Baker et al. Synthesis and Chemistry of Agrochemicals IV, ACS symposium series, 1995, pg. 15-24), Uniroyal (WO1995/25725), and CN108207997.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 4-5 and 11-12, Schafer teaches structurally very similar herbicidal compounds, e.g. 1.32, wherein applicant’s Y is Cl, Z is F, M is CH, etc. and wherein the derivative of the carboxylic acid is an ester, and W is OEt which only differ from the instantly claimed/elected compounds (e.g. compound 196, in that the instantly claimed R6 group is an NH2 group instead of the instantly claimed/elected methyl group (Table 1; abstract; claims), and Schafer broadly teaches wherein applicant’s W can be O-(C1-C6 alkyl for instance) (see entire document; claims; pg. 1, ln. 1-28; pg. 2, ln. 17-25; pg. 3, ln. 1-18; pg. 8, ln. 7-pg. 11, ln. 6 inclusive; etc.). Further Schafer discloses for example 1.33 which also differs in that R1 is Cl instead of the now required F atom and the NH2 group in place of the claimed methyl group. However, this compound also still renders obvious the claimed compounds because Schafer clearly teaches wherein F is one of three claimed/preferred R1 groups which include the claimed F. Thus, there are other examples and even the broader disclosure of Schafer which teaches numerous herbicidal compounds which are structurally very similar, specifically bioisosteric to the claimed herbicidal compounds, e.g. wherein for instance for applicant’s W, as OX5, wherein X5 is a C1-C8 alkyl, Schafer specifically teaches wherein their O-alkyl moiety at this position can be a O-C1-C6 alkyl group (See sections cited above; see entire document; claims; pg. 1, ln. 1-28; pg. 2, ln. 17-25; pg. 3, ln. 1-18; pg. 8, ln. 7-pg. 11, ln. 6 inclusive).
Regarding claim 8, Schafer teaches herbicidal compositions comprising their compounds in herbicidally effective amounts (pg. 9, 30-pg. 10, ln. 46, Table 1; abstract; claims).
Regarding claims 15-17, Schafer teaches herbicidal compositions comprising their structurally very similar herbicidal compounds to those instantly claimed which differ in that the claimed R6 is an NH2 instead of the claimed/elected methyl group and they teach combining these herbicidal active agents with one or more other herbicides in a herbicidally effective amount and/or mixing them with safeners (pg. 12, ln. 31-pg. 13, ln. 9; Table 1; abstract; claims). Schafer further teaches wherein their compositions comprise an agriculturally acceptable formulation auxiliary (pg. 9, 30-pg. 10, ln. 46; Table 1; abstract; claims).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 6 and 15, Schafer does not teach the claimed compound(s) having the claimed stereochemistry. However, as above Schafer teaches structurally similar compounds which only differ in the R6 group as discussed above which have as the X group- CX1X2, specifically the claimed/elected CHCH3 group as X which is bound to the carboxylic ester group and this X group forms a chiral center as claimed. Schafer does not designate the stereochemistry of their compounds, which would lead one of ordinary skill in the art that their compounds are a mixture of the two possible stereoisomers, R and S, and are about 50/50 mixtures of the R and S stereoisomers, e.g. a racemic mixture. However, as the structurally similar compound of Schafer just as the instant compound have a stereocenter at the claimed position and can only exist as a mixture of two stereoisomers because there is one stereocenter in the molecule it would be obvious to test the two compounds to determine which is more active as a herbicide and to isolate and/or enrich this stereoisomer to yield a more effective herbicidal composition.
Regarding claims 1, 4-6, 8, 11-12, 15-17, as discussed above Schafer teaches structurally very similar compounds which differ in their R6 group being an amino group vs. the claimed methyl group. However, this deficiency in Schafer is addressed by Koyanagi and Uniroyal.
Koyanagi teaches that it is known to use bioisosterism/bioisosteric replacements in agricultural research and that the concept of bioisosterism is/can be a useful methodology for exploring new agrochemicals (See abstract; 1st paragraph before definition). Koyanagi also teaches that the instantly claimed methyl groups at applicant’s R6 position are well-known bioisosteric replacements/classical isosteres for the amino groups at applicant’s position R6 in Schafer (see Table 1: classical isosteres, univalent isosteres).
Uniroyal teaches structurally similar herbicidal compounds to those instantly claimed, e.g. structure I, specifically Table 1 compound 28 which has the following structure
PNG
media_image1.png
200
400
media_image1.png
Greyscale
, and they specifically disclose wherein their R1 moiety which corresponds to applicant’s R6 moiety is the claimed methyl group and wherein these structurally similar compounds are also herbicidal (see structure I; pg. 5, ln. 1-pg. 6, ln. 18; Table 1; claims).
Regarding claim 18, Schafer does not specifically teach wherein the additional/other herbicide is one or more selected from the listed herbicides of claim 18. However, this deficiency in Schafer is addressed by CN108207997.
CN108207997 teaches that the combination of other uracil-phenyl containing herbicides with glyphosate were known in the art to be effective herbicidal combinations (See abstract).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have substituted the amine group at applicant’s R6 for the claimed and elected methyl group in order to form the claimed elected herbicidal compound and the compounds of the instant claims because structurally very similar bioisosteric herbicidal compounds were already known in the art, specifically the compounds of Schafer as discussed above only differ from the claimed/elected compound in that they have as applicant’s R6 an amino group instead of the instantly claimed methyl group. However, it would have been obvious to substitute a methyl group for the amino group in Schafer because the substitution of a methyl for an amino group is a classical bioisosteric replacement for agrochemicals as is taught by Koyanagi and further because Uniroyal specifically teaches structurally very similar compounds to those instantly claimed which can have at applicant’s position R6 a methyl group. Thus, one of ordinary skill in the art would be motivated to substitute the amino group in Schafer for the claimed methyl group taught by Uniroyal and rendered obvious via Koyanagi in order to form additional compounds having herbicidal activity as would be expected by one of ordinary skill in the art based on the teachings of Koyanagi and Uniroyal.
It would have been obvious to one of ordinary skill in the art to combine the claimed herbicidal compounds which are rendered obvious/taught by the combination of Schafer, Koyanagi, and Uniroyal with the claimed glyphosate because it is known in the art to combine herbicidal agents together in order to form effective herbicidal combinations and because it was already known in the art to combine other uracil-phenyl containing herbicidal compounds with glyphosate it would have been obvious to combine the claimed compounds as taught/rendered obvious by Schafer, Koyanagi, and Uniroyal with glyphosate based on the teachings of CN108207997 in order to form additional effective uracil-phenyl herbicide combinations.
Further, it is known, “It 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 reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence 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, 4-6, 8, 11-12, and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18290758 (‘758). ‘758 teaches the instantly claimed compound
PNG
media_image2.png
138
154
media_image2.png
Greyscale
which anticipates claims 1, 4-6, 11-12, and also anticipates the claimed compositions comprising herbicidally effective amounts of the above instantly claimed active agent in the composition of claims 8 and 15, and ‘758 further teaches wherein their herbicidal compositions can comprise other herbicides in effective amounts and formulation auxiliaries which reads on instant claims 16-17 and can further comprise the instantly claimed additional herbicides of claim 18. It would be obvious to form the claimed compounds and compositions when looking to the prior art because the instantly claimed and preferred herbicide
PNG
media_image2.png
138
154
media_image2.png
Greyscale
was known in the art (to be a herbicide) and was known to be combined with other known herbicides including those instantly claimed in effective amounts. Thus, one of ordinary skill in the art would conclude that the instantly claimed compounds and composition are anticipated and/or rendered obvious by copending 18290758 (‘758) for the above reasons.
Claims 1, 4-6, 8, 11-12, and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 13 of copending Application No. 19128417 (‘417). ‘417 teaches the instantly claimed compound
PNG
media_image2.png
138
154
media_image2.png
Greyscale
which anticipates claims 1, 3-6, 11-12, and also anticipates the claimed compositions comprising herbicidally effective amounts of the above instantly claimed active agent in the composition of claims 8 and 15, and ‘417 further teaches wherein their herbicidal compositions can comprise other herbicides in effective amounts and formulation auxiliaries which reads on instant claims 16-17 and can further comprise the instantly claimed additional herbicides of claim 18. It would be obvious to form the claimed compounds and compositions when looking to the prior art because the instantly claimed and preferred herbicide
PNG
media_image2.png
138
154
media_image2.png
Greyscale
was known in the art and was known to be combined with other known herbicides including those instantly claimed in effective amounts. Thus, one of ordinary skill in the art would conclude that the instantly claimed compounds and composition are anticipated and/or rendered obvious by copending 19128417 (‘417) for the above reasons.
Claims 1, 4-6, 8, 11-12, and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6 of copending Application No. 19155661 (‘661). ‘661 teaches the instantly claimed compound
PNG
media_image2.png
138
154
media_image2.png
Greyscale
which anticipates claims 1, 3-6, 11-12, and also anticipates the claimed compositions comprising herbicidally effective amounts of the above instantly claimed active agent in the composition of claims 8 and 15, and ‘661 further teaches wherein their herbicidal compositions can comprise other herbicides in effective amounts and formulation auxiliaries which reads on instant claims 16-17 and can further comprise the instantly claimed additional herbicides of claim 18. It would be obvious to form the claimed compounds and compositions when looking to the prior art because the instantly claimed and preferred herbicide
PNG
media_image2.png
138
154
media_image2.png
Greyscale
was known in the art and was known to be combined with other known herbicides including those instantly claimed in effective amounts. Thus, one of ordinary skill in the art would conclude that the instantly claimed compounds and composition are anticipated and/or rendered obvious by copending 19155661 (‘661) for the above reasons.
Claims 1, 4-6, 8, 11-12, and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-8, 12-13 of copending Application No. 19163310 (‘310). ‘310 teaches the instantly claimed compound
PNG
media_image2.png
138
154
media_image2.png
Greyscale
which anticipates claims 1, 3-6, 11-12, and also anticipates the claimed compositions comprising herbicidally effective amounts of the above instantly claimed active agent in the composition of claims 8 and 15, and ‘310 further teaches wherein their herbicidal compositions can comprise other herbicides in effective amounts and formulation auxiliaries which reads on instant claims 16-17 and can further comprise the instantly claimed additional herbicides of claim 18. It would be obvious to form the claimed compounds and compositions when looking to the prior art because the instantly claimed and preferred herbicide
PNG
media_image2.png
138
154
media_image2.png
Greyscale
was known in the art and was known to be combined with other known herbicides including those instantly claimed in effective amounts. Thus, one of ordinary skill in the art would conclude that the instantly claimed compounds and composition are anticipated and/or rendered obvious by copending 19163310 (‘310) for the above reasons.
These are provisional nonstatutory double patenting rejections.
Response to Arguments/Remarks
Applicant’s amendments to the claims are appreciated in effort to make the instantly claimed compounds more commensurate in scope with applicant’s previously argued unexpected results. Applicant’s amendments to the claims have overcome the previous 112 rejections which are hereby withdrawn.
Applicant’s arguments with respect to the 103 rejection of record have been fully considered but are not persuasive at this time. Applicants first argue that they disagree with the applicant’s rejection in using the Schafer reference in view of Koyanagi and Uniroyal because they have unexpected results and they believe these results are commensurate in scope with the instant claims. Applicants argue that the compounds of Schafer are different from those instantly claimed because they have an amino group at applicant’s R6 whereas the instant claims require an alkyl, etc. at this position, specifically a methyl group. The examiner respectfully points out that the examiner never stated that Schafer teaches the instantly claimed compounds. The examiner asserted that the compounds of Schafer are structurally similar to those instantly claimed and the examiner specifically notes that the compounds of Schafer, specifically the cited examples in Schafer do differ by the presence of the amino group which is expressly pointed out in the rejection of record as presented above which makes the compounds of Schafer bioisosteres of the claimed compounds for the reasons set forth above. Applicants argue that the office recognizes the unexpected increase in activity in their compounds than the closest herbicidal compound of Schafer and that they have amended their compound scope to be commensurate in scope with their unexpected results. The examiner disagrees that the amended claims are commensurate in scope with applicant’s unexpected results. Applicants have demonstrated that exactly one of the instant compounds is significantly better than the bioisosteric equivalent compound of Schafer. However, Schafer discloses many exemplified compounds and broadly discloses within their taught/claimed compound scope even more bioisosteric/structurally similar herbicidal compounds which are structurally similar/specifically bioisosteric to the instantly claimed herbicidal compound scope, and its not clear from applicant’s one tested example that these improved effects would be observed across the entire scope of herbicidal compounds claimed which are structurally similar, specifically bioisosteric to the herbicidal compounds of Schafer especially in the cases where the terminal ester is a significantly longer chain length than methyl for instance, e.g. C6, etc.
Applicants further argue that the other compounds cited by the examiner, e.g. 1.41 would require multiple changes to get to the claimed compound. The examiner respectfully points out that multiple changes does not mean the instantly claimed compounds are not obvious when taken in view of Schafer and the combined references. Specifically, the changes 1.41 would require now based on applicant’s amendments is for the Z group to be changed from Cl in Schafer to now claimed F, and the bioisosteric change of the NH group to the claimed methyl group which is discussed above to be an obvious change to make. The Z group from Cl to F would also be an obvious change to make to form the claimed compounds firstly because Schafer clearly teaches that their Z is not limited to Cl but can be the claimed F, in fact Schafer only claims their R1, applicant’s Z to be H, F, or Cl and as such readily envisions that their Cl groups can be changed to the now required F atom. Thus, this argument is not persuasive at this time especially in light of applicant’s unexpected results still not being commensurate in scope with applicants claims for the reasons which are discussed above.
Specifically, that applicant’s argued data is still not commensurate in scope with the instant claims. Applicant’s claims are not merely directed to their tested compound 194, but are in fact still directed to a much broader scope of compounds and it is not clear that this entire scope of compounds would have their argued unexpectedly higher herbicidal effects than the compounds of Schafer because for instance applicant’s did not do a comparison testing of any of the close examples in Schafer in their Table 2 which would have clearly demonstrated if the Schafer compound(s) were inferior to applicant’s bioisosteric compounds for herbicidal activity. Thus, the examiner still respectfully disagrees that one of ordinary skill in the art would not look to the combined teachings of Schafer, Koyanagi, and Uniroyal in order to develop the claimed compounds to form additional herbicidal compounds and to screen these compounds for herbicidal activity since both Schafer and Uniroyal teach that their compounds exhibit herbicidal activity which is the same type of activity instantly claimed.
Applicants then argue that the dependent claims are also non-obvious for the same reasons set forth above. The examiner respectfully disagrees for the same reasons which are discussed above and incorporated herein at this time.
All of the double patenting rejections are with respect to applications which were later filed and should be withdrawn when the instant claims are allowable. The examiner will maintain the double patenting rejections but agrees that the applications are later filed. As no actual arguments to the double patenting rejections were presented these rejections are maintained at this time.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new/revised 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIN E HIRT/Primary Examiner, Art Unit 1616
