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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/10/25 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: applicants have reintroduced previously deleted limitations e.g. the –(CH2)r- within the definition of X without underlining to show the added material/limitations to the claim(s). Applicants are reminded of the proper way of making amendments.
Claim 18 is objected to because of the following informalities: the claim contains some terms which are not proper nouns or abbreviations which should not be capitalized, e.g. Synthetic (see grouping (11)).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1, 3-6, 8, 11-12, 15-18 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.
Claim 1 is rejected because applicants have reintroduced the –(CH2)r- group within the definition of X but have not defined r anywhere in the claim and as such it is unclear what applicant’s intend r to represent. Based on the specification the examiner is interpreting r to be from 2-6.
Claims 3-6, 8, 11-12, 15-18 are also rejected because they depend either directly or indirectly from claim 1 and do not resolve the ambiguities with respect to that claim.
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, 3-6, 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, 3-5 and 11-12, Schafer teaches structurally very similar herbicidal compounds, e.g. 1.32, wherein applicant’s Y is Cl, Z is F, etc. and wherein the derivative of the carboxylic acid is an ester, and W is OMe or OEt, or compounds 1.30, 1.33, 1.41-1.42, 1.44-1.45 all of 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).
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 1-6, 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
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, 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 compounds of the instant claims because structurally very similar bioisosteric 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, 3-6, 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
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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 ‘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
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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 18290758 (‘758) for the above reasons.
Claims 1, 3-6, 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
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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
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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, 3-6, 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
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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
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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, 3-6, 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
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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
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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 have overcome/rendered moot the previous claim objections.
Applicants arguments and data have prompted the revised grounds of rejection presented herein and new grounds of rejection with respect to double patenting in this office action which is allowed in this new round of prosecution beginning with this RCE.
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. Applicants first 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 1.29 and 1.32 do differ by the presence of the amino group which is expressly pointed out in the rejection of record as presented above.
Applicants argue the Schafer reference singly and that Schafer does not point one of ordinary skill in the art to substitute their amino group at applicant’s position R6 for the instantly claimed groups, specifically the claimed methyl group. The examiner respectfully points out that the rejection is not solely over Schafer. The rejection includes secondary references, specifically Koyanagi and Uniroyal. Applicant’s argue that it would not have been obvious to use the known bioisosteric replacements of a methyl group for an amino group as taught by Koyanagi because the teachings of bioisosteres is broad and unspecific and that the outcome of the substitution may vary when different parts of the molecules are varied. The examiner agrees that the outcomes of substitutions on molecules can vary. However, the legal standard for an obviousness rejection is not complete certainty of success and/or an absolute expectation of success. It is a reasonable expectation of success. The courts have previously determined that, “Conclusive proof of efficacy is not required to show a reasonable expectation of success.” OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375, 1385, 2019 USPQ2d 379681 (Fed. Cir. 2019) ("To be clear, we do not hold today that efficacy data is always required for a reasonable expectation of success. Nor are we requiring ‘absolute predictability of success.’"). The courts have also previously determined that, “Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In rePayne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979), and that (claimed and prior art compounds used in a method of treating depression would have been expected to have similar activity because the structural difference between the compounds involved a known bioisosteric replacement); In reDillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990). In the instant case, the difference between the compounds of Schafer and the instantly claimed compounds is a classical bioisostere, that is specifically a well-known/routine bioisosteric replacement of an amino group in Schafer for the claimed methyl group. Specifically, as discussed above 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).
Applicants then argue that this amino group is part of the backbone of the claimed compounds and of the compounds in Schafer and would not have been obvious to change. The examiner respectfully disagrees because this position was demonstrated by Uniroyal to be able to be altered and still achieve the same/similar biological activity as the compounds of Uniroyal have H at applicant’s position R6 and still achieve herbicidal compounds. Thus, clearly this is a position in the claimed phenyl uracil herbicides which can be altered/modified to lead to additional herbicidal compounds, and as such is not a backbone position of the molecule which cannot be altered as is asserted by applicants. Applicant’s then argue that their compounds exhibit better herbicidal activity than the compounds of Schafer having the amino group at applicant’s position R6.
Applicants then point to their data in table 2 and argue that their compounds exhibit unexpectedly higher herbicidal activity. The examiner respectfully points out that while the herbicidal activity is different applicants have not demonstrated that this increase in herbicidal activity of the claimed compounds is actually an unexpected increase in herbicidal activity. Applicants argue that this argument by the examiner is incorrect because they have provided a declaration from Junpeng Wang filed 11/10/25 which indicates that the weed growth of compound 194 of the instant application and compound 1.29 of Schafer (Control E in the present application) have been examined and compared. They point out that this data shows that compound 194 is at least 2x more active than the Control E compound of Schafer and multiple times more active than a different comparison compound from Uniroyal. The examiner agrees that this data does show that the instantly claimed compound 194 is unexpectedly more active than the closest herbicidal compound of Schafer. However, there are still issues with respect to applicant’s data. Specifically, that this data is not commensurate in scope with the instant claims. Applicant’s claims are not merely directed to compound 194, but are in fact directed to a much broader scope of compounds and it is not clear that this entire scope of compounds would have the argued unexpected effects. For instance there are even other examples in Schafer which are still bioisosteres of the claimed and are now cited and have been added to the revised/updated grounds of rejection above, and it is not clear that all of applicant’s claimed compounds which are a very broad scope would exhibit the marked increase in activity over the compounds of Schafer that applicants observe with their compound 194 as is asserted by applicants, and as such the examiner will further address the provided declaration separately below.
Because applicants data to support their unexpected results as presented in their response is not commensurate in scope with the instant claims, the examiner maintains that it would still have been obvious to one of ordinary skill in the art to vary the substituents at applicant’s position R6/Schafer’s -NH2 group to be the claimed methyl group which is a classical bioisosteric replacement since these would be expected to lead to compounds which exhibit herbicidal activity based on the combined teachings as discussed above. In the instant case, applicants have not made it clear that their compounds would exhibit the argued unexpected results over the very broad scope of compounds instantly claimed e.g. across the different Q groups and across the scope of X5 substituents, etc. that are instantly claimed. Thus, the examiner 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.
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.
Declaration under 1.132
Junpeng Wang provided a declaration under 1.132, filed 11/10/25. The Declaration meets the formal requirements. In the most relevant part, the Declaration presents data that demonstrates that the instant compound 194 is at least twice as active as the closest prior art compound 1.29 from Schafer (which is Control E in the present application) and is multiple times more active than a comparison compound from the prior art Uniroyal.
A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the
Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d
1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than
merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5)
whether the prima facie case is sufficiently strong that allegedly superior results are insufficient
to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed.
Cir. 2007)). The relevant criterion here is No. 3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)). The examiner has carefully reviewed the Declaration, including the data presented in the Declaration.
In the most relevant part of the included declaration demonstrates that the instantly claimed compound 194 is surprisingly/unexpectedly more active herbicidally than the closest comparison compound of Schafer as the examiner noted above. However, while this compound is unexpectedly more active as a herbicide than the prior art, the instant claims are much broader in scope than compound 194 which was the only compound applicants provided this unexpected herbicidal activity for. Thus, as noted above the results are not at all commensurate in scope with the instantly claimed compounds and these results do not mean that the other structurally similar/bioisosteric compounds of Schafer as noted in the revised grounds of rejection above do not still render the instantly claimed compounds obvious because applicants have not made it clear that the argued unexpected increase in herbicidal activity occurs across the broad scope of the instantly claimed compounds. Thus, the examiner is not persuaded by applicant’s evidence at this time, because while the instantly claimed compound 194 does exhibit unexpected activity, these results are not at all commensurate in scope with the broad scope of imino aryl herbicidal compounds instantly claimed which are still similar and bioisosteric to other compounds found in the prior art Schafer in view of the secondary references as discussed above.
Conclusion
No claims are allowed.
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.
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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.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616