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 .
Status of the Claims
Per Applicant’s amendment to the claims, submitted on 10/23/2025, claims 1, 5-6, and 14 are amended, and claims 7 and 13 are canceled. Claims 8-12 were previously withdrawn as being directed towards a non-elected invention, however have been rejoined (see Elections/Restrictions). Currently, claims 1-6, 8-12, and 14 are pending in the instant application.
In the previous Office Action submitted on 07/24/2025, claims 1-6 and 14 were indicated as allowable. Claims 1-6 and 14 remain in condition for allowability, however, claim 14 requires new grounds of rejection and is no longer considered as allowable over the prior art.
Election/Restrictions
The Restriction Requirement is hereby withdrawn. Accordingly, claims 8-12 are hereby rejoined and pending examination.
Duplicate Claim Warning
Applicant is advised that should claim 9 be found allowable, claim 8 will be objected to under 37 CFR 1.75, or vice versa, as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Specification Objections - Withdrawn
Objection to Specification:
In light of Applicant’s amendment to the specification, the objection is hereby withdrawn. The previously indicated browser executable code has been removed.
Claim Objections – Withdrawn
Objections to claims 1, 5-6, and 14:
In light of Applicant’s amendment to the claims, the objections are hereby withdrawn. Amendment to the claims has ameliorated the previously indicated minor formalities.
Claim Objections – New Grounds of Objection
Claim 10 is objected to because of the following informalities: Wording. Claim 10 recites “A method according to claim 9”. As the instant claim seeks to further limit a parent claim, the word “The” rather than “A” would be more appropriate to establish antecedence. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: Grammar. The current recitation of the entirety of claim 10 is unclear due to the lack of grammatical structure differentiating the recited Markush groups. The claim must be restructured for clarity.
Claim 12 is objected to because of the following informalities: Grammar. The claim recites “wherein said process comprising at least one of the following”. The term “comprising” should read “comprises” for grammatical accuracy. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Formatting. The instant claim recites “steps (a) to (m)” using open and closed parentheses, however the listings of the lettered steps in the claim are in single closed parenthesis format (i.e., a), b), c), etc.). Appropriate correction is required.
Claim Rejections - 35 USC § 101 – New Grounds of Rejection
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to a “use” rather than process, machine, manufacture, or composition. See MPEP 2173.05(q):
"Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 "). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: "The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid."
Claim Rejections - 35 USC § 112 Second Paragraph – Withdrawn
Rejections of claims 1 and 7:
In light of Applicant’s amendment to the claims, the objections are hereby withdrawn. Claim 1 has been amended to clarify carbon attachment points with regards to variable R9. Claim 7 has been canceled.
Claim Rejections - 35 USC § 112 Second Paragraph – New Grounds of Rejection
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 8, 10-12 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 8 is indefinite for reciting “the fungi or the materials, plants, plant parts, locus thereof, soil or seeds to be protected against fungal attack” (underlined for emphasis) because a person of ordinary skill in the art would not reasonably be able to understand the metes and bounds of the claim. The current recitation and use of the word “the” establishes improper antecedence within the claim.
Claim 8 is indefinite for reciting the phrase “phytopathogenic microorganisms” because a person of ordinary skill in the art would not reasonably be able to understand the metes and bounds of the claim. The instant claim provides a method for “controlling or preventing phytopathogenic microorganisms”, however also recites administration to subjects “to be protected against fungal attack”. Under broadest reasonable interpretation, phytopathogenic organisms encompass not only fungi, but also other pathogens such as, but not limited to, phytopathogenic bacteria which may not necessarily contribute to a “fungal attack”.
Claim 10 is indefinite for reciting the phrase “various plants” because a person of ordinary skill in the art would not reasonably be able to understand the metes and bounds of the claim. The term “various plants” constitutes indefinite language as the scope of such plants cannot be determined.
Claim 10 is indefinite for reciting the phrase “in particular” because it constitutes indefinite language. Similar to the use of the phrases “for example” or “such as”, the use of the phrase “in particular” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 11 is indefinite for being directed to non-statutory subject matter as a “use” claim. Accordingly, a person of ordinary skill in the art would not reasonably understand the metes and bounds of the claim.
Claim 12 is indefinite for reciting the following structures 4 and 23:
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Because a person of ordinary skill in the art would not reasonably be able to understand the metes and bounds of the claim. As can be seen in the provided structures, the bottom most nitrogen is attached to the main structure in such a way wherein the bond is illegible. For the purpose of examination, the connection point will be interpreted to be a double bond.
Claim 12 is indefinite for reciting “Q is Q is” in step a), because a person of ordinary skill in the art would not reasonably be able to understand the metes and bounds of the claim. It is unclear if the indicated recitation is an inadvertent repeat or a typographical error intending to specify a Q subspecies (i.e., Q1/Q2/Q3 etc.). For the purpose of examination, the recitation will be interpreted as an inadvertent repeat.
Claim 12 is indefinite for reciting, in step a) and step b), wherein variable Q is H, because a person of ordinary skill in the art would not reasonably be able to understand the metes and bounds of the claim. Variable Q is established in claim 1 as being selected from structures Q1-Q12. The recitation of the instant claim provides improper antecedence by broadening the limitation of variable Q.
Claim Rejections - 35 USC § 112 First Paragraph – Withdrawn
Rejections of claims 1-7:
In light of Applicant’s amendment to the claims, the objections are hereby withdrawn. Claim 1 has been amended to remove the recitation of N-oxides, metal complexes, polymorphs, and isomers. Claim 6 has been amended to specify pesticidally active ingredients rather than any generic active ingredients.
Claim Rejections - 35 USC § 102 – New Grounds of Rejection
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.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pouliot (WO 2017/162868).
Claim 12 recites a process for the synthesis of a compound of formula (I) of claim 1 wherein the process comprises at least one of steps (a) to (m).
In particular, the teachings of Pouliot are relevant to step a) of the instant claim which recites the following:
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Pouliot teaches oxadiazole compounds, methods of use of said compounds as fungicides, and methods of making said compounds. Among the compounds taught by Pouliot is the following compound of Example 5 (page 79):
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Pouliot indicates a method of synthesis of the above compound wherein 4-(3,5-dimethylpyrazol-1-yl)benzonitrile (represented by the left structure) is combined with hydroxylamine hydrochloride to yield 4-(3,5-dimethylpyrazol-1-yl)-N'-hydroxy-benzamidine (represented by the right structure):
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4-(3,5-dimethylpyrazol-1-yl)benzonitrile is a compound of formula 3 wherein:
A is phenyl
A5 is N
A6, A7, and A8 are each C
Q is H
R12 is C1 alkyl
n is 2
4-(3,5-dimethylpyrazol-1-yl)-N'-hydroxy-benzamidine anticipates a compound of formula 4 wherein:
A is phenyl
A5 is N
A6, A7, and A8 are each C
Q is H
R12 is C1 alkyl
n is 2
Accordingly, the method taught by Pouliot anticipates each limitation of at least step a) of the instant claim.
Claim Rejections - 35 USC § 103 – New Grounds of Rejection
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.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pouliot (WO 2017/162868).
Claim 14 recites a compound of Formula (III):
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Pouliot teaches oxadiazole compounds, methods of use of said compounds as fungicides, and methods of making said compounds. Among the compounds taught by Pouliot is the following compound of Example 5 (page 79):
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The above compound meets the following limitations of the instant claim:
R1 is C1 haloalkyl
A is
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A1-A4 are each CH
A5 is N
A7 is CH
The compound does not meet the limitations with regards to A6 and A8 when each of these variables are CR9. While Pouliot does not explicitly teach a compound of Formula (III), it would have been obvious to arrive at such a compound from the teachings of Pouliot because the compound of Pouliot is a bioisosteric analog of a compound of Formula (III).
As discussed above, the teachings of Pouliot are directed towards oxadiazole compounds and use of said compounds as fungicides. The indicated compound of Pouliot only differs from a compound of Formula (III) in regards to the substitutions present on the A6 and A8 positions. A person of ordinary skill in the art would readily recognize that at least the methyl groups present on the compound of Pouliot would be obvious candidates for bioisosteric replacement; for example, replacement with halogen or haloalkyl species. Such replacements are generally well understood in the art of drug discovery and are frequently used to generate analogs having similar biological activity to a lead compound while imparting other desired physiochemical properties such as differences in metabolism or altered half-life. Given the teachings of Pouliot and the function/structure of the disclosed compound, there would be a reasonable expectation that such a bioisosteric analog of said compound would retain utility as a fungicide.
Accordingly, it would have been prima facie obvious at the time of invention for a person of ordinary skill in the art to arrive at the claimed compound.
Allowable Subject Matter
As indicated in the previous Office Action, claims 1-6 remain in condition for allowance for the same reasons as previously iterated. Claim 9 is allowable pending amendment of dependent claim 10 (see objections and rejections of claim 10), as a method of use of the novel compound of claim 1. Pouliot remains the closest prior art with regards to the aforementioned claims because it teaches oxadiazole compounds and methods of use of said compounds as fungicides.
Conclusion
Claims 1-6 and 9 are in condition for allowance.
Claims 8, 10-12, and 14 are rejected.
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/ERIC TRAN/Examiner, Art Unit 1629