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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/07/2026 has been entered.
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 14, 16 and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amendments to claim 14 limit Formula (I) R1 and R2 functional groups to unsubstituted and substituted -C1-C10alkyl groups, wherein R1 and R2 are described as “selected from […] -C1-C10alkyl that is substituted with […]”. The Specification as originally filed describes the alternative compound of Formula (IIa) which appears to describe the claimed description of the R2 group. However, the claim presently recites a compound of Formula (I). Furthermore, there is no support in the Specification as originally filed for a compound of Formula (I) wherein R1 is “selected from […] -C1-C10alkyl that is substituted with” the groups which are recited in claim 14. The claim limitation “substituted with” (as it relates to the R1 group of claim 14 as presently recited) is interpreted as wherein the parent hydrocarbon atoms of the -C1-C10alkyl are replaced (e.g. substituted) with the hydrocarbon substituents listed following “one or more groups selected from”.
Claims 14, 16 and 18 are 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 a method for reducing nitrification in soil comprising treating the soil with a compound of Formula (I), wherein Formula (I) is exemplified by Compounds 1-23 as described in the Specification, does not reasonably provide enablement for the Formula (I) where R1, is represented by the claimed substituted substituents. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Attention is directed to In re Wands, 8 USPQ 1400 (CAFC 1988) at 1404 (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) at 547 the court recited eight factors:
1) The nature of the invention:
The instant invention is drawn to a method of treating soil with a chemical compound to reduce nitrification in soil as described in independent claim 14.
2) The state of the prior art:
As the state of art recognizes, 1,2,3-triazoles are synthesized using copper-catalyzed click chemistry. Moghaddam (Chemistry Select, 2018) teaches that a significant number of efforts have been made on the discovery and development of more efficient methodology to overcome the problem attributed to the high activation energy of azides to alkynes cycloaddition. Triazoles are described as a valuable class of heterocyclic compounds in the area of material science and drug design such as anticancer, anti-HIV and anti-allergic agents. [Modhaddam, pg. 2586, 1st col.].
A small focused collection of 1,2,3-triazoles are useful as antitubercular agents [Ghiano, European Journal of Medicinal Chemistry, 2017], compounds useful for the treatment of visceral leishmaniasis and Chagas disease [Porta, MedChemComm, 2017], and broad antibacterial, antifungal, and anticancer compounds [Wen, Nucleosides, 2016].
Generally, art acknowledges that substituted 1,2,3-traizoles are useful in pharmaceuticals. Furthermore, a small class of substituted compounds are synthesized and report. The synthesis and use of 1,2,3-triazoles in soil for the reduction of nitrification is unknown.
3) The relative skill of those in the art:
The relative skill of the those in the art is high. A definite material selection including reactant, solvent, catalyst, and synthetic route including mechanism, synthetic parameters (temperature, pressure, etc.) are required to obtain the claimed compound of Formula (I) for subsequent use in soil treatment to reduce nitrification in soil
4) The predictability of the art:
There is a high degree of unpredictability in the synthesis and use of substituted 1,2,3-triazols. Substituted 1,2,3-triazoles find application in medicinal and pharmacological fields due to their broad biological activities. Variation of the substitution pattern at the R1 and/or R2 position by chemical synthesis requires different reaction pathways and the resulting variation of substitution would change the operability and efficiency of the nitrification inhibition ability. No prior art predicts there is reasonable expectation of success to product or obtain the claimed compound of Formula (I). No prior art in the field of reducing nitrification in soil has made a suggestion to establish reasonable expectation of using the claimed compound of Formula (I).
5) The breadth of the claims:
Claim 14 recites a generic Formula (I) 1,2,3-triazole core having additional independently selected substituents R1 and R2 which including substituted or unsubstituted repeating hydrocarbon units.
The breadth of the claimed application is broad and would not enable a person skilled in the art to make and use the claimed invention without undue experimentation. The variables of Formula (I) being “substituted with” one or more chain groups encompasses hundreds of thousands, if not millions, of possible compounds.
6) The amount of guidance/working examples:
The claims cover all compounds within the Formula (I) having the characteristic property of being nitrification inhibitors whereas the description only provides support for a fraction of these compounds. The Specification describes the synthesis of compounds (1) – (23) [pgs. 32-57] which represent a very small fraction of the compounds covered by the claimed Formula (I).
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. The specification only provides examples of nitrification inhibition by application of compounds (1) – (27) to soil but does not provide e sufficient examples of how to make and use the myriad of compounds represented by the claimed Formula (I).
One of ordinary skill in the art would not have the level of knowledge and skill to achieve the claimed invention without undue experimentation since the claimed invention does not specify the substituted R groups.
7) Quantitation of undue experimentation.
The specification describes General Procedure A using copper(I)-catalyzed azide-alkyne cycloaddition to synthesize 1,4-disubstituted triazoles [section 1.1], General Procedure B using Thermal Huisgen 1,3-dipolar cycloaddition to synthesize 1,4,5-trisubstituted triazole [section 1.3] and also describes synthesis of compounds using modified prior art procedures [section 1.10], and alternative prior art procedures [1.16; 1.24].
The varied synthesis routes suggest that the compounds of Formula (I) are not obtained from a well-known and repeatable procedure. There is no disclosure in the present application allowing the person skilled in the art to manufacture the compound of Formula (I) via a repeatable synthesis reaction. Since insufficient teaching and guidance have been provided in the specification, one of ordinary skill in the art, even with high degree of skill, would not be able to treat soil with the compound of Formula (I) because Formula (I) is not reliably obtained through a known or demonstrated synthesis process.
Further, it would be necessary to first synthesize and then screen each candidate compound to determine whether it has soil nitrification effects.
The amount of direction for material selection is not sufficiently provided for to enable a person skilled in the art to make and use the claimed invention without undue experimentation.
Therefore, the instant specification is insufficient, coupled with information known in the art, to inform one of ordinary skill in the art how to make and use the claimed invention without undue experimentation. The specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation. See MPEP §2164.01
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claims 14 and 18 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Melander et al. (US Patent Publication No. 2013/0315874 A1).
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In regard to claim 14, Melander et al. teach a process comprising treating soil (e.g. applying to the media in which a plant is grown including soil) [0005; 0060] with a compound of Formula (III)(a) [0005]
[0166] which encompasses the structure of claimed compound Formula (I) wherein R1 and R2 (corresponding to Melander’s R6 and R9) is an alkyl group, wherein R3 is H [0167]. Melander does not explicitly disclose wherein the method of treating soil is for reducing nitrification in soil, however, application of the compound of Formula (I) as described by Melander is considered to produce a nitrification reduction effect in soil as described by Applicant’s Specification. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that 1,2,3-triazoles are effective nitrification inhibitors of low volatility.
In regard to claim 18, Melander et al. disclose the method according to claims 14 and 15, wherein the soil is co- treated with a fertilizer (e.g. the active compounds can be applied simultaneously with fertilizers) [0286].
Response to Arguments
Applicant's arguments filed 01/07/2026 have been fully considered but they are not persuasive.
Applicant argues (pg. 10, 4th para.) that with the aid of the specification, a person of ordinary skill in the art would readily understand how to recognize and synthesize nitrification inhibiting compounds across the claimed genus with only routine experimentation. This argument is not persuasive. There could be hundreds of thousands, if not millions of compounds, made by varying the R1 and R2 substituent groups of the claimed Formula (I) and the number of compounds that would exhibit the claimed functional effects (e.g. reducing nitrification in soil) would be significantly smaller. Thus, practicing the full scope of the claims would have required excessive experimentation, even if routine. The specification is silent on how to structurally modify the generic Formula (I) to yield a compound having the recited functional effect. Thus, practicing the full scope of the claims would require synthesizing and screening each of at least tens of thousands of compounds which would have required undue experimentation to determine which compounds in the claimed genus, with at least tens of thousands of candidates, would have the required functionality.
Applicant’s arguments (pg. 11) with respect to rejection of the claims based on Melander’s teaching of Formula (II)(a)(2)(B) 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. The present claims are anticipated and/or made obvious in view of Melander’s Formula (III)(a) as presented above.
Conclusion
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/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731 January 22, 2026