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 .
DETAILED ACTION
This Office action is responsive to Applicant's Remarks/Amendment after Non-Final Rejection, filed Jan. 20, 2026. As filed, claims 1-10, 12-17 are pending of which claims 1-6 are amended. Claim 11 is cancelled. Claims 8-10, 12-17 are withdrawn form consideration.
A complete response to this Office Action should include cancellation of non-elected subject matter or other appropriate action.
Affidavit or Declaration Under 37 CFR 1.132
The declaration under 37 CFR 1.132 filed 01/20/2026 by Hiroto Tamashima is sufficient to overcome the 103 rejection of claims 1-7 over US 5,286,894, by Bushnell et al. Feb. 15, 1994 as set forth in the Office action mailed 10/21/2025. Applicant’s experimental data and the discussion of the unexpected results on page 1-4 of the Declaration, have been fully considered and these were found persuasive.
Rejections Withdrawn
Applicants’ amendment, have been fully considered and are entered. The status for each rejection and/or objection in the previous Office Action is set out below.
1. The rejection of claims 1-7 under 35 U.S.C. § 112(b) is withdrawn in view of claim amendments to delete parenthesis.
2. The rejection of claims 1-7 under 35 U.S.C. § 103 over US5,286,894, by Bushnell et al. Feb. 15, 1994 is withdrawn in view of claim amendments and Declaration submitted by Applicants.
3.The objection to claims is maintained.
The following are modified or new grounds of rejections necessitated by Applicants’ amendment, filed on 01/20/2026 wherein the limitations in pending claims as amended now have been changed. The limitations in the amended claims have been changed and the breadth and scope of those claims have been changed.
Claim Objections
Claims 1-7 are objected to for reciting improper Markush language: the recitation in claim for definition of variables of Markush formula “selected from” should be changed to “selected from the group consisting of”. See MPEP 803.02. “A Markush-type claim recites alternatives in a format such as "selected from the group consisting of A, B and C."
Claim 1 is objected to because of the following informalities: the chemical structures in claim 1 should be replaced with more legible drawing.
Appropriate correction is required
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 1-5 and 7, are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US 8822521, Sep.2,2014 by Taggi et al. (cited in PRO-892 attached herewith).
These ‘521 patent teaches on Table 5 col 135-136 the compounds shown below as displayed in Registry data bases which correspond to claimed compounds of formula (I):
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These teachings of the ‘894 patent encompasses compounds of formula (I),
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according to claim 1, wherein n =0, R1 is methyl (instant claim 5), Q is Q2
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in which L is NH or oxygen; E is a five- membered aromatic heterocyclic group – pyrazolyl ( instant claims 2 and 4) substituted with phenyl ( Group A substituent) which phenyl is substituted with C1 alkyl substituted with halogen (-CF3; instant claims 1-5).
Regarding instant claim 7, the ‘521 patent teaches in col 162 lines 30-34 that the compounds are generally be used as a fungicidal active ingredient in a composition, i.e.
with at least one additional component selected from the group consisting of surfactants, solid diluents and liquid diluents, which serves as a carrier.
Therefore, the prior art teaches the limitations of instant claims.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 03151367 by Miura, 1991 ( “the ‘367 publication”; cited in PTO-892 attached herewith).
The ‘367 publication discloses herbicidal compounds of formula I used as agricultural formulation (abstract; page1). The ‘367 publication teaches on page 14 the compound shown below as displayed in Registry database:
RN 136719-60-3
CN Benzeneacetic acid, 2-chloro-5-[4-chloro-5-(difluoromethoxy)-1-methyl-lH-pyrazol-
3-yl]-4-fluoro-~-(methoxymethylene)-, methyl ester (CA
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The compound of prior art is structural similar to compound of formula (I), according to claim 1, wherein R1 is halogen, Q is Q1 (instant claim 6), E is a five- membered aromatic heterocyclic group – pyrazolyl (instant claims 2 and 4) substituted with halogen and OR14, R14 is a C1 substituted with halogen (instant claims 1-6).
Regarding instant claim 7, the ‘367 publication teaches that the compounds of formula I formulated in inert carrier [AltContent: textbox ()](same utility as claimed invention).
The differences between the prior art and the claims at issue is that the compound disclosed by the ‘367 publication has a halogen instead of hydrogen at the same structural loci.
A prima facie case of obviousness based on structure exists if the prior art suggests to one of ordinary skill in the art to make the substitution or modification. In re Tabor, 502 F.2d 775 (CCPA 1974). It has been held several times that structurally similar compounds are obvious over one another. See, e.g., In re Payne, 606 F.2d 303, (CCPA 1979) (An obviousness rejection based on similarity in chemical structure and function entails motivation of one skilled in the art to make the claimed compound with an expectation that compounds similar in structure will have similar properties. When prior art compounds essentially "bracket" the instantly claimed compound, one of ordinary skill in the art would clearly be motivated to make the claimed compound.).
MPEP 2141 provides that exemplary rationales that may support a conclusion of
obviousness include (E) " Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
In the instant application, before the effective filing date of the claimed invention based on structural similarity, one of ordinary skill in the art would have an expectation of success in making and using the claimed compounds because of the structural similarity between the prior art and the instantly claimed compounds and a suggestion to try various combination of variables on the core structure (i.e. E, R1, R2, n, Q in the instant application). Thus, one of ordinary skill in the art would have an expectation of success in making and using the claimed compounds because of the structural similarity between the prior art and the instantly claimed compounds and a suggestion to try various combination of variables on the core structure.
Furthermore, the ‘‘367 publication specifically teach compound which only differs by claimed elected species by a halogen instead of hydrogen at the same loci (R2 of claimed formula I).
In the interest of generating additional compounds, a person having ordinary skill in the art would seek to make additional compounds that are most closely related to compounds specifically taught by the prior art that have already been demonstrated to have the fungicide activity. As discussed supra, the replacement of hydrogen for an alkyl group falls under the well-established doctrine of homology, which assumes that homologous compounds are likely to have similar properties.
Therefore, the instant claims are obvious over the combined teachings of the prior art.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
Applicant's amendment necessitated the new 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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587 (phone)
(571)270-8587 (fax)
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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