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 .
Priority
This application is a National Stage entry of PCT/JP2021/003313, filed 01/29/2021. This application claims foreign priority to JP2020-015188, filed 01/31/2020.
Information Disclosure Statement
The IDS filed on 10/28/2022 has been considered. See the attached PTO 1449 form.
Election/Restrictions
Applicant's election with traverse of compound 222 in the specification:
PNG
media_image1.png
102
234
media_image1.png
Greyscale
in the reply filed on 8/5/2025 is acknowledged. The traversal is on the ground(s) that no adequate reasons have been provided to support a conclusion of patentable distinctness between the species and that a search and examination would not seem to provide a serious burden on the examiner. This is not found persuasive because, as discussed in the restriction requirement of 6/5/2025, the chemical compounds of the compound represented by formula I are not regarded as being of similar nature because all of the alternatives do not share a common property or activity. The compound represented by formula I comprises many different alternatives which have different properties and functions. For example, the R1 substituent in the compound is represented by alternatives which include different alkyl or alkoxy groups substituted with one or more halogen atoms and (see claim 1) and the different alkyl and alkoxy groups with different halogen atoms having different properties and functions. The compound of formula I in claim 1 has many other alternatives recited in the claims which have different properties and functions. Therefore, a search and examination would seem to provide a serious burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3, 4, 6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Status
Receipt of Remarks filed on 8/5/2025 is acknowledged. Claims 1-6 are currently pending. Claims 3, 4, 6 have been withdrawn. Accordingly, claims 1, 2 and 5 are currently under examination.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
In claim 1, the recitation “wherein a phenyl group in the [(1-phenyl-1H-pyrazol-3- yl)oxy]methyl group” should recite “wherein the phenyl group in the [(1-phenyl-1H-pyrazol-3- yl)oxy]methyl group” because the phenyl group is inherently present in the[(1-phenyl-1H-pyrazol-3- yl)oxy]methyl and the recitation also refers to the [(1-phenyl-1H-pyrazol-3- yl)oxy]methyl group previously recited in the claim.
Similarly, in claim 5, the recitation “wherein a phenyl group in the [(1-phenyl-1H-pyrazol-3- yl)oxy]methyl group” should recite “wherein the phenyl group in the [(1-phenyl-1H-pyrazol-3- yl)oxy]methyl group” because the phenyl group is inherently present in the[(1-phenyl-1H-pyrazol-3- yl)oxy]methyl and the recitation also refers to the [(1-phenyl-1H-pyrazol-3- yl)oxy]methyl group previously recited in the claim.
In claim 1, the recitation “represents a binding site to a benzene ring” before “R2 represents a cyclopropyl group” should recite “represents a binding site to the benzene ring” because the benzene ring (i.e., formula I) is already recited in the previous limitations of the claim.
Appropriate correction is required.
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.
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.
Claims 1, 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Muller et al. (US 6380231 B1; Apr. 30, 2002).
Muller et al. throughout the reference teaches azolyloxybenzylalkoxyacrylic esters, their preparation and their use. Muller generally discloses compounds of formula I which is represented by the structure below:
PNG
media_image2.png
152
318
media_image2.png
Greyscale
Muller specifically discloses compound No. 01 (see: Table on col. 31-32) which reads on the elected species of the claimed compound of formula I. Muller discloses compound No. 1 wherein there is no Rn substitution, R1 and R2 are CH3, R3 is represented by A.1 (see below) wherein in A.1 there is no Rmb substitution and Ra is 4-Cl-C6H4.
PNG
media_image3.png
118
300
media_image3.png
Greyscale
This is the same exact compound which is elected by the applicant:
PNG
media_image1.png
102
234
media_image1.png
Greyscale
Muller further teaches that the compounds of formula I are suitable for controlling fungal pests and can be employed as fungicides in crop protection. They are particularly important for controlling a large number of fungi which infect a variety of crop plants including soybeans. The compounds I are applied alone or in combination with other pesticides to crop plants (e.g., soybean). The compounds I are used by treating the fungi, or the seeds, plants, materials or the soil to be protected against fungal infection, with a fungicidally active amount of the active ingredients. Application is effected before or after infection of the materials, plants or seeds with the fungi. Depending on the nature of the desired effect, the application rates are from 0.02 to 3 kg of active ingredient per ha, preferably 0.1 to 1 kg/ha. (see e.g. Table on Col. 31-32; Abstract; Claims; Col. 1, 21, 25, 28 ; entire document).
With respect to the claimed effective amount of the compound, neither the claims nor the specification disclose what constitutes an effect amount. The examiner interprets any amount having fungicidal effect to be an effective amount of the compound and thus, Muller teaching a fungicidally active amount of the compound reads on the claimed effective amount limitation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Muller does not expressly disclose applying an effective amount of the claimed species of compound I. However, as discussed supra, Muller specifically discloses compound No. 01 which reads on the elected species of claimed compound I and Muller teaches that the compounds of formula I are suitable for controlling fungal pests and can be employed as fungicides in crop protection. They are particularly important for controlling a large number of fungi which infect a variety of crop plants including soybeans. The compounds I are applied alone or in combination with other pesticides to crop plants (e.g., soybean). The compounds I are used by treating the fungi, or the seeds, plants, materials or the soil to be protected against fungal infection, with a fungicidally active amount of the active ingredients. Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). It would have been prima facie obvious to one skilled in the art to apply an effective amount of the compound No. 01 to soybean crop because Muller teaches that the compounds I are suitable for applying to crops such as soybean in a fungicidally effective amount.
With respect to the instantly claimed method for controlling a soybean rust fungus having an amino acid substitution of F129L on mitochondrial cytochrome b protein, Muller teaches the claimed method steps of applying an effective amount of a compound represented by formula (I) to soybean. Therefore, the prior art teaching structurally the same compound as recited in the instant claims along with the method steps recited in the instant claims would necessarily result in controlling a soybean rust fungus having an amino acid substitution of F129L on mitochondrial cytochrome b protein.
From the combined teaching of the cited reference, 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.
Claims 1, 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (Scientific Reports (2018) 8:7822) in view of Scot (The Ohio State University, Department of Plant Pathology, 2/8/2017).
Liu teaches the resistance of pathogens has become one of the puzzling problems to crop protection, and the main solution is to develop novel fungicides with unique structures and mechanisms of action. Liu teaches synthesis, fungicidal activity, structure activity relationship and density functional theory studies of novel strobilurin analogues containing arylpyrazole rings. Series of novel strobilurin analogues (1a-1f, 2a-2e, 3a-3e) containing arylpyrazole rings were synthesized and characterized by NMR spectroscopy. These analogues were collected together with other twenty-eight similar compounds 4a-4f, 5a-5h, 6a-6h and 7a-7f from previous studies, for in vitro bioassays and thorough structure-activity relationships (SARs) studies. Most compounds exhibited excellent-to-good fungicidal activity against Rhizoctonia solani, especially 5c, 7a, 6c, and 3b with 98.94%, 83.40%, 71.40% and 65.87% inhibition rates at 0.1 μg mL−1, respectively, better than commercial pyraclostrobin. The present work provided some hints for developing novel strobilurin fungicides. Liu specifically discloses compound 3b (see below) which reads on the elected species of the claimed compound I.
PNG
media_image4.png
166
432
media_image4.png
Greyscale
(see: Title; Abstract; Introduction; Conclusion; Fig. 1; Fig. 2; Entire Document).
While Liu teaches compound 3b having fungicidal activity against Rhizoctonia solani, Liu does not teach applying the compound to soybean or soil for cultivating soybean. However, Scot cures this deficiency.
Scot teaches Rhizoctonia damping-off and root rot of soybeans which is caused by the soilborne fungus Rhizoctonia solani. Rhizoctonia damping-off and root rot of soybeans can cause early season stand losses as well as premature yellowing in soybeans. Rhizoctonia solani can cause seed rot, root rot and lesions on hypocotyls. Damping-off occurs when germinating seedlings are infected prior to emergence. Scot teaches that disease management involves planting high quality seed combined with fungicide seed treatments with efficacy for true fungi. (See: Entire Document).
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have combined the teachings of Liu and Scot and apply the compound 3b of Scot to soybeans. As discussed supra, Liu teaches the resistance of pathogens has become one of the puzzling problems to crop protection, and the main solution is to develop novel fungicides with unique structures and mechanisms of action. Liu teaches compound 3b having fungicidal activity against Rhizoctonia solani and Scot teaches Rhizoctonia damping-off and root rot of soybeans which is caused by the soilborne fungus Rhizoctonia solani wherein Rhizoctonia damping-off and root rot of soybeans can cause early season stand losses as well as premature yellowing in soybeans. Scot teaches that disease management involves planting high quality seed combined with fungicide seed treatments with efficacy for true fungi. Thus, it would have been prima facie obvious to one skilled in the art to apply the compound 3b of Liu to soybean or soil for cultivating soybean because Liu teaches compound 3b having fungicidal activity against Rhizoctonia solani, which cause Rhizoctonia damping-off and root rot of soybeans, as taught by Scot.
With respect to the claimed effective amount of the compound, neither the claims nor the specification disclose what constitutes an effect amount. The examiner interprets any amount having fungicidal effect to be an effective amount of the compound. Liu teaches most compounds exhibited excellent-to-good fungicidal activity against Rhizoctonia solani, especially 5c, 7a, 6c, and 3b with 98.94%, 83.40%, 71.40% and 65.87% inhibition rates at 0.1 μg mL−1, respectively. Thus, it would have been obvious to one skilled in the art to manipulate and determine the amount of compound 3b needed for optimal fungicidal activity against Rhizoctonia solani. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to the instantly claimed method for controlling a soybean rust fungus having an amino acid substitution of F129L on mitochondrial cytochrome b protein, the combination of Liu and Scot teach the claimed method steps of applying an effective amount of a compound represented by formula (I) to soybean. Therefore, the prior art teaching structurally the same compound as recited in the instant claims along with the method steps recited in the instant claims would necessarily result in controlling a soybean rust fungus having an amino acid substitution of F129L on mitochondrial cytochrome b protein.
From the combined teaching of the cited reference, 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALI SAEED whose telephone number is (571)272-2371. The examiner can normally be reached M-F 8-5 EST.
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 5712725539. 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.
/ALI S SAEED/ Examiner, Art Unit 1616