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 .
Current Status of 17/762,779
This Office Action is responsive to the amended claims and Applicant remarks of 07/30/2026. Claims 1, 4-6, 8-11, and 14-20 are pending. Claims 5-6, 8, 9, 11, 14, 15, and 17 are withdrawn from consideration. Claims 1, 4, 10, 16, and 18-20 have been examined on the merits.
Priority
The instant application is a national stage entry of PCT/EP2020/078252, filed 10/08/2020, which claims priority to European Patent Application No. 19202288.7, filed 10/09/2019.
Response to Applicant Remarks
Rejections Under 35 U.S.C. §112
Applicants have amended claim 1 to recite that R2 includes substituted and unsubstituted phenyl and pyridine rings. Claim 1 has also been amended to recite that R4 includes substituted and unsubstituted pyridine or pyrimidine rings. These amendments render the previous rejections under 35 U.S.C. §112(b) and §112(d) over claims 4 and 18-20 moot. The rejections are withdrawn.
Double Patenting
Applicants have amended claims 1, 4, 10, 16, and 18-20 to recite an agrochemical formulation comprising at least one compound of formula (I), rather than a compound of formula (I) itself. These amendments are sufficient to overcome the previous double patenting rejection over U.S. Patent No. 11,528,907 B2. However, U.S. 11,528,907 B2 expressly claims agrochemical formulations comprising the same compounds encompassed by the instant claims. Accordingly, the amended claims remain subject to a double patenting rejection, as discussed in greater detail below.
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, 10, 16, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 11, and 17 of U.S. Patent No. 11,528,907 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims of the ‘907 patent substantially overlap with the instant claims, such that it would be obvious for one of ordinary skill in the art to arrive at the instant invention. The ‘907 patent claims a compound of formula (I)
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. The following substitutions overlap with those of the instant application: X is O; Q1 is N; Q2 is CR5; R5 is halogen; Y is a direct bond; R1 is H; R2 is either phenyl or pyridine; R3 is C1-3 alkyl; R4 is pyridine or pyrimidine. The only difference between the instant claims and those of the ‘907 patent is that the instant claims recite specific halogens. However, these specific halogens remain within the scope of the prior genus. Take compound I-009 for example,
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(Col 115). I-009 reads on the instantly claimed compounds of formula (I) with the following substitutions: R1 is H; R2 is substituted phenyl; R3 is C1 alkyl, R4 is a substituted pyridine; Y is a bond; and X is O. The only point of difference between I-009 and the instantly claimed compounds of formula (I) is that R5 is H in I-009. However, the ‘907 reference expressly teaches that R5 may be selected from a group that includes both hydrogen and halogen. Accordingly, substitution of the hydrogen with a halogen would have been an obvious modification of the compounds disclosed by the reference. Claim 8 of ‘907 claims formulations, including agrochemical formulations, comprising at least one compound of formula (I), reading on the amended agrochemical formulation of instant claim 1. Claim 11 of ‘907 claims a method for controlling one or more pests, optionally animal pests, comprising allowing a compound of formula (I) or a formulation thereof to act on the pests and/or a habitat thereof, reading on instant claim 10. Claim 17 of ‘907 claims a method for protecting seed or a germinating plant from one or more pests, optionally animal pests, comprising contacting the seed with a compound of formula (I) according to claim 1 with a formulation thereof, reading on instant claim 16. The specific requirements of instant claim 18 limiting R2 to phenyl or pyridine with one to three substituents is recited in ‘907 claim 1 (see Col 203, lines 55-64). Based on the foregoing teachings of the ‘907 patent, the instantly claimed agrochemical formulations comprising at least one compound of formula (I), and the methods of using such formulations, are not patentably distinct from the subject matter claimed in the ‘907 patent.
Conclusion
Claims 1, 10, 16, and 18 are rejected.
Claims 4 and 19-20 are objected to for depending on a rejected base claim.
Claims 4 and 19-20 contain specific limitations for R4 which are not claimed by U.S. Patent No. 11,528,907 B2. Instant claim 4 specifies that R4 is selected from an unsubstituted pyrimidine and a singly substituted halo-pyridine, these limitations are not claimed by the ‘907 patent. Similarly, instant claims 19 and 20 provide specific substituents that are not taught as part of the allowed substituents of R4. The allowed list of substituents for monosubstituted pyridine and pyrimidine rings is found on Col 204 line 24 and continues to Col 205 line 24. The point of distinction between the instantly claimed compounds and those of the ‘907 patent resides in the limitations imposed on R4. Incorporation of the specific R4 groups and corresponding substitution limitations into the base claim would sufficiently distinguish the instantly claimed compounds, and formulations comprising such compounds, from the subject matter claimed in the ’907 patent.
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/C.K.E./Examiner, Art Unit 1625
/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
