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 .
Acknowledgement is made to Applicant’s response filed 02/24/2026.
Claims 1-7, 12, 16-18, 20, 21, 23, 27, 29, 30, 33, 34, and 36 remain pending.
Claim 1 is currently amended.
Claims 20, 21, 23, 27, 29, 30, 33, 34, and 36 remain withdrawn.
Claims 1-7, 12, and 16-18 are currently under consideration to the extent that they read upon Applicant’s elected species:
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Rejections Maintained and Made Again in view of Applicant’s Amendments
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.
Claim(s) 1-7, 12, and 16-18 (all claims currently under consideration) is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Welter et al (US 4370277).
Welter teaches a compound of formula (II):
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Wherein R1 is taught as being a C1 alkoxy (or OCH3), R2 is hydrogen, R3 is hydrogen, R4 is hydrogen, and R5 is a C1 alkyl (or CH3) (see entire document, for instance, column 1, lines 16-39). It is noted that this structure would be drawn as:
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The compound of formula II is taught as being combined with hydrocarbons, water, or an alcohol as a solvent (see entire document, for instance, column 2, lines 1-15).
It is noted that MPEP 2131.02 states: “when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught)”. It is further noted that MPEP 2131.02 additionally states that “[i]f one of ordinary skill in the art is able to “at once envisage” the specific compound within the generic chemical formula, the compound is anticipated. One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be “at once envisaged.” One may look to the preferred embodiments to determine which compounds can be anticipated. In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962)”, wherein further “[t]he limited number of compounds covered by the preferred formula in combination with the fact that the number of substituents was low at each site […] resulted in a finding that the reference sufficiently described “each of the various permutations here involved as fully as if he had drawn each structural formula or had written each name.” The claimed compound was 1 of these 20 compounds. Therefore, the reference “described” the claimed compound and the reference anticipated the claims”. It is further noted that “In re Schauman, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), claims to a specific compound were anticipated because the prior art taught a generic formula embracing a limited number of compounds closely related to each other in structure and the properties possessed by the compound class of the prior art was that disclosed for the claimed compound. The broad generic formula seemed to describe an infinite number of compounds but claim 1 was limited to a structure with only one variable substituent R. This substituent was limited to low alkyl radicals. One of ordinary skill in the art would at once envisage the subject matter within claim 1 of the reference”.
With regard to the limitation directed to the composition being present in “a range from 0.1% to 95% by weight”, and that the purpose of the compound of formula I being “to promote plant growth and/or inhibit growth of parasitic weed” it is noted that Welter teaches that the products of the process can be worked up in known manner, for example by dilution with water, acidification, extraction with an organic solvent, and separation of the solvent after drying by distillation. Welter also teaches that the novel compounds are obtained in the form of oils which can either be distilled or freed from the last volatile components by prolonged heating at moderately elevated temperature under reduced pressure, and thus purified (see entire document, for instance, column 2, lines 35-44). Further, it is noted that the methods of Welter are the making of the structures using the instantly claimed compound as a starting material. As such, on the front end of the process, the final product is being formed. As such, the amount of the starting material goes from 100% to (ideally) 0%, though no reaction is perfect. As such, during the production of the product, the amount of the compound necessarily falls within the instantly claimed range of 0.1% to 95%. Further, in variant (a) the process includes additional components being present, such as water, thereby diluting the amount of the composition.
Response to Arguments
Applicant argues in the Remarks filed 02/24/2026 that Applicant has removed the term about, and therefore, now requires a range of 0.1-95%, wherein Applicant does not believe that the prior art anticipates the instantly claimed range. Applicant’s argument is not found persuasive. It is noted that in the variants taught by the prior art, additional components can be present, which would reduce the amount by weight of the structure to less than 100%. Further, as the compound is taught as a starting material, there are necessarily points at which the compound is less than 100% as the target structure is being formed. Further, it is noted that the yields within the prior art are taught as being in the 50-80% range, thereby leaving at least trace amounts (or more) of the starting material.
It is noted that the instantly claims are directed to a product not a method, wherein the prior art product is deemed to be capable of performing the intended uses articulated in the 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.
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.
Claim(s) 1-7, 12, and 16-18 (all claims currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable over Welter et al (US 4370277).
Welter teaches a compound of formula (II):
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Wherein R1 is taught as being a C1 alkoxy (or OCH3), R2 is hydrogen, R3 is hydrogen, R4 is hydrogen, and R5 is a C1 alkyl (or CH3) (see entire document, for instance, column 1, lines 16-39). It is noted that this structure would be drawn as:
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The compound of formula II is taught as being combined with hydrocarbons, water, or an alcohol as a solvent (see entire document, for instance, column 2, lines 1-15).
Welter, while teaching a structure that directly overlaps the instantly claimed structure, does not draw out the structure in a singular image.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention to utilize a structure of formula II, wherein R1 is OCH3, R2 is hydrogen, R3 is hydrogen, R4 is hydrogen, and R5 is CH3. One would have been motivated to do so since Welter expressly teaches that said components are useful for the formulation of formula II.
With regard to the limitation directed to the composition being present in “a range from 0.1% to 95% by weight”, and that the purpose of the compound of formula I being “to promote plant growth and/or inhibit growth of parasitic weed” it is noted that Welter teaches that the products of the process can be worked up in known manner, for example by dilution with water, acidification, extraction with an organic solvent, and separation of the solvent after drying by distillation. Welter also teaches that the novel compounds are obtained in the form of oils which can either be distilled or freed from the last volatile components by prolonged heating at moderately elevated temperature under reduced pressure, and thus purified (see entire document, for instance, column 2, lines 35-44). Further, it is noted that the methods of Welter are the making of the structures using the instantly claimed compound as a starting material. As such, on the front end of the process, the final product is being formed. As such, the amount of the starting material goes from 100% to (ideally) 0%, though no reaction is perfect. As such, during the production of the product, the amount of the compound necessarily falls within the instantly claimed range of 0.1% to 95%. Further, in variant (a) the process includes additional components being present, such as water, thereby diluting the amount of the composition.
Response to Arguments
Applicant argues in the Remarks filed 02/24/2026 that Applicant has removed the term about, and therefore, now requires a range of 0.1-95%, wherein Applicant does not believe that the prior art anticipates the instantly claimed range. Applicant’s argument is not found persuasive. It is noted that in the variants taught by the prior art, additional components can be present, which would reduce the amount by weight of the structure to less than 100%. Further, as the compound is taught as a starting material, there are necessarily points at which the compound is less than 100% as the target structure is being formed. Further, it is noted that the yields within the prior art are taught as being in the 50-80% range, thereby leaving at least trace amounts (or more) of the starting material.
Applicant further argues that the concept of inherency is improper in an obviousness rejection. Applicant’s argument is not found persuasive. First, it is noted that MPEP 2112 states “[t]he express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983)”. Second, the inherency relied upon is not a matter of optimization, rather, it is an inherent result of the process that occurs when a starting material is formed into a final product. The composition moves from being 100% starting material, to being significantly less starting material. And in that process, the amount of the starting material falls directly within the broad range of 0.1-95%.
It is further noted that the instantly claims are directed to a product not a method, wherein the prior art product is deemed to be capable of performing the intended uses articulated in the instant claims.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611