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 .
New Examiner of Record
The new examiner of record, Erin Hirt, has upon further consideration and searching issued this second non-final office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 and 16-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite because in the definition of variables R2a and R2b, in text line 10 of the definition, the identity of the substituent " Rx pyrrolidine-1-yl... " is unclear because the definition appears to be incompletely punctuated. Should this definition be: Rx-pyrrolidine-1-yl? Or is it, perhaps, two definitions: Rx, pyrrolidine-1-yl as in earlier instances throughout this definition?
Claims 2-12, and 16-17 are also rejected because they depend either directly or indirectly from claim 1 and do not resolve the ambiguities of that claim.
Claim 2 is indefinite because it recites A-4 is CRY which lacks antecedent basis because A-4 was previously defined to be CRY, please amend to CRY.
Claim 10 recites the limitation "one or more auxiliaries and diluent, and optionally one or
more other active ingredient." This limitation renders the scope of the claim unclear. It is unclear as to whether the composition must comprise one or more auxiliaries and a diluent or one or more auxiliaries and one or more diluents, or whether the claims can comprise one or more auxiliaries or one or more diluents? Accordingly, the metes and bounds of the claim are unclear as written.
Claims 11 and 16 is/are directed to alternative methods. Regarding the method which includes (i), the examiner respectfully points out that applicant’s method is directed to combating and controlling insects, acarines, nematodes or molluscs comprising applying to a pest. Applicant’s specification specifically defines pest to refer to insects, and molluscs that are found in agriculture, horticulture, forestry, the storage of products of vegetable origin (such as fruit, grain and timber); and those pests associated with the damage of man-made structures. This definition of pests does not include acarines or nematodes as they are not insects or molluscs as per applicant’s claim and are not associated with the damage of man-made structures and as such it is unclear how one would be controlling acarines or nematodes by applying to pests, etc. as claimed. Since applicants have support for the insects, acarines, etc. the examiner suggests rewriting this part of the claim similar to the example as follows which would overcome this rejection with claim 1 rewritten as an example: (i) of combating and controlling insects, acarines, nematodes, or molluscs which comprises applying to said insects, acarines, nematodes, or molluscs, the locus of said insects, acarines, nematodes, or molluscs, or to a plant susceptible to attack by said insects, acarines, nematodes, or molluscs, an insecticidally, acaricidally, nemticidally, or molluscicidally effective amount of the compound as defined in claim 1.
Claims 11 and 16 are also indefinite because each of i), ii), and iii) are optional and as such “the attack” and “the site” that is/are disclosed/claimed in (ii) lack antecedent basis because this method which is separate from (i) and never requires any part of (i), etc. does not previously disclose any attack of any kind and plant propagation material is not always inherently planted at a site and as such “the site” lacks antecedent basis. The examiner suggests rewriting this part of the claim similar to the example as follows which would overcome this rejection with claim 1 rewritten as an example: (ii) for protection of plant propagation material from attack by insects, acarines, nematodes or molluscs, which comprises treating the propagation material or a site where the propagation material is planted, with an effective amount of the compound as defined in claim 1;.
Claims 11 and 16 are also indefinite because it recites in (iii) administering an effective amount of the compound. However, it is unclear to what/to whom the compound is being administered in order to control parasites in or on an animal because obviously you cannot apply it anywhere or to anything as is instantly claimed in order to accomplish the method as claimed and as such it is unclear to where/to whom the compound is being applied in order to accomplish the claimed method. the examiner suggests rewriting this part of the claim similar to the example as follows which would overcome this rejection with claim 1 rewritten as an example: of controlling parasites in or on animal in need thereof comprising administering an effective amount of the compound as defined in claim 1 to the animal in need thereof.
Claims 12 and 17 are also rejected because they recite, “A plant propagation material comprising, or treated with or adhered thereto, the compound as defined in claim 1.” This claim is confusing because are applicants actually claiming wherein the plant propagation material is adhered to the compound E.g. a large portion of compound with seeds on the outside of the compound) which is how applicant’s claim language reads or are they trying to claim wherein the compound is adhered to the plant propagation material? e.g. a seed coated with the claimed compound. Thus, the metes and bounds of what applicant’s are trying to claim with this limitation are unclear to the examiner.
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 1-12, 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18877877 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘877 and the instant invention appear to be claiming an overlapping scope of the same fused bicyclic heteroaromatic compounds as it appears that the structural variants of the instant claim 1 overlap with those claimed/disclosed in copending ‘877, for instance when R4 is 4-cyano-pyrimidin-6-yl, etc. and ‘877 further teaches wherein their compounds are useful in the same methods and in the same compositions and for forming the same plant propagation materials instantly claimed. Thus, one of ordinary skill in the art would conclude that the instantly claimed invention is either anticipated by and/or rendered obvious by the compounds, compositions, methods and plant propagation materials claimed in copending Application No. 18877877.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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