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
Claims 1 – 17 are pending in this application. Applicant’s preliminary amendment, submitted May 3, 2022, is entered, wherein claims 3 – 13 and 16 are amended.
Priority
This application is a national stage application of PCT/EP2020/081842, filed November 12, 2020, which claims benefit of foreign priority document GB1916601.6, filed November 14, 2019.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election with traverse of group I, claims 1 – 15, drawn to a compound of formula (I), filed May 19, 2025, is acknowledged. The following species was elected by Applicant with traverse in the reply, filed May 19, 2025, with claims 1 – 3, 5 – 7, 9 – 11, and 13 – 15 reading on the elected species:
(i) A specific compound of formula (I):
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Applicant argues that Group II is a use of Group I, therefore, both groups should be examined together. However, Group I and II lack unity of invention because the common technical feature is not a special technical feature over the prior art in view of Barton et al. (See page 4 – 5 of the previous Office Action). Therefore, the restriction requirement is maintained.
Claims 4, 8, 12, and 16 – 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected invention, there being no allowable generic or linking claim.
Therefore, claims 1 – 3, 5 – 7, 9 – 11, and 13 – 15 are examined on the merits herein.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/03/2022 and 01/05/2024 were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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:
i. Determining the scope and contents of the prior art.
ii. Ascertaining the differences between the prior art and the claims at issue.
iii. Resolving the level of ordinary skill in the pertinent art.
iv. 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 – 3, 5 – 7, 9 – 11, and 13 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over Dao et al. (WO2018/204164A1) in view of Barton et al. (EP0448206A1) and Brown (Wiley-Vch, 2012, Reference included with PTO-892).
Regarding claims 1 – 3, 5 – 7, 9 – 11, and 13 – 15, Dao et al. disclose an agricultural composition (generally herbicidal) (page 4, line 16) comprising the compounds of Formula (I) having the core structure of (Abstract):
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wherein K is a 4- to 6-membered ring, such as K5 (page 2):
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wherein R3 is cyano at position 5 (page 16, lines 28 – 29); m is 1 (page 16, line 22); and Z is oxygen (page 16, line 32). The composition also comprises at least one component selected from the group consisting of surfactants, solid diluents, and liquid diluents. The composition further comprising at least one additional active ingredient that may be herbicides and herbicide safeners (page 4, lines 18 – 20). Compounds of this disclosure can also be mixed with one or more other biologically active compounds, such as fungi to form a multi-component pesticide (page 100, line 18).
However, Dao et al. do not teach the five member ring to be a imidazole ring with the claimed substituents.
Barton et al. teach a herbicidal compound of formula (I) (Abstract):
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wherein the formula may be represented as
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wherein E is
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wherein R3 and R4 are H, X is (CH2)2, and R5 is CN; and R6 is halogen (Abstract), wherein the halogen is chlorine (page 4, line 53).
Brown teaches that CN may be substituted with CF3 (page 23, 2.4.5 Halogens).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the ring K in the compound of formula (I) as taught by Dao et al. with the imidazole ring and its substituents in view of Barton et al. because Dao et al. teach the herbicide compound with the core structure may be replaced with various ring structures and Barton et al. teach a similar compound that is also a herbicide. One would have been motivated to substitute the ring K in the compound of formula (I) as taught by Dao et al. with the imidazole ring and its substituents in view of Barton et al. because Dao et al. demonstrate the replacement of different ring structures at the K position and it is expected that such substitution will also produce a herbicide compound. It would also have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the R5 that is a CN as taught by Barton et al. with CF3 in view of Brown because Brown teaches that CF3 is the bioisostere of CN. One would have been motivated to substitute the R5 that is a CN as taught by Barton et al. with CF3 in view of Brown because it is known in the art that such substitution will yield predictable results. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to substitute the ring K in the compound of formula (I) as taught by Dao et al. with the imidazole ring and its substituents in view of Barton et al. and to substitute the R5 that is a CN as taught by Barton et al. with CF3 in view of Brown because one would have expected that the modified compound would retain or even improve biological activity in different context, thereby, arriving at the claimed invention.
Conclusion
No claim is found to be allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOI YAN LEE whose telephone number is 571-270-0265. The examiner can normally be reached Monday - Thursday 7:30 - 17:30.
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/H.Y.L./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693
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