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 .
Claims 1-16 are pending in this application.
Applicant's election with traverse of the invention of Group I in the reply filed on 5/28/2025 is acknowledged. Upon reconsideration a posteriori, the restriction requirement under lack of unity (2/28/2025) is withdrawn.
Claims 1-16 will presently be examined.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because “Use of” a substance as recited in claim 15 does not fall within at least one of the categories of patent eligible subject matter recited in 35 U.S.C. 101: process, machine, manufacture, or composition of matter.
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.
Claim 15 is 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.
“Use of” of a substance as recited in claim 15 fails to recite a process step. It is therefore an incomplete process claim if that were the intended category of invention. The claim is indefinite for this reason.
Claim 14 is 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 14 recites “a composition according to claim 1.” However, claim 1 is directed to a compound of Formula (I), not a composition. Therefore, claim 14 is indefinite for referring to subject matter of claim 1 that is not encompassed by the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 is a claim that depends on claim 1. Claim 1 is directed to a compound of formula (I), whereas claim 16 is directed to a different compound. Therefore, claim 16 fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 1-13 are allowed.
The following is an examiner’s statement of reasons for allowance:
US 2012/00588921 (hereinafter, Braun) discloses the following compounds as herbicides:
PNG
media_image1.png
128
222
media_image1.png
Greyscale
wherein B includes N,
R includes C1-6 alkyl,
X includes halogen, C1-6 alkyl,
A includes C-Y, wherein Y includes S(O)n-R2,
wherein n = 0, 1, or 2, and
R2 includes C1-6 alkyl, haloalkyl, C3-6 cycloalkyl,
Z includes C1-6 alkoxy when Y is S(O)n-R2.
See paragraphs 6-19. Although Braun (US 2012/0058892) does not disclose Z to include C1-6 haloalkoxy in his definition of formula variables, compound 4-363 has
-OCF3 for Z (page 75). However, Braun’s compound 4-363 lacks the S(O)n-R2 for Y, which is required by the compounds of the instant invention.
In the instant specification, Applicant tested Braun’s compound 4-640 against inventive compounds 1.003 and 1.004, wherein the inventive compounds have the same structure as Braun’s compound 4-640 but with haloalkoxy (OCHF2 or OCF3) instead of haloalkyl (CF3) in the corresponding position (marked below in a box) of the phenyl moiety:
PNG
media_image2.png
163
314
media_image2.png
Greyscale
Braun’s compound 4-640 reoriented to correspond to Applicant’s compound orientation
Inventive compounds 1.003 and 1.004 have -OCHF2 and -OCF3 instead of CF3 (boxed)
Applicant’s test results show that the inventive compounds, which have the combination of phenyl substitution as shown below (encircled), exhibit improved control of weed species while improving safety to crop (pages 49-50):
PNG
media_image3.png
233
284
media_image3.png
Greyscale
Inventive compounds
For these reasons, the compounds as set forth in claims 1-13 are deemed allowable. Additionally, it is noted that no prior art is applied against the compounds of claim 16. Compounds of claim 16 are intermediates which possess the same type of substitution on the phenyl moiety.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
US 8,481,7492, US 9,968,090, US 10,433,553, and US 11,304,418 are cited to further show the state of the art.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/JOHN PAK/Primary Examiner, Art Unit 1699
1 Patent family members: WO 2012/028579, CN 103282354.
2 Published application is the previously discussed US 2012/0058892 by Braun.