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 .
Claimed Priority
PNG
media_image1.png
96
522
media_image1.png
Greyscale
Receipt of claim amendments and arguments filed on 10/29/2025 is acknowledged. Claims 18-23 have been added, claim 17 has been cancelled. Claims 1-16 and 18-23 are currently pending.
The compounds of independent claims 1 and 8, and dependent methods of claims 11 and 16 were fully searched as discussed in the previous Office action. New claims 18-21 are directed to the same compounds of formula I and its method of use, and therefore, have been fully examined. Claims 12, 22 and 23 are directed to “an article of manufacture” which includes the compound of the examined claims. Therefore, claims 1-12, 16 and 18-23 are treated on the merits in this Final Office action.
An “article of manufacture” is interpreted to be a product.
Claims 13-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 30, 2025.
Regarding previous rejections and objections
The Specification Objections have been withdrawn in view of the removal of the incorporation by reference statement from the specification.
Indefinite rejections under 35 U.S.C. 112(b) over claims 9, 10, 12 and 17 have been withdrawn in view of the claim amendments.
The 35 U.S.C. 101 rejection has been withdrawn in view of the amendments.
The objection to claims 1 and 8 has been withdrawn.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-7, 9-12, 16 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Turberg et al. (WO 2020/212235 A1- priority data of 15 April 2019).
Applicant claims a compound of formula I
PNG
media_image2.png
518
688
media_image2.png
Greyscale
, a composition comprising the compound. The claimed compounds are said to be pesticides, for combating and controlling insects, acarines, nematodes and molluscs, and useful for the protection of plant propagation materials and for controlling parasites in animals.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Turberg et al. disclosed heteroaryl-substituted aminoalkyl azole compounds of Formula I
PNG
media_image3.png
134
242
media_image3.png
Greyscale
compositions comprising the compounds together with auxiliaries and diluents (see examples at p. 182-187), and their use in the control of animal pests, including arthropods and insects in plant protection, and for control of ectoparasites on animals (see abstract).
At page 77:
PNG
media_image4.png
136
716
media_image4.png
Greyscale
At page 80:
PNG
media_image5.png
338
748
media_image5.png
Greyscale
Turberg disclosed preferred configurations 3-1 and 3-2, within others, for example:
PNG
media_image6.png
340
598
media_image6.png
Greyscale
PNG
media_image7.png
484
598
media_image7.png
Greyscale
See at least pages 24-34.
Representative examples of the pesticides of Turberg are found in Table 1 and are as follows:
PNG
media_image8.png
130
272
media_image8.png
Greyscale
(Ex001, p. 108),
PNG
media_image9.png
84
254
media_image9.png
Greyscale
,
PNG
media_image10.png
80
252
media_image10.png
Greyscale
,
PNG
media_image11.png
72
242
media_image11.png
Greyscale
,
PNG
media_image12.png
98
248
media_image12.png
Greyscale
,
PNG
media_image13.png
82
244
media_image13.png
Greyscale
,
PNG
media_image14.png
104
258
media_image14.png
Greyscale
,
PNG
media_image15.png
100
258
media_image15.png
Greyscale
,
PNG
media_image16.png
92
254
media_image16.png
Greyscale
,
PNG
media_image17.png
98
252
media_image17.png
Greyscale
,
PNG
media_image18.png
86
254
media_image18.png
Greyscale
,
PNG
media_image19.png
106
252
media_image19.png
Greyscale
,
PNG
media_image20.png
90
256
media_image20.png
Greyscale
,
PNG
media_image21.png
108
252
media_image21.png
Greyscale
.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
The difference between the compounds of Turberg and the compounds of the claims wherein Q is Qa is that the compounds of Turberg wherein R2 is the bicyclic heterocycle T4
PNG
media_image22.png
142
144
media_image22.png
Greyscale
, T5
PNG
media_image23.png
144
146
media_image23.png
Greyscale
, T6
PNG
media_image24.png
142
146
media_image24.png
Greyscale
, or T13, T14, T15, T28, T29 or T30 were not exemplified. Thus, the compound examples of Turberg differ from the claimed compounds only in the type of bicyclic moiety containing A1-A4 :
PNG
media_image25.png
210
276
media_image25.png
Greyscale
.
However, the instantly claimed genus of formula (I), wherein R2 is the bicyclic heterocycle T4
PNG
media_image22.png
142
144
media_image22.png
Greyscale
, T5
PNG
media_image23.png
144
146
media_image23.png
Greyscale
, T6
PNG
media_image24.png
142
146
media_image24.png
Greyscale
, or T13, T14, T15, T28, T29 or T30 has been generically taught by Turberg.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
One of ordinary skill in the art is a chemist practitioner with the knowledge and skills of the authors of the cited reference. Turberg taught that the compounds of formula I
PNG
media_image26.png
134
242
media_image26.png
Greyscale
in which R2 is selected from bicyclic heterocycles T1-T21, T23-T30, T32-T39, T41, T42 and T68-T70 are particularly useful compounds for the control of animal pests, including arthropods and insects in plant protection, and for control of ectoparasites on animals (see abstract). Artisans interested in pesticidally active heteroaryl-substituted aminoalkyl azole compounds of formula (I)
PNG
media_image26.png
134
242
media_image26.png
Greyscale
would have found the formula (I) of Turberg and the compound examples therein to be appropriate leads on the basis of their known biological activity. The artisan would thus have been motivated to make these compounds wherein R2 is selected from the suggested bicyclic heterocycles T4
PNG
media_image22.png
142
144
media_image22.png
Greyscale
, T5
PNG
media_image23.png
144
146
media_image23.png
Greyscale
, T6
PNG
media_image24.png
142
146
media_image24.png
Greyscale
, or T13, T14, T15, T28, T29 or T30.
The artisan would have been motivated to substitute the bicyclic heterocycle moiety R2 of any of the examples of Turberg with the other suggested bicyclic heterocyle moiety, such as T4
PNG
media_image22.png
142
144
media_image22.png
Greyscale
, T5
PNG
media_image23.png
144
146
media_image23.png
Greyscale
or T6
PNG
media_image24.png
142
146
media_image24.png
Greyscale
, because Turberg taught that these moieties are equivalent and replaceable for one another in the compounds of formula (I)
PNG
media_image26.png
134
242
media_image26.png
Greyscale
and that this would provide additional useful compounds for the control of animal pests, including arthropods and insects in plant protection, and for control of ectoparasites on animals.
There would have been a high expectation of success due to that Turberg teaches how to prepare and use the compounds which share the structurally similar groups.
Under the Supreme Court rationales in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007), here at least exemplary rationales (B) and (G) apply:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Regarding claim 9, Applicant stated that it encompasses the elected species. Therefore, for this rejection, claim 9 is interpreted as encompassing that Q1 is of formula
PNG
media_image27.png
50
52
media_image27.png
Greyscale
.
Applicant’s arguments have been carefully considered but were found unpersuasive in regards to claims 1-7, 9-12 and 23. Applicant first argues that the linkage (circled below) to the remainder of the compound through the amine group is not the same as in the compounds of Turberg.
PNG
media_image28.png
214
282
media_image28.png
Greyscale
The examiner must disagree because that is the same linkage as the linkage between the amine and R2 of the compounds of Turberg.
PNG
media_image29.png
150
264
media_image29.png
Greyscale
Applicant additionally argues that the instant application has an EP priority with filing date of December 4, 2019 and that the instant priority is before the filing date of Turberg. That is incorrect because the effective filing date of Turberg is 15 April 2019:
PNG
media_image30.png
384
690
media_image30.png
Greyscale
Applicant further argues that Turberg discloses only 34 in the priority document. In response, the parts of the specification, as well as the representative compounds that the examiner cited above to support the 103 rejection are all in the priority document with date 15 April 2019. Thus, the effective filing date for Turberg is the filing date of the priority document; and the earliest filing date any of the instant claims may have is December 4, 2019.
Applicant argues about variable R4 in Turberg. However, R4 in all the representative compounds above is the same as in R4 of formula Q of the claimed compounds.
Applicant finally argues that none of the representative examples in Turberg have the correct linkage and that there is a shift of the amine linkage. As above, the examiner must disagree because the linkage between the amine and R2 of the compounds of Turberg
PNG
media_image29.png
150
264
media_image29.png
Greyscale
is the same linkage circled in the instant claimed compounds
PNG
media_image28.png
214
282
media_image28.png
Greyscale
. The group
PNG
media_image31.png
104
74
media_image31.png
Greyscale
of Turberg’s compounds is group Q in the instant compounds, and the compounds are the same. This can be further observed in the representative compounds cited above. Some of the representative compounds:
PNG
media_image12.png
98
248
media_image12.png
Greyscale
,
PNG
media_image13.png
82
244
media_image13.png
Greyscale
,
PNG
media_image14.png
104
258
media_image14.png
Greyscale
,
PNG
media_image15.png
100
258
media_image15.png
Greyscale
.
For the above reasons the rejection is maintained.
Conclusion
Claims 1-7, 9-12, 16 and 23 are rejected. Claims 13-15 were withdrawn.
Claims 8 and 18-22 are allowable.
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 VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-4:30pm.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621
Prosecution Insights