DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-9 and 11-15 are pending. Claims 6, 7, 9, 13, and 15 are withdrawn. Claim 10 is cancelled. Claims 1-5, 8, 11, 12, and 14 are under consideration in this action.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-5, 8, 11, 12, and 14) and without traverse of the species, compound 124 in the reply filed on February 6, 2026 is acknowledged. Upon further consideration, the species election is withdrawn.
The traversal for the election of Group I is on the ground(s) that the claimed compound of formula I has been demonstrated to possess excellent herbicidal activity, even at a low application rate , and it also has a high selectivity to crops. Applicant argues that the claimed compound of formula I distinguish the present invention from the cited prior art
This is not found persuasive. As discussed in the Restriction Requirement, the combined teachings of Liu et al. (Liu) (US 2018/0230139 A1; published Aug. 16, 2018) and Löher et al. (Löher) (US 5,521,143; published May 28, 1996) teach the technical feature of Groups I-III.
Furthermore, the data shown in the “Biological activity evaluation” section of the present specification is not a comparison against the closest prior art, Liu, whose teachings are set forth in detail below. As discussed below, the primary difference between the instant claims and Liu is that Liu does not appear to explicitly disclose wherein the R9 group in their compound of formula (I) is the -CO2-N=C(X4)(X5) as shown on the instant claim 1’s isoxazoline ring. Applicant has not established the criticality of the claimed -CO2-N=C(X4)(X5) as Liu’s uracil compounds were also shown to demonstrate high pre-emergence and post-emergence herbicidal activity (including 100%) against broad-leaf weeds and grass weeds (Liu, Table 3).
The requirement is still deemed proper and is therefore made FINAL.
Claims 6, 7, 9, 13, and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 6, 2026.
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 8, 11, 12, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xi et al. (Xi) (CN 111961041 A; published Nov. 20, 2020; citations from Google English machine translation).
Note: Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216. As there does not appear to be a translation made of record in accordance with 37 CFR 1.55, the priority date of the present application is Dec. 17, 2020.
Xi discloses the following thiotriazinone isoxazoline compound of formula (I):
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Xi’s Compounds 310 and 311, for example, reads on the instant Claims 1-5, 11, and 12 as follows:
Xi’s Compounds 310 and 311
(p.15 and 29,Table 1)
Claim 1-5, 11, and 12’s isoxazoline formate compound of formula (I)
R1 is CH3
Q is the first heterocyclic ring where Q1 is S and Q2 and Q3 are each O;
R1 is CH3
R2 is CH3
R2 is CH3
R3 is F
Z is F
R5 is Cl
Y is Cl
R7 is H
X1 is H
R8 is H
X2 is H
R9 is CH3
X3 is CH3
R10 is CO2N=CHPh (Compound 311)
R10 is CO2N=(CH3)2 (Compound 310)
X4 is H and X5 is phenyl
X4 and X5 are each CH3 (Compound 10 of Table 1)
R4, R6, R7, and R8 are each H
With regards to the elected Compound 124, the difference between Xi’s Compound 311 and the elected Compound 124 is the X4. However, as evidenced by Xi’s Compound 310, the moiety corresponding to instant claims’ X4 may be CH3.
With regards to the Claim 8, Xi discloses that their thiotriazinone isoxazoline compounds are used for controlling weeds, and such compounds are incorporated into herbicide compositions in an amount from 0.5-75 wt.%, based on the weight of the herbicide (Xi claim 10; p.41, para.10).
With regards to Claim 14, the compositions may include other commonly used adjuvants in the art, e.g., carriers, surfactants, and the like (reading on formulation auxiliaries) (p.41, par.11).
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.
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 1-5, 8, 11, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (Liu) (US 2018/0230139 A1; published Aug. 16, 2018) and Löher et al. (Löher) (US 5,521,143; published May 28, 1996).
Liu discloses herbicides. Specifically to a kind of uracil compounds containing isoxazoline ring. The compounds can be used as herbicides in agriculture fields. The compounds have the following general formula (I) (para.0007; Liu claim 1):
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The above compound of formula (I) reads on the isoxazoline formate compound of formula (I) of the instant Claims 1-5, 11, and 12 as follows:
Liu’s compound of formula (I)
(Liu claims 1-7; para.0088)
Claim 1-5, 11, and 12’s isoxazoline formate compound of formula (I)
R6 is H
M is CH
R5 is H
R3 is H or F
Z is hydrogen or F
R4 is halogen, such as F or Cl
Y is halogen or Cl
R7 and R8 are each H
X1 and X2 are each H
R2 is CH3
Q is the second heterocyclic ring with Q4 and Q5 each being O
R1 and R2 are each C1-C6-alkyl or C1-C6 haloalkyl
R1 is CF3 and R2 is CH3
R6 and R7 are each C1-C6 alkyl or halogenated C1-C6 alkyl
R7 is CF3 and R6 is CH3
R10 is H or CH3
X3 is hydrogen or CH3
With regards to Claim 8, the compounds can effectively control weeds. They can effectively control weeds event at lower doses. Thus, the Liu discloses the use of the compounds as herbicides to control weeds (para.0096). Liu discloses a herbicidal composition comprising the compound of formula (I) as an active ingredient, wherein the percentage of the active ingredient in the composition is from 0.1-99% (para.0097; Liu claim 11).
With regards to Claim 14, the compositions may be prepared by diluting or dissolving the active substance wit ha solvent medium and/or a solid diluent, optionally in the presence of surface-active agents. The compositions can also contain special additives, such as adhesion agents (reading on formulation auxiliaries) (para.0099-0108).
Liu does not appear to explicitly disclose wherein the R9 group in their compound of formula (I) is the -CO2-N=C(X4)(X5) as shown on the instant claim 1’s isoxazoline ring. Löher is relied upon for this disclosure. The teachings of Löher are set forth herein below.
Löher discloses isoxazolines having the formula (I), which are useful as safeners against the phytotoxic side effects of herbicides, preferably in cereal crops (abstract). In particular, when used in combination with herbicides, can reduce the phytotoxicity of herbicides to crop plants (col.1, ln.5-9). The plant-protecting agents are isoxazolines of the general formula (I) (col.1, ln.9-20 and 55-63):
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R is a radical of the following formula:
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Where R2 are each alkyl, which reads on the instant claim 1’s X4 and X5 each being alkyl.
With regards to the X4 and X5 groups of Claim 1, as discussed above, both Liu and Löher disclose isoxazoline-containing compounds for agricultural use. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Liu and Löher and incorporate Löher’s R radical onto Liu’s uracil compounds, in particular in Liu’s R9 position. One of ordinary skill in the art would have been motivated to do so in order to obtain the advantage of incorporating in a safening effect to Liu’s uracil herbicides and reducing the phytotoxicity of the herbicide to crop plants. With regards to the X4 and X5 groups of Claims 2-5, 11, and 12, which recite C1-C6 alkyl, although Löher does not appear to explicitly disclose the size of the alkyl, C1-C6 alkyl are species of alkyl, and compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious) (see MPEP 2144.09). Where Löher’s R2 are each a C1-alkyl, the combined teachings of Liu and Löher reads on Compound 161 in the instant Specification’s Table 1. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as both Liu and Löher are directed to overlapping core structures with art recognized substituents for isoxazoline rings used in agricultural, in particular weed control, use.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
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 1-5, 8, 11, 12, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, 12-15, and 19 of U.S. Patent No. 12,509,452 B2 (USPN 452) in view of Löher et al. (Löher) (US 5,521,143; published May 28, 1996).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping isoxazoline-containing compounds as shown in the instant Claim 1, which have herbicidal activity.
The primary difference between the instant claims’ compound of formula I and USPN 452’s claimed compound of formula I is USPN 452’s R5 when X4 is -COOR5. In the instant claim 1’s compound of formula I, the variable corresponding to USPN 452 R5 is -N=(X4)(X5). This is a prima facie obvious modification in view of Löher, whose teachings are set forth above and incorporated herein.
With regards to the X4 and X5 groups of Claim 1, as discussed above, both USPN 452 and Löher disclose isoxazoline-containing compounds for agricultural use. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the claims of USPN 452 with the teachings of Löher and incorporate Löher’s R radical onto USPN 452’s claimed compounds, in particular in X4 position. One of ordinary skill in the art would have been motivated to do so in order to obtain the advantage of incorporating in a safening effect to USPN 452’s herbicides and reducing the phytotoxicity of the herbicide to crop plants. With regards to the X4 and X5 groups of Claims 2-5, 11, and 12, which recite C1-C6 alkyl, although Löher does not appear to explicitly disclose the size of the alkyl, C1-C6 alkyl are species of alkyl, and compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious) (see MPEP 2144.09). Where Löher’s R2 are each a C1-alkyl, the combination of USPN 452’s claims and teachings of Löher reads on Compound 161 in the instant Specification’s Table 1. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as both USPN 452’s claims and Löher are directed to overlapping core structures with art recognized substituents for isoxazoline rings used in agricultural, in particular weed control, use.
Conclusion
Claims 1-5, 8, 11, 12, and 14 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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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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/MONICA A SHIN/Primary Examiner, Art Unit 1616