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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/2/2026 has been entered.
Claims 1, 7, 9, 12, and 13 are pending in this application.
Withdrawn grounds of rejection
The outstanding ground of rejection of claims 11 and 12 under 35 USC 112(d) or pre-AIA 35 USC 112, 4th paragraph, is withdrawn in view of cancellation of claim 11 and amendment of claim 12 filed on 3/2/2026.
The outstanding ground of nonstatutory double patenting rejection over copending Application No. 17/256,944 is withdrawn in view of amendment of claims filed on 3/2/2026, which result in there being no overlap in claimed subject matter. In this regard, the term “C3-C6-carbocycle” in instant claim 1 is interpreted to not read on “cyclopropyl substituted by C2-C6 alkenyl” in claim 1 of said copending application. If Applicant disagrees with this interpretation, Applicant must positively state so in response to this Office action.
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.
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, 7, 9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Drauz et al. (US 5,534,541; hereinafter, Drauz)1.
Drauz teaches the following compounds for providing plants with protection against phytopathogenic microorganisms such as fungi, bacteria, and viruses (column 1, lines 13-16; column 3, lines 3-5; see from column 4, line 55 to column 31):
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112
290
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wherein Hal is Cl or Br,
n is 2 or 3,
R1 can be H,
R2 can be H, optionally carboxy-, C1-6 alkoxy-, or C1-6 alkoxycarbonyl- substituted C1-16 alkyl, aryl group with 6-10 carbon atoms, or aralkyl group with 7-17 carbon atoms,
R3 can be H, and
Y can be OH or OR4 wherein R4 is C1-4 alkyl.
See columns 1-2 and claims 1-5. Compound Example 86 in column 28 is a specific compound wherein:
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n = 2,
Hal = Cl at positions 2, 3,
R1 is H,
R2 is CH2CH2COOH,
R3 is H, and
Y is OH.
Compound 86 in the form of wettable power is shown in Drauz’s Example 3 to provide good protection against Phytophthora infestans on tomato plants (column 31).
Drauz does not explicitly disclose a trichloro thiophene compound of Applicant’s formula (I). However, Drauz not only teaches n = 2 or 3, but Drauz’s compounds 92, 93, 96, and 97 have the trichloro thiophene structure. Applicant acknowledges this on specification page 92 – because EP0450355 is a patent family member to Drauz and has the same disclosure, CMP1 to CMP4 from EP0450355 are also from Drauz.
Consequently, trichloro-substitution on the thiophene moiety (i.e., n = 3) is clearly taught.
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 claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited reference.
Applicant’s arguments and declaration filed on 3/2/2026, taken with the experimental results disclosed in the specification, have been given due consideration. For the clarity of the record, it is noted that the comparatives compounds designated as “CMP1,” “CMP2,” “CMP3,” and “CMP4” in the specification are not the same as the comparative compounds with the same designation in the declaration filed on 3/2/2026. For example, the “CMP1” in the specification has a trichloro thiophene structure, whereas the “CMP1” in said declaration has a dichloro thiophene structure.
With respect to all of the comparative compounds tested in the specification and said declaration regardless of nomenclature or designations, the substituent that corresponds to R4 are all alkyl. However, as noted above, Drauz specifically teaches compound 86, which has -CH2CH2COOH for the substituent that corresponds to R4 as shown below:
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Specification results show that even compared against other trichloro thiophene structured compounds, substituent for R4 influenced efficacy. In specification Example K, inventive trichloro thiophene structured compounds 1.015 (R5 is -CH2-C(=O)-NH2) and 1.144 (R5 is -CH2-C(=O)OCH3) exhibited significantly greater efficacy than the comparative compound CMP2, which is a trichloro thiophene compound with R5 = methyl. Therefore, comparison only against compounds having R5 = alkyl fails to establish nonobviousness of the inventive compounds against prior art compounds that have R5 = -C1-6 alkyl C(=O)OH or -C1-6 alkyl C(=O)O- alkyl, in view of Drauz’s compound 86.
For these reasons, Applicant’s arguments pertaining to trichloro thiophene moiety is not persuasive insofar as the claims read on R4 = C1-6 alkyl-C(=O)-OH or
C1-6 alkyl-C(=O)-O-C1-6 alkyl. Applicant’s own data shows that R5 influences activity, and comparison against the closest prior art compound when R5 is COOH or COO-alkyl has not been made. Evidence of nonobviousness, if any, must be commensurate in scope with that of the claimed subject matter. In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Lindner, 173 USPQ 356, 358 (CCPA 1972).
For the foregoing reasons, Applicant’s arguments, specification results, and declaration results are not sufficient to overcome this ground of rejection.
All claims are rejected. No claim is allowed.
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.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 Cited in the IDS of 6/16/2022.