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 .
Claim Status
Applicants’ amendments and arguments filed 11/21/2025 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claims 1-6 and 8-13 are amended.
Claim 7 is canceled.
Claims 16-21 are newly added.
Claims 1-6 and 8-21 are examined on the merits.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/21/2025 are being considered by the examiner. Many of the foreign patent documents only have English translations of the abstract, therefore only the abstract is being considered for these documents. Further, many of the foreign patent documents do not have any English translation, therefore, these documents are not being considered. See annotated forms.
Claim Interpretation
Claims 12-15 recite the limitation of an “effective amount”. Applicant’s application fails to define the term “effective amount”; therefore examiner broadly interprets “effective amount” to mean any amount used.
New Rejections Necessitated by Claim Amendments
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.
Claims 1-6 and 8-21 are rejected under 35 U.S.C. 103 as being unpatentable over Fischer et al. (WO2017093180A1, published 06/08/2017, hereafter Fischer).
Fischer claims condensed bicyclic heterocycle derivatives as pest control agents (title; according to the claim limitations of the instant claims 1 and 10-12). Claim 1 of Fischer claims the compound to have formula (I):
PNG
media_image1.png
233
275
media_image1.png
Greyscale
In which,
Aa is nitrogen or = C (H)—,
Ab represents nitrogen or = C (H) -,
Ac represents nitrogen or = C (H) -,
Ad represents nitrogen or = C (H) -,
wherein at least one A is selected from the group Aa, Ab. Ac and Ad represents nitrogen and
where Aa, Ab, Ac and Ad cannot simultaneously stand for nitrogen,
R1 is (C1-C6) alkyl, (C1-C6) haloalkyl, (C1-C6) cyanoalkyl, (C1-C6) hydroxyalkyl, (C1-C6) aikoxy-(C1-C6) alkyl, (C1-C6) haloalkoxy-(C1-C6) alkyl, (C2-C6) alkenyl, (C2-C6) alkenyloxy-(C1-C6) alkyl, (C2- C6) haloalkenyloxy-(C1-C6) alkyl, (C2-C6) haloalkenyl, (C2-C6) cyanoalkenyl, (C2-C6) alkynyl, (C2-C6) alkynyloxy-(C1-C6) alkyl, (C2-C6) haloalkynyloxy-(C1-C6) alkyl, (C2-C6) haloalkynyl, (C2-C6) cyanoalkynyl, (C3-C8) cycloalkyl, (C3-C8)-cycloalkyl-(C3-C8)-cycloalkyl, (C1-C6)-alkyl-(C3-C8)-cycloalkyl, halogen (C3-C8)-cycloalkyl, amino, (C1-C6)-alkylamino, di-(C1-C6)-alkyl-amino, (C3-C8)-cycloalkylamino, (C1-C6)-alkylcarbonyl-amino, (C1-C6)-alkylthio-(C1-C6)-alkyl, (C1-C6)-haloalkylthio-(C1-C6)-alkyl. (C1-C6) alkylsulfinyl-(C1-C6) alkyl, (C1-C6) haloalkylsuifmyl-(C1-C6) alkyl, (C1-C6) alkylsulfonyl-(C1-C6) alkyl, (C1-C6) haloalkylsulfonyl-(C1-C6) alkyl, (C1-C6) alkoxy-(C1-C6) alkylthio-(C1-C6) alkyl, (C1-C6) aikoxy-(C1-C6) alkylsulfinyl-(C1-Ct. )-alkyl, (C1-C6)-aikoxy-(C1-C6)-alkylsulfonyl-(C1-C6)-alkyl, (C1-C6)-alkylcarbonyl-(C1-C6)-alkyl, (C1-C6)-haloalkylcarbonyl-(C1-C6)-alkyl, (C1-C6)-alkoxycarbonyl-(C1- C6)-alkyl, (C1-C6)-haloalkoxycarbonyl-(C1-C6)-alkyl, (C1-C6)-alkylsulfonylamino, aminosulfonyl-(C1-C6)-alkyl, (C1-C6)-alkylaminosulfonyl-(C1-C6)-alkyl, di-(C1-C6)-alkylaminosulfonyl-(C1-C6)-alkyl, or represents (C1-C6) alkyl, (C1-C6) alkoxy, (C2-C6) aikenyl, (C2-C6) alkynyl, (C3-C8) cycloalkyl, each of which is optionally mono-or polysubstituted by identical or different substituents from aryl, hetaryl or heterocyclyl, wherein aryl, hetaryl or heterocyclyl are each optionally mono-or polysubstituted, identically or differently by halogen, cyano, nitro, hydroxy, amino, carboxy, carbamoyl, aminosulfonyl, (C1-C6) alkyl, ( C3-C6)-cycloalkyl, (C1-C6)-alkoxy, (C1-C6)-haloalkyl, (C1-C6)-haloalkoxy, (C1-C6)-alkylthio, (C1-C6)-alkylsulfinyl, (C1-C6)-alkylsulfonyl, (C1-C6)-alkylsulfimino, (C1-C6)-alkylsuite-(C1-C6)-alkyl, (C1-C6) alkylsulfimino-(C2-C6) alkylcarbonyl, (C1-C6) alkylsulfoximino, (C1-C6) AIkylsulfoximino-(C1-C6) alkyl, (C1-C6) alkylsulfoximino-(C2-C6) alkylcarbonyl, (C1-C6) alkoxycarbonyl, (C1-C6) alkylcarbonyl, (C3-C6) trialkylsilyl or benzyl, or R1 represents in each case optionally mono-or polysubstituted by identical or different substituents from the group consisting of halogen, cyano, nitro, hydroxyl, amino, carboxyl, carbamoyl, (C1-C6)-alkyl, (G-C8)-cycloalkyl, (C1-C6)-alkoxy, (C1-C6)-haloalkyl, (C1-C6)-haloalkoxy, (C1-C6)-alkylthio, (C1-C6)-alkylsulfinyl, (C1-C6)-alkylsulfonyl, (C1-C6)-alkylsulfimino, ( C1-C6) alkylsulfimino-(C1-C6) alkyl, (C1-C6) alkylsulfimino-(C2-C6) alkylcarbonyl, (C1-C6) alkylsulfoximino, (C1-C6) alkylsulfoximino-(C1-C6) alkyl, (C1-C6) alkylsulfoximino-(C2-C6) alkylcarbonyl, (C1-C6) alkoxycarbonyl, (C1-C6) alkylcarbonyl, (C3-C6) trialkylsilyl, (= O) (only in the case of heterocyclyl) or (= O)2 (only in the case of heterocyclyl) substituted aryl, hetaryl or heterocyclyl. (claim 1; according to the claim limitations of the instant claims 1-9). Claim 1 of Fischer further defines the compound as follows: R2 , R3 independently of one another represent hydrogen, cyano, halogen, nitro, acetyl, hydroxy, amino, SCN, tri (C1-C6) alkylsilyl, (C3-C8) cycloalkyl, (C3-C8) Cycloalkyl-(C3 -C8) cycloalkyl, (C1-C6) alkyl- (C3-C8) cycloalkyl, halogen (C3-C8) cycloalkyl, (C1-C6) alkyl, (C1-C6) haloalkyl, (C1-C6) cyanoalkyl, (C1-C6) hydroxyalkyl, hydroxycarbonyl-(C1-C6) alkoxy, (C1-C6) alkoxycarbonyl-( C1-C6) alkyl, (C1-C6) alkoxy-( C1-C6) alkyl, (C2-C 6) alkenyl, (C2-C 6) haloalkynyl, (C2-C 6) cyanoalkenyl, (C2-C 6) alkynyl, (C2-C 6) haloalkynyl, (C2-C 6) cyanoalkynyl, (C1-C6) alkoxy, (C1-C6) halogenalkoxy, (C1-C6) cyanoalkoxy, (C1-C6) alkoxy carbonyl (C1-C6) alkoxy, (C1-C6) alkoxy- (C1-C6) alkoxy, (C1-C6) alkylhydroxyimino, (C1-C6) alkoxyimino, (C1-C6) alkyl- (C1-C6) alkoxyimino, (C1-C6) haloalkyl-(C1-C6)alkoxyimino, (C1-C6) alkylthio, (C1-C6) haloalkylthio, (C1-C6)alkoxy-( C1-C6)alkylthio, (C1-C6) alkylthio-(C1-C6)alkyl, (C1-C6) alkylsulfinyl, (C1-C6) halogenalkylsulfmyl, (C1-C6) alkoxy(C1-C6)alkylsulfinyl, (C1-C6) Alkylsulfmyl- (C1-C6) alkyl, (C1-C6)alkylsulfonyl, (C1-C6) haloalkylsulfonyl, (C1-C6) alkoxy-( C1-C6)alkylsulfonyl, (C1-C6)alkylsulfonyl (C1-C6)alkyl, (C1-C6)aikylsulfonyioxy, (C1-C6)Alkylcarbonyl, (C1-C6)Alkylthiocarbonyl, (C1-C6)Halogenalkylcarbonyl, (C1-C6)Alkylcarbonyloxy, (C1-C6)Alkoxycarbonyl, (C1-C6)Halogenalkoxycarbonyl, Aminocarbonyl, (C1-C6)Alkylaminocarbonyl, (C1-C6)Alkylaminothiocarbonyl, Di-(C1-C6)alkyl-aminocarbonyl, Di-( C1-C6)alkylaminothiocarbonyl, (C2-C6)Alkenylaminocarbonyl, Di-(C2-C6)-alkenylaminocarbonyl, (C3-C8)Cycloalkylaminocarbonyl, (C1-C6)Alkylsulfonylamino, (C1-C6)Alkylamino, Di-( C1-C6)Alkylamino, Aminosulfonyl, (C1-C6)Alkylaminosulfonyl, Di-( C1-C6)alkyl-aminosulfonyl, (C1-C6)alkylsulfoximino, aminothiocarbonyl, (C1-C6)Alkylaminothiocarbonyl, Di-( C1-C6)alkyl-aminothiocarbonyl, (C3-C8)Cycloalkylamino, NHCO-( C1-C6)alkyl ((C1-C6)Alkylcarbonylamino), in each case optionally monosubstituted or polysubstituted, identically or differently substituted aryl or hetaryl, where (in the case of Hetaryi) optionally at least one carbonyl group may be contained and / or wherein in each case are suitable as substituents: cyano, carboxyl , halogen, nitro, acetyl, hydroxy, amino, SCN, tri-( C1-C6) alkylsilyl, (C3-C8) Cycloaikyl, (C3-C8) cycloalkyl (C3-C8)cycloalkyl, (C1-C6) alkyl (C3-C8) cycloalkyl, halogen (C3-C8)cycloalkyl, (C1-C6) alkyl, (C1-C6)Halogenalkyl, (C1-C6)cyanoalkyl, (C1-C6)Hydroxyalkyl, Hydroxycarbonyl-( C1-C6)-alkoxy, (C1-C6)Alkoxycarbonyl-(C1-C6)alkyl, (C1-C6)Alkoxy-(C1-C6)alkyl, (C2 -C6)Alkenyl, (C2-C6)halogenalkenyl, (C2-C6)cyanoalkenyl, (C2-C6)alkinyl, (C2-C6)halogenalkinyl, (C2-C6)cyanoalkinyl, (C1-C6)alkoxу, (C1-C6)halogenalkoxy, (C1-C6)cyanoalkoxy, (C1-C6)alkoxycarbonyl-(C₁-C6)alkoxy, (C₁-C6)Alkoxy-(C₁-C6)alkoxy, (C₁-C6)Alkylhydroxyimino, (C₁-C6)Alkoxyimino, (C₁-C6)Alkyl-( C₁-C6)alkoxyimino, (C₁-C6)halogenalkyl-( C₁-C6)alkoxyimino, (C₁-C6)Alkylthio, (C₁-C6)Halogenalkylthio, (C₁-C6)alkoxy-( C₁-C6)alkylthio, (C₁-C6)Alkylthio-( C₁-C6)alkyl, (C₁-C6)Alkylsulfinyl, (C₁-C6)Halogenalkylsulfinyl, (C₁-C6)alkoxy-( C₁-C6)alkylsulfinyl, (C₁-C6)Alkylsulfinyl-(C₁-C6)alkyl, (C₁-C6)Alkylsulfonyl, (C₁-C6)Halogenalkylsulfonyl, (C₁-C6)Alkoxy-( C₁-C6)alkylsulfonyl, (C₁-C6)Alkylsulfonyl-( C₁-C6)alkyl, (C₁-C6)alkylsulfonyloxy, (C₁-C6)Alkylcarbonyl, (C₁-C6)halogenalkylcarbonyl, (C₁-C6)alkylcarbonyloxy, (C₁-C6)alkoxycarbonyl, (C₁-C6)Halogenalkoxycarbonyl, Aminocarbonyl, (C₁-C6)Alkylaminocarbonyl, Di-( C₁-C6)alkyl-aminocarbonyl, (C2-C6)alkenylaminocarbonyl, Di-(C2-C6)-alkenylaminocarbonyl, (C3-C8)Cycloalkylaminocarbonyl, (C₁-C6)Alkylsulfonylamino, (C₁-C6)Alkylamino, Di-( C₁-C6)Alkylamino, Aminosulfonyl, (C₁-C6)Alkylaminosulfonyl, Di-( C₁-C6)alkylaminosulfonyl, (C₁-C6)alkylsulfoximino, aminothiocarbonyl, (C₁-C6)Alkylaminothiocarbonyl, Di-(C₁-C6)alkylaminothiocarbonyl, (С3-C8)Cycloalkylamino, (C₁-C6)Alkylcarbonylamino (according to the claim limitations of the instant claims 1-9). Claim 1 of Fischer continues to define the compound as Q is a partially saturated or saturated heterocyclic or heteroaromatic 8-, 9-, 10-, 11- or 12-membered annulated bicyclic or tricyclic ring system, which may optionally contain at least one carbonyl group and / or wherein the ring system optionally mono- or polysubstituted is substituted identically or differently, and where the substituents can be selected independently of one another from hydrogen, cyano, halogen, nitro, acetyl, hydroxy, amino, SCN, Tri-(C₁-C6)alkylsilyl, (C3-C8)Cycloalkyl, (C3-C8)Cycloalkyl-(C3-C8)Cycloalkyl, (C₁-C6)Alkyl-(C3-C8)cycloalkyl, Halogen(C3-C8)cycloalkyl, (C₁-C6)Alkyl, (C₁-C6)halogenalkyl, (C₁-C6)cyanoalkyl,
(C₁-C6)hydroxyalkyl, hydroxycarbonyl-(C₁-C6)-alkoxy, (C₁-C6)alkoxycarbonyl-(C₁-C6)alkyl, (C₁-C6)alkoxy-(C₁-C6)alkyl, (C2-C6)alkenyl, (C2-C6)halogenalkenyl, (C2-C6)cyanoalkenyl, (C₁-C6)alkinyl, (C2-C6)Alkinyloxy-(C₁-C4)alkyl, (C2-C6)Halogenalkinyl, (C2-C6)Cyanoalkinyl, (C₁-C6)Alkoxy, (C₁-C6)Halogenalkoxy, (C₁-C6)Halogenalkoxy-(C₁-C6)alkyl, (C2-C6)Alkenyloxy-(C₁-C6)alkyl, (C2-C6)halogenalkenyloxy-(C₁-C6)alkyl, (C₁-C6)Cyanoalkoxy, (C₁-C6)Alkoxycarbonyl-( C₁-C6)alkoxy, (C₁-C6)Alkoxy-(C₁-C6)alkoxy, (C₁-C6)alkylhydroxyimino, (C₁-C6)alkoxyimino, (C₁-C6)Alkyl-(C₁-C6)alkoxyimino, (C₁-C6)halogenalkyl-( C₁-C6)alkoxyimino, (C₁-C6)alkylthio, (C₁-C6)halogenalkylthio, (C₁-C6)Alkoxy-( C₁-C6)alkylthio, (C₁-C6)alkylthio-( C₁-C6)alkyl, (C₁-C6)Alkylsulfinyl, (C₁-C6)Halogenalkylsulfinyl, (C₁-C6)Alkoxy-( C₁-C6)alkylsulfinyl, (C₁-C6)Alkylsulfinyl-( C₁-C6)alkyl, (C₁-C6)alkylsulfonyl, (C₁-C6)halogenalkylsulfonyl, (C₁-C6)Alkoxy-( C₁-C6)alkylsulfonyl, (C₁-C6)alkylsulfonyl-( C₁-C6)alkyl, (C₁-C6)Alkylsulfonyloxy, (C₁-C6)Alkylcarbonyl, (C₁-C6)Alkylcarbonyl-(C₁-C6)alkyl, (C₁-C6)alkylthiocarbonyl, (C₁-C6)halogenalkylcarbonyl, (C₁-C6)alkylcarbonyloxy, (C₁-C6)Alkoxycarbonyl, (C₁-C6)Halogenalkoxycarbonyl, Aminocarbonyl, (C₁-C6)Alkylaminocarbonyl, (C₁-C6)Alkylaminothiocarbonyl, Di-(C₁-C6)alkyl-aminocarbonyl, Di-(C₁-C6)alkyl-aminothiocarbonyl, (C2-C6)Alkenylaminocarbonyl, Di-(C2-C6)- alkenylaminocarbonyl, (C3-C8)Cycloalkylaminocarbonyl, (C₁-C6)Alkylsulfonylamino, (C₁-C6)Alkylamino, Di-(C₁-C6)Alkylamino, Aminosulfonyl, (C₁-C6)Alkylaminosulfonyl, Di-(C₁-C6)alkyl-aminosulfonyl, (C₁-C6)Alkylsulfoximino, Aminothiocarbonyl, (C₁-C6)Alkylaminothiocarbonyl, Di-( C₁-C6)alkyl-aminothiocarbonyl, (C3-C8) Cycloalkylamino, NHCO-( C₁-C6)alkyl ((C₁-C6)Alkylcarbonylamino), or where the substituents can be independently selected may be selected from phenyl or a 5- or 6-membered heteroaromatic ring, wherein phenyl or the ring optionally mono- or polysubstituted by C₁-C6-alkyl, C2-C6-alkenyl, C2-C6-alkynyl, C3-C6-cycloalkyl, C₁-C6-haloalkyl, C2-C6-haloalkenyl; C2-C6-haloalkinyl, C3-C6-halocycloalkyl, halogen, CN, NO2 , C2-C6-alkoxy, C2-C6-haloalkoxy, n is 0, 1 or 2 (according to the claim limitations of the instant claims 1-9). Furthermore, Fischer teaches the present invention formulation relates to the use as acaricides and/or insecticides for combating animal pests, in particular arthropods and in particular insects and arachnids, and methods and intermediates for their preparation (page 6, description, paragraph 2; according to the claim limiations of the instant claims 10, 12, and 14). Fischer teaches the compounds may also be used in admixture with one or more suitable fungicides, bactericides, acaricides, molluscicides, nematicides, insecticides, microbiologicals, beneficials, herbicides, fertilizers, avian repellents, phytotonics, sterilants, safeners, semiochemicals, and/or plant regulators (page 22, paragraph 13; according to the claim limitations of the instant claim 11 and 14-15). Fischer teaches the treatment according to the invention of the plants and plant parts with the compounds of the formula (I) is carried out directly or by the action of the compounds on the environment, the habitat or the storage space according to the usual treatment methods, eg. B. by immersion, spraying, evaporation, nebulization, scattering, brushing, injecting and propagating material, especially in seeds, further by single or multi-layer wrapping (page 27, paragraph 9; according to the claim limitations of the instant claims 13 and 15). Lastly, Fischer teaches that it is desirable to optimize the amount of the active ingredient used in such a way that the seed and the germinating plant are best protected against attack by animal pests, but without damaging the plant itself by the active ingredient used (page 28, paragraph 2; according to the claim limitations of the instant claims 12-15).
Per MPEP § 2144.08(II)(A)(4)(c), the closer the physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, the greater the expectation that the claimed subject matter will function in an equivalent manner to the genus. In addition or in the alternative, per MPEP § 2144.09(I)-(II), “[a] prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities” because “[c]ompounds which are…isomers…are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties” (see, e.g., MPEP § 2144.09(I)-(II)), and the Court has stated that “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR, 127 S.Ct. at 1740. Here, the prior art teaches highly similar structural compounds differing only by nitrogen arrangement on the same ring of the instantly claimed invention, wherein such compounds have the same, exact utility as the instantly claimed compounds (i.e. pest control); accordingly, an artisan would readily appreciate that such compounds could be utilized in the treatment of pest control, exactly as taught and suggested in view of the prior art.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5].
“[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). Therefore, it would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim the compound and uses of the instant invention as outlined by Fischer.
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 1-6 and 8-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. US12144350B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
US12144350B2 claims a compound represented by formula (I):
PNG
media_image2.png
152
292
media_image2.png
Greyscale
wherein: R2 represents a Cl-C6 alkyl group optionally substituted with one or more halogen atom(s), a cyclopropyl group, or a cyclopropylmethyl group;
n represents 0, 1, or 2;
G1 represents a nitrogen atom or CR3a;
G2 represents a nitrogen atom or CR3b;
G3 represents a nitrogen atom or CR3c;
G4 represents a nitrogen atom or CR3d;
R3a, R3b, R3c , and R3d are identical to or different from each other, and each represent a C1-C6 chain hydrocarbon group optionally substituted with one or more substituent(s) selected from Group B, a C3-C7 cycloalkyl group optionally substituted with one or more substituent(s) selected from Group E, a phenyl group optionally substituted with one or more substituent(s) selected from Group H, a 5 or 6 membered aromatic heterocyclic group optionally substituted with one or more substituent(s) selected from Group H, OR12, NR''R12, NR11aR12a, NR24NR11 R12, NR24OR11, NR11C (O) R13,NR24NR11C(O)R13, NR11C(O)OR14, NR24NR11C(O)OR14, NR11C(O)NR31R32, NR24NR11C(O)NR31NR32, N=CHNR31R32, N=S(O)pR15R16, C(O)R13, C(O)OR17, C(O)NR31R32, C(O)NR11S(O)2R23, CR30=NOR17, NR11CR24=NOR17, S(O)mR23, a cyano group, a nitro group, a hydrogen atom, or a halogen atom;
p represents 0 or 1;
m represents 0, 1, or 2;
R30 represents a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), a halogen atom, OR35, NR36R37 , or a hydrogen atom;
R35 represents a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s);
R17 represents a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), a phenyl group optionally substituted with one or more substituent(s) selected from Group D, or a hydrogen atom;
R11, R24, R36, and R37 are identical to or different from each other, and each represent a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), or a hydrogen atom;
R12 represents a C1-C6 chain hydrocarbon group optionally substituted with one or more substituent(s) selected from Group F, a C3-C7 cycloalkyl group optionally substituted with one or more substituent(s) selected from Group J, a C3-C7 cycloalkenyl group optionally substituted with one or more substituent(s) selected from Group J, a phenyl group optionally substituted with one or more substituent(s) selected from Group D, a 6 membered aromatic heterocyclic group optionally substituted with one or more substituent(s) selected from Group D, a hydrogen atom, or S(0)2R23;
R23 represents a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), or a phenyl group optionally substituted with one or more substituent(s) selected from Group D;
R11a and R'2a are combined with the nitrogen atom to which they are attached to form a 3-7 membered nonaromatic heterocyclic group optionally substituted with one or more substituent(s) selected from Group E;
R13 represents a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), a C3-C7 cycloalkyl group optionally substituted with one or more halogen atom(s), a (C3-C6 cycloalkyl) C1-C3 alkyl group optionally substituted with one or more halogen atom(s), a phenyl group optionally substituted with one or more substituent(s) selected from Group D, a 5 or 6 membered aromatic heterocyclic group optionally substituted with one or more substituent(s) selected from Group D, or a hydrogen atom;
R14 represents a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), a C3-C7 cycloalkyl group optionally substituted with one or more halogen atom(s), a (C3-C6 cycloalkyl) C1-C3alkyl group optionally substituted with one or more halogen atom(s), or a phenyl C1-C3 alkyl group {wherein the phenyl moiety in said phenyl C1-C3 alkyl group is optionally substituted with one or more substituent(s) selected from Group D};
R15 and R16 are identical to or different from each other, and each represent a C1-C6 alkyl group optionally substituted with one or more halogen atom(s);
R31 represents a C1-C6 alkyl group optionally substituted with one or more halogen atom(s), or a hydrogen atom;
R32 represents a C1-C6 chain hydrocarbon group optionally substituted with one or more substituent(s) selected from Group F, a C3-C7 cycloalkyl group optionally substituted with one or more substituent(s) selected from Group J, S(O)2R23, or a hydrogen atom;
Q represents a group represented by Q1 or a group represented by Q2 (claim 1; according to the claim limitations of the instant claim 1). Claim 1 of US12144350B2 further defines Q1 and Q2 as the following:
PNG
media_image3.png
181
412
media_image3.png
Greyscale
Z represents an oxygen atom or a sulfur atom; the combination of A2 and A3 represents: a combination wherein A2 represents CR4a, and A3 represents a nitrogen atom or CR4b; or a combination wherein A2 represents a nitrogen atom, and A3 represents CR4b the combination of B1, B2, and B3 represents: a combination wherein B1 represents CR1, B2 represents a nitrogen atom or CR6b, and B3 represents a nitrogen atom or CR6c; combination wherein B1 represents a nitrogen atom or CR6a, B2 represents CR1, and B3 represents a nitrogen atom or CR6c ; or a combination wherein B1 represents a nitrogen atom or CR6a, B2 represents a nitrogen atom or CR6b, and B3 represents CR1;
R1 represents a C1-C6 chain hydrocarbon group substituted with one or more substituent(s) selected from the group consisting of a cyano group and a halogen atom, a C3-C4 cycloalkyl group optionally substituted with one or more substituent(s) selected from the group consisting of a cyano group and a halogen atom, SR8, S(O)R8, S(O)2R8, OR8, or OS(OR)2R8;
R8 represents a C1-C6 chain hydrocarbon group substituted with one or more substituent(s) selected from the group consisting of a cyano group and a halogen atom, or a C3-C4 cycloalkyl group optionally substituted with one or more substituent(s) selected from the group consisting of a cyano group and a halogen atom;
R4a, R4b, R6a, R6b , and R6c are identical to or different from each other, and each represent a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), a C3-C7 cycloalkyl group optionally substituted with one or more halogen atom(s), a C1-C6 alkoxy group optionally substituted with one or more halogen atom(s), NR25R26, C(O)R7, C(O)OR7, C(O)NR19R20, NR25C(O)R18, NR25C(O)OR18, NR25C(O)NR19R20, a cyano group, a halogen atom, or a hydrogen atom;
R19 and R25 are identical to or different from each other, and each represent a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), or a hydrogen atom;
R26 represents a Cl-C6 chain hydrocarbon group optionally substituted with one or more substituent(s) selected from Group L, a C3-C7 cycloalkyl group optionally substituted with one or more substituent(s) selected from Group M, a C3-C7 cycloalkenyl group optionally substituted with one or more substituent(s) selected from Group M, a phenyl group optionally substituted with one or more substituent(s) selected from Group K, a 6 membered aromatic heterocyclic group optionally substituted with one or more substituent(s) selected from Group K, a hydrogen atom, or S(O)2R27;
R27 represents a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), a C3-C7 cycloalkyl group optionally substituted with one or more halogen atom(s), or a phenyl group optionally substituted with one or more substituent(s) selected from Group K; and
R7, R18, and R20 are identical to or different from each other, and each represent a C1-C6 chain hydrocarbon group optionally substituted with one or more substituent(s) selected from Group L, a C3-C7 cycloalkyl group optionally substituted with one or more substituent(s) selected from Group M, or a hydrogen atom;
Group B: a group consisting of a C1-C6 alkoxy group optionally substituted with one or more halogen atom(s), a C3-C6 alkenyloxy group optionally substituted with one or more halogen atom(s), a C3-C6 alkynyloxy group optionally substituted with one or more halogen atom(s), a C1-C6alkylsulfanyl group optionally substituted with one or more halogen atom(s), a C1-C6 alkylsulfinyl group optionally substituted with one or more halogen atom(s), a C1-C6 alkylsulfonyl group optionally substituted with one or more halogen atom(s), a C3-C6 cycloalkyl group optionally substituted with one or more halogen atom(s), a cyano group, a hydroxy group, and a halogen atom;
Group C: a group consisting of a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), a C1-C6 alkoxy group optionally substituted with one or more halogen atom(s), a C3-C6 alkenyloxy group optionally substituted with one or more halogen atom(s), a C3-C6 alkynyloxy group optionally substituted with one or more halogen atom(s), and a halogen atom;.
Group D: a group consisting of a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), a hydroxy group, a C1-C6 alkoxy group optionally substituted with one or more halogen atom(s), a C3-C6 alkenyloxy group optionally substituted with one or more halogen atom(s), a C3-C6 alkynyloxy group optionally substituted with one or more halogen atom(s), a sulfanyl group, a C1-C6 alkylsulfanyl group optionally substituted with one or more halogen atom(s), a C1-C6 alkylsulfinyl group optionally substituted with one or more halogen atom(s), a C1-C6 alkylsulfonyl group optionally substituted with one or more halogen atom(s), an amino group, NHR21, NR21 R22, C(O)R21, OC(O)R21, C(O)OR21 , a cyano group, a nitro group, and a halogen atom;
R21 and R22 are identical to or different from each other, and each represent a C1-C6 alkyl group optionally substituted with one or more halogen atom(s);
Group E: a group consisting of a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), a C1-C6 alkoxy group optionally substituted with one or more halogen atom(s), a C3-C6 alkenyloxy group optionally substituted with one or more halogen atom(s), a C3-C6 alkynyloxy group optionally substituted with one or more halogen atom(s), a halogen atom, an oxo group, a hydroxy group, a cyano group, and a nitro group;
Group F: a group consisting of a C1-C6 alkoxy group optionally substituted with one or more halogen atom(s), a phenyl group optionally substituted with one or more substituent(s) selected from Group D, a 5 or 6 membered aromatic heterocyclic group optionally substituted with one or more substituent(s) selected from Group D, a C3-C7cycloalkyl group optionally substituted with one or more halogen atom(s), a 3-7 membered nonaromatic heterocyclic group optionally substituted with one or more substituent(s) selected from Group C, an amino group, NHR21, NR21R22 , a halogen atom, and a cyano group;
Group H: a group consisting of a C1-C6 alkyl group optionally substituted with one or more halogen atom(s), a 5 or 6 membered aromatic heterocyclic group optionally substituted with one or more substituent(s) selected from Group D, OR10, NR9R10, C(O)R10, C(O)NR9R10, OC(O)R9,OC(O)OR9, NR10C(O)R9, NR10C(O)OR9, C(O)OR10 , a halogen atom, a nitro group, a cyano group, and an amino group;
R9 represents a C1-C6 alkyl group optionally substituted with one or more halogen atom(s), or a C3-C6cycloalkyl group optionally substituted with one or more halogen atom(s);
R10 represents a C1-C6 alkyl group optionally substituted with one or more halogen atom(s), a C3-C6cycloalkyl group optionally substituted with one or more halogen atom(s), or a hydrogen atom:
Group J: a group consisting of a C1-C6 alkyl group optionally substituted with one or more halogen atom(s), a halogen atom, and a cyano group;
Group K: a group consisting of a C1-C6 chain hydrocarbon group optionally substituted with one or more halogen atom(s), a C1-C6 alkoxy group optionally substituted with one or more halogen atom(s), a C3-C6 alkenyloxy group optionally substituted with one or more halogen atom(s), a C3-C6 alkynyloxy group optionally substituted with one or more halogen atom(s), a C1-C6 alkylsulfanyl group optionally substituted with one or more halogen atom(s), a C1-C6 alkylsulfinyl group optionally substituted with one or more halogen atom(s), a C1-C6alkylsulfonyl group optionally substituted with one or more halogen atom(s), a C3-C6 cycloalkyl group optionally substituted with one or more halogen atom(s), a (C1-C6 alkyl optionally substituted with one or more halogen atom(s))amino group, a di(Cl-C4 alkyl)amino group optionally substituted with one or more halogen atom(s), a C2-C6 alkylcarbonyl group optionally substituted with one or more halogen atom(s), a C2-C6 alkoxycarbonyl group optionally substituted with one or more halogen atom(s), a C2-C6 alkoxycarhonyloxy group optionally substituted with one or more halogen atom(s), an aminocarbonyl group, a (C1-C6 alkyl optionally substituted with one or more halogen atom(s))aminocarbonyl group, a [di(C1-C4 alkyl)amino optionally substituted with one or more halogen atom(s)]carbonyl group, a (C2-C6 alkoxycarbonyl optionally substituted with one or more halogen atom(s))amino group, a (C2-C6 alkoxycarbonyl) (Cl-C6 alkyl)amino group optionally substituted with one or more halogen atom(s), a cyano group, an amino group, a nitro group, a hydroxy group, and a halogen atom;
Group L: a group consisting of a C3-C6 cycloalkyl group optionally substituted with one or more halogen atom(s), a phenyl group optionally substituted with one or more substituent(s) selected from Group K, a 5 or 6 membered aromatic heterocyclic group optionally substituted with one or more substituent(s) selected from Group K, a C1-C6 alkoxy group optionally substituted with one or more halogen atom(s), a (C1-C6 alkyl optionally substituted with one or more halogen atom(s))amino group, a di(C1-C4 alkyl)amino group optionally substituted with one or more halogen atom(s), a cyano group, an amino group, a nitro group, a hydroxy group, and a halogen atom;
Group M: a group consisting of a C1-C6 alkyl group optionally substituted with one or more halogen atom(s), a C1-C6 alkoxy group optionally substituted with one or more halogen atom(s), a C2-C6 alkoxycarbonyl group optionally substituted with one or more halogen atom(s), an amino group, a cyano group, and a halogen atom] or an N-oxide thereof (according to the claim limitations of the instant claims 1-6).
Claim 2 of US12144350B2 claims the compound or an N-oxide thereof according to claim 1, wherein Q represents the group represented by Q1 (according to the claim limitations of the instant claims 1-6 and 89). Claim 3 of US12144350B2 further claims the compound or N-oxide thereof according to claim 1, wherein Q represents the group represented by Q2 (according to the claim limitations of the instant claims 1-6 and 8-9). Claim 4 of US12144350B2 further claims the compound or an N-oxide thereof according to claim 1, wherein R3a, R3b, R³c. and R³d are identical to or different from each other, and each represent a C1-C6 alkyl group, a C2-C6 alkenyl group, a C3-C7 cycloalkyl group, wherein said C1-C6 alkyl group, said C2-C6 alkenyl group, and said C3-C7 cycloalkyl group are optionally substituted with one or more substituent(s) selected from the group consisting of a halogen atom and a cyano group, a phenyl group, a pyridyl group, a pyrimidinyl group wherein said phenyl group, said pyridyl group, and said pyrimidinyl group are optionally substituted with one or more substituent(s) from Group J, OR12, CR30=NOR17, a hydrogen atom, or a halogen atom (according to the claim limitations of the instant claims 1-6 and 8-9). Claim 5 of US12144350B2 further claims the compound or an N-oxide thereof according to claim 1, wherein G represents a nitrogen atom or CH; G2 represents CR3b; G3 represents CR3e; G4 represents a nitrogen atom or CH; and R3b and R3c are identical to or different from each other. and each represent a C1-C6 alkyl group, a C2-C6 alkenyl group, a C3-C7 cycloalkyl group wherein said C1-C6 alkyl group, said C2-C6 alkenyl group, and said C3-C7 cycloalkyl group are optionally substituted with one or more substituent(s) selected from the group consisting of a halogen atom and a cyano group, OR12, a hydrogen atom, or a halogen atom (according to the claim limitations of the instant claims 1-6 and 8-9). Claim 6 of US12144350B2 claims the compound or an N-oxide thereof according to claim 1, wherein G¹ represents CH; G2 represents CR3b; G3 represents CR3c; G4 represents CH; and R3b and R3c are identical to or different from each other. and each represent a C1-C6 alkyl group optionally substituted with one or more halogen atom(s), or a hydrogen atom (according to the claim limitations of the instant claims 1-6 and 8-9). Claim 7 of US12144350B2 claims the compound or an N-oxide thereof according to claim 1, wherein R1 represents a C1-C6 alkyl group substituted with one or more substituent(s) selected from the group consisting of a halogen atom and a cyano group; or a cyclopropyl group optionally substituted with one or more substituent(s) selected from the group consisting of a cyano group and a halogen atom (according to the claim limitations of the instant claims 1-6 and 8-9). Claim 8 of US12144350B2 claims the compound or an N-oxide thereof according to claim 1 wherein R2 represents an ethyl group and claim 9 of US12144350B2 claims the compound or an N-oxide thereof according to claim 1, wherein Z represents an oxygen atom (according to the claim limitations of the instant claims 1-6 and 8-9).
Claim 10 of US12144350B2 claims the composition for controlling a harmful arthropod comprising the compound or an N-oxide thereof according to claim 1 (according to the claim limitations of the instant claim 10). Claim 11 of US12144350B2 claims A composition comprising one or more ingredient(s) selected from the group consisting of Group (a), Group (b), Group (c), and Group (d), and the compound or an N-oxide thereof according to claim 1: Group (a): a group consisting of insecticidal active ingredients, miticidal active ingredients, and nematicidal active ingredients; Group (b): fungicidal active ingredients; Group (c): plant growth regulatory ingredients; Group (d): repellent ingredients (according to the claim limitations of the instants claims 11 and 14-15). Claim 12 of US12144350B2 claims a method for controlling a harmful arthropod which comprises applying an effective amount of the compound or an N-oxide thereof according to claim 1 to a harmful arthropod or a habitat where a harmful arthropod lives (according to the claim limitations of the instant claim 12). Claim 13 of US12144350B2 claims a seed or vegetable reproduction organ holding an effective amount of the compound or N-oxide thereof according to claim 1 (according to the claim limitations of the instants claim 13). Claim 14 of US12144350B2 claims A method for controlling a harmful arthropod which comprises applying an effective amount of the composition according to claim 11 to a harmful arthropod or a habitat where a harmful arthropod lives (according to the claim limitations of the instant claim 14). Lastly, claim 15 of US12144350B2 claims a seed or a vegetative reproduction organ holding an effective amount of the composition according to claim 11 (according to the claim limitations of the instant claim 15).
The MPEP 2144.09(I) states a prima facia case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In rePayne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In rePapesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). In the instant case, US12144350B2 claims a similar, nearly identical, compound with the same function as the instant application.
Response to Applicant’s Arguments
Applicant’s arguments filed on 11/21/2025 have been considered by the examiner.
In regards to the 35 USC § 103 rejection, Applicant’s amendments necessitated new grounds of rejection.
In regards to Double Patenting rejection of record, Applicant has provided no opposition to this rejection. Therefore, the rejection is maintained and updated to account for claim amendments.
Conclusion
No claims allowed.
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 ALEXANDRA NICOLE ISNOR whose telephone number is (703)756-5561. The examiner can normally be reached Monday-Friday 5:30am-3pm PST.
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, Bethany Barham can be reached at (571) 272-6175. 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.
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./ Examiner, Art Unit 1611