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 .
Detailed Action
Claims 8-22 are currently pending.
Election/Restriction
Applicant’s election with traverse of Group I (Claims 8-14 and 16-22, drawn to compounds of formula I) and compound 244 as the elected species in the reply filed on 6/01/2026 is acknowledged.
Applicant argues that the required restriction is improper because the groups fixed at the R3 position of the examined formula are associated with the “technical effect of enhanced efficacy” shown in comparative examples of Tables C2 and C3 of the specification. With respect to the election requirement, applicant argues that there is no search burden. Regarding applicant’s first argument over the restriction requirement, the results offered in Tables C2 and C3 demonstrate a consistent and unexpected increase in efficacy as compared to compounds lacking the R3 alkyl substituent against F129L mutant fungi. The scope of the claims are commensurate in scope with applicant’s results. Regarding the election, search burden is not of consideration for a national stage 371 application.
Nonetheless, examiner withdraws both the restriction and election requirement. No claim is withdrawn. All claims are examined herein below.
Claim Objections
Claims 8-9 and 13-15 are objected to because of the following informalities:
Claims 8 and 13 should replace the term “carry” with “are substituted with”
Claim 9 should recite “when” instead of “in case”
Claim 14 should remove the comma following “formula I”
Claim 14: “claim 8 or in the form of a stereoisomer or an agriculturally acceptable salt or a tautomer or N-oxide thereof” should instead read “claim 8 or the stereoisomer, tautomer, N-oxide, or agriculturally acceptable salt thereof” to reflect the language or Claim 8 upon which 14 depends.
Claim 15: “the said” should be amended to read either “the” or “said” in both instances.
Claim 15 should read “fungi with, and/or” instead of “fungi, and/or”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 8-22 are 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 regards as the invention.
Claim 8 recites “the maximum number”. It is unclear what “maximum number” refers to as there is no antecedent basis for “the”. Additionally, the metes and bounds of “maximum number” are unclear. Is maximum referring to the preceding integers, “1,2,3,4”, or the number of substitutable positions present on either Ra or Ra2 group (e.g., an ethyl group has 5 positions whereat H may be replaced with an Rb substituent)? Claims 9-12 and 14-22 are rejected by virtue of dependency.
Claim 8 recites “and in form or stereoisomers and tautomers thereof, and the N-oxides and the agriculturally acceptable salts thereof”. The recitation “and in form or” is not clear. Further, “the N-oxides” and “the…salts” lack antecedent basis. It is suggested that applicant amend the unclear limitation as follows “or a stereoisomer, tautomer, N-oxide, or agriculturally acceptable salt thereof”. Claims 9-13 and 15-22 are rejected by virtue of dependency.
Claim 13 recites “the compound according to wherein”. It is unclear on what claim Claim 13 is meant to depend. For the purpose of compact prosecution, Claim 13 is interpreted to depend on Claim 8 like the preceding dependent Claims 9-12.
Claim 15 recites “the plants or the plant propagation material”. There is no antecedent basis for “the” in either term, plant or plant propagation material. This instance is the first time either appear in the claims.
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.
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.
Claims 8-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano (US20230102860, claiming priority to JP2020015188A, filed 01/31/2020, through PCT/JP2021/003313 constituting prior art under 102(a)(2)).
Nakano teaches methods for controlling F129L mutant soybean rust fungus with compositions of formula (I)
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and auxiliaries (Abstract; Para 111). Specifically, Nakano teaches compounds 366-369 (Para 143; Abstract):
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wherein Q1 is
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,
in which the following definitions of examined formula I apply: R1 is O; R2 is CH; R3 and R4 are each C1alkyl, Me; and Ra is p- or -m-chloride or trifluoromethyl wherein n is 1 (e.g., 368
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). Ra2 is H, which is not an acceptable Ra2 group according to the examined formula. However, Nakano teaches regarding formula (I) that R4 (analogous to the examined core phenyl to which Ra2 is attached) is a phenyl which can be substituted with a C1-4hydrocarbon optionally substituted with halogens (Paras 15, 23, and 29). Further, 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 MPEP 2144.09. One of skill in the art seeking to form fungicides for the purpose described in Nakano before the effective filing date of the invention would therefore find it obvious to form a methyl, alkyl, or haloalkyl homolog of Compounds 366-369 at the instant R2 position and expect the resultant compound to retain fungicidal properties. One would expect success in doing so because Nakano teaches the modification as acceptable and methyl as an alternative embodiment to the hydrogen at any of the four positions on the phenyl in the case of producing a fungicide. Further, the difference of a single CH2 group is a known modification in the art such that “that there is a presumed expectation that such compounds possess similar properties”.
Alternatively, the following definitions of examined formula I apply: R1 is O; R2 is CH; R3 and R4 are each C1alkyl, Me; n is 0; and Ra2 is chloride, a halogen, or trifluoromethyl, a C1alkyl substituted with three Rb groups wherein Rb is a fluoride halogen in each instance of Rb. Ra2 in this case is wrongly oriented at the para or meta positions in Compounds 366-369 rather than the ortho position as required by the examined formula. However, Nakano teaches regarding formula (I) that R4 (analogous to the examined core phenyl to which Ra2 is attached) is a phenyl substituted with hydrocarbons or halogens without limitation as to their orientation (Paras 15, 23, and 29). Further, compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) 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 MPEP 2144.09. One of skill in the art seeking to form fungicides for the purpose described in Nakano before the effective filing date of the invention would therefore find it obvious to form an ortho position isomer of Compounds 366-369 and expect the resultant compound to retain fungicidal properties. One would expect success in doing so because Nakano teaches the modification as acceptable and does not restrict the position of the substituents for the purpose of producing a fungicide. Further, the alternate positioning of substituents is a known modification in the art such that “that there is a presumed expectation that such compounds possess similar properties”.
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.
PROVISIONAL:
1. Claims 8-22 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over Claims 7-20 of copending Application No. 17920796 (hereinafter referred to as BASF).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to overlapping fungicides and composition and methods of combating fungi therewith.
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BASF
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Instant
The BASF (Top) and instant (Bottom) formulae differ in that Ra2 is absent from BASF. However, BASF teaches n may be 1 while the n of the instant is 0, or 2 and 1, and so on. R groups of BASF are the same or more narrowly taught in the dependent claims than in the formula of Claim 1 of the instant application. BASF teaches Ra can be “F, Br, CN”, alkyl, alkoxyl, or other acceptable groups in the definition of instant Ra2. Therefore, one of skill in the art seeking to form a pesticide for the methods described in BASF would find it obvious to select a Ra group encompassed within instant Ra2 because BASF teaches said groups as acceptable. Further, the position of Ra2 is acceptable in the BASF structure depicting variable Ra positions. One would expect success in forming the instant compound by selecting n number of substituents for the same reason that BASF teaches compounds encompassed by formula I are fungicides.
BASF teaches treating soybean rust, but said fungi is not precluded by the instant claims.
Since both applications teach overlapping fungicides, the examiner maintains that the aforementioned claims of the instant application are substantially overlapping in scope as discussed hereinabove and are prima facie obvious over the cited claims of BASF.
This is a provisional nonstatutory double patenting rejection.
2. Claims 8-22 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over Claims 8-10 and 12-20 of copending Application No. 17920797 (hereinafter referred to as BASF).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to overlapping fungicides and composition and methods of combating fungi therewith.
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Instant
The BASF (Top) and instant (Bottom) formulae differ in that Ra2 is absent from BASF. However, BASF teaches n may be 1 while the n of the instant is 0, or 2 and 1, and so on. BASF teaches Ra can be halogen, haloalkyl, or other acceptable groups in the definition of instant Ra2.
Specifically, the following groups are selected in Claims 19-20:
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Therefore, one of skill in the art seeking to form a pesticide for the methods described in BASF would find it obvious to select a Ra group encompassed within instant Ra2 because BASF teaches said groups as acceptable. Further, the position of Ra2 is acceptable in the BASF structure depicting variable Ra positions. One would expect success in forming the instant compound by selecting n number of substituents for the same reason that BASF teaches compounds encompassed by formula I are fungicides.
Since both applications teach fungicides that overlap, the examiner maintains that the aforementioned claims of the instant application are substantially overlapping in scope as discussed hereinabove and are prima facie obvious over the cited claims of BASF.
This is a provisional nonstatutory double patenting rejection.
3. Claims 8-22 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over Claims 1-10, 12-13, and 15-20 of copending Application No. 19479111 (hereinafter referred to as BASF).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to a Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to overlapping fungicides and composition and methods of combating fungi therewith.
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Instant
The BASF (Top) and instant (Bottom) formulae differ in that Ra2 is instead Ra4 at the ortho position in BASF. The formulae overlap when n is at least 1 and Ra is placed at the respective Ra4 or Ra2 positions of the compared formulae. R groups of BASF are the same or more narrowly taught in the dependent claims than in the formula of Claim 1 of the instant application. Ra, Ra2, and Ra4 teach several overlapping groups which would render obvious formula I of the instant over that of BASF. For example, C1alkyl or methyl is common to all the above groups across the applications. The Ra position in the BASF structure that would render obvious the claims of the instant is only one of two possible positions when n is 1. Alternatively, The Ra4 group of BASF could be ring walked to the Ra2 position of the instant formula to form a position isomer. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) 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 MPEP 2144.09.
Therefore, one of skill in the art seeking to form a pesticide for the methods described in BASF would find it obvious to select a Ra group encompassed within instant Ra2 because BASF teaches said groups as acceptable. Further, the position of Ra2 is acceptable in the BASF structure depicting variable Ra positions. One would expect success in forming the instant compound by selecting n number of Ra substituents for the same reason that BASF teaches compounds encompassed by formula I are fungicides, and also position isomers have a “presumed expectation that such compounds possess similar properties”.
BASF teaches treating soybean rust, but said fungi is not precluded by the instant claims.
Since both applications teach fungicides that overlap, the examiner maintains that the aforementioned claims of the instant application are substantially overlapping in scope as discussed hereinabove and are prima facie obvious over the cited claims of BASF.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowable.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard G. Peckham whose telephone number is (703)756-4621. The examiner can normally be reached 8:30am - 4:30pm EST.
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, Kortney Klinkel can be reached on (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD GRANT PECKHAM/Examiner, Art Unit 1627
Prosecution Insights