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 8-10 and 12-20 are currently pending.
Election/Restriction
Applicant’s election with traverse of Group II (Claims 8-10, 12-14, and 16-20, drawn to compounds of formula I) and compound 186 as the elected species in the reply filed on 6/01/2026 is acknowledged. (Applicant recites Claims 8-14 and 16-20 as belonging to Group II; however, the latest amendments render Claim 11 canceled.)
Applicant argues that the required restriction/election is improper because amended Claim 8 does not encompass the compound cited in the restriction requirement. Applicant’s argument is persuasive and the restriction requirement is withdrawn. Claims 8-10 and 12-20 are examined on the merits 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 be amended to read “claim 8 or the stereoisomer, tautomer, N-oxide, or agriculturally acceptable salt thereof” to better reflect the language of Claim 8.
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 8-10 and 12-20 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 the Ra group (e.g., an ethyl group has 5 positions whereat H may be replaced with an Rb substituent)? Claims 9-10, 12, 14-16, and 18 are rejected by virtue of dependency.
Claim 8 recites “and in form of stereoisomers and tautomers thereof, and the N-oxides and the agriculturally acceptable salts thereof”. “the N-oxides” and “the…salts” lack antecedent basis. Further, the language of the limitation is not clear grammatically. It is suggested that applicant amend the unclear limitation as follows “or a stereoisomer, tautomer, N-oxide, or agriculturally acceptable salt thereof”. Claims 9-10, 12-13, and 15-20 are rejected by virtue of dependency.
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 8-10 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (WO9823156, 11/30/2022 IDS).
Brown teaches fungicidal compounds, methods of combating phytopathogenic fungi therewith, and compositions thereof with auxiliaries like surfactants and diluents (Abstract; Page 9, Lines 21-24). Brown teaches the following compounds in particular (Pages 79, 83, and 86):
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, wherein
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and
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,
in which the following definitions of examined formula I apply: R1 is O; R2 is CH; R3 is Me; R4 is OMe; and Ra is selected from the substituents attached to phenyl in the above Z groups, all of which are acceptable embodiments according to examined formula I (halogen or haloalkyl), wherein n is 1 (e.g.,
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).
OMe is not an acceptable R4 group according to the definition of instant Claim 1. However, it is known that 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. Because CH2OMe and OMe only differ by a methylene group, one of skill in the art seeking to form fungicidal compounds to treat plants would find it obvious to form the methylene homolog of the Brown compound before the effective filing date of the instant application because the modification is known in the art and the compounds are “generally of sufficiently close structural similarity”. Further, one of skill in the art would also expect successful formation of a fungicide because “there is a presumed expectation that such compounds possess similar properties” following the modification described above.
No rejection is applied over art teaching similar compounds wherein R3 as defined in Claim 1 is not present. The groups fixed at the R3 position of the examined formula are associated with the unexpectedly enhanced efficacy against F129L mutant fungi shown in comparative examples of Tables C2 and C3 of the specification. Select examples from Table C2 are shown here (Page 120):
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.
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 8-10 and 12-20 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over Claims 8-22 of copending Application No. 17920795 (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 genera of fungicides, compositions, and methods of combating fungi therewith.
The following formulae are taught:
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BASF;
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Instant;
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or
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.
The instant formula lacks the Ra2 group of BASF; however, Ra2 can be present so long as n is at least 1 in the instant formula and the substituent is positioned ortho to the oxime linkage on the phenyl, which is encompassed by the instant formula.
Regarding Claim 20, -methylene-O-methyl is only one of four embodiments of R4 in the BASF structure. It would be obvious to select the simplest embodiment from the limited list because so few iterations are possible.
Since both applications teach fungicides of the same core and the same or heavily overlapping R groups, 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 8-10 and 12-18 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 genera of fungicides, compositions, and methods of combating fungi therewith.
The following formulae are taught:
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BASF;
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Instant.
BASF teaches the following with respect to R groups:
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or specifically C1-C2alkyl (in Claim 10);
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or 0.
BASF also teaches the fungi to be combatted are soybean rust; this type is not precluded by the instant method.
Since both applications teach fungicides of the same core and the same or heavily overlapping R groups, 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 8-10 and 12-20 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 overlapping genera of fungicides, compositions, and methods of combating fungi therewith.
The following formulae are taught:
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BASF;
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Instant;
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.
Since both applications teach fungicides of the same core and the same or heavily overlapping R groups, 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