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 .
Status of claims
Claims 1-9 and 11-15 are pending in this application.
Claims 1-9 and 11-12 will presently be examined pursuant to Applicant’s election of Group I without traverse in the response filed on 5/13/2025. Claims 13-15 are withdrawn from further consideration as being directed to non-elected inventions.
Withdrawn ground of rejection
The outstanding ground of rejection of claims 1-9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of corrective amendments filed on 10/15/2025. However, rejection of claims 11-12 under the same ground must be maintained for the reasons set forth below.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 11-12 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is recognized that Applicant has amended claims 11 and 12 to delete claim language related to “defined as before,” which was noted as indefinite in the Office action of 7/15/2025. However, claims 11 and 12 are still indefinite for the following reasons.
Claim 11
Amended claim 11 is reproduced in part below –
PNG
media_image1.png
360
498
media_image1.png
Greyscale
The problem with this claim structure is that the variables such as A, Q, T, U1, R1 … R6, which were previously “defined as before” are now not defined at all. It is important to note that formula (1) is not formula (I), and formula (2) is not formula (I). Therefore, the claim language must positively recite a reference to earlier definitions in a manner that is not indefinite. The Examiner suggests the following format as the last
clause of claim 11, with necessary amendment to correspond to this suggestion:
wherein m, n, p, A, Q … and R7 of formula (I-a),
p, A, Q, Y, and T of formula (1), and
m, n, R1, R2 … R6 of formula (2)
are defined as in claim 1 for formula (I).
Claim 12
The same or analogous comments apply to claim 12, which has the same indefiniteness issue. Also, it is noted that “Q is defined as before” is still recited in claim 12. Further, deletion of “such as” phrase would improve the claim.
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 and 7-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, and 12 of copending Application No. 18/009,681 (reference application) in view of Wada et al. (US 5,154,750) and Takabe et al. (US 5,403,816). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claims 11 and 12 of the reference application depend on claim 1. Claims 11 and 12 of the reference application recite a compound of formula (3). Instant claims 1-4 and 7-8 are readable on said compound of formula (3) of the reference application. The variable substituents of formula (3) of the reference application have substantially similar and overlapping definitions relative to the instant application claims, wherein W can be H and L can be a direct bond (see table below). In the instant application claims 1-4, 7-9, and 11-12, the variable Q encompass 3- to 14-membered heterocyclyl.
Wada et al. (US 5,154,750) and Takabe et al. (US 5,403,816) are cited to show that phthalimide group, as used by Formula (3) of the reference application claims, is a known substituent in compounds used in the agricultural field. See Wada et al., claim 1, definition of R2; Takabe et al., claim 1, definition of R3 and R4.
The ordinary skilled artisan would have recognized that the compounds and composition of formula (I) of the instant application are readable on compound of formula (3) of the reference application because all of the variable substituents are disclosed and suggested by the reference application claims and further suggested by Wada et al. and Takabe et al. For example, compounds from the instant application are disclosed and suggested by the claims of the reference application as shown in the table below –
Substituent in instant application
Corresponding substituent in the
reference application 18/009,681
A = N or CR8, wherein R8 includes H
A1 = N or CR8, wherein R8 includes H
Y = forms together with the pyridine or pyridazine ring respectively a bicyclic heterocyclyl or bicyclic heteroaryl
Y = forms together with the pyridine or pyridazine ring respectively a bicyclic heterocyclyl or bicyclic heteroaryl
R7 = halogen, CN, nitro, OH …
p = 0 to 4
R7 = halogen, CN, nitro, OH …
p = 0 to 4
T = O
O at the same position
R1 = H …
W = H
n = 1
n = 1 is incorporated in formula (3)
L = bond
R2 = H, OH …
R5 = H, OH …
R3 = C3-8 cycloalkyl …
R6 = C3-12 carbocyclyl …
R4 = H, halogen, CN, OH …
R3 = H, halogen, CN, OH …
R4 = H, halogen, CN, OH, carboxyl …
R4 = H, halogen, CN, OH …
R6 = 5 to 14-membered heteroaryloxy,
3 to 14-membered heterocyclyloxy …
PNG
media_image2.png
132
94
media_image2.png
Greyscale
Q = C6-14 aryl, C3-12 carboocyclyl,
3 to 14-membered heterocyclyl,
5 to 14 membered heteroaryl …
Q = C6-14 aryl, C3-12 carboocyclyl,
3 to 14-membered heterocyclyl,
5 to 14 membered heteroaryl …
Therefore, compounds and composition of the instant application claims are readable on the compounds of formula (3) of the reference application.
Applicant’s arguments filed on 5/13/2025 have been given due consideration but they were deemed unpersuasive. Applicant argues that the phthalimide moiety is at the wrong position. However, the broad definition of R6 of the instant application claims as set forth above encompasses the phthalimide group of the reference application at the corresponding position; and the broad definitions of Q and Y of both the instant application and the reference application substantially overlap.
For these reasons, the ordinary skilled artisan would have recognized the instant application claims as an obvious variation of the invention set forth in the reference application.
Claims 2-6 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
THIS ACTION IS MADE FINAL. 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 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.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/JOHN PAK/Primary Examiner, Art Unit 1699
Prosecution Insights