DETAILED ACTION
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 .
Claims 1-3 are pending in the application.
Election/Restrictions
Applicant's election with traverse of the election of compound of
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in the reply filed on July 17, 2025 is acknowledged. The traversal is on the grounds that if the search and examination of all the claims in an application can be made without serious burden, the examiner must examine them on merits, even though they include claims to independent or distinct inventions. This is not found persuasive because the election of species was issued under lack of unity of invention of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1, not under U.S. practice. As indicated in the election of species requirement, although the chemical compounds of formula I share a common structure of,
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, the common structure is not a significant structural element because it represents only a small portion of the compound structures and does not constitute a structurally distinctive portion in view of constituents R1, Q, J, and E. Further, the compounds of these groups do not belong to a recognized class of chemical compounds. There are multiple alternatives for substituents R1, Q, J, and E. This is illustrated by compounds in the original specification: Compound 2,
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(page 97, line 9), Compound 3,
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(page 98, line 5), and Compound 6
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(page 99, line 19). In addition, there is a search and/or examination burden for the patentably distinct species as they would require a different field of search (including searching different classes/subclasses or electronic resources, or employing different search queries) and the prior art applicable to one species would not likely be applicable to another species.
The requirement is still deemed proper and is therefore made FINAL.
No claims are withdrawn from examination. Claims 1-3 will be examined.
Priority
This application is a National Stage Entry of PCT/JP2021/024490 filed June 29, 2021, which claims benefit to Japanese Foreign Application No. 2020-112466 filed June 30, 2020.
Information Disclosure Statement
Receipt of Information Disclosure Statement filed March 10, 2023 is acknowledged.
Claim Rejections - 35 USC § 112
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 1-3 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.
Regarding Applicant’s elected species of the compound
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, this compound is not currently claimed. This specifically is related to substituent J. Applicant elected J as J1, specifically J1-7. Independent claim 1 claims
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, wherein
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and
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. The definitions of Y1 and Y2 for J1 do not embrace a phenyl ring that is present in the elected compound. While the original specification does provide support for present compound 8, compound 8 is not currently claimed. Limitations from the specification cannot be imported into the claims. To advance prosecution, the species search will be expanded.
Claim 1, lines 5-124 is surrounded by brackets [ ]. These brackets are treated as parentheses. The use of brackets/parentheses renders the claims indefinite because it is unclear whether the limitations between the brackets/parentheses are part of the claimed invention.
Claim 1, lines 6-8; 17-18; 30-32; 34-35; 39-41; 42-44; 54-55; 61-63; 67-69; 70-72; 79-81; 84-86; 88-90; 91-92; 94-96; 98-99; 102-104; 104-106; 110-115; 116-118; and 119-121 use brackets { }. These brackets are treated as parentheses. The use of brackets/parentheses renders the claims indefinite because it is unclear whether the limitations between the brackets/parentheses are part of the claimed invention. For example, in lines 6-8, it cannot be determined if “wherein said C1-C4 alkyl group and said C1-C4 alkoxy group are optionally substituted with one or more halogen atom(s)” is part of the claimed invention.
Claim 3, lines 3-5 and 6-8 use { }. These brackets are treated as parentheses. The use of brackets/parentheses renders the claims indefinite because it is unclear whether the limitations between the brackets/parentheses are part of the claimed invention. For example, in lines 3-5, it cannot be determined if “wherein said C3-C6 cycloalkyl group is optionally substituted with one or more substituent(s) selected from the group consisting of a C1-C3 alkyl group and a halogen atom” is part of the claimed invention.
Claim 2 is dependent from claim 1. As such, claim 2 is also rejected.
Regarding the election of species, since Applicant’s elected species is not currently claimed, as indicated hereinabove, the search has been expanded to a compound the reads on the compound represented by formula (I).
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.
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 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over JP 08-027133 (English translation). JP 08-027133 cited by Applicant on the IDS dated 3/10/2025.
Applicant’s Invention
Applicant claims a method for controlling a soybean rust fungus having an amino acid substitution of F129L in a mitochondrial cytochrome b protein, which comprises applying an effective amount of a compound represented by formula (I)
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or an N-oxide or an agriculturally acceptable salt thereof to a soybean or soil for cultivating a soybean.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
JP 08-027133 teaches a compound capable of manifesting excellent controlling effects of plant disease injury (page 2, Purpose, translation).
Regarding claims 1 and 3, JP 08-027133 teaches the compound of the general chemical formula 1
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(page 3, Claim 1, translation). JP 08-027133 teaches in Table 1, compound 1
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, . Substituents W and X correspond to Q1 of the instant invention, wherein X1 is N and X2 represents -C(O)OCH3. Substituent Y corresponds to J=J2 of the instant invention, wherein Y3 is N and Y4 is O. R1 corresponds to substituent E of the instant invention, wherein E is a phenyl group. Substituent (R1)n of the instant invention, wherein n is 0.
JP 08-027133 teaches the compound has control of rust disease and soybean pupura (page 8, paragraph [004], translation).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
JP 08-027133 does not specifically disclose the method for controlling a soybean rust fungus having an amino acid substitution of F129L in a mitochondrial cytochrome b protein.
Finding a prima facie obviousness Rationale and Motivation
(MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of JP 08-027133 to control a soybean rust fungus having an amino acid substitution of F129L in a mitochondrial cytochrome b protein. JP 08-027133 teaches the compound of the general chemical formula 1
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(page 3, Claim 1, translation). JP 08-027133 teaches in Table 1, compound 1
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, . Substituents W and X correspond to Q1 of the instant invention, wherein X1 is N and X2 represents -C(O)OCH3. Substituent Y corresponds to J=J2 of the instant invention, wherein Y3 is N and Y4 is O. R1 corresponds to substituent E of the instant invention, wherein E is a phenyl group. Substituent (R1)n of the instant invention, wherein n is 0. JP 08-027133 further teaches control of rust disease and soybean purpura. Compound 1 taught by JP 08-027133 is a compound of the instantly claimed compound of formula (I). Controlling a soybean rust fungus having an amino acid substitution of F129L in a mitochondrial cytochrome b protein is the intended use. As such, following the prior art teaching that if the same compound is taught in the prior art, the skilled artisan would expect to obtain a result that necessarily flows with the intended purpose and properties, i.e., controlling a soybean rust fungus having an amino acid substitution of F129Lin a mitochondrial cytochrome b protein, without evidence to the contrary.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent No. 4,877,811 (Anthony et al). Anthony et al. discloses Applicant’s elected compound that is useful in agricultural, especially fungicides.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614