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
Status of 18/002,928
Claims 9-10 and 12-18 are currently pending.
Priority
Instant application 18/002,928, filed 12/22/2022, claims priority as follows:
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Receipt of the foreign priority application is acknowledged.
Information Disclosure Statement
All references from the IDS’s submitted on 12/22/2022 and 1/4/2024 have been considered unless marked with a strikethrough.
Response to Arguments/Amendments
The amendment filed 6/22/2026 has been entered. Claims 9, 12, 13, and 16 have been amended. Claims 1-8 and 11 have been cancelled, and claims 17-18 have been added, but are not considered new matter.
In the Non-Final dated 2/25/2026, the specification was objected to for containing embedded hyperlinks and/or other form of browser-executable codes. In response, Applicant has amended the specification to omit the hyperlinks, which overcomes the objection. Thus, the objection is withdrawn.
Claims 12 and 13 were objected to in the Non-Final dated 2/25/2026 for minor grammatical informalities. In response, Applicant has corrected the informalities, which overcomes the objection. The objection is withdrawn.
In the Non-Final dated 2/25/2026, claims 9 and 16 were rejected under 35 U.S.C. 112(b). In response, Applicant has added definitions for variables R81 and R82 in claim 9, and has struck through the definition of variable R2 in claim 16. These amendments overcome the rejection, and thus, the rejection is withdrawn.
Claims 1-5, 8, and 10-15 were rejected under 35 U.S.C. 102(a)(2) in the Non-Final dated 2/25/2026. In response, Applicant has cancelled claims 1-5, 8, and 11 and amended claims 10 and 12-15 to be ultimately dependent on claim 9, which overcomes the rejection. Thus, the rejection is withdrawn.
Claim 16 was rejected under 35 U.S.C. 102(a)(1) in the Non-Final dated 2/25/2026. In response, Applicant has amended the claim to omit the limitation where R3 can be hydrogen, which overcomes the rejection. The rejection is withdrawn.
In the Non-Final dated 2/25/2026, claims 1-3, 6-7, and 10-15 were rejected under 35 U.S.C. 103. In response, Applicant has cancelled claims 1-3, 6-7, and 11, amended claims 10 and 12-15 to be ultimately dependent on claim 9, which overcomes the rejection. Thus, the rejection is withdrawn.
Claims 1-16 were rejected on the ground(s) of nonstatutory double patenting in the Non-Final dated 2/25/2026. In response, Applicant has cancelled claims 1-8 and 11, and amended claim 9 to define all variables in addition to amending claims 10 and 12-15 to ultimately be dependent on claim 9. This does not overcome the rejection because the genera of the instant claims still overlaps with the genus of the ‘151 Application (now also referred to as U.S. Patent No. 12,583,851) and the rejection is maintained. The rejection has been updated to reflect Applicant’s change in claims and the issuance of the ‘851 Patent.
Additionally, Applicant’s amendments necessitated the new ground(s) of rejection presented in this Office Action.
Election/Restriction
Applicant’s election of Group I, claims 1-11, drawn to compounds and compositions of formula (I), with traverse, in the reply filed 10/23/2025 is acknowledged. Applicant’s election of (rac)-3-Chloro-5-(methylsulfonyl)-N-{1-[3-(2H-1,2,3-triazol-2-yl)pyrazin-2-yl]ethyl}benzamide, compound I-1:
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without traverse, in the reply filed 10/23/2025, is also acknowledged. The Examiner notes though the image depicts incorrect valency in the central amide, the nitrogen should have a hydrogen to complete valency as per the chemical name.
The traversal is on the grounds that the essential technical feature is the core of Formula (I), and thus all groups have unity of invention. Further, Applicant argues that the compounds of the instant invention are novel and nonobvious over the prior art Syngenta Participations AG (WO 20208/070049 A1, cited in the IDS of 12/22/2022) of the Restriction/Election of Species Requirement of 7/16/2025. Applicant’s arguments have been considered, and have been found persuasive. Thus, the restriction requirement has been withdrawn.
MAINTAINED REJECTIONS
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 9, 12-14, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,583,851 (herein after the ‘851 Patent and previously referred to as Application No. 17/766,151).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘851 Patent teach compounds of formula (I):
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Which overlaps with formulae (I-viii)-(I-xii) I of the instant claims. The utility disclosed in the instant specification provides further support for a nonstatutory double patenting rejection. See MPEP 804(I)(B)(1) and Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010).
However, formula I of the ‘851 Patent differs from the instant claims by the variable R4. The variable R4 of the ‘851 Patent can be a monocyclic heterocycle selected from the group consisting of a 5-membered heteroaryl, a 6-membered heteroaryl, and a 3-6 membered heterocycle, each of which containing 1 or 2 heteroatoms selected from the group consisting of N, O, and S. The instant claims require R4 to be a monocyclic 5-membered heteroaryl, containing 3 or 4 heteroatoms selected from the group consisting of N, O, and S.
Though the claims of the ‘851 Patent differ by the fact that the 5-membered heteroaryl contains 1 or 2 heteroatoms, whereas the instant claims require 3 or 4 heteroatoms, it would have been prima facie obvious to one of ordinary skill in the art to arrive at a 3 or 4 heteroatom 5-membered heteroaryl from the teachings of the ‘851 Patent because according to MPEP § 2144.09, second paragraph, “Compounds which are position isomers or homologs 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 USPQ426 (CCPA 1997). The 5-membered heteroaryl with 3 or 4 heteroatoms is expected to be preparable by the same method as the 5-membered heteroaryl with 1 or 2 heteroatoms and is expected to generally have the same properties. The expectation is then deemed the motivation for preparing the 5-membered heteroaryl with 3 or 4 heteroatoms.
NEW REJECTIONS NECESSITATED BY AMENDMENT
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 9-10 and 12-15 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.
Claim 9 recites the limitations necessary for instant formula (I-xii), and specifically recites in the text that “R81 is H”. However, formula (I-xii) in the figure above does not recite the variable R81, and thus, the limitation is unclear. Variable R82 is depicted in the figure of formula (I-xii), but is not recited in the text of the claim. Dependent claims 10, 12, 13, 14, and 15 do not resolve the issue and are also rejected. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 9 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by as being anticipated by Syngenta Crop Protection AG (WO 2021/037614, cited in the IDS of 12/22/2022, herein after “Syngenta ‘614”).
The reference Syngenta ‘614 discloses pesticidally active compounds (abstract), and specifically discloses compound A-1.021 (page 41):
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Which anticipates a compound of instant formula (I-viii):
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When R82 is H, R5 is H, R6 is H, n is 2, one R7 is bromine, and the other R7 is trifluoromethoxy. Thus, Syngenta ‘614 anticipates claim 9.
Claim 16 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Syngenta Crop Protection AG (WO 2021/083936, cited in the IDS of 12/22/2022, herein after “Syngenta ‘936”). The Examiner notes that the reference was published after the effective filing date of the instant claims. However, the reference qualifies as prior art under 35 U.S.C. 102(a)(2) because the priority document EP 19206744.5, available 04 Nov 2019, contains support for the document.
The reference Syngenta ‘936 discloses compound III(i).22 (page 189):
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Which anticipates a compound of instant Formula X:
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When R3 is C1 alkyl, R4 is a 5-membered heteroaryl containing 3 N’s, R5 is hydrogen, and R6 is hydrogen. Thus, claim 16 is anticipated by Syngenta ‘936.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Syngenta Crop Protection AG (WO 2021/037614, cited in the IDS of 12/22/2022, herein after “Syngenta ‘614”). This rejection applies to the elected species.
Determining the scope and contents of the prior art
The reference Syngenta ‘614 teaches pesticidally active compounds (abstract), and specifically teaches compounds of formula I:
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,
Of which the instant elected species, (rac)-3-Chloro-5-(methylsulfonyl)-N-{1-[3-(2H-1,2,3-triazol-2-yl)pyrazin-2-yl]ethyl}benzamide, is a compound of when R1 is H, R2a is C1 alkylsulfonyl, R2b is a halogen, A is C-R2c, R2c is H, R3 is C1 alkyl, R4 is
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, where R4b is H and R4c is H, R5a is H, and R5b is H (page 139, claim 1).
In addition to the genus above, Syngenta ‘614 teaches compounds that would direct a skilled artisan to the elected species. Specifically, Syngenta ‘614 teaches compounds such as P33 and P35, both active in pesticide assays (Examples B1, B3, B4, B6, B9, and B10), that differ by a single substituent on the R2 phenyl from the elected species (page 105, Table). The elected species contains a chloro substituent and a methylsulfonyl substituent at the meta positions of the ring, whereas the compound P33 contains a chloro and a C1haloalkoxy at the meta positions, and P35 contains a chloro and a bromo at those same positions. Not only would one of ordinary skill immediately recognize a methylsulfonyl as an additional electron-withdrawing substituent to try on the ring, Syngenta ‘614 also teaches a methylsulfonyl at the meta position of the phenyl ring as variable K17 in preferred embodiments of the invention (page 10).
Further, compounds of Syngenta ‘614 were placed in DMSO to generate formulations and compositions (Examples B1-B10), and are useful for treating insects such as corn root worms, diamond back moths, and green peach aphids.
Ascertaining the differences between the prior art and the claims at issue
The reference Syngenta ‘614 fails to teach the elected specie as an anticipatory specie.
Resolving the level of ordinary skill in the pertinent art
The level of ordinary skill in the art is represented by an artisan who has sufficient background in the development of pesticides. An artisan possess the technical knowledge necessary to make adjustments to the pesticides to enhance their effectiveness. Said artisan has also reviewed the problems in the art as regards to use of said pesticides and understands the solutions that are widely known in the art.
Considering objective evidence present in the application indicating obviousness or nonobviousness
It would have been prima facie obvious to arrive at the limitations of the instant claims because Syngenta ‘614 teaches the genus formula I, of which the elected species is a compound of. Additionally, Syngenta ‘614 teaches compounds active in pesticide assays that differ by a single substituent from the elected species, and further directs a skilled artisan to the substituent by highlighting a phenyl ring with a meta-methylsulfonyl as a preferred embodiment. A skilled artisan would be motivated to synthesize the elected species because structurally similar compounds would be expected to have structurally similar properties. According to MPEP § 2144.08:
In fact, similar properties may normally be presumed when compounds are very close in structure. Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 871 (Fed. Cir. 1985) (“When chemical compounds have ‘very close’ structural similarities and similar utilities, without more a prima facie case may be made.”). Thus, evidence of similar properties or evidence of any useful properties disclosed in the prior art that would be expected to be shared by the claimed invention weighs in favor of a conclusion that the claimed invention would have been obvious. Dillon, 919 F.2d at 697-98, 16 USPQ2d at 1905; In re Wilder, 563 F.2d 457, 461, 195 USPQ 426, 430 (CCPA 1977); In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
One of ordinary skill in the art would have reasonably predicted that the elected species would result in a compound capable of treating pesticides in view of the teachings of Syngenta ‘614. The Examiner notes this argument can be expanded to encompass multiple compounds of the instant invention.
Issue of Note
Claim 15 recites, “Seed obtained by a method according to claim 14”, which has been evaluated under the subject matter eligibility test for products and processes. Though the claim is directed to a seed, which is a natural phenomenon (product of nature), the claim recites additional elements that amount to significantly more than the judicial exception because the seed is a seed obtained by a method of treating a plant pest with a compound according to claim 1, or a formulation thereof, by contact with a seed or germinating plant. Thus, the subject matter is considered eligible under 35 U.S.C. 101.
Conclusion
No claims are 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 Kendall Heitmeier whose telephone number is (703)756-1555. The examiner can normally be reached Monday-Friday 8:30AM-5:00PM ET.
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/K.N.H./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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