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 .
This application is in response to Applicant’s amendment filed March 16, 2026. Claims 1-23 are pending in the applications. Claims 1, 2, 3, and 4 have been amended.
Claims 6, 7, 8, and 10-20 are withdrawn from further consideration as being drawn to a nonelected inventions and species. Claims 1-5, 9, and 21-23 will presently be examined to the extent they read on the elected subject matter of record.
Status of the Claims
The rejection of claims 1-5, 9, and 21-23 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to Applicant’s cancellation of the parentheses.
The rejection of claims 2, 3, and 4 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 is maintained for lack of antecedent basis, as indicated herein below.
The rejection of claims 1-5 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by the Peukert Publication is withdrawn due to Applicant’s amendment of the claim to add the limitation of “when R2 is (b1), substituent group A selected form the group consisting of (e1) to (e5) and (e7) to (e37)”.
The rejection of claims 1-5, 9, and 21-23 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/725,643 (‘643) is maintained.
New Rejections Necessitated by Amendment filed March 16, 2026
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2, 3, and 4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The new matter introduced, “(b4) and (b5), separately represent one of (b6)-(b109), wherein (b6)-(b109) represent”, in lines 10-11; line 20; and lines 20-21, in claims 2, 3, and 4, respectively. There is no explicit or implicit support in the original specification that “(b4) and (b5), separately represent one of (b6)-(b109)”.
Examiner’s Note
The examiner notes that during the interview on February 20, 2026 it was indicated that the claim language that was added to claims 2, 3, and 4 would overcome the 35 U.S.C. 112(b), lack of antecedent basis rejection of record. However, a careful review of the original specification found no support in the original specification for the addition of these limitations, as indicated in the newly added “new matter” rejection. As such, the 112(b) rejection is maintained herein below.
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.
Claim 2 recites the limitation "(b6) through (b109)" in lines 9-163. There is insufficient antecedent basis for this limitation in the claim. Claim 2 depends from claim 1, wherein R2 represents (b1) to (b5). There is no basis to expand substituent R2 beyond (b5). There are no R2 substituents claimed in claim 1 that can be expanded to 103 other alternatives, as claimed in claim 2. As such, there is lack of antecedent basis.
Claim 3 recites the limitation "(b6) through (b37)" in lines 21-62. There is insufficient antecedent basis for this limitation in the claim. Claim 2 depends from claim 1, wherein R2 represents (b1) to (b5). There is no basis to expand substituent R2 beyond (b5). There are no R2 substituents claimed in claim 1 that can be expanded to 28 other alternatives, as claimed in claim 3. As such, there is lack of antecedent basis.
Claim 4 recites the limitation "(b6), (b7), (b10), (b11), (b16), (b17), (b22), (b23), (b28), and (b29)" in lines 19-33. There is insufficient antecedent basis for these limitations in the claim. Claim 2 depends from claim 1, wherein R2 represents (b1) to (b5). There is no basis to expand substituent R2 beyond (b5). There are no R2 substituents claimed in claim 1 that can be expanded to 10 other alternatives, as claimed in claim 4. As such, there is lack of antecedent basis.
Response to Arguments
Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive. Applicant argues that claims 2-4 as amended clarify the relationship between (b4) and (b5) and substituents (b6)-(b109). In response to Applicant’s argument, it is noted that during the interview on February 20, 2026 it was indicated that the claim language that was added to claims 2, 3, and 4 would overcome the 35 U.S.C. 112(b), lack of antecedent basis rejection of record. However, a careful review of the original specification found no support in the original specification for the addition of these limitations, as indicated in the newly added “new matter” rejection. As such, the 112(b) rejection is maintained. The rejection can be overcome by providing support for the newly added limitations in the original specification.
The Examiner searched for Applicant’s elected species
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and no prior art was found to reject 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.
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 1-5, 9, and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/725,643 (‘643). Although the claims at issue are not identical, they are not patentably distinct from each other because each are drawn to a compound represented by general formula (1)
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(claim 1, instant application) and
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(claim 1, copending application no. ‘643). Substituents R1 of each application drawn to the same (a1) through (a14). Substituent R2 of the instant application is drawn to (b1) to (b5), which corresponds to R2 of copending application no. ‘643, wherein R2 is Q. Substituent R3 of the instant invention corresponds to R6 of copending application no. ‘643 which are directed to the same atoms. The definitions of substituent R3 of the instant invention corresponds to substituent R6 of copending application no. ‘643. The definitions of substituent R4 of the instant application corresponds to R7 of copending application no. ‘643. The definitions of substituents X and Y of the instant application correspond to substituents X and Y of copending application no. ‘643. Each is drawn to an insecticidal agent (claim 5, instant invention; claim 9, copending application No. ‘643). Each is drawn to a method of using an insecticidal agent comprising applying an effective amount of the insecticidal agent to a plant or soil. For these reasons, one of ordinary skill in the art would conclude that the invention defined in the instant claims is obvious over the invention defined in the claims of copending application ‘643.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The examiner notes applicants request to hold the double patenting rejection in abeyance. The rejection of claims 1-3 and 16-21 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5, 9, and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/725,643 (‘643) is maintained.
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 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.
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, 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
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