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 .
Election/Restrictions
Applicant’s response to the restriction/ election requirement is acknowledged. The Examiner required election of: 1) a single compound of formula I, and 2) a single phytopathogenic fungus. Applicant has provisionally elected: 1) compound No. 8, and 2) Phakospora pachyhizi.
The structure of compound 8, per Applicant’s specification, is the following:
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Applicant has traversed on the ground that the PTO merely asserts that the “species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept,” but does not provide any rationale. Applicant asserts that the claims cover a single class of compound with a common core and have fungicidal activity.
The Examiner responds that this application contains claims directed to more than one species of the generic invention, which species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.2.
Where a single claim defines alternatives of a Markush group, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2, is considered met when the alternatives are of a similar nature. When the Markush grouping is for alternatives of chemical compounds, the alternatives are regarded as being of a similar nature where the following criteria are fulfilled:
(A) all alternatives have a common property or activity; AND
(B)(1) a common structure is present, that is, a significant structural element is shared by all of the alternatives; OR
(B)(2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.
The phrase “significant structural element is shared by all of the alternatives” refers to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity.
The phrase “recognized class of chemical compounds” means that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention, i.e. each member could be substituted one for the other, with the expectation that the same intended result would be achieved.
The claimed phytopathogenically active compounds are not regarded as being of similar nature because: (1) the alternatives do not all share a common structure and (2) the alternatives do not all belong to a recognized class of chemical compounds. This is further evident in view of Applicant's own disclosure, which is broadly directed to many different classes of phytopathogenically active compounds with different core structures. (See, e.g., p. 11, l. 9- p. 12, l. 5; p. 45).
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In fact, the core structures can be much more variable than the above examples taking the definitions of just R4 and R5 as non-limiting examples.
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Similarly, phytopathogenic fungi cannot be deemed as being of similar nature because: (1) the alternatives do not all share a common structure and (2) the alternatives do not all belong to a single recognized class in taxonomy. See, e.g., excerpts from the following reference on fungal taxonomy and plant pathogens.1
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To that end, Applicant is further invited to review in its entirety the attached STN report, where nearly every reference discloses a compound according to Applicant’s claims, and where at least a dozen would be merited across the breadth of the claims.
The elected species itself was found to be free of art.
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In view of the voluminous prior art, the office action was expanded to encompass a broader genus around Applicant’s elected species of compound, wherein as in Applicant’s elected species, the fused ring formed by R4 and R5 forms a 5-membered carbocycle. To that end, it is also noted that Applicant’s response did not note, as required, which claims read on Applicant’s elected species. The Examiner has determined that these claims are 1-4, 7, 10, 13 and 14, but only subject to the 35 U.S.C. 112(b) rejection below.
The election/ restriction requirement is hereby MADE FINAL. Claims are 1-4, 7-10, and 13-15 are pending, and have been examined herewith to the extent of Applicant’s elected species, and the broader genus around it, wherein as in Applicant’s elected species, the fused ring formed by R4 and R5 forms a 5-membered carbocycle. Claims 5, 6, 8 and 9 are withdrawn from consideration as directed to non-elected species.
Claim Objections
Claims 8 and 9 are objected to because of the following informalities: there is mixing of fonts in the word “together”. See, e.g. claim 8.
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Appropriate correction is required.
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 1-4, 7-10 and 13-15 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.
The compound of Formula I, as depicted in claim 1, is vague and indefinite. There is a small line hanging off the right side of the bond on R1, which has no meaning in chemistry. Similarly, to the left of R1 there is a double bond with no atom attached to it, which again depicts a compound with no meaning in chemistry. It appears as if the compound structure was snagged not in its entirety.
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In view of the Specification, the Examiner determines the compound of formula I to be:
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Claim 1 further recites the limitation: “wherein the carbo- or heterocycle is unsubstituted or carries 1, 2 or up to the maximum possible number of identical or different groups R⁴⁵”. The limitation “up to the maximum possible number” is vague and indefinite and subject to many different interpretations.
Claim 1 is further vague and indefinite in view of the limitation “and in form of stereoisomers and tautomers thereof, and the N-oxides and the agriculturally acceptable salts thereof.” Specifically, there is no antecedent basis for “the” before “N-oxides” and “agriculturally acceptable salts thereof. Further, as worded it is unclear if N-oxides and agriculturally acceptable salts thereof is solely in reference to the claimed stereoisomers and tautomers. It is further unclear from this language of the claim if solely stereoisomers and tautomers of the compounds of formula I are claimed. It appears that they are, because the claim explicitly says “and in form of stereoisomers and tautomers thereof”. However, the structures depicted in the specification are neither stereoisomers, nor tautomers. Contrast this also with the language of claim 10 “or in the form of a stereoisomer or an agriculturally acceptable salt or a tautomer or N-oxide thereof”, which does not have any of the above issues.
Claim 1 is further vague and indefinite in view of the limitation “R4 and R5, together with the three interjacent carbon atoms, form a partially unsaturated 5-ro 6-membered carbo- or heterocycle”. However, what Applicant has indicated to be the elected species, compound 8, does not have a partially unsaturated 5-membered carbocycle, i.e. there is no double bond in it. The carbocycle is fully unsaturated.
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Similarly, despite this same language in the specification too, many of the compounds listed to be according to the invention have fully saturated carbocycles.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claims 1-4, 7-10 and 13 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 20050124498 to Maurer et al. (“Maurer”), as further evidenced by its STN accession number: 139:214487 (“STN ‘487”).
Maurer relates to novel halobenzenes, to processes for their preparation and to their use for controlling harmful organisms of general formula (I), in particular in view of their strong fungicidal action. (Abstract, [0069], [0321-0324]).
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STN ‘487, the STN document, which corresponds to Maurer, discloses the following assembled compound based on the disclosure of Maurer, which is according to Applicant’s claims.
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Claims 1-4, 7-10 and 13 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 6,211,240 to Zurfluh (“Zurfluh”), as further evidenced by its STN accession number: 122:160286 (“STN ‘286”).
Zurfluh relates to compounds of the formula I, which are suitable as fungicidal active ingredients in crop protection.
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(Abstract, col. 2, ll. 50-51).
STN ‘286, the STN document, which corresponds to Zurfluh, discloses the following assembled compound based on the disclosure of Maurer, which is according to Applicant’s claims.
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Claims 1-4, 7-10 and 13 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 5,763,640 to de Fraine et al. (“de Fraine”), as further evidenced by its STN accession number: 115:201133 (“STN ‘133”).
De Fraine discloses compounds of formula (I), which are useful as fungicides.
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STN ‘133, the STN document, which corresponds to de Fraine, discloses the following assembled compound based on the disclosure of Maurer, which is according to Applicant’s claims.
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Claims 1-4 and 7-10 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 5,606,095 to Pffifner et al. (“Pffifner”).
Pffifner discloses compounds of claim 1, a specific example of which the compound of Example 17, which is according to Applicant’s claims. Pffifner discloses them as useful as microbicides in plant protection. (col. 1, l. 22).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to SVETLANA M IVANOVA whose telephone number is (571)270-3277. The examiner can normally be reached 8:30-5:00.
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 L. Klinkel can be reached at (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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/SVETLANA M IVANOVA/ Primary Examiner, Art Unit 1627
1 https://www.aciar.gov.au/sites/default/files/legacy/node/8613/MN129%20part4.pdf
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