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, 6, 8, 26, and 28-33 are pending in this application.
Withdrawn grounds of rejection
The outstanding ground of rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the amendment to the claims filed on 1/28/2026.
The outstanding ground of rejection under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstract Service (CAS), file Registry is withdrawn in view of the amendment to the claims and arguments filed on 1/28/2026, which excludes numerous specific compounds by Registry number and further excludes the remaining compounds by the definitions of G and R1.
The outstanding ground of rejection under 35 U.S.C. 103 over Chemical Abstract Service (CAS), file Registry is withdrawn in view of the amendment to the claims and arguments filed on 1/28/2026, which excludes numerous specific compounds by Registry number and further excludes the remaining compounds by the definitions of G and R1.
New grounds of rejection necessitated by the claim amendment or IDS of 1/28/2026
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 1, 3, 6, 8, 26, and 29-33 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.
Independent claim 1 has been amended to exclude 52 specific compounds, which are named by nomenclature and Registry numbers. These compounds were not specifically disclosed in the originally disclosure. For example, compound having the Registry number 1555365-87-1 has the following structure:
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; but specific selection of R1, R2, R3, R4, R5, R6, and Rf to arrive at this compound was not sufficiently disclosed to provide a basis for exclusion; Rf = CH2Br in combination with the other substituents was not reasonably conveyed. Any negative limitation or exclusionary proviso must have basis in the original disclosure.
For these reasons, the amend claims fail to find adequate descriptive support from the originally filed disclosure.
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)(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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstracts Service (CAS), file Registry (submitted by Applicant in the IDS of 1/28/2026, Non-Patent Literature Document #1).
Non-Patent Literature Document #1 of IDS filed on 1/28/2026 shows that compound having Registry No. 1771616-04-6 (L38, 30 of 126) has the following structure and was disclosed on 6/2/2015:
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.
Claims 1 and 3 are thereby anticipated.
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, 3, and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Chemical Abstract Service (CAS), file Registry.
As discussed above, file Registry discloses the compound having Registry No. 1771616-04-6, which has a chemical structure that reads on instant claims 1 and 3. Claims 29 and 30 require no more than a liquid diluent, which is readable on any solvent. Thus, a composition comprising the compound as disclosed by file Registry No. 1771616-04-6 and a solvent would have been obvious because compounds are obviously used with a carrier such as a solvent. Because a compound and its properties are inseparable, any herbicidal property claimed by Applicant would necessarily be present also in the same compound disclosed by file Registry.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited reference.
Applicant's amendment filed on 1/28/2026 necessitated the new ground(s) of rejection presented in this Office action. Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 1/28/2026 also prompted the new ground 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 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.
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/JOHN PAK/Primary Examiner, Art Unit 1699
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