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 2-13 and 15 are pending in this application. Claims 7 and 8 are independent.
Priority
The instant application claims priority as follows:
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Election/Restriction
Applicant's election with traverse of Group II, claims 8-13, drawn to a compound of formula (I)
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, and species
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, in the reply filed on January 26, 2026 is acknowledged. Claims 8-13 read on the elected species.
The traversal is on the grounds that the technical feature linking the claims makes a contribution over the cited art and that there is no burden to search/examine both groups and all compounds. Applicant’s arguments are not persuasive because the technical feature linking the claims does not make a contribution over the cited art for the reasons discussed in the Requirement for Restriction mailed on 08/26/2025. Additionally, arguments that the search would not impose a serious burden on the Office are not germane to the showing of Lack of Unity.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-7 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/26/2026.
Examination
Examination will begin with the elected species
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. In accordance with MPEP 803.02, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability. Note that where a claim reads on multiple species, only one species needs to be taught or suggested by the prior art in order for the claim to be anticipated or rendered obvious. If on examination the elected species is found to be anticipated or rendered obvious by prior art, the Markush claim and claims to the elected species will be rejected, and claims to the nonelected species will be held withdrawn from further consideration. Should applicant, in response to a rejection of a Markush claim, overcome the rejection by amending the Markush claim to exclude the species anticipated or rendered obvious by the prior art, the amended Markush claim will be examined again. The examination will be extended to the extent necessary to determine patentability of the Markush claim. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species.
Pursuant to MPEP 803.02, the elected species was searched and found unpatentable over the art as detailed below. Therefore, examination was stopped and art has been applied against the claims. For the purpose of a compact prosecution, other CF3-pyridyl isomers of the compounds were examined and rejected under the same prior art.
Subject matter outside of the searched/examined scope and claims 2-7 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions there being no allowable generic or linking claim.
Claims 8-13 are the subject of this Office action.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Fraine (US5,439,910) in view of Nakano (WO2021/153754-provided by applicant in the IDS of 06/12/2025) and additionally as evidenced by WO98/23156 (provided by applicant in the IDS of 03/06/2023.
Applicant claims the compounds of formula
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, particularly, the species of formula
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. These compounds are strobilurin analogues for combating fungi in plants.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Fraine (US5,439,910) strobilurine analogues of formula
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, as fungicides. Exemplary compounds are found in Table I, some depicted here:
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(#14),
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,
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(#4),
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,
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(#14),
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.
. Fungicidal compositions comprising a carrier or diluent are taught in at least claim 7. Test results are found at Table III.
Nakano taught strobilurine analogues of formula (II-IV)
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, which are used to treat phytopathogenic fungi. Q is selected from
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.
Examples are found at Tables IV-16 through IV-19 (p. 51-55). Particular examples are compounds 430-433, in which R1 is Me at the 3-carbon, which is the same position as applicant’s R3 group.
Ascertainment of the Difference Between the Prior Art and the Claims
(MPEP §2141.012)
The difference between Applicant’s elected species (and similar pyridyl isomers) and the compounds of Fraine described above, is that the elected species (and similar pyridyl isomers) have one methyl group at C-3 of the phenyl ring instead of hydrogen.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
One of ordinary skill in the art is a chemist practitioner with the knowledge and skills of the authors of the references cited to support the examiner's position. The artisan preparing these compounds would be trained in organic chemistry and would recognize the very close structural similarity and similar properties.
Artisans interested in using strobilurine analogs similar to those of Fraine that treat phytopathogenic fungi would have found the example compounds of Fraine to be appropriate leads on the basis of their known activity. The artisan would have been motivated to add a methyl group at C-3 of the phenyl ring in the active compounds of Fraine (such as compound #4 and #14) because this is a common and obvious variation to obtain products for the same use. In the formula of Fraine, they already taught that the phenyl ring could be substituted by group A
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and that A could be C1-C4alkyl. In addition, this obvious modification is further evidenced at least by the teachings in the Nakano reference, and in WO98/23156 (taught strobilurine analogues with 3-Me phenyl).
The motivation also derives from that the compounds are homologs, differing only by the presence of an extra methyl group at the C-3 recognized position. Homologues are of such close structural similarity that the disclosure of a compound renders prima facie obvious its homologue. As was stated in In re Grose, 201 USPQ 57, 63, “The known structural relationship between adjacent homologues, for example, supplies a chemical theory upon which a prima facie case of obviousness of a compound may rest.” The homologue is expected to be preparable by the same method and to have generally the same properties. This expectation is then deemed the motivation for preparing homologues. Of course, these presumptions are rebuttable by the showing of unexpected effects, but initially, the homologues are obvious even in the absence of a specific teaching to add or remove methyl groups. See In re Wood, 199 USPQ 137; In re Hoke, 195 USPQ 148; In re Lohr, 137 USPQ 548; In re Magerlein, 202 USPQ 473; In re Wiechert, 152 USPQ 247; Ex parte Henkel, 130 USPQ 474; In re Jones, 74 USPQ 152, 154; In re Herr, 134 USPQ 176; Ex parte Dibella, 157 USPQ 59; In re Zickendraht, 138 USPQ 22; Ex Parte Fischer, 96 USPQ 345; In re Fauque, 121 USPQ 425; In re Druey, 138 USPQ 39; In re Bowers and Orr, 149 USPQ 570; Redox Technologies Inc. v. Pourreau, 73 USPQ2d 1435, 1451; In re Henze, 85 USPQ 261; In re Basell Poliolefine Italia S.P.A., 89 USPQ2d 1030 (“As homologs are presumptively obvious over known compounds…..”). In all of these cases, the close structural similarity between two compounds differing by one or two methyl groups was itself sufficient show obviousness. As was stated directly in THE GENERAL TIRE & RUBBER COMPANY v. JEFFERSON CHEMICAL COMPANY, INC., 182 USPQ 70 (1974): “If any structural change is obvious to one skilled in the art, a substitution of the next higher homolog would seem to be.” Note also In re Jones, 21 USPQ2d 1942, which states at 1943 “Particular types or categories of structural similarity without more, have, in past cases, given rise to prima facie obviousness”; one of those listed is “adjacent homologues and structural isomers”. Similar is In re Schechter and LaForge, 98 USPQ 144, 150, which states “a novel useful chemical compound which is homologous or isomeric with compounds of the prior art is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compounds.” Note also In re Deuel 34 USPQ2d 1210, 1214 which states, “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.”
Thus, the artisan would have been motivated to make the compositions of the fungicides with an auxiliary as taught by the prior art.
The analysis above is consistent with MPEP 2144.09 which provides guidelines for the examination of applications when close structural similarity exists.
In addition, under the Supreme Court rationales in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007), at least exemplary rationales (A), (B), (C) and (G) apply:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way.
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Conclusion
Claims 8-13 are rejected. No claim is in condition for allowance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621
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