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 .
Applicants amendment filed 2/3/2026 has been entered. Claims 35-42 were amended. Claims 35-52 are pending. Claims 35, 38-40 and 42 are under examination. Claims 36, 37, 41 and 43-52 are withdrawn.
Withdrawn rejections
Applicant's amendments and arguments filed 2/3/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/3/2026 and 4/29/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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 35, 38-40 and 42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 12, 13 and 16 of copending Application No. 18/848,256 (herein ‘256). Although the claims at issue are not identical, they are not patentably distinct from each other because the present compound is 104, whereas the copending application claims a compound 118.
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The compounds are both herbicidal compounds only differ by a saturated bond. The compound in ‘256 is prima facie due to having very close structural similarity and one skilled in the art would have expected the compounds to have similar properties.
Additionally, claims 12 and 13 of copending application ‘256 further specify a substantially pure single stereoisomer of the compound that is SR, RS, RR or SS. Therefore, the present claims are prima facie obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 2/3/2026 have been fully considered but they are not persuasive. Applicant argues that since copending application 256 is later-filed the rejection should be withdrawn since the claims are otherwise in condition for allowance. The Examiner is not persuaded by this argument because the double patenting rejection is not the only rejection remaining and a terminal disclaimer has not been submitted. Therefore the rejection has been maintained.
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 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.
Claims 35, 38-40 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Klofta et al. (WO 99/45771; published September 16, 1999).
Applicant claims the compound 6-amino-7-hydroxyoctanoic acid below.
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With respect to claims 35, 39 and 40, Klofta et al. teach and anhydrous lotion composition for killing viruses and bacteria (abstract). The antivirals that may be added to the lotions include organic acids that are saturated, unsaturated C1-C12 carboxylic acids possessing 1 to 4 carboxylic acid groups and with optional functional groups (i.e., amino and hydroxyl) substituted along the carbon chain, wherein the hydroxy group is substituted on carbon number C4 or above (page 16, paragraph 3 through page 17, paragraph 1).
Klofta et al. teach organic acids which encompass the claimed compound 6-amino-7-hydroxyoctanoic acid.
With respect to claims 38 and 42, Klofta et al. do not specify a mixture of stereoisomers or that the compound is a substantially pure SR, RS, RR, SS isomers. However, MPEP 2144.09 states that compounds of close similar structure include stereoisomers and there is a presumed expectation that such compounds possess similar properties. See Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007).
Therefore, it would have been prima facie obvious for one of ordinary skill to combine the teachings of Klofta et al. to include the compound 6-amino-7-hydroxyoctanoic acid with a reasonable expectation of success. One of ordinary skill would have been motivated to combine the teachings of Klofta et al. before the time of filing to include the compound 6-amino-7-hydroxyoctanoic acid because Klofta et al. teach antiviral organic acids that are unsaturated C1-C12 carboxylic acids possessing 1 carboxylic acid groups and an optional amino and hydroxy group substituted along the carbon chain wherein the hydroxy group is substituted on carbon number C4 or above.
Response to Arguments
Applicant's arguments filed 2/3/2026 have been fully considered but they are not persuasive. Applicant argues Klofta is not analogous art because the reference is not from the same field of endeavor and is not pertinent to the problem faced by applicant since Applicant has amended to include that the compound is herbicidally active. The Examiner is not persuaded by this argument because the claims are drawn to a compound, not an herbicidal composition or a method of applying the compound as an herbicide. Furthermore, the amendment does not structurally limit the scope of the compound. Therefore the preamble to the claimed compound does not add patentable weight because Klofta et al. teach the compound is known and has utility as an antiviral compound. The discovery of a previously unappreciated property of the compound does not render it patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Therefore the rejection has been maintained.
Conclusion
No claims 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 DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached Monday-Friday 9:00 am-5:30 pm.
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, Bethany Barham can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1611
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