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 1-17 are pending in this application.
Withdrawn ground of rejection
The outstanding ground of rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the amendment to the claims filed on 10/15/2025, which clarified the definition of various R groups.
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.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/1241291 in view of WO 2019/176791, Fischer et al. (US 2018/0271099; hereinafter, Fischer), and Edmunds et al. (US 2016/0255837; hereinafter, Edmunds).
WO 2018/124129 discloses an oxime group containing condensed heterocyclic insecticidal compound of the following formula, with annotations that correspond to the instant application claims:
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See claim 1 of WO 2018/124129 and paragraphs 5-13, 114-131; the annotated A1, R3, R4, and Q are substituents that correspond to the instant (Applicant’s) claims. WO 2018/124129 discloses that its
A includes N,
A1 includes CH,
R1 includes halogen, C1-6 alkoxy,
R2 includes H, C1-6 alkyl,
R3 includes halogen, C1-6 alkyl, wherein n = 0, 1, or 2, and
m includes 2.
Compounds disclosed in Tables 4-6 of WO 2018/124129 (pages 12-13) have the oxime moiety at the same position as in the instant claims, although the condensed heterocyclic moiety is not benzimidazole. Application to plants or soil is disclosed (paragraph 13, sections [4] and [5]).
WO 2019/1767912 discloses pesticidal compounds of the following formula, with annotations that correspond to the instant application claims:
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See claims 1-5 of WO 2019/176791; the annotated A1, A2, R1, and Q are substituents that correspond to the instant (Applicant’s) claims. WO 2019/176791 discloses that its
A includes benzene ring,
X includes halogen, C1-6 alkyl, and n includes 1 to 3,
Ra is substituted or unsubstituted C1-6 alkylsulfonyl group, and
Rb includes –CR11 = N—OR12,
R11 and R12 includes H, C1-6 alkyl.
See claims 1-5; paragraphs 10-32, 183-280. Application to plants or soil is disclosed (paragraphs 185-188).
Fischer (US 2018/0271099) discloses the following pesticidal compounds, which also have herbicidal activity (paragraphs 745-775):
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X includes H1 (paragraphs 63-65), which is a benzimidazole moiety, and the R5 and/or R6 on H1 include H, halogen, C1-4 alkyl, and R7 on H1 includes C1-4 alkyl,
A1 can be nitrogen or CR4, wherein R4 includes H, C1-4 alkyl,
R1 includes C1-4 alkyl,
n includes 2,
R2 includes -CH=N-O(C1-6 alkyl) or “(G18),” which is -CR11=N-OR13,
R11, R13 includes H, C1-6 alkyl,
R3 includes H, halogen.
See claims 1-8, 10-13; paragraphs 5-31, 63, 76.
Edmunds (US 2016/0255837) is cited to establish that insecticidal bicyclic or tricyclic heterocyclic compounds with a sulfur containing substituent can have many different 6-membered rings with retention of activity. See Formula I, A – B, wherein A can be Q8 of A1 (benzimidazole), and B can be B11 with variable ring members V0, V1, V2 (see paragraphs 3-8),
WO 2018/124129 does not explicitly disclose the compounds of formula (1) set forth in the instant claims, but WO 2018/124129 discloses a generic formula of compounds that encompass compounds of instant claims 1-6 and WO 2019/176791, Fischer, and Edmunds teach that the heterocyclic moiety bonded at the 2-position of the imidazole moiety can be variable, with carbon or nitrogen at the corresponding ring positions of instant claim A1, A2, and A3, thereby suggesting the compounds of claims 1-14. Fischer teaches that these compounds have not only pesticidal activity but also herbicidal activity. Thus, the ordinary skilled artisan would have expected pesticidal and herbicidal activity when applied to soil or undesirable plants.
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 references.
Applicant’s arguments and declaration filed on 10/15/2025 have been given due consideration but they were deemed unpersuasive.
Applicant argues that the position of the oxime moiety in WO 2018/124129 is not fixed as in the instant claims, between A1 and A2 (the position numbering of which can vary depending on other substituents of the ring that contains A1, A2, and A3). In WO 2018/124129, the oxime moiety is exemplified at two positions, one of which is the same as in the instant claims as shown below (annotated as #2, adjacent to the nitrogen of the pyridine):
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Applicant argues that the declaration provides evidence that compound 1-6 of WO 2018/124129 and five other compounds “within claim 1 of WO 2018/124129,” all of which have the oxime moiety at the #3 position, supra, show no herbicidal effect; whereas compounds of the instant invention having the oxime moiety at the #2 position “show high herbicidal effects.”
The Examiner cannot agree. Chemical structures disclosed for all the comparative compounds A, B, C, 1-6, D, and E are not legible. Only the chemical structure of comparative compound 1-6 can be determined because Applicant states that this compound is compound 1-6 of WO 2018/124129. The other comparative compounds A, B, C, D, and E are not identified similarly, and their structures given in the declaration and arguments filed on 10/15/2025 are too poor in legibility to give further weight to Applicant’s arguments.
This leaves only the evidence pertaining to compound 1-6 of WO 2018/124129, which is not a fair comparison because compound 2-6 of WO 2018/124129 is actually closer to the compounds of the instant claims since the oxime moiety of compound 2-6 of WO 2018/124129 is at the #2 position of the pyridine (i.e., same as instant claims) with all other substituents being the same as comparative compound 1-6 of WO 2018/124129. See above annotation on page 7 of this Office action and page 34 of WO 2018/124129 for compound 2-6. It is well settled that comparisons to establish superior and unexpected results must be made with the closest prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); In re Reuter, 210 USPQ 249, 257 (CCPA 1981).
Applicant further criticizes each of the secondary references individually. WO 2019/176791 and Edmunds (US 2016/0255837) are argued as failing to teach or suggest herbicidal effects or the relationship between the position of the oxime moiety on the pyridine and herbicidal effects. Fischer (US 2018/0271099) is argued as not disclosing “any herbicidal effects at all,” and a person having ordinary skill in the art would not understand or envisage which specific combinations of substituents provide herbicidal effects, much less high herbicidal effects.
Applicant’s arguments against these secondary references are unpersuasive, because they are not being considered in view of the prior art taken as a whole. WO 2018/124129 teaches compound 2-6, which has the oxime moiety at the same position as in the instant claims as shown below:
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WO 2018/124129 further discloses a generic formula of compounds that encompass compounds of instant claims 1-6 and various bicyclic moieties on the pyridine retain herbicidal effect, including interchangeability of benzimidazole and 7-azabenzimidazole, which is supported by the additional teachings of the secondary references as detailed in full above. WO 2019/176791, Fischer, and Edmunds teach that the heterocyclic moiety bonded at the 2-position of the imidazole moiety can be variable, with carbon or nitrogen at the corresponding ring positions of instant claim A1, A2, and A3, thereby suggesting the compounds of claims 1-14. Fischer teaches that these compounds have not only pesticidal activity but also herbicidal activity. Thus, the ordinary skilled artisan would have expected pesticidal and herbicidal activity when applied to soil or undesirable plants.
Therefore, the compounds of formula (1) as set forth in the instant claims would have been obvious from the combination of references, and this ground of rejection is maintained.
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 1-6 and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8 of U.S. Patent No. 10,856,548 in view of WO 2019/176791, Fischer (US 2018/0271099), and Edmunds (US 2016/0255837).
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
U.S. Patent No. 10,856,548 (‘548 patent) is related to the previously cited WO 2018/124129 – it issued from the 371 application of the international application. The claims of ‘548 patent are directed to the following compounds, wherein the annotated A1, R3, R4, and Q are substituents that correspond to the instant (Applicant’s) claims:
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In claim 1 of the ‘548 patent, A can be N-R4, R4 can be C1-6 alkyl, A1 can be CH, m can be 2, R1 can be halogen or C1-6- alkoxy, R2 can be H, C1-6 alkyl, R3 can be H, C1-6 alkyl, and n can be 1-2. The compounds are insecticidal and ectoparasite control agents (claims 4-5, 7-8 of ‘548 patent), which can be applied to the plant or soil (claim 6 of the ‘548 patent).
Teachings of WO 2019/176791, Fischer (US 2018/0271099), and Edmunds (US 2016/0255837) were discussed above in a previous ground of rejection, and the discussions there are incorporated herein by reference. In summary, the secondary references suggest the oxime moiety at the same ring position as claimed and herbicidal activity as well as pesticidal activity.
For these reasons, the ordinary skilled artisan would have recognized that the instant claimed invention is an obvious variation of the claimed invention of the ‘548 patent.
Applicant’s arguments and declaration filed on 10/15/2025 have been given due consideration but they were deemed unpersuasive for the following reasons.
Applicant states that arguments made in the previous ground of rejection, supra, are also applicable to this ground of rejection because WO 2018/124129 corresponds to the ‘548 patent (as acknowledged herein). Similarly, the Examiner incorporates by reference the position set forth above on pages 6-9 of this Office action, which set forth the reasons for finding those arguments unpersuasive.
Applicant also criticizes each secondary reference individually without taking into account how the prior art taken as a whole supports the obviousness established by claims of the ‘548 patent. The Examiner’s position is that claims of the ‘548 are sufficient by themselves for establishing obviousness. Additionally, WO 2019/176791 and Fischer teach an oxime moiety at the #2 position3 of a 6-membered heterocycle, pyrimidine and pyridine, respectively. WO 2019/176791, Fischer, and Edmunds teach that the heterocyclic moiety bonded at the 2-position of the imidazole moiety can be variable, with carbon or nitrogen at the corresponding ring positions of instant claim A1, A2, and A3, thereby suggesting the compounds of claims 1-14. Fischer teaches that these compounds have not only pesticidal activity but also herbicidal activity.
For these reasons, Applicant’s arguments are deemed unpersuasive, and this ground of rejection is maintained.
THIS ACTION IS MADE FINAL. 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
1 WO 2018/124129 is published in Japanese. US 2020/0085054 is the counterpart national phase application filed under 371, so it is a translation of the WO document. The translation will be used here to discuss the teachings of WO 2018/124129, but WO 2018/124129 is the prior art applied in this ground of rejection. All paragraph numbers mentioned herein are paragraph numbers of the translation document, US 2020/0085054.
2 WO 2019/176791 is published in Japanese. US 2021/0002263 is the counterpart national phase application filed under 371, so it is a translation of the WO document. The translation will be used here to discuss the teachings of WO 2019/176791, but WO 2019/176791 is the prior art applied in this ground of rejection. All paragraph numbers mentioned herein are paragraph numbers of the translation document, US 2021/0002263.
3 See annotation on page 7 of this Office action.