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 1-26 and 28 are pending in this application.
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 1-26 and 28 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.
In claim 1, “m” is used to describe multiple different substitutions, for example substitutions on R10 to R15 on X, substitutions on Z, and substitutions on Rd. This is confusing because it is unclear whether m is the same or different when used in different parts of the formula.
Similarly in claim 1, “n” is used to describe multiple different substitutions, for example both sulfur atoms and oxygen atoms in the heterocyclic ring that is Z, the number of oxo groups on the sulfur and carbon ring atoms in Z (ring); S(O)nRa for Rc. Do the n values have to be the same or different when representing one part of the formula vs. another? For example, does Z include or exclude a heterocyclic ring that has 1 oxygen ring member, i.e., n = 0 for sulfur but n = 1 for oxygen? See also claim 22. See in claim 23, wherein Z can be a monocyclic heterocyclic ring or heteroaromatic ring. See also in claim 24, wherein Z can be a heterocyclic ring. It is confusing to use the same variable that could represent the same or different values for multiple parts of the claimed formula.
Also in claims 1 and 22, “n” is also used to describe the number of radicals Rg on the ring carbon of W. Again, using the same variable for multiple atoms or groups in the same formula is indefinite claim language.
In claims 1 and 22, Rd is used as part of “x elements selected from the group consisting of NRd, NCORd, NC(O)ORd” in W (formed from R7 and R8). In claim 1, Rd is also used as part of SO2NRbRd in Z. Again, using the same variable for multiple atoms or groups in a formula is confusing.
In claim 16, Y is defined as C1-8 alkyl or C2-8 alkenyl, which is substituted by “one radical selected from the group consisting of CO2Re, CONRbRh, CONReSO2Ra, and Z ….” The problem with this definition is that Z is described here as a substituent on the C1-8 alkyl or C2-8 alkenyl, which is not how Z is defined in independent claim 1. In claim 1, Y can be Z; Z is not a substituent on an alkyl or alkenyl of Y. The claim is confusing for this reason.
Claim 20 depends on claim 19. In claim 20, Y is defined as a 5- or 6-membered heteroaromatic ring, but this is confusing because claim 19 defines Y as Z. The Examiner suggests defining the intended Y rings as Z.
Dependent claims are included in this ground of rejection because they do not cure the deficiencies of the base claims.
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 1-10, 12-17, 25-26, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over WO 87/05898.
WO 87/05898 discloses the following compounds for “retarding plant growth””
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, wherein
R’14 can be Z, which can be, inter alia, H, alkyl, alkynyl, alkoxy, halogen, cyano;
Y’45 can be, inter alia, NH or N(alkyl);
Y’28 can be, inter alia, a substituted or unsubstituted heterocyclic ring system selected
from monocyclic aromatic, monocyclic nonaromatic, bicyclic aromatic, bicyclic nonaromatic, polycyclic aromatic, polycyclic nonaromatic rings, which may be saturated or unsaturated;
Y’27 can be, inter alia, NH or N(alkyl); and
Z’15 can be, inter alia, H, alkyl, haloalkyl.
See claim 11 in view of claim 1. The hetero atom of the heterocyclic ring that includes Y’28 includes N, O, S (see page 10, second and third paragraphs; see also from page 11, line 11 to page 12, line 20). Above structure from claim 11 is a subgenus of compounds of WO 87/05898 disclosed more broadly in claim 1 and on pages 2-19, wherein Y3 and Y4 (formula 1 on page 3; first formula of claim 1) are linked together to form said heterocyclic rings, with Z as substituents (page 8, lines 13-21; claim 1 at last paragraph of page 142). Z includes, for example alkyl, alkoxycarbonylalkyl, alkynyl (claim 1). Formulation with optional ingredients such as stabilizers and combined use with another herbicide is disclosed (page 62, lines 11-23).
WO 87/05898 does not explicitly exemplify a specific compound that is encompassed by the instant claims under examination. However, WO 87/05898 discloses that various malonic acid derivative compounds are known in the art for their plant growth regulating responses (page 1), and teaches that “a wide variety of malonic derivative compounds” have the property of retarding plant growth (page 18, last paragraph). The compounds, composition, and method of instant application claims 1-17, 25-26, and 28 read on the above described compounds disclosed by WO 87/05898.
Claim 10 reads on the hetero ring formed by R7 and R8 having 1 oxygen (u=1,2 and v, w, x = 0), which corresponds to Y’28 of WO 87/05898 containing 1 oxygen heteroatom, which is disclosed by WO 87/05898, as discussed above.
Features of claims 12 and 13 are noted, but formulation limitations that would require such substitution have not been set forth.
Claims 16 and 17 encompass Y = C2-8 alkynyl. WO 87/05898 discloses R’14 can be Z, which can be alkynyl. C2-8 alkynyl would have been obvious as the first alkynyls in a series of alkynyl groups that are suggested by the alkynyl disclosure.
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.
For the foregoing reasons, all claims are rejected at this time. No claim is allowed.
A reference by Kobayashi et al. (see attached PTO-892) is cited to further show the state of the art. Kobayashi et al. disclose the following compound, but the carbon between the two carboxamide groups forms an oxirane that has a bromophenyl substituent (page 3, structure 6, annotated below to correspond to the claimed compound):
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However, Applicant’s claim 1 defines the substituent on the corresponding heterocyclic ring W as Rg, which does not include a substituted or unsubstituted phenyl ring. Therefore, the compound disclosed by Kobayashi et al. does not read on the instant claims or suggest a suitable variation.
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