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 .
Claim 23 has been canceled. Claims 1-22 and 24-30 are pending in this application.
Applicant's election with traverse of the invention of Group I, claims 1-15, in the reply filed on 8/8/2025 is acknowledged. The traversal is on three grounds: International Search Authority (ISA) did not find lack of unity, which is argued as evidence of unity of invention; no reference was cited to establish lack of a special technical feature; and MPEP 1850 supports unity of invention of the claimed intermediates and final product. This is not found persuasive because for the following reasons.
First, Applicant does not cite any authority for the position that determination of unity of invention or lack of unity of invention by the ISA must be followed by the USPTO. Moreover, the ISA also determined lack of inventive step (see Written Opinion) but Applicant does not similarly argue that as evidence of unpatentability. The Examiner maintains that the USPTO shall make its own determination as to unity of invention and patentability.
Second, no reference is needed to establish lack of a special technical feature when the compounds are structurally so divergent as here, i.e., the compounds do not share the same or corresponding technical feature. For example, the compound of invention Group II has no lactam moiety and no carboxamide moiety, both of which are required by the invention of Group I. Nonetheless, it can noted that Morris et al. (US 2022/0281848) disclose compounds of claim 1, formula (I) – in Table 1 of Morris at page 17, a specific pyrazole-substituted pyrrolidinone compound is disclosed wherein R1 is methyl, R6 is H, W is 2-fluorophenyl, Y is O, and Q is “pyrazol-3-yl (1-CHF2, 5-CF3),” which is an explicit teaching of Applicant’s compounds, using Applicant’s claim language designations, wherein R1 is R1-1, n = 1, and R2 is CF3 at the 5-position of is R1-1. Thus, compound of formula (I) fails to make a contribution over the prior art.
Third, MPEP 1850 III.C requires the intermediate and final product to have the same essential structural element in that (A) the basic chemical structure of the intermediate and the final product are the same, or (B) the chemical structures of the two products are technically closely interrelated, the intermediate incorporating an essential structural element into the final product. The essential structural element of the compound of Group I is pyrazolo-lactam/thiolactam carboxamide, as acknowledged by the instant specification at page 1, lines 2-3. Further, the lactam or thiolactam moiety has a 2-oxo-pyrrolidine-3-carboxamide or 2-thioxo-pyrrolidine-3-carboxamide structure. Such essential structural element is absent in the compounds of Groups II, III, IV, V, and VI. Additionally, the compounds of formula (E) of invention Group IV and compounds of formula (X) of invention group VI cannot be intermediates of compound of formula (I). In formula (E), the thioxo moiety would be in the wrong position, at the 5-position of the pyrrolidine-3-carboxylic moiety instead of the 2-position of formula (I)1; and in formula (X), the thioxo is in the wrong position, at the 5-position of the pyrrolidine-3-carboxylic group instead of the 2-position. For all of these reasons, the basic chemical structures of compounds of Groups II to VI are not the same and the chemical structures of the compounds are not technically closely interrelated, the intermediate incorporating an essential structural element into the final product.
For these reasons, the requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 16-22 and 24-30 are withdrawn from further consideration as being directed to non-elected inventions. Claims 1-15 will presently be examined.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 12 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does not fall within at least one of the four categories of patent eligible subject matter because “Use of” a substance as recited in claim 12 does not fall within at least one of the categories of patent eligible subject matter recited in 35 U.S.C. 101: process, machine, manufacture, or composition of matter.
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.
Claim 12 is 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.
“Use of” of a substance as recited in claim 12 fails to recite a process step. It is therefore an incomplete process claim if that were the intended category of invention. The claim is indefinite for this reason.
Applicant is advised that claim 12 will not be further treated on the merits for the reasons stated above.
Claims 1-7, 9-11, 13-15 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.
(1) The rejected claims here recite or read on R3, which is set forth as “a phenyl, pyridinyl, or thienyl ring system” (emphasis added). It would be unclear to the skilled artisan in this field what the difference is between a phenyl, pyridinyl, or thienyl ring vs. phenyl, pyridinyl, or thienyl ring system. Does the “system” imply a more complex ring moiety wherein the phenyl, pyridinyl, or thienyl ring is fused or somehow further incorporated into a more complex system? The metes and bounds of the claims are ambiguous and indefinite for this reason.
(2) Claim 14 is directed to a process for the production of a compound of formula (I) as defined I claim 5, but the steps recited in claim 14 are incomplete and would not produce the compound of formula (I). Also, there is lack of antecedent basis for “step (iv).”
(3) In claim 15, there is lack of antecedent basis for “step (iii)” and “step (iv).”
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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, 5-7 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Morris et al. (US 2022/0281848; hereinafter, Morris).
Morris discloses in his Table 1 the following specific compound (page 17):
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wherein R1 is methyl, R6 is H, W is 2-fluorophenyl, Y is O, and Q is “pyrazol-3-yl (1-CHF2, 5-CF3),” which is an explicit teaching of Applicant’s compound, using Applicant’s claim language designations, wherein R1 is R1-1, n = 1, and R2 is CF3 at the 5-position of is R1-1. See also Tables 2-16 on page 18, which discloses additional specific compounds with W variations that are still readable on the instant claims.
The claims are thereby anticipated.
In the alternative, the compounds of claims 1-3 and 5-7 would have been obvious because Morris discloses specific compounds that are readable on said claims. 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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 2022/0281848).
Morris discloses pyrazole-substituted pyrrolidinones as herbicides, which have the following structure:
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, wherein the substituents are defined as
Q can be Q-1 or Q-2:
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;
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Q-1 Q-2
R1 can be H, C1-6 alkyl,
R2 can be C1-6 haloalkyl;
R3 can be halogen, C1-6 alkyl, C1-6 haloalkyl, C1-6 alkoxy, or haloalkoxy,
Y can be O or S,
R4 can be H, halogen, C1-4 alkyl, or C1-4 haloalkyl,
R6 can be H,
W can be phenyl or pyridyl, optionally substituted with up to five R9, wherein
R9 can be halogen, C1-4 alkyl, C1-4 haloalkyl, C1-4 alkoxy, C1-4 haloalkoxy, CN, nitro, C1-4 alkylthio, C1-4 alkylsulfinyl, C1-4 alkylsulfonyl.
See claims 1-8; paragraphs 4-36. Table 1 at page 17 discloses Q as “pyrazol-3-yl (1-CHF2, 5-CF3),” which is an explicit teaching of Q-1 having R2 = CHF2, as in Applicant’s R1-1 of instant claimed formula (I). See also Tables 2-16 on page 18, which discloses additional specific compounds with W variations that are still readable on the instant claims. Composition formulated with diluents or carriers is disclosed (claim 7). Composition comprising additional herbicide is disclosed (claims 8-9). Method for controlling unwanted vegetation is disclosed (claim 10).
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.
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 1-3, 5-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,851,420 (hereinafter, ‘420 patent) in view of Morris (US 2022/0281848). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claims of the ‘420 patent are directed to a process of making compounds of the following formula (G):
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, wherein A includes A1, A3, A4,
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,
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,
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(A1) (A3) (A4).
All substituents are defined to include those that are readable on the instant claims. See claim 1 of the ‘420 patent; see also claims 1-21 Notably, RB2 is defined to include “C1-C3fluoroalkyl, as is RB3 (claim 1 of ‘420 patent); and R2 includes optionally substituted aryl or heteroaryl ring (claim 1 or ‘420; see also claim 14) such as phenyl, pyridinyl substituted by 1 or 2 fluorine, ethyl, trifluoromethyl, difluoroethyl, methoxy, difluoromethoxy, and trifluoromethoxy (claim 19). Although CHF2 or difluoromethyl is not explicitly recited for RB2, difluoromethyl is explicitly recited for RB3 (claim 4), thereby suggesting that the disclosure of RB2 = C1-C3fluoroalkyl encompasses RB2 = difluoromethyl. Because the claims of the ‘420 patent are directed to a process for making compounds that are readable on the instant claims, such compounds would have been obvious.
Also, Morris (US 2022/0281848) provides reasonable expectation that said compounds made by the process of the ‘420 patent would have herbicidal properties, can be formulated with diluents or carriers, with or without additional herbicides, and can be used to control the growth of unwanted plants. See e.g., Morris’s claims 1-10. Full discussion of Morris’s teachings were set forth previously in this Office action, and the discussion there is incorporated herein by reference.
Therefore, the ordinary skilled artisan would have recognized that the claimed invention is an obvious variation of the invention set forth in the claims of the ‘420 patent.
Claims 1-4, 6-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 5, and 9 of U.S. Patent No. 12,454,523 (hereinafter, ‘523 patent) in view of Morris (US 2022/0281848). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claims 3, 5, and 9 of the ‘523 patent are directed to compounds of the following formula (H):
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,
wherein A is a di- or tri-substituted pyrazole, substituted on the ring nitrogen by RB2 and substituted on at least one ring carbon by RB3. R2 includes optionally substituted phenyl and pyridyl moieties, and all other substituents are defined to include those that are readable on the instant claims. See claims 3 and 9 of the ‘523 patent. Notably, RB2 is defined to include “C1-C3fluoroalkyl.” Although CHF2 or difluoromethyl is not explicitly recited for RB2, multiple halogens on the alkyl would have been obvious because “fluoroalkyl” is suggestive of one or more fluorine on the alkyl.
Morris (US 2022/0281848) provides reasonable expectation compounds of the instant claims would have herbicidal properties, can be formulated with diluents or carriers, with or without additional herbicides, and can be used to control the growth of unwanted plants. See e.g., Morris’s claims 1-10. Full discussion of Morris’s teachings were set forth previously in this Office action, and the discussion there is incorporated herein by reference.
Therefore, the ordinary skilled artisan would have recognized that the claimed invention is an obvious variation of the invention set forth in the claims of the ‘523 patent.
For the foregoing reasons, all examined claims are rejected at this time. No claim is allowed.
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 See the reaction scheme on specification pages 22-23.