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 1-8, 10-11, 13-22, and 24-30 are pending in this application.
Claims 16-22 and 24-30 stand withdrawn from further consideration as being directed to non-elected inventions. Claims 1-8, 10-11, and 13-15 will presently be examined as being directed to the elected invention of record.
Withdrawn grounds of rejection
The outstanding grounds of rejection of claim 12 under 35 U.S.C. 101 and also under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are withdrawn in view of cancellation of claim 12 in the amendment filed on 5/19/2026.
The outstanding ground of rejection of claims 1-7, 9-11, and 13-15 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the amendment to the claims filed on 5/19/2026. However, Applicant is advised of new grounds raised because of the same amendment – see below.
The outstanding ground of rejection of claims 1-3, 5-7 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 (US 2022/0281848; hereinafter, Morris) is withdrawn in view of the amendment to claim 1 filed on 5/19/2026, which incorporated the feature of claim 9 into claim 1. Claim 9 was not previously rejected under this ground, so the amendment overcomes this ground of rejection.
Improper Multiple Dependent Claim
Claim 14 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. Claim 14 requires embodiments of both claims 5 and 13. See MPEP § 608.01(n). Accordingly, the claim 14 has not been further treated on the merits.
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.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 15 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.
On page 11 of the response filed on 5/19/2026, part (i) of claim 15 recites
“wherein R2a halogen, C1-C3fluoroalkyl …” It appears that the verb “is” should be inserted before “halogen.’
On page 12 of the response filed on 5/19/2026, part (ii) of claim 15
appears to end in a period after “Y is methyl”. A claim should have only one period, at the end.
35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), fourth paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
This ground of rejection is raised because of the amendment made to claim 1, which has an effect on claims 13 and 15 as discussed below.
Amended independent claim 1 is now directed to a composition, i.e., compound of formula (I) + diluent or carrier. However, dependent claims 13 and 15 are still directed to a process for production of the compound of formula (I), which was the subject matter of the previously pending version of claim 1 prior to the amendment filed on 5/19/2026. For these reasons, claims 13 and 15 fail to incorporate all the limitations of the claim to which it refers because they are directed to a process of making only a component of the invention of independent claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
35 U.S.C. 103
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 1-8 and 10-11 stand under 35 U.S.C. 103 as being unpatentable over Morris (US 2022/0281848) for the reasons of record.
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.
Applicant’s arguments filed on 5/19/2026 have been given due consideration but they were deemed unpersuasive for the following reasons.
Applicant argues that “the rejection fails to consider the actual compounds tested in [Morris]” (emphasis in the original), because “none of the compounds disclosed or tested in the ‘848 publication1 contain a difluoromethyl on a nitrogen of the Q pyrazole.”
This is inaccurate, because Morris does indeed disclose such a compound in Table 1:
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Said compound from Morris’ Table 1 has the following structure:
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.
The ordinary skilled artisan is clearly taught by Morris that this specifically identified compound, having a difluoromethyl on a nitrogen of the pyrazole, has herbicidal properties and can be formulated in a herbicidal composition. Obviousness does not require testing of prior art compounds, especially when specific compounds are explicitly disclosed, as here.
Applicant states, “it remains unclear why a person of ordinary skill in the art would be motivated to select such compounds.” The Examiner maintains that Morris teaches a genus of herbicidal compounds and many specific herbicidal compounds that Applicants’ claims read on. Morris points the ordinary skilled artisan to the specifically identified herbicidal structures, as well as the herbicidal genus. The issue for obviousness here is whether the compound and its composition was suggested by the prior art, not whether the prior art inventor had the funding, time, or lab resources to run assays on every single molecule they invented. The person having ordinary skill in the art would have relied on the teachings of Morris to obtain a reasonable expectation that the specifically disclosed compounds would possess herbicidal activity. Lack of testing data does not negate the explicit structural teaching or the motivation to utilize a compound already selected and described by Morris.
For these reasons, Applicant’s arguments are deemed unpersuasive, 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 1-3, 5-8, and 10-11 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 at pages 4-8, and the discussions there are 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.
Applicant’s arguments filed on 5/19/2026 have been given due consideration but they were deemed unpersuasive. Applicant states, “it remains unclear why a person of ordinary skill in the art would be motivated to select difluoromethyl for a nitrogen on the pyrazole of the ‘420 patent.” First, RB2 in claim 1 of the ‘420 patent discloses C1-3 fluoroalkyl, RB2 in claim 3 discloses fluoromethyl, trifluoromethyl, fluoroethyl, difluoroethyl, and trifluoroethyl, and RB2 in claim 4 discloses difluoromethyl for RB3.
Second, Morris specifically identifies difluorometyl for a nitrogen on the pyrazole, as discussed in detail above, and the person having ordinary skill in the art would have further obtained from the teachings of Morris reasonable expectation that such substituted compounds in the claims of the ‘420 patent would possess herbicidal activity.
For these reasons, Applicant’s arguments are deemed unpersuasive, and this ground of rejection is maintained.
Claims 1-4, 6-8, and 10-11 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.
Also, Morris (US 2022/0281848) provides reasonable expectation that said compounds made by the process of the ‘523 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 at pages 4-8, and the discussions there are 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.
Applicant’s arguments filed on 5/19/2026 have been given due consideration but they were deemed unpersuasive. Applicant states, “it remains unclear why a person of ordinary skill in the art would be motivated to select difluoromethyl for a nitrogen on the pyrazole of the ‘523 patent.” First, RB2 in claim 1 of the ‘523 patent discloses C1-3 fluoroalkyl for a nitrogen on the pyrazole. Second, Morris specifically identifies difluorometyl for a nitrogen on the pyrazole, as discussed in detail above, and the person having ordinary skill in the art would have further obtained from the teachings of Morris reasonable expectation that such substituted compounds in the claims of the ‘523 patent would possess herbicidal activity.
For these reasons, Applicant’s arguments are deemed unpersuasive, and this ground of rejection is maintained.
For the foregoing reasons, no claim can be allowed at this time.
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 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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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/JOHN PAK/Primary Examiner, Art Unit 1699
1 The ‘848 publication is the same as Morris, i.e. US 2022/0281848.
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