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 .
Detailed Action
This office action is in response to applicant’s communication filed on 3/17/26. Claims 1-2 and 4-10 are pending in this application. Claims 4-10 remain withdrawn from consideration. As a result, claims 1-2 are being examined in this Office Action. Due to applicant’s claim amendments and replacement drawings both filed 3/17/26, the objection to the drawings and claims have been withdrawn.
Furthermore, in response to applicant’s assertion that no solvent was used in the reaction, nor present in any of the reactant intermediates, as argued in applicant’s response filed 3/17/26, the 102/103 rejection over Yu et al. is withdrawn, since Yu et al. teaches the reaction was performed in a toluene solvent. Applicant’s arguments filed 3/17/26 has clarified that the reaction was performed neat, in the absence of any solvent. Thus Yu et al. does not anticipate or make obvious the claimed invention for the preparation of clethodim.
However, the objection to the specification in the office action filed 10/17/25 remains since applicant has not submitted a corrected specification.
Furthermore, to advance prosecution, the examiner recommends the applicant cancel withdrawn claims 4-10.
Objections
The specification remains objected to because applicant recites the incorrect structure for formula (II) throughout their Specification (see pages 1-3)
Applicant’s specification depicts 5-[2-(ethylthio)propyl]-2-(1-oxopropyl)-1,3-cyclohexanedione, formula (II) as:
PNG
media_image1.png
202
290
media_image1.png
Greyscale
This structure is incorrect. The correct structure of 5-[2-(ethylthio)propyl]-2-(1-oxopropyl)-1,3-cyclohexanedione, formula (II), is as follows (For further clarification of formula (II), see the structure in “STN compounds for applicant claims 18041159”):
PNG
media_image2.png
200
400
media_image2.png
Greyscale
The correct structure above has the sulfur group as divalent and the dione component is consistent with the recited nomenclature of formula (II) as 5-[2-(ethylthio)propyl]-2-(1-oxopropyl)-1,3-cyclohexanedione. Appropriate correction is required.
Claim Rejections – 35 USC 112
The following is a quotation of the first paragraph of 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no evidence in the record for “as each of formulas (II) and (III) are in liquid form” in claim 1, at the time of filing the application.
Therefore, the new limitation in claim 1, raises an issue of new matter and amounts to a new concept that was not present at time of filing.
Conclusion
No claim is 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
Prosecution Insights