DETAILED ACTION
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 .
Current Status
This action is responsive to the amended claims of 02/22/2023. Claims 1-11 are pending. Claims 3-8 have been withdrawn. Claims 1-2 and 9-11 have been examined on the merits.
Election/Restrictions
Applicant’s election without traverse of a compound of Formula (I) (below), acetochlor, and aegilops in the reply filed on 03/02/2026 is acknowledged.
The elected compound of Formula (I):
PNG
media_image1.png
294
544
media_image1.png
Greyscale
.
A search for the elected compound did not return any prior art (see SEARCH 6 of the attached search notes). Thus, the search was extended to encompass further Q moieties (with all other variables held as elected) and returned the species below. Since the extension returned prior art, the search will not be unnecessarily extended in this action, in accordance with Markush search practice.
The extended species are:
PNG
media_image2.png
302
491
media_image2.png
Greyscale
and
PNG
media_image3.png
287
491
media_image3.png
Greyscale
.
These species read on claims 1-2 and 9-11. The corresponding plant species is extended to grass weeds. The other agrochemically active substance is kept as acetochlor.
Claims 3-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (i.e., not the extended species), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/02/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The effective filing date is 08/20/2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/22/2023 and 06/12/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 1-2 and 9-11 are objected to because of the following informalities. Appropriate correction is required.
Claim 1 recites “salt[[s” in line two. It appears applicant meant to strike the last “s” but did not close the brackets. Please amend. Claims 2 and 9-11 are objected to since they depend from claim 1 and do not rectify the underlying issue.
Claims 1 and 2 recite variables R1-R14, X, and Y and the various moieties from which they are each chosen from. Please make sure there is an “or” before the final moiety from which each variable is chosen. For example: under R1 “
PNG
media_image4.png
93
552
media_image4.png
Greyscale
” please insert “or” where the arrow is, before (C1-C8)-haloalkoxy. While these moieties are understood as alternatives (since no one variable can possibly be all of them at once), the ”or” will improve claim grammar and form. Dependent claims 9-11 are similarly objected to since they do not rectify the underlying issue.
Claims 1 and 2 each recite “O (oxygen) and S (sulfur)” under variables X and Y. Recitation of both O and (oxygen) and both S and (sulfur) is redundant. Applicant can strike the “(oxygen)” and “(sulfur)” from the claims. Dependent claims 9-11 are similarly objected to since they do not rectify the underlying issue.
Claim 2 recites “The compound of formula (I) as claimed in claim 1”. Claim 1 does not use the word compound to refer to the species of formula (I), rather claim 1 recites “A substituted N-phenyluracil of formula (I)”. This is not indefinite since claim 2 recites “of formula (I)” which clearly refers back to the formula (I) of claim 1. However, for consistency, it is preferred if Applicant add the word compound to claim 1: e.g., “A substituted N-phenyluracil compound of formula (I)”.
Note: the objections in ¶13-15 would also apply to withdrawn claims 3-8 since these claims are currently drafted to recite the same issues. Please make sure there is an “or” before the final moiety from which each variable is chosen. Applicant can strike the “(oxygen)” and “(sulfur)” from the claims.
Further, withdrawn claim 3 recites many Q species, please make sure these are each separated by commas with an “or” before the final species. Please, also add a period to the end of claim 3.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation (BRI) using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art.
Claims 1-2 recite many chemical moieties under each of the Formula (I) variables by naming the chemical groups: e.g., in claim 1 R10 may be “(C1-C8)-alkylcarbonyloxy-(C1-C8)-alkyl”, R14 is “(C1-C8)-alkylamino”, or R8 is “(C1-C8)-alkoxy-(C1-C8)-alkyl”. It is understood that these chemical groups include moieties such as:
PNG
media_image5.png
84
219
media_image5.png
Greyscale
,
PNG
media_image6.png
53
170
media_image6.png
Greyscale
, and
PNG
media_image7.png
63
238
media_image7.png
Greyscale
, respectively. However, the claims leave the attachment point of such moieties open-ended. For example, either of the exemplary oxygen-containing moieties may be attached to the main Formula (I) at the left-most or right-most carbon and the alkylamino group may be attached at the carbon or nitrogen.
Further, for the “(C1-C8)-alkoxy-(C1-C8)-alkyl” moiety, the order of the alkoxy and second alkyl group is left open. For example, the -(C1-C8)-alkyl can be substituted on the O of the alkoxy in the order alkyl-O-alkyl (e.g.,
PNG
media_image7.png
63
238
media_image7.png
Greyscale
) or the alkyl could be substituted onto the last carbon of the alkoxy in the order O-alkyl-alkyl (e.g.,
PNG
media_image8.png
61
228
media_image8.png
Greyscale
).
If Applicant did not intend for the chemical moieties to be interpreted in such a broad manner, Examiner suggests utilizing drawn chemical structures to define the variables (e.g., see the Q moieties in claim 3). Note, the examples given above are not an exhaustive list. Such interpretation, under the BRI, is applied to all claims and all applicable chemical moieties where such breadth exists.
Claim Rejections - 35 USC § 112(b)
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 2 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.
Claim 2 recites the limitation R10 is "C(O)R13" in the second to final line of the definition of R10. There is insufficient antecedent basis for this limitation in the claim. Parent claim 1 recites R10 is "C(O)R14" not C(O)R13 and the variables R14 and R13 are chosen from different moieties. Thus, the recitation in claim 2 lacks antecedent basis. Therefore, the metes and bounds of the claim are undefined rendering the claim indefinite.
To overcome: Applicant could amend claim 2 to recite R10 is "C(O)R14".
Claim 2 recites R8 and R10 are independent moieties chosen from two separate lists of chemical moieties on Pg. 10 of the claims. However, at the bottom of Pg. 10, claim 2 recites R8 and R10 together form a heterocycle. There is no “or” or similar language to indicate the separate definitions and the combined definition for R8 and R10 are alternatives. Thus, it is unclear if the variables are chosen as separate entities or have to come together to create a heterocycle. Therefore, the metes and bounds of the claim are undefined rendering the claim indefinite.
To overcome: Applicant could add the word “or” before the “R8 and R10 together…” paragraph.
Note: withdrawn claims 3-8 recite Q moieties by drawn structures. It appears that some of these structures do not fall under the umbrella of the Q moieties as defined in parent claim 1 (i.e., these claims would be subject to a 112b rejection if not withdrawn). In short, multiple Q comprise: 1) R10 aryls or heteroaryls further substituted by more than one alkyl or groups other than alkyl or carboxylalkyl (e.g., Q10-11, 14-16, 19-22, 25, 281-288, 290, 295, 300-303, 310, 315, 320, 326-328, 331-338, 340-348, 351-360, 370, 372) and 2) R10 heterocycles further substituted by more than one alkyl group or groups other than alkyl (e.g., Q76-78, 83-88, 101-103, 111-114, 116-119, 266-267, 270, 400-404).
To expedite prosecution, Applicant is kindly asked to review the Q moieties in these claims and either clarify the claim drafting or point out to Examiner where they believe such moieties have antecedent basis.
Claim Rejections - 35 USC § 112(d)
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.
Claim 2 is 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. Claim 2 recites R10 is "C(O)R13. Parent claim 1 recites R10 is "C(O)R14" not C(O)R13 and the variables R14 and R13 are chosen from different moieties. Thus, claim 2 does not properly further limit parent 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.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GOTO (JP2001348376A, cited in IDS of 02/22/2023). Note, a machine translation of GOTO is referenced below and is provided attached to this action.
Regarding claims 1 and 2, GOTO teaches compounds of Formula 14:
PNG
media_image9.png
155
212
media_image9.png
Greyscale
(Pg. 69-70 ¶111); specifically, compounds 131 and 132 (Pg. 74 Table 46), reproduced below for clarity. Compound 131:
PNG
media_image2.png
302
491
media_image2.png
Greyscale
wherein R2 is F, R3 is F, R4 is Cl, X is O, R1 and R5-R7 are each H, Y is O, G is methylene (-CH2-), and Q is
PNG
media_image10.png
90
126
media_image10.png
Greyscale
wherein R8-R9 are each H and R10 is C(O)R14 wherein R14 is (C1)alkylamino (-NHCH3). Compound 132:
PNG
media_image3.png
287
491
media_image3.png
Greyscale
wherein R2 is F, R3 is F, R4 is Cl, X is O, R1 and R5-R7 are each H, Y is O, G is methylene (-CH2-), and Q is
PNG
media_image10.png
90
126
media_image10.png
Greyscale
wherein R8-R9 are each H and R10 is C(O)R14 wherein R14 is (C2)alkylamino (-NHC2H5). These two compounds are species of Formula (I), as defined in instant claims 1 and 2, as explained above.
Regarding claims 9 and 10, GOTO teaches the compound of the invention (i.e., compounds 131-132) is used as an active ingredient in an herbicide and is mixed with a solid carrier, a liquid carrier, a surfactant, and other formulation aids to produce formulations (Pg. 61 ¶45). GOTO teaches the compound is further combined with other herbicides including acetochlor (Pg. 63 ¶46). GOTO also teaches the compound can effectively eliminate various weeds that pose problems in cultivation of soybean, corn, wheat, and other crops (Pg. 58 ¶42).
Thus, GOTO teaches a product (i.e., an herbicide formulation) comprising a compound of instant Formula (I) wherein the compound is an active ingredient (i.e., a herbicide) and it is adapted for one or more useful crop plants (i.e., soy, corn, wheat). Thus, GOTO anticipates instant claim 9 wherein the phrase “comprising a herbicide product” which is “adapted for one or more crops” is interpreted, under the BRI, to be the instant compound of Formula (I).
Further, since GOTO teaches the formulation also comprising another herbicide acetochlor, GOTO also anticipates claim 9 wherein the phrase “comprising a herbicide product” which is “adapted for one or more crops” is an additional component, other than the instant Formula (I).
Regarding claim 10, GOTO teaches the instant compound formulated, as an herbicide, with acetochlor and one or more formulation auxiliaries (i.e., formulation aids). Thus, the claim is anticipated.
Regarding claim 11, GOTO teaches the compounds have excellent herbicidal efficacy against various weeds when applied to the foliage and soil of cultivated fields (Pg. 55 ¶38) including grass weeds such as barnyard grass (Echinochloa oryzicola) (Pg. 59 ¶43). GOTO also teaches the compound is formulated and applied to soil, foliage, or the cultivated area before or after weed emergence (Pg. 62 ¶46). Thus, GOTO teaches a method of controlling harmful plants (i.e., weeds) comprising applying an effective amount of a compound of Formula (I) or composition thereof (i.e., formulation) to the plants, soil, or area under cultivation. Claim 11 is anticipated.
Therefore, GOTO anticipates claims 1-2 and 9-11.
Conclusion
Claims 1-2 and 9-11 are rejected.
Note: Please see the attached search notes (specifically SEARCH 6) for structures related to the elected species which did not retrieve any anticipatory 102-type art (e.g., see Pg. 15-16 & 19-29 results labeled “only instant retrieved”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA ELIZABETH BELL whose telephone number is (703)756-5372. The examiner can normally be reached Monday-Friday 9:00-5:30.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.E.B./
Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
Prosecution Insights