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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/30/2026 has been entered.
Status of Claims
Claim set remains the same as filed on 09/02/2025.
No claims have been amended, cancelled or added: Claims 2-4 and 9-16 remain cancelled.
Claims 1, 5-8 and 17-19 are pending and being examined on the merits herein.
Priority
This instant application 18043431, filed on 02/28/2023, is a 371 of PCT/IN2022/050724, filed on 08/12/2022, claims foreign priority to India 202121036558, filed on 08/12/2021.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 01/20/2026, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Claim Rejections - 35 USC § 112
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, 5-8 and 17-19 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.
Claim 1 recites “acetic acid used is in the range of 20 to 50 moles with respect to the compound of Formula (II)”. It is unclear how this mole amount with respect to the compound of formula (II) is calculated, because the calculation basis is not indicated clearly in the claim. Based upon instant specification Table 1, Pg. 16, for the purpose of compact prosecution, the acetic acid mole amount with respect to the compound of formula (II) is based upon 1 mole basis of the compound of formula (II).
Claims 5-8 and 17-19 are rejected accordingly because they are directly or indirectly depending on claim 1 and they do not clarify the issue in claim 1 as addressed above.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 5-8 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kumiai Chemical Industry Co. (WO2021002484, 01/07/2021, IDS of 02/28/2023, structures relied upon original copy in record of 02/28/2023; elsewise translation relied upon below, in record of 05/06/2025; hereafter “Kumiai”), in view of Simon et al. (US20150335016, 11/26/2015).
Kumiai discloses processes for the preparation of pyroxasulfone useful as herbicide (Abstract) that is substantially free of the monoxide impurity [0014-0016].
For Claim 1, A process for preparation of a pyroxasulfone of formula (I) substantially free of a monoxide compound of formula (III)
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Kumiai specifies that the invention is to provide a method for producing a compound of formula 5 [0006] or 5-a ([0008]; same as instant claimed Formula I) from a compound of formula 4 [0006] or formula 4-a [0008] (related to instant claimed Formula II), which has a sufficiently low ratio of a compound of formula (6) [0015] (related to instant claimed impurity source, compound of Formula III) in the product, has an excellent yield, and is advantageous for production on an industrial scale, and is industrially preferable (e.g., [0021] –[0023]).
said process comprising:
oxidizing a compound of formula (II) at a temperature ranging from 50 to 55 C in a single organic solvent and an oxidizing agent,
wherein the single organic solvent is acetic acid and the amount of acetic acid used is in the range of 20 to 50 moles with respect to the compound of Formula (II);
wherein said oxidizing agent is hydrogen peroxide and the process does not use a nitrogen stream.
Kumiai presents many examples of preparing pyroxasulfone, as referred to step iii preferably a step of reacting a compound of formula (4) (S derivative) with hydrogen peroxide in the presence of a metal catalyst to produce a compound of formula (5) (SO2 derivative) with sufficiently low proportion of compound of formula (6) (SO derivative) preferably 1% or less (e.g., [0708]-[0719]), with preferred oxidizing agent hydrogen peroxide (e.g., [0720]), and preferable metal catalyst as sodium tungstate [0757], out of many preferred metal catalysts that can be implemented in the preparation [0729] including tungsten catalyst [0735], molybdenum catalyst [0737], titanium catalyst [0740], zirconium catalyst [0741], and many others ([0722-0758] (corresponding to metal catalyst in instant claims 6-8).
Kumiai exemplifies the preparation in Example 2-1 to Example 2-36 to produce product 5-a (SO2 derivative, instant product of formula I) from oxidation of 4-a (S derivative, raw material) ([0966]-[1053]) with nitrogen stream or without nitrogen stream (e.g., Examples 2-19 to 2-25). Kumiai points out that after the reaction is completed, gases, volatile components, and low boiling components may be removed by purging with an inert gas (e.g., nitrogen), bubbling, and/or reducing the pressure [0621], suggesting that nitrogen is not required and is not the only way when gases, volatile components and low boiling components are intended for removal, corresponding the process does not use nitrogen stream as recited in instant claim 1.
Kumiai provides results from various preparation methods generating excellent yield of target product with very low impurity from intermediate compound monoxide, for instance, pyroxasulfone 5-a product yield as high as 99.4% with 0% intermediate compound in Examples 2-21 and 2-22 [1017-1018], 98.0% with 0% intermediate compound in Example 2-23 [1019], 98.7% with 0% of intermediate compound in Example 2-24 [1020], 94.2% with 0.6% intermediate compound in Example 2-33 [0144], corresponding to substantially free (e.g., less than or equal to 1% as indicated by instant specification Pg. 7 line 8) of monoxide intermediate compound of instant formula (III).
Kumiai presents comparative example (e.g., [1074-1076]; [1100]) to oxidize substrate 2.8 g (100 mmol, 100 mol %) compound 4-a (e.g., [0008-0009]; [0660]; same as compound of instant formula II) in a reaction flask containing 8.4g (1.0 L/mol, resulting in as 8.4g/MW60.052g.mol-1=0.14 mol=140 mmol, 140 mol %) acetic acid (corresponding to a single organic solvent), along with 3mmol, 3 mol% of sodium tungstate dihydrate as metal catalyst, 2.2 g (250 mmol, 250 mol %) of 30% hydrogen peroxide as oxidizing agent, to produce pyroxasulfone 5-a ([0007-0008]; as product of instant formula I), maintaining temperature at 26 C to 35 C, resulting in mixture having 5.0% [1077] of the undesirable compound 6-a ([0015]; as instant formula III).
Kumiai points out that in any operation described, the temperature is not particularly limited (e.g., [0618]; [0799]) and can be appropriately adjusted by a person skilled in the art in accordance with the purpose and situation [0625], while from the viewpoints of yield, suppression of by-products, economic efficiency, and the like in one embodiment, the reaction temperature is, for example, 0-100 C, preferably 20 to 100 C, more preferably 50 to 90 C, preferably 60 to 90C, even preferably 70 to 90 C, even more preferably 75 to 90 C, and even more preferably 75 to 80 C, or 50 to 100 C, and other suitable ranges [0799], or -10 C to 100 C, preferably -5C to 80 C, more preferably 0C to 50C, etc. (e.g., [0618]; [0799]) (many temperature ranges overlapping with range 50 to 55 C as in instant claim 1).
Kumiai emphasizes that the acid catalyst (corresponding to acetic acid as organic solvent in instant preparation) in step iii can be used alone or in combination of two or more kinds in any ratio; and the acid catalyst in step iii may be in any form as long as the reaction proceeds, and the form of acid catalyst can be appropriately selected by those skilled in the art; and the amount of the acid catalyst can be any amount and can be appropriately adjusted by those skilled in the art with any suitable amount as long as the reaction proceeds (e.g., [0760]). Kumiai indicates that the total amount of solvent used in the reaction as the sum of the amounts of all organic solvents and the amount of water used in the reaction [0789] is not particularly limited as long a the reaction system can be stirred sufficiently, however, from the viewpoints of yield, suppression of by-products, economic efficiency, and the like, the total amount of the solvent used in the reaction of step iii is, for example 0.1 to 10 L, relative to 1 mole of the compound of formula (4) (S-derivative raw material), or many other amount ranges (e.g., [0790] –[0794]). Thus, when acetic acid is used as single organic solvent or acid catalyst in the reaction, the amount can be adjusted and can go higher than the exemplified acetic acid amount as shown above.
For Claim 5, Kumiai indicates that the amount of oxidizing agent, e.g., hydrogen peroxide, used in the production can be any amount as long as the reaction proceeds and it can be appropriately adjusted by those skilled in the art; however, from the viewpoint of yield, suppression of by-products, economic efficiency, safety hazards, and the like, the amount of hydrogen peroxide used in step iii is , for example, 2 mol or more, preferably 2 to 8 mol, more preferably 2 to 6 mol, or 2 to 5 mol, or 2 to 4 mol, or 2 to 3 mol, or 2.3 to 3 mol, relative to 1 mol of the compound of formula (4) (raw material, S derivative, corresponding to instant formula (II) (e.g., [0722]) (overlapping with instant range 2.6 to 5 moles in instant claim 5). Kumiai exemplifies in Example 2-1 to Example 2-36 ([0966]-[1053]), e.g., Example 2-1, to oxidize compound 4-a 100 mmol (instantly claimed compound of Formula (II)) in the presence of aqueous hydrogen peroxide H2O2 (280 mmol) (resulting in oxidizing agent is 2.8 moles, falling within the range of 2.6 to 5 moles with respect to compound of formula II as recited in instant claim 5), sodium tungsten(5 mmol), butyl acetate and water at 70-80 °C to produce pyroxasulfone 5-a (instantly claimed compound of formula (I)) [0966].
For Claims 18-19, Kumiai discloses an agrochemical composition comprising pyroxasulfone 5-a [0548, 0865] that can comprise agrochemically acceptable excipients such as surfactant and solid carrier [0872, 0887], with preferred dosage form as a hydrating agent, a granule hydrating agent (corresponding to water dispersible granules in instant claim 19), an aqueous suspension for spraying to farmland or the like [0867]. Kumiai states that an additional herbicidal active ingredient can be included in the composition in many formulation examples [0885, 0887, 0889, 0891]. For instance, Kumiai exemplifies a preferred embodiment of the agrochemical formulation as a hydration agent, including 10-90 wt. % of a crystal of pyroxasulfone, 5-20 wt. % of a surfactant, and 5-85 wt. % of a solid carrier in an agrochemical formulation, Optionally, an additional herbicidal active ingredient of 0 to 80 wt%, a binder of 0 to 5 wt%, a colorant of 0 to 1 wt%, a defoaming agent of 0 to 1 wt%, and a toxicity reducing agent of 0 to 80% are included [0885] (corresponding to agrochemically acceptable excipient in instant claim 18).
Kumiai does not teach the composition comprising a triazinone herbicide as recited in instant claim 17 in addition to pyroxasulfone in the composition.
Simon teaches a herbicidal composition comprising herbicide A [0014, 0096] and at least one further active compound herbicide B [0019, 0116] that can be selected from triazinones [0044, 0141] and pyroxasulfone [0062, 0159] and many other herbicide options (corresponding to triazinone and pyroxasulfone in instant claim 17).
It would have been prima facie obvious to for one with ordinary skill in the art prior to filing date to implement the preparation process of pyroxasulfone taught by Kumiai to achieve the fine pyroxasulfone product with substantially free of monoxide impurity, and to incorporate the additional herbicide triazinone taught by Simon into the herbicide composition comprising pyroxasulfone taught by Kumiai for the agrochemical herbicide composition. Because Kumiai teaches that an additional active herbicide is suitable to be included in the pyroxasulfone composition and Simon demonstrates the herbicidal composition comprising multiple herbicides including pyroxasulfone and triazinone, one would have reasonable expectation of success to combine both teachings to add triazinone into the composition to achieve a broader spectrum of herbicidal activity at the same time to increase specific activity of an active compound with reliability of effect, as indicated in Simon [0002]. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Since Kumiai aims the invention for improving target product yield and purity, with all the available information regarding the reaction on acid catalysts as well as organic solvents, oxidizing agents, metal catalysts, reaction temperature, reagent amounts, and methods to remove undesirable components post reaction as addressed above in detail, scientists in the field would have motivation to optimize what presents to have room for improvement, in this case, using acetic acid as organic solvent in the reaction to improve purity and lower monoxide intermediate in the final product by adjusting reagent amounts and reaction temperatures. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, oxidizing agent amount, general temperature range overlap with those taught by prior art. While organic acid solvent amount and reaction temperature range in specific reaction differ from those taught in prior art, Kumiai points out that in any operation described, the temperature or acid amount is not particularly limited and can be appropriately adjusted by a person skilled in the art in accordance with the purpose and situation from the viewpoints of yield, suppression of by-products, economic efficiency. Therefore, optimizing and testing different amounts of acetic acid at different temperatures based on Kumiai would have been routine experimentation leading to reasonable expectation of success, same as what Kumiai does to improve the target product yield and purity. MPEP §2144.05 (II) states that “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition. See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Moreover, “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Response to Arguments
Applicant's remarks/arguments filed on 01/30/2026 have been fully considered.
Applicant argued that the instant process is an advancement based on reproduction of US20120264947 Example 9C for increased yields and decreased monoxide impurity.
The office rejection is based on prior art teaching from combined Kumiai and Simon. Regarding yield and intermediate purity, as presented in office action and copied below for convenience, Kumiai provides excellent preparation methods for high product yields and low impurity. Therefore, the claimed process with high yield and good purity is not advancement over prior art.
Kumiai provides results from various preparation methods generating excellent yield of target product with very low impurity from intermediate compound monoxide, for instance, pyroxasulfone 5-a product yield as high as 99.4% with 0% intermediate compound in Examples 2-21 and 2-22 [1017-1018], 98.0% with 0% intermediate compound in Example 2-23 [1019], 98.7% with 0% of intermediate compound in Example 2-24 [1020], 94.2% with 0.6% intermediate compound in Example 2-33 [0144], corresponding to substantially free (e.g., less than or equal to 1% as indicated by instant specification Pg. 7 line 8) of monoxide intermediate compound of instant formula (III).
Applicant asserts that Kumiai and Simon do not teach or suggest that the presently claimed pyroxasulfone process provides “pyroxasulfone of formula (I) substantially free of a monoxide compound of formula (III)”, and Kumiai provides no evidence that the presently claimed process will automatically and necessarily provide presently claimed “0.2% w/w of a monoxide compound of formula (III)”.
As presented above in this office action, Kumiai and Simon teaches the instantly claimed pyroxasulfone preparation method, with explicit statement that both temperatures and amounts of reagents, e.g., acid amount, metal catalyst amount, or oxidizing agent amount, are not particularly limited and can be adjusted by those skilled in the art. The current method using single acetic acid as organic solvent in the preparation with hydrogen peroxide as oxidizing agent to oxidize compound of Formula (II) (as compound (4a) in Kumiai) to prepare compound of formula (I) (as compound 5a) in Kumiai), minimizing intermediate compound of formula (III) (as compound (6a) in Kumiai), as “from the viewpoint of yield, suppression of by-products, economic efficiency, safety hazards, and the like” as the purpose and improvement of Kumiai’s invention. Therefore, Kumiai explicitly teaches, suggests, and recommends adjusting temperature, reagent amounts, as well as choosing right agents for achieving the desirable purity, safety, and economic efficiency.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., 0.2% w/w of a monoxide compound of formula (III)) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant asserts Kumiai teaches producing high purity target compound with other solvents at temperature range of 75 to 80 C with ammonium molybdate, and Kumiai and Simon combined does not provide teaching or suggestions of temperature of 50 to 55 C when 20 to 50 moles acetic acid is the solvent in the reaction, therefore, as a result of unpredictable chemistry, the current method preparing pyroxasulfone substantially free of Formula (III) is not automatically and necessarily followed via prior art teaching.
Kumiai teaches that temperature ranges are not particularly limited, so as reagents and amounts, as long as the reactions can proceed. It is obvious for artisans in the field to optimize, experiment, and adjust the parameters that have been taught by Kumiai to achieve the current invention. Since Kumiai already shows acetic acid as a possible single solvent, with same oxidizing agent hydrogen peroxide, same metal catalyst sodium tungstate, in the reaction obtaining a product with about 5.5% intermediate, it provides the perfect motivation for scientists in the field to improve the reaction by tuning further the parameters, including temperature and reagent amounts. Especially Kumiai teaches general temperature ranges which overlap with instantly claimed temperature ranges. The most relevant paragraph is copied below for reference:
Kumiai points out that in any operation described, the temperature is not particularly limited (e.g., [0618]; [0799]) and can be appropriately adjusted by a person skilled in the art in accordance with the purpose and situation [0625], while from the viewpoints of yield, suppression of by-products, economic efficiency, and the like in one embodiment, the reaction temperature is, for example, 0-100 C, preferably 20 to 100 C, more preferably 50 to 90 C, preferably 60 to 90C, even preferably 70 to 90 C, even more preferably 75 to 90 C, and even more preferably 75 to 80 C, or 50 to 100 C, and other suitable ranges [0799], or -10 C to 100 C, preferably -5C to 80 C, more preferably 0C to 50C, etc. (e.g., [0618]; [0799]) (many temperature ranges overlapping with range 50 to 55 C as in instant claim 1).
Kumiai emphasizes that the acid catalyst (corresponding to acetic acid as organic solvent in instant preparation) in step iii can be used alone or in combination of two or more kinds in any ratio; and the acid catalyst in step iii may be in any form as long as the reaction proceeds, and the form of acid catalyst can be appropriately selected by those skilled in the art; and the amount of the acid catalyst can be any amount and can be appropriately adjusted by those skilled in the art with any suitable amount as long as the reaction proceeds (e.g., [0760]). Kumiai indicates that the total amount of solvent used in the reaction as the sum of the amounts of all organic solvents and the amount of water used in the reaction [0789] is not particularly limited as long as the reaction system can be stirred sufficiently, however, from the viewpoints of yield, suppression of by-products, economic efficiency, and the like, the total amount of the solvent used in the reaction of step iii is, for example 0.1 to 10 L, relative to 1 mole of the compound of formula (4) (S-derivative raw material), or many other amount ranges (e.g., [0790] –[0794]). Thus, when acetic acid is used as single organic solvent or acid catalyst in the reaction, the amount can be adjusted and can go higher than the exemplified acetic acid amount as shown above.
Since Kumiai aims the invention for improving target product yield and purity, with all the available information regarding the reaction on acid catalysts as well as organic solvents, oxidizing agents, metal catalysts, reaction temperature, reagent amounts, and methods to remove undesirable components post reaction as addressed above in detail, scientists in the field would have motivation to optimize what presents to have room for improvement, in this case, using acetic acid as organic solvent in the reaction to improve purity and lower monoxide intermediate in the final product by adjusting reagent amounts and reaction temperatures. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
Applicant asserts that Kumiai and Simon teaches away from a pyroxasulfone process using an oxidation temperature of 50 to 55 C and acetic acid as the solvent, because all working examples in Kumiai disclose temperature range of 75 to 80 C, not 50 to 55 C, with other solvents in the reactions to achieve product substantially free of formula (III). Therefore, the skilled person in the art would have no motivation to explore other solvents and different temperatures.
MPEP 2145.D.I states "[a] prior art reference that "teaches away" from the claimed invention is a significant factor to be considered in determining obviousness. However, "the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)"; Furthermore, "the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .... " In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir.
2004). See also UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 692, 2023 USPQ2d 448 (Fed. Cir. 2023
)". Therefore, the "disadvantage" as acetic acid as solvent, with product having 5.5% of monoxide intermediate, does not lead to prior art "teaches away". Rather, it provides opportunity for artisans to improve the method because there is room for advancement.
Moreover, “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). The teaching of prior art is not limited by working examples. Because Kumiai also in general teaches the temperature range as discussed above, and indicates that temperature is not particularly limited, artisans in the field obviously can experiment and optimize the temperature range following the teaching. Especially taking other working examples of Kumiai using 75-80 C for other reaction agents instead of acetic acid, producing high purity product, it would have motivated artisans to try higher temperatures than 26-35 C as the original temperature ranges in the acetic acid reaction in Kumiai. From 35 C to 75 C with 5 C intervals, there are only 40 C, 45 C, 50 C, 55 C, 60 C, 65 C, and 70 C to be tested in between. It would be routine practice to optimize the temperature range based on prior art teaching.
Applicant asserts that Kumiai and Simon provides no expectation of success that the claimed process would provide pyroxasulfone substantially free of formula (III) sulfoxide; the closest process in Kumiai is the reference example, as Comp. Ex. 1 from US2012/026497, which is compared with present inventive Ex. 1 in specification, showing 3.32% monoxide residue in Comp. Ex. 1 vs. not detected in Ex. 1 with more than 99% purity.
The data comparisons shown in remarks only represent part of the data comparisons in instant specification, in instant specification (Pg. 16, Table 1), the data presents including different amounts of sodium tungstate dihydrate (present Ex. 1 0.001 to 0.1 moles vs. Comp. Ex. 1 0.029 moles), different acetic acid (20 to 50 moles vs. 17.94 moles), hydrogen peroxide (2.6 to 5 moles vs. 2.56 moles), and temperature ( 50-55 C vs. room temperature). To draw conclusion from the comparisons as such that substantially free of monoxide compound formula (III) is resulted from the acetic acid amount with temperature at 50 to 55 C is premature, because a) the metal catalyst amount might have played major role in the reaction as well; b) the claimed range of acetic acid 20 to 50 moles, with Ex. 1 acetic acid only 31.3 mole equiv. as shown in remarks, it is not commensurate to the claimed entire range, see MPEP 716.02(d), “to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)”; c) the Comp. Ex. 1 acetic acid is 17.94 moles is very close to the lower end of instantly claimed 20-50 moles (2.06/20 = approx. 10%, conventionally considered about the same with +/- 10%). Therefore, the comparisons do not provide sufficient evidence to indicate that current invention is not obviousness over prior art teaching.
Applicant points out that the Kumiai paragraphs [0849] and [0851] cited in previous office action refer to acetic acid in crystallization, not reactions solvents.
This is acknowledged by examiner, and the citations are removed from current office action.
Please refer to the office action presented above as a full response to the declaration.
Conclusion
Claims are not allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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