DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 11-13 are pending and represent all claims currently under consideration.
Response to Amendment
The amendment filed 10/07/2025 has been entered.
Claim 11 was amended. No new material was added.
Applicant’s amendments have overcome the previous objections to the specification.
The rejections of claims 11-13 under 35 U.S.C. 103 are modified to address the amendment and maintained.
Response to Arguments
The Declaration under 37 CFR 1.132 filed 10/07/2025 is insufficient to overcome the rejection of claims 11-13 based upon 35 U.S.C. 103 as set forth in the last Office action because: the showing is not commensurate in scope with the claims. The compounds of the instant invention referred to in the Declaration, along with the compounds referenced from Taggi, all include a methoxycarbonyl group in place of the amine as claimed (Declaration, page 3), which according to the Applicant represent intermediates of the methoxycarbonyl compounds (Remarks, page 6). An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See MPEP § 716.02(e). In this case, the closest prior art would be compounds of Formula 1J from Taggi with an amine, rather than a methoxycarbonyl, as discussed in the rejection below. Applicant states that the tri-substituted phenyl group is present in the intermediates and is responsible for the activity of the compounds against the pathogen Phakopsora pachyrhizi (Remarks, page 6), but it should be considered that the methoxycarbonyl could affect activity as well. This is supported by the fact that Taggi is directed toward compounds which are effective toward Phakopsora pachyrhizi (Taggi, page 131, line 29; page 132). Therefore, the amine-containing compounds should be tested in place of the methoxycarbonyl derivatives to demonstrate any unexpected results.
Applicant's arguments filed 10/07/2025 have been fully considered but they are not persuasive.
Applicant argues that the compounds disclosed in Long are structurally distinct from both the presently claimed intermediates and the compounds of Taggi, and there is no teaching or suggestion in Long that would motivate a skilled person to apply the tri-substituted phenyl group of Long to the compound of Taggi (Remarks, pages 6-7). This argument is not persuasive, because Taggi teaches one skilled in the art would recognize to add substituents to the shown structure (Taggi, page 39, lines 8-11) and Long teaches the claimed substitution pattern is known in the field. Further, both Taggi and Long teach compounds which are effective toward Phakopsora pachyrhizi (Taggi, page 131, line 29; page 132; Long, page 96, lines 11-12).
Regarding the priority (Remarks, page 4) and rejection over Bereznak (Remarks, page 5), Applicant states that the instant application is a divisional of U.S. Application No. 17/291,631, filed May 06, 2021, which is a national stage entry of PCT/US2019/059770, filed November 05, 2019, which claims priority benefit from Provisional Application 62/756,308, filed November 06, 2018. In order to correct the filing receipt to reflect this priority data, a new Application Data Sheet needs to be filed by the Applicant. The error in the current Application Data Sheet is shown below.
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This section needs to first state that the instant application is a divisional of U.S. Application No. 17/291,631, then state the priority data for 17/291,631. After resubmission of the Application Data Sheet, the filing receipt can be corrected. For further clarification, please contact the Examiner at (703)756-5307, the Office of Data Management at (571)272-4000, or USPTO Customer Support at (571)272-1000.
Priority
This application makes reference to or appears to claim subject matter disclosed in Application No. 17/291,631, filed 11/05/2019. If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76; if the application was filed on or after September 16, 2012, the specific reference must be included in an ADS in compliance with 37 CFR 1.76. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
If the instant application is a utility or plant application filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a national stage application under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(4) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d)(3) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)). The petition must be accompanied by (1) the reference required by 35 U.S.C. 120 or 119(e) and by 37 CFR 1.78 to the prior application (unless previously submitted), (2) the applicable petition fee under 37 CFR 1.17(m)(1) or (2), and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m)(1) or (2) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an ADS in compliance with 37 CFR 1.76 with the reference (or, if the application was filed before September 16, 2012, by filing either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76). See MPEP § 211.02.
Claims 11-13 are considered to have an effective filing date of 03/28/2023.
Modified/Maintained Claim Rejections - 35 USC § 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.
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.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Bereznak (WO 2020097012 A1). The reference was cited previously by the Examiner.
Regarding claim 11, Bereznak teaches a compound of formula 11 below (Bereznak, page 32, scheme 7). Bereznak teaches Q is CR6 (Bereznak, claim 2), A is of formula A-1 below (Bereznak, claim 3), Y can be CR7aR7b (Bereznak, claim 1), R1 and R2 can each be F, R3 can be H, n is 0, R6 can be Br, Cl, I, methyl, i-propyl, or trifluoromethyl, R7a is H, R7b is H (Bereznak, claim 3). Bereznak further defines A-1 to specify the bond extending to the right is attached to the ring containing Q and the bond extending to the left is attached to the phenyl ring (Bereznak, claim 1), resulting in the structure as claimed.
Formula 11:
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Formula A-1:
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Bereznak is considered to be analogous to the claimed invention, because both Bereznak and the instant invention are in the same field of substituted tolyl fungicides. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Bereznak under the meaning of 35 U.S.C. 103.
Regarding claim 12, Bereznak teaches all the elements of the current invention as applied to claim 11. As above, Bereznak teaches R6 can be i-propyl (Bereznak, claim 3).
Regarding claim 13, Bereznak teaches all the elements of the current invention as applied to claim 11. As above, Bereznak teaches R6 can be trifluoromethyl (Bereznak, claim 3).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Taggi (WO 2015157005 A1; IDS reference, 03/28/2023), further in view of Long (WO 2010101973 A1). The references were cited previously by the Examiner.
Regarding claim 11, Taggi teaches a compound of formula 1J below (Taggi, page 59, line 17), wherein R1 (i.e., the 2’ substituent or R1 as claimed) is F and R2 (i.e., the 4’ substituent or R6 as claimed) can be Br, Cl, I, Me, i-propyl, or trifluoromethyl, (Taggi, page 55, table 1A), resulting in the structure as claimed with the exception of a F substituent at the 6’ (i.e., R2 as claimed) position of the phenyl ring.
Formula 1J:
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Taggi further teaches that one skilled in the art will recognize that compounds of Formula 1 and intermediates can be subjected to various reactions to add substituents (Taggi, page 39, lines 8-11). Long teaches a fungicidal pyrazole compound comprising a phenyl ring with 2’ and 6’ F substituents and a 4’ methoxy or ethoxy substituent (Long, page 66, table 2), resulting in the phenyl ring substituted as claimed.
Taggi and Long are considered to be analogous to the claimed invention, because Taggi, Long, and the instant invention are in the same field of pyrazole-containing fungicides. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the structure of Taggi to include a 6’ F substituent as taught by Long, because Taggi teaches one skilled in the art would recognize to add substituents to the shown structure (Taggi, page 39, lines 8-11) and Long teaches the claimed substitution pattern is known in the field.
Regarding claim 12, Taggi and Long together teach all the elements of the current invention as applied to claim 11. As above, Taggi teaches R2 (i.e., the 4’ substituent or R6 as claimed) can be i-propyl (Taggi, page 55, table 1A).
Regarding claim 13, Taggi and Long together teach all the elements of the current invention as applied to claim 11. As above, Taggi teaches R2 (i.e., the 4’ substituent or R6 as claimed) can be trifluoromethyl (Taggi, page 55, table 1A).
Conclusion
THIS ACTION IS MADE FINAL. 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 CHASITY P JANOSKO whose telephone number is (703)756-5307. The examiner can normally be reached 7:30-3:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613