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 .
Status of the Claims
Claims 19-32 are pending. Claims 27-30 are withdrawn. Claims 19-26 and 31-32 are rejected.
Declaration –37 CFR § 1.132
The declaration under 37 CFR 1.132 filed on Dec. 11, 2025 is sufficient to overcome the obviousness rejection of claims 19-26 and 31-32 over Narine et al. WO 2014/167084 A1.
Response to Amendment/Arguments
The amendment filed Dec. 11, 2025 is compliant with the requirements of 37 CFR 1.121(c), accordingly the amendment has been entered. Applicant’s arguments have been fully considered and are addressed below:
35 USC § 102 Rejection
Applicant traverses the rejection of claim 32 under 35 USC 102(a)(1)/102(a)(2) for being anticipated by Narine et al. WO 2014/167084 A1. The traversal is on the grounds that Narine does not anticipate the claim because a PHOSITA would need to pick and choose various embodiments in order to arrive at the claimed compound. Applicant states that Narine discloses 8100 combinations and that one of them corresponds to the compound I-1.
This is not persuasive because the number of compounds disclosed does not negate the fact that the claimed compound is one of the compounds disclosed. Since PHOSITA would have at once envisaged the claimed isomer from Narine’s disclosure of the racemate, the rejection is maintained.
35 USC § 103 Rejection
The rejection of claims 19-26 and 31-32 under 35 USC 103 for being obvious over Narine et al. WO 2014/167084 A1 has been overcome by Applicant’s showing of unexpectedly good pesticidal activity and less damage to the plants being protected. See the declaration filed on Dec. 11, 2025. The rejection has been withdrawn.
Double Patenting Rejections
The nonstatutory double patenting rejections of:
(1) claims 19-26 and 31-32 over US 11,124,528 in view of Narine,
(2) claims 19-26 and 31-32 over US 11,034,703 in view of Narine,
(3) claims 19-26 and 31-32 over US 9,730,451 in view of Narine,
have been overcome by unexpected results, with respect to claims 19-26 and 31, but not for claim 32, because claim 32 reads on the racemic mixture claimed in the patents. The rejections have been maintained for claim 32.
The nonstatutory double patenting rejection of:
(4) claims 19-26 and 31-32 over US 12,144,349 in view of Narine,
(5) claims 19-23 and 32 over Appl. No. 18/272,884 (now US 12,559,507), and claims 24-26 and 31 over ‘884 in view of Narine,
(6) claims 19-23 and 32 over Appl. No. 18/272,820 (now US 9,730,451), and claims 24-26 and 31 over ‘820 in view of Narine, and
(7) claims 19-23 and 32 over Appl. No. 17/274,909 (now US 12,532,887), and claims 24-26 and 31 over ‘909 in view of Narine,
have been not been overcome by the unexpected results, because the patents disclose the R-isomer as opposed to the racemic mixture; therefore, the unexpected results do not apply. The rejections are maintained.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 32 is rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Narine et al. WO 2014/167084A1.
Narine teaches compound no. A-1 of formula (III-12),
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, wherein R1 is methyl and ZR2 is Ph. See Table 12 (p. 27), referring to Table A (p. 38). Compound A-1 of Table 12 is inherently a 1:1 mixture that comprises the claimed I-R-1 compound,
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. Since claim 32 reads on any mixture comprising the claimed compound, and a PHOSITA would have immediately envisaged the racemic mixture of the claimed compound, Narine anticipates the claim.
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.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 19 of U.S. Patent No. 11,124,528 B2 in view of Narine et al. WO 2014/167084A1.
Although the claims at issue are not identical, they are not patentably distinct from each other, because claims 3 and 19 of ‘528 teach an enolate compound of formula (X),
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, in the S- or R-configuration. The keto tautomer thereof embraces the claimed R-isomer
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.
Narine teaches compounds of formula (I),
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, are useful for “combating animal pests” and “protecting crops [] from attack or infestation by invertebrate pests.” See, e.g., claims 10 and 11. As an example of formula (I), Narine teaches compound no. A-1 of formula (III-12),
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, wherein R1 is methyl and ZR2 is Ph, which compound would have been immediately envisaged by a PHOSITA. Table 12 (p. 27), referring to Table A (p. 38).
In view of Narine, a PHOSITA would have found the (R)-enantiomer of instant claim 32 to be an obvious species of the genus claimed by ‘528, since Narine teaches the claimed compound.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,034,703 B2 in view of Narine et al. WO 2014/167084A1.
Although the claims at issue are not identical, they are not patentably distinct from each other, because claims 1-14 of ‘703 disclose a process of making enolate compounds of formula (X),
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in the S- or R-configuration. The keto tautomer thereof embraces the claimed R-isomer
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.
Narine teaches compounds of formula (I),
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, are useful for “combating animal pests” and “protecting crops [] from attack or infestation by invertebrate pests.” See, e.g., claims 10 and 11. As an example of formula (I), Narine teaches compound no. A-1 of formula (III-12),
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, wherein R1 is methyl and ZR2 is Ph, which compound would have been immediately envisaged by a PHOSITA. Table 12 (p. 27), referring to Table A (p. 38).
In view of Narine, a PHOSITA would have found the (R)-enantiomer
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of instant claim 32 to be an obvious species of the genus claimed by ‘703, since Narine teaches the racemate.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 9,730,451 in view of Narine et al. WO 2014/167084A1.
Although the claims at issue are not identical, they are not patentably distinct from each other because, the patented claims disclose a compound of formula (I),
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, tautomers and stereoisomers thereof. See, e.g., claim 1.
Narine teaches compounds of formula (I),
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, are useful for “combating animal pests” and “protecting crops [] from attack or infestation by invertebrate pests.” See, e.g., claims 10 and 11. As an example of formula (I), Narine teaches racemic compound no. A-1 of formula (III-12),
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, wherein R1 is methyl and ZR2 is Ph, which compound would have been immediately envisaged by a PHOSITA. Table 12 (p. 27), referring to Table A (p. 38).
The A-1 racemate of (III-12) comprises two compounds, the R- and S-isomers, which include the compound of instant claim 32. Since Narine’s racemate A-1:III-12 would have been an obvious species of the genus claimed by ‘451, claim 32 would have been obvious without needing to separate the R-isomer.
Claims 19-26 and 31-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,144,349.
Although the claims at issue are not identical, they are not patentably distinct from each other, because the patented claims disclose a mixture comprising compound I-R-1,
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(claim 3), preferably at least 90% ee per claim 4, with another pesticide in a ratio of 10000:1 to 1:10000, preferably 20:1 to 1:20, according to claim 7. Claim 8 discloses a composition thereof comprising an inert liquid/solid carrier. The compound I-R-1 is identical to instant I-R-1. Therefore, this patented mixture anticipates instant claims 19, 24-26 and 32.
Instant claims 20-23, drawn to higher %ee limitations, would have been obvious since the %ee ranges of ‘349 overlap with the instant ranges, because a PHOSITA would have been motivated to increase the enantiopurity of the composition to optimize its properties.
Regarding the seed of instant claim 31, patented claim 15 teaches a seed comprising compound A of formula (I), which is an obvious variant of compound I-R-1. Since compound A and compound I-R-1 are obvious variants, and claim 15 discloses the claimed amounts, a PHOSITA would have found the instantly claimed seed obvious.
Claims 19-23 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 22 of US 12,559,507.
Although the claims at issue are not identical, they are not patentably distinct from each
other because claim 22 of ‘884 discloses the compound
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, which is a
tautomer of the instant compound I-R-1 (labelled as I-R) with at least a 90% ee. This anticipates instant claims 19 and 32. Instant claims 20-23, drawn to higher %ee limitations, would have been obvious since the %ee ranges of ‘884 overlap with the instant ranges, because a PHOSITA would have been motivated to increase the enantiopurity of the composition to optimize its properties.
Claims 24-26 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 22 of US 12,559,507, as applied above to claims 19-23 and 32, in view of Narine et al. WO 2014/167084A1.
Narine teaches the racemate A1 (III-12), which embraces instant I-R-1 (i.e., 100% ee), and teaches mixtures, compositions and seeds thereof. Table 12 (p. 27), referring to Table A (p. 38). See, also, claims 10 and 11. Since a PHOSITA would have been motivated to make the claimed invention comprising the ‘507 compound of claim 22, the claimed pesticidal mixtures/compositions thereof of instant claims 24-26 and 31 would have been obvious in view of Narine.
Claims 19-23 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of US 12,679,852.
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘852 discloses an enantioenriched tautomer of the instant compound I-R-1 (labelled as I-R) with at least a 55% ee. See, e.g., claim 15. This anticipates instant claim 32. Instant claims 19-23, drawn to higher %ee limitations, would have been obvious since the %ee range of ‘820 overlaps with the instant ranges, because a PHOSITA would have been motivated to increase the enantiopurity of the composition to optimize its properties.
Claims 24-26 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 22 of c US 12,679,852, as applied above to claims 19-23 and 32, in view of Narine et al. WO 2014/167084A1.
Narine teaches the racemate A1 (III-12), which embraces instant I-R-1, and teaches mixtures, compositions and seeds thereof. Since a PHOSITA would have been motivated to make the claimed invention comprising the ‘852 of claim 15, the claimed pesticidal mixtures/compositions thereof, according to instant claims 24-26 and 31,would have been obvious in view of Narine.
Claims 19-23 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-10 and 13-15 of US 12,532,887.
Although the claims at issue are not identical, they are not patentably distinct from each other, because ‘887 discloses an enantioenriched compound identical to instant I-R-1 with at least a 98% ee according to claim 15. This anticipates instant claims 19-23 and 32.
Claims 24-26 and 31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-10 and 13-15 of US 12,532,887, as applied to claims 19-23 and 32 above, in view of Narine et al. WO 2014/167084A1.
Narine teaches the racemate A1 (III-12), which embraces instant I-R-1, and teaches mixtures, compositions and seeds thereof. Table 12 (p. 27), referring to Table A (p. 38). See, also, claims 10 and 11. Since a PHOSITA would have been motivated to make the claimed invention comprising the ‘887 of claim 15, the claimed pesticidal mixtures/compositions thereof, according to instant claims 24-26 and 31,would have been obvious in view of Narine.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA L AGUIRRE whose telephone number is (571)272-5592. The examiner can normally be reached 10 am-6 pm MST.
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/AMANDA L. AGUIRRE/ Primary Examiner, Art Unit 1626
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