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 .
Claims 1-15 are pending in this application.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 1-15 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.
(1) In independent claim 1, formula (I) is referred to as “general” formula (I). The term “general” implies that different compounds are possible in addition to those set forth in claim 1. This is ambiguous claim language.
Dependent claims 2-7 and 10 also recite “general” formula (I), and dependent claims 8-9 and 11-15 depend on claims that recite “general” formula (I).
(2) Throughout the claims, inventive features that could be interpreted as alternatives are recited with an “and” instead of “or.” For example, R1 is defined in claim 1 as heteroaryl, excluding thienyl, that can be substituted by halogen, cyano, nitro … and (C1-C6)alkylS(O)p. As another example, R3 is defined as “hydrogen and (C1-C6)alkyl.” R3 cannot be both hydrogen and (C1-C6)alkyl. These are just few examples of the same claim language problem of using “and” instead of “or.” As stated previously, this claim language issue occurs throughout the claims in instances that are too numerous to point out individually.
Current claim language suggests that R1, R2, R3, etc. must have all of the recited substituents. A list of alternative members should end with an “or” unless the Markush language “selected from the group consisting of … and …” is used. Claims are unclear and indefinite for reciting “and” when “or” should have been used to recite alternative members.
(3) Claim 5 recites “R1 is selected from the group consisting of Q-1.1 to Q-1.59.” However, Q-1.26 to Q-1.34 are missing. If R1 does not include such members, R1 should be rewritten as “R1 is selected from the group consisting of Q-1.1 to Q-1.25 and Q-1.35 to Q-1.59.”
Similarly, claim 6 recites “R1 is selected from the group consisting of Q-1.1 to Q-1.59,” but Q-1.8, Q-1.9, Q-1.20, Q-1.23, Q-1.26 to Q-1.55, and Q-1.58 are missing.
(4) Claim 9 recites a method of reducing phytotoxic effects of a pesticides on plants, but the method step is recited in “use” language (emphasis added):
A method of reducing phytotoxic effects of pesticides on plants, the method comprising use of one or more compounds of claim 1 or the composition as claimed in claim 7.
The metes and bounds of claim language are unclear because “use” is an incomplete method step. This claim language structure appears to be a variation of a “use” claim, which is not permitted in U.S. practice because it is an incomplete process or incomplete method claim.
(5) Claim 10 is similar to claim 9 in reciting “use” as an incomplete method step (emphases added):
A method of reducing phytotoxic effects of pesticides on plants, the method comprising:
use of one or more compounds of the general formula (I) as claimed in claim 1; and
use of pesticides deployed simultaneously or sequentially.
The metes and bounds of claim language are unclear because “use” is an incomplete method step. This claim language structure appears to be a variation of a “use” claim, which is not permitted in U.S. practice because it is an incomplete process or incomplete method claim.
Claims 11-15 are included for reciting additional “use” or for depending on claim 10 without curing its deficiency.
For these reasons, all claims are deemed indefinite.
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.
Claims 1-8 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-15 of U.S. Patent No. 12,180,187 (hereinafter, ‘187 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
‘187 patent claims the following compounds (see e.g., claims 1-7):
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, wherein
R1 includes OR1a, wherein R1a includes H, C1-6 alkyl;
R2 includes H, C1-6 alkyl;
R3 includes H;
R4 includes phenyl, which can be substituted by halogen, cyano, C1-6 alkyl;
A includes fifteen heteroaryl moieties A1 to A15.
A moieties of ‘187 patent overlap with the R1 of the instant application claims. For example, A1 of ‘187 patent overlaps with Q-1.1 of instant application claims 5 and 6. Herbicidal composition or product and/or plant growth regulating composition or product are also claimed (claims 11-15 of ‘187 patent).
For these reasons, the ordinary skilled artisan would have recognized the instant claimed invention as an obvious variation of the claimed invention set forth in the ‘187 patent.
For the foregoing reasons, all claims are rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699