4DETAILED 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 .
Claims 1-18 are pending in the application.
Election/Restrictions
Applicant’s election without traverse of Example I.47
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, wherein Q is defined as
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in the reply filed on January 7, 2026 is acknowledged.
No claims are withdrawn.
Claims 1-18 will presently be examined to the extent they read on the elected subject matter of record.
Priority
This application is a National Stage Entry of PCT/EP2021/080362 filed November 2, 2021, which claims benefit to Foreign European Patent Office (EPO) Application No. 20206049.7 filed November 5, 2020.
Information Disclosure Statement
Receipt of Information Disclosure Statements filed February 7, 2024 and September 9, 2025 is acknowledged.
Claim Rejections - 35 USC § 112
Claims 1-4, 6-9, 11-15, and 17 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 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: how the method of reducing the phytotoxic effects of pesticides occurs, i.e., application step. Claim 1 recites “A method of reducing phytotoxic effects of pesticides on plants, the method comprising “use of compounds of general formula (I) or salts thereof…”. There is no step of how the compounds of general formula (I) are used, i.e., “application to plant” or “wherein the compounds are applied to plants”.
Claims 2-4, and 17 are dependent from claim 1 and are also rejected.
Claim 6 recites “comprising at least one herbicide”. It is unclear if the herbicide is an additional compound of the composition or the “at least one agrochemical” from claim 5 from which it depends. Clarification is required.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: how the method of reducing the phytotoxic effects of pesticides occurs, i.e., application step. Claim 7 recites “A method of reducing phytotoxic effects of pesticides on plants, the method comprising use of one or more compounds of claim 1 or of the composition as claimed in claim 5”. There is no step of how the compounds of claim 1 or the composition as claimed in claim 5 are used, i.e., “application to plant” or “wherein the compounds are applied to plants”.
Claim 17 is dependent from claim 7 and is also rejected.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: how the method of reducing the phytotoxic effects of pesticides occurs, i.e., application step. Claim 8 recites “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”. There is no step of how the compounds of general formula (I) as claimed in claim 1 are used, i.e., “application to plant” or “wherein the compounds are applied to plants”.
Claim 9 is dependent from claim 8 and is also rejected.
Claim 11, line 69 recites “(CAS [1246513-43-8])”. Line 90 of claim 11 also recites “(CAS [1246513-48-3])”. However, the nomenclature for the compounds in lines 69 and 89 is different. These portions of the claim are indefinite because it cannot be determined which is the proper nomenclature for “(CAS [1246513-43-8])”. Clarification and correction are required.
Claim 11, line 95 recites “ethyl {[1-(4-tert-butylphenyl)-5-(4-chlorophenyl)-1H-pyrazol-3-yl]oxy}acetate”. Line 96 recites “(CAS [1076207-97-0])”.
Claim 11, line 97 also recites “ethyl {[1-(4-tert-butylphenyl)-5-(4-chlorophenyl)-1H-pyrazol-3-yl]oxy}acetate”. Line 98 recites “(CAS [1310875-82-1])”.
Claim 11, lines 95 and 97 recite the same compound, however, the CAS numbers related to the compounds with the same name in lines 96 and 98, respectively, are different. These portions of the claim are indefinite because it cannot be determined which is the proper CAS number for “ethyl {[1-(4-tert-butylphenyl)-5-(4-chlorophenyl)-1H-pyrazol-3-yl]oxy}acetate”. Clarification and correction are required.
Claim 12, line 54 recites “(CAS [1246513-43-8])”. Line 74 of claim 12 also recites “(CAS [1246513-48-3])”. However, the nomenclature for the compounds in lines 54 and 74 is different. These portions of the claim are indefinite because it cannot be determined which is the proper nomenclature for “(CAS [1246513-43-8])”. Clarification and correction are required.
Claim 12, lines 80 and 82 recite the same compound, however, the CAS numbers related to the compounds with the same name in lines 81 and 83, respectively, are different. These portions of the claim are indefinite because it cannot be determined which is the proper CAS number for “ethyl {[1-(4-tert-butylphenyl)-5-(4-chlorophenyl)-1H-pyrazol-3-yl]oxy}acetate”. Clarification and correction are required.
Claim 13, line 65 recites “(CAS [1246513-43-8])”. Line 86 of claim 12 also recites “(CAS [1246513-48-3])”. However, the nomenclature for the compounds in lines 65 and 85 is different. These portions of the claim are indefinite because it cannot be determined which is the proper nomenclature for “(CAS [1246513-43-8])”. Clarification and correction are required.
Claim 13, lines 91 and 93 recite the same compound, however, the CAS numbers related to the compounds with the same name in lines 92 and 94, respectively, are different. These portions of the claim are indefinite because it cannot be determined which is the proper CAS number for “ethyl {[1-(4-tert-butylphenyl)-5-(4-chlorophenyl)-1H-pyrazol-3-yl]oxy}acetate”. Clarification and correction are required.
Claims 12-15 are dependent from claim 11 and are also rejected.
Claim 15 recites the limitation "Q-1.3" in line 3. There is insufficient antecedent basis for this limitation in the claim. Claim 15 is dependent from claims 11 and 14. Claim 15 recites the “as defined in claim 14” in lines 6 and 7. The substituent Q1.3 is not recited or defined in claim 14. As such, there is lack of antecedent basis for this limitation.
Claim 15 recites the limitation "Q-2.4" in line 11. There is insufficient antecedent basis for this limitation in the claim. Claim 15 is dependent from claims 11 and 14. Claim 15 recites the “as defined in claim 14” in lines 6 and 7. The substituent Q2.4 is not recited or defined in claim 14. As such, there is lack of antecedent basis for this limitation.
Examiner’s Note
The Examiner searched Applicant’s elected species
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, wherein Q is
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. No prior art was found for the elected species and is therefore novel. The search was expanded.
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.
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.
Claims 11, 12, 13, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu et al. (CN 101284815A). Zhu et al. cited by Applicant on the IDS filed 2/7/2024. English translation of Zhu et al. provided by Espacenet.
Regarding claims 11, 12, 13, 14, and 15, Zhu et al. disclose a pyrazole oxyacetic acid compound (page 1, Summary of the Invention, paragraph 1). Zhu et al. disclose a compound of the formula (I) or a salt thereof,
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. Zhu et al. disclose X or Y are each independently hydrogen, C1-4 alkyl, C1-4 alkoxy, substituted or unsubstituted phenoxy, halogen, nitro or trifluoromethyl, preferably hydrogen, C1-4 alkyl, methoxy Base, phenoxy, fluorine, chlorine, bromine, nitro or trifluoromethyl; R is hydrogen or a C1-4 alkyl group, preferably hydrogen or ethyl.
The substituted or unsubstituted phenoxy group of the present invention wherein the substituent is a C1-4 alkyl group, a nitro group or a halogen, preferably an unsubstituted phenoxy group (page 2, paragraphs 1-4).
Zhu et al. disclose the compound is used as a bactericide (page 2, paragraph 8).
Zhu et al. disclose can be used to control disease in various crops, including ginseng…wheat, corn...potato…peach…pear…or strawberry (page 3, paragraph 1).
Zhu et al. disclose various compounds in claim 4. Many of the compounds are excluded in claims 11-15. The compound, 1-(2,4-dichlorophenyl)-5-(4-methylphenyl)-3-oxoacetate pyrazole, reads on the claimed invention (page 10, claim 4). 1-(2,4-dichlorophenyl)-5-(4-methylphenyl)-3-oxoacetate pyrazole is not one of the excluded compounds.
In addition, there are multiple compounds that fall within scope of the compound of formula (I), that have not been excluded.
Zhu et al. meet all the limitations of the claims and thereby anticipate the claims.
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.
Claim(s) 1, 2, 3, 4, and 7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhu et al. (CN 101284815A). Zhu et al. cited by Applicant on the IDS filed 2/7/2024. English translation of Zhu et al. provided by Espacenet.
The teachings of Zhu et al. with respect to the 35 U.S.C. 103 rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Zhu et al. do not specifically disclose a method of reducing phytotoxic effects of pesticides on plants, the methods comprising compounds of general formula (I) or salts thereof. Zhu et al. teach the compound is used as a bactericide (page 2, paragraph 8).
Zhu et al. also teach the compounds can be used to control disease in various crops, including ginseng…wheat, corn...potato…peach…pear…or strawberry (page 3, paragraph 1). Zhu et al. specifically disclose the compounds of formula (I) and claim 1 and those dependent from claim 1 do not exclude any compounds. Compounds cannot be separated from its properties. Therefore, the properties possessed by the compounds of the instant application, reducing phytotoxic effects would be possessed by the prior art. Where the claimed and prior art product(s) are identical or substantially identical, the burden of proof is on applicant to establish that the prior art product(s) do not necessarily or inherently possess the characteristics of the instantly claimed product(s), see In re Best, 195 USPQ 430. In addition, reducing phytotoxic effects of pesticides on plants is the intended use of the compounds, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
As such, Zhu et al. anticipates and is obvious to one of ordinary skill in the art at the time the invention was made.
Allowable Subject Matter
Claims 5, 10, 16, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 5 is directed to a plant-protecting composition comprising: at least one compound of the general formula (I) or salts thereof as claimed in claim 1 and at least one agrochemical. Claim 16 is dependent from claim 5. One of ordinary skill in the art would not have found it obvious to add at least one agrochemical to the compounds of the general formula (I), based on the prior art of record or lack thereof.
Claim 10 is directed to the method as claimed in claim 8, characterized in that compounds of the formula (I) or salts thereof as claimed in claim 1 are applied to the plants, parts of plants, or seeds or seed material thereof. Claim 10 is dependent from claim 8, wherein the method comprising the use of one or more compounds of the general formula (I) as claimed in claim 1; and use of pesticides deployed simultaneously or sequentially. Claim 18 is dependent from claim 10. One of ordinary skill in the art would not have found it obvious to add a pesticides deployed simultaneously or sequentially, based on the prior art of record or lack thereof.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614