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 .
DETAILED ACTION
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 20-21 is/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. New claim 20 recites the herbicidal composition according to claim 18…However, claim 18 is not directed to a herbicidal composition it is directed to compounds. Thus, it is unclear to the examiner if applicant’s actually meant the claim to depend from claim 19 which is directed to a composition or if applicants were actually trying to claim a herbicidal combination of the compound of claim 18 and at least one additional pesticide? For the purposes of compact prosecution the examiner is interpreting that the claim is actually meant to depend from claim 19 not claim 18. However, the examiner requests clarification from applicants in their next response.
Claims 21 is rejected because it depends from claim 20 and does not resolve the above issues.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 depends from claim 1 which has been amended to require R4 already have the scope claimed in claim 7. Thus, claim 7 does not further limit claim 1 from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claim(s) 1-5, 7-9, 11-14, 16-17, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goto et al. (GB2182931) and Yagihara et al. (JP62167712A).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-5, Goto broadly teaches the claimed compounds, specifically compounds of applicant’s formula (I) wherein Goto’s R which corresponds to the instant R1 is alkyl, specifically C1-C4 alkyl, their NH-phenyl group corresponds to the instant X which is NR6-R3, wherein the instant R6 is H and R3 is phenyl, Goto’s R2 which corresponds to the instant R2 is phenyl which is unsubstituted or optionally substituted as in compounds 15-16 for instance in table 1, Goto’s R7 is methyl which corresponds to the instant R5 (See entire document; e.g. abstract; Pg. 1, ln. 32-pg. 2, ln. 25; pg. 5, ln. 6-25; Table 1, compounds 15-16; claims).
Regarding claims 8-9, Goto teaches wherein their phenyl group can be optionally substituted and wherein the substituents can be the same as/overlap those instantly claimed by, but not actually required by instant claim 9 (as claim 9 limits the scope of R7 substituents but does not actually require the presence of these optional substituents), and wherein applicant’s R5 which corresponds to Goto’s R7 is/can be the claimed methyl (see entire document; abstract; claims; pg. 1, ln. 5-6; pg. 1, ln. 32-59; pg. 5, ln. 6-23; Pg. 1, ln. 32-pg. 2, ln. 25; pg. 5, ln. 6-25; Table 1, compounds 15-16).
Regarding claim 11, Goto teaches wherein their compounds can be formulated into herbicidal compositions with agriculturally acceptable formulation adjuvants (See entire document; pg. 5, ln. 6-23).
Regarding claim 14 and 22, Goto teaches wherein their compounds which broadly include the claimed compounds are useful for controlling unwanted plant growth via application to the unwanted plants and/or their locus (see entire document; abstract; claims; pg. 1, ln. 5-6; pg. 1, ln. 32-59; pg. 5, ln. 6-23; Pg. 1, ln. 32-pg. 2, ln. 25; pg. 5, ln. 6-25; Table 1, compounds 15-16).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-5, 7-9, 11-14, 16-17, and 22, Goto does not specifically exemplify the claimed compounds where their R6 which corresponds to the instant R4 is the claimed hydroxycarbonyl group of claims 1, 7, 16-17, and 22. Goto does teach compounds 15-16 of Table 1 in Goto which overlaps the instantly claimed variables except for the instant R4 (which is Goto’s R6) which H in these examples of Goto as discussed above.
However, these deficiencies in Goto are addressed by Yagihara.
Regarding claims 1-5, 7-9, 11-14, 16-17, and 22, Yagihara also teaches structurally similar/overlapping herbicidal pyridine carboxamide compounds, e.g. A-41 which only differs in that their R5 which corresponds to applicant’s R2 is other than the claimed phenyl/heteroaryl, wherein the structural variants broadly disclosed in Yagihara overlap with those claimed, e.g. their R5 can be the claimed aryl group, etc. (see for instance A-41) and Yagihara specifically teaches wherein applicant’s R4 which corresponds to Yagihara’s R3 can be the instantly claimed hydroxycarbonyl/carboxy group (see compound A-41) or the H or alkyl group, etc. of Goto and Yagihara teaches methods of controlling unwanted plant growth with their overlapping and/or similar herbicidal pyridine carboxamide compounds (see entire document; specifically abstract; claims; section beginning: “In the formula, R is a hydrogen atom, a vinyl group, or…and ending with R6 and R7 are the same or different and each represent a halogen atom or a lower alkyl group, and R8 is a substituent of the benzene ring and represents a hydrogen atom, a halogen atom or a lower alkyl group, respectively.”; claims; “In the present invention, the compound represented by formula (I) has a wide herbicidal spectrum from grasses, cyperaceae…”; Tables: A-41, etc.).
Regarding claims 12-13, Goto does not teach wherein their compounds are combined with additional pesticides, specifically additional herbicides and/or herbicide safeners. However, this deficiency in Goto is addressed by Yagihara.
Yagihara teaches that it was known to combine their structurally similar and/or overlapping herbicidal pyridine carboxamide compounds in compositions with additional herbicides (see entire document; specifically abstract; section beginning: “In the formula, R is a hydrogen atom, a vinyl group, or…and ending with R6 and R7 are the same or different and each represent a halogen atom or a lower alkyl group, and R8 is a substituent of the benzene ring and represents a hydrogen atom, a halogen atom or a lower alkyl group, respectively.”; Paragraph beginning: “The present invention has been made in consideration of these problems, and in particular, by blending and using together two types of herbicides each having a different herbicidal effect…”; paragraph beginning: “Furthermore, the herbicide composition of the present invention may be used in combination with other insecticides, acaricides, nematicides, fungicides, herbicides, plant growth regulators, fertilizers, or soil conditioners as necessary…”; see also paragraph beginning: “- It is known that compound B-1, compound B-2, compound B-3 and compound B-4 are generally highly effective against broad-leaved weeds and have essential selectivity for corn and turgid…”; paragraph/section beginning: “In the present invention, the compound represented by formula (I) has a wide herbicidal spectrum from grasses, cyperaceae,…”; see paragraph: “The present invention has been made in consideration of these problems, and in particular, by blending and using together two types of herbicides each …”).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art to have replaced Goto’s R6 with the instantly claimed carboxy group because Yagihara to form the instantly claimed compounds because Yagihara teaches that their similar and/or overlapping herbicidal pyridine carboxamide compounds can have as applicant’s R4 (their R3) the claimed hydroxycarbonyl/carboxy group or wherein this group can also be the the H or alkyl group, etc. of Goto. Thus, clearly Yagihara teaches that the claimed hydroxycarbonyl/carboxy group is an alternative/equivalent to the alkyl group of Goto at their R6 and wherein the claimed hydroxycarbonyl/carboxy group at applicant’s position R4/Goto’s R6 would have a reasonable expectation of success of leading to additional herbicidal compounds since both Yagihara and Goto teach that their pyridine carboxamide compounds are herbicidal and are useful in the same methods and in combination with additional herbicide and in making the replacement of the R6 in Goto for the carboxy instantly claimed as is taught by Yagihara in order to form additional herbicidal compounds for use in the methods instantly claimed as are taught by Goto and Yagihara.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Allowable Subject Matter
Claims 6 and 10 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.
Claims 18-19 are allowed.
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the previous claim objections, double patenting, 101, 112(b) and 103 rejections.
Applicant’s claims and updated search have prompted the new grounds of rejection presented herein and because the scope of R4 actually is unchanged from the previous claim 7 for R4 which was not rejected with prior art as the previous search did not uncover that Yagihara does in fact broadly disclose structurally similar herbicidal compounds wherein applicant’s R4 is carboxy/hydroxycarbonyl as claimed which has prompted this second non-final office action. As applicant’s arguments pertain to the previous grounds of rejection which have been overcome by applicants amendments these arguments are not further addressed herein at this time since they are not pertinent to the new grounds of rejection.
Conclusion
Claims 1-5, 7-9, 14, 16-17, 20-22 are rejected. Claims 18-19 are allowed. Claims 6 and 10 are objected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616