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
This Office action is responsive to Applicant's Response to Election/Restriction, filed June 22, 2026. As filed, claims 1-7, 10-11, 19, 21, 23- 26, 28-34, 37-38, 40 are pending in the instant application. Claims 8-9, 12-18, 20, 22, 27, 35, 36 , 39, 41-32 are canceled.
Priority
This application filed 08/01/2023 is a National Stage entry of PCT/US2022/015283 , International Filing Date: 02/04/2022; PCT/US2022/015283 Claims Priority from Provisional Application 63145965 , filed 02/04/2021.
Information Disclosure Statement
No information disclosure statement (IDS)has been filed in the instant application. Applicants are reminded of the duty to disclose anything believed to be material to the patentability of the instant application in accordance with 37 CPR 1.56.
Election/Restrictions
Applicant's election of without traverse of Group I, claims 1-7, 10-11, 19, 21, 23-26, 28-34, and 37-38, drawn to a compound of formula I and formulations thereof, in the reply filed on 6/22/2026 is acknowledged.
In response to a further requirement for the election of a single disclosed species, Applicants further elected, the compound (Z)-N'-((3,6-dichloro-2-
methoxybenzoyl)oxy)benzimidamide, with the chemical structure
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The elected species corresponds to compound of formula 1 wherein X is
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and R is phenyl; disclosed as A-49 on page 73 of the disclosure.
Claims 1, 4, 6, 7 read of the elected species.
Applicants' elected species have been found not allowable due to the following rejections.
Claim 40 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 2, 3, 5, 10-11, 19, 21, 23- 26, 28-34, 37-38 are withdrawn from consideration as drawn to non-elected species.
Claims 1, 4, 6, 7 will be examined on the merits herein to the extend they read on the elected species.
Claim Objections
Claim 6 is objected to because of the following informalities: claim 6
should be amended to commence with article “The” instead of “A” for proper antecedent
basis to parent claim.
Claim 6 is objected to because of the following informalities: claim 6 is lacking end period.
Appropriate correction is required.
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 1, 4, 6, 7 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 recites: “A compound, comprising at a compound according to Formula I…” rendering said claim and its dependents claims indefinite, because the claim language is not clearly stating what is intended to claim.Claim 4 recites “The compound according to claim 1, wherein, Xa is..” however, variable Xa is not recited in claim 1, rendering claim 4 indefinite.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1, 4, 7 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US 5,037,467 Aug. 6, 1991, by Cho et al. (“the ‘467 patent”; cited in PTO-892 attached herewith).
The ‘467 patent teaches amidoxime derivatives
of the formula (I)
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wherein when variable R1 is a C1-3 alkyl or a phenyl group, and R2 is methoxydichlorophenyl group,
is encompassed within claimed formula I in which X is
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The prior art teaches on col 1 lines 26-36 the compound as herbicides
having low phytotoxicity to paddy rice and crop plants and high selectivity herbicidal activity (instant claims 1, 4).
Disclosed on Table 1 (extras reproduced below) are: compound 16 which corresponds to the compound of claimed formula I in which X is
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and R is methyl; compounds 18 and 19 which corresponds to the compound of claimed formula I in which X is
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and R is aryl ( phenyl as required by the elected species).
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Compounds 16, 18 and 19 disclosed in Table 1 of the cited reference fall within claimed formula (1) in which variable X is
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and R is alkyl or aryl.
With respect to the limitations drawn to the wherein the compound exhibits lower volatility than 3,6-dichloro-2-methoxybenzoic acid”, as it pertains to instant claim 7-said recitation represents a property that is an inherent property of the compounds. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999), see MPEP 2112. Thus, the claiming of an unknown property inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
The missing descriptive matter (volatility properties) would be recognized by persons of ordinary skill in the art as inherent from the chemical makeup of structure I.
Claim Rejections - 35 USC § 103
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 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.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1, 4, 6, 7 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,037,467 Aug. 6, 1991, by Cho et al. (“the ‘467 patent”; cited in PTO-892 attached herewith).
The ‘467 patent teaches amidoxime derivatives
of the formula (I)
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wherein when variable R1 is a C1-3 alkyl or a phenyl group, and R2 is methoxydichlorophenyl group,
is encompassed within claimed formula I in which X is
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The prior art teaches on col 1 lines 26-36 the compound as herbicides
having low phytotoxicity to paddy rice and crop plants and high selectivity herbicidal activity (instant claims 1, 4).
Disclosed on Table 1 (extras reproduced below) are: compound 16 which corresponds to the compound of claimed formula I in which X is
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and R is methyl; compounds 18 and 19 which corresponds to the compound of claimed formula I in which X is
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and R is aryl (e.g. phenyl as required by the elected species).
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Compounds 16, 18 and 19 disclosed in Table 1 of the cited reference fall within claimed formula (1) in which variable X is
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and R is alkyl or aryl.
With respect to the limitations drawn to the wherein the compound exhibits lower volatility than 3,6-dichloro-2-methoxybenzoic acid”, as it pertains to instant claim 7-said recitation represents a property that is an inherent property of the compounds. The missing descriptive matter (volatility properties) would be recognized by persons of ordinary skill in the art as inherent from the chemical makeup of structure I.
The differences between the prior art and the claims at issue is that the '836 patent does not provide examples of compounds species wherein as required by formula I and the terphenyl elected species, the variable X as phenyl.
A prima facie case of obviousness based on structure exists if the prior art suggests to one of ordinary skill in the art to make the substitution or modification. In re Tabor, 502 F.2d 775 (CCPA 1974). It has been held several times that structurally similar compounds are obvious over one another. See, e.g., In re Payne, 606 F.2d 303, (CCPA 1979) (An obviousness rejection based on similarity in chemical structure and function entails motivation of one skilled in the art to make the claimed compound with an expectation that compounds similar in structure will have similar properties. When prior art compounds essentially "bracket" the instantly claimed compound, one of ordinary skill in the art would clearly be motivated to make the claimed compound.).
In the instant application, before the effective filing date of the claimed invention based on structural similarity, one of ordinary skill in the art would have an expectation of success in making and using the claimed compounds because of the structural similarity between the prior art and the instantly claimed compounds and a suggestion to try various combination of variables on the core phenyl structure (i.e. in the instant application). The prior art specifically teaches that compounds which fall within the scope of claimed formula and teach phenyl group or phenyl group substituted with chlorine at the same structural loci – which corresponds to claimed formula in which X is phenyl or chlorine substituted phenyl as required by species in instant claim 6.
MPEP 2141 provides that exemplary rationales that may support a conclusion of
obviousness include (E) " Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Therefore, the claimed invention as a whole is prima facie obvious over the combined teachings of the prior art.
Conclusion
Claims 1, 4, 6, 7 are rejected. Claims 2,3,5, 10-11, 19, 21, 23- 26, 28-34, 37-38, 40 are withdrawn from further consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANA MURESAN whose telephone number is (571)-270-7587. The examiner can normally be reached on Monday through Friday, 8:30 am to 5:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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