DETAILED ACTION
STATUS OF THE APPLICATION
Receipt is acknowledged of Applicants’ Amendments and Remarks, filed 2 August 2023, in the matter of Application No. 18/264,068. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-12 and 14-16 are pending.
Claims 1, 6-12, and 14-15 have been amended.
Claim 13 has been cancelled.
Claim 16 has been newly added.
Thus, claims 1-12 and 14-16 represent all claims currently under consideration.
Priority
Acknowledgment is made of Applicants’ claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the present application filed 2 August 2023, and in the parent Application No. PCT/EP2022/052021, filed on 28 January 2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Applicant claims foreign priority to Application No. EP 21155250.0, filed on 4 February 2021.
Domestic Priority data as claimed by Applicant:
This application is a 371 of PCT/EP2022/052021 (01/28/2022)
Foreign Applications:
EUROPEAN PATENT 21155250.0 (02/04/2019)
Information Disclosure Statement (IDS)
The information disclosure statement (IDS) submitted on 15 February 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the Examiner.
Claim Objections
Claim 14 is objected to because of the following informalities:
In line 2, “…each of the at least one compounds…” should read “…each of the at least one compound…”
Appropriate correction is required.
Claim Interpretation
The term pesticides will be interpreted in a manner consistent with the written description (Specification; page 38, lines 32-33), wherein pesticidally active substances are defined as encompassing insecticides, acaricides, nematicides, herbicides, fungicides, safeners, and fertilizers and/or growth regulators.
The term “formulation auxiliary” as recited in instant claim 7 will be interpreted in a manner consistent with the written description (Specification; page 36, lines 1-6) as substances that are customary in crop protection selected from the group consisting of surfactants, emulsifiers, dispersants, film formers, thickeners, inorganic salts, dusting agents, carriers that are solid at 25 ºC and 1013 mbar, preferably adsorptive granulated inert materials, wetting agents, antioxidants, stabilizers, buffer substances, antifoam agents, water, organic solvents, preferably organic solvents miscible with water in any ratio at 25 ºC and 1013 mbar.
The term “transgenic plants” as recited in claim 15 will be interpreted in a manner consistent with the written description (Specification; page 32, lines 17-21) as genetically modified plants characterized by particular advantageous properties, for example by resistances to certain pesticides, in particular certain herbicides, resistances to plant diseases or pathogens of plant diseases, such as certain insects or microorganisms such as fungi, bacteria, or viruses.
Claim Rejections - 35 USC § 102 and 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 (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.
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.
Claims 1-5 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 Nishiyama et al. (JPS5350174A; Original Document and English language machine translation; hereinafter “Nishiyama”).
Regarding claims 1 and claims 2-5 depending from claim 1, Nishiyama discloses pyridyloxyphenols and their salts and esters, including methylsulfonic and sulfonic acid esters, represented by the following formula:
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wherein X1 and X2 are halogen atoms or hydrogen atoms, Y is a methyl group or a hydrogen atom, and Z is a chlorine atom or a hydrogen atom (Nishiyama; page 853, Col. 1, Formula; Original Document and Abstract; paragraph [0001]; English language machine translation). Nishiyama further discloses the preparation of the methylsulfonate of 2-(5-chloropyridyl-2-oxy)-5-chlorophenol (Nishiyama; partial English language translation). In addition, Nishiyama discloses that the compounds of the present invention exhibit antibacterial activity against various microorganisms and are useful as pesticides (Nishiyama; paragraph [0001]; English language machine translation). Thus, Nishiyama discloses a limited number of structurally related compounds that possess properties related to those of the instantly claimed compounds.
In view of the limited scope of the genus disclosed by Nishiyama, and the preparation of the methylsulfonate of 2-(5-chloropyridyl-2-oxy)-5-chlorophenol, the skilled artisan could “at once envisage” compounds such as the following based on the teachings of Nishiyama alone that anticipate the instantly claimed genus of claims 1-5:
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Anticipates claims 1-4 when R1 and R2 are hydrogen or halogen
Anticipates claim 5 when R1 is H or F and when R2 is F, Cl, or Br
These selected compounds shown above and derived from the limited genus of Nishiyama anticipate the substituted (2-heteroaryloxyphenyl)sulfonate compound of the general formula (I) of instant claims 1-4 when R1 is methyl (i.e., C1 alkyl), R2 and R3 are hydrogen, R4 is hydrogen or halogen, X is CR5, R5 is hydrogen or halogen, and Y is CH; and further anticipate the genus of instant claim 5 when R1 is methyl (i.e., C1 alkyl), R2 and R3 are hydrogen, R4 is fluorine, chlorine, or bromine, X is CR5, R5 is hydrogen or fluorine, and Y is CH. MPEP § 2131.02(III) states that “In In re Schauman, 72 F.2d 312, 197 USPQ 5 (CCPA 1978), claims to a specific compound were anticipated because the prior art taught a generic formula embracing a limited number of compounds closely related to each other in structure and the properties possessed by the compound class of the prior art was that disclosed for the claimed compound.”
Furthermore, the genus of instant claims 1-5 are rendered obvious in view of the genus of Nishiyama, because one of ordinary skill could predictably arrive at the subgenus shown above as a result of choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, and would therefore be “obvious to try,” as described in MPEP § 2143(I)(E). Finally, the genus of Nishiyama is small enough that all compounds falling within it would be expected to possess the same utility and properties because of the significant structural similarity, as described in MPEP § 2144.09(I). Therefore, it would have been prima facie obvious before the effective filing date of the claimed invention to have arrived at the compounds of claims 1-5 based on the teachings of Nishiyama.
Claims 6-12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nishiyama et al. (JPS5350174A; Original Document and English language machine translation; hereinafter “Nishiyama”) as applied to claims 1-5 above, and further in view of Stevenson et al. (US 2018/0206497 A1; hereinafter “Stevenson”).
Regarding claim 6 depending from claim 1, claim 7 depending from claim 6, and claim 12, claim 1 is rendered obvious over Nishiyama as detailed above.
Nishiyama fails to teach a herbicidal composition comprising at least one compound of the general formula (I) as claimed in claim 1, as recited in instant claim 6; a herbicidal composition further comprising at least one formulation auxiliary, as recited in instant claim 7; and a method of controlling unwanted plants, the method comprising applying at least one compound of general formula (I) as claimed in claim 1 to the unwanted plants or to a site of the unwanted plants, as recited in claim 12.
However, Stevenson teaches aryloxypyrimidinyl ethers as herbicides comprising compounds of Formula 1 and compositions thereof, including the following genus:
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wherein A is C2-C8 alkyl, C2-C6 alkenyl, C2-C6 alkynyl, C2-C8 haloalkyl, C2-C6 haloalkenyl, C2-C6 haloalkynyl, C3-C6 cycloalkyl, C3-C6 halocycloalkyl, C4-C8 alkylcycloalkyl, C4-C8 cycloalkylalkyl, C2-C6 alkoxyalkyl, C2-C6 haloalkoxyalkyl, C2-C6 alkoxyhaloalkyl, C4-C8 cycloalkoxyalkyl, C2-C6 cyanoalkyl, C3-C7 cyanoalkoxyalkyl, C2-C6 alkylthioalkyl, C2-C6 haloalkylthioalkyl, C3-C8 cycloalkylthioalkyl, C2-C6 alkylsulfonylalkyl or C2-C6 haloalkylsulfonylalkyl; R1 is halogen, C1-C4 alkyl or C1-C4 haloalkyl; R2 is halogen, nitro, cyano, CHO, C1-C4 alkyl, C2-C4 alkenyl, C2-C4 alkynyl, C1-C4 haloalkyl, C2-C4 haloalkenyl, C2-C4 haloalkynyl, C3-C6 cycloalkyl, C3-C6 cycloalkoxy, C3-C6 halocycloalkyl, C2-C6 alkylcarbonyl, C2-C6 haloalkylcarbonyl, C2-C6 alkoxycarbonyl, C1-C4 alkoxy, C3-C4 alkenyloxy, C3-C4 alkynyloxy, C2-C6 alkoxyalkyl, C2-C6 haloalkoxyalkyl, C2-C4 alkylthioalkyl, C1-C4 haloalkoxy, C2-C6 alkoxyalkyl, C2-C6 haloalkoxyalkyl, C2-C6 alkylcarbonyl, C2-C6 haloalkylcarbonyl, C3-C7 cycloalkylcarbonyl, C2-C4 alkylcarbonyloxy, C2-C6 alkoxycarbonyl, C2-C6 cyanoalkyl or SOnR4; and R3 is H or F (Stevenson; Title; Abstract; claims 1-3).
The disclosed genus of Stevenson overlaps with the genus of the general formula (I) of instant claim 1 (on which instant claim 6 depends) when R2 is halogen, cyano, formyl, (C1-C4)-alkyl, (C1-C4)-haloalkyl, (C3-C6)-cycloalkyl, (C2-C4)-alkenyl, (C2-C4)-alkynyl, (C2-C4)-haloalkenyl, (C2-C4)-haloalkynyl, (C1-C4)-alkoxy, (C1-C4)-haloalkoxy, (C3-C6)-cycloalkoxy, (C3-C4)-alkenyloxy, (C3-C4)-alkynyloxy, (C2-C4)-alkylthioalkyl, (C2-C4)-alkoxyalkyl, (C2-C4)-haloalkoxyalkyl, (C2-C4)-alkylcarbonyl, (C2-C4)-haloalkylcarbonyl, (C3-C6)-cycloalkylcarbonyl, (C2-C4)-alkylcarbonyloxy, or (C2-C4)-alkoxycarbonyl; R3 is hydrogen or F (a selected halogen); R4 is halogen, (C1-C4)-alkyl, or (C1-C4)-haloalkyl; X is N; and Y is CH.
The disclosed genus of Stevenson differs from the genus of the general formula (I) of instant claim 1 (on which instant claim 6 depends) in that Stevenson does not explicitly teach a sulfonyl group directly bonded to the phenoxy ring. However, Stevenson does teach an alkylsulfonyl group that is bonded to the phenoxy ring (i.e., A is C2-C6 alkylsulfonylalkyl or C2-C6 haloalkylsulfonylalkyl. Furthermore, the aforementioned compounds of Nishiyama that render obvious the compounds of the general formula (I) of instant claim 1 (on which instant claim 6 depends) comprise a methylsulfonate ester, as detailed above. Taken together, given the structural similarity and overlapping utility of the compounds of Nishiyama and Stevenson, the skilled artisan would have the presumed expectation that these compounds possess similar properties. MPEP § 2144.09(II) states that “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.”
In addition, Stevenson teaches a herbicidal composition comprising a compound of the claimed genus and at least one component selected from the group consisting of surfactants, solid diluents, and liquid diluents (Stevenson, claim 6). The skilled artisan would therefore recognize that the herbicidal composition of Stevenson further comprises a formulation auxiliary, in a manner consistent with instant claims 6-7.
Stevenson further teaches a method for controlling the growth of undesired vegetation comprising contacting the vegetation or its environment with a herbicidally effective amount of a compound of claim 1 (Stevenson; claim 11).
Furthermore, Stevenson teaches that combinations of a compound of this invention with other biologically active (particularly herbicidal) compounds or agents (i.e. active ingredients) can result in a greater-than-additive (i.e. synergistic) effect on weeds and/or a less-than-additive effect (i.e. safening) on crops or other desirable plants (Stevenson; paragraph [0204]). Reducing the quantity of active ingredients released in the environment while ensuring effective pest control is always desirable (Stevenson; paragraph [0204]). When synergism of herbicidal active ingredients occurs on weeds at application rates giving agronomically satisfactory levels of weed control, such combinations can be advantageous for reducing crop production cost and decreasing environmental load (Stevenson; paragraph [0204]).
The prior art as taught by Nishiyama and Stevenson reside in the closely overlapping technical field of structurally related 2-heteroaryloxyphenyl compounds for use as pesticides and/or herbicides, in a manner consistent with the instantly claimed invention. Thus, this prior art is from the same field of endeavor as the claimed invention and is reasonably pertinent to the problem faced by the inventor, and is therefore deemed analogous art as described in MPEP § 2141.01(a). As such, the skilled artisan would be sufficiently motivated to incorporate the teachings of Stevenson into the compounds of Nishiyama to pursue effective herbicidal compositions and methods of controlling unwanted plants with a reasonable expectation of success. Such an endeavor would result in combining prior art elements according to known methods to yield predictable results, as described in MPEP § 2143(I)(A), and would result in the use of a known technique to improve similar devices (methods, or products) in the same way, as described in MPEP § 2143(I)(C).
Therefore, it would have it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nishiyama to incorporate the teachings of Stevenson to arrive at the composition of instant claims 6-7 and the method of instant claim 12. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, a herbicidal composition and method for crop protection that results in a synergistic effect on weeds and/or safening effect on crops or other desirable plants that can be advantageous for reducing crop production cost and decreasing environmental load, as described above.
Regarding claims 8 and 11 depending from claim 6 and claim 9 depending from claim 8, Stevenson teaches a herbicidal composition comprising at least one additional active ingredient selected from the group consisting of other herbicides and herbicide safeners (Stevenson; claim 7).
Regarding claim 10 depending from claim 9, Stevenson teaches a herbicidal mixture comprising at least one additional active ingredient including cyprosulfamide, cloquintocet-mexyl, mefenpyr-diethyl, and isoxadifen-ethyl (Stevenson; claim 8; paragraphs [0134] and [0206]).
Regarding claim 14 depending from claim 12 and claim 16 depending from claim 6, Stevenson teaches that the invention relates to a method for controlling undesired vegetation comprising applying to the locus of the vegetation herbicidally effective amounts of the compounds of the invention (e.g., as a composition described herein), and compounds of the invention are particularly useful for selective control of weeds in crops (Stevenson; claim 11; paragraph [0115]).
Regarding claim 15 depending from claim 14, Stevenson teaches that compounds of this invention can be used in crops genetically transformed or bred to incorporate resistance to herbicides, express proteins toxic to invertebrate pests, and/or express useful traits (Stevenson; paragraph [0189]). Stevenson further teaches that an embodiment of the present invention is a method for controlling the growth of undesired vegetation in genetically modified plants (transgenic plants) (Stevenson; claim 12; paragraphs [0193] and [0198]).
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success of arriving at the instantly claimed compounds, compositions, and methods. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Derek Rhoades whose telephone number is (703)-756-5321. The Examiner can normally be reached Monday–Thursday, 7:30 am–5:00 pm EST; Friday, 7:30 am–4:00 pm EST.
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/D.R./Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692