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
Election/Restrictions and Status of the Claims
Applicant’s arguments in the response filed on December 19th 2025 are acknowledged. Applicant argues that the inventions of Groups II (claims 11, 12, and 15) and III (claim 13) do not represent a search burden to the examiner as the methods and compositions of Groups II and III “are so closely related that a search for applicants’ method claims necessarily would encompass a search for applicant’s compound claims.” Applicant’s arguments are found convincing and the restriction requirement filed on October 2nd 2025 is thereby withdrawn.
Applicant further argues that the compounds of WO 96/31509 do not share the common technical feature of the instant application, as the sulfone/sulfoximine group must be present in the ortho position of the G ring in the instant application, and Unity of Invention is thereby present. However, additional anticipatory art is found over applicant’s claims (see U.S. Patent No. 11,570,992 in the 102 rejections below). The election of species requirement is therefore deemed proper.
Applicant’s election of
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as the “single specific compound,” in the response filed on October 2nd 2025 is acknowledged. Claims 1-9, 11-13, and 15 are pending. Claim 5 is withdrawn from further consideration as being directed towards nonelected species until a generic claim has been found allowable. Claims 1-4, 6-9, 11-13, and 15 are examined on their merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statements filed on June 27th 2025, July 5th 2023, and June 8th 2023 are in compliance with the provisions of 37 CFR 1.97 and have been considered in full. A signed copy of references cited from the IDS is included with this Office Action.
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)(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, 6-9, 11-13, and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Narine (U.S. Patent No. 11,570,992 issued on February 7th 2023, effectively filed on April 1st 2016).
The claims are directed towards a compound of formula (I):
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which includes applicant’s elected species of
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Narine teaches the compound,
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(Narine, col. 83, compound C-33).
Narine’s compound is equivalent to applicant’s compound wherein
Y is C=X
X is O
E is N(R3)
R3 is C1 alkyl
Q is C(R6)
R6 is H
G is 6-membered hetaryl (pyridine)
W is attached in the ortho position and is S(O)2
Rw is C2 alkyl
R1 is halogenated C1 alkyl
R2 is H
R7 is C1 alkyl substituted with 3 RG wherein RG is F
n is 1
Narine thereby anticipates claims 1, 2, 3, 4, 6, 7, and 8.
Claim 9 is directed towards a pesticidal composition comprising the compound of claim 1 and an additional active ingredient. Narine teaches such a composition (Narine, col. 92, claim 15), anticipating claim 9.
Claim 11 is directed towards a method of controlling invertebrate pests via contacting said pests or its food supply, habitat, or breeding grounds with the compound of claim 1. Narine teaches such a method (Narine, col. 92, claim 17), anticipating claim 11.
Claim 12 is directed towards a method of protecting growing plants from attack or infestation via contacting the plant, its soil, or water with the compound of claim 1. Narine teaches such a method (Narine, col. 92, claim 18), anticipating claim 12.
Claim 13 is directed towards a seed comprising the compound of claim 1 in an amount of 0.1 g to 10 kg per 100 kg of seed. Narine teaches a seed treated with the compound at an amount of 0.1 g to 10 kg per 100 kg of seed (Narine, col. 92, claim 16), anticipating claim 13.
Claim 15 is directed towards a method for protecting an animal from infestation or infection by invertebrate pests comprising treating the animal with a compound of claim 1. Narine teaches such a method (Narine, col. 92, claim 20), anticipating claim 15.
Nonstatutory 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 1-4, 6-9, 11-13, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,570,992. Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds of the reference patent:
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exist as a subset of those of the instant application:
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Note the compounds of claim 2 of the instant application:
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And the above 102 rejection over U.S. Patent No. 11,570,992, which demonstrates significant overlap in the compound genera of the reference patent and instant application. The reference patent additionally teaches the further limitations of claims 9, 11-13, and 15 (see the above 102 rejection over U.S. Patent No. 11,570,992, referenced earlier as Narine).
Claims 1-4, 6-9, 11-13, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-14 of copending Application No. 17/916,818 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds of the reference application,
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differ from those of the instant application,
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only in the Rx location.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-4, 6-9, 11-13, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 11-13, and 15 of copending Application No. 19/137,325 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds of the two applications vary only in scope, and not in content, with the compounds of the reference application,
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being a subset of those of the instant application,
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anthony Seitz whose telephone number is (703)756-4657. The examiner can normally be reached 7:30 AM ET - 5:00 PM ET M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Lundgren can be reached at (571)272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629