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 56-77 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I and the species compound 174 or 175 in the reply filed on 12/3/2025 is acknowledged.
Claims 57, 58, 60 and 63-77 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
Claims 56, 59, 61 and 62 are under examination. The search has been broadened to encompass all compounds of formula I(d) wherein X3, X4 and X5 are C, X6 is O and G=X is C=O.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/27/2025 and 1/24/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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 56, 59, 61 and 62 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 56 recites with reference to B the "C3-C10 heterocyclic ring (e.g., cyclopropyl, cyclopentyl, cyclohexyl, pyridyl, pyrrolidinyl)” which renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 56 also recites with reference to R1, R2, R3, R4, R6, R, R10, R11 and R60 the "C3-C8 cyclic alkyl (e.g., methyl, ethyl…)”; “C(O)-R10 (e.g., C(O)-CH3)”, “R8-OH (e.g., CH2-OH)”, “R8-C(O)O-R10 (e.g., CH2-C(O)OH.. CH2-CH2-C(O)O-CH2CH3)”; “-R8-O-R10 (e.g., -CH2-O-CH3)”; “linear or branched C(O)-haloalkyl (e.g., C(O)-CF3)”; “NHC(O)-R10 (e.g., NHC(O)CH3)”; “NHC(O)-N(R10)(R11) (e.g., NHC(O)N(CH3)2)”; “C(O)O-R10 (e.g., C(O)O-CH3)”; “substituted or unsubstituted alkenyl (e.g., CH=C(Ph)2)”; “SO2N(R10)(R11) (e.g., SO2N(CH3)2, SO2NHC(O)CH3)”; “alkyl (e.g. methyl…benzyl)”; “C3-C8 cycloalkyl (e.g., cyclopropyl, cyclopentyl)”, “C2-C5 linear or branched, substituted or unsubstituted alkenyl (e.g.ethenyl)”; “alkynyl (e.g. ethynyl…CC-CF3)”; “cyclic haloalkyl (e.g., CF3…CF(CH3)-CH(CH3)2)”; “unsubstituted or unsubstituted aryl (e.g., phenyl)”; “cyclic alkoxy (e.g., methoxy… O-CH2-CF3)”; “alkoxy (e.g., methoxy)”; “haloalkoxy (e.g., OCF3, OCHF2)”, “3-8 membered heterocyclic ring (e.g., thiophene… pyrazine)” which renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 56 also recites with reference to C the "5-membered heterocyclic ring (e.g. isoxazole, triazole…thiophene)” which renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 56 also recites with reference to k the "an integer number between 1 and 3 (e.g. 1, 2)” which renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 56 further recites “zwitterion (inner salt), hydrate, N-oxide, isotopic variant or any combination thereof” with reference to the compounds which encompasses variants that have not all been identified in the specification. Therefore the metes and bounds of the terms “zwitterion (inner salt), hydrate, N-oxide, isotopic variant” cannot be deciphered.
Claim 56 further recites “G(=X)-X6-R1 is a tetrazole moiety” which is unclear. The specification fails to define what the term tetrazole moiety encompases. Therefore the metes and bounds of the term “tetrazole moiety” cannot be deciphered.
Claims 59, 61 and 62 are rejected for depending on rejected base claim 56.
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 (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 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.
Claim(s) 56, 61 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over Kanno et al. (US 6,200,933; patented March 13, 2001) in view of Silverman (The Organic Chemistry of Drug Design and Drug Action, Second Edition, 2004, Elsevier, Chapter Two, pg.7-120).
Applicant claims a compound of formula I(d) below, wherein G is C, X is O, X6 is O, R1 is H, X5, X4, X3 are C, B is phenyl, k is 1 and R6 and R60 are H.
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190
577
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Kanno discloses a compound of formula I below (abstract).
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175
384
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The compound of formula I may include R selected from halogen or alkyl, however n2 can be 0-3, Y can be alkyl, alkoxyl, alkylthio or include a halogen atom and m is 0-5. The compound is an effective ingredient in agricultural fungicides with low toxicity to human and cattle (column 1, lines 30-37). The compound may be used as a fungicide with auxiliaries including carriers, diluents and surfactants (column 16, lines 46-66). Effective amounts of the active range from 0.01-1% of the formulations (column 17, lines 4-21).
With respect to claim 56, Kanno does not teach Y is NH2. It is for this reason that Silverman is joined.
Silverman teaches that CH3 and NH2 are classical isosteres which can be substituted in place of each other with the expectation of having chemical and physical similarities (page 29). A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. There is an expectation that substituting NH2 in place of CH3 will render compounds of similar properties. In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990).
Therefore, it would have been prima facie obvious to combine the teachings of Kanno and Silverman the make a compound of formula I where Y is NH2 with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to modify formula I disclose by Kanno and substitute a NH2 group in place of CH3 for Y because Silverman teaches CH3 and NH2 are bioisosteres and Kanno teaches that the compounds have utility as agricultural fungicides.
Allowable Subject Matter
Claim 59 is 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached Monday-Friday 9:00 am-5:30 pm.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1617