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 .
Applicant’s amendment filed 12/19/2025 has been entered. Claims 1, 4-7 and 11 were amended. Claim 3 was cancelled. New claims 12-14 were added. Claims 1, 2, 4-9 and 11-14 are pending.
Withdrawn rejections
Applicant's amendments and arguments filed 12/19/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.
Response to Amendment
The declaration under 37 CFR 1.132 filed 12/19/2025 is insufficient to overcome the rejection of claims 1, 2, 4-9 and 11-14 based upon Major et al. (WO 2015/155271; effective filing date April 9, 2014) as set forth in the last Office action because: The data while demonstrating improved herbicidal activity for compound E-1 against various weeds is not commensurate in scope with the claims. The conditions of the experiments are not detailed the clearly to show a that a proper side by side comparison was conducted because formulations properties and concentrations are not detailed. Additionally, not data has been submitted to show that the compounds act by desiccating or defoliating plants.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/30/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Maintained 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 Orne, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Torrington, 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 terminal Disclaimer may be filled out completely online using web-screens. A terminal 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, 2, 4-9 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-11 and 13 of copending Application No. 18/273,827 (herein ‘827). Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds have similar structures. The claimed compound has a structure
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wherein R1 is F whereas ’827 claims compounds wherein R1 is Cl, Br, I or CH3. Therefore, the presently claimed compound, composition and methods would have been prima facie obvious in view of ‘827 since the substituents only differ by using different halogen atoms or substituting halogen with a methyl group which are expected to have similar properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 4-9 and 11-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10,941,122 (herein ‘122). Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds have similar structures. The claimed compound has a structure
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wherein R1 is F, R2, R3, R5 and R6 can be H, R4 can be Cl, Br or CH3, R7 can be C1-C6 alkyl; and R8 is selected from C1-C6 alkyl. Patent ‘112 has a structure
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wherein Ra is selected from (C3-C6-cycloalkoxy), C2-C6-alkenyloxy, C2-C6-alkynyloxy and (C3-C6-cycloalkyl)-C1-C4-alkoxy. Therefore, the presently claimed compound, composition and methods would have been prima facie obvious in view of ‘122 since the substituents only differ by the present claims in that C1-C6-alkoxy is (C3-C6-cycloalkoxy), C2-C6-alkenyloxy, C2-C6-alkynyloxy and (C3-C6-cycloalkyl)-C1-C4-alkoxy in the patented claims.
Response to Arguments
Applicant's arguments filed 12/19/2025 have been fully considered but they are not persuasive. Applicant argues that there is not reasonable expectation of achieving the results demonstrated in the declaration with the claims of ‘122. The Examiner is not persuaded by this argument because the structures are expected to have similar properties since the core structure is the same and there is a reasonable expectations for compounds of similar core structure to have similar properties. Therefore the rejection has been maintained.
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.
Claims 1, 2, 4-9 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Major et al. (WO 2015/155271; effective filing date April 9, 2014).
Applicant claims the following diaminotriazine compound below.
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The preferred compounds have the structure above, wherein R1 is F; R2 and R3 are selected from H; R4 is selected from Cl, Br, I, CR4A, wherein R4A is H or halogen; R5 and R6 are selected from H, halogen and C1-C4 alkyl, R7 is selected from C1-C6 alkyl and C1-C6-haloalkyl; and R8 is selected from C1-C6-alkyl, C2-C6 alkenyl and C2-C6 alkynyl, preferably CH3, CH2CCH, CH2CCCH3 and CH2OCH3. (Claim 1)
Applicant claims a composition comprising the compound of claim 1 with at least one inert liquid and/or solid carrier and optionally at least one surfactant. (Claim 8)
Applicant claims a method of controlling undesired vegetation comprising contacting the compound of claim 1 with a plant or its environment (Claim 9)
Applicant also claims a method of desiccating or defoliating a plant comprising contacting the plant with the compound of claim 1. (claim 11)
With respect to claims 1, 2, 4-7 and 12-14 Major discloses the following diaminotriazine of formula (I). (abstract)
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Major et al. teach the formula (I) includes Ra, Rb and Rc that is hydrogen, halogen or C1-C6-alkyl; Rd is selected from C1-C6 alkoxy; R1 and R2 are selected from H; and R3, R4 and R5 is selected from H, halogen, C1-C6 alkyl and C1-C6 haloalkyl (page 1, line 28 through page 3, line 9). Examples of the term halogen include F, Cl, Br and I (page 7, lines 15-18).
With respect to claim 8, Major et al. teach agrochemical compositions comprising at least one diaminotriazine compound of formula (I) and at least one auxiliary customary for formulating crop protection agents (page 5, lines 26-28). Suitable auxiliaries are liquid carriers, solid carriers and surfactants including water, organic solvents, oils of vegetable or animal origin, alcohols, glycols, esters, fatty acids, phosphonates, amines, amides, mineral earths, polysaccharides, fertilizers and products of vegetable origin (page 125, lines 11-35). The use of inert liquid and/or solid carriers with appropriate surfactants is preferred (page 136, lines 36-40).
With respect to claims 9 and 11, Major et al. teach the compound of formula (I) is used for controlling unwanted and/or harmful vegetation or plants (page 5, lines 29-32). The compounds of formula I and compositions are applied to plants mainly by spraying the leaves with water as a carriers (page 130, lines 30-40). The compositions are suitable for the defoliation and/or desiccation of plant parts and are suitable for desiccating the above-ground parts of plants (page 136, lines 17-33). The method of controlling comprises allowing a herbicidally active amount of at least one compound of formula I to act on the plants, their environment or seed (page 136, line 41 through page 137, line 2).
The present claims require R4 that is Cl, Br or CH3. Major et al., teach Rc is halogen, however the halogen is preferably fluorine (page 18, lines 8 through 33). Nevertheless, Major et al. teach the term halogen includes Cl, Br and I (page 7, lines 15-18).
Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Major et al. and include a compound of formula I wherein Ra is F and Rc is Cl, Br or I with a reasonable expectation of success. One of ordinary skill in the art would have been motivated at the time of filing to combine the teachings of Major et al. and form the presently claimed compounds because Rc and R4 have equivalent values and one of ordinary skill would have been motivated to select a halogen other fluorine since Major et al. teach halogens include Cl, Br and I.
Response to Arguments
Applicant's arguments filed 12/19/2025 have been fully considered but they are not persuasive. Applicant argues that a person skilled in the art would not have been motivated to select a halogen other than F for the substituent R4 because it is described as a preferred embodiment. The Examiner is not persuaded by this argument because disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Major et al., teach Rc is halogen (page 18, lines 8 through 33) and that the term halogen includes F, Cl, Br and I (page 7, lines 15-18). Therefore, Major teaches the compounds claimed.
Applicant further argues that the declaration show that the claimed compound wherein R4 is Cl, Br or CH3 demonstrate higher herbicidal activity compared to compounds of Major. The Examiner is not persuaded by this argument because the data presented is not commensurate in scope with the claimed invention. Additionally, a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Therefore, the rejection has been maintained.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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, Bethany Barham can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1617
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