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 .
Priority
The instant application claims priority as follows:
PNG
media_image1.png
22
396
media_image1.png
Greyscale
PNG
media_image2.png
50
410
media_image2.png
Greyscale
Receipt of claim amendments and arguments filed on January 9, 2026 is acknowledged. Variables in the claims have been amended to recite more particular groups. R3 is now only H, and R8 is now only selected from C1-C6-alkyl, C2-C6-alkynyl and (C1-C6-cycloalkyl)-C2-C6-alkynyl.
Rejections and objections not reiterated herein have been withdrawn.
Claims 1-3, 5-11 and 13 are currently pending and are the subject of this Final Office action.
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) 1-3, 5-11 and 13 remain rejected under 35 U.S.C. 103 as being unpatentable over Major et al. (US 2017/0022170) in view of US 9,822,105 B2, US 10,029,992 B2 and US 9,549,558.
Applicant claims a diaminotriazine compound of formula (I)
PNG
media_image3.png
190
260
media_image3.png
Greyscale
, wherein R1 is Cl, Br, I or CH3, R3 is H and R8 is alkyl, and others. These compounds are useful as herbicides.
Major et al. teach diaminotriazine compounds of formula I
PNG
media_image4.png
170
254
media_image4.png
Greyscale
, useful as herbicides. Major teaches that the moiety
PNG
media_image5.png
138
464
media_image5.png
Greyscale
and that the moiety
PNG
media_image6.png
266
342
media_image6.png
Greyscale
PNG
media_image7.png
304
344
media_image7.png
Greyscale
PNG
media_image8.png
36
366
media_image8.png
Greyscale
, and others at claim 24. Compounds wherein the phenyl is 2,5-difluoro-6-prop-2-ynoxyphenyl and 2,3,5-trifluoro-6-prop-2-ynoxyphenyl were taught in Major et al.
Additionally, that the moiety
PNG
media_image9.png
54
76
media_image9.png
Greyscale
is selected from
PNG
media_image10.png
292
270
media_image10.png
Greyscale
, and other options found in claim 33. The agrochemical compositions comprising these compounds and at least one inert liquid or solid carrier are able to control undesired vegetation, defoliate and desiccate plants. See claims 34-36.
US 9,822,105 B2 teaches herbicides with the same diaminotriazine core
PNG
media_image11.png
182
266
media_image11.png
Greyscale
in which Rb1 is either H, fluoro, chloro, bromo, iodo, CH3 or CN. Rb3 is H, F, Cl, Br or I. See Table A starting at column 53.
US 10,029,992 B2 teaches herbicides with the same diaminotriazine core
PNG
media_image12.png
120
228
media_image12.png
Greyscale
in which the phenyl ring is represented by
PNG
media_image13.png
132
120
media_image13.png
Greyscale
wherein Rb1, Rb2 and Rb3 are Rb , and
PNG
media_image14.png
113
360
media_image14.png
Greyscale
PNG
media_image15.png
32
340
media_image15.png
Greyscale
PNG
media_image16.png
36
238
media_image16.png
Greyscale
See column 21 and 39.
US 9,549,558 B2 teaches herbicides with the same diaminotriazine core
PNG
media_image17.png
152
228
media_image17.png
Greyscale
wherein
PNG
media_image18.png
32
342
media_image18.png
Greyscale
or
PNG
media_image19.png
120
238
media_image19.png
Greyscale
. In Table A Ra is F, Cl, Br, CN or CH3. Note that Re can be alkoxy, also that Rb and Rd can be a halogen.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between Applicant’s compounds and the prior art’s compounds is in the halogen substituting the 2-position in the phenyl ring. The prior art has a fluoro:
PNG
media_image20.png
128
122
media_image20.png
Greyscale
, while the instant claims have a Cl, Br or I. The difference is thus, one halogen for another.
Finding of prima facie obviousness--rational and motivation
The problem to be solved is that of providing additional compounds with the same diaminotriazine core
PNG
media_image21.png
150
202
media_image21.png
Greyscale
which have agricultural/herbicidal activity. Someone preparing these compounds would be trained in organic chemistry who would recognize the very close structural similarity and would expect the compounds to have similar properties. One of ordinary skill in the art would have been motivated to make the compounds of the claimed invention in view of the herbicidal compounds in Major et al. because F, Cl, Br, and I are halogen elements from the seventh group of the periodic table and are commonly replaced for one another in the pesticide/herbicide art. The secondary references are evidence of their expected equivalency and provide a reasonable expectation of success.
In Ex parte Wiseman, 98 USPQ 277 (1953), it was held that compounds are rejected over prior art when the difference between the claimed compounds and the compounds of the prior art is two fluorine atoms versus chlorine atoms. The basis of this reasoning is that fluorine and chlorine are both halogen elements from the seventh group of the periodic system and the claimed compound is thus an analogue or an isologue of that disclosed in the prior art. The compounds are expected to possess similar properties differing only in degree.
In addition, while Major et al. don’t teach exactly a Cl, Br or CH3 group at R2 of the compounds as in instant claim 2, the secondary references teach that a Cl, Br or CH3 group at R2 would be an obvious modification that the artisan would have been motivated to make. Particularly, see the teachings in US 10,029,992 B2 taught in which
PNG
media_image13.png
132
120
media_image13.png
Greyscale
wherein Rb1, Rb2 and Rb3 are Rb , and
PNG
media_image22.png
44
212
media_image22.png
Greyscale
Applicant’s arguments have been carefully considered but were found unpersuasive. Applicant argues that the combination of references fails to teach two differences between the compounds. Applicant argues that the two differences are Cl, Br, I, or CH3 at the 2-position and an O-R8 substituent in the 6-position, wherein R8 is a small substituent. The examiner is not persuaded because Major teaches an O-R8 substituent at the 6-position which is the 6-propynoxy group. This can be found in the definitions for the phenyl moiety selected from 2,5-difluoro-6-propynoxyphenyl and 2,3,5-trifluoro-6-prop-2-ynoxyphenyl as discussed in the body of the rejection. The only difference between Applicant’s compounds and the prior art’s compounds is in the halogen substituting the 2-position in the phenyl ring, as discussed before.
As above, it would have been prima facie obvious to one of ordinary skill in the art to replace the 2-fluoro atom of the compounds of Formula I of Major, with the halogen Cl, Br, and I, with the expectation of obtaining the same activity.
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 1-3, 5-11 and 13 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11 of copending Application No. 18/273,814. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘814 application
because the compounds, compositions, and method for using the compositions are prima facie obvious over the co-pending claims in view of US 9,822,105 B2, US 10,029,992 B2 and US 9,549,558.
The co-pending claims recite compounds of formula
PNG
media_image23.png
190
258
media_image23.png
Greyscale
, which differ from the instant claims in that R1 is F.
The instant claims recite compounds
PNG
media_image24.png
242
362
media_image24.png
Greyscale
.
It would have been prima facie obvious to make the compounds of the claimed invention in view of the herbicidal compounds in the co-pending claims because F, Cl, Br, and I are halogen elements from the seventh group of the periodic table and are commonly replaced for one another in the pesticide/herbicide art. The secondary references below are evidence of their expected equivalency and provide a reasonable expectation of success.
In Ex parte Wiseman, 98 USPQ 277 (1953), it was held that compounds are rejected over prior art when the difference between the claimed compounds and the compounds of the prior art is two fluorine atoms versus chlorine atoms. The basis of this reasoning is that fluorine and chlorine are both halogen elements from the seventh group of the periodic system and the claimed compound is thus an analogue or an isologue of that disclosed in the prior art. The compounds are expected to possess similar properties differing only in degree.
US 9,822,105 B2 teaches herbicides with the same diaminotriazine core
PNG
media_image11.png
182
266
media_image11.png
Greyscale
in which Rb1 is either H, fluoro, chloro, bromo, iodo, CH3 or CN. Rb3 is H, F, Cl, Br or I. See Table A starting at column 53.
US 10,029,992 B2 teaches herbicides with the same diaminotriazine core
PNG
media_image12.png
120
228
media_image12.png
Greyscale
in which the phenyl ring is represented by
PNG
media_image13.png
132
120
media_image13.png
Greyscale
wherein Rb1, Rb2 and Rb3 are Rb , and
PNG
media_image14.png
113
360
media_image14.png
Greyscale
PNG
media_image15.png
32
340
media_image15.png
Greyscale
PNG
media_image16.png
36
238
media_image16.png
Greyscale
See column 21 and 39.
US 9,549,558 B2 teaches herbicides with the same diaminotriazine core
PNG
media_image17.png
152
228
media_image17.png
Greyscale
wherein
PNG
media_image18.png
32
342
media_image18.png
Greyscale
or
PNG
media_image19.png
120
238
media_image19.png
Greyscale
. In Table A Ra is F, Cl, Br, CN or CH3. Note also that Rb and Rd can be a halogen.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In the response of 01/09/2026, Applicant stated that they will consider a response to overcome this rejection should it become necessary.
Claims 1, 3, 5-11 and 13 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-16 of U.S. Patent No. 10,941,122. Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds, compositions, and method of using the compounds are prima facie obvious over the patented claims in view of US 9,822,105 B2, US 10,029,992 B2 and US 9,549,558.
The claims of the patent claim compounds of formula
PNG
media_image25.png
152
208
media_image25.png
Greyscale
in which the phenyl ring is represented by the moiety of formula
PNG
media_image20.png
128
122
media_image20.png
Greyscale
, which is selected from the groups recited in patented claim 5
PNG
media_image7.png
304
344
media_image7.png
Greyscale
and 2,3,5-trifluoro-6-prop-2-ynoxyphenyl and R3, R4 and R5 are selected from the group recited in patented claim 13. R1 and R2 are as recited in patented claims 7 and 9.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between Applicant’s compounds and the patented compounds in the claims is in the halogen substituting the 2-position in the phenyl ring. The prior art has a fluoro:
PNG
media_image20.png
128
122
media_image20.png
Greyscale
, while the instant claims have a Cl, Br or I. The difference is thus, one halogen for another.
Finding of prima facie obviousness--rational and motivation
One of ordinary skill in the art would have been motivated to make the compounds of the claimed invention in view of the herbicidal compounds in the patented claims because F, Cl, Br, and I are halogen elements from the seventh group of the periodic table and are commonly replaced for one another in the pesticide/herbicide art. The secondary references below are evidence of their expected equivalency and provide a reasonable expectation of success.
In Ex parte Wiseman, 98 USPQ 277 (1953), it was held that compounds are rejected over prior art when the difference between the claimed compounds and the compounds of the prior art is two fluorine atoms versus chlorine atoms. The basis of this reasoning is that fluorine and chlorine are both halogen elements from the seventh group of the periodic system and the claimed compound is thus an analogue or an isologue of that disclosed in the prior art. The compounds are expected to possess similar properties differing only in degree.
US 9,822,105 B2 teaches herbicides with the same diaminotriazine core
PNG
media_image11.png
182
266
media_image11.png
Greyscale
in which Rb1 is either H, fluoro, chloro, bromo, iodo, CH3 or CN. Rb3 is H, F, Cl, Br or I. See Table A starting at column 53.
US 10,029,992 B2 teaches herbicides with the same diaminotriazine core
PNG
media_image12.png
120
228
media_image12.png
Greyscale
in which the phenyl ring is represented by
PNG
media_image13.png
132
120
media_image13.png
Greyscale
wherein Rb1, Rb2 and Rb3 are Rb , and
PNG
media_image14.png
113
360
media_image14.png
Greyscale
PNG
media_image15.png
32
340
media_image15.png
Greyscale
PNG
media_image16.png
36
238
media_image16.png
Greyscale
See column 21 and 39.
US 9,549,558 B2 teaches herbicides with the same diaminotriazine core
PNG
media_image17.png
152
228
media_image17.png
Greyscale
wherein
PNG
media_image18.png
32
342
media_image18.png
Greyscale
or
PNG
media_image19.png
120
238
media_image19.png
Greyscale
. In Table A Ra is F, Cl, Br, CN or CH3. Note also that Rb and Rd can be a halogen.
Applicant’s arguments have been carefully considered but were found unpersuasive. Applicant argues that the combination of references fails to teach two differences between the compounds. Applicant argues that the two differences are Cl, Br, I, or CH3 at the 2-position and an O-R8 substituent in the 6-position, wherein R8 is a small substituent. The examiner is not persuaded because Major teaches an O-R8 substituent at the 6-position which is the 6-propynoxy group. This can be found in the definitions for the phenyl moiety selected from 2,5-difluoro-6-propynoxyphenyl and 2,3,5-trifluoro-6-prop-2-ynoxyphenyl as discussed in the body of the rejection. The only difference between Applicant’s compounds and the prior art’s compounds is in the halogen substituting the 2-position in the phenyl ring, as discussed before.
Regarding that the patent disclosure may not be used as prior art, in the instant case, all the limitations are found in the patented claims pointed out above.
Note to Applicants
Claims 1-3, 5-11 and 13 are rejected.
Not every piece of prior art found in the search has been applied against the instant claims. See MPEP 904.03.
THIS ACTION IS MADE FINAL. 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 VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621
Prosecution Insights