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
Claims 1-8, 10, 11, 14 and 15 are pending in the application. Claims 1, 2, 4, 7, 8, 14 and 15 are rejected. Claims 3, 5, 6, 10 and 11 are withdrawn from further consideration.
Election/Restrictions
Applicant's election with traverse of the species of Compound No. 1 from Table 1 to prosecute the invention of Group I, claims 1-8, 11, 14 and 15 in the reply filed on December 12th, 2025 is acknowledged. The traversal is on the ground(s) that the PTO has not established undue burden. This is not found persuasive because burden of search is not a factor under unity of invention practice.
The requirement is still deemed proper and is therefore made FINAL.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species is not allowable. MPEP 803.02 states:
Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability. […]
If the Markush claim is not allowable, the provisional election will be given effect and examination will be limited to the Markush claim and claims to the elected species, with claims drawn to species patentably distinct from the elected species held withdrawn from further consideration. […]
If on examination the elected species is found to be anticipated or rendered obvious by prior art, the Markush claim and claims to the elected species will be rejected, and claims to the nonelected species will be held withdrawn from further consideration.
As the elected species has been found not allowable, the Markush-type claims have been rejected and claims to the nonelected invention held withdrawn from further consideration. Claims 1, 2, 4, 7, 8, 14 and 15 appear to embrace the elected species and are therefore under examination. Claims 1, 2, 4, 7, 8, 14 and 15 have been examined to the extent that they are readable on the elected embodiment. Since the elected species is not allowable, subject matter not embraced by the elected embodiment is therefore withdrawn from further consideration.
Claims 3, 5, 6, 10 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species or invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 12th, 2025.
Priority
This application is a 35 U.S.C. 371 National Stage Filing of International Application No. PCT/JP2022/002998, filed January 27th, 2022, which claims priority under 35 U.S.C. 119(a-d) to JP2021-027228, filed February 24th, 2021.
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement(s) filed on March 31st, 2025 and August 4th, 2023.
Improper Markush Grouping
The nonstatutory Markush grouping rejection is based on a judicially approved “improper Markush grouping” doctrine. A Markush claim contains an “improper Markush grouping” if: (1) The species of the Markush group do not share a “single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a “single structural similarity” when they belong to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the specification or known in the art to be functionally equivalent. When an examiner determines that the species of a Markush group do not share a single structural similarity or do not share a common use, then a rejection on the basis that the claim contains an “improper Markush grouping” is appropriate. See the Federal Register, Vol. 76, No. 27, dated February 9, 2011, page 7166.
Claims 1, 2, 4, 7, 8, 14 and 15 are rejected under improper Markush grouping as the claims contain an improper grouping of alternatively useable species. In the present case, at least (1) applies. It cannot be said that all members of the Markush group have a single structural similarity.
The structures embraced by the permutations of -Y-X- encompass varying heterocyclic structures not recognized as belonging to the same physical or chemical class. For example, in the CPC classification system:
compounds containing a 5 or 6-membered non-heteroatom containing ring (corresponding to structures where the partial structure -X-Y- is *-(CH2)-C(=X1)-**) are classified in C07C including C07C 49/537;
compounds containing a 5 or 6-membered oxygen containing heterocycle (corresponding to structures where the partial structure -X-Y- is *-O-(C=X1)-**) are classified in various locations including C07D 307/33.
compounds containing a 5 or 6-membered sulfur containing heterocycle (corresponding to structures where the partial structure -X-Y- is *-S-(C=X1)-**) are classified in various locations including C07D 333/32.
compounds containing a 5 or 6-membered nitrogen containing heterocycle (corresponding to structures where the partial structure -X-Y- is *-N(Rb)-(C=X1)-**) are classified in various locations including C07D 207/267;
compounds containing a 5 or 6-membered nitrogen and sulfur containing heterocycle (corresponding to structures where the partial structure -X-Y- is *-NH-SO2-**) are classified in various locations including C07D 275/02.
Therefore, it cannot be said that all members of the Markush group have a single structural similarity with respect to the functional groups present and the claims therefore are considered to contain an “improper Markush grouping”. Each one of the five groups above represents its own proper Markush grouping and the same rationale would apply to claims 14 and 15 where the first three options fall within group (4) and the last option falls within group (5).
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, 4, 7, 8, 14 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Black et al. Aust. J. Chem., 1973, 26, 2177-2182.
Black et al. teach 5,5-dimethyl-4-phenylpyrrolidin-2-one on page 2181, which corresponds to Applicant’s elected species and is embraced by the variables of formula (I) of claim 1 where Ar is unsubstituted phenyl, each R1 is C1 alkyl, R2 is hydrogen, Z is an unsubstituted methylene group and the partial structure -X-Y- is *-N(Rb)-C(=X1)-** where Rb is hydrogen and X1 is oxygen. These definitions are embraced by instant claims 1, 2, 4, 7 and 8.
Regarding the limitation of a “Globodera pallida control agent” in claim 1, this limitation appears to be either an intended use or a recitation of an inherent property of the compound contained in a material. MPEP 2111.02 states: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”. In this situation, the prior art teaches the elected species, which is the component required by the claims. MPEP 2112.01 states: “"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.” Accordingly, the prior art anticipates the instant claims regardless of prior art recognition of the instantly recited property. The same rationale applies to the limitation of a “hatching factor for Globodera pallida” recited in instant claim 14 and the property recited in instant claim 15.
Regarding the scope of claim 14 that the factor comprises any one or more of compounds including “5,5-dimethyl-4-phenyl-2-pyrrolidinone having a specific rotation of (-)…,” the prior art teaches a racemic product that would necessarily contain both the (-) and (+) stereoisomers. Since claim 14 does not require, for instance, that the material or composition as a whole have a specific rotation, a racemic mixture is deemed to anticipate instant claim 14. Applicant does not state which claims embrace the elected species in the remarks dated December 12th, 2025; however, if claim 14 were amended to require that the hatching factor contain only the or contain majority (-) stereoisomer, this claims would no longer embrace the elected species as defined by Applicant since Table 1 depicts (and correlates the structure to a registry entry that is) a racemate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626