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
This action is in response to papers filed December 5, 2025. Applicant’s response to the restriction/election requirement of October 7, 2025 has been entered. Claims 1-7, 9, and 12-14 have been amended; claim 8 has been canceled; and claims 15-17 have been newly added. Claims 1-7 and 9-17 are pending in the application.
Priority
Applicant’s claim for the benefit of prior-filed WIPO International Application No. PCT/US2022/018292, filed March 1, 2022 under 35 U.S.C. 365(c), which claims the benefit of prior-filed U.S. Provisional Patent Application No. 63/155,535, filed March 2, 2021 under 35 U.S.C. 119(e), is acknowledged.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 and 14, is hereby acknowledged. Applicant’s election of i) “the compound of formula Ia as recited in claim 6” as the species of chemical compound formula is also hereby acknowledged. The Examiner has determined that claims 1-3, 6, 7, and 14 read on the elected subject matter.
Accordingly, claims 4, 5, 9-13, and 15-17 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected subject matter, there being no allowable generic or linking claim.
Election was made without traverse in the reply filed on December 5, 2025. Claims 1-3, 6, 7, and 14 are currently under examination.
Abstract
The abstract of the disclosure is objected to because of the following:
1. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art, e.g. “novel”.
2. The abstract should be a concise summary of the key technical aspects of the invention which are new to the art to which the invention pertains. However, while the abstract already establishes in the first sentence that phenylspirodrimanes are being employed as adjuvants, the abstract then adds a later sentence about the phenylspirodrimanes providing adjuvancy, and then the abstract goes on to further add a reference to the “use” of phenylspirodrimanes as adjuvants, which is redundant. In effect, a concise summary is not achieved.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 2, 6, 7, and 14 are objected to because of the following:
i) In claim 2, the expression “R3 and R4 independently represents” should be “R3 and R4 independently represent”, consistent with the language of e.g. claims 1, 3, and 7.
ii) In claim 6, there should be an “or” between formula Ib and formula IIa.
iii) In claim 7, there should be an “and” between the definition of R10 and the definitions of R11, R12, R13, and R14, consistent with the format of claim 1.
iv) In claim 14, the expression “adjuvants in accordance with claim 1” should be “an adjuvant in accordance with claim 1”. Claim 1 provides for “an adjuvant”, not “adjuvants”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 6, 7, and 14 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 6, which depends from claim 1, stipulates in a wherein clause that “the adjuvant is selected from phenylspirodrimanes” of the formulas Ia, Ib, IIa. One of ordinary skill in the art cannot definitively ascertain whether claim 6 provides that one and only one of the recited formulas, i.e. Ia, Ib, or IIa, should be selected, or rather whether claim 6 intends to provide for combinations of Ia, Ib, and IIa. If the latter case is true, one of ordinary skill in the art cannot definitively ascertain the metes and bounds of the claimed subject matter, particularly since claim 1 stipulates that the composition comprises “an adjuvant” which is selected from either formula I or formula II.
Claim 7 is directed to “a concentrate formulation suitable for making” the composition of claim 1. However, the composition of claim 7 necessarily includes precisely the same elements as the composition of claim 1. Typically, as one of ordinary skill in the art would generally recognize, a concentrate contains less solvent or diluent or carrier, such as water, which is then added back to make the composition desired. Indeed, the composition of claim 1 does not necessarily require any solvent or diluent or carrier at all. Hence there is insufficient antecedent basis for the presence of a solvent, diluent, or carrier or any other material that can be added and removed. Further, the required elements of the composition of claim 1, i.e. the adjuvant and the agrochemical active, have no limits placed on their amounts. Likewise, the required elements of the composition of claim 7, i.e. the very same adjuvant and the very same agrochemical active, also have no limits placed on their amounts. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the amounts of the required elements for a concentrate and the amounts of the elements for the desired composition. There is no definitive legal distinction being made. Rather, an abstract concept separates the two, that one is “more concentrated” than the other, but there are no limits on the concentrations for any of the required elements, and no required solvent/diluent whose concentration can even be adjusted. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
Claim 14 is directed to a seed coating composition “comprising adjuvants in accordance with claim 1”. However, claim 1 is directed to a composition comprising i) an adjuvant, and ii) an agrochemical active. Hence, the composition of claim 1 contains “an adjuvant” which appears to mean one adjuvant compound, not a combination of “adjuvants”, and most certainly means either an adjuvant of formula I or an adjuvant of formula II, but not combinations of these. Further, one of ordinary skill in the art cannot definitively ascertain whether the seed coating composition necessarily contains element ii, i.e. the agrochemical active. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6, 7, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Eder et al. (U.S. Patent Application Pub. No. 2004/0138280).
Applicant Claims
Applicant’s elected subject matter is directed to a composition comprising i) the compound of formula Ia, and ii) an “agrochemical active”; wherein the composition can be employed as an agrochemical formulation or a seed coating.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Eder et al. disclose a composition comprising e.g. i) the compound of formula Ia, and ii) magnesium carbonate (i.e. an “agrochemical active”); wherein the composition can further contain solvents such as e.g. water or DMSO (i.e. typical solvents for agrochemical formulations), and/or can further contain binders and coating agents (i.e. typical agents for a seed coating composition); and wherein the composition can be diluted with e.g. TRIS buffer (i.e. can exist in the form of a concentrate or a ready-to-use composition) (see e.g. abstract; paragraphs 0007-0012; 0017-0020; 0060; 0068-0072; 0094).
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Eder et al. do not explicitly anticipate the presently claimed subject matter under 35 USC 102. However, the Eder et al. disclosure is sufficient to render the claimed subject matter prima facie obvious within the meaning of 35 USC 103.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to employ the teachings of Eder et al., outlined supra, to devise Applicant’s presently claimed composition.
Eder et al. disclose a composition comprising e.g. i) the compound of formula Ia, and ii) a suitable vehicle or excipient; wherein the composition can be administered to a human or animal for prophylaxis of thromboembolic disease (paragraph 0067). Since Eder et al. disclose that magnesium carbonate (i.e. an agrochemical active) is a suitable vehicle or excipient, one of ordinary skill in the art would thus be motivated to combine i) the compound of formula Ia, and ii) magnesium carbonate, with the reasonable expectation that the resulting formulation can be administered to a human or animal for successful prophylaxis of thromboembolic disease.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID BROWE/Primary Examiner, Art Unit 1617