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 1-13 are currently pending.
Election/Restriction
Applicant’s election with traverse of Group I (Claims 1-11, drawn to a compound of formula I) and the elected species of example 1 in the reply filed on 3/26/2026 is acknowledged. (It is noted that applicant maps the substituent “Xn” as being H. However, H is not an acceptable X group according to Claim 1. Examiner instead reinterprets applicant’s elected species to read on any X group insofar as n is 0.)
Claims 8 and 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Groups II-III or unelected species, there being no allowable generic or linking claim. Claims 9-10 do read on the species as elected, contrary to applicant’s reading described on Page 4 of the response, because X may be any group as claimed so long as n is 0. n is 0 in applicant’s elected species for the reason explicated above.
Claims 1-7 and 9-11 are being examined on the merits herein. Again, election was made with traverse in the reply filed on 3/26/2026.
Applicant argues that the required restriction/election is improper because:
Formula I is a special technical feature and different categories of invention are considered to have unity if the claims are drawn to a product and process of use thereof.
Unity of invention is evidenced by the international search report. The standards regarding unity that apply to the ISA also apply to the USPTO. Therefore, unity of requirement is present.
There are unexpected results, including comparative data disclosed in pages 76-103 of the specification.
A group of inventions is considered linked when a technical relationship exists among the inventions involving at least one common special technical feature. Examiner has not stated why each group lacks unity with each other group.
Examiner fails to indicate whether Groups I-III are classified in different subclasses.
No evidence exists of a search burden.
It would be “wasteful of the time, effort, and resources” of both parties to prosecute each group in separate applications.
However, applicant’s arguments are not persuasive because:
Formula I is not a special technical feature. Formula I does not make a contribution over the prior art, Nippon, for the reasons previously explicated in the restriction requirement mailed 1/28/2026.
The search report by the ISA is not binding. The USPTO while being bound by the same standards with respect to unity, is not bound by the findings of a separate entity with respect to said standards.
Applicant does not describe or point out any particular results, explain why such results are unexpected, or describe them as commensurate in scope with Claim 1 as written. Applicant merely alludes to nearly 30 pages of assorted experimentation including synthesis and assays.
No special technical feature exists.
Classification is not of consideration when determining unity of invention.
Search burden is not of consideration when determining unity of invention.
Applicant is not required to prosecute separate applications. The decision to rejoin withdrawn claims is yet to be made by examiner.
Thus, the requirement is deemed proper and is therefore made final.
Applicant’s elected species was searched and found to be free of the art. The scope of search and examination was extended to compounds of formula I in which R3 is an alkyl or R5 is as defined in Claim 6.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. See at least 2 x Page 39; Page 54; Page 66; and Page 71 in the specification. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because “together with the C atoms” should instead read “together with the C atom”.
Appropriate correction is required.
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.
Claim Rejections - 35 USC § 103
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.
Claims 1-5, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Nippon (JP2011148714, published 2011, cited in 12/26/2023).
Nippon teaches Compound IIc-31 in Table 6 of Page 49:
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,
in which the following definitions of examined formula I apply: R1 and R4 are H; R2 is C1-alkyl; R3 is C3-alkyl; R5 and R6 together form a 6-membered cycloalkyl; and X is Cl wherein n is 1. The core S heteroatom is not O as it is in formula I of examined Claim 1. Nippon teaches the S heteroatom at the Z1 position may vary and that O is an acceptable alternative embodiment in Formula (II) to which IIc-31 belongs. See Tables 4-7 on Pages 44-51 in which S and O are used at the same position. Nippon teaches the compounds of the invention are fungicides (Espacenet Abstract). Therefore, one of skill in the art seeking to form a fungicidal compound would find it obvious to vary the Z1 position of the Nippon compound to arrive at a compound encompassed within the claimed genus of formula I because Nippon teaches variability in the chalcogen ring heteroatom. The only alternative embodiment to sulfur taught in the tables is the oxygen heteroatom. Nippon teaches the compound is included in a fungicide, a composition (Abstract).
Claims 1-5, 7, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Nippon (JP2011148714, published 2011, cited in 12/26/2023).
Nippon teaches Compound IIa-31 in Table 4 of Page 44:
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in which the following definitions of examined formula I apply: R1 and R4 are H; R2 is H; R3 is C3-alkyl; R5 is H; R6 is C1alkyl; and X any group, wherein n is 0. The R2 hydrogen is not an alkyl as it is in formula I of examined Claim 1. Nippon teaches the instant R2 position or R14 position of Nippon may vary and that Me is an acceptable alternative embodiment of Formula (II) to which IIa-31 belongs. See Tables 4-7 on Pages 44-51 in which R14 is acceptably Me (Comps. IIc-28, 29, 30, etc.). Further, compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP 2144.09. Nippon teaches the compounds of the invention are fungicides (Espacenet Abstract). Therefore, one of skill in the art seeking to form a fungicidal compound before the effective filing date of the present invention would find it obvious to vary the R14 position of the Nippon compound to arrive at a compound encompassed within the claimed genus of formula I because Nippon teaches variability in the R14 (instant R2) position. Further, MPEP teaches the modification as known and routine for creating compounds with similar activity. Nippon teaches the compound is included in a fungicide, a composition (Abstract).
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.
PROVISIONAL:
Claims 1-7, 9, and 11 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over Claims 1-15 of copending Application No. 19128195 (hereinafter referred to as Seeberger).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to a genus of overlapping formulae and compositions thereof.
The instant genus of formula I
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compares to that of Seeberger
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in that the genus of Seeberger is narrower in scope. Further, Claims 5-6 of Seeberger describe an even narrower subgenus wherein the variables are selected from a limited number of groups, most of which are taught in the rejected dependent Claims.
Regarding the methods of Seeberger, all such claims require the existence of the compounds being used, rendering obvious the examined compounds.
Since both applications teach overlapping genera of fungicidal compounds, the examiner maintains that the aforementioned claims of the instant application are substantially overlapping in scope as discussed hereinabove and are prima facie obvious over the cited claims of Seeberger.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowable.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard G. Peckham whose telephone number is (703)756-4621. The examiner can normally be reached 8:30am - 4:30pm EST.
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, Kortney Klinkel can be reached on (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD GRANT PECKHAM/Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627
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