DETAILED ACTION
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
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. EP21174267.1, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. A claim by claim analysis indicated a lack of support for formula (Y) of claims 14-15 in the application EP21174267.1 and thus a priority date of 05/10/2022 was used for claims 14-15. A priority date of 05/18/2021 was used for the remaining claims.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/13/2023, 12/26/2023, 04/25/2024, 12/11/2024 are being considered by the examiner.
Specification
The disclosure is objected to because it contains embedded hyperlinks: (http://www.isaaa.org/gmapprovaldatabase) (page 40), (http://cera-gmc.org/GMCropDatabase) (page 40), (U.S. Environmental Protection Agency: http://www.epa.gov/pesticides/biopesticides/) (page 55), (cf.: http://www.alanwood.net/pesticides/) (pages 65), http://www.wfcc.info/ccinfo/collection/by acronym/), (page 69)) and/or other form of browser-executable code. 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.
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
Claim Objections
Claims 1-15 are objected to because of the following informalities: Formula (I) and Formula (Y) are not labeled. Appropriate correction is required.
Claim 1-15 is objected to because of the following informalities: the variable Hal is undefined in claim 15 and the variable N should be lower case in all claims. Appropriate correction is required.
Claim Interpretation
Claims 1-13 are compound claims and thus are not limited by the use of the compound. Claim 1 ends with the phrase “as fungicides” since no explanation is given to what part of formula (I) is required to be a fungicide, the claim has thus been interpreted that any compound of formula (I) is inherently a fungicide.
Claim Rejections - 35 USC § 102
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 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) 15 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Mitani (Mitani et al., US-20110136782-A1, 2011-06-09).
The reference Mitani teaches the compound “5-chloro-2,2-dimethyl-2,3-dihydro-benzo[f][1,4]oxazepine" (page 22, shown below), wherein R5=R6=H, R7=R8=C1 alkyl, Hal=Cl, n=0. This anticipates claim 15.
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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.
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitani (Mitani et al., US-20110136782-A1, 2011-06-09).
The reference Mitani teaches the following compound (compound A1-11, table 1, page 10), wherein n=1, X=Cl, R5-8=H, R1=R4=H, R2-3=C1 alkyl. However, this is not a compound of the instant claims because R5-8=H cannot all be H. This helps to teach claim 1-7 and 9.
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The reference Mitani teaches the following generic formula (page 1, shown below) wherein instant variables R5-8=H can be other groups including methyl groups. This helps to teach claims 1, 6-7, 9-10.
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The reference Mitani also teaches oxo groups at instant positions R5 and R6 [0023]. This helps to teach claim 8.
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The reference Mitani also teaches wherein X=C1 alkyl groups [0028]. This helps to teach claims 11-12.
The reference Mitani also teaches an example synthesis and a general synthesis [0139] for a compound of the general reference formula that reacts a compound of instant formula Y “After carrying out nitrogen replacement on a dimethylformamide solution (15 mL) of 3-quinoline boronic acid (0.70 g, 4.07 mmol) and 2 M aqueous cesium carbonate solution (4.70 mL, 9.40 mol), tetrakis(triphenylphosphine)palladium (0.72 g, 0.63 mmol) and 5-chloro-2,2-dimethyl-2,3-dihydro-benzo[f][1,4]oxazepine (3.13 mmol) were added to this solution. This solution was then stirred for 14 hours while heating at 90° C” (page 22). The reference Mitani teaches the compound “5-chloro-2,2-dimethyl-2,3-dihydro-benzo[f][1,4]oxazepine" (page 22, shown below), wherein R5=R6=H, R7=R8=C1 alkyl, Hal=Cl, n=0. This helps to teach claim 14.
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The reference Mitani also teaches that the compounds of the invention are active fungicides are can be use in such compositions [0001]. This helps to teach claim 1 and 13.
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The reference Mitani does not specifically teach a compound of the instant claim wherein R5-8 are not all H (claims 1-14) or oxo at instant positions 5 and 6 on a specific molecule (claim 8) or a specific compound with X=CH3 but instead requires picking and choosing of variables from a generic formula. The reference Mitani does not specifically teach the process of claim 14 as it is used to make another compound of the generic formula and the process of making A1-11 (the lead compound is not described).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified Mitani to get the instant claims. Claim 1-14 only differs from the lead compound A1-11 by a single methyl group so that R5-8 do not all equal H. Adding a methyl group is obvious in those positions because the references generic formula suggest this modification [0021]. Further, it is generally noted that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Druey, 319 F.2d 237, 138 U.S.P.Q. 39 (C.C. P.A. 1963). Given that applicant did not provide unexpected or unobvious results of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to substitute the H group for a Me. 2144.08(II)(A)(4)(c). One would have a reasonable expectation of success because the modification is suggested by the general formula and the change is relatively minor to the structure of the molecule.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified Mitani to get the instant claim 8 because Mitani also teaches oxo groups at instant positions R5 and R6 [0023]. One would have a reasonable expectation of success because the change is suggested by the generic reference formula and one would be motivated to do so to produce a fungicide.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified Mitani to get the instant claims 11-12 because Mitani also teaches C1 alkyls groups at instant positions X [0023]. One would have a reasonable expectation of success because the change is suggested by the generic reference formula and one would be motivated to do so to produce a fungicide. Further, it is generally noted that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Druey, 319 F.2d 237, 138 U.S.P.Q. 39 (C.C. P.A. 1963). Given that applicant did not provide unexpected or unobvious results of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to substitute the H group for a Me. 2144.08(II)(A)(4)(c). One would have a reasonable expectation of success because the modification is suggested by the general formula and the change is relatively minor to the structure of the molecule.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified Mitani to get the instant claim 14 because the reference gives both a general synthesis method for the compounds of the reference invention [0139] and a specific example which is descriptive enough that one of ordinary skill in the art may modify it to produce the other compound of the invention. One would have reasonable expectation of success because one would just switch the starting reactants to provide the desired compounds and the reaction is fairly simple because it is a standard Suzuki coupling reaction between a boronic acid derivative represented by formula and an imidoyl halide derivative. One would be motivated to do so to produce the compounds of the reference invention to be used as fungicides.
The specific combination of features claimed is disclosed within the broad generic ranges taught by the reference but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989).
However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/129,054 (reference application) and over claims 1-18 of copending Application No. 19/122,318. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim being examined is generic to a species or sub-genus claimed in a conflicting patent or application.
The application ‘054 claims:
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This anticipates claims 1-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/122,318 in view of Mitani (Mitani et al., US-20110136782-A1, 2011-06-09).
The application ‘318 claims:
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This helps to teach claims 1-13.
The application ‘318 does not teach any specific examples of compounds of the instant claims (1-13).
Mitani further teaches that all needed changes would be obvious as outlined in the 103 rejection (which is incorporated herein by reference).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified application ‘318 with Mitani because they both teach compounds of very similar structure for use against fungi. One would be motivated to use the example compounds of Mitani as starting points for the general formula of application ‘318 to get the instant claims with reasonable expectation of success because they are already known to work as anti-fungi agents and have similar structure.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Claims 1-15 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON AZAR SALAMATIAN whose telephone number is (703)756-4584. The examiner can normally be reached Mon-Thurs 7:30am-5pm EST Friday 7:30-4pm EST (every other Friday off).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached at (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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/A.A.S./ Examiner, Art Unit 1627
/Kortney L. Klinkel/ Supervisory Patent Examiner, Art Unit 1627