DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant's election with traverse of Group I, and species of example 94, in the reply filed on April 24, 2026 is acknowledged. The traversal is on the ground(s) that unity exists and that the Examiner has not explained how the groups are classified differently and how there is serious burden. This is not found persuasive because the unity of invention does not exist since the compounds share a common core that is not novel or nonobvious. The citations in the international search report is evidence of the lack of unity, and additionally the ground of rejection set forth in this office action. Furthermore, classification and consideration of burden do not apply since this application is a national stage entry filing.
The requirement is still deemed proper and is therefore made FINAL.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared to be novel and nonobvious over the prior art. Therefore, the search and examination was extended. Prior art was found that makes obvious nonelected species within the claims. The Markush claims were thus rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species and the nonelected species shown below.
4. Claims 8, 10 and 13 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter. Applicant timely traversed the restriction (election) requirement in the reply filed on April 24, 2026.
Status of Claims
5. Claims 1-4 are pending. Claims 1-7, 9, 11, 12 and 14 are elected of which claim 1is independent. Claims 8, 10 and 13 are withdrawn.
Priority
6. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
7. The information disclosure statements (dated January 29, 2024 and February 27, 2024) were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The statements were considered. Signed copies of form 1449 are enclosed herewith.
Claim Objections
8. Claim 14 objected to because the claim does not end in a period.
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.
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.
9. Claim(s) 1-7, 9, 11, 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2011148714 (see also machine translation of the reference).
Determining the scope and contents of the prior art
The reference teaches compounds that are fungicides, and compositions/seeds containing the compound (page 1 of translation), and N-oxide or agriculturally acceptable salt thereof (page 17 of translation). The structure of the compounds includes
PNG
media_image1.png
182
210
media_image1.png
Greyscale
wherein Z1 is O or S and
PNG
media_image2.png
186
218
media_image2.png
Greyscale
wherein Z2 is O, S, C or N(R25=H, methyl or ethyl).
See specific embodiments such as Table 2
PNG
media_image3.png
144
172
media_image3.png
Greyscale
, compound IIa-5,19,14,38 which contain embodiments representing substituents corresponding to claimed variables n=0; R2-R6=halogen and Table 11
PNG
media_image4.png
134
156
media_image4.png
Greyscale
, compound IIId-1 corresponding to claimed variable R7=H.
Ascertaining the differences between the prior art and the claims at issue
The difference between the claims and the specific embodiments of Table 2 Formula II in the prior art is the ring atom corresponding to Z1: O or S vs. N.
Resolving the level of ordinary skill in the pertinent art - considering objective evidence present in the application indicating obviousness
MPEP 2143 B provides basic requirements of prima facie case of obviousness including examples of rationale of the simple substitution of one known element for another to obtain predictable results. To reject a claim based on this rationale the following is considered below and applied to the present claims:
A finding that the prior art method differs from claimed method by the substitution of some component with another component
The prior art does not teach a specific embodiment with the claimed structural feature of N-R7.
A finding that the substituted components and their functions were known in the art
The prior art teaches the N-R7 ring component is a different embodiment, eg Table 11.
a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable
One of ordinary skill has the knowledge that the substitution of the N-R7 structural component to the various ring structures exemplified will produce predictable fungicides. Thus, the known element of NH, for example, substituted into the prior art compounds would produce compounds within the scope of the present claims.
For the reasons provided above, the present claims are found to be prima facie obvious over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN JAE YOO whose telephone number is (571)272-9074. The examiner can normally be reached Mon-Fri 8-5.
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.
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.
/SUN JAE YOO/Primary Examiner, Art Unit 1621
Prosecution Insights