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
This application, filed 1 February, 2024, is a national stage application of PCT/EP2022/071295, filed 28 July, 2022, which claims foreign benefit of applications EP22154772.2, filed 2 February, 2022 and EP21189099.1, filed 2 August, 2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 1 February, 2024 is acknowledged and has been considered.
Election/Restrictions
Applicant has elected Group I (Claims 1-11 and 13-15) with traverse.
Applicant’s traversal has been considered but is not persuasive. Applicant argues that the Internation Preliminary Report of Patentability (IPRP) concluded that the claimed satisfied the requirement of unity of invention. However, the findings of the International Searching Authority and/or IPRP are not binding on the USPTO. Restriction practice in the United States is governed by 35 U.S.C. §121 and the applicable provisions of the MPEP, and the propriety of restriction is determined independently during national stage examination. For the reasons set forth in the Requirement for Restriction/Election filed 13 March, 2026, the restriction requirement is maintained.
Accordingly, Claim 12 remains withdrawn as directed to non-elected subject matter.
Upon further examination, the Examiner conducted a search encompassing the full claimed genus. Accordingly, the requirement for election of species is withdrawn.
Status of the Application
Receipt is acknowledged of Applicant's claimed invention, filed 1 February, 2024, in the matter of Application N° 18/294,191. Said documents have been entered on the record.
Claims 3-9 and 11-15 have been amended. No new matter was introduced.
Thus, Claims 1-11 and 13-15 represent all claims currently under consideration.
Specification
The disclosure is objected to because it contains an embedded hyperlink 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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claim does not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to a “use” of a compound rather than to a process, machine, manufacture, or composition of matter. A statutory method claim should positively recite acts or steps performed rather than merely recite a use of a compound.
Claim Rejections - 35 USC § 112
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.
Claim 15 is 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.
The recitation “use of a compound according to claim 1 as a fungicide” merely states an intended use without positively reciting the acts that define the metes and bounds of the claimed subject matter. One of ordinary skill in the art would not be reasonably apprised of the scope of the claim.
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 1-11 and 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-15 of copending Application No. 19/116,752 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed compounds differ from those of the copending application primarily in the placement of a nitrogen atom within the heterocyclic ring where indicated below with arrow.
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Instant Formula I
‘752 Formula I
The relocation or substitution of heteroatoms within a heterocyclic ring represents a routine structural modification known in the art and would have been an obvious variation to one of ordinary skill in the art. Accordingly, the instant claims do not define subject matter that is patentably distinct from the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 and 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-5, 8-9, and 12-15 of copending Application No. 19/148,603 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other primarily because the copending claims encompass a broader genus of Q-containing ring systems that includes the narrower Q-ring embodiments presently claimed. Limiting the claimed compounds to particular heteroatom arrangements within the broader disclosed genus would have been an obvious variation and does not render the instant claims patentably distinct from the claims of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Donna M. Nestor whose telephone number is (703)756-5316. The examiner can normally be reached generally (w/flex): 5:30a-5p EST M-Th.
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 at 571-270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/D.M.N./Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
Prosecution Insights