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 office action is in response to applicant’s communication filed on 11/20/25.
Claims 1-21 are pending in this application.
Applicant’s election without traverse of Group I, claims 1-16 in the reply filed on 11/20/2025 is acknowledged. Thus Claims 17-21 are withdrawn from further consideration being drawn to the nonelected invention.
Applicant’s election of the following compound is acknowledged herewith:
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Applicant’s elected species has been found allowable. Since applicant’s species has been found allowable, the next species to be searched is the following compound 27 from Becker et al. (US 3954442, pub date May 4, 1976). See the 102 rejection over Becker et al. below.
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Compound 27 reads on applicant’s compound in claim 1 when:
X = 4-chlorophenyl
m = 1
R2 = R3 = R4 = H
R1 = methyl
W = -C(O)-
Y = -NH-(Alk)n-Z
n = 0
Z = 4-chlorophenyl
Thus, additionally, claims 4-5, 10-12 and 15, along with claims 17-21, are hereby withdrawn from consideration being non-readable on the species as shown herein. Accordingly, the claims have been searched solely to the extent of the species as shown herein. The search has not been extended to determine the patentability of the other species encompassed by the claims.
“If prior art is then found that anticipates or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. The prior art search, however, will not be extended unnecessarily to cover all nonelected species.” (MPEP 803.02)
As a result, claims 1-3, 6-9, 13-14 and 16 are being examined in this Office Action.
Priority
The applicant claims benefit as follows:
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Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “hetrocycle“ twice. The examiner believes the correct spelling is “heterocycle“. Appropriate correction is required.
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.
Claims 1-3, 6-9, 13-14 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites the connection “W-Y” and the definition of W includes “-C(O)-“, while the definition of Y includes “carboxyl”. This would give a connectivity of two carbonyls attached to each other: -C(O)-C(O)-OH. This is improbable based on applicant’s specification and examples.
Claim 1 also recites X can be halogen when m = 1. This would result in a connectivity of a halogen attached to an oxygen atom: -O-X. This is improbable based on applicant’s specification and examples.
The remaining claims are rejected as depending from a rejected claim. Appropriate correction is required.
Furthermore, as a courtesy, even though claim 15 has been withdrawn, the examiner notes that claim 15 recites the following compounds:
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These compounds do not read on claim 1.
For the first compound Y is a hydroxyl group. However, a hydroxyl group is not included in the definition of Y.
For the second compound X is -C(O)H. However, this group is not included in the definition of X. Additionally, the -OH group does not read on applicant’s -O-CR1-W-Y group.
Additionally, claim 15 is replete with other compounds that do not read on claim 1.
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 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 the AIA 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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, 6-9, 13-14 and 16 are rejected under AIA 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Becker et al. (US 3954442, pub date May 4, 1976).
Becker et al. teaches the following herbicidal compound 27 and compositions in water or solvent. (column 3, lines 23-45; column 4, lines 32-45, Example 1, column 11; see compound 27 in Table, column 7 and 8, 3rd compound from the bottom)
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Compound 27 reads on applicant’s compound in claim 1 when:
X = 4-chlorophenyl
m = 1
R2 = R3 = R4 = H
R1 = methyl
W = -C(O)-
Y = -NH-(Alk)n-Z
n = 0
Z = 4-chlorophenyl
Therefore these claims are fully met.
Conclusion
Claims 1-3, 6-9, 13-14 and 16 are rejected
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
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Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691