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 .
Status of the Claims
Claims 11 – 22 are pending.
Claims 17 – 18 are rejected.
Claim 15 is objected.
Claims 11 – 14, 16 and 19 – 22 are withdrawn.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 11 – 21, directed to a biphenyl compound of Formulae I – IV, and an insecticide or an acaricide composition comprising said compound of Formula I according to claim 11, classified in various CPC classes such as C07C317/14, C07C321/26 and C07C323/09.
II. Claim 22, directed to a method for controlling agricultural or forestry pests and pest mites, comprising applying an effective amount of the composition according to claim 21, classified in CPC classes A01N39/00 and A01N41/12.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the method can be practiced with a material different product. For example, the method for controlling agricultural or forestry pests and pest mites can be practiced using cyflumetofen, which is a materially different product.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Inventions I and II would require different field of search and examination. For example, search for the method for controlling agricultural or forestry pests and pest mites, comprising applying an effective amount of the composition according to claim 21, as claimed in Invention II, would not encompass the entire scope directed to the biphenyl compounds of Formulae I – IV, and an insecticide or an acaricide composition comprising said compound of Formula I as claimed in Invention I. Thus, search for Invention II would require different method and classification search strategies than a search directed to the scope of Invention I. Therefore, the examination for both of the inventions would be burdensome if a restriction is not required.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Election of Species
This application contains claims directed to the following patentably distinct species:
A biphenyl compound of Formulae I – IV.
The species of the biphenyl compounds of Formulae I – IV are independent or distinct because:
(1) The species as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; and (2) the species do not overlap in scope, i.e., are mutually exclusive. For example, the compound of Formula I,
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, wherein:
Each R1 is a halogen;
Each R2 is C1 alkyl; and
m and n are each 1.
has a materially different function, mode of operation and function than the compound of Formula II,
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, wherein each R1 is hydrogen. Thus, the species as claimed are considered mutually exclusive. (3) In addition, the species as claimed are not obvious variants based on the current record. See MPEP § 806.05(j).
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
For example, a search for compound of Formula I, wherein Each R1 is a halogen, each R2 is C1 alkyl; and m and n are each 1, would not encompass or likely to result in finding art pertinent to the scope of compound of Formula II, wherein each R1 is hydrogen. Thus, each compound species would require a different field of search and search for each different species would require a serious burden on the examiner if restriction is not required.
Applicant is required under 35 U.S.C. 121 to elect a single species of the biphenyl compound of Formulae I – IV, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
Traversal
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected disease or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct diseases from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Joint Inventors
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Rejoinder
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Telephonic Election/Restriction
During a telephone conversation with Applicant’s representative, Joshua Pritchett, on November 7, 2015 a provisional election was made without traverse to prosecute the invention of Group I, claims 11 – 21. Further, Applicant specifically elected the compound of Formula II
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, wherein R1 is selected from hydrogen or a halogen.
Affirmation of this election must be made by applicant in replying to this Office action.
Examination: Applicant’s elected species reads on the compound of Formula II in claim 15. Applicant’s elected species is allowable over the prior art. In accordance with MPEP §803.02, examination of the Markush-type claim has been extended to include the compound of Formula IV in claims 17 and 18:
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, wherein each R1 is hydrogen.
Pursuant to Federal Register, Vol. 76, No. 27, dated February 9, 2011, page 7166 (middle column):
“Under principles of compact prosecution, the examiner should also require the applicant to elect a species or group of indistinct species for search and examination (i.e., an election of species). If the examiner does not find the species or group of indistinct species in the prior art, then the examiner should extend the search to those additional species that fall within the scope of a permissible Markush claim. In other words, the examiner should extend the search to the species that share a single structural similarity and a common use. The improper Markush claim should be examined for patentability over the prior art with respect to the elected species or group of indistinct species…within the scope of a proper Markush claim.”
Subject matter not embraced by the elected embodiment or the scope searched is therefore withdrawn from further consideration. Claims 11 – 14, 16 and 19 – 22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/ species, there being no allowable generic or linking claim.
Priority
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Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on August 4, 2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The specification amendment filed on August 4, 2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. Specifically, the following new phrase is not supported by the application (as filed on August 4, 2023): “the disclosure of which are hereby incorporated by reference herein in their entireties”. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. See MPEP 211.02 and MPEP 201.06(c)(IV). PCT Rule 20.6, Rule 20.7 and Rule 4.18 are directed specifically to 371 applications. When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement of the prior application. This objection may be overcome by deleting the phrase “the disclosure of which are hereby incorporated by reference herein in their entireties”.
Claim Objections
Claims 15 and 17 – 18 are objected to because of the following informalities:
Claim 15, line 6 of the claim: The limitation “R1 is selected from hydrogen or a halogen” is grammatical incorrect because it does not recite proper language for the group of alternatives. In order to overcome the objection, Applicant may amend the limitation as follows: “R1 is selected from hydrogen and halogen”.
Claim 17, line 5 of the claim: The limitation “R1 is selected from hydrogen or a halogen” is grammatical incorrect because it does not recite proper language for the group of alternatives. In order to overcome the objection, Applicant may amend the limitation as follows: “R1 is selected from hydrogen and halogen”.
Claim 18, page 5, line 3: The limitation “R1 is selected from hydrogen or a halogen” is grammatical incorrect because it does not recite proper language for the group of alternatives. In order to overcome the objection, Applicant may amend the limitation as follows: “R1 is selected from hydrogen and halogen”.
Claims 17 – 18: Claim 17 is directed to a compound, being an intermediate for preparing the compound according to claim 15, wherein the compound has a structure shown in Formula IV. Claim 18 is directed to a compound, being an intermediate for preparing the compound according to claim 16, wherein the compound has a structure shown in Formula IV. Emphasis added. Said limitations are intended use limitations as governed by MPEP §2111.02(II). Intended use limitations are interpreted based on the structural limitations they impart to the invention. In this case, the intended uses only require that the compound of Formula IV is an intermediate for preparing the compound according to claim 15 or 16 respectively, but does not impart any specific limitations to the structure. Thus, the limitations are not given patentable weight towards the scope of the invention and render the claims duplicates of each other. Applicant is advised that should claim 17 be found allowable, claim 18 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barber, Harry James et al., Journal of the Chemical Society, December 31, 1928, pp. 1141 – 1149, as disclosed in IDS dated August 4, 2023, evidenced by CAS RN 220883-93-2.
Barber et al. teach the compound, 4:4'-Dichlorodiphenyl-3:3'-disulphonyl Chloride. See, pg. 1147, 3rd paragraph. The compound has the structure of CAS RN 220883-93-2:
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The compound taught by Barber anticipates the instant claims 17 – 18 as presented below:
Claim 17, directed to a compound, being an intermediate for preparing the compound according to claim 15, wherein the compound has a structure shown in Formula IV:
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, wherein each R1 is hydrogen.
The limitation “being an intermediate for preparing the compound according to claim 15” is an intended use limitation as governed by MPEP §2111.02(II). Intended use limitations are interpreted based on the structural limitations they impart to the invention. In this case, the intended use only requires that the compound of Formula IV is an intermediate for preparing the compound according to claim 15, but does not impart any specific limitations to the structure. Based on the teachings of Barber et al., the compound is capable of being an intermediate for preparing the compound according to claim 15.
Claim 18, directed to a compound, being an intermediate for preparing the compound according to claim 16, wherein the compound has a structure shown in Formula IV:
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, wherein each R1 is hydrogen.
The limitation “being an intermediate for preparing the compound according to claim 16” is an intended use limitation as governed by MPEP §2111.02(II). Intended use limitations are interpreted based on the structural limitations they impart to the invention. In this case, the intended use only requires that the compound of Formula IV is an intermediate for preparing the compound according to claim 16, but does not impart any specific limitations to the structure. Based on the teachings of Barber et al., the compound is capable of being an intermediate for preparing the compound according to claim 16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sagar Patel whose telephone number is (571)272-1317. The examiner can normally be reached Monday - Friday: 9am to 5pm 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, Joseph McKane can be reached at (571) 272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sagar Patel/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626