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 .
New Examiner
The new examiner of record is Erin Hirt. This is a second non-final office action undertaken after consideration of the previous examiner’s office action and updated searching.
Claim Objections
Claim 1 is objected to because of the following informalities: And/or at the beginning of line 3 of the claim is incorrectly capitalized.
Claim 7 is objected to because of the following informalities: claim 7 is missing a space between 1 and or.
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.
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 5 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. Claim 5 lacks antecedent basis because it states that the composition as claimed in claim 1. However, claim 1 is directed to compounds not a composition therefore the herbicidal composition of claim 1 lacks antecedent basis, secondly it appears that applicants are trying to add an additional active agent to the composition of claim 4? The claim should not state comprising, it should state further comprising since firstly the compounds of claim 1 nor the composition of claim 4 contain at least one further pesticidally active substance. Thus, to add this component to the composition the claim should state further comprising not comprising as comprising signals that you are further defining something already present in claim 1 (or claim 4) but in the instant case applicants are attempting to add a further component so the claims should read further comprising to make it clear this is a new component that was not previously required by claim 1 (or claim 4). Rewriting claim 5 as follows would overcome the above rejections. The herbicidal composition as claimed in claim 4, further comprising at least one additional pesticidally active substance selected from the group…
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.
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 1-8 is/are rejected under 35 U.S.C. 103 as being obvious over Almsick et al (US20140106969, published 04/17/24 which is more than one year prior to the earliest effective filing date of the instant application).
The applied reference has a common inventor with the instant application. However, because it was published more than a year prior to the earliest effective filing date of the instant application this prior art qualifies under 102(a)(1). The previous examiner incorrectly stated that qualified under 102(a)(2). Thus, applicants cannot disqualify the Almsick reference by using any of the 102(a)(2) exceptions.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-3, Almsick teaches structurally similar bicycloarylcarboxamide compounds which are positional isomers of the claimed compounds and differ only in the position by which Almsick’s C(O)NH-Q bond is attached to the fused bicyclic ring. Almsick teaches wherein their positional isomer compounds to those which are instantly claimed are useful as herbicides which is the same intended use of the instantly claimed compounds and Almsick teaches wherein their Q group can be the same triazole (Q2) or tetrazole (Q1) that are instantly claimed when applicant’s B is CH or N as is instantly claimed. Almsick further teaches wherein their R1 which corresponds to the instant Rx can be the same C1-C6 alkyl, phenyl, or the same C1-C6 alkoxy-C1-C6-alkyl that is instantly claimed. Almsick further teaches wherein their X and Y which correspond to the instant X1 and X2 and are the same O, S, SO, SO2 that are instantly claimed, and wherein each of their R5 corresponds to the instant Ra and Rb and can be the same hydrogen or fluorine which are instantly claimed, and Almsick’s n is/can be 1, etc. which reads on the claimed 5 membered part of the fused bicyclic ring system, see for instance Tables 4-5, 7, 9-11 which exemplify the positional isomer herbicidal compounds of Almsick’s which only differ from the claimed compounds in the position where the C(O)NH-Q bond of Almsick is attached to the fused bicyclic ring (See entire document; [0004-0005, inclusive]; [0011-0012, which teaches preferred compounds of formula I include positional isomers of the claimed compound scope, e.g. wherein n=1, etc.; Tables 4-5, 7, 9-11; claims; etc.). For instance, see compounds 2318, wherein applicant’s X1 and X2 are both S, applicant’s Rx is methyl, applicant’s B is CH, applicant’s Ra and Rb are both H, and applicant’s R is methyl in Almsick which only differs from the claimed herbicidal compounds in the position of the C(O)NH-Q (being Q2 wherein applicant’s B is CH) (or compound 2323 which only differs in that applicant’s X1 and X2 are both SO2) and Almsick teaches wherein these compounds are also herbicidal (see table 11, specific entries cited above).
Regarding claims 4-5 and 7-8, Almsick teaches forming herbicidal compositions and/or products comprising their structurally similar positional isomer herbicidal compounds which are mixed with one or more formulation auxiliaries, and which can further comprise at least one additional pesticidally active substance selected from the claimed types (see entire document; [0070-0090, inclusive]; claims; all sections cited above).
Regarding claims 6 and 8, Almsick teaches methods of controlling one or more unwanted plants comprising applying the claimed compounds and/or compositions and/or products comprising these compounds in effective amounts to the unwanted plants and/or a site of unwanted plants/vegetation including unwanted plants within crops of useful plants (See entire document; [0001]; all claims; specifically claims 9, 13-14; [0040-0050]; [0067-0091]; sections cited above; examples).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)/ Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
As discussed above, Almsick does not teach a specific example of the claimed compounds. However, as also discussed above Almsick teaches structurally similar positional isomer compounds to those instantly claimed, e.g. 2318 and/or 2323 which are taught to be/disclosed to be useful as herbicides just as the claimed compounds.
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed positional isomer compounds when looking to Almsick in order to form additional pesticidal compounds because it is known, “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) (in the instant case the phenyl ring portion of the fused bicyclic ring system) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
The examiner acknowledges applicant’s statement of ownership. However, this statement will not overcome the prior art Almsick for the reasons discussed above in this second non-final office action specifically the earliest effective filing date for the instant application is 11/20/2017 as per applicant’s filing receipt dated 01/05/24 whereas Almsick was published and available as prior art on 04/17/2014 which is more than 3 years prior to the instant application being first filed and as such applicant’s cannot except Almsick as prior art as it is well outside the grace period of 1 year prior to the earliest effective filing date of 11/20/2017. Applicants canceling of claims 10-13 has overcome the previous statutory double patenting rejection. This double patenting rejection is hereby rendered moot and therefore withdrawn.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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