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
Response to Amendment
Acknowledgment is made of the receipt and entry of the amendment filed on 05/20/2026, wherein claims 2, 3, 5, 8, and 11 to 13 are cancelled, new claims 14-27 are added, and claim 1 is amended.
Election/Restriction
Applicant elected, without traverse, Group I (claims 1-5) and species: a) Compound 4-2, having following structure, b) fungicidal ingredients for claim 5, in the reply filed on 12/23/2025.
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The elected species, Compound 4-2 (instant spec [0677], Table A6) , is a compound of Formula I, wherein X is CH, L is O, E is phenyl, R1 is methyl, R2 is methyl and binds at the 4-position, n=1.
Claims 6-7 and 9-10 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species.
New claims 16-19 recite R3 or R4 that do not read on the elected species. New claims 21-26 recite E moiety that do not read on the elected species. Thus, new claims 16-19 and 21-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species.
Compound 4-2 (CAS# 2828468-75-1) is entered in STN on Sep 23, 2022. The Examiner expanded the search of non-elected species that are documented in 102 and 103 rejection in previous office action. Other non-elected species are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected species, there being no allowable generic or linking claim.
Status of Claims
Claims 1, 4, 6-7, 9-10 and 14-27 are pending in the instant application.
Claims 6-7, 9-10, 16-19 and 21-26 are withdrawn.
Claims 1, 4, 14-15, 20 and 27 are currently under examination in this office action.
Priority
This instant application 18/546,735 filed on August 16, 2023, is a 371 of PCT/JP2022/008031 filed on February 25, 2022, which claims benefit of priority to Japanese Application No. 2021-029651, filed on February 26, 2021, and Japanese Application No. 2021-124464, filed July 29, 2021.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of Japanese Application Nos. 2021-029651 and 2021-124464 filed on August 16, 2023 are written in Japanese, no certified English translation is included in the certified copy of Japanese Application Nos. 2021-029651 and 2021-124464. Applicant’s right of foreign priority is not perfected due to lack of certified English translation, the priority date of instant application is considered as February 25, 2022, the filing date of PCT/ PCT/JP2022/008031.
Information Disclosure Statement
The information disclosure statements 11/15/2023 and 08/29/2025 are in compliance with the provisions of 37 CFR1.97. Accordingly, the reference listed in IDS are being considered by the Examiner. Reference written in foreign language is considered to the degree of English abstract or available patent family of foreign patent by Examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: “nitrogen atom” should be designated as “N”, “oxygen atom” should be designated as “O” to conform to standard chemical notation.
Response to Declaration
The Declaration under 37 CFR 1.132 by Hiroto TAMASHIMA, filed 05/20/2026 is fully considered.
Tamashima Declaration presents data in comparation with Sembra compound (page 1-4). Instant claim 1 is amended to remove E is
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, Thus, rejection of claims 1-4 anticipated by Semba (WO2019/189287A1) is withdrawn.
Tamashima Declaration presents data of instant compounds in comparation with Bushnell Compound 32, and argues Bushnell Compound 32 showed inferior pest controlling efficacy compared with instant compounds. The obviousness rejection of claims 1-5 over Bou in view of Bushnell under 35 USC§103 is withdrawn.
Response to Arguments
Applicant's remarks filed 05/20/2026 have been fully considered. Any objection and rejection found in the previous Office Action and not repeated herein have been withdrawn in light of amendment and Applicant’s argument .The text of those sections of Title 35 U.S. Code not included in this action can be found in a prior Office action.
Instant claim 1 is amended to remove E is
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, claims 2-3 are cancelled. Thus, the rejection of claims 1-4 anticipated by Semba (WO 2019/189287 A1) is withdrawn.
The obviousness rejection of claims 1-5 over Bou in view of Bushnell under 35 USC§103 is withdrawn in light of claim amendment and Tamashima Declaration.
Regarding the rejection over Walker under 35 USC§103, Applicant argues Walker's preferred embodiments are from Walker's Table 3a, 3b, 3c, 5a, 5b, and 5c, and lndex Table B, and none indicates the direct bonding... Y is essential for the fungicidal activity described in Walker, or at least plays a role in the effect, and should not be motivated to make a compound without "Y," (Remarks, page 12).
Examiner’s Response: Applicant argument is fully considered, but NOT persuasive. As stated in MPEP 2123(I): “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also UpsherSmith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component)”.
Walker expressly teaches Y is direct bond, O, CH2, etc. and compound species that are very similar to instant elected species.
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As shown in the structures above, the main difference between disclosed Walker compounds and instant compounds is oxygen between the two phenyl ring. Walker expressly teaches Y is direct bond. A skilled artisan would have known diaryl ether and biaryl with direct carbon-carbon bond are structurally similar analogs as taught by Walker and general knowledge of organic/pesticidal chemistry. In search for more alternative pesticides, a skilled artisan would be motivated to explore more Y-Z moiety, e.g. biaryl compounds and reasonably expect the resulting biaryl compounds have fungicidal property.
As stated in MPEP 2144 .09 III : “Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979) (Claimed and prior art compounds were both directed to heterocyclic carbamoyloximino compounds having pesticidal activity. The only structural difference between the claimed and prior art compounds was that the ring structures of the claimed compounds had two carbon atoms between two sulfur atoms whereas the prior art ring structures had either one or three carbon atoms between two sulfur atoms. The court held that although the prior art compounds were not true homologs or isomers of the claimed compounds, the similarity between the chemical structures and properties is sufficiently close that one of ordinary skill in the art would have been motivated to make the claimed compounds in searching for new pesticides.)”.
It's noted instant claims are drawn to compound of Formula I genus. Applicant does not provide evidence/data that instant claimed bi-aryl compound exhibit superior activity compared with Walker compounds. Thus, the 103 rejection is maintained.
Claim Rejections - 35 USC § 103
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 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.
Claims 1, 4, 14-15, 20 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Walker (WO 99/28305, Applicant’s IDS dated 11/05/2023).
This 103 rejection is directed to instant compound of Formula I, where E is phenyl group.
Walker disclosed compounds of Formula (I), N-oxide thereof and agriculturally suitable salts, as fungicides and arthropodicides and method of controlling plant diseases caused by fungal plant pathogens with aforementioned compounds (See abstract, page 1, lines 20-25; page 6, lines 14-35; page 40, 61-; Table 3a, 3c and Table 5a, 5c; claims 1-13).
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wherein
T is
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It’s noted Walker’s R3 /R4 (e.g. C1-C3 alkyl, halogen, e.g.) read on instant R1/R2 . Walker’s T3 and T4 read on instant combination of X / L , and Walker’s Y-Z group read on instant E moiety. Walker’s embodiments
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wherein R3 and R4 are alkyl ( e.g. CH3), Y is direct bond and Z is phenyl or 5-6 membered aromatic heterocyclic ring optionally substituted with alkyl group, read on the instant Formula I, wherein E is phenyl or 5-6 membered aromatic heterocyclic ring. Walker teaches variety of substituents on the Z moiety, e.g. 4- Me-phenyl, 4- CF3-phenyl, pyridinyl, (See Table 3 and Table 5) that read on instant Group H.
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Regarding claim 4, Walker teaches composition comprising the compounds and an agriculturally suitable carrier, e.g. diluent or surfactant (See page 138, lines 1-4; Examples A, B,C ).
Walker collectively teaches fungicidal compounds that are very similar as instant compounds.
According to M.P.E.P. § 2144.09, A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
It would have been prima facie obvious to one of the ordinary skilled in the art before the effective filing date of instant invention to further explore more fungicidal compound based on the collective teachings of Walker and general knowledge of structural similarity/bioisosteres replacement and pesticide/fungicide, and arrive at instant application with reasonably expectation of success. Walker teaches phenyl methoxyacrylate core structure and variety of substituents. Exploring multiple substituents on the phenyl ring is within the general knowledge of ordinary skilled in the art as illustrated by Walker. A skilled artisan would be motivated to explore more substituents and reasonably expect the resulting compounds have fungicidal property.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
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, 4, 14-15, and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of U.S. Patent No. 11849728B2 , in view of Walker (WO 99/28305, Applicant’s IDS dated 11/05/2023).
Reference claims are directed to a compound of formula II or its N oxide, or agriculturally acceptable salt thereof that are similar to instant formula I
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Reference claim 3 reciting agricultural composition comprising the compound or its N oxide, or an agriculturally acceptable salt thereof, and an inert carrier.
The difference of reference claims and instant claims are the L linker between phenyl and methoxyacrylate moiety.
The collective teachings of Walker are elaborated in preceding 103 rejection and applied as before. Walker teaches fungicidal compounds comprising methoxyacrylate moiety directly attached to the phenyl ring.
It would have been prima facie obvious to one of the ordinary skilled in the art to further explore more fungicidal compound based on the combined teachings of reference claims and Walker and general knowledge of structural similarity and bioisosteres replacement and pesticide/fungicide. Walker teaches the core structure of instant Formula I comprising methoxyacrylate group and variety of substituents that read on instant E moiety. A skilled artisan would be motivated to explore more phenyl methoxyacrylate based on the combined teachings of reference claims and Walker and reasonably expect the resulting compounds have fungicidal property.
The instant application shares one common applicant with the reference patent. Based on the continuing data on the record, instant application is not related to the reference patent, thus no 35 USC 121 shield exists.
Claims 1, 4, 14-15, 20 and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-11 of copending Application No. 17/759,461 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Reference claims are directed to a compound of formula II or its N oxide, or agriculturally acceptable salt thereof that are very similar to instant formula I
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Reference claim 10 reciting N-oxide or an agriculturally acceptable salt thereof; and an inert carrier which reads on instant claim 4.
According to M.P.E.P. § 2144.09, A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
It would have been obvious to one of the ordinary skills in the art before the effective filing date of instant invention to further explore more fungicidal compound based on the collective teachings of reference claims and general knowledge of structural similarity/ bioisosteres replacement and pesticide/fungicide.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 14-15, 20 and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 17/759,526 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Reference claims are directed to a compound of formula II or its N oxide, or agriculturally acceptable salt thereof that’s very similar to instant formula I.
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Reference claim 7 reciting N-oxide or an agriculturally acceptable salt thereof; and an inert carrier which reads on instant claim 4.
The difference of reference claims and instant claim is n = 0 vs n = 1 or 2. However, exploring two substituents (Me) vs one substituent ( Me) on the phenyl ring is within the general knowledge of ordinary skilled in the art. It would have been prima facie obvious to one of the ordinary skills in the art to explore more fungicidal compound based on the collective teachings of reference claims and general knowledge of structural similarity/ bioisosteres replacement and pesticide/fungicide.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIYUAN MOU whose telephone number is (571)270-1791. The examiner can normally be reached Mon-Fri 9:00-5:30.
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/L.M./ Examiner, Art Unit 1628
/JARED BARSKY/Primary Examiner, Art Unit 1628
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