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
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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Claims 6-7 and 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species.
The elected species, Compound 4-2 (instant spec [0677], Table A6) , is a compound of Formula I, wherein E is phenyl, R1 and R2 are methyl. Compound 4-2 (CAS# 2828468-75-1) is entered in STN on Sep 23, 2022. The Examiner has expanded the search of non-elected species that are documented in 102 and 103 rejection in this 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 Other non-elected species are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected species, there being no allowable generic or linking claim.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 1-7, and 9-13 are pending in the instant application.
Claims 6-7, 9-13 are withdrawn.
Claims 1-5 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
Claims 1 are objected to because of the following informalities:
There is bracket for the long “ wherein” limitation from page 1 to page 5.
Claims 1-3 use commas between different substituents and Groups. It’s confusing how the substituents following the Groups are related to the Groups.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention, e.g. full scope of instantly claimed compound of Formula I and composition comprising compound of Formula and more ingredients as recited in claim 5. This is a written description rejection, rather than an enablement rejection under 35 U.S.C. 112, first paragraph. Applicant is directed to the MPEP 2163 and Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112, 1st "Written Description" Requirement, Federal Register, Vol. 66, No. 4, pages 1099-1111, Friday January 5, 2001.
Independent claim 1 refers to compound of formula I with multiple X, L, E moiety substituted with multiple Groups A-J and R groups that are further substituted. Instant claim 5 refers to composition further comprising vast variety of ingredients selected from Groups (a)- (d). The Applicant is required to provide adequate written description and evidence of possession of the claimed genus, compound of Formula I and composition genus that aligns with the instantly claimed broad scope.
MPEP 2163 II states; “The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A) above), reduction to drawings (see i)(B) above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus (see i)(C) above)”. While applicants are not required to disclose every species encompassed by a genus, the description of the genus is achieved by the recitation of a representative number of species falling within the scope of the claimed genus. “A representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus” MPEP 2163 II.
For compound of formula I wherein E moiety is C6-C10 aryl (which encompass instant elected species), optionally substituted with one or more substituents selected from Group A,
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Instant specification does not disclose other C6-C10 aryl ring except phenyl. Instant specification only disclosed about 30 compounds comprising phenyl ring as E moiety (See [0677] Example 4, Table A6) wherein Group A is simple substituents, e.g. Me, OMe, halogen, CN, etc. which are not representative for the full scope of Group A. Instant spec does not disclose any embodiments wherein Group A is C3-C6 cycloalkyl group which may be optionally substituted with one or more substituents selected from Group E, , C(O)R1, C(O)ORI, C(O)NR8R9, NR8R9, C(R11)═N-OR12, a phenyl group, a five- to six- membered aromatic heterocyclic group {the phenyl group, and the five- to six- membered aromatic heterocyclic group may be optionally substituted with one or more substituents selected from Group F}.
For compound of formula I wherein E moiety is five to ten membered aromatic heterocyclic ring optionally substituted with one or more substituents selected from Group B, instant specification only disclose five working examples comprising C5 or C6 aromatic heterocyclic ring (See [707], Example 5, Table B2) wherein Group B is simple substituents (e.g. Me), which are not representative for the full scope of Group B.
Instant specification does not disclose sufficient variety of species to reflect the variation for E moiety comprising vast variety of Groups A- J in combination with X, L, R for compound of Formula I genus.
For composition further comprising other ingredient as recited in claim 5, instant specification does not disclose working examples comprising specific compound of Formula I in combination with the recited vast variety of Group (a) to (d) ingredient. A "laundry list" disclosure does not constitute a written description of every species in a genus because it would not "reasonably lead" those skilled in the art to any particular species. MPEP 2163.1.A. and Fujikawa v. Wattanasin, 93 ”.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed.Cir. 1996).
One of skill in the art would not recognize from the disclosure that the applicant was in possession of full scope of compound of Formula I and composition comprising compound of Formula I . The specification does not clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.
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 1-5 are 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.
Claims 1-3 recite vast variety of E moiety and R groups which “may be optionally substituted with one or more substituents” selected from Group A to Group J. The term “may be” render the claims indefinite since the resulting claims do not clearly set forth the metes and bounds of the patent protection desired.
Claims 1-3 recite various limitation with a curly brace { }, e.g. a phenyl group, a five- to six- membered aromatic heterocyclic group {the phenyl group, and the five- to six- membered aromatic heterocyclic group may be optionally substituted with one or more substituents selected from Group F}. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the limitation within curly brace is the narrower statement of the range/limitation. Claims 1-3 are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites
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. It’s not clear if the methoxy group or the cyclopropyl group is R1/R2 or is optionally substitute to the C1-C3 chain hydrocarbon group.
Claims 1-3 use commas between different substituents and Groups. It’s not clear how the substituents following the Groups are related to the Groups. The lack of clarity render the scope of claims 1-3 indefinite.
Claims 4 and 5 are rejected due to dependence 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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1-4 are rejected under 35 U.S.C. 102 (a)(1) and (a)(2) as being anticipated by Semba et al. (WO 2019/189287 A1, Applicant’s IDS dated 11/15/2023, family of US20210022338A1). The teachings of WO 2019/189287 written in Japanese is elaborated with teachings of US 20210022338.
Semba teaches alkyne phenylacetic acid compound of Formula I and composition thereof for arthropod pest control (See abstract, [0007]-[0016]; claims 1-12).
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wherein R represents a C1 - C6 chain hydrocarbon group etc. , X represents a C1 - C4 chain hydrocarbon group etc. , G represents a C1 - C4 chain hydrocarbon group etc. , and n is 0 , 1 , 2 , or 3.
Semba teaches compound species ( See Examples 1-10, Tables 6 ) that read on the core structure of instant claimed compound of Formula I wherein E is
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.
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Semba explicitly teaches compound 33 (See [0380]) that is encompassed by instant Formula I, wherein R1 and R2 are CH3, R5 is C3 hydrocarbon group.
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Regarding instant claim 4, Semba teaches composition for controlling harmful arthropod comprising the compound and an inert carrier(See [0246], claim 11).
Semba teaches compound species that falls within the scope of instant formula I . As such, Semba anticipates instant claimed invention.
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 1-5 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 C6-C10 aryl group and 5-6 five-membered heterocyclic 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 C6-C10 aryl or 5-6 membered aromatic heterocyclic ring. Walker teaches variety of substituents on the Z moiety, e.g. 4- Me-phenyl, 4- CF3-phenyl (See Table 3 and Table 5) that read on instant Group A.
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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 ).
Regarding claim 5, Walker teaches combining the compounds “with one or more other insecticides, fungicides, nematicides, bactericides, acaricides, growth regulators, chemosterilants, semiochemicals, repellents, attractants, pheromones, feeding stimulants or other biologically active compounds to form a multi-component pesticide giving an even broader spectrum of agricultural protection” (See page 140, lines12-16).
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Bou (WO2020/079111A1, Applicant’s dated IDS 11/05/2023) in view of Bushnell et al. (US 5,286,894, Applicant’s IDS dated 11/05/2023).
Bou disclosed methoxyacrylate derivatives, compound of Formula I, having fungicidal activity, and agrochemical compositions comprising aforementioned compound for use in agriculture or horticulture for controlling or preventing infestation of plants (See abstract, page 1, lines 13-35; page 2; page 62,Tables E, claims 1-15)
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Bou’s pyrazole moiety read on instant E moiety (5-6 membered heterocycles).
Bou teaches varies compound species comprising R1 and R2 (e.g. Me, methoxy) (See Table E):
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Bou teaches agrochemical composition comprising a fungicidally effective amount of a compound of formula (I) and an agrochemicals- acceptable diluent or carrier which may further comprise at least one additional active ingredient, e.g. fungicide (See claim 12-13 , 15).
The difference of Bou and instant claims are the O between phenyl and methoxyacrylate moiety.
Bushnell discloses fungicidal compounds of Formula (I) to (XV), and stereoisomers thereof, wherein X, Y and Z, which may be the same or different, are hydrogen, fluorine, chlorine or bromine atoms, or C1-4 alkyl, C2-5 alkenyl, C2-5 alkynyl, phenyl, C1-4 haloalkyl, C1-4 alkoxy, phenoxy, ... and wherein the phenyl moieties are optionally substituted with one or more fluorine, chlorine or bromine atoms, phenyl rings, C1-4 alkyl, C1-4 alkoxy; nitro, amino, nitrile, hydroxyl or carboxyl groups; ad R1 and R2, which may be the same or different, are C1-4 alkyl(See Col.2, lines 35-65).
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Bushnell teaches compound of formula XI to XV comprising
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that explicitly reads on instant combination of X and L , wherein X is CH and L is O. Bushnell also teach compound species wherein X is phenyl, e.g. compound 32 (See Table 1, Col. 5, 6) and major difference of Bushnell compound 32 and instant elected species are Me substitutes.
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Bushnell does not explicitly provide example of compound species wherein Y or Z are alkyl or halogen. However, Bushnell teaches the core structure with substitutes X, Y, Z could be alkyl, halogen (which read on the variables R1, R2, of instant formula I). As a whole, Bushnell suggests that alkyl (e. g. methyl group), may be used in the same location of core structure (i.e. R1 or R2 of claimed formula).
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 skilled in the art before the effective filing date of instant invention to further explore more fungicidal compound based on the combined teachings of Bou and Bushnell, and general knowledge of structural similarity/ bioisosteres replacement and pesticide/fungicide to arrive at instant application with reasonable expectation of success. Bou teaches methoxyacrylate moiety and multiple substituents on the phenyl ring. Bushnell teaches methoxyacrylate moiety directly attached to the phenyl ring. A skilled artisan would be motivated to explore more fungicide based on the combined teachings of Bou, Bushnell and general knowledge of structural similarity and pesticide/fungicide 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 1-5 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. Reference claims 4 reciting one or more fungicidal ingredients read on instant claim 5.
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 1-5 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.
Reference claim 11 reciting agricultural composition comprising one or more ingredients, e.g. fungicidal ingredients which reads on instant claim 5.
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 1-5 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.
Reference claim 8 reciting agricultural composition comprising one or more ingredients, e.g. fungicidal ingredients which reads on instant claim 5.
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.
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