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
Claims 1-9 of G. Hodges et al., App. No. 18/550,336 (Jun. 8, 2021) are pending and provisionally rejected.
Withdrawal Objections to the Specification
Objection to the specification on the grounds that, in every instance, the structures of 2-chloroacroleins, 2-chloropropenols and chloroacetyl chloride are incorrectly depicted throughout the specification is withdrawn in view of Applicant’s amendments.
Withdrawal Rejections 35 U.S.C. 112(b)
Rejection of claims 2 and 3 under 35 U.S.C. 112, as indefinite, is withdrawn in view of Applicant’s amendments.
Withdrawal Claim Rejections - 35 USC § 112(d)
Rejection of claim 2 under 35 U.S.C. 112(d) as being of improper dependent form
Withdrawal Claim Rejections - 35 USC § 102 (AIA )
Rejection of claim 7 under 35 U.S.C. 102(a)(1)/(2) as being anticipated by J. Li et al., US 2014/0018548 (2014) (“Li) is withdrawn in view of Applicant’s amendment.
Rejection of claim 9 under 35 U.S.C. 102(a)(1)/(2) as being anticipated by R. Bader et al., US 5,430,188 (1995) (“Bader”) is withdrawn in view of Applicant’s amendment.
Non-Statutory Double Patenting Rejections
The non-statutory 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 non-statutory 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).
Terminal Disclaimer
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.
Provisional Non-Statutory Double Patenting Rejection over R. Hodges, US 18/551,080 (2022), published as US 2024/0190813 (2024)
Claims 1-9 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over conflicting claims 1 and 2 of R. Hodges, US 18/551,080 (2022), published as US 2024/0190813 (2024). The instant and conflicting claims have the same patent term filing date. However, the rejection is provisional because the conflicting claims have not been patented.
Conflicting claims 1 and 2 respectively claim the following compounds (I) and (Ia):
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(I) (Ia)
These compounds are reactants of instant independent method claims 1 and 8 (i.e., instant formulae (II) and (V)). The conflicting specification teaches the present technology is useful in production of chemicals known as starting materials for herbicides the S-Metolachlor (S-MOC) and metolachlor. See US 2024/0190813 (2024) at page 1, [0002]. The conflicting specification further teaches that compounds (I) and (1a) are useful to produce (S)-NAA (claim 1 formula (I)) according to the same method as instantly claimed.
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US 2024/0190813 (2024) at page 1, [0004].
Those portions of the specification which provide support for the conflicting claims may be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application. MPEP § 804(II)(B)(1) (citing In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970)). The court in Vogel recognized ‘that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,’ but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. MPEP § 804(II)(B)(1). In this regard, it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. MPEP § 804(II)(B)(1) (citing AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014); Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003)).
US 18/551,080 specification’s disclosed utility and specification portions that provide support for compounds (I) and (Ia) teach that their only use is as reactants to produce (S)-NAA or racemic NAA (which in turn can be converted to (S)-metolachlor or racemic metolachlor) according the same method claimed in instant claims 1 and 8. Here, properly considering the conflicting specification’s disclosed utility, instant method claims 1-9 are patentably indistinct from (an obvious variation of) conflicting claims 1 and 2 because instant claims 1-9 recite a method directed to the only disclosed use for the compounds of conflicting claims 1 and 2.
As noted in Sun Pharm. Indus., Ltd. v. Eli Lilly & Co, the holding of Geneva and Pfizer, that a ‘claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use,’ extends to any and all such uses disclosed in the specification of the earlier patent; indeed, both cases recognized,
[i]t would shock one's sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, . . . and then prevent the public from making any beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharm. Indus. v. Eli Lilly & Co., 611 F.3d 1381, 1387 (citations omitted).
The Examiner notes that Sun, Geneva and Pfizer involved the specific factual framework of claimed method of using a pharmaceutical compound/composition versus a conflicting claim to the compound itself. However, the legal concept is applicable here (in non-pharmaceutical context) where the examined claims are directed to the only disclosed method of using the conflicting claim’s composition of matter.
Applicant’s Argument
Applicant argues that that the reference application US 18/551,080 remains pending and the claims therein remain subject to amendment and further examination. Accordingly, the present rejection is necessarily provisional in nature.
Examiner Response
In response, conflicting claims 1 and 2, pending as of this Office action’s mailing date, still respectively claim the following compounds (I) and (Ia). Furthermore, the instant and conflicting claims have the same patent term filing date. If both the application under examination and the reference application have the same patent term filing date, the provisional non-statutory double patenting rejection made in each application should be maintained until it is overcome. MPEP § 804(I)(B)(1)(b)(ii).
Applicant’s Argument
Applicant further argues that reference application US 18/551,080 is directed principally to compounds of formula (I)/(la) and methods for preparing those intermediate compounds. Reply at page 12. Applicant argus that in contrast, the presently pending claims are directed to methods for producing distinct downstream products, including NAA, (S)-NAA, metolachlor, and s-metolachlor, from the intermediates prepared according to the presently claimed methodologies. Id.
Applicant argues that the instant claims therefore require additional synthetic transformations and reaction steps not recited in the claims of the cited application. Id. Applicant argus that the synthetic methods of instant claims 7 and 9 recite limitations are absent from the conflicting claims. Id. Applicant further argues that the Office has not established that the presently claimed downstream synthetic methods constitute merely an obvious variant of the claims of the cited application. Id. Applicant argues that while the cited application may disclose intermediates that could potentially be used in subsequent chemistry, the presently pending claims are directed to specific downstream transformations and end-product syntheses not recited in the cited claims themselves. Id.
Examiner Response
In response, as stated in Sun Pharm. Indus., Ltd. v. Eli Lilly & Co
Thus, the holding of Geneva and Pfizer, that a ‘claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use,’ extends to any and all such uses disclosed in the specification of the earlier patent.
Sun Pharm. Indus. v. Eli Lilly & Co., 611 F.3d 1381, 1387 (citations omitted) (emphasis added).
Of course, any claimed method of using an earlier claimed compound will necessarily involve additional steps (in this case Applicant argues additional synthetic steps in the instant claims).
Here it is the utility disclosed in reference application US 18/551,080’s specification that is properly cited against the instant claims to support the obviousness double patenting rejection. MPEP § 804(II)(B)(1). That is, the conflicting specification teaches that claimed compounds (I) and (Ia) are useful to produce (S)-NAA (claim 1 formula (I)) according to the same method as instantly claimed. US 2024/0190813 (2024) at page 1, [0004]. Further this is the only disclosed use for the conflicting compounds in the conflicting specification. Also, the conflicting compounds have been found novel and non-obvious. See prosecution file of reference application US 18/551,080. As such, there appears to be no other disclosed use in the published art aside from that instantly claimed and disclosed in the conflicting specification.
Subject Matter Free of the Art of Record
Subject to the double patenting rejection, claims 1-9 are free of the art of record.
It is first noted that claim 1 draws only one the (S)-enantiomer of formula (I) but does not specify a particular optical purity. The specification teaches that the (S)-enantiomer of metolachlor (i.e., (S)-metolachlor) is approximately twenty times more active than the (R)-enantiomer. Specification at page 1, lines 2-3. The specification further teaches that starting from enantiomerically pure formula (II) (i.e., chiral (S)-1-methoxy-2-propylamine (99% e.e.), analysis of the chiral reaction showed only one enantiomer, corresponding to (S)-imine of formula (I). Specification at page 22. In view of claim 1’s drawing of only a single enantiomer in the more preferred (S)-configuration, the broadest reasonable interpretation of claim 1, consistent with the specification, is that claim 1 requires use of the (S) enantiomer of formula (II) in some enantiomeric excess over the racemic mixture. MPEP § 2111. Thus, for example, one of skill practicing claim 1 with racemic formula (II) would not infringe claim 1. One the other hand, one of skill practicing claim 1 with formula (II) enriched in the (S)-enantiomer would infringe claim 1.
The closest art of record is T. Neves et al., WO 2016/153374 (2016) (“Neves”). Neves teaches the following synthesis of (S)-metolachlor, where instantly claimed formula (I) (also referred to in the art as (S)-NAA) is prepared in a first condensation of methoxyacetone with the aniline, followed by asymmetric hydrogenation.
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Neves at page 1, lines 15-20. Neves differs from claims 1 and 8 in the identity of reactants used to prepare NAA. That is, Neves does not teach the claim 1 cyclo-condensation of formula (II) with formula (III) or the corresponding claim 8 racemic version.
The closest prior art to the instant claim 1 cyclo-condensation of formula (II) with formula (III) (and the corresponding claim 8 racemic version) is N. De Kimpe, Acetone cyclohexylamine, in e-EROS Encyclopedia of Reagents for Organic Synthesis, 1-4 (2001) (“De Kimpe”).
De Kimpe teaches that direct condensation of excess acetone N-isopropylimine with methyl vinyl ketone is a suitable method for the synthesis of 3-methyl-2-cyclohexenone via subsequent Michael addition, intramolecular aldol condensation, and hydrolysis (eq 21).
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De Kimpe at page 3, col. 1 (citing eq. 21). However, motivation to combine De Kimpe with Bader and/or Li is lacking and the direct combination still fails to teach the claim 1 reaction. In fact, claim 1 formula (II) (and its claim 8 racemic version) appears to be novel. As such, independent claims 1 and 8 (and their dependents) are not obvious in view of the above cited art.
Conclusion
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.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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