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 .
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 (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 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.
Claim(s) 1-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pahutski et al.(WO 2020112390 A1; 06/04/2020). Pahutski et al. prior art Table 1 compounds 79 through 220 render instantly claimed compounds for Formula One in instant claim 1 including instant specific compounds instantly claimed 8 compounds F1 through F121 obvious.
Pahutski et al. teach specifically compounds:
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554
821
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while instant claim 8 make claim to compounds:
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634
630
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WO 2020112390 teach
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218
560
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where L is -CH2- or -CH2CH2- is bonded between the aromatic ring and the N atom of the chemical compound rendering the instant obvious. While instantly claimed invention there exist a direct single bond between the phenyl ring and nitrogen atom. In the absence of a showing of an unexpected result for instant compounds differing only in the lack of a single -CH2- group would render instant claims obvious over prior art: WO 2020112390 A1 due to chemical structure similarity differing entirely only by a single “methylene” group.
Pahutski et al.’s abstract teach that their compounds are used in methods of controlling pests. Pahutski et al. at pages 5,83-84 teach that the pesticidal compounds can be combined with diluents, carriers. Pahutski et al. at page 5 lines 23 – page 6 line 4. teach the compounds are applied to plants, seeds to control pest. Pahutski et al. at page 26 lines 17- 33 teach the compounds are applied to soil.
MPEP 2144.09 Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers) [R-01.2024]
“In the context of US patent law and the Manual of Patent Examining Procedure (MPEP), a methylene group is part of the prior art analysis and does not, by itself, make a single bond obvious. Its significance depends on the specific chemical structure and whether one skilled in the art would have been motivated to modify a known compound to include it, with a reasonable expectation of success.
What is a methylene group? A methylene group is a part of a molecule that consists of a carbon atom bonded to two hydrogen atoms and connected to the rest of the molecule by two single bonds. The formula is written as
−CH2−negative cap C cap H sub 2 minus −𝐶𝐻2−.
The obviousness test
An obviousness rejection is made when a claimed invention, including a chemical compound, would have been obvious to a person of ordinary skill in the art (POSA) at the time of the invention. For chemical compounds, a prima facie case of obviousness is often established when there are very close structural similarities between the claimed compound and prior art compounds, and they share similar utilities.
How a methylene group fits into the obviousness test
Motivation to modify: The key to obviousness is whether a POSA would have had a motivation or rationale to modify a known prior art compound to arrive at the claimed invention. Adding or removing a methylene group is a common structural variation in organic chemistry.
Predictable results: The rejection is supported if the modification would have yielded a predictable result. This is often the case when a methylene group is simply added to extend an alkyl chain, for example.
Unexpected results can counter a rejection: An applicant can overcome an obviousness rejection by showing that the modification produced an unexpected and improved result. This is the argument that a methylene group substitution was not obvious. For example, in In re Lamberti (1976), the court considered whether a prior art reference disclosing a compound with "at least one methylene group" attached to a sulfur atom would make it obvious to a POSA to create compounds with multiple or asymmetrical alkyl groups. “
Telephonic Inquiry
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/ALTON N PRYOR/Primary Examiner, Art Unit 1616