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 .
Priority
This application filed on 09/27/2023, is a U.S. National Stage Application, filed under 35 U.S.C. § 371, of International Application No. PCT/EP2022/057880, filed 03/25/2022, which claims priority to EP 21207851.3, filed 11/11/2021, EP 21178372.5, filed 06/8/2021, and IN 202111013707, filed 03/27/2021.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 09/27/2023, complies with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, it has been placed in the application file and the information therein has been considered as to the merits, except where noted.
Status of claims
The preliminary amendment filed on 09/27/2023, that amended claims 3-12, and 14-15, is acknowledged. Claims 1-15 are pending.
Claim interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look to how the claim term is used in the prior art, which includes prior art patents, published applications, trade publications, and dictionaries. MPEP § 2111.01 (III). However, specific embodiments of the specification cannot be imported into the claims, particularly where the subject claim limitation is broader than the embodiment. MPEP § 2111.01(II).
Claim 12 recites “An agrochemical composition comprising a fungicidally effective amount of a compound according to claim 1.” Instant specification does not provide specific amount of the compound of claim 1. Rather the specification recites [pg. 14, ln. 24-28]:
The term "fungicidally effective amount" where used means the quantity of such a compound or combination of such compounds that is capable of producing an effect on the growth of fungi. Controlling or modifying effects include all deviation from natural development, such as killing, retardation and the like, and prevention includes barrier or other defensive formation in or on a plant to prevent fungal infection.
As such, under the broadest reasonable interpretation, the “fungicidally effective amount” is interpreted as any amount capable of producing an effect on fungi e.g., killing, controlling, preventing, etc.
Claim 13 recites “… further comprising at least one additional active ingredient and/or an agrochemically-acceptable diluent or carrier.” Instant specification does not provide specific active agents, rather, instant specification listed examples of possible active agent including a pesticide, fungicide, etc. [page 23]. Since the instant compound of claim 1 and the composition comprising the compound of claim 1 are directed to plants, the additional active ingredient is interpreted under broad reasonable interpretation as any agent produce biological effect on plants.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code [Pg. 39, ln. 26]. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objection
Claim 6 is objected to for the following informalities:
Claim 6 recites “…, wherein R3 is hydrogen, methyl, fluoro, chloro, bromo or cyano, methoxy. The underlined “or” appears to be incorrectly place before “cyano”. The “or” should be moved to after “cyano” and a comma added between “bromo” and “cyano”. Appropriate correction is required.
Rejections 35 U.S.C. 112(b)
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 3 and 14-15 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.
Claim 3 recites “… wherein R is hydrogen, chloro, methyl or methoxy, and preferably hydrogen. The terms preferably render the claim indefinite. As provided in MEMP 2173.05(d), “Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth.
Claim 14 recites “a method of controlling or preventing infestation of useful plants by phytopathogenic microorganisms, wherein a fungicidally effective amount of a compound according to claim 1, or a composition comprising this compound as active ingredient, is applied to the plants, to parts thereof or the locus thereof.
The term “useful plants” is a relative term. when a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree. Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367, 94 USPQ2d 1385, 1391 (Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp., 599 F.3d 1325, 1332, 94 USPQ2d 1321, 1326 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984). However, the instant specification does not provide standard for measuring degree of “useful”, and therefore, one of ordinary skill in the art is not apprised with the scope of the claim. The claim is not indefinite if the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree). See, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371-72, 112 USPQ2d 1188, 1193 (Fed. Cir. 2014) (observing that although there is no absolute or mathematical precision required, "[t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art"). Proper claim interpretation regarding a term of degree requires determining whether its usage within the context of the claim(s) and specification is clear. Even if the specification uses the same term of degree as in the claim, a rejection is proper if the scope of the term is not understood when read in light of the specification.
Claim 14 also recites “this compound”. Claim 14 is dependent of claim 1, which is directed to multiple compounds falling within the genus of Formula (I). The recitation is indefinite because the terminology “this compound” implies one compound, however, it’s unclear which compound of the compounds of Formula (I) the claim is referring to. Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000).
claim 15 recites “use of a compound according to claim 1 as a fungicide”, without reciting the steps of using the process. Claiming a process without setting forth any steps involved in the process render the claim indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 15 recites “use of a compound according to claim 1 as a fungicide.” The claims do not fall within at least one of the four categories of patent eligible subject matter because “Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975).
Claim Rejections - 35 USC § 102
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 1-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by J. Geist et al. (US PG Pub 2023/0348392 A1, published 11/02/2023, “Geist” cited in the PTO-892).
Prior Art Effect of Geist
The earliest possible effective filing date of the subject claims is that of priority document IN 202111013707, filed 03/27/2021 (see Priority section above). Geist is effective prior art under 35 USC § 102(a)(2) respecting the subject matter cited in this rejection as of the filing date of Geist priority document EP 20173172.6 (05/06/2020) because: (1) Geist is U.S. patent application publication; (2) names another inventor; and (3) the subject matter of Geist relied upon in this rejection is disclosed in Geist’s priority document EP 20173172.6 (05/06/2020). See MPEP § 2154.01; 35 USC § 102(d). Thus, the effective filing date of the subject matter relied upon in this rejection is 05/06/2020, which is before the claims’ earlies possible effective filing date of 03/27/2021. See MPEP § 2154.01; 35 USC § 102(d).
Geist discloses compounds of Formula (I) for controlling phytopathogenic microorganisms such as phytopathogenic fungi [0001], [0005]. Geist discloses species of Formula (I), e.g., compound I-069, [Pg. 71, Table 1, 9th comp]:
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310
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Compound I-069 anticipated claim 1 compound of Formula (I), wherein:
R1 is H; R2 is CH3; R3 is H; R4 is H; R5 is H; R6 is F; R7 is F; R8 is phenyl substituted with CH3; R9 is phenyl substituted with cyclopropyl and F; and L1 is bond.
Claim 2 is anticipated because L1 is bond.
Claim 3 is anticipated because R1 is H.
Claims 4 and 5 are anticipated because R2 is CH3.
Claim 6 is anticipated because R3 is H.
Claim 7 is anticipated because R4 and R5 are H.
Claim 8 is anticipated because R6 and R7 are F.
Claim 9 is anticipated because R8 is phenyl substituted with CH3.
Claim 10 is anticipated because R9 is phenyl substituted with cyclopropyl and F.
Claim 11 is anticipated by Geist’s compound I-068 [Pg. 72, Table 1, 8th comp.]:
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322
640
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Geist’s compound I-068 anticipates claim 1 wherein:
R1 is H; R2 is CH3; R3 is H; R4 is H; R5 is H; R6 is F; R7 is F; R8 is phenyl substituted with Cl and CH3; R9 is phenyl substituted with methyl; and L1 is bond.
Claim 11 is anticipated because R9 of compound I-068 is a phenyl substituted by single substituent, methyl.
With regard to claims 12 and 13, Geist discloses a composition comprises a fungicidally effective amount of the compound(s) of formula (I). The term “effective amount” denotes an amount, which is sufficient for controlling harmful fungi on cultivated plants or in the protection of materials and which does not result in a substantial damage to the treated plants, wherein the composition comprises water as carrier (aqueous solution). [1160], [1161]. Water meets the term “agrochemically-acceptable carrier, see instant specification [Pg. 21].
With regard to claims 14 and 15, Geist discloses a method for controlling phytopathogenic fungi which comprises the step of applying at least one compound of formula (I) as defined herein or a composition as defined herein to the plants, plant parts, seeds, fruits or to the soil in which the plants grow. [0103].
Conclusion
Claims 1-15 are rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANAHIL MIRGHANI ALI ABDALHAMEED whose telephone number is (571)272-1242. The examiner can normally be reached M-F 7:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.M.A./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622