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
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6 October 2023 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner. See attached copy of PTO-1449.
Status of Application
2. The instant application is a national stage entry of PCT/EP2022/058445 filed 30 March 2022. Claims 1-17 are currently pending and examined on the merits within.
Claim Rejections – 35 U.S.C. 112(a)
3. 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
4. Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for controlling undesirable plant growth, does not reasonably provide enablement for preventing undesirable plant growth. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims.
The applicant’s attention is drawn to In re Wands, 8 USPQ2d 1400 (CAFC1988) at 1404 where the court set forth eight factors to consider when assessing if a disclosure would have required undue experimentation. Citing Ex parte Forman, 230 USPQ 546 (BdApls 1986) at 547 the court recited eight factors: (1) the nature of the invention; (2) the state of the prior art; (3) the relative skill of those in the art; (4) the predictability or unpredictability of the art; (5) the breadth of the claims; (6) the amount of direction or guidance presented; (7) the presence or absence of working examples; and (8) the quantity of experimentation necessary.
Nature of the invention: The claimed invention is a method of controlling or preventing undesirable plant growth wherein a herbicidally effective amount of a compound of formula (I) is applied to the plants, to parts thereof or to the locus thereof.
The state of the prior art: There are no methods described in the prior art or in the specification to completely prevent undesirable plant growth.
The relative skill of those in the art: The relative skill of those in the herbicidal treatment arts is high, requiring advanced education and training.
The predictability or unpredictability of the art/breath of the claims: The instant claimed invention is highly unpredictable since one skilled in the art would recognize the breadth of the instant claims encompass 100% prevention of any type of undesired plant growth for any amount of time. Weeds come in various forms and types and grow within various climate and soil conditions. Thus it would be highly unpredictable that a formulation would 100% prevent growth of any type of weed any time of year in any type of environment. The amount of direction or guidance presented, and the presence or absence of working examples/quantity of experimentation: It has been established that “the amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art.” In re Fisher, 427 F.2d 833, 839 166 USPQ 18, 24 (CCPA 1970). Although the specification showed 100 value damage to most species tested with compound 14, it is noted that not all compounds were tested, not all species received the 100 total damage result, and the environment was controlled to watering twice daily and testing after 13 days. What happens after a longer period of time? Would the weeds still grow? Would this occur in any environment? Does this occur for all species of weeds? Are the same results achieved for every variation or the compound of Formula 1? Is there need for reapplication? Given that the instant claims encompass complete prevention of undesirable plant growth, one skilled in the art would undertake a novel and extensive research program to show that the instant claimed compositions prevent undesirable plant growth. There are no teachings in the prior art to completely prevent such dysfunctions. Applicant fails to provide information sufficient to practice the claimed invention, absent undue experimentation. The burden of enabling the prevention of a disease would be much greater than that of enabling the treatment or reduction of such conditions. The specification does not provide guidance as to how one skilled in the art would accomplish the objective of preventing such conditions, or how plants could be kept from every being susceptible to these conditions. There is no guidance provided as to a specific protocol to be utilized in order to show the efficacy of the presently claimed active ingredients for preventing the above claimed conditions, thereby presenting an undue burden of unpredictable experimentation necessary to practice the claimed invention.
Genentech, 108 F.3d at 1366, states, “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion” and “patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.”
Therefore, in view of the Wands factors as discussed above, particularly the unpredictability of the art and the breadth of the claims, Applicants fail to provide information sufficient to practice the claimed invention for a method of prevention of undesirable plant growth.
Claim Rejections – 35 U.S.C. 103
5. 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.
6 Claim(s) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (U.S. Patent Application Publication No. 2018/0230139) in view of Lian et al. (U.S. Patent Application Publication No. 2023/0072860).
Regarding instant claims 1-7 and 14, Liu et al. teach herbicides of a uracil compound containing isooxazoline ring. The compound has very good herbicidal activity to control weeds. See abstract. The compound has the structure of
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232
332
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wherein R1=CF3, R2= CH3, R5, R6, R7 and R8 = H, R10 = CH3 and R3 and R4 are halogen or hydrogen. See paragraphs [0007-0024] and Table 1.
Regarding instant claim 8, if R8 is CO2R11, then R11 is H, C1-C6 alkyl, C1-C6 haloalkyl, etc. See paragraphs [0019 and 0022].
Regarding instant claims 9-10, if R9 or R10 are CONR13R14 then R13 and R14 are selected from H, C1-C4 alkyl, etc. See paragraphs [0011 and 0014].
Regarding instant claim 11, if R7, R8, R9 or R10 are CH2OR12, then R12 can be H, C1-C6 alkyl etc. See paragraphs [0010-0011 and 0013].
Regarding instant claim 12, if R7, R8, R9 or R10 are CO2R11, then R11 is C-C6alkyl unsubstituted or substituted following groups benzyl, furan methyl, etc., which are substituted with 1-4 substituents selected from C1-C8alkyl, halogen, etc. See paragraph [0012].
Regarding instant claim 13, if R9 or R10 are CONR13R14 then R13 and R14 are selected from H, C1-C4 alkyl, etc. Additionally R9 and R10 may comprise alkylsulfonyl groups. See paragraphs [0011].
Regarding instant claim 15, the compositions comprise a solid or liquid diluent. See paragraphs [0100-0101].
Regarding instant claims 16-17, Liu et al. tach a method of controlling weeds by applying the compound. See claim 10.
Liu et al. do not teach a nitrogen in the center ring.
Lian et al. teach isoxazoline oxime formate compounds in herbicide compositions. See abstract. Compounds 171-173 read on the compound of Formula 1, wherein R1 = H, R2 = C1 alkyl, R17 = CF3 a C1 haloalkyl, R4 = Cl or CN, R3, R5, R6 =H, R7 = CH3 and R8 = COONCH(CH3)2.
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See Table 1, page 53.
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to insert a nitrogen into the center aromatic ring of Liu et al. and maintain herbicidally effective compositions because Lian et al. teach structurally similar core compounds maintaining herbicidal effectiveness when the center ring contains a nitrogen. It would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to add a sulfonyl group to the substituent of R7 or R8 because Liu et al. teach the herbicidal effectiveness of sulfonyl groups attached to various substituents within the compound of Formula 1.
Conclusion
7. No claims are allowed at this time.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WORSHAM whose telephone number is (571)270-7434. The examiner can normally be reached Monday-Friday (8-5).
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/JESSICA WORSHAM/Primary Examiner, Art Unit 1615