DETAILED ACTION
Notice of AIA Status
The instant application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ).
If the status of the application as subject to AIA or pre-AIA is incorrect, any correction of the statutory basis (e.g., changing from AIA to pre-AIA ) for a rejection under 35 U.S.C. §§ 102 and/or 103 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.
Status of the Claims
The listing of claims filed 15 October 2024 has been examined.
Claims 1–12 are pending. Claims 3–5 and 7–11 are amended.
Priority
The instant application was filed 13 October 2023; is a national stage application of PCT/EP2022/060093, filed 14 April 2022, and claims priority to India 202111017793, filed 16 April 2021. Acknowledgment is made of applicant’s claim for foreign priority and a copy of the priority document has been received.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 13 October 2023 is acknowledged and has been considered.
Objections to the Specification
The specification is objected to because it refers to Tables 1–57 (pp.66–68) without disclosing the corresponding Tables 1–57 in the specification.
Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 112
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 1–12 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
A broad limitation together with a narrow limitation that falls within the broad 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),(d).
(i) Claims 1, 5, 7, and 8 recite definitions for the variables of formula (I), etc., and certain variables are defined with a broad limitation followed by a narrower statement of the limitation in a parenthetical. For example, claim 1 recites: “R4 is . . . heteroaryl (which is either a 5 or 6 membered monocyclic or a 8, 9, or 10 membered bicyclic).” The term “heteroaryl” is a broad limitation and the term “5 or 6 membered monocyclic or a 8, 9, or 10 membered bicyclic.” It is unclear if the narrow recitations inside the parentheticals are limiting.
Claims 2–4, 6, and 9–12 incorporate by reference to one or more of claims 1, 5, 7, and 8 the indefinite recitations without correcting the indefiniteness issues.
(ii) Claim 11 recites: “A plant propagation material, such as a seed . . .”; which includes a broad limitation [plant propagation material] followed by a narrower limitation [seed]. It is unclear if the narrow recitation is limiting. MPEP 2173.05(d).
Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 112
The following is a quotation 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 1–12 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. The claims contain subject matter that was not described in the Specification in such a way as to reasonably convey to one of ordinary skill in the art that Applicant, at the time the application was filed, had possession of the claimed invention.
In Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc), the Federal Circuit stated “the hallmark of written description is disclosure.” A specification adequately describes an invention when it “reasonably conveys to those skilled in the art the inventor had possession of the claimed subject matter as of the filing date.” (Id.). “A ‘mere wish or plan’ for obtaining the claimed invention is not adequate written description.” Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011).
What is required to meet the written description requirement “varies with the nature and scope of the invention at issue, and with the scientific and technologic knowledge already in existence.” Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). In Ariad, the Federal Circuit explained what is required to meet the written description requirement:
This inquiry, as we have long held, is a question of fact. Ralston Purina, 772 F.2d at 575. Thus, we have recognized that determining whether a patent complies with the written description requirement will necessarily vary depending on the context. Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005). Specifically, the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Id. For generic claims, we have set forth a number of factors for evaluating the adequacy of the disclosure, including “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. at 1359.
(Ariad, at 1351).
The written description of a genus, such as a chemical genus, “requires a precise structure, formula, [or] chemical name” of the claimed subject matter sufficient to distinguish it from other materials. Regents of the Univ. of Cal. v. Eli Lilly & Co., 199 F.3d 1559, 1568 (Fed. Cir. 1997). The Federal Circuit commented on that case in the Ariad decision:
We held that a sufficient description of a genus instead requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus. Id. at 1568-69. We explained that an adequate written description requires a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials. Id. at 1568 (quoting Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993)). We have also held that functional claim language can meet the written description requirement when the art has established a correlation between structure and function. See Enzo, 323 F.3d at 964 (quoting 66 Fed. Reg. 1099 (Jan. 5, 2001)). But merely drawing a fence around the outer limits of a purported genus is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.
(Ariad, at 1350).
The factors outlined in the above Federal Circuit cases are analyzed with respect to the claimed invention in turn below.
(A) The nature and scope of the claim invention in view of the specification: the claimed invention relates generally to the pesticide art and more specifically to compounds of Formula (I) [below left], compositions thereof, and method of using the compounds to as a pesticide. Variable Q is selected from the formulae (IIa) and (IIb) [below right].
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The specification discloses compounds of Formula (I), particularly Formula (I-a). (Spec., pp.32–64 (Table M)). The scope of Formula (I) includes thousands to millions of compounds.
In each example disclosed in the specification, the compound corresponds to Formula (I) when variables p1, p2, q1, and q2 = 1. (Id.).
The specification does not disclose any examples of compounds in which variables p1, p2, q1, and q2 = 0 or 2; and the specification does not provide details for preparing such compounds.
(B) The extent and content of the prior art: Examiner is not aware of prior art that shows the claimed but not described subject matter would have been known or obvious to one of ordinary skill in the art. Accordingly, Applicant’s disclosure is critical to show possession.
(C) The maturity of the science or technology: compounds of Formula (I) appear to be novel based on the definition of variable Q, which can be formulae (IIa) or (IIb).
(D) The predictability of the aspect at issue: chemical arts are generally recognized as unpredictable. In re Fisher, 427 F.2d 833, 839 (CCPA 1970). The art requires each potential pesticide to be assessed for activity. The more unpredictable an area is the more specific disclosure is necessary to satisfy the statutory requirement. In this case, there is no evidence suggesting the claimed invention is more predictable than the chemical art is generally.
The question of written description
When the above factors and the evidence of record are considered as a whole, the Specification does not adequately describe a representative number of species to support the claimed invention to a compound of Formula (I) in which variables p1, p2, q1, and q2 = 0 or 2. Accordingly, the Specification would not reasonably convey to those skilled in the art the inventor had possession of the claimed subject matter as of the filing date.
Examiner recommends amending the claims such that p1, p2, q1, and q2 = 1.
Conclusion – Allowable Subject Matter
No claims are allowed. Claims 1–12 are free of the prior art and would be allowable if the issues above are resolved.
WO2021/053161 appears to be the closest prior art with respect to the instant claims. The instant claims and prior art disclosure are distinct because there is no overlap between variables Y and A in the instant claims and variables Y and A in the disclosures of WO2021/053161.
Copending U.S. Pat. App. Serial Nos. 18/553,466 and 17/761,402 have been considered for double patenting. The conflicting claims are distinct because there is no overlap between variables Y and A in the instant claims and variables Y and A in the claims of the copending applications.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Nolan at (571) 272-2480. The examiner can normally be reached Monday through Friday between 9:00–5:00.
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/JASON M. NOLAN/Patent Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623