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 .
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed on 01/04/2024 and 01/05/2024 have been considered by the Examiner inasmuch as foreign documents have been submitted into the file wrapper in English.
Claim Status
The preliminary amendment filed October 20, 2023 has been entered. Claims 2-15 are canceled. Claims 16-28 are new. Thus, claims 1 and 16-28 as amended are examined on the merits herein.
Claim Rejections - 35 USC § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
(I) Claim 17 is 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.
Regarding claim 17, the claim recites general formula (III) on pg. 7, line 1; and further recites the limitation of R2 in claim 17, pg. 7, line 19 and R3 in claim 17, pg. 8, line 3.
The Examiner respectfully notes general formula (III) as recited in claim 17, pg. 7, line 1 does not contain either "R2" or “R3” as discussed above.
However, the Examiner respectfully notes claim 16, line 3, recites general formula (II) wherein "R2" is recited as connected to the quaternary nitrogen atom, and wherein R2 is selected from the group consisting of and including an unsubstituted C1-alkyl, see claim 16, pg. 5, line 10. Additionally, general formula (II) also recites "R3" as connected to the quaternary nitrogen atom, and wherein R3 is selected from the group consisting of and including an unsubstituted C1-alkyl, see claim 16, pg. 5, line 17.
The Examiner further respectfully notes R2 and R3 as recited in general formula (II) of claim 16, line 3 corresponds to the exact location of two CH3 groups connected to the quaternary nitrogen atom of general formula (III) of claim 17, pg. 7, line 1.
Therefore, in view of the foregoing reasons above, claim 17 is unclear and indefinite as to what R2 and R3 are supposed to represent within general formula (III) of claim 17; for example (i) is it the CH3 group as recited in formula (III) of claim 17 or (ii) is it the limitations of R2 as listed in claim 17, pg. 7, line 19 - pg. 8, line 2; and/or the limitations of R3 as listed in claim 17, pg. 8, lines 3-9.
In the interest of compact prosecution, the Examiner will reasonably interpret that R2 and R3 are each CH3 as recited in formula (III) of claim 17, pg. 7, line 1 as discussed above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
(II) Claim 24 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 24 recites the limitation R2 is hydrogen, in line 1; and R3 is hydrogen, in line 2.
However, the Examiner respectfully notes that claim 24 depends from claim 1, and wherein claim 1, line 21, strikethrough the limitation R2 is hydrogen; and in claim 1, pg. 4, line 3, strikethrough the limitation R3 is hydrogen.
Thus, in view of the foregoing reasons above Applicant is expanding the scope of R2 and R3 within claim 24 from what is recited in claim 1 as discussed above.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
(I) Claims 1, 16-25 and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Suyou et al. (Published 21 September 2011, CN-102190694-A, IDS filed 01/05/2024; English Machine Translation, PTO-892) in view of Luo et al. (Published 08 September 2020, CN-111632061-A, IDS filed 01/05/2024, English Machine Translation, PTO-892).
Regarding claims 1, 16-25 and 27-28, Suyou teaches N-amino substituted alkyl-spinosad derivatives of general formula I, salts thereof and a preparation method thereof. Suyou teaches said derivatives have insecticidal and miticidal activities and provide the application of said spinosad derivatives in protecting crops and preventing and treating sanitary pests and garden pests. See English Machine Translation, pg. 1, abstract.
Suyou exemplifies a method of preventing and treating sanitary and garden pests by inhibiting Acarina mites by applying to the locus of the mites a concealed, inactivating amount of a compound of general formula (I) (e.g. controlling a pest, required in claim 27), see English Machine Translation, pg. 6, paragraph 8.
Suyou exemplifies a method of protecting crops by inhibiting leidopteran-susceptible insects by applying to a plant an insect-inactivating effective amount of a compound of general formula (I) (e.g. protecting a plant against a plant pest, required in claim 28), see English Machine Translation, pg. 6, paragraph 8.
Suyou teaches the compound of general formula (I) which is depicted as,
PNG
media_image1.png
334
649
media_image1.png
Greyscale
, see Suyou, pg. 2, paragraph [0010].
Suyou teaches R1 is chosen from and including C1-C5 alkyl (e.g. R2, required in claim 1, line 21 and claim 24), see English Machine Translation, pg. 4, summary of invention, line 4.
Suyou teaches R2 is H, see English Machine Translation, pg. 4, summary of invention, line 5; and R3 is chosen from and including an aliphatic hydrocarbon acyl, see English Machine Translation, pg. 4, summary of invention, line 9.
The Examiner respectfully notes the teachings of R1, R2, and R3 of Suyou above correspond to the limitation of R1 is –(CH2)n-O-C)O-R1b, wherein n is 2 and R1b is C(R2b)3, wherein each R2b is hydrogen or C1-C20 alkyl, as required in claim 1, lines 5-13; claim 16, lines 6-13; claim 17, pg. 7, lines 4-11; claims 21-23; and claim 25, pg. 11, the compound recited in line 1.
Suyou teaches R6 is a substituted 2-5 carbon chain alkyl group and exemplifies an ethyl and a 1-butenyl, see pg. 5, line 3.
Suyou teaches A-B is -CH2CH2- or -CH=CH- (e.g. the dashed line is a single or double bond, as required in claim 16, line 5), see pg. 5, line 4.
Suyou teaches R5 is hydrogen or methyl (e.g. R5, as required in claim 16, pg. 5 line 27 and claim 18, line 2), see pg. 5, line 3.
Suyou teaches R4 is depicted as
PNG
media_image2.png
104
244
media_image2.png
Greyscale
, see, Suyou, pg. 2, paragraph [0014]; wherein each of R10, R11 and R12 are independently chosen from and including hydrogen, methyl, ethyl, propyl, isopropyl, allyl and other alkyl groups (e.g. R8, R9, R10, as required in claim 16, pg. 6, lines 5-6, lines 12-13 and lines 19-20; and claims 19-20), see English Machine Translation, pg. 5, lines 1-2.
The Examiner respectfully notes general formula (I) of Suyou as depicted above teaches a methyl group which corresponds to R11 of general formula (II) of the instant claims in claim 16, pg. 6, lines 26-27.
Additionally, the Examiner respectfully notes general formula (I) of Suyou as depicted above teaches a hydrogen at both locations corresponding to R6 and R7 of general formula (II) of the instant claims in claim 16, pg. 5, lines 28-29 and claim 18; and in general formula (III) of claim 17, pg. 8, lines 14-15.
Although, Suyou does not teach general formula (I) when (a) general formula (I) comprises a quaternary nitrogen atom having an unsubstituted C1-C6 alkyl as required in R3 of general formula (I) of the instant claims in claim 1, pg. 4, lines 3-4; claim 16, pg. 5, line 17; claim 18, pg. 8, lines 3-4; claim 24, line 2; and claim 25, pg. 11, line 1; or (b) wherein R6 is an unsubstituted ethyl, as required in R4 in claim 16, pg. 5, line 24; claim 17, pg. 8, line 10; claim 18, line 1; and claim 25, pg. 11, line 1.
However, in the same field of endeavor of N-amino substituted alkyl-spinosad derivatives, with respect to limitations (a)-(b), Luo teaches a spinosad derivative having the general formula (I), see English Machine Translation, pg. 7, disclosure of the invention, paragraphs 1-2.
Luo depicts general formula (I) as,
PNG
media_image3.png
275
430
media_image3.png
Greyscale
, see Luo, pg. 3, paragraph [0013]; wherein R1 is selected from the following groups including (II) and (III), see English Machine Translation, pg. 7, disclosure of the invention, paragraphs 1-2.
Luo depicts group (II) as,
PNG
media_image4.png
104
128
media_image4.png
Greyscale
, see Luo, pg. 3, paragraph [0014]; wherein R8 and R9 are each independently selected from the group consisting of and including an alkyl of 1 to 20 carbon atoms, see English Machine Translation, pg. 7, disclosure of invention, line 8; and depicts group (III) as,
PNG
media_image5.png
91
153
media_image5.png
Greyscale
, see Luo, pg. 3, paragraph [0014]; wherein R10 and R12 are each independently selected from and including an alkyl of 1 to 20 carbon atoms, see English Machine Translation, pg. 7, disclosure of invention, line 16.
The Examiner respectfully notes that Luo teaches a spinosad derivative comprising a substituted quaternary nitrogen, wherein said quaternary nitrogen comprises two C1-C20 alkyls; where the nitrogen atom is connected to the required sugar moiety of general formula (I) of instant claim 1, line 2; and wherein said sugar moiety is connected through an ether bond to the C17 carbon of the spinosyn compound backbone as required in general formula (I) of instant claim 1, line 4.
Thus, the Examiner respectfully notes the teachings of Luo meet all structural limitations of R3 which is connected to the quaternary nitrogen of general formula (I) of the instant claims as required in claim 1, line 2 and lines 21-22; as well as on pg. 4, lines 3-4.
Luo also teaches R2 is selected from and including ethyl, see English Machine Translation, pg. 8, line 3. The Examiner notes R2 of general formula (I) of Luo is located at the identical position corresponding to R4 of general formula (II) of the instant claims as required in claim 16, pg. 4, line 3 and pg. 5, line 24; as well as general formula (III) of the instant claims as required in claim 17, pg. 7, line 1 and pg. 8, line 10; R4 of claim 18; and R4 of the compound of claim 25, pg. 11, line 1.
It would have been prima facie obvious to one of ordinary skill in the art at the invention’s effective filing date to have incorporated limitations (a)-(b) as taught by Luo above into the compounds of general formula (I) of Suyuo above as within the scope of the artisan as combining prior art elements according to known compounds to yield predictable results; as Luo teaches the structural requirements of limitations (a)-(b) as discussed above as simple substitutions known to spinosad derivatives which is discussed in greater detail by the teachings of Luo above.
One of ordinary skill in the art would have been motivated to make these substitutions as discussed above in order to create N-amino substituted alkyl-spinosad derivatives of general formula I and salts thereof as taught by Suyuo above. One of ordinary skill in the art would have had a reasonable expectation of success of incorporating limitations (a)-(b) as taught by Luo in the compounds of general formula (I) of Suyuo above, as both Suyuo and Luo are drawn to N-amino substituted alkyl-spinosad derivatives; and where Suyuo explicitly teaches a preparation method of their compounds as discussed above.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have incorporated limitations (a)-(b) as taught by Luo above into the compounds of general formula (I) of Suyuo above as within the scope of the artisan as combining prior art elements according to known compounds and methods to yield predictable results. One of ordinary skill in the art would have been motivated to create N-amino substituted alkyl-spinosad derivatives of general formula I and salts thereof as taught by Suyuo above for the purposes of applying said spinosad derivatives in protecting crops and preventing and treating sanitary pests and garden pests as taught by Suyuo above.
One of ordinary skill in the art would have had a reasonable expectation of success of incorporating limitations (a)-(b) as taught by Luo above into the compounds of general formula (I) as taught by Suyuo above; as both Suyuo and Luo are drawn to N-amino substituted alkyl-spinosad derivatives; and where Suyuo explicitly teaches a preparation method of their compounds as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
(II) Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Suyou et al. (Published 21 September 2011, CN-102190694-A, IDS filed 01/05/2024; English Machine Translation, PTO-892) and Luo et al. (Published 08 September 2020, CN-111632061-A, IDS filed 01/05/2024, English Machine Translation, PTO-892) as applied to claims 1, 16-25 and 27-28 above, and further in view of Terada (Published 19 June 2014, JP-2014111571-A, English Machine Translation, PTO-892).
Suyou and Luo address claims 1, 16-25 and 27-28. Although, Suyuo and Luo do not teach a composition as required in claim 26.
However, in the same field of endeavor of controlling pests, Terada teaches an agrochemical formulation, an efficient control method, and many pesticidal formulations for application to the control method have been developed, see English Machine Translation, pg. 5, lines 2-5.
Terada exemplifies the agrochemical formulation as a granule (e.g. a composition, required in claim 26, line 1), English Machine Translation, pg. 5, line 1.
Terada teaches the agrochemical granule comprises one or more compounds including spinosyn A and spinosyn D, see English Machine Translation, pg. 14, document claims, lines 18-19.
Terada teaches the granule was obtained by kneading the mixture and if necessary, a formulation adjuvant (e.g. a physiologically acceptable adjuvant, required in claim 26, line 2), see English Machine Translation, pg. 3, second paragraph from the bottom.
It would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have incorporated the teachings of Terada into the compounds and methods as taught by Suyuo above as within the scope of the artisan as combining prior art elements according to known compositions and methods to yield predictable results. One of ordinary skill in the art would have been motivated to formulate the compounds as taught by the combination of Suyuo and Luo above into an agrochemical granule as taught by Terada, in order to implement the application of the compounds as taught by Suyuo for protecting crops and preventing and treating sanitary pests and garden pests as taught by Suyuo above. One of ordinary skill in the art would have had a reasonable expectation of success of incorporating the teachings of Terada into the compounds and methods as taught by Suyuo above, as Terada teaches an agrochemical formulation and making said formulation as a granule which contains spinosyns as a control method for pests as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
Conclusion
No claims are allowed in this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARET J CREWS whose telephone number is (571)270-0962. The examiner can normally be reached Monday-Friday: 9:00am-5:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691