DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-14 are pending and under consideration in this action.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 4, the dash after “wherein:” should be removed. Furthermore, for variables R1, R2, R4, and R5, the dash at the end of each specific group should be removed (e.g., “C1-C4alkyl-” should be “C1-C4alkyl”).
Claims 2-9 and 14 are objected to because of the following informalities: Each of the claims recite “[a] compound according to claim …” (or the like); however, each claim is dependent upon, or incorporates, a previously recited claim. As each claim refers to, or incorporates, a previously recited claim, “[a] compound according to claim…” should be “[t]he compound according to claim…”.
Claims 10-12 are objected to because of the following informalities: Each of the claims recite “[a] herbicidal composition according to claim …” (or the like); however, each claim is dependent upon, or incorporates, a previously recited claim. As each claim refers to, or incorporates, a previously recited claim, “[a] herbicidal composition according to claim…” should be “[t]he herbicidal composition according to claim…”.
Claim 4 is further objected to because of the following informalities: “-SO2methyl” should be “-SO2methyl”.
Appropriate corrections are required.
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 14 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter. The claim is directed to a “use” claim that does not purport to claim a process, machine, manufacture, or composition of matter.
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.
Claims 13 and 14 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.
With regards to claim 13, the claim recites “making a compound of Formula (I)” but does not recite what Formula (I) is in the claim. Thus, it is unclear what the structure of the final product should be. To address the issue, Examiner suggests amending the claim’s preamble to recite “[a] method of making the compound of Formula (I) according to claim 1, comprising…” or the like.
With regards to claim 14, the claim is directed to a “use” claim. The claim, however, is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Note: MPEP 2173.05(q).
Allowable Subject Matter
Claims 1-14 are free of the prior art.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not appear to disclose or fairly suggest the compound of Formula (I) as recited in claim 1. In particular, the prior art does not disclose the substituent shown on C3 of the substituted benzamide ring. The closest prior art teachings are those of Mitchell et al. (Mitchell) (US 2014/0371067 A1; published Dec. 18, 2014) and Braun et al. (Braun) (US 2012/0058892 A1; published Mar. 8, 2012). Their teachings are set forth herein below.
Mitchell discloses a method of controlling weeds at a locus by applying to the locus of a weed controlling amount of a herbicidal composition comprising a compound of Formula (I) (abstract; Mitchell claims 1, 2, 6, 9:
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Among the suitable definitions for the above variables include:
R1 (corresponding to instant claim 1’s R1) may be C1-C6 alkyl
R2 (corresponding to instant claim 1’s R2) may be halogen, C1-C6 alkyl
X is CR3
R4 (corresponding to instant claim 1’s O-R3) may be C1-C6haloalkyl, such as trifluoromethyl
R5 is hydrogen.
Mitchell, however, does not teach or fairly suggest wherein R3 is the substituent shown in the instant claim 1’s Formula (I) on the C3 of the substituted benzamide ring.
Braun discloses N-(Tetrazol-5-yl)- and N-(triazol-5-yl)arylcarboxamides of the formula (I) described as herbicides (abstract; Braun claims 1-13):
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Among the suitable definitions for the above variables include:
B is N
R (corresponding to instant claim 1’s R1) may be C1-C6-alkyl
X (corresponding to instant claim 1’s R2) may be halogen, C1-C6-alkyl
A is CY
Z (corresponding to instant claim 1’s O-R3) may be halo-(C1-C6)-alkyl
Braun, however, does not teach or fairly suggest wherein Y is the substituent as shown in the instant claim 1’s Formula (I) on the C3 of the substituted benzamide ring.
Conclusion
Claims 13 and 14 are rejected. Claims 1-12 are objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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/MONICA A SHIN/Primary Examiner, Art Unit 1616
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