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
The present application claims foreign priority of PCT/EP2022/062250 filed 2022-05-06 which claims priority of GB2106945.5 filed 2021-05-14.
Election/Restriction
Applicant’s election with traverse of Group 1, claims 1-13 and 16, in the reply filed on 05/18/2026 is acknowledged. Applicant’s species election of compound 1.004 as a compound of formula (I) is acknowledged. The traversal is on the ground(s) that “the International Search Authority for this national stage application found that claims 1-16 possess unity” and “the Examiner has failed to cite any reference to show the lack of a “special technical feature.” (see id pg. 7). This is not found persuasive because:
“[W]hen the Office considers international applications as an International Searching Authority, as an International Preliminary Examining Authority, and during the national stage as a Designated or Elected Office under 35 U.S.C. 371, PCT Rule 13.1 and 13.2 will be followed” and “[i]n applying PCT Rule 13.2 to international applications as an International Searching Authority, an International Preliminary Examining Authority and to national stage applications under 35 U.S.C. 371, examiners should consider for unity of invention all the claims to different categories of invention in the application” therefore the Examiner should also consider and apply PCT Rule 13.2 during the national stage of an international application (see MPEP 1850 (I)); and
“Lack of unity of invention may be directly evident “a priori,” i.e., before considering the claims in relation to any prior art… For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims”. In the instant case, an a priori determination of lack of unity is found as the independent claims, and thus the Groups described in the Requirement for Restriction (i.e., Groups (I, II, and III) are directed to different products (i.e., compounds of formula (I) or (II) or (V)) where no groups are directed to the same corresponding subject matter and therefore no prior art is necessary. (see MPEP 1850 (II)).
The requirement for species election is withdrawn and the wearch was expanded to encompass the entire scope of claim 1.
The restriction requirement is still deemed proper and is therefore made final.
Status of the claims
The claims filed on 05/18/2026, election of Group I and species election accordingly response filed on 05/18/2026 are entered onto the record. Claims 1-13 and 16 are currently examined. Claims 14-15 are withdrawn from further consideration as being drawn to a nonelected Group.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/14/2023 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 on the merits.
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.
Claim 16 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.
Claim 16 attempts to claim a process without setting forth any steps involved in the process. See Ex parteErlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986), where a “use” claim was “held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced.” See MPEP §2173.05(q)).
Claim 8, which depends from claim 1, recites the limitation "wherein R⁴ is selected
from the group consisting of hydrogen, methyl, ethyl and cyclopropyl-CH2-
". However, hydrogen and cyclopropyl-CH2- are not recited in claim 1 There is insufficient antecedent basis for this limitation in the claim.
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 16 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/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 (see MPEP §2173.05(q)). See also In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966) and In rePrater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.
Claim Rejections - 35 USC § 103
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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Koehn et al. (US 20180282290 A1, published 03/30/2018) and in further view of Lian et al. (AU 2019386018 A1, published 06/17/2021).
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Regarding claims 1-9, Koehn et al. teach herbicidally active compounds (see Abstract and para. [0001]). Koehn et al., further teach compounds of the generic formula (I) (see para. [0010]; shown below),
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wherein Q can be radicals Q1 or Q4 (see pg. 2, para. [0026]; shown below), which read on the instant claimed Q1 [and Q2,] respectively, and wherein R6 and R9 can each be a (C1-C6)-alkyl) (see pg. 2, para. [0027] and [0031], which reads on R1a and R1b of compounds of instant claim 1.
Koehn et al., further disclose that compounds of formula (I), wherein X or Z can each independently be a halogen (e.g., Cl) or OR1 wherein, R1 includes (C1-C6)-haloalkyl (e.g., CF3) (see ‘290 pg. 1, para. [0013]; and pg. 2 [0019]), which reads on R2 and -O-R3 of compounds of instant claim 1, respectively; and wherein Y can be SO2N(R1)2 (see ‘290 pg. 1, para. [0014), wherein R1 includes hydrogen or (C1-C6)-alkyl) (see ‘290 pg. 2, para. [0019]), which reads on -SO2N -R4 and -R5 of compounds of instant claim 1.
However, Koehn et al., differs from the instantly claimed compounds of claim 1 in that compounds of Koehn et al., comprise an additional alkoxy group instead of a hydrogen on nitrogen where the Q substituent attaches. In the same field of endeavor of herbicidal compounds and compositions, Lian et al. teach compounds of the generic formula I (see pg. 2, para. 1 and 3; shown below).
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For example, Lian et al., teach compound I-277 (see Table A1, pg. 62, row 5; shown below), wherein the substituents for X, Y, Z, and M are shown in the table.
The compound I-277 of Lian et al., reads on compounds of the formula (I) of instant claim 1, wherein, Q is Q2, R1b is C4 alkyl, R2 is halo, R4 is C2 alkyl, R5 is H.
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Furthermore, Lian et al. disclose the reaction for preparing the compounds disclosed therein (see pg. 23, para. 2; shown below),
Wherein the benzoic acid represented by Formula V is reacted with an amine that reads on instant claim 1 Q2 substituent to yield the carboxamide compound of Formula I-1. In the reaction disclosed Lian et al taches the hydroxide group (red arrow) reacts with the amine group (green arrow) to produce an -O-NH- linkage (blue arrow) between the benzoic acid and the amine substituent. Similarly, the instant application discloses Scheme 1 (see pg. 16), where the benzoic acid of formula (II) is reacted with amines of formula (III) to also yield an -O-NH- linkage between the benzoic acid and the Q amine substituents. The reactions of Lian et al. and the instant disclosure are carried out with a suitable amide coupling reagent (i.e., thionyl chloride) (see Lian et al., pg. 23, last paragraph.)
One of skill in the art of aryl carboxamides and their uses as herbicides at the time of filing of the instant application and be motived to lean on Lian et al. for chemical reactions to produce similar aryl carboxamide compounds of Koehn since Koehn does teach generic compounds of formula (I) but does not disclose specific reactions steps. Furthermore, as discussed above, the reaction of Lian et al., is similar to the reactions of the instant disclosure to produce compounds where the benzoic acids are linked to a Q substituent by an -O-NH-. Therefore, it would be obvious for one of skill in the art to make compounds that read on the instantly claimed inventions using the combined teachings of Koehn and Lian that could yield either the alkoxy linker of Koehn or the linker of Lian et al. One of skill int eh art would also understand based on the teachings of Koehn et al. and Lian et al. that both compounds have the same utility as herbicidally active compounds and, therefore, would also expect a compound of Koehn et al., modified accordingly with the teachings of Lian et al, to retain similar properties and utility as a herbicide with reasonable expectation of success. See MPEP 2144.09 (I).
Regarding claim 10-12, Koehn et al., disclose “On the basis of these formulation, it is also possible to produce combinations with other pesticidally active substances, for example insecticides, acaricides, herbicides, fungicides, and also with safeners, fertilizers and/or growth regulators, for example in the form of a finished formulation or as a tankmix. Suitable safeners are, for example, mefenpyr-diethyl, cyprosulfamide, isoxadifen-ethyl, cloquintocet mexyl and dichlormid.” (see pg. 8, para. [0216]; Example C. 1 and 2).
Regarding claims 13 and 16, Koehn et al., disclose “The inventive compounds of the formula (I) … have an excellent herbicidal effectiveness… [and] also provides a method for controlling unwanted plants or for regulating growth of plants, preferably in plant crops, in which one or more compound(s) of the invention is/are applied to the plants” (see pg. 6, para. [0092]-[0093]; Example C. 1 and 2).
Thus claims 1-13 and 16 are obvious based on the combined teachings of Koehn et al., and Lian et al.
Conclusion
No claims are allowed in this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN JEROME FOWLER whose telephone number is (571)272-0195. The examiner can normally be reached Monday - Friday 9-5PM EST.
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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.
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/ALAN J FOWLER/ Examiner, Art Unit 1691
/RENEE CLAYTOR/ Supervisory Patent Examiner, Art Unit 1691
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