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 .
Status of Claims/Application
The preliminary amendment dated 11/21/2023 is acknowledged. Claim 1 is amended. Claims 2 – 15 are cancelled. Claims 16 – 28 are newly added. Claims 1, and 16 – 28 are pending in the instant application, and are examined on the merits herein.
Priority
The instant application is a National Stage Application of PCT/EP2022/065561 filed on 06/08/2022, and claims foreign priority to EP21178374.1 filed on 06/08/2021.
Acknowledgement is made of applicant’s claim for foreign priority under 35 U.S.C.
119(a)-(d). The certified copy has been filed in the instant application on 11/21/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted in the instant application
on 01/04/2024, and 01/05/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Objections to Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
On pg. 63, the last page of the instant specification, several hyperlinks are provided. Appropriate correction is required.
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.
Claims 1, and 16 – 28 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,001,981 (Dec. 14, 1999) (IDS 01/05/2024) in view of US 6,919,464 (July 19, 2005) (IDS 01/05/2024).
US’981 teaches compounds that are prepared directly or indirectly by modifying the compounds that are naturally produced from Saccharopolyspora spinosa. The compounds have been shown to have activity against insects and mites. The compounds are prepared by modifying the rhamnose sugar, modification of the forosamine sugar, or starting with pseuodoaglycone and then replacement with a nonsugar derivative or different sugar, modification of the 5,6,5-tricyclic and 12-membered macrocyclic lactone part of the compounds naturally produced or of the pseudoaglycone of the natural compounds (Abstract).
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US’981 teaches the compound N-(2,2,2-Trichloroethoxy)-carbonyl-N-demethyl-7-hydroxy Spinosyn D in Example C76 (col 86), and the compound 7-Formyloxy Spinosyn D in Example N1 (col 145). Both of these compounds have a substituent in the C7 position, which corresponds to the R6 of the instant claim 1, which are hydroxy (OH) and formyloxy (O-C(=O)H). Spinosyn D has a methyl in the R1’ position (col. 2), which corresponds to R5 of the compounds of instant claim 1. The two compounds mentioned above have the following substituents in the variables of instant claim 1, X is -NH(CCl3-CH2-O-C(O))/-N(CH3)2, R11 is -CH3, R4 is -C2H5, dashed line is a double bond, R5 is -CH3, R6 is -OH/-O-C(O)H, R7 is -H, R8 is -CH3, R9 is -CH3, and R10 is -CH3. The two compounds differ from the compound of instant claim 1 in that they have a methyl group (-CH3) as R5 instead of -H, and an ethyl group (-C2H5) as R4 instead of unsubstituted butyl, unsubstituted 1-butenyl, unsubstituted 1,3-butadienyl and unsubstituted 3-hydroxy-1-butenyl. US’981 also recites in claim 5 (col. 196) a compound having the formula IV, wherein R1 and R3 are independently hydrogen or methyl (R3 corresponds to the R5 of the instant claim 1), R4 at C21 is methyl or ethyl, and R3’ at C7 is hydrogen or hydroxy (Row 4 in col. 207-208).
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The compounds of US’981 above have the following substituents in the variables of the instant claim 1, X is -N(-CH3)(COOCH2CCl3), R11 is -CH3, R4 is -CH3/-C2H5, dashed line is a double bond, R5 is -H/-CH3, R6 is -OH, R7 is -H, R8, R9, and R10 are independently H, methyl, ethyl, propyl, butyl, or CD3 (col. 197 – 198). These compounds differ from the compound of instant claim 1 in that they have a methyl group (-CH3) or an ethyl group (-C2H5) as R4 instead of unsubstituted butyl, unsubstituted 1-butenyl, unsubstituted 1,3-butadienyl and unsubstituted 3-hydroxy-1-butenyl.
US’981 teaches that not only are the compounds useful in producing agricultural product, acid addition salts of these compounds are also desirous products. Acid addition salts may be prepared from the compounds disclosed in Formulas I, II, IV, VI, VIII, and XV. The salts of the compounds are prepared using standard technology for preparing salts which are well known to those skilled in the art (col. 9, lines 60 – 66). US’981 teaches that the compositions are prepared according to the procedures and formulas which are conventional in the agricultural or pest control art. The compositions may be concentrated and dispersed in water or may be used in the form of a dust, bait or granular formulation. The dispersions are typically aqueous suspensions or emulsions prepared from concentrated formulations of the compounds. The water-soluble or water-suspension or emulsifiable formulations are either solids, wettable powders, or liquids, known as emulsifiable concentrates or aqueous suspensions (col. 10, lines 9 – 18). US’981 teaches that the amount of compound applied to the loci of insects and mites is not critical and can easily be determined by those skilled in the art. Generally the concentrations of from about 10 ppm to about 5,000 ppm provide the desired control. For crops such as soybeans and cotton, the rate of application is about 0.01 to about 1 kg/ha, where the compound is applied in a 5 to 50 gal/A spray formulation. The compounds may be applied to any locus inhabited by an insect or mite. Such locus typically is cotton, soybean and vegetable crops, fruit and nut trees, grape vines, houses and ornamental plants (col. 11, lines 21 – 30). US’981 teaches insecticide and miticide utility of the compounds in Example 18 (col. 147, line 10).
The teachings of US’981 differ from that of the instantly claimed invention in that US’981 does not teach R4 is unsubstituted butyl, unsubstituted 1-butenyl, unsubstituted 1,3-butadienyl and unsubstituted 3-hydroxy-1-butenyl at the C21 position.
US’464 teaches compounds produced by chemical modifications of the spinosyn compounds produced by NRRL 30141 or produced by mutated strains that contain inactivated O-methyltransferase genes (col. 1, line 10). The compounds have activity against insects and arachnids and are also useful as intermediates for producing other insecticidal compounds (col. 7, line 4).
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US’464 discloses spinosyn compounds of formula 1A in claim 1 (col. 79) wherein the substituent at C21, R8 is trans-1-butenyl, 1,3-butadienyl, n-butyl, 3-hydroxy-1-butenyl, 1,2-epoxy-2-butyl, 3-oxo-1-butenyl, and others which corresponds to R4 in the instant claims (col. 82). The compounds of US’464 above have the following substituents in the variables of the instant claim 1, X is -N(-CH3)2, -NH(-CH3), -OH; R11 is -CH3, R4 is trans-1-butenyl, 1,3-butadienyl, n-butyl, 3-hydroxy-1-butenyl, 1,2-epoxy-2-butyl, 3-oxo-1-butenyl, dashed line is a double bond or an epoxide group, R5 is -H, R6 is -H, R7 is -H, R8, R9, and R10 are H, methyl (col. 79 – 84). Compounds of claim 5 (col. 99) have the C21 substituent of 1-butenyl, 3-ethoxy-1-butenyl, n-butyl, 3-oxo-1-butenyl, or 3-oxo-1-butyl groups.
It would have been obvious to combine US’981 and US’464 before the effective filling date of the claimed invention by making the chemical modification in the C21 position to the spinosyn compounds of US’981 to have trans-1-butenyl, 1,3-butadienyl, n-butyl, 3-hydroxy-1-butenyl, 1,2-epoxy-2-butyl, 3-oxo-1-butenyl, 1-butenyl, 3-ethoxy-1-butenyl, or 3-oxo-1-butyl groups as taught by US’464 to arrive at the spinosyn compounds of the instantly claimed invention. It would have been prima facie obvious for one of ordinary skill in the art to make this chemical modification as US’464 teaches the synthesis of many butenyl-spinosyn compounds, such as in Example 1 (col. 25, line 45), and the resultant compounds display insecticide and miticide activity (col. 68). One of ordinary skill in the art would have a reasonable expectation of success as both US’981 and US’464 teach many modified spinosyn compounds having insecticidal activity with significant application in agriculture.
Regarding claim 21, as US’981 teaches -OH and -OC(O)H chemical modifications for the variable R6 of the compound of general formula (I) of instant claim 1, it would be prima facie obvious for a person of ordinary skill to make the further chemical modifications of -OCH3, -OC2H5, - OC(O)CH3, so on. One of ordinary skill in the art would have a reasonable expectation of success as the synthesis of compounds with similar chemical modifications have been taught in Example 76 (col. 86), and Example N1 (col. 145) by US’981.
Regarding claims 25 – 28, as US’981 teaches compositions and methods for controlling pests that show insecticide and miticide utility, all the claim limitations are met.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, and 16 – 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 16 – 28 of Application No. 18/556,489 in view of US 6,001,981 (Dec. 14, 1999) (IDS 01/05/2024), US 6,919,464 (July 19, 2005) (IDS 01/05/2024), and Ma et al, (Synthesis and antiproliferative activities of novel quaternary ammonium spinosyn derivatives, Bioorg Med Chem Lett, 28 (2018) 3346-3349) (IDS 01/04/2024).
Claims 1, and 16 – 28 of the instant application are patentably indistinct from claims 16 – 28 of the co-pending Application No. 18/556, 489.
Claim 16 of the application ‘489 recites a compound of general formula (II) which is similar to the compound of general formula (I) in claim 1 of the instant application. The amino group on the forosamine sugar of ‘489 is one of the variable substituents recited in the instant application’s claim 1. The two compounds differ only in the substituent R6 on the C7. Claim 25 of the application ‘489 lists a select group of compounds which are similar to the compounds listed in Claim 24 of the instant application. The first compound of claim 25 of the application ‘489 varies from the fourth compound of the instant claim 24 only in the substituent attached at the C-7 position, which corresponds to the variable R6, -H in the compound of ‘489 whereas -OCH3 in the instant claim 24’s compound. Both compounds are shown below, first one is from the application ‘489, and the one below is from the instant application
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Composition and methods in claims 26 – 28 of the application ‘489 are similar to those of claims 25 – 28 of the instant application.
The teachings of US’981 and US’464 are as discussed above in the 103 rejection.
Ma et al designed and synthesized a series of quaternary ammonium spinosyn derivatives to enhance the mitochondria-targeting ability of Spinosad (Abstract). Even though these derivatives were designed and developed to study the antiproliferative ability towards human cancer cell lines, one of ordinary skill in the art would be motivated to make these chemical modifications along with the teachings of US’981, and US’464 to synthesize novel spinosyn compounds of the instantly claimed invention, and the compounds of the application ‘489, and would have a reasonable expectation of success as spinosyn compounds have applications in agriculture.
As it is within the scope of the artisan to combine prior art elements according to known compounds and methods to yield predictable results, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to have incorporated the chemical modifications taught by Ma et al, preparation of the quaternary ammonium spinosyn derivatives, to the spinosyn compounds of US’981, and US’464 (See MPEP 2143(I)(A)). One of ordinary skill in the art would have been motivated to make the chemical modifications to create quaternary ammonium spinosyn derivatives for the purpose of applying the spinosyn compounds in protecting plants and crops from pests. One of ordinary skill in the art would have a reasonable expectation of success as the chemically modified spinosyn compounds are useful in agriculture as insecticides and pesticides.
As both sets of claims recite a compound that has the same utility, even though they are not exactly matching, they are overlapping in scope regarding several variables in the compound, except for the variable R6. Thus rendering one set of claims to be unpatentable.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Claims 1, and 16 – 28 are rejected. No Claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANAKI ANANTH MAHADEVAN whose telephone number is (571)272-0230. The examiner can normally be reached Monday-Friday 8-5PM.
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/JANAKI ANANTH MAHADEVAN/Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693
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