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 .
Claim Status
Claims 1-8 are pending. Claims 1-3 and 6 are rejected. Claims 4-5 and 7-8 are objected to.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim(s) 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over JPH01114840A by Shishido et al.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
The prior art teaches a “silver halide photographic sensitive material” (title) and discloses the following genus (page 1):
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Shishido et al. disclose several compounds that are analogous to benzimidazole compounds of formula I such as compounds 1, 3 and 5 shown below (pages 3 and 4):
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The prior art compounds are analogous to a compound of instant formula I where X1 and X3 are hydrogen, R is hydrogen, Y2 is hydrogen, C1 alkyl or halogen, and each of Y1 and Y3-Y4 are hydrogen.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art compounds are analogous to compounds of formula (I) as claimed in instant claims 1-2 but differ by the absence of a nonhydrogen substituent corresponding to instant variable X2.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding the modification required to produce compounds that are embraced by instant formula I, the prior art teaches that the imidazole ring represented by prior art variable Q may be substituted such as with an alkyl substituent (pages 3-4 of machine translation). For instance, Shishido et al. disclose compound 16 with a methyl substituent on the imidazole ring in the position of instant variable X3 (page 4):
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“Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.” In re Deuel 34 USPQ2d 1210 at 1214. Furthermore MPEP 2144.09 (II) states: “Compounds which are […] homologs (…) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).” It is well established that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, 199 U.S.P.Q. 137 (C.C.P.A. 1978) and In re Lohr, 137 U.S.P.Q. 548, 549 (C.C.P.A. 1963).
The motivation to make a substitution of a hydrogen for an alkyl group stems from the fact that a person having ordinary skill in the art would expect that the compounds would have the same utility as the compounds taught by the prior art. In the interest of generating additional compounds that have the same utility as the compounds taught by the prior art, a person having ordinary skill in the art would seek to make additional compounds that are most closely related to compounds specifically taught by the prior art that have been demonstrated to have the desired utility. The replacement of hydrogen for an alkyl group falls under the well-established doctrine of homology, which assumes that homologous compounds are likely to have similar properties. Additionally, a person of ordinary skill seeking to prepare useful permutations of the prior art compounds would have been motivated to explore positional isomers of compounds such as compound 16 wherein the methyl group is in different positions on the imidazole ring. Therefore, the instantly claimed compounds which differ by hydrogen/alkyl, over the compounds of the prior art are unpatentable absent a showing of unexpected results. MPEP 2144.09 (VIII) states “A prima facie case of obviousness based on structural similarity is rebuttable by proof that the claimed compounds possess unexpectedly advantageous or superior properties. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963).”
The resulting compounds that would be embraced by instant formula I are represented below:
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Instant claims 3 and 6 recite “a canine filariasis agent for animal control” comprising the benzimidazole compound of claim 1 or 2 as an active ingredient. The preamble represents an intended use and not a claim limitation as the body as of the claims set forth all of the limitations of the claimed invention. A compound and its properties are inseparable, therefore claims 3 and 6 which only require the presence of the benzimidazole compound are obvious in view of the prior art compounds which are embraced by instant formula I.
Allowable Subject Matter
Claims 4-5 and 7-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLI A CHICKS whose telephone number is (571)270-0582. The examiner can normally be reached M-Th 7 a.m.- 5 p.m..
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626