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 .
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. See bottom of pg. 116 of the specification.
Claim Objections
Claim 1 is objected to because of the following informalities: N-oxides is plural and salt is singular based on the claim being directed to a compound the examiner believes N-oxides should be N-oxide.
Claims 2-7 are objected to because of the following informalities: dependent claims should begin with the article “The” not “A”.
Claim 10 is objected to because it appears to be missing a comma after “nuclear polyhedrosis viruses”.
Claims 9, 12, 14, 19 are objected to because they recite “a compound of claim 1” but should instead recite “the compound of claim 1” as they have antecedent basis from/to claim 1.
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (WO2020018610), and further in view of Koyanagi (Bioisosterism in Agrochemicals, 1995, pg. 15-22; from Synthesis and chemistry of agrochemicals IV), Patani et al. (Chem. Rev., 1996, 96(8), 3147-3176).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-7, Xu teaches structurally similar/bioisosteric compounds to those instantly claimed, which only differs in that the six-membered half of the fused ring is a phenyl ring instead of the claim pyridine ring, for example Xu teaches/exemplifies compounds of their Table 1 (See entire document; e.g. Table 1, second and third sub tables pg. 72-73; claims) wherein J which corresponds to the claimed J, and is Xu’s J-1, wherein Xu’s R4 is Me (and corresponds to the instant R5) or X4 is cyclopropyl, X which corresponds to the instant X is O or S, and R1 is H or Cl, R2 is H or F or Cl, and R3 is Cl or CF3 (see pg. 72-73; claims)
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, wherein these exemplified compounds of Xu only differs from the claimed compounds wherein T is T-1, T-2, T-5, and T-6 because the compounds in the subsection/sub-table of table 1 wherein J is J-1 and R4 is Me only lack the N atom in the pyridine portion of the fused ring (See entire document; e.g. Table 1, second and third sub tables pg. 72-73; claims).
Regarding claim 8, Xu exemplifies structurally similar/bioisosteric compounds in their table on pg. 73 wherein X is O and R1, R2, R3 are Cl, F, Cl, respectively and R4 is cyclopropyl which only differs from the claimed
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in that it lacks the N atom in their 6-membered portion of the fused ring. In the same table, Xu teaches additional structurally similar/bioisosteric compounds in their table on pg. 73 wherein X is S and R1, R2, R3 are Cl, H, Cl, respectively and R4 is cyclopropyl which only differs from the claimed
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in that it lacks the N atom in their 6-membered portion of the fused ring (see entire document; e.g. abstract; Table 1, third sub table pg. 73, claims).
Regarding claims 9-11, Xu teaches forming compositions with their structurally similar/bioisosteric pesticidal compounds which comprise at least one additional component selected from solid or liquid diluents and can further comprise at least one additional biologically active compound or agent, including the claimed abamectin, acetamiprid, etc. (see entire document; e.g. Table 1, second and third sub tables pg. 72-73; abstract; pg. 5, ln. 25-pg. 6, ln. 3; pg. 40, ln. 27-pg. 43, ln. 3; pg. 145, ln. 18-31; pg. 152, ln. 1-pg. 174 inclusive, claims). The examiner notes that claims 10 and 11 do not actually require the optional at least one additional biologically active compound or agent they merely limit the scope of these agents if they are the additional component selected from claim 9 to form the composition of claim 9.
Regarding claims 12-13, Xu teaches forming compositions with their structurally similar/bioisosteric pesticidal compounds which comprise an effective amount of their compounds and at least one carrier (e.g. water, sugars, animal fats, plant oils, etc.) which reads on wherein the composition is formulated for oral administration e.g. when formulated in water/with sugars which are suitable for/safe for oral administration and specifically wherein the effective amounts are from 0.001-99% by weight based on the total weight of the composition which read on the claimed parasiticidally effective amount the examiner notes that the for protecting an animal from an invertebrate parasitic pest is the intended use of the composition, as Xu render obvious the claimed compounds and teaches carriers suitable for oral administration it would read this composition further Xu teaches wherein animals can be administered/treated with their claimed compounds and Xu teaches wherein the pests which can be controlled include hair follicle mites, ticks, etc. which affect animals (see entire document; claims, specifically claim 19; e.g. pg. 156, ln. 1, ln. 6-7, ln. 7-12, etc.; Table 1, second and third sub tables; pg. 72-73; pg. 167, ln. 7-22; pg. 166, ln. 26-30; table on top of pg. 143; claims; pg. 143; pg. 5, ln. 25-pg. 6, ln. 8; pg. 7, ln. 31-36; pg. 45, ln. 4-15).
Regarding claims 14-17, Xu teaches methods of controlling invertebrate pests with their structurally similar/bioisosteric compounds comprising contacting the invertebrate pest or its environment with a biologically effective amount of their structurally similar/bioisosteric compounds (see entire document; e.g. Claims 19-20, Table 1, second and third sub tables pg. 72-73; pg. 167, ln. 7-22; pg. 171, ln. 29-pg. 172, ln. 13; table on top of pg. 143; pg. 5, ln. 25-pg. 6, ln. 8; pg. 7, ln. 31-36; pg. 45, ln. 4-15), wherein the environment being contacted is a plant as per claim 15, an animal as per claim 16, or a seed as per claim 17 (see entire document; claims 19-20).
Regarding claims 18-19, Xu teaches seeds wherein the seed is coated/treated with their structurally similar/bioisosteric pesticidal compounds, and Xu teaches wherein seeds can be coated/treated with a composition that further comprises a film former of adhesive agent and wherein their active compounds are present in about 0.0001 to 1% by weight of the seed before treatment on the treated seeds (see entire document; e.g. pg. 142, ln. 9-12; pg. 171, ln. 21-28; pg. 145, ln. 18-31; Claims 19-20, Table 1, second and third sub tables pg. 72-73; pg. 167, ln. 7-22; pg. 171, ln. 29-pg. 172, ln. 13; table on top of pg. 143; pg. 5, ln. 25-pg. 6, ln. 8; pg. 7, ln. 31-36; pg. 45, ln. 4-15).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
As discussed above Xu, does not teach the instantly claimed compounds but does teach known bioisosteres of the claimed compounds. Specifically N and CH are known bioisosteres of one another and the phenyl rings in the fused bicyclic ring system of Xu are bioisosteres of the claimed pyridine rings present in the fused bicyclic ring system instantly claimed as is taught by Patani (See pg. 3156, trivalent atoms or groups section; pg. 3158, ring equivalent section), and as is taught by Koyanagi bioisosteres are useful for forming agrochemicals and -CH= as found in phenyl and/or pyridyl groups is a known classical bioisostere of -N= as is pyridyl groups (see Table I pg. 16; abstract).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed compounds for pesticidal use in the same compositions and applications/methods instantly claimed by substituting one of the 2 -CH= groups present in the phenyl portion of the bicyclic fused ring of Xu with the claimed -N= to form the claimed compounds because as is taught by Koyanagi bioisosteres are useful when forming agrochemicals, specifically additional compounds having the same types of biological activity and Patani and Koyanagi both teach wherein -CH= moieties present in the phenyl portion of the fused ring system of Xu are classical bioisosteres of the claimed -N= moieties of the instantly claimed pyridyl portion of the fused ring system. Thus, this known bioisosteric substitution would have been obvious for one of ordinary skill in the art to make to the pesticidal compounds of Xu in order to form additional pesticidally active compounds. Especially since the courts have determined, “Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious.” In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979), specifically In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (claimed and prior art compounds used in a method of treating depression would have been expected to have similar activity because the structural difference between the compounds involved a known bioisosteric replacement), which is exactly what applicants are observing/reporting, that their pyridine containing compounds exhibit pesticidal activity similar to that of the compounds of Xu.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 8-17 of U.S. Patent No. 9095138 (‘138) in view of 9095138 (‘138), Koyanagi (Bioisosterism in Agrochemicals, 1995, pg. 15-22; from Synthesis and chemistry of agrochemicals IV) and Patani et al. (Chem. Rev., 1996, 96(8), 3147-3176).
‘138 teaches structurally similar/bioisosteric compounds which only differ from the claimed compounds in that the six-membered half of the fused ring is a phenyl ring instead of the claim pyridine ring of applicant’s T groups. ‘138 teaches wherein these compounds are pesticidal and wherein the other variables in the compounds of ‘138 overlap with those instantly claimed. ‘138 further teaches wherein their compounds can also form compositions with the same additional active agents and carriers that are instantly claimed and used in methods to control invertebrate pests as is instantly claimed. In table 6, line 33, is a structurally similar compound to the first compound of claim 8, which only differs again because it is phenyl ring as the 6-membered fused ring instead of the claimed pyridine. ‘138 does not claim wherein their structurally similar pesticidal compounds are used in composition for oral administration of wherein the environment where the structurally similar compounds/compositions are applied are the claimed plants, animal, and seed or wherein the seed is coated with the compounds a film former or adhesive agent. However, as ‘138 also qualifies as prior art because of much earlier publication date, ‘138 does teach wherein the compounds can be formulated into films, e.g. including a film former or sticker/adhesive agent, for coating seeds and wherein seeds are treated with compounds in amounts of from about 0.0001 to 1% by weight of the seed before treatment as claimed (Col. 107, ln. 25-28; Col. 87, ln. 6-11; Col. 89, ln. 42-52; Col. 107, ln. 8-24). Thus, clearly ‘138 does teach applying to seeds to control invertebrate pests and also teaches applying to plants and animals and teaches within the document administering to animals via oral administration parasiticidally effective amounts of their structurally similar compounds (see entire document; e.g. Col. 1, ln. 5-11; Col. 7, ln. 40-53; Col. 36, Embodiments A6, B3, etc.). As discussed above, ‘138 does not specifically teach the claimed compounds. However, these compounds would be obvious to form and use in the compositions and methods of ‘138 in order to form the claimed compounds, compositions, and methods because N and CH are known bioisosteres of one another and the phenyl rings in the fused bicyclic ring system of Xu are bioisosteres of the claimed pyridine rings present in the fused bicyclic ring system instantly claimed as is taught by Patani (See pg. 3156, trivalent atoms or groups section; pg. 3158, ring equivalent section), and as is taught by Koyanagi bioisosteres are useful for forming agrochemicals and -CH= as found in phenyl and/or pyridyl groups is a known classical bioisostere of -N= as is pyridyl groups (see Table I pg. 16; abstract).
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed compounds for pesticidal use in the same compositions and applications/methods instantly claimed by substituting one of the 2 -CH= groups present in the phenyl portion of the bicyclic fused ring of ‘138 with the claimed -N= to form the claimed compounds because as is taught by Koyanagi bioisosteres are useful when forming agrochemicals, specifically additional compounds having the same types of biological activity and Patani and Koyanagi both teach wherein -CH= moieties present in the phenyl portion of the fused ring system of ‘138 are classical bioisosteres of the claimed -N= moieties of the instantly claimed pyridyl portion of the fused ring system. Thus, this known bioisosteric substitution would have been obvious for one of ordinary skill in the art to make to the pesticidal compounds of ‘138 in order to form additional pesticidally active compounds. Especially since the courts have determined, “Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious.” In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979), specifically In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (claimed and prior art compounds used in a method of treating depression would have been expected to have similar activity because the structural difference between the compounds involved a known bioisosteric replacement).
Thus, it would have been obvious to one of ordinary skill that the instantly claimed compounds, compositions and methods are obvious when taken in view of 9095138 (‘138, because the patent itself qualifies as prior art), Koyanagi (Bioisosterism in Agrochemicals, 1995, pg. 15-22; from Synthesis and chemistry of agrochemicals IV) and Patani et al. (Chem. Rev., 1996, 96(8), 3147-3176).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616