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 .
Priority
The instant application is the national stage entry of PCT/EP2022/064778 filed 31 May 2022. Acknowledgement is made of the Applicant’s claim of foreign priority to application IN202111024601 filed 2 June 2021.
Status of the Claims
Claims 1-20 are pending.
Claims 2, 4-11, and 17-19 are withdrawn.
Claims 1, 3, 12-16, and 20 are rejected.
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 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 1, 3, 12-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Edmunds et al. (WO 2020/084075).
Edmunds teaches the following structure P2 which reads on the racemic mixture of the elected species of instant claims 1, 3, 12-15, and 20 (pg 68, lns 1-5). The structure of P2 is a racemic mixture and thus necessarily comprises both the R and the S configurations, by definition, however Edmunds teaches that an enantiomer thereof can be prepared (pg 2, lns 8-9). The compounds of formula (I) can be in free form or the form of salts (pg 40, lns 8-9). The desired pure enantiomer can be obtained by known methods (pg 40, lns 27-42). The composition of Edmunds can be insecticidal and can comprise a compound of formula (I) (structure P2) or an enantiomer thereof as well as an auxiliary or diluent (pg 24, lns 10-15), thus rendering obvious instant claims 1, 3, 12-16, and 20.
Regarding instant claim 20, the claim comprises a product-by-process limitation. “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (See MPEP 2113 (I)).
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Response to Arguments
Applicant's arguments filed 20 April 2026 have been fully considered but they are not persuasive. The Applicant argues, on page 14 of their remarks that Edmunds does not disclose P2 in any enantiomerically pure or enriched form nor does it disclose a pesticidal composition thereof.
In response, Edmunds teaches that each other their inventive compounds can be resolved to an enantiomerically pure version using processes known in the art. Moreover, these enantiomers may then be used in an insecticidal composition with additional agents such as diluents. As such, an insecticidal composition comprising one enantiomer of P2 would have been obvious.
The Applicant argues, on pages 15-16 of their remarks, that surprisingly the racemic compound of P2 has 0% mortality rate against Diabrotica balteata but 80-100% mortality rate when individual enantiomers of P2 are tested. The Applicant further argues that Examples B12, B13, B14, and B15 in the specification provide similar results for activity of pure enantiomers compared to lack of activity for the racemic mixture.
In response, while these results do appear to be unexpected, the data is specific to only the example compounds in the specification against only a few bacterial agents. The instant claims are broader to a wider range of compounds with variable sidechains as well as their salts, stereoisomers, enantiomers, tautomers, or N-oxides. As such, the claims are not commensurate in scope with the showing of unexpected results. There is a fundamental requirement that must be met before secondary considerations can carry the day. "For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention." Wyers v. Master Lock Co., 616 F.3d 1231, 1246 [95 USPQ2d 1525] (Fed. Cir. 2010) (quotation omitted). Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention. Takai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 [97 USPQ2d 1673] (Fed. Cir. 2011) ("If commercial success is due to an element in the prior art, no nexus exists."); Ormco Corp., 463 F.3d at 1312 ("[l]f the feature that creates the commercial success was known in the prior art, the success is not pertinent."); In re Woodruff, 919 F.2d 1575, 1578 [16 USPQ2d 1934] (Fed. Cir. 1990). Therefore, the data in the cited examples do not amount to unexpected results that are sufficient in overcoming the full breadth of the pending obviousness rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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