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 .1
Status of Claims
Claims 1-17 are pending. Claims 1-11 and 13 are under examination.
Election/Restrictions
Applicant's election with traverse of Group I and species compound P102 (see page 91, Table P)
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in the reply filed on May 28, 2026 is acknowledged. The traversal is on the ground(s) that the International Preliminary Report (IPER) noted the ISA found that claims 1-17 contain unity. This is not found persuasive for the reasons stated in the Restriction Requirement dated Feb 20, 2026.
The requirement is still deemed proper and is therefore made FINAL.
Note the examined species has been expanded from elected species P10 to include compound P4. Compound P4 is found at page 90, Table P.
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Note that with the inclusion of species P4 for examination, claim 3 has been rejoined for examination, where A is N.
Claims 12 and 14-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II and non-elected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 28, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 12/07/2023 and 4/21/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 4 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.
Regarding claim 4, with reference to “hydrogen” in defining R2c, the phrase "preferably," renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
While claim 4 is indefinite, for purposes of art rejections, it will be examined as if R2c is hydrogen or halogen.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Claimed Invention
The claimed invention (claim 1) is directed to a compound of formula I, as detailed above, where A, R2c, R1, R2a, R2b, R3, R4, R5a and R5b are broadly claimed as recited therein.
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Certain narrower embodiments of the claimed invention are presented in various dependent claims. Some of these claims further limit the claimed groups and substituents as detailed therein.
The Supporting Disclosure
Applicants’ supporting disclosure contains certain descriptions and embodiments of the claimed invention.
In the present case, the important factors leading to a conclusion of inadequate written description is the absence of sufficient working examples of the invention as claimed, and the lack of predictability in the art.
In the present case there is no disclosure of compounds having the broad and full scope definitions of the groups and substituents of claim 1. In fact, the scope of compounds that provide adequate written description are the 39 compounds of Table P of the specification (starting at page 89); Enantiomers E3 to E13 of Table E (starting at page 98); supported by the Biological Examples B1-B10, Tables B10 -B11 which provide data noting compound insecticidal activity (starting at page 133).
Claim 1 is overly broad, where X is O or S: A is N or C-R2c, where R2c is H, halogen, C1-C3alkyl, C1-C3haloalkyl, C1-C3alkoxy, or C1-C3haloalkoxy;
R1, R2a and R2b are as follows:
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R3 is C1-C3alkyl or C1-C3haloalkyl;
R4, R4a, R4b, R4c and R5a, R5b are as follows:
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In contrast to the broad claimed scope of X, A, R2c, R1, R2a, R2b, R3, R4, R5a and R5b of the rejected claims, the supporting disclosure (39 compounds of Table P, Enantiomers of Table E, Experimental Examples B1-B1 and Tables B10-B11), the supporting disclosure is limited only to where
X is O;
A is limited to N or C-R2c, where R2c is hydrogen only;
R1 is limited to hydrogen or methyl;
R2/R2b is limited to CF3, CF2H, 1-cyano-1-methyl-ethyl-, halogen (Cl, F, Br, I), S(O)2CH3, S(O)2CF3, OCF3, 1-cyano-cyclopropyl-, OCF2H, SCF3, cyclopropyl, and methyl;
R3 is limited to methyl;
R4 is limited
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, where R4a is limited to hydrogen, CN, and Cl; R4b and R4c are limited to hydrogen;
R5a and R5B are limited to hydrogen.
Applicant’s disclosure of the 39 compounds of Tables P, the enantiomers of Table E, etc., is not a sufficient representation of all the claimed compounds of claim 1 (and rejected dependent claims) as presently pending.
Other than the working examples of the specification as detailed above, Applicant has not reasonably described a scientific or “systematic” approach to synthesize the full scope of claim 1 and claims dependent. See MPEP 2163.02, the standard for determining compliance with the written description.3
Although Applicant has written description support for the 39 compounds of Table P and their enantiomers of Table E, Applicant has not provided reasonably provided a description the support the broader scope of the claimed compounds of formula I of claim 1.
Accordingly, Applicant has not adequately described the invention for the breadth that is claimed. Applicant was not in possession of the claimed invention at the time the application was filed, the full scope of compounds of formula I, and that Applicant’s disclosed species do not support the claimed genus.
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 1-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/201398A1 (WO 398), published Oct. 8, 2020. WO 398 is cited on the IDS dated Dec. 7 2023 as Foreign Ref. No. 1.
As detailed above, claim 1 is directed to compounds of formula I where A, R2c, R1, R2a, R2b, R3, R4, R5a and R5b are claimed as recited therein.
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Claim 1 encompasses compound P4, where A is nitrogen, R2a is 1-cyano-cyclopropyl-, R2b is CF3, X is oxygen, R1 is hydrogen, R3 is methyl, R4 is a pyrazine claimed therein
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, where R4a, R4b and R4c are each hydrogen, and R5a and R5b are each hydrogen. See below at page 90, Table P.
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Regarding claim 1 and particularly examined compound P4, WO 398 teaches compound P32 at Table P: at page 126.
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As required by claim 1 and compound P4, WO 398’s compound P32 teaches with a similar core structure as per claim 1 and at equivalent positions to examined species P4, P32 discloses at said equivalent positions, A is nitrogen, R2a is 1-cyano-cyclopropyl-, R2b is CF3, X is oxygen, R1 is hydrogen, R3 is methyl, and R4a, R4b, R4c, R5a and R5b are each hydrogen.
It is noted that compound P32 of WO 398 is similar to examined compound P4 but for the presence of an unsubstituted pyrimidine versus an unsubstituted pyrazine at a position equivalent to the R4 group of examined claim 1, formula I.
Note that formula I of WO 398 claim 1 teaches R4 (equivalent to Applicant’s R4 group) is pyrimidine or pyrazine, among other nitrogen containing heteroaryl rings. Thus WO 398 teaches the substitution of pyrimidine for pyrazine as claimed.
Further, per MPEP 2144.09 (I.), (compounds which are “position isomers (compounds having the same radicals in physically different positions on the same nucleus}. . . . are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”). Accordingly, pyrimidine and pyrazine are position isomers of each other, differing as being 1,3 positioned nitrogens versus 1,4 positioned nitrogens upon a six-membered aromatic ring, even further justifying the substitution of one for another.
“Homology and isomerism involve close structural similarity which must be considered with all other relevant facts in determining the issue of obviousness. “ See MPEP 2144.09 (I.). The burden is upon Applicant to rebut the prima facie case of obviousness, see MPEP 2144.09 (VII.).
Prior to the filing of the instant application a person having ordinary skill in the art (PHOSITA) following the teachings of WO 398’s claim 1 and compound P32, would have found it prima facie obvious to substitute a pyrimidinyl for a pyrazinyl moiety per MPEP 2143 I. (B). 4
Further, as another relevant fact to the isomerism establishing the prima facie case of obviousness , WO 398 provides evidence where prior art compound P32 has insecticidal activity against the same species of insects as does claimed compound P4. See also MPEP 2144.09 (III.) citing to In re Merck etc., noting the relationship between structural similarities and similar activity and/or uses.5
Starting at page 133, Applicant’s specification teaches compound P4 has insecticidal efficacy against
Chilo suppressalis (Striped rice stemborer) (Ex. B1);
Diabrotica balteata (Corn root worm) (ex. B2);
Plutella xylostella (Diamond back moth) (Ex. B4); and
Spodoptera littoralis (Egyptian cotton leaf worm) (Ex. B5 and B6);
Starting at page 174; WO 398 teaches activity of compound P32 against the same species at similar doses/activity;
Diabrotica balteata (Corn root worm) (ex. B1)
Chilo suppressalis (Striped rice stemborer) (Ex. B4)
Plutella xylostella (Diamond back moth) (Ex. B5) and
Spodoptera littoralis (Egyptian cotton leaf worm) (Ex. B9).
As required by claim 2 (R3 is methyl); claim 3 (A is N); claim 5, (where R1 is hydrogen); claims 6-7 (where R2a and R2b are cyclopropyl substituted with CN and CF3, respectively); claims 8-9 (R4a, R4b, R4c are each hydrogen); claim 10 (R5a and R5b are each hydrogen); WO 398 compound P32 discloses at positions equivalent to those claimed by claims 2-10, the required claimed entities. See below, comparison of formula I of claim 1 with compound P32 of WO 398 Table P.
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vs.
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Regarding claim 4 where A is C-R2c and R2c is hydrogen or a halogen, i.e., A is CH, WO 398 teaches compound P25, where at position equivalent to where A is claimed, compound P25 teaches CH. See below.
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While P25 differs from Applicant’s compound P4 by virtue of a position as per claimed A’ position with a carbon (C-H) versus a nitrogen, it would be obvious to substitute a carbon (C-H) for a nitrogen, as per WO 398’s compound P25 above and teaching of compound of formula I of WO 398 claim 1, reproduced below. WO 398 claim 1 is as follows:
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A1 is N or CR2c, where R2c is hydrogen, halogen, etc. Thus, it is prima facie obvious to substitute nitrogen for C-H as claimed according to WO 398 claim 1. See MPEP 2143 I. (KSR rationale (b) Simple substitution of one known element for another to obtain predictable results).
Regarding claim 11, WO 398 teaches a composition comprising a compound and one or more auxiliaries and a diluent. See claim 10.
Regarding claim 13, WO 398 teaches a plant propagation material, such as a seed, comprising, or treated with or adhered thereto, one of its claimed compounds or claimed compositions. See claim 12.
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 1-11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12 of US 12527325 B2 (reference patent).
NOTE: This is the US patent equivalent of WO 2020 201398 cited by the Examiner in the obviousness rejection above.
Although the claims at issue are not identical, they are not patentably distinct from each other because -------the reference patent claims 1 compound of formula I,
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where A1, R1, R2a, R2b, R3, R5a and R5b are similar or nearly identical to equivalent substituents at the same positions as Applicant’s compounds of claim 1 formula, and also dependent claims 2-10.
While reference patent’s R4 moiety differs by virtue broadly claiming its R4 is pyrimidine, pyrazine, substituted pyrimidine, substituted pyrazine (among others), where examined claim 1 is limited to pyrazine, it would be prima facie obvious to substitute one for the other.
Per MPEP 2144.09 (I.), (compounds which are “position isomers (compounds having the same radicals in physically different positions on the same nucleus}. . . . are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”) because pyrimidine and pyrazine are position isomers of each other, differing as being 1,3 positioned nitrogens versus 1,4 positioned nitrogens upon a six-membered aromatic ring.
“Homology and isomerism involve close structural similarity which must be considered with all other relevant facts in determining the issue of obviousness. “ See MPEP 2144.09 (I.). The burden is upon Applicant to rebut the prima facie case of obviousness, see MPEP 2144.09 (VII.).
Prior to the filing of the instant application a person having ordinary skill in the art (PHOSITA) following the teachings of the reference patent’s claim 1, would have found it prima facie obvious to substitute a pyrimidinyl for a pyrazinyl moiety per MPEP 2143 I. (B). 6
Regarding examined claims 2-10 and the limitations of A, R2c, R1, R2a, R2b, R3, R4, R5a and R5b, these limitations are taught by reference patent’s claim 1, as further detailed by reference patent claims 2-9, as detailed therein.
Regarding examined claim 11, reference patent claim 10 discloses composition comprising the compound according to claim 1, one or more auxiliaries, one or more diluents, and optionally one more other active ingredient.
Regarding examined claim 13, reference patent claim 12 discloses the claimed plant propagation material.
Claims 1-11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 15-16 of US 12281095 B2 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because -------the reference patent claims 1 compound of formula I,
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where A1, A2, R1, R2a, R2b, R3, R5a and R5b are similar or nearly identical to equivalent substituents at the same positions as Applicant’s compounds of claim 1 formula, and also dependent claims 2-10.
While reference patent’s formula I differs by virtue of claiming a pyrimidine (when reference patent’s A2 is nitrogen), rather than a pyrazine as per examined claim 1, it would be prima facie obvious to substitute one for the other.
Per MPEP 2144.09 (I.), (compounds which are “position isomers (compounds having the same radicals in physically different positions on the same nucleus}. . . . are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”) because pyrimidine and pyrazine are position isomers of each other, differing as being 1,3 positioned nitrogens versus 1,4 positioned nitrogens upon a six-membered aromatic ring.
“Homology and isomerism involve close structural similarity which must be considered with all other relevant facts in determining the issue of obviousness. “ See MPEP 2144.09 (I.). The burden is upon Applicant to rebut the prima facie case of obviousness, see MPEP 2144.09 (VII.).
Prior to the filing of the instant application a person having ordinary skill in the art (PHOSITA) following the teachings of the reference patent’s claim 1, would have found it prima facie obvious to substitute a pyrimidinyl for a pyrazinyl moiety per MPEP 2143 I. (B). 7
Regarding examined claims 2-10 and the limitations of A, R2c, R1, R2a, R2b, R3, R4, R5a and R5b, these limitations are taught by reference patent’s claim 1, as further detailed by reference patent claims 2-12, as detailed therein.
Regarding examined claim 11, reference patent claim 13 discloses composition comprising the compound according to claim 1, one or more auxiliaries, one or more diluents, and optionally one more other active ingredient.
Regarding examined claim 13, reference patent claims 15-16 discloses the claimed plant propagation material.
Conclusion and Correspondence
In summary no claims are allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM LEE whose telephone number is (571)270-3876. The examiner can normally be reached M-F.
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, Adam C. Milligan can be reached at (571) 270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM Y LEE/Examiner, Art Unit 1623
/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621
1 CONTINUING DATA
This application is a 371 of PCT/EP2022/065034 06/02/2022
FOREIGN APPLICATIONS
INDIA 202111025712 06/09/2021
INDIA 202111032997 07/22/2021
EP 21211839.2 12/01/2021
2 3-difluoromethyl)-N-[1-(3-pyrazin-2-ylpyrazin-2-yl)ethyl]-5-(trifluoromethylybenzamide)
3 Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, inventor was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68,119 S.Ct. 304,312, 48 USPQ2d 1641, 1647 (1998); Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one must define a compound by "whatever characteristics sufficiently distinguish it"
4 (B) Simple substitution of one known element for another to obtain predictable result
5 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); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (The tri-orthoester fuel compositions of the prior art and the claimed tetra-orthoester fuel compositions would have been expected to have similar properties based on close structural and chemical similarity between the orthoesters and the fact that both the prior art and applicant used the orthoesters as fuel additives.) (See MPEP § 2144 for a more detailed discussion of the facts in the Dillon case.).
6 (B) Simple substitution of one known element for another to obtain predictable result
7 (B) Simple substitution of one known element for another to obtain predictable result
Prosecution Insights