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 .
Election/Restrictions
Applicant’s election without traverse of Group IV, encompassed by claims 6, and 8-10, in the reply filed on March 20, 2026 is acknowledged.
Claims 1-5, 7, and 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 20, 2026.
Applicant election of Compound A-318, shown below, without traverse, is also acknowledged. Applicant submits that claims 6, 8-10 read on elected species.
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The guidelines in MPEP § 803.02 provide that upon examination if prior art is found for the elected species, the examination will be limited to the elected species. Relevant portion of MPEP § 803.02 is provided here for convenience:
As an example, in the case of an application with a Markush claim drawn to the compound X-R, wherein R is a radical selected from the group consisting of A, B, C, D, and E, the examiner may require a provisional election of a single species, XA, XB, XC, XD, or XE. The Markush claim would then be examined fully with respect to the elected species and any species considered to be clearly unpatentable over the elected species.
If on examination the elected species is found to be anticipated or rendered obvious by prior art, the Markush claim and claims to the elected species will be rejected, and claims to the nonelected species will be held withdrawn from further consideration.
If the examiner determines that the elected species is allowable over the prior art, the examination of the Markush claim will be extended. If prior art is then found that anticipates or renders obvious the Markush claim with respect to a nonelected species, the Markush claim shall be rejected; claims to the nonelected species would still be held withdrawn from further consideration. The prior art search will not be extended unnecessarily to cover all nonelected species, and need not be extended beyond a proper Markush grouping.
Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection, as by amending the Markush-type claim to exclude the species anticipated or rendered obvious by the prior art, the amended Markush-type claim will be reexamined. The examination will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during the reexamination that anticipates or renders obvious the amended Markush-type claim, the claim will be rejected and the action can be made final unless the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a). Amendments submitted after the final rejection further restricting the scope of the claim may be denied entry if they do not comply with the requirements of 37 CFR 1.116. See MPEP § 714.13.
The elected species was found in the prior art and the search and examination is limited to the elected species.
Priority
The instant application is a 35 U.S.C. § 371 of International Application PCT/JP2022/025567, filed June 27, 2022, which claims the benefit and priority of Japanese Application 2021-113233, filed July 08, 2021.
Information Disclosure Statement
The information disclosure statements (IDS) filed on March 27, 2024, November 19, 2024, and October 2, 2025 are in compliance with the provisions of 37 CFR 1.97. All references have been considered except where marked with a strikethrough. A signed copy of Form 1449 is included with this Office Action.
Specification - Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
With regard particularly to chemical patents, for compounds or compositions, the general nature of the compound or composition should be given as well as the use thereof, e.g., The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics. Exemplification of a species could be illustrative of members of the class. For processes, the reactions, reagents and process conditions should be stated, generally illustrated by a single example, unless variations are necessary. See MPEP § 608.01(b), Section B.
The abstract of the disclosure is objected to because: it is not in narrative form (i.e., the first sentence is a clause), is less than 50 words, and refers back to the specification itself (“wherein the symbols are as defined in the specification”). Correction is required.
Specification – Disclosure
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any of the errors of which applicant may become aware of in the specification.
Claim Objections
Claim 6 is objected to because of the following informalities: in the limitation of n, Applicant recites “n is an integer of from 1 to 5”, and in the limitation of m, Applicant recites “m is an integer of from 0 to 2.” (emphasis added). There are currently two prepositions next to each other, forming an incoherent phrase. Appropriate correction is required.
Claim 6 is objected for its use of non-standard Markush claim language. Markush claims are commonly formatted as “wherein R is independently selected from the group consisting of A, B, and C” or “wherein R is A, B, C, or D”. Specifically, in claim 6, Applicant recites “…n is an integer of from 1 to 5…”. Proper Markush claim language could optionally recite “…n is an integer selected from the group consisting of 0, 1, 2, 3, 4, and 5…” or ““…n is 0, 1, 2, 3, 4, or 5…”. The current recitation of the limitation of m has the same issue. Relevant guidance can be found in the MPEP § 2173.05(h), titled “Markush Claims,” which deals with claims that list alternatives. Appropriate correction is required.
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(s) 6, 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Usui et al. (WO 2020/179910 A1, published September 10, 2020, cited on IDS filed 3/27/2024)(hereinafter, “Usui”).
At page 25, compound A-58, Usui teaches the following compound, among others, for the same use described in instant application, as a nematicidal agent:
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This reference compound is different from a compound of formula (IA) as recited in Claim 6 only by the presence of a hydrogen at the carbon bonded to the reference R3 variable. In the reference application, this position is defined as hydrogen, whereas in the instant application, R2A and R3A are defined as “(C1-C6)-alkyl, or R2A and R3A together may form a (C3-C6)-carbon ring”. While the exact instant compound A-318 is not disclosed by Usui et al., it is generally noted that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Lincoln, 126 U.S.P.Q. 477, 53 U.S. P.Q. 40 (C.C.P.A. 1942); In re Druey, 319 F.2d 237, 138 U.S.P.Q. 39 (C.C. P.A. 1963); In re Lohr, 317 F.2d 388, 137 U.S.P.Q. 548 (C.C.P.A. 1963); In re Hoehsema, 399 F.2d 269, 158 U.S.P.Q. 598 (C.C.P.A. 1968); In re Wood, 582 F.2d 638, 199 U.S. P.Q. 137 (C.C.P.A. 1978); In re Hoke, 560 F.2d 436, 195 U.S.P.Q. 148 (C.C.PA.A. 1977); Ex parte Fauque, 121 U.S.P.Q. 425 (P.O.B.A. 1954); Ex parte Henkel, 130 U.S.P.Q. 474, (P.O.B.A. 1960). Given that applicant did not provide unexpected or unobvious results of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to substitute the “methyl” group to a hydrogen.
Examiner notes that the reference example from the prior art (compound A-58) is in the instant specification, used as a comparator against instantly claimed compound (A-318). Applicant recites, on page 93, para 0227:
As a result, each composition containing the compound disclosed in WO 2020/179910 (compound No. A-1, A-3, or A-58) was at a level of root knot index of 2. Whereas each present composition containing the compounds of the present invention (Compound No. A-1, A-2, or A-318) was at a level of root knot index of 1 or 0.
Root knot index of 2 corresponds to a state where the proportion of healthy roots is 50% or less to the entire roots, and indicates control effects to such an extent that cucumber as a crop plant to be tested cannot healthily grow. Whereas root knot index of 1 or 0 corresponds to a state where the proportion of healthy roots is 75% or more to the entire roots, and indicates high control effects such that cucumber can healthily grow.
Thus, the Applicant is purporting an unexpected or unobvious result since instantly claimed compound A-318 has a root knot index of 1, whereas reference compound has a root knot index of 2. However, the disclosed root knot index is cause for confusion. According to the disclosure, a root knot index of 2 corresponds to a state where the proportion of healthy roots is 50% or less, whereas a root knot index of 1 or 0 corresponds to a state where the proportion of healthy roots is 75% or more to the entire roots. So, what happens to a proportion of healthy roots between 50 and 75%? Is there no index value for these situations? Furthermore, in an index, how can two numbers (here, 1 or 0) both correspond to the same state? One would think that each discrete number in an index has its own specific definition or value or range. How are these percentages determined. In Table 5, on page 91, para 0221, Applicant discloses yet another set of measures for a root knot index, noting that a root knot value of 2 corresponds to “knots formed to a moderate degree”, whereas a root knot value of 1 corresponds to “knots formed to a slight degree”. It would seem to the Examiner that the difference of one unit, between “moderate” and “slight”, in an index of only 5 values (0 through 4) is not unexpected or unobvious.
Other related applications that test root knot formation due to nematodes, using the same scale of the instant specification, provide more exact values. For instance, Harman et al. (UW 2019/0274311 A1, hereinafter ‘Harman’) discloses, on page 15, para 0136-0137, the root galling index results using various treatments, and provides galling index values of, for instance, 3.33 and 3.17 for treatment 2, shown below, with both positive and negative controls, as well:
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Harman discloses the root galling index, para 0137, which is markedly different in the definition at each value. Harman’s disclosure teaches that a value of 1 corresponds to visible galling, and a value of 2 corresponds to 25% of roots with galls, whereas the instant specification teaches that a value of 2 is both “knots formed to a moderate degree” (Table 5, para 0221) and that the “proportion of healthy roots is 50% or less to the entire roots” (page 93, lines 15-16). Clearly, there is some disagreement here.
And further, even a brief survey of the literature found multiple root knot indices, including the root-knot index by Zeck (“A rating scheme for field evaluation of root-knot nematode infestations”, published 1971)(hereinafter, ‘Zeck’), which is an 11-step rating system that includes more nuance. It is a rating system used presently, as demonstrated by Iwata et al. (US 2025/0160330 A1, hereinafter, “Iwata”) on pages 58-59, para 0604-0615:
The diluted solution 20 mL are soil which is polluted with southern root-knot nematode (Meloidogyne incognita) 400 mL are mixed, and a root of healthy tomato seedlings (on the developmental stage of third to fourth true leaf) is transplanted in the soil. After the transplanting, the diluted solution 40 mL is irrigated onto soli of tomato seedlings. After 10 days, the roots are pull out from the soil, washed and the damage degree of the root (root-knot degree) is examined according to a root-knot index by Zeck (Zeck, W. M. (1971): Pflanzenschutz-Nachrichten. Bayer AG, 24, 141-144).
0: No root-knots is recognized.
1: By careful observation, several small root knots can be recognized.
2: Several small root-knots can be easily confirmed similarly to 1.
3: Many small root-knots are found, and some of which are fused. A function of the root is not almost lost.
4: Many small root-knots are found, and some large ones are found. Most of the root are functional.
5: Twenty-five (25) % of the root were remarkably covered with root-knots, and the roots were not functional.
6: Fifty (50) % of the root were remarkably covered with root-knots, and the roots were not
functional.
7: Seventy-five (75) % of the root were remarkably covered with root-knots, and the regenerative ability of the roots is lost.
8: No healthy roots is found, and the uptake of nutrients by the plant is inhibited. The foliage is still green.
9: The root system that is completely covered with root-knots is rotting. Plants are dying.
10: Plants and roots are died.
Therefore, claims 6, 8-10 would have been practiced with a reasonable expectation of success. The difference between the prior art and instantly claimed compounds is the presence of a single methyl group, and Applicant has failed to sufficiently show an unexpected or unobvious result, and so, claims 6, 8-10 are rejected under 35 U.S.C. 103.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103. 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 is 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.
Claim(s) 6, 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Usui in view of Jeanmart et al. (WO 2013/144224 A1, published October 3, 2013)(hereinafter, ‘Jeanmart’).
Usui teaches the following formylhydrazone species on page 25, Example A-58, as well as the compounds generically, both shown below:
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Usui does not teach the presence of another R3 group at the carbon bonded to the reference R3 variable to form a geminally-substituted carbon.
Jeanmart teaches the genus, shown below, where A1 is phenyl, R4 is phenyl, R1 and R2 are both methyl, HetAr is 1,2,4-triazole, and R3 is N-NR6R7, where R6 and R7 are be H, C1-C10 alkyl, and aryl. Representative species are also shown below.
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Jeanmart teaches the reference compounds for the same use, on page 25, lines 19-26, reciting, “These
further compounds...can also be selective herbicides as well as insecticides, fungicides, bactericides, nematocides, molluscicides…”.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute the proton species of Usui with the gem-dimethyl substitution pattern of Jeanmart because Jeanmart had taught the gem-dimethyl-containing species to be useful as nematicidal agents. One would have been motivated as a matter of making additional compounds that behave as nematicidal agents. One would have had a reasonable expectation of success because Usui already taught the instantly claimed compounds, except where the reference R3-substituted carbon has a proton instead, as successful nematicidal agents. Therefore, the invention as a whole is 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.
Conclusion
Claims 6, 8-10 are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUKE ALAN BORALSKY whose telephone number is (571)272-9746. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 am.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.A.B./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624
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