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 I, encompassed by claims 1-7, drawn to compounds of formula (I), in the reply filed on 4/20/2026 is acknowledged.
Applicant has not pointed to any errors in Examiner’s analysis of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
Claims 8-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/20/2026.
Applicant’s election with traverse of Species A, compound 12, as the single compound of formula (I) in the reply filed on 4/20/026 is acknowledged. The traversal is on the ground that the burden is on the Examiner to provide reasons and/or examples to support any conclusion in regard to patentable distinction. See MPEP § 803, MPEP § 808.01(a).
This is not found persuasive because MPEP § 808.01(a) additionally states, “In applications where only generic claims are presented, restriction cannot be required unless the generic claims recite or encompass such a multiplicity of species that an unduly extensive and burdensome search would be necessary to search the entire scope of the claim. See MPEP § 803.02, MPEP § 809.02(a).
Thus, the requirement is still deemed proper and is therefore made FINAL.
Applicant elects the following species, compound 12:
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and indicates claims 1-7 read on said species.
In the Response to Restriction Requirements as filed on 4/20/2026, applicants have amended no claims; cancelled no claims; and added no new claims. Claims 8-14 are withdrawn from consideration as being drawn to nonelected inventions. Therefore, claims 1-14 are currently pending and claims 1-7 are under consideration.
Priority
The instant application is a 35 U.S.C. § 371 International Application PCT/JP2022/025756, filed on June 28, 2022, which claims priority to Japanese Application No. 2021-107327, filed on June 29, 2021.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 3/26/2024 is 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.
Claim Interpretation
In the limitation of R1b in claim 1, there is no curly bracket, }, to complete the open curly bracket of the claim. The Examiner has addressed the issue of these curly brackets in a 112(b) rejection, but for the purpose of examination, the closed curly bracket is interpreted as being in the limitation of R1b, following the phrase “…one or more substituents selected from Group D}” (bracket added). Otherwise, the closed curly bracket would be interpreted as being at the end of the limitation, and this would cascade to a 112(d) rejection of claim 4.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 contains a set of square brackets that appear before the first “wherein” statement and end preceding “or its N-oxide or a salt thereof.” The square brackets are grammatically improper and should be removed. Claim 1 contains the unfinished limitation of “a combination of G1, G2, and G3 represents”. This should either be removed or amended to state what those elements represent. Claim 1 is currently multiple sentences. The MPEP sec. 608.1(m) states “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.” In the limitation of R1b, there is an additional space between NR2R3 and the comma that should be removed. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: Claim 2 is currently two sentences. The MPEP sec. 608.1(m) states “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.” Appropriate correction is required.
Claim 6 is objected to because of the following informalities: Claim 6 contains a set of square brackets that appear before the first “wherein” statement and end preceding “its N-oxide or a salt thereof.” The square brackets are grammatically improper and should be removed. Appropriate correction is required.
Claim Rejections – Improper Markush Grouping
Claims 1-7 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature.
A Markush claim contains an “improper Markush grouping” if: (1) the species of the Markush group do not share a “single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a "single structural similarity” when they belong to the same recognized physical or chemical class or to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the Specification or known in the art to be functionally equivalent (see Federal Register, Vol. 76, No. 27, Wednesday, February 9, 2011, p. 7166, left and middle columns, bridging paragraph). If (1) or (2) apply to a Markush grouping, a rejection under the judicially approved “improper Markush grouping” doctrine is proper.
The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons:
The variable is defined as seen below:
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There are no required structural features in common such that each member of formula (I) would have at least one structural feature, which feature is essential to the activity/function of the claimed compound. One would not expect all of these compounds to be alternatively usable. The ring systems depicted above represent only a sampling of the numerous and various core structures of the compounds of formula (I) as recited in claim 1. However, these core structures exhibit no discernible structural similarity. Furthermore, the Markush group of formula (I) contains a plethora of nested variables (e.g. Groups A-K, R1a, R1-R13). Clearly no ‘‘single structural similarity’’ can be seen. In the absence of evidence to the contrary, all compounds within the metes and bounds of the extraordinarily large Markush grouping of the instant claims cannot be individually envisioned and each expected to be functionally equivalent.
Since the dependent 2-6 do not resolve the improper Markush grouping, they are similarly rejected.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. § 134 and 37 CFR41.31 (a) (1).
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-2, and 5 are 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.
Claim 1 is indefinite because it contains phrases within curly brackets (e.g. { } ) in the claim, in multiple instances. For example, in the limitation of R1b, Applicant recites, “a C1-C6 chain hydrocarbon group, a C1-C6 alkoxy group {the C1-C6 chain hydrocarbon group and the C1-C6 alkoxy group may be optionally substituted with one or more substituents selected from Group A}”. It is unclear if the bracketed phrase is meant to be a limitation in the claim or not. If it is meant to be a limitation, Examiner recommends removing the curly brackets from around the limitation. Claims 2 and 5 have the same 112(b) issue and should be similarly amended. Applicant is advised to review all examined claims to address this issue that the Examiner may have missed.
Claim 1 is rejected to in its definition of the limitation for R6. It is unclear why a definition for a variable R6 appears in the text of the claims, yet no such variable appears among the diagrammed compounds, or in the text of other claim limitations.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6, which depends on claim 1, is drawn to Q, which is a C6 aryl group substituted with R18a, R18b, and R18c. These variables can be hydrogen. However, claim 1 is drawn to Q as a C6-C10 aryl group, optionally substituted with Group H. Group H does not list hydrogen atom as an option. Therefore, claim 6 broadens the scope of the claim from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (CN 109232550 A, published 1/18/2019 , cited on IDS filed on 3/26/2024)(hereinafter, ‘Xu’).
The instant application claims compounds of formula (I) with the pyridine positioned para to the oxadiazolone, shown encircled below, for use in controlling arthropods:
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Xu teaches (Abstract; pages 1-4), the following compound species, shown below, for insecticidal use in controlling pests—arthropods such as pluteila xylostella, beet armyworm, tetranychus cinnabarinus, and panonychus ctri—and pest mites in agriculture. Here, the pyridine is positioned ortho to the oxadiazolone, shown encircled below:
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The compound species taught by Xu are positional isomers of compounds of instant claims 1-7, where the connection to the pyridine ring is shifted. These compounds are positional isomers and considered equivalent. The MPEP 2144.09 states “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. Adjacent homologues are generally so structurally similar that "without more" such structural similarity could give rise to prima facie obviousness. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). MPEP 2144.08(II)(A)(4)(c).
It is well known in the art that compounds having the same radical at different positions on the nucleus are position isomers. Their properties are often so nearly alike as to present difficulties in identification or separation. Ex parte Mowry (POBA 1950) 91 USPQ 219. A novel, useful compound which is isomeric with a compound of the prior art is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compound. In re Norris (CCPA 1950) 179 F2d 970, 84 USPQ 458; In re Finley (CCPA 1949) 174 F2d 130 and 135, 81 USPQ 383 and 387.
Here, the prior art teaches highly similar structural isomers of the instantly claimed invention, wherein such isomers have the same utility as the instantly claimed compounds. Therefore, the close structural similarity between the compounds of Xu and compounds of instant claims 1-7 render the instant claims 1-7 as obvious because one of ordinary skill in the art would readily appreciate that isomers of such compounds could be utilized for use in controlling arthropods.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lüthy et al. (US Patent 4,943,583, published 07/24/1990)(hereinafter, ‘Lüthy’).
Lüthy teaches (Abstract; col 14, lines 20-59; col 19-20, Table 1, Examples 16-17), the following compound species, shown below, for insecticidal use in controlling pests. Here, the pyridine is positioned ortho to the oxadiazolone, shown encircled below:
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By the same positional isomer argument used in the prior 103 rejection, claims 1-7 are similarly rejected.
Conclusion
All claims 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
/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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