Detailed Action
The present office action is in response to the reply filed on 13 May 2026.
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 .
Status
Claims 1-11 of the pending application have been examined on the merits. Claims 12-15 of the instant application are withdrawn (see “Response to Applicant Elections” below).
Priority
Applicants identify the instant application, Serial #: 18/577,757, filed 09 Jan 2024, as a National Stage Entry of International Patent Application #: PCT/EP2022/068368, filed 04 Jul 2022, which claims foreign priority from Foreign Application #s: EP21215021.3, filed 16 Dec 2021, EP21185079.7, filed 12 Jul 2021, and EP21185074.8, filed 12 Jul 2021.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 09 Jan 2024 and 30 Jan 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Applicant Elections
Applicant’s election with traverse of Group I, claims 1-11, in the reply filed on 13 May 2026 is acknowledged. Applicant further elected the following species of formula I in the reply filed 13 May 2026:
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A search for the elected species returned prior art.
The traversal is on the ground(s) that the common technical feature shared by Groups I-III are the compounds of formula (I) as found in claim 1.
This is not persuasive because the special technical feature is the core structure of formula (I) which is shared by all compounds in the instant claims. In this case the core structure was presented in the Office Action mailed 16 Mar 2026.
Applicant traverses on the grounds that claims to different categories of invention are considered to have unity if the claims are drawn to a product and process of use of said product. Applicant argues that because Groups I and II meet these criteria applicant claims the Groups have unity.
See MPEP § 1893.03(d). A group of inventions is considered linked to form a single general inventive concept when there is a technical relationship among the inventions that involves at least one common or corresponding special technical feature. The expression special technical features is defined as meaning those technical features that define the contribution which each claimed invention, considered as a whole, makes over the prior art.
Applicant further traverses on the grounds that unity of invention is evidenced by the International Search Report which examined all the claims. Applicant argues that the standards that apply to the International Searching Authority also apply to the U.S. Patent Office and so the unity of invention requirement is fulfilled.
See MPEP § 1893.03(d). Examiner may make a lack of unity requirement in a national stage application even if no such requirement was made by the ISA.
Applicant also traverses on the grounds that examiner has not provided proper reasons why each group lacks unity with each other group by describing the unique special technical feature in each group as required by MPEP § 1893.03(d) and that examiner has considered the type of claims without considering the special technical feature recited in each claim.
Examiner respectfully directs applicant to the Office Action mailed 16 Mar 2026 for the reasoning why the technical feature is not considered special in view of the art.
Finally, applicant traverses on the grounds that the Office Action fails to indicate whether Groups I-III are classified in different classes or subclasses and that the inventions are not independent because the compounds of claims 1-11 and methods of use are so closely linked that searching for the methods necessarily encompasses searching for the compounds. Applicant argues that no evidence exists that a search and examination directed to all claims would be a serious burden on the examiner.
This is not found persuasive because the instant application is subject to the “Unity of Invention” restriction standard and not the “Independent and Distinct/Undue Search Burden” restriction standard. Examiner respectfully reminds applicant that, as set forth in Rule 13.1 of the Patent Cooperation Treaty (PCT), "the international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.” Moreover, as stated in PCT Rule 13.2, "where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features." Furthermore, Rule 13.2 defines "special technical features" as "those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art."
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made with traverse in the reply filed on 13 May 2026.
Claim Objections
Claims 1-2 are objected to because of the following informalities: The claims are inconsistent on the use of semi-colons or commas to separate choices in Markush groups. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: The definition of R3a states, “R3a halogen, CN…” instead of “R3a is halogen, CN…” Appropriate correction is required.
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.
Claim 9 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.
Claim 9 is directed to the “compound of formula I according to claim 1, which is mainly of an isomer I.A.
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”
Is it unclear what is meant by “mainly of an isomer I.A.” The specification does not shed light on the definition of mainly and the person of ordinary skill in the art would be left questioning how much of the compound must be isomer I.A to meet the limit of “mainly.” Applicant may overcome this rejection by including specific limits of how much of isomer I.A must be present or by cancelling the claim.
Improper Markush Grouping Rejection
Claims 1-2 contain Markush groupings which do not have the coordinating conjunctions “and” or “or” to properly limit the alternatives defined in the list. See MPEP § 2117(I). For example, the definitions of R1, R11-13, R3, and R15 do not contain a coordinating conjunction to limit the alternatives or contain coordinating conjunctions in multiple places which confuse the definition of the groupings. Examiner respectfully requests applicant help in identifying all Markush groups which are in need of a coordinating conjunction. Claims 3-11 are rejected for failing to overcome the deficiencies of claims 1-2. Applicant may overcome this rejection by adding the proper coordinating conjunction to each Markush group in need of one.
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) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/053364 (provided in IDS 01/09/2024), hereinafter ‘364, further in view of JP 06345738, hereinafter ‘738.
The instant claims are drawn to compounds of formula I:
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In the remarks filed 13 May 2026 applicant elected the following compound as the species of formula I:
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wherein Q is CH; R3 is CF3 attached to the 3 and 5 position of the phenyl; n is 2; R1 is H; R2 is CH3; W is C(=X)R4; X is NR5; R5 is OCH3; and R4 is CH3.
The claims are further drawn to agricultural or veterinary compositions comprising a compound of formula I and/or at least one agriculturally or veterinarily acceptable salt thereof, and at least one inert liquid and/or solid agriculturally or veterinarily acceptable carrier (claim 10) and optionally a surfactant (claim 11).
‘364 teaches compound P2 which has utility as an insecticide, for controlling pests from the order of Hemiptera (Abstract; pg. 25, lines 10-11; pg. 29, lines 20-23; pg. 49, line 5):
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The compounds of ‘364 can also be prepared in formulations which include adjuvants such as carriers, solvents, and surface-active substances. However, compound P2 differs from the instantly elected compound in having a pyridine group in place of the elected W group.
‘738 teaches compounds of formula (I) which has utility against harmful insects without adversely affecting crops (pg. 1):
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‘738 teaches these compounds have utility against hemipteran pests (pg. 9). ‘738 further teaches compound 38 which is a species of formula (I) where A is N; R1 is a C9 alkyl chain; and R2 is CH3.
MPEP § 2144.09 states, “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities…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.”
Based on the teachings of ‘364 and ‘738 it would be obvious to the person having ordinary skill in the art that changing the pyridine group on the triazole moiety of Compound P2 of ‘364 for the oxime group of ‘738 would result in a compound that has similar utility as a pesticide against hemipteran insects. The artisan would further find it obvious that homologs of the oxime group would have the same function as the compound, including homologs where the oxime matches instant variable W. The artisan would be motivated to perform these changes to create compounds with similar functions (i.e., pesticides with activity against hemipteran pests) with potential for lower side effects.
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 foregoing 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 was 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
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan D. Mahlum whose telephone number is (703)756-4691. The examiner can normally be reached 8:30 AM - 5:00 PM ET, M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.D.M./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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