DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant's election with traverse of Group I, claims 1-10, and the phenyluracil of formula 1.1, water, and alcohol ethoxylate and arylphenol ethoxylate in the reply filed on 23 February 2026, is acknowledged. The traversal is on the grounds that a lack of unity was not found during the international stage and that Witschel et al. (WIPO International Patent Publication No. WO 2019/101551 A1) do not teach example 1.1 as shown below, reproduced from Preparation Example 1.1 in the instant spec.:
PNG
media_image1.png
194
468
media_image1.png
Greyscale
Regarding the first argument, this is not found persuasive because the International Search Authority does not search or examine according to the same code, laws, or rules as the U.S. Patent and Trademark Office and their findings do not change the findings of the USPTO. Regarding the second argument, Applicant is correct that the description of structure Y55 from Witschel et al. (reproduced below) in the Requirement for Restriction/Election mailed on 23 December 2025, erroneously swapped R35 and R37 and claimed they were identical to Example 1.1 above
PNG
media_image2.png
86
117
media_image2.png
Greyscale
while the hydrogen and methyl group were swapped in the teachings of Witschel et al.
However, in view of the teachings of Witschel et al. and Kunz et al. (WIPO International Patent Publication No. WO 99/55693, published on 4 November 1999), the shared technical feature is still not a special technical feature (vide infra).
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
Claims 1-12 are pending in the instant Office Action.
Claims 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 23 February 2026.
Claims 6 and 8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Specifically, because instant claim 6 limits R7 to a C1-3 alkoxy group, instant claim 8 limits Z to CH, and the elected compound of Example 1.1 has R7 as a hydrogen atom and Z as a nitrogen atom, the claims are drawn to nonelected species. Applicant timely traversed the restriction (election) requirement in the reply filed on 23 February 2026.
Claims 1-5, 7, and 9-10 are under consideration in the instant Office Action to the extent of the following elected species:
the phenyluracil of formula (I) is Example 1.1, wherein R2, R3, and R4 are F, R5 is Cl, R7 is H, R9 is C2-alkyl, and Z is N;
the inert liquid carrier is water; and
the one or more surface-active substances are alcohol ethoxylate and arylphenol ethoxylate.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent European Application No. EP 21185972.3, filed on 16 July 2021, has been received from the International Bureau.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 11 and 25 January 2024, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 1-5, 7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Witschel et al. (WIPO International Patent Publication No. WO 2019/101551 A1, published on 31 May 2019, provided by Applicant in the IDS filed on 11 January 2024, hereafter referred to as Witschel) in view of Kunz et al. (WIPO International Patent Publication No. WO 99/55693, published on 4 November 1999, hereafter referred to as Kunz) and Patani et al. (Chem. Rev. 1996, 96 (8), 3147., hereafter referred to as Patani).
Witschel teaches compositions comprising phenylethers of the formula (I), reproduced below, processes of preparing the compounds, and methods of using them for controlling harmful plants (Abstract).
PNG
media_image3.png
381
814
media_image3.png
Greyscale
In formula (I) above, Witschel teaches that R1 and R2 may be halogens, X, Q, and W may be oxygen, R3 and R4 may be hydrogen, R5 may be OR6, where R6=C1-6 alkyl, and n=1 (claim 1). In some embodiments, Z is a pyridyl group and Y is the subunit Y55, which has the following formula:
PNG
media_image2.png
86
117
media_image2.png
Greyscale
PNG
media_image4.png
200
400
media_image4.png
Greyscale
Witschel teaches that A1 may oxygen, R35 may be a C1 alkyl group, R37 may be a halogen or C1-6 alkyl group, and R12 may be a C1-6 haloalkyl group, in one particular embodiment the specific group 2,2-difluoroethyl (claim 1 and pg. 9, lines 35-39). The resulting chemical structure, depicted below, differs from the structure of elected Example 1.1 only in that the carbon ortho to the 2,2-difluoroethyl group on the uracil moiety is bonded to a methyl group rather than a hydrogen atom.
When the compound of formula (I) is in a composition, Witschel teaches that the composition may also comprise “at least one inert liquid and/or solid carrier and, if appropriate, at least one surface-active substance” (claim 9). In one embodiment, the liquid carrier is water (pg. 100, lines 9-15). Suitable surface-active substances are taught to include surfactants, examples of which include alkoxylated alcohols and arylphenols (pg. 100, lines 40-43). “Alkoxylated” is interpreted as including the sub-genus “ethoxylated”, therefore alkoxylated alcohols and alkoxylated arylphenols are interpreted as including ethoxylated alcohols and ethoxylated arylphenols.
Witschel does not teach the carbon ortho to the 2,2-difluoroethyl group on the uracil moiety to be bonded to a hydrogen atom. This deficiency is offset by the teachings of Kunz.
Kunz teaches novel herbicides of formula (I) (reproduced below, left), methods of their preparation, herbicidal compositions comprising the herbicides of formula (I), and methods of using the compositions to control undesirable plant growth (Abstract and claims 1-8). Attached to the central phenyl moiety may be groups W1-10 (pg. 3) and in a preferred embodiment is W1 (reproduced below, right) (pg. 10, final para.).
PNG
media_image5.png
300
734
media_image5.png
Greyscale
Figures reproduced from Kunz, molecular structure of formula (I) (left) and W1 (right).
Kunz teaches that an “especially preferred” embodiment of W1 has X6 and X7 as oxygen atoms, which is a uracil moiety and would make the herbicide of formula (I) a phenyluracil (pg. 10, final para.). In addition, the especially preferred embodiment of W1 has R15 as a methyl group and R17 as a hydrogen atom (pg. 10, final para.). R16 is taught to be a C1-3 halogenalkyl group (pg. 3), with the halogen preferably being fluorine (pg. 5, final para.), which includes trifluoromethyl and 2,2-difluoroethyl groups (pg. 5, final para. and pg. 10, final para.).
Patani teaches the use of bioisosterism in the rational modification of drug compounds to advance drug development (pg. 3147-3148, Introduction, para. 1-2). Grimm’s Hydride Displacement Law, which states that atoms near each other on the periodic table when “united” with 1-4 hydrogen atoms behave like “pseudoatoms” and have similar properties, is taught to underpin the concept of bioisosterism (pg. 3148, right col., para. 2). Bioisosteres may be utilized because a “lead compound with a desired pharmacological activity may have associated with it undesirable side effects, characteristics that limit its bioavailability, or structural features which adversely influence its metabolism and excretion from the body” (pg. 3147, left col., para. 1).
A direct adaption of Grimm’s Hydride Displacement Law is taught by Patani to produce the group of isosteres which includes fluorine, hydroxyl, amino, and methyl groups as replacements for hydrogen (pg. 3152, 4. Fluorine and Hydroxyl, Amino, or Methyl Groups as Replacements for Hydrogen). Patani teaches that this group of atoms/functional groups may display no impact on physicochemical properties or, such as in the example of Table 12, a hydrogen substituent may have greater inhibitory activity than Cl, CH3, OH, or NH2 groups (pg. 3152, left col., para. 3 - pg. 3153, right col., para. 1.).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Kunz with the teachings of Witschel and Patani to substitute the methyl group bonded to the carbon ortho to the 2,2-difluoroethyl group on the uracil moiety with a hydrogen atom because simple substitution of a known simple substituent with another produces predictable results. Witschel teaches the phenyluracil herbicide above as well as compositions comprising the herbicide alongside water, alkoxylated alcohols, and alkoxylated arylphenols. Kunz teaches that a phenyluracil herbicide with similar structure and a hydrogen in place of the aforementioned methyl group still possesses herbicidal activity. Further, Patani teaches that hydrogen and methyl groups are bioisosteres and substitution of one for the other can result in no observable impact on properties or may enhance activity toward the target. An ordinary artisan would desire optimized activity in their phenyluracil pesticide and would be motivated to substitute the methyl group taught by Witschel with the bioisostere hydrogen atom to achieve it.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. See MPEP § 2144.09. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). “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.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-5, 7, and 9-10 in view of the teachings of Witschel, Kunz, and Patani.
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 1-5, 7, and 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10 of copending Application No. 17/908,622 in view of Witschel (WIPO International Patent Publication No. WO 2019/101551 A1, published on 31 May 2019, provided by Applicant in the IDS filed on 11 January 2024).
This is a provisional nonstatutory double patenting rejection.
Copending Application No. 17/908,622 recites a phenyluracil of formula (I), reproduced below
PNG
media_image6.png
145
331
media_image6.png
Greyscale
where R1 may be a C1-6 alkyl group, R2 may be a C1-6- haloalkyl group, R3 may be a hydrogen atom, Y, X, Q, and W may be oxygen, R4 may be a halogen, Z may be a pyridyl group, R6 may be a hydrogen atom, R7 may be OR8 , wherein R8 may be a C1-6 alkyl group, and n may be 1-3 (claims 1-8). The phenyluracil of formula (I) is further recited to be used in an herbicidal composition comprising “at least one inert liquid and/or solid carrier and, optionally, at least one surface-active substance” (claim 10).
Copending Application No. 17/908,622 does not recite the phenyluracil of formula (I) to have R5 as a hydrogen atom nor the bromine atom para to the uracil moiety to be a chlorine atom. These deficiencies are offset by the teachings of Witschel.
Witschel has been described above.
Instant claims 1-5, 7, and 9-10 are obvious variations of copending Application No. 17/908,622 because the phenyluracil of formula (I) recited by Application ‘622 is nearly identical to the phenyluracil recited in instant claims 1-5, 7, and 9-10, with only a hydrogen atom and chlorine atom substituted at the positions indicated above. Witschel teaches the phenyluracil herbicide above, with the hydrogen atom and chlorine atom in the indicated positions, to possess herbicidal activity and it would have been obvious to a person of ordinary skill to make these substitutions to optimize herbicidal activity in the phenyluracil.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. See MPEP § 2144.09. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). “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.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Claims 1-5, 7, and 9-10 are directed to an invention not patentably distinct from claims 1-8 and 10 of commonly assigned copending Application No. 17/908,622 in view of Witschel. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned copending Application No. 17/908,622, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean J. Steinke, Ph.D., whose telephone number is (571) 272-3396. The examiner can normally be reached Mon. - Fri., 09:00 - 17:00 ET.
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, David Blanchard, can be reached at (571) 272-0827. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
Prosecution Insights