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 .
Claim Objections
Claim 1 is objected to because of the following informalities: immediately after “thereof” in line 2 there should be recited --- , ---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: immediately after “haloalkoxy,” in the last line of page 3, there should be recited --- and ---. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: immediately after “haloalkyl,” in the antepenultimate line, there should be recited --- and ---. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: immediately after “halogen,” in the antepenultimate line, there should be recited --- and ---. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: immediately after “chlorine,” in the antepenultimate line, there should be recited --- and ---. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: immediately after “trifluoromethyl” in line 5, there should be recited --- , ---. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: immediately after “chlorine,” in the penultimate line, there should be recited --- and ---. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: immediately after “chlorine” in the last line there should be recited --- , ---. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: immediately after “regulators,” in the penultimate line, there should be recited --- and ---. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: immediately prior to “of one” in line 3, and immediately after “claim 1” in line 4, the “-“ should be removed. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 6 recites use of one or more compounds of the general formula (I) or salts or N-oxides thereof according to claim 1. The claims are rejected under 35 U.S.C. 101 because the claim does not fall within at least one of the four categories of patent eligible subject matter (i.e. process, machine, manufacture, or composition of matter). The claim recites a use but fails to recite steps involved in the process, which results in a claim not being proper process claim under 35 U.S.C. 101.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, because since the claim does not set forth any steps involved in the process, it is unclear as to what process the claim is intended to encompass. A claim is indefinite where it merely recites a use without any active, positives steps delimiting how this use is actually practiced.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Gay (US 4,337,081, 06/29/1982) in view of Witschel et al. (WO 2013/076316 A2, 05/30/2013, IDS reference) (hereinafter Witschel).
Gay discloses 5-amido-3-trihalomethyl-1,2,4-thiadiazole compounds of the formula:
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including wherein R1 CF3; R2 is hydrogen; and R3 is an aryl group having 6-8 carbon atoms, and their use as herbicides (abs), fungicides and insecticides, by contacting undesirable plants and vegetation with an herbicidally effective amount of said compounds to control said undesirable plants. The compounds are formulated with a carrier or other substances that facilitate handling, and other known fungicides, herbicides, and insecticides (col. 3, lns. 9-42).
Gay differs from the instant claims insofar as not explicitly disclosing an instantly claimed R2 substituent in the aryl group having 6 carbon atoms, or wherein the aryl group comprises a nitrogen.
However, Witschel discloses N-(triazol-5-yl)hetarylcarboxamides of formula (I):
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including wherein X1 is CR1 and R1 is C1-C6 alkyl; X2 is CR2 and R2 is H; X3 is CR3 and R3 is H; X4 is N; and R5 is H, and their use as herbicides (p. 1, ln. 30 – p. 2, ln. 6). Witschel further discloses compositions comprising at least one of the said hetarylcarboxamides and at least one auxiliary for controlling unwanted vegetation by allowing a herbicidally effective amount of at least one of the said hetarylcarboxamides to act on unwanted plants (p. 5, ln. 36 – p. 6, ln. 4).
Accordingly, it would have been obvious to one of ordinary skill in the art to have included substituents wherein X1 is CR1 and R1 is C1 alkyl (i.e. methyl); and X4 is N, in the aryl group of Gay, since each is a known and effective substituent suitable for herbicidal compounds comprising an aryl group with 6 carbons as taught by Witschel. See MPEP § 2144.09(I). Moreover, in any case, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed substituents through routine experimentation based on the desired herbicidal activities. See MPEP § 2144.05(II)(A).
Regarding claim 7, as discussed above, Gay discloses wherein the compounds are formulated with a carrier or other substances that facilitate handling (i.e. auxiliaries), and other known fungicides, herbicides, and insecticides (i.e. agrochemically active substances).
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Gay (US 4,337,081, 06/29/1982) in view of Kraus et al. (WO 2014/184017, 11/20/2014) (hereinafter Kraus).
The disclosure of Gay is discussed in detail in the rejection above, and differs from the instant claims insofar as not explicitly disclosing an instantly claimed R2 substituent of the aryl group having 6 carbon atoms, or wherein the aryl group comprises a nitrogen.
However, Kraus discloses substituted N-(tetrazol-5-yl)- and N-(triazol-5-yl)pyridin-3-yl-carboxamides of formula (I)
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wherein R1 is halogen; R3 is hydrogen; R4 and R5 are different and independently selected from hydrogen and C1-C4-alkyl (p.2 – p.3, ln. 19), and their use as herbicides (abs). The halogen includes fluorine and chlorine (p. 7, ln. 16).
Accordingly, it would have been obvious to one of ordinary skill in the art to have included substituents wherein R1 is a halogen such as fluorine; and R5 is a C1-alkyl (i.e. methyl), in the aryl group of Gay, since each is a known and effective substituent suitable for herbicidal compounds comprising an aryl group with 6 carbons as taught by Kraus. See MPEP § 2144.09(I). Moreover, in any case, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed substituents through routine experimentation based on the desired herbicidal activities. See MPEP § 2144.05(II)(A).
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/684,555 in view of Witschel et al. (WO 2013/076316, 05/30/2013, IDS reference) (hereinafter Witschel). The pending claims differ from the copending claims insofar as reciting an instantly claimed R2 group. However, Witschel discloses N-(triazol-5-yl)hetarylcarboxamides of formula (I):
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including wherein X1 is CR1 and R1 is C1-C6 alkyl; X2 is CR2 and R2 is H; X3 is CR3 and R3 is H; X4 is N; and R5 is H, and their use as herbicides (p. 1, ln. 30 – p. 2, ln. 6). Witschel further discloses compositions comprising at least one of the said hetarylcarboxamides and at least one auxiliary for controlling unwanted vegetation by allowing a herbicidally effective amount of at least one of the said hetarylcarboxamides to act on unwanted plants (p. 5, ln. 36 – p. 6, ln. 4).
Accordingly, it would have been obvious to one of ordinary skill in the art to have included substituents wherein X1 is CR1 and R1 is C1 alkyl (i.e. methyl); and X4 is N, in the aryl group of Gay, since each is a known and effective substituent suitable for herbicidal compounds comprising an aryl group with 6 carbons as taught by Witschel. See MPEP § 2144.09(I). Moreover, in any case, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed substituents through routine experimentation based on the desired herbicidal activities. See MPEP § 2144.05(II)(A).
This is a provisional nonstatutory double patenting rejection.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Burow (EP 0049071 A1, 04/07/1982), directed to N-arylbenzamide derivatives and their use as herbicides.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Thursday 8:30 AM - 6:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SAHANA KAUP can be reached at (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612