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 .
DETAILED ACTION
This office action is in response to the Response to Election/Restriction filed 14 May 2026 for application 18/685,544 filed 22 February 2024, 371 of PCT/EP2022/072821 16 August 2022, claiming priority from EP21215019.7 filed 16 December 2021, EP21193535.8 filed 27 August 2021, and EP21193536.6 filed 27 August 2021. Claims 1-17 are amended. Currently, claims 1-17 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 22 February 2024 and 06 March 2024 was filed on and after the mailing date of the application on 22 February 2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election of compound I1-12 of formula I, with traverse, illustrated below, is acknowledged:
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Applicant's election with traverse of compound I1-12 in the reply filed on 14 May 2026 is acknowledged. The traversal is on the ground(s) that no evidence exists that a search and examination directed to additional species would be a serious search burden on the examiner… it would be wasteful of the time, effort, and resources of both the applicants and the Patent Office to prosecute individual species in separate applications. This is not found persuasive because examination will be expanded on further species as they are determined to be allowable within one examination action. If all species are determined allowable, claim examination will also be expanded.
The requirement is still deemed proper and is therefore made FINAL.
Applicant informs that claims 1-7 and 9-17 read upon this election.
Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention or species, there being no allowable generic or linking claim.
The elected species was searched and found to be free of the prior art.
The closest match is compound P41 disclosed by Schaetzer et al. (Pesticidally active pyrazine-amide compounds, WO 2021/037614 A1, 2021; entered in the IDS on 22 February 2024) (pg. 106 – Table P):
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.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7 and 9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Heisler et al. (Novel heteroaryl-substituted pyrazine derivatives as pesticides, US 2023/0242513 A1, 2023, filed 23 June 2021).
Heisler discloses compounds of formula I-ix for use in the control of animal pests including arthropods and insects in plant protection and for controlling ectoparasites on animals (para. 0001), where formula I-ix is illustrated as (pg. 14):
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.
The substitution pattern can be where R81 = Me amongst several other substitutions (para. 0186-0187), where R5 and R6 can be selected from several substitutions including H (para. 0090-0091), and where R7n has substituents defined in para. 0012-0022, including 3,5-CF3 as seen in compound I-3:
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As such, claim 1 is anticipated by Heisler.
Regarding the limitations of claim 2, wherein the compound of formula I is further described with R11, R11a, R12, R13, R121, R131, R14, R2, R4, R41, and R15, are met as R2 = R4 = C1-alkyl and R11, R11a, R12, R13, R121, R131, R14, and R41 do not apply in the rejection supra.
Concerning the limitation of claim 3, wherein R1 is H, is met as Heisler describes structures where R1 = H.
With respect to the limitation of claim 4, wherein R2 is CH3, is met as Heisler describes structures where R2 = CH3.
With regards to the limitations of claim 5, wherein R3 is further described, are met as Heisler describes structures that read upon the limitations with compound I-3 as one example.
With concern to the limitations of claim 6, wherein n is 2 and R3 is in positions 3 and 5, are met as Heisler describes structures that read upon the limitations with compound I-3 as one example, where n = 2 and the -CF3 substituents are in positions 3 and 5.
Regarding the limitation of claim 7, wherein X is CH, is met as Heisler describes structures where X is CH, compound I-3 being one example.
Concerning the limitations of claim 9, wherein R4 is further described, are met as Heisler describes structures that read upon the limitations where R81 can be several substitutions including C1-alkyl.
Heisler also teaches that seeds are contacted by the compounds of Heisler’s invention and also indicates that all plants and plant parts can be treated with compounds according to the invention (Claims 13-15, especially claim 15; Paragraphs [0746]-[0750]; [0308]; [0310]; [0315]-[0316]; [0333], [0353]; [0415]; [0434]-[0460] (Treatment of Seed)). The application rate of seed dressing formulations usable in accordance with the invention are generally between 0.001 and 50 g/kg of seed, preferably between 0.01 and 15 g/kg of seed [0460].
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 non-obviousness.
Claims 10 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Heisler et al. (Novel heteroaryl-substituted pyrazine derivatives as pesticides, US 2023/0242513 A1, 2023, filed 23 June 2021) in view of Schaetzer et al. (Pesticidally active pyrazine-amide compounds, WO 2021/037614 A1, 2021; entered into the IDS on 22 February 2024).
Heisler discloses compounds of formula I-ix, where the substitution pattern can be where R81 = Me amongst several other substitutions (para. 0186-0187), where R5 and R6 can be selected from several substitutions including H (para. 0090-0091), and where R7n has substituents defined in para. 0012-0022, including 3,5-CF3 as seen in compound I-3.
They do not, however, teach where the compound is mainly the S-isomer.
Schaetzer rectifies this deficiency by teaching that structurally similar compounds of formula I (pg. 1, line 12):
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where the preferred stereochemistry is described in formula I’a (pg. 9, line 4):
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and exemplified in compound P39 (pg. 95):
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as pesticidally active compounds for the use in controlling animal pests, including arthropods, such as insects or representatives of the order Acarina (pg. 1, lines 1-4).
As such, it would be prima facie obvious, to a person of ordinary skill in the art, to consider structures disclosed by Heisler with a preference of this isomer taught by Schaetzer as both disclose structurally similar compounds for the use as pesticidally active compounds.
Regarding the limitations of claim 12, an agricultural or veterinary composition comprising at least one compound according to claim 1 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, are met as Schaetzer teaches salt forms that include both pharmaceutically and veterinary acceptable salts, citing several references (pg. 67, lines 30-40) and Heisler teaches various carriers, solid or liquid, natural or synthetic, organic and inorganics (para. 0321-0326).
Concerning the limitations of claim 13, an agricultural composition for combating animal pests comprising at least one compound as defined in claim 1 and at least one inert liquid and/or solid acceptable carrier and, if desired, at least one surfactant, are met as Heisler teaches various carriers (para. 0321-0326) and surfactants (para. 0328-0330).
With respect to the limitations of claims 14, a method for combating or controlling invertebrate pests comprising contacting said pest or its food supply, habitat or breeding grounds with a pesticidally effective amount of at least one compound as defined in claim 1, are met as Heisler teaches various applications including crop protection (para. 0426-0460), animals (para. 0461-0497), vectors (para. 0497-0507), industrial materials (para. 0508-0512), control of animal pests in the hygiene sector (para. 0513-0515) whereas Schaetzer teaches application towards animal pests (pg. 57-59), controlling damage to plant parts, molluscs (pg. 60), crops, ornamental species (pg. 61-62), transgenic plants (pg. 63-65), stored goods (pg. 65), controlling pests (pg. 68-74) amongst other topics.
With regards to the limitations of claim 15, a method for protecting growing plants from attack of infestation by invertebrate pests comprising contacting a plant, or soil or water in which the plant is growing, with a pesticidally effective amount of at least one compound as defined in claim 1, are met as Heisler teaches various applications including crop protection (para. 0426-0460), animals (para. 0461-0497), vectors (para. 0497-0507), industrial materials (para. 0508-0512), control of animal pests in the hygiene sector (para. 0513-0515) whereas Schaetzer teaches application towards animal pests (pg. 57-59), controlling damage to plant parts, molluscs (pg. 60), crops, ornamental species (pg. 61-62), transgenic plants (pg. 63-65), stored goods (pg. 65), controlling pests (pg. 68-74) amongst other topics.
Concerning the limitations of claim 16, it is noted that Heisler teaches a rate of application of seed that encompasses the rate recited in dependent claim 16. Thus, it would have been prima facie obvious to optimize this rate to achieve the optimal application rate, including the range recited in Applicant’s claim 16. A prima facie case of obviousness necessarily exists when the prior art range overlaps or touches a claimed range, such as in the instant rejection. MPEP § 2144.05.
With concern to the limitations of claim 17, a method for treating or protecting an animal from infestation or infection by an invertebrate pest comprising bringing the animal in contact with a pesticidally effective amount of at least one compound of the formula I as defined in claim 1, a stereoisomer thereof, and/or at least one veterinarily acceptable salt thereof, are met as Heisler teaches various applications including crop protection (para. 0426-0460), animals (para. 0461-0497), vectors (para. 0497-0507), industrial materials (para. 0508-0512), control of animal pests in the hygiene sector (para. 0513-0515) whereas Schaetzer teaches salt forms that include both pharmaceutically and veterinary acceptable salts, citing several references (pg. 67, lines 30-40) and application towards animal pests (pg. 57-59), controlling damage to plant parts, molluscs (pg. 60), crops, ornamental species (pg. 61-62), transgenic plants (pg. 63-65), stored goods (pg. 65), controlling pests (pg. 68-74) amongst other topics.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Elected species I1-12 is allowable subject matter:
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Reasons For Allowance
The following is an examiner’s statement of reasons for allowance: no example of a structure of formula Int. is described in the prior art in a 100% embodiment. The closest Heisler et al. (Novel heteroaryl-substituted pyrazine derivatives as pesticides, US 2023/0242513 A1, 2023, filed 23 June 2021) in view of Schaetzer et al. (Pesticidally active pyrazine-amide compounds, WO 2021/037614 A1, 2021; entered into the IDS on 22 February 2024) for the rationale applied above in paragraphs 22-26. However, Heisler does not teach where R4 is H was found.
The following is a statement of reasons for the indication of allowable subject matter: elected species I1-12 was found to be free of the prior art. The closest match is compound P41 disclosed by Schatezer.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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 1-7, 9-10 and 12-17 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-5, 7-10 and 12-18 of copending Application No. 19/498,820 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1-7, 9-10 and 12-17 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-8 and 10-17 of copending Application No. 19/498,816 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1-7, 9-10 and 12-17 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1-5 and 7-18 of copending Application No. 19/498,808 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1-7, 9-10 and 12-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 17-23 of copending Application No. 19/139,401 in view of Schaetzer et al. (Pesticidally active pyrazine-amide compounds, WO 2021/037614 A1, 2021; entered into the IDS on 22 February 2024). Although the claims are not identical, they are not patently distinct from one another because the claims of ‘401 recite a compound of formula I, an agricultural or veterinary composition, a method for combating or controlling invertebrate pests, a method for protecting plants from pests, a seed composition, and a method for treating or protecting animals from invertebrate pests.
Schaetzer teaches structurally similar compounds of formula I (pg. 1) as pesticidally active compounds for the use in controlling animal pests, including arthropods, such as insects or representatives of the order Acarina (pg. 1, lines 1-4):
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Here R4 is selected from Q1-Q4 (pg. 2):
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Even if the compounds described in ‘401 are not identical to the claimed compounds, it would have nonetheless been obvious to a person of ordinary skill in the art at the time of Applicant’s earliest effective filing date to follow the teachings of Schaetzer and obtain Applicant’s claimed compounds. The person of ordinary skill in the art would have had a reasonable expectation of successfully obtaining Applicant’s claimed compounds by using Schaetzer’s teachings and motivations. A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have no yet in fact been patented.
Summary
Claim 16 is rejected under 35 U.S.C. 112(b). Claims 1-7 and 9 are rejected under 35 U.S.C. 102(a)(2). Claims 10, 12-15 and 17 are rejected under 35 U.S.C. 103. Claims 1-7, 9-10 and 12-17 are rejected under double patenting and nonstatutory double patenting. Claim 11 is objected to as being dependent upon a rejected base claim. Elected species I1-12 is indicated as allowable subject matter. Claim 8 is withdrawn.
Conclusion
Claims 1-7, 9-10, and 12-17 are rejected. Claim 11 is objected to. Claim 8 is withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Allen Chao whose telephone number is (571)272-7001. The examiner can normally be reached Monday - Friday 0700-1300.
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, James H Alstrum-Acevedo can be reached at 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLEN CHAO/Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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