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
Claims 2-10, 12-13 are objected to because of the following informalities: these claims begin with “A” but appear to be dependent claims. Dependent claims should begin with “The”.
Claim 14 is objected to because of the following informalities: Claim 14 is grammatically incorrect. It should recite: …applying to the locus, a weed controlling amount… Alternatively, it should recite: …applying to the locus of a weed, a weed controlling amount...
Claim 15 is objected to because of the following informalities: Claim 15 is directed to a method, however, application is not an active verb, for compact prosecution purposes the examiner is interpreting application to be the active verb “applying”. 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 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 15 is directed a Use of a compound and “Use” is not one of the four statutory categories of patent eligible subject matter in the US because as it does not recite any active method steps and as such is not directed to a method and a Use of a compound is not a compound or composition claim and therefore the claimed “Use” is not patent eligible subject matter. For compact prosecution purposes the examiner will interpret claim 15 as a method claim directed to a method of controlling weeds by application of the claimed
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 15 is/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 15 provides for the use of “a compound of formula (I)” but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive 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.
Claim(s) 1-3, 5-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagiwara et al. (WO1995033730) and further in view of Subbaiah et al. (J. Med. Chem., 2021, 64, 14046-14128 (available 09/30/21) https://pubs.acs.org/doi/pdf/10.1021/acs.jmedchem.1c01215?ref=article_openPDF).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-2, 5-10, Hagiwara teaches structurally similar/bioisosteric herbicidal compounds, specifically compound 180,
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, which is similar to the compounds of applicant’s formula (I) and (Ia) wherein applicant’s Q is 4-chlorophenyl (wherein applicant’s n is 1 and R4 is chloro/4-chloro), applicant’s R1 is in the 4 position and is ethyl/C2-alkyl, applicant’s R3 is Br, and applicant’s R2 is CF3 which read on claims 1-2, and 5-10 (see entire document, compound 180).
Regarding claim 3, Hagiwara teaches wherein one of their Y and Z is a C1-C6 haloalkyl group and the other is selected from hydrogen, halogens, etc. (Abstract; claims; Y, Z has one represents a 6 haloalkyl group, the other is a hydrogen atom, halogen atom, C1-6 alkyl group), which reads on wherein the instant R3 is H.
` Regarding claims 11-13, Hagiwara teaches wherein their structurally similar herbicide compounds can be formulated as a composition with an agriculturally acceptable formulation adjuvant, and can further comprise at least one additional pesticide, specifically a herbicide (see entire document; abstract; compound 180; Paragraph beginning: The herbicide of the present invention contains one or more of the compounds… through paragraph ending with: … Vegetable oils and oil concentrates can also be added to these combinations.).
Regarding claims 14-15, Hagiwara teaches methods of controlling weeds comprising applying effective amounts of their compounds and compositions comprising their structurally similar compounds in effective amounts (see entire document; compound 180; abstract; Paragraph beginning: The compound of the present invention shows high efficacy against various field weeds such as…by any of soil treatment and foliage treatment under upland…; Paragraph beginning: The compound of the present invention has excellent herbicidal activity against weeds such as paddy field weeds such as Nobie, Tamagayari, Omodaka and Firefly…; Paragraph beginning: The herbicide of the present invention contains one or more of the compounds of the present invention as an active ingredient. When the compound of the present invention is actually applied…; Paragraph beginning: The concentration of the active ingredient in the herbicide of the present invention…; all examples including Test examples; claims; industrial applicability section; paragraph beginning: The purpose of the present invention is to provide a herbicide that can be synthesized industrially advantageously, is effective at a lower dose, has high safety, and has high crop selectivity…).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-3, 5-15, Hagiwara does not teach wherein their phenyl ring can be the claimed pyrimidine ring. However, this deficiency in Hagiwara is addressed by Subbaiah.
Subbaiah teaches that pyrimidine rings are bioisosteres of the phenyl ring of Hagiwara (see Table 2, 4a and 4H; and Table 4, 4a and 4q).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed compounds by replacing the 4-ethyl phenyl ring of Hagiwara for the pyrimidine ring, specifically a 4-ethylpyridimidine ring, of Subbaiah because pyrimidine rings are known bioisosteric replacements for the phenyl group of Hagiwara and would be expected to form compounds also exhibiting herbicidal activity. One of ordinary skill in the art would want to make this substitution of the ethyl pyrimidine ring for the ethyl substituted phenyl group of Hagiwara in order to form the claimed herbicidal compounds in effort to form additional compounds, compositions and methods having herbicidal activity.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
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 would have been 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.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18878521 (‘521) in view of Subbaiah (as cited above). ‘521 teaches bioisosteric herbicidal compounds and compositions comprising these compounds which comprise the same additional herbicides, and formulation adjuvants as the instantly claimed compositions and the same methods of controlling weeds with the compounds/compositions as are instantly claimed and ‘521 only differs in that their claimed Q ring is a 5-membered heteroaryl in ‘521 instead of the instantly claimed phenyl or C-linked 6-membered heteroaryl. However, it would have been obvious to form the claimed compounds when looking to ‘521 because Subbaiah teaches that the instantly claimed Q groups, e.g. phenyl, etc. are bioisosteres of the claimed 5-membered Q groups in ‘521 because they are bioisosteres of phenyl and as such are bioisosteres of each other (See Tables 2 and 4). Thus, one of ordinary skill in the art would conclude that the claimed compounds, compositions, and methods are obvious variants of the compounds, compositions, and methods of copending Application No. 18878521 (‘521) in view of Subbaiah and would be obvious to make in effort to form new herbicidal compounds, compositions, and methods.
This is a provisional nonstatutory double patenting rejection.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19117705 (‘705) in view of Subbaiah (as cited above). ‘705 teaches bioisosteric herbicidal compounds and compositions comprising these compounds which comprise the same additional herbicides, and formulation adjuvants as the instantly claimed compositions and the same methods of controlling weeds with the compounds/compositions as are instantly claimed and ‘705 only differs in that their claimed U ring is a 5-membered heteroaryl in ‘521 instead of the instantly claimed pyrimidine/4- substituted pyrimidine. However, it would have been obvious to form the claimed compounds when looking to ‘521 because Subbaiah teaches that the instantly claimed pyrimidine are bioisosteres of the claimed 5-membered Q groups in ‘521 because they are both bioisosteres of phenyl and as such are bioisosteres of each other (See Tables 2 and 4). Thus, one of ordinary skill in the art would conclude that the claimed herbicidal compounds, compositions, and methods are obvious variants of the herbicidal compounds, compositions, and methods of copending Application No. 19117705 (‘705) in view of Subbaiah and would be obvious to make in effort to form new herbicidal compounds, compositions, and methods.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616