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 action is in response to papers filed June 1, 2026. Applicant’s reply to the restriction/election requirement of February 12, 2026 has been entered. Claims 3, 5-9, 11, and 14 have been amended. Claims 1-15 are pending in the application.
Priority
Applicant’s claim for the benefit of prior-filed WIPO International Application No. PCT/EP2022/078501, filed October 13, 2022 under 35 U.S.C. 365(c), is acknowledged.
Acknowledgment is also made of Applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of British Patent Application No. 2115018.0, filed in the United Kingdom of Great Britain and Northern Irelend on October 20, 2021, has been received as required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-10, is acknowledged. Applicant’s election of “compound 1.001” having the following structure:
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is hereby also acknowledged. “Compound 1.001” is the compound of Formula (I) in which R1 is methyl, R2 is Cl, R3 is -CF3, R4 is methyl, and R5 is ethyl. The Examiner has determined that claims 1-7 read on the elected subject matter.
The traversal is on the ground(s) that “the International Search Authority for this national stage application found that claims 1-15 contain unity”, and, moreover, “a national stage application…will be considered to have unity…if the claims are drawn only to…a product and a process of use of said product”.
This is not found persuasive because Groups I-III lack unity a posteriori in view of Braun et al. (U.S. Patent Application Pub. No. 2012/0058892). In stark contrast to Applicant’s assertion, the ISA found that the claims lack inventive step in view of Braun.
Accordingly, claims 8-15 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected subject matter, there being no allowable generic or linking claim. The requirement is still deemed proper, maintained, and is therefore made FINAL.
Applicant timely traversed the restriction (election) requirement in the reply filed on June 1, 2026. Claims 1-7 are under examination.
Claim Objections
Claims 1-7 are objected to because of the following:
i) In claim 1, the symbol :- after “wherein” should be deleted.
ii) For dependent claims 2-7, the preamble should be “The compound according to…”, not “A compound according to…”.
Appropriate correction is required.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Braun et al. (U.S. Patent Application Pub. No. 2012/0058892).
Applicant Claims
Applicant claims the following compound:
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Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Braun et al. disclose N-(tetrazol-5-yl) arylcarboxamides and N-(triazol-5-yl) arylcarboxamides of formula (I), wherein B=N; R=(C1-C6) alkyl (e.g. methyl); X=halogen (e.g. Cl); A=CY, Y-NR1COR1, R1 can be (C1-C6) alkyl (e.g. methyl or ethyl); and Z=halo-(C1-C6) alkoxy (e.g. -OCHF3).
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Braun et al. do not explicitly anticipate the presently claimed subject matter with one specific example or preferred embodiment. However, the Braun et al. disclosure is sufficient to render the presently claimed subject matter prima facie obvious within the meaning of 35 USC 103.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to employ the teachings of Braun et al., outlined supra, to devise Applicant’s presently claimed compound.
Braun et al. disclose N-(tetrazol-5-yl) arylcarboxamides and N-(triazol-5-yl) arylcarboxamides of formula (I), which compounds are suitable as herbicides. Since Braun et al. disclose that B=N; R=(C1-C6) alkyl (e.g. methyl); X=halogen (e.g. Cl); A=CY, Y-NR1COR1, R1 can be (C1-C6) alkyl (e.g. methyl or ethyl); and Z=halo-(C1-C6) alkoxy (e.g. -OCHF3); one of ordinary skill in the art would thus be motivated to arrive at a compound of formula (I), wherein B=N; R=(C1-C6) alkyl (e.g. methyl); X=halogen (e.g. Cl); A=CY, Y-NR1COR1, R1 can be (C1-C6) alkyl (e.g. methyl or ethyl); and Z=halo-(C1-C6) alkoxy (e.g. -OCHF3), with the reasonable expectation that the resulting compound will be suitable as an herbicide.
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(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 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 claims are allowed.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue 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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/DAVID BROWE/Primary Examiner, Art Unit 1617
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