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
Election of Species and Status of the Claims
Applicant’s election without traverse of ‘compound I-082’ as the single specific compound and ‘the process of claim 11’ as the single specific process in the response filed on July 13th 2026 is acknowledged. Applicant’s elected compound is not found in the art. As recognized by MEPEP § 803.02(III)(C)(2):
If the elected species or group of patentably indistinct species is not anticipated by or obvious over the prior art, the examiner should extend the search and examination to a non-elected species or group of species that falls within the scope of a proper Markush grouping that includes the elected species. The search and examination should be continued until either (1) prior art is found that anticipates or renders obvious a species that falls within the scope of a proper Markush grouping that includes the elected species, or (2) it is determined that no prior art rejection of any species that falls within the scope of a proper Markush grouping that includes the elected species can be made. The examiner need not extend the search beyond a proper Markush grouping. In other words, the examiner need not extend the search to any additional species that do not share a single structural similarity and a common use with the elected species (i.e., do not belong to the same recognized physical or chemical class or to the same art- recognized class and/or do not have a common use and/or do not share a substantial structural feature of a chemical compound and a use that flows from the substantial structural feature). The examiner should continue examination of the Markush claim to determine whether it meets all other requirements of patentability (e.g., 35 U.S.C. 101 and 112, nonstatutory double patenting, and proper Markush grouping).
Claims 1-17 are pending. Claims 7 and 12-17 are withdrawn from further consideration as being directed towards nonelected species until a generic claim has been found allowable. Claims 1-6 and 8-11 are examined on their merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement filed on May 2nd 2024 is in compliance with the provisions of 37 CFR 1.97 and has been considered in full. A signed copy of references cited from the IDS is included with this Office Action.
Claim Rejections - 35 USC § 112(b)
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 10 is 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 10 is indefinite for reciting the “use of one or more compounds of formula (IA)…” The claim language implies a method for controlling microorganisms in the agricultural field. However, no methodological steps are recited, as would be necessary for a method claim.
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 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because it is not directed towards “a process, machine, manufacture, or composition of matter,” but only the “use of” the compound of formula (I-A).
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.
Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liang (Liang et al., (2016), Copper-Mediated Sulfonylation of Aryl C(sp2)H Bonds with Sodium and Lithium Sulfinates. Adv. Synth. Catal., 358: 159-163).
The claims are directed towards compounds of formula (I-A):
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118
317
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.
Liang teaches the compound,
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384
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(Liang, pg. 160, compound 3m).
Liang’s compound is anticipatory of claims 1 and 5.
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu (Wu et al., Copper-mediated CH thiolation of (hetero)arenes using weakly coordinating directing group, Tetrahedron Letters, Volume 61, Issue 28, 2020, 152062).
Wu teaches the compound,
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444
500
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(Wu, pg. 3, compound 3z),
which is anticipatory of claims 1, 2, 3, 5, and 6.
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.
Claims 1-3, 5-6, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Alfaro (WO2019/118932A1 published on June 20th 2019).
Claim 11 is directed to a process for preparing compounds of formula (I-a):
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140
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,
which is a subset of the compounds of formula (I-A):
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118
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.
The reaction of claim 11 comprises the step of reacting a compound of formula (1) with a compound of formula (2):
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141
143
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74
179
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.
wherein T is O and U1 is hydroxyl.
Wu’s compound,
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(Wu, pg. 2, Scheme 1),
renders claims 1, 2, 3, 5, and 6 are prima facie obvious for the reasons stated in the above 102 rejection. Regarding claim 11, while Wu does not explicitly teach preparation of the compound using the above reaction, one of ordinary skill in the art would have had a reasonable expectation of success in performing such a reaction to obtain Wu’s compound, because such (phenylthiol)isonicotinamide compounds are already known in the art to be produced with an analogous reaction. See Alfaro, who teaches the following reaction:
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135
326
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(Alfaro, pg. 184, Example 65).
Alfaro’s reaction involves an amide coupling comprising a reaction of a carboxylic acid group with an amine. As the rest of the molecule (the core of compound 115b and the (C=O)heterocycle it is reacted with) remain untouched by the reaction, one of ordinary skill in the art would reasonably expect that an analogous reaction to form Wu’s compound would act in a similar manner and would find the reaction of claim 11 prima facie obvious.
Allowable Subject Matter
Claims 4 and 8-10 are free of the art.
Applicant has developed compounds of formula I-A:
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.
While compounds of this genus are found in the art, applicant’s particular compounds, as well as the situation wherein:
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,
are not found in the art.
Furthermore, the relevant compounds in the art (see the above 102 rejections) share structural similarity, but are not used in the agrochemical field, and are thus unrelated except by coincidence.
Claims 4 and 8-9 are 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anthony Seitz whose telephone number is (703)756-4657. The examiner can normally be reached 7:30 AM ET - 5:00 PM ET M-F.
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, Jeffrey Lundgren can be reached at (571)272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY JOSEPH SEITZ/Examiner, Art Unit 1629
