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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 31, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claims 1 – 16 are examined here-in.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities:
Claims 1 and 7 each refer to CN groups, however, in claim 1 it is “-CN” and in claim 2 it is “CN”. This should be corrected for consistency throughout the claims. To align with the other groups discussed, “CN” would likely be more appropriate. Any other groups, such as “-S(O)pC1-C4alkyl” should also be edited accordingly.
Appropriate correction is required.
Election/Restrictions
Applicant's election with traverse of compound 1.026 in the reply filed on July 16, 2026 is acknowledged.
The traversal is on the ground that no unity of invention analysis was presented. This is not found persuasive because, as discussed in the body of the restriction requirement dated April 16, 2026, the species of composition are independent or distinct because the requisite ingredients are claimed at such a high level of generality to include thousands of possible combinations and it would impose a serious search and examination burden to search the entire scope of the generic compositions claimed within the limited amount of time authorized for such. According to MPEP 803.02(iii), in the case where two or more claimed components are so unrelated and diverse that a prior art reference anticipating the claim with respect to one of the members would not render the claims obvious under 35 U.S.C. with respect to the other members, the examiner may require an election of species prior to examination on the merits.
The requirement is still deemed proper and is therefore made FINAL.
Rejections of “Use” Claims - 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 16 is directed to non-statutory subject matter. The claims does not fall within at least one of the four categories of patent eligible subject matter because "use of a compound of Formula (I)" is not a process, machine, manufacture, or composition of matter. According to MPEP 2173.05(q), “use” claims that merely recite a use without any active, positive steps delimiting how this use is actually practiced do not fall into one of the four categories of patent eligible subject matter.
For the purposes of this examination, claim 16 is interpreted as a method claim.
Rejections of “Use” Claims - 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.
Claim 16 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The claim is written as “use of a compound of Formula (I)" which is indefinite because it merely recites a use without any active, positive steps delimiting how the use is practiced. See MPEP 2173.05(q).
Closest Prior Art
McLeod (US 2020/0181117 A1) teaches a substituted 3-heteroaryloxy-1H-pyrazole of general formula (I) for herbicidal and/or plant growth-regulating compositions (abstract), which appears to be the closest prior art.
McLeod’s formula (I) pyrazole compound overlaps on the pyrazole ring in the instantly elected compound, and the instant general formula (I). McLeod teaches R1 as a phenyl group in example number I-178 (Table 1), which is similar to the di-substituted pyridinyl group of elected compound 1.026. McLeod’s R2 is in the equivalent position as the instant methyl pyrimidine group (methyl pyrimidine with chlorine in 1.026 and methyl pyrimidine with R1 of the general formula (I)).
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[AltContent: textbox (Compound 1.002)]Since compound 1.026 appears to be free of prior art, the Examiner has extended the search an examination to non-elected species 1.002, which is listed on page 23 of the instant specification. See MPEP 803.02(III)(C)(2).
McLeod appears to be the closest prior art for un-elected compound of formula I, 1.002. McLeod’s structure overlaps with the instantly claimed structure 1.002 in McLeod’s formula (I) pyrazole compound. McLeod teaches R1 as a phenyl group in example number I-055 (Table 1), which is similar to the mono-substituted phenyl group of elected compound 1.002. McLeod’s R2 is in the equivalent position as the instant methyl pyrimidine group (methyl pyrimidine with bromine in 1.002 and methyl pyrimidine with R1 of the general formula (I)).
Since a compound of formula (I) as instantly claimed is not fairly taught or suggested in the prior art, an herbicidal composition containing a compound of formula (I), or a method of using an herbicidal composition containing a compound of formula (I) is also not taught in the prior art.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Double Patenting over U.S. Patent No. 12,522,588
Claims 1 – 16 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 18 of U.S. Patent No. 12,522,588.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a compound of formula (I), as shown below.
[AltContent: rect]
Conflicting claim 1 is drawn to a compound of formula (I), as shown below.
[AltContent: rect]
The instant and conflicting claims differ because conflicting claim 1 recites an oxygen between six-membered and five-membered rings, and does not include a substituent group R4. Instant claim 1 recites R4 can be a hydrogen atom, which is the same as is in conflicting claim 1. A person of ordinary skill in the art would have been motivated to have an ether linkage rather than a carbon linkage between the six-membered and five-membered rings because an ether linkage would be expected to have increased polarity and reactivity.
Conflicting claim 2 recites Q groups 1 – 11, which match the Q groups recited in instant claim 2.
Conflicting claim 3 recites Q is Q1, overlapping on instant claim 3.
Conflicting claim 4 recites n is 1, which matches instant claim 4.
Conflicting claim 5 recites R3 is halogen or - CF3, matching instant claim 5.
Conflicting claim 6 recites Q is 4-Cl-phenyl matching instant claim 6.
Conflicting claim 7 recites R1 is selected from a halogen, CN, C1-C4alkyl, C1-C4haloalkyl, C1-C4alkoxy, and C1-C4haloalkoxy matching instant claim 7.
Conflicting claim 8 recites R1 is a halogen overlapping on instant claim 8.
Conflicting claim 9 recites R1 is chloro-substituted, overlapping on instant claim 9.
Conflicting claim 10 recites R2 is -CF3 or -CF2H overlapping on instant claim 10.
Conflicting claim 11 recites a herbicidal composition with a compound of conflicting claim 1 overlapping on instant claim 12.
Conflicting claim 12 recites the inclusion of an additional pesticide, overlapping on instant claim 13.
Conflicting claim 13 recites the additional pesticide is an herbicide or herbicide safener, overlapping on instant claim 14.
Conflicting claims 14 and 19 recite a method of controlling weeds overlapping on instant claim 15.
Conflicting claims 16 – 18 recite several specific variations that of compound according to claim 1, overlapping on instant claim 1.
Double Patenting over U.S. Application No. 18/253,075
Claims 1 – 16 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 14, 16, and 17 of copending Application No. 18,253,075 which has been allowed as a U.S. Patent, but not yet issued.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a compound of formula (I), as shown below.
[AltContent: rect]
Conflicting claim 1 is drawn to a compound of formula (I), as shown below.
[AltContent: rect]
The instant and conflicting claims differ because conflicting claim 1 recites an X between six-membered and five-membered rings, does not include a substituent group R4, and the R group on the six membered ring is in the meta- position rather than the para- position. Instant claim 1 recites R4 can be a hydrogen atom, which is the same as is in conflicting claim 1. Conflicting claim 1 recites X can be CH2, overlapping on the instant claim.
Conflicting claim 4 recites Q groups 1 – 110 which match the Q groups recited in instant claim 2.
Conflicting claim 6 recites n is 1 or 2, which matches instant claim 4.
Conflicting claim 9 recites R1 is halogen or - CF3, matching instant claim 5.
Conflicting claim 11 – 13 recite a herbicidal composition with a compound of conflicting claim 1,
the inclusion of an additional pesticide, wherein the additional pesticide is an herbicide or herbicide safener, overlapping on instant claims 12 – 14.
Conflicting claims 14 recites a method of controlling weeds overlapping on instant claim 15.
Conflicting claims 16 and 17 recite several specific variations that of compound according to claim 1, overlapping on instant claim 1.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. 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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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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