CTNF 18/718,345 CTNF 100165 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Current Status of 18/718,345 This Office Action is responsive to the amended claims of 06/10/2024. Claims 1-21 are pending and have been examined on the merits. Priority The instant application is a national stage entry of PCT/EP2022/084409, filed 12/05/2022, which claims priority to IN 202111057521, filed 12/10/2021. Information Disclosure Statement The information disclosure statements (IDS) submitted on 06/10/2024 and 07/28/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Specification 07-29 AIA The disclosure is objected to because of the following informalities: the phrase “staggered line” is used at the following locations of the specification: pg.1, line 21; pg. 2, line 21; pg. 8, line 1; pg. 17, lines 1, 3, and 5; pg. 25, line 13; pg. 38, line 21; pg. 45, line 23; and pg. 64, line 13. The indicated bond is not a staggered line, but rather a wavy bond/line. The specification should be amended to replace “staggered line” with “wavy line” to improve the clarity and consistency of the chemical drawings . Appropriate correction is required. Claim Objections 07-29-01 AIA Claim s 1 and 18 are objected to because of the following informalities: Claim 1 uses the phrase “staggered line” to describe the connection of Q and R 4 . However, the chemical drawings do not have a “staggered line” but rather a “wavy line.” Applicants should amend the claim and replace “staggered” with “wavy” to improve the clarity and consistency of the chemical drawings. Claim 18 recites “from the attack” in line 1 of (ii). The phrasing here is awkward and should be amended to read “from attack.” Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 9, 17, and 19 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 9 recites the limitation "X 0 " in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 9 depends from claim 1. Claim 1 does not disclose the variable X 0 only variable X in line 4 of the claim. Claim 17 recites the limitation “one or more auxiliaries and diluent, and optionally one or more other active ingredient.” This limitation renders the scope of the claim unclear. It is unclear whether the composition must comprise one or more auxiliaries and a diluent, one or more auxiliaries and one or more diluents, or whether the recited diluent is intended to be included within the class of auxiliaries. Accordingly, the metes and bounds of the claim are unclear as written. 07-34-10 AIA Regarding claim 19 , the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Double Patenting 08-33 AIA 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. 08-35 Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 18/705,232 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of the copending Application recites a compound of formula XII(i) PNG media_image1.png 160 165 media_image1.png Greyscale that is identical to the compound of XII(i) of the instant application PNG media_image2.png 204 135 media_image2.png Greyscale . Allowed substitutions of A 1-3 are independently selected from N or CH which is the same for A 14, 24, and 34 . R 4c is C 1 -C 3 alkyl, C 1 -C 3 haloalkyl, allyl, propargyl, or C 3 -C 6 cycloalkylC 1 -C 4 alkyl in both the copending and instant application. Both claims also contain the same provisos excluding PNG media_image3.png 90 156 media_image3.png Greyscale and PNG media_image4.png 107 159 media_image4.png Greyscale . Although the independent claims of the instant and the copending application are directed to structurally distinct final compounds, the double patenting issue arises from the separately claimed intermediate compounds, which are identical in scope . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Claims 9, 17, 19, and 20 are rejected. Claim 1 is objected to for the reasons outlined above. Claims 2-21 are objected to because they depend directly or indirectly from claim 1 and therefore incorporate the objected to language of the base claim. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONNOR KENNEDY ENGLISH whose telephone number is (571)270-0813. The examiner can normally be reached Monday Friday, 8 a.m. 5 p.m. ET.. 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, Andrew Kosar can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /C.K.E./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625 Application/Control Number: 18/718,345 Page 2 Art Unit: 1625 Application/Control Number: 18/718,345 Page 3 Art Unit: 1625 Application/Control Number: 18/718,345 Page 4 Art Unit: 1625 Application/Control Number: 18/718,345 Page 5 Art Unit: 1625 Application/Control Number: 18/718,345 Page 6 Art Unit: 1625
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