DETAILED ACTION
Notice of 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 .
Election/Restrictions
Applicant’s election with traverse of Group I in the reply filed on 5/26/2026 is acknowledged.
Applicant first traverses on the grounds that “the property or activity shared by the claimed compounds and the compounds of Larsen are entirely different” (Applicant Arguments, Page 26).
It is irrelevant that the prior art compound taught by Larsen et al is disclosed as having an activity that is different from the disclosed activity of an identical compound newly claimed by Applicant.
Applicant next argues that “claims 1 and 2 of the present application do not permit hydrogen to be one of the substituents of R5 and R6” as in Larsen et al.
Of course, when the claims were restricted, R5 and R6 of Formula (I) could be hydrogen.
As such, Applicant’s arguments are not found persuasive. The requirement is still deemed proper and is therefore made FINAL.
Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant’s election without traverse of a single species in the reply filed on 5/26/2026 is also acknowledged.
The elected species read upon claims 1-2, 10 and 12. Claims 3-9, 11 and 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Expansion of Election of Species Requirement
Applicant’s elected species, a compound of Formula (I) having the following structure:
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, reads upon claims 1-2, 10 and 12.
The elected species has been searched and is deemed to be free of the prior art and non-obvious.
The closest prior art compound is CAS RN 1797757-19-7 (entered into STN on 7/09/2015) having the following structure:
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, which differs from the instantly claimed compound as indicated by arrows.
At the outset, CAS RN 1797757-19-7 is excluded from Formula (I) by proviso. And considering that CAS RN 1797757-19-7 is not identified as exhibiting any activity, it would not have been obvious to modify CAS RN 1797757-19-7 to arrive at Applicant’s elected compound species.
Accordingly, the search has been expanded as called for under current Office Markush practice – a compound-by-compound search – to include at least a single additional species (M.P.E.P. § 803.02). In the instant case, two additional species were identified:
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, a compound of Formula (I), wherein X is O; Z1 is CHR4-CHR4 wherein each R4 is independently hydrogen; Z2 is C(R4)2 wherein each R4 is independently hydrogen; R1 is hydroxy; R2 is hydroxy; R3 is hydrogen; R5 and R6 are each independently C1 alkyl; R7 and R8 are each independently hydrogen; and R9 is hydrogen – which reads on pending claims 1-2 and 12; and
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, a compound of Formula (I), wherein X is O; Z1 is C(R4)2 wherein each R4 is independently hydrogen; Z2 is C(R4)2 wherein each R4 is hydrogen; R1 is hydrogen; R2 is C1 alkyl; R3 is hydrogen; R5 and R6 are each independently C1 alkyl; R7 and R8 are independently hydrogen and hydroxy; and R9 is hydrogen – which reads on pending claims 1-2.
Rejections to those claims follows. Since the search has not been expanded beyond the single additional species identified above, claim 10, which is directed to the elected species but which does not include the single additional species, is objected to as indicated below, and has not been further examined.
Claim Objections
Claim 1 is objected to for the following reason:
Claim 1 recites “A compound of formula (I)” (wherein the “f” in formula is lowercase). However, the compound is further identified as “Formula (I)” (wherein the “F” in formula is capitalized). Applicant is requested to amend the claim for consistency.
Claim Rejections - 35 USC § 102
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 1-2 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito et al (J Heterocyclic Chem 29:1037-1044, 1992).
Claim 1 is drawn to a compound of formula (I) which embraces the following compound species:
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wherein:
X is O; Z1 is CHR4-CHR4 wherein each R4 is independently hydrogen; Z2 is C(R4)2 wherein each R4 is independently hydrogen; R1 is hydroxy; R2 is hydroxy; R3 is hydrogen; R5 and R6 are each independently C1 alkyl; R7 and R8 are each independently hydrogen; and R9 is hydrogen – which reads on pending claims 1-2.
Ito et al teach the instantly claimed compound (Page 1040, Compound 14).
Accordingly, claims 1-2 are anticipated.
Claim 12 is drawn to an agrochemical composition comprising a compound of formula (I) according to claim 1 and at least one agrochemically acceptable auxiliary selected from the group consisting of inert carrier, surfactant, additive, solid diluent and liquid diluent.
Ito et al further teach that “Compound 14... obtained from 1i by the... procedure” comprising 1i “and trimethyl methanetricarboxylate... in diglyme” (Page 1043, Column 1).
As such, Ito et al teach a composition comprising a compound of formula (I) according to claim 1 and at least one agrochemically acceptable auxiliary (i.e., diglyme).
Accordingly, claim 12 is also anticipated.
Claims 1-2 are ADDITIONALLY rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS RN 2343221-37-2 (entered into STN on 6/23/2019).
Claim 1 is drawn to a compound of formula (I) which embraces the following compound species:
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,
wherein:
X is O; Z1 is C(R4)2 wherein each R4 is independently hydrogen; Z2 is C(R4)2 wherein each R4 is hydrogen; R1 is hydrogen; R2 is C1 alkyl; R3 is hydrogen; R5 and R6 are each independently C1 alkyl; R7 and R8 are independently hydrogen and hydroxy; and R9 is hydrogen – which reads on pending claims 1-2.
The instantly claimed compound is taught by CAS RN 2343221-37-2.
Accordingly, claims 1-2 are anticipated.
Claim Objections
Claim 10 is objected to as depending from a rejected base claim. Since the search has not been expanded beyond the additional species identified above, claim 10, which is directed to the elected species but which does not include the additional species, has not been further examined.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG D RICCI whose telephone number is (571) 270-5864. The examiner can normally be reached on Monday through Thursday, and every other Friday, 7:30 am - 5:00 pm 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, Bethany Barham can be reached on (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRAIG D RICCI/Primary Examiner, Art Unit 1611
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