CTNF 18/720,847 CTNF 88629 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. DETAIL ACTION This office action is a response to a 371 application filed 6/17/2024 which is a national stage application of PCT/EP2022/085620 filed 12/13/2022, which claims foreign priority to EP21215562.6 filed 12/17/2021. As filed, claims 1-15 are pending. Information Disclosure Statement The information disclosure statement (IDS) submitted on 6/17/2024 has been considered by the Examiner. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Specification 07-29 AIA The disclosure is objected to because of the following informalities: T he amendment filed 6/17/2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “each of which is incorporated by reference herein in its entirety”. MPEP 211.02 and MPEP 201.06(c)(IV) state the following in regard to “Incorporation by Reference” and PCT Rule 20.6, Rule 20.7 and Rule 4.18 are directed specifically to International applications: MPEP 211.02, in-part For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 119(e) or 120 and 37 CFR 1.78 for benefit of a prior-filed provisional application, nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuation or divisional application, or the nonprovisional application claiming benefit of a prior-filed provisional application, is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b). The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. See MPEP § 201.06 and 217. However, applicants are encouraged to provide in the specification an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed under 35 U.S.C. 119(e) or 120 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(b). See 37 CFR 1.57(c). See also MPEP §§ 217 and MPEP § 608.01(p). MPEP 201.06(c)(IV), in-part 201.06(c) 37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure [R-07.2015] IV. INCORPORATION BY REFERENCE An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification. See 37 CFR 1.57(c) and MPEP § 608.01(p). The inclusion of this incorporation by reference statement will permit an applicant to amend the continuing application to include subject matter from the prior application(s), without the need for a petition provided the continuing application is entitled to a filing date notwithstanding the incorporation by reference. For applications filed prior to September 21, 2004, the incorporation by reference statement may appear in the transmittal letter or in the specification. Note that for applications filed prior to September 21, 2004, if applicants used a former version of the transmittal letter form provided by the USPTO, the incorporation by reference statement could only be relied upon to add inadvertently omitted material to the continuation or divisional application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a) ). If an incorporation by reference statement is included in an amendment to the specification to add a benefit claim under 35 U.S.C. 120 after the filing date of the application, the amendment would not be proper. When a benefit claim under 35 U.S.C. 120 is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement of the prior application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). 20.6 Confirmation of Incorporation by Reference of Elements and Parts (a) The applicant may submit to the receiving Office, within the applicable time limit under Rule 20.7, a written notice confirming that an element or part is incorporated by reference in the international application under Rule 4.18, accompanied by: (i) a sheet or sheets embodying the entire element as contained in the earlier application or embodying the part concerned; (ii) where the applicant has not already complied with Rule 17.1(a), (b) or (b-bis) in relation to the priority document, a copy of the earlier application as filed; (iii) where the earlier application is not in the language in which the international application is filed, a translation of the earlier application into that language or, where a translation of the international application is required under Rule 12.3(a) or 12.4(a), a translation of the earlier application into both the language in which the international application is filed and the language of that translation; and (iv) in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the earlier application and, where applicable, in any translation referred to in item (iii). (b) Where the receiving Office finds that the requirements of Rule 4.18 and paragraph (a) have been complied with and that the element or part referred to in paragraph (a) is completely contained in the earlier application concerned, that element or part shall be considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office. (c) Where the receiving Office finds that a requirement under Rule 4.18 or paragraph (a) has not been complied with or that the element or part referred to in paragraph (a) is not completely contained in the earlier application concerned, the receiving Office shall proceed as provided for in Rule 20.3(b)(i), 20.5(b) or 20.5(c), as the case may be. 20.7 Time Limit (a) The applicable time limit referred to in Rules 20.3(a) and (b), 20.4, 20.5(a), (b) and (c), and 20.6(a) shall be: (i) where an invitation under Rule 20.3(a) or 20.5(a), as applicable, was sent to the applicant, two months from the date of the invitation; (ii) where no such invitation was sent to the applicant, two months from the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office. (b) Where neither a correction under Article 11(2) nor a notice under Rule 20.6(a) confirming the incorporation by reference of an element referred to in Article 11(1)(iii)(d) or (e) is received by the receiving Office prior to the expiration of the applicable time limit under paragraph (a), any such correction or notice received by that Office after the expiration of that time limit but before it sends a notification to the applicant under Rule 20.4(i) shall be considered to have been received within that time limit. 4.18 Statement of Incorporation by Reference Where the international application, on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, claims the priority of an earlier application, the request may contain a statement that, where an element of the international application referred to in Article 11(1)(iii)(d) or (e) or a part of the description, claims or drawings referred to in Rule 20.5(a) is not otherwise contained in the international application but is completely contained in the earlier application, that element or part is, subject to confirmation under Rule 20.6, incorporated by reference in the international application for the purposes of Rule 20.6. Such a statement, if not contained in the request on that date, may be added to the request if, and only if, it was otherwise contained in, or submitted with, the international application on that date. The instant application is a 371 application which has an International filing date of 12/13/2022. See a partial capture of the BIB sheet of the instant application below. PNG media_image1.png 332 674 media_image1.png Greyscale The incorporation by reference statement is being added by way of a Preliminary Amendment filed 6/17/2024, which is after the instant application's International filing date of 12/13/2022. Therefore, the “incorporation by reference” statement being added to the instant specification by way of the Preliminary Amendment is deemed new matter. Applicant is required to cancel the new matter in the reply to this Office Action. Claim Rejection - 35 USC §§ 101 & 112 The following is a quotation of 35 U.S.C. § 101 : 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. The following is a quotation of the second paragraph of 35 U.S.C. § 112 : 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. Although a claim should be interpreted in light of the specification disclosure, it is improper to read limitations contained in the specifi-cation into the claims. In re Prater , 415 F.2d 1393, 162 USPQ 541 (CCPA 1969); In re Winkhaus , 527 F.2d 637, 188 USPQ 129 (CCPA 1975). A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See, e.g ., Clinical Products, Ltd. v. Brenner , 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966) (holding that the following claim was definite, but that it was not a proper process claim under 35 U.S.C. § 101: “The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sul-fonic acid.”); Ex parte Dunki , 153 USPQ 678 (B.P.A.I. 1967) (finding the following claim to be an improper definition of a process claim: “The use of a high carbon austen-itic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding fric-tion.”). Claim 15 provides for the use of a compound of instant formula (I), but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Accordingly, claim 15 is rendered indefinite and rejected under 35 U.S.C. 112. Claim 15 is also rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki , 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner , 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). The Examiner suggests that the “use" claim 15 be cancelled in light of the properly drafted product, process, and/or method claims presented in the instant application. 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. Claims 1-9 and 12-15 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. Regarding claim 1 , the claim recites the phrase, “wherein the 5- or 6-membered heteroaryl comprises”. Instant variable Z 1 recites the term "comprises." Forms of the term “comprise” are considered open-ended language and therefore include additional subject matter that is not described in the instant specification and is not particularly pointed out or distinctly claimed. The identity of the additional atoms or groups is unknown and how to determine the identity of the additional atoms or groups is not pointed out or distinctly claimed. The term “compound” contradicts the open language "comprises." A "compound" is defined as a substance whose molecules consist of unlike elements and whose constituents cannot be separated by physical means. Grant & Hackh's Chemical Dictionary (5 th Ed. 1987) at page 148. By contrast, a composition is defined as elements or compounds forming a material or produced from it by analysis. Id . In other words, a compound is a molecule with more than one element, and a composition is a mixture of two or more compounds or molecules. The transitional term "comprising" is synonymous with "including", "containing", and "characterized by". "Comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Genentech, Inc. v. Chiron Corp. , 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc. , 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter , 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis , 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves “the claim open for the inclusion of unspecified ingredients even in major amounts”). Thus, a contradiction arises within the definition of instant variable Z 1 because a "compound" with these variables requires a definite chemical formula, and the open-ended term "comprises" does not exclude unrecited elements. Furthermore, "comprising", used in conjunction with "compound" fails to articulate exactly what subject matter is excluded from the claimed scope of compounds, thereby rendering the scope of claim 1 indefinite. Regarding claims 2-9 and 12-15 , these claims are directly or indirectly dependent of claim 1 and they failed to correct the indefiniteness issue of claim 1, which rendered these claims indefinite. Claim Objections Claims 2-10 and 14 are objected to because of the following informalities: Regarding claims 2-10 , these claims recite the phrase, “A compound of formula (I) according to claim 1”, which contain typographical error. The typographical error can be corrected by reciting -- A The compound of formula (I) according to claim 1 --. Regarding claim 14 , the claim recites the phrases, “A method of controlling or preventing infestation of useful plants”, and “is applied to the plants, to parts thereof or the locus thereof”. Such expressions can be clarified by reciting -- A method of controlling or preventing infestation of usefu l plants --, and -- is applied to the plants, to parts thereof of the plants or to the locus thereof of the plants --, respectively . Appropriate correction is required. Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim 11 is 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 Claims 1-9 and 12-15 are rejected. Claims 10 and 11 are objected. Telephone Inquiry Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm. 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, Clinton Brooks can be reached at (571)270-7682. 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. /PO-CHIH CHEN/Primary Examiner, Art Unit 1621 Application/Control Number: 18/720,847 Page 2 Art Unit: 1621 Application/Control Number: 18/720,847 Page 3 Art Unit: 1621 Application/Control Number: 18/720,847 Page 4 Art Unit: 1621 Application/Control Number: 18/720,847 Page 5 Art Unit: 1621 Application/Control Number: 18/720,847 Page 6 Art Unit: 1621 Application/Control Number: 18/720,847 Page 7 Art Unit: 1621 Application/Control Number: 18/720,847 Page 8 Art Unit: 1621 Application/Control Number: 18/720,847 Page 9 Art Unit: 1621 Application/Control Number: 18/720,847 Page 10 Art Unit: 1621 Application/Control Number: 18/720,847 Page 11 Art Unit: 1621 Application/Control Number: 18/720,847 Page 12 Art Unit: 1621 Application/Control Number: 18/720,847 Page 13 Art Unit: 1621
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