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 .
Priority
This application has PRO of 63514591 filed 07/20/2023.
Accordingly, claims 1-14 are afforded the effective filing date of 07/20/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/13/2024 has been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-4, in the reply filed on 05/14/2026 is acknowledged. Applicant also elected with traverse, the keto-diester of formula III-6 (5-(3-phenylpropanoyl)-2,2-dipropyl-1,3-dioxane-4,6-dione) as disclosed on page 23 of the specification, as the species of compound having formula (VIII).
The traversal is on the ground(s) that “the claims of alleged Groups II and III depend directly or indirectly from the claims of alleged Group I. Thus, the compounds of alleged Group I are not distinct from the process of making such compounds as in alleged Group II, or of using such compounds as in alleged Group III.” (Remarks, bottom of page 5 to page 6).
This is not found persuasive because as discussed in the Restriction filed 04/13/2026, while the methods of Groups II and III are drawn to a method of making the compound of claim 1 and a method of using the compound of claim 1, respectively, the methods of Groups II and III and the product of Group I remained independent or distinct for the reasons discussed on pages 2-4 of the Restriction, said pages being incorporated herein its entirety. Furthermore, as discussed in the Restriction, in addition to Groups II and III being independent or distinct (as discussed supra), there would also be a serious search and/or examination burden if restriction were not required because of at least the following reason:
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Accordingly, for at least the reasons discussed above and in the Restriction filed 04/13/2026, the Restriction for examination purposes as indicated is deemed proper.
With respect to the election of species, upon further consideration, the Examiner hereby withdraws the election of species requirement and extend the search to all species of compound having formula (VIII) of claim 1.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups/inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/14/2026.
Status of the Claims
Claims 1-14 are pending in this instant application, of which claims 5-14 are withdrawn at this time being drawn to a nonelected groups/inventions.
Claims 1-4 are examined herein on the merits for patentability.
Claim Objections
Claim 3 is objected to because of the following informalities: please amend “A composition” to “The composition” so that there is proper antecedent basis to composition of claim 2. Appropriate correction is required.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Heslop-Harrison et al (WO 2024/009078 A1; filing date: 04 July 2023).
Regarding claim 1, Heslop-Harrison teaches a compound of formula (I):
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, wherein R1a and R1b are independent selected from hydrogen and C1-4 alkyl; X1 and X2 are independently O; R2 and R3 are absent when the oxygen atom to which they are attached forms a carbonyl group with the carbon ring member of ring A; L1 is -CH2-CH2-; and Ar1 is a 6-membered carbocyclic aromatic group (pages 1, 5, and 12-15; claims 1 and 2), which reads on the following structures:
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and
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, thereby reading on the compound having formula (VIII) as recited in claim 1.
Regarding claim 2, Heslop-Harrison teaches a composition comprising the compound of formula (I) and at least one carrier and/or surfactant (pages 14-15).
As a result, the aforementioned teachings from Heslop-Harrison are anticipatory to claims 1 and 2 of the instant invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heslop-Harrison et al (WO 2024/009078 A1; filing date: 04 July 2023).
Assuming arguendo that the aforementioned teachings from Heslop-Harrison do not anticipate the claimed invention, claim 1 alternatively would have been considered obvious under the meaning of 35 USC 103(a) because Heslop-Harrison teaches a compound of formula (I):
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, wherein R1a and R1b are independent selected from hydrogen and C1-4 alkyl; X1 and X2 are independently O; R2 and R3 are absent when the oxygen atom to which they are attached forms a carbonyl group with the carbon ring member of ring A; L1 is -CH2-CH2-; and Ar1 is a 6-membered carbocyclic aromatic group (pages 1, 5, and 12-15; claims 1 and 2). The selections of R1a, R1b, X1, X2, R2, R3, L1, and Ar1 as described above for formula (I) is from a very short list of a handful of members for R1a, R1b, X1, X2, R2, R3, L1, and Ar1 groups and thus, given that the subgenus of formula (I) from Heslop-Harrison is so small that when considered in light of the totality of the circumstance, it would anticipate the claimed species, as one skilled in the art would have envisage each member of the subgenus from formula (I) of Heslop-Harrison. Furthermore, Heslop-Harrison teaches the compound of formula (I) is also used for improving crop quality and weed control (claim 2). Per MPEP §2144.08 (II)(4) (a)-(d), "[w]hen chemical compounds have ‘very close’ structural similarities and similar utilities, without more a prima facie case may be made."). Thus, evidence of similar properties or evidence of any useful properties disclosed in the prior art that would be expected to be shared by the claimed invention weighs in favor of a conclusion that the claimed invention would have been obvious. Dillon, 919 F.2d at 697-98, 16 USPQ2d at 1905; In re Wilder, 563 F.2d 457, 461, 195 USPQ 426, 430 (CCPA 1977); In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Regarding claim 2, Heslop-Harrison teaches a composition comprising the compound of formula (I) and at least one carrier and/or surfactant (pages 14-15).
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over (Heslop-Harrison et al (WO 2024/009078 A1; filing date: 04 July 2023), and further in view of Yuan et al (WO 2022/078494A1; citation and English translation via US 2024/0284912 A1).
The compound of claim 1 and the composition of claim 2 are discussed above, said discussion being incorporated herein in its entirety.
Regarding claims 3 and 4, Yuan teaches a composition comprising herbicides and other active ingredients such as other herbicides, insecticides, fungicides, bactericides, nematocides, or mixtures thereof, and agricultural carriers, wherein the composition is used for providing a greater spectrum of weed control (Abstract; [0011], [0063], [0073], [0078], and [0089]).
It would have been obvious to one of ordinary skill in the art to include other active ingredients such as other herbicides, insecticides, fungicides, bactericides, nematocides, or mixtures thereof in the composition of Heslop-Harrison, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because the compound in the composition of Heslop-Harrison is used for improving crop quality and weed control (Heslop-Harrison: claim 2) and the composition of Yuan is also used for weed control (Yuan: [0063] and [0078]). Thus, an ordinary artisan seeking to provide a greater spectrum of weed control would have looked to include other active ingredients such as other herbicides, insecticides, fungicides, bactericides, nematocides, or mixtures thereof, in the composition of Heslop-Harrison, per guidance from Yuan, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
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.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 19424296 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending Application ‘296 significantly overlap with the subject matter of the instant claims, i.e., a compound having the following formula:
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or a herbicidally-effective salt thereof; wherein n is independently 0, 1, 2, 3, 4, or 5; R1 and R2 are independently H or alkyl group; R4 is independently an alkyl chain having 1 carbon atom; and R3 is independently
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Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 19424296.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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