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 is a 371 of PCT/IB2023/000074 filed 02/09/2023.
PCT/IB2023/000074 has PRO of 63309907 filed 02/14/2022.
Accordingly, claims 1-12 of this instant application are afforded the effective filing date of 02/14/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted 08/08/2024 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 without traverse of formula (Ia):
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, as the species of diketopiperazine according to formula (I), in the reply filed on 07/14/2026 is acknowledged. The requirement is deemed proper and is therefore made FINAL. The elected species of formula (Ia) was found free of the art and thus, the search was hereby extended to all diketopiperazine species according to formula (I).
Status of the Claims
Claims 1-12 are pending in this instant application, and examined herein on the merits for patentability.
Claim Rejections - 35 USC § 112
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 2-5, 8, and 9 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 claims 2 and 3, the recitation of “R1 represents hydrogen or hydrogen” renders said claims indefinite because it is unclear how R1 can be “hydrogen or hydrogen” as this recitation is redundant. Clarification by amendment to claims 2 and 3 is required.
Regarding claim 3, the recitation of “at least one of R2 and R3 represents phenyl, whilst the other represents hydrogel, methyl or ethyl” render claim 3 indefinite because first, claim 3 is dependent from claim 1, where said claim 1 recites that “R2 and R3 each independently represent hydrogen, C1 to C3 alkyl, phenyl, or substituted phenyl,” and thus, there is only one R2 and on R3 in formula (I). As such, it is not clear how there can be “at least one of R2 and R3,” where “at least one” encompasses a breadth that include a plurality of R2 and R3. Furthermore, “at least one R2 and R3 represents phenyl” also encompassed the breadth of R2 and R3 being both phenyl and thus, is not clear how is meant by “whilst the other represents hydrogen, methyl or ethyl,” as the metes and bound of “the other” is not clear. It is not clear what “the other” is when R2 and R3 in claim 3 can be both phenyl. Clarification by amendment in claim 3 is required.
Regarding claim 4, the recitation of “at least one of R2 and R3 represents phenyl, whilst the other represents hydrogel or methyl” render claim 4 indefinite because first, claim 4 is dependent from claim 1, where said claim 1 recites that “R2 and R3 each independently represent hydrogen, C1 to C3 alkyl, phenyl, or substituted phenyl,” and thus, there is only one R2 and on R3 in formula (I). As such, it is not clear how there can be “at least one of R2 and R3,” where “at least one” encompasses a breadth that include a plurality of R2 and R3. Furthermore, “at least one R2 and R3 represents phenyl” also encompassed the breadth of R2 and R3 being both phenyl and thus, is not clear how is meant by “whilst the other represents hydrogen or methyl,” as the metes and bound of “the other” is not clear. It is not clear what “the other” is when R2 and R3 in claim 4 can be both phenyl. Clarification by amendment in claim 4 is required.
Regarding claim 5, the recitation of “the adjuvant is selected from a diketopiperazine of the following formula:
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” renders claim 5 indefinite because it is not clear how the adjuvant can be “selected from” the formula above, when the formula only recites one particular species diketopiperazine. Thus, there is no other species for selection from the formula above. Clarification by amendment in claim 5 is required.
Regarding claim 8, it is noted that claim 8 provides for the “use” of compound selected from diketopiperazine according to 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.
Regarding claim 9, there recitation of “apply a formulation in accordance with claim 1” renders said claim 9 indefinite because claim 1 is drawn to particularly “an agrochemical formulation” and thus, is not clear what “formulation” claim 9 encompassed that is in accordance with claim 1. Is “a formulation in accordance with claim 1” referencing to “the” agrochemical formulation of claim 1 or a different formulation? Thus, there is lack of antecedent basis for “a formulation in accordance with claim 1” in claim 1. Clarification by amendment in claim 9 is required.
As a result, claims 2-5, 8, and 9 do not clearly set forth the metes and bounds of patent protection desired.
Claim Rejections - 35 USC § 101
Claim 8 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).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 is directed to “A concentrate formulation suitable for making an agrochemical formulation of claim 1, the concentrate comprising i) an adjuvant selected from a diketopiperazine according to formula (I) and ii) at least one agrochemical active, nutrient, or biostimulant”. Claim 6 is dependent from independent claim 1. While claim 6 is directed to a concentrate formulation, the components of the concentrate are the exact same components of formulation of independent claim 1. There are no additional components to distinguish the agrochemical formulation and the concentrate.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 5-9 of copending Application No. 18837133 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending Application ‘133 significantly overlap with the subject matter of the instant claims. The adjuvant selected from diketopiperazine according to formula (I) of copending Application ‘133 encompassed the adjuvant selected from diketopiperazine according to formula (I) of the instant claims in that the claims 1, 2, and 5-9 of copending Application ‘133 include a diketopiperazine according to formula (I), wherein R1 represents hydrogen or C1 to C4 alkyl; R2 represents -CH(R3)(R4); R3 and R4 each independent represents hydrogen, C1 to C3 alkyl, phenyl, or substituted phenyl; R5 represents hydrogen; R6 and R7 together represents a 6 membered optionally substituted saturated or unsaturated ring, which is a diketopiperazine of the instant claims. Furthermore, the claims 1, 2, and 5-9 from copending application ‘133 also encompassed agrochemical formulation the diketopiperazine according to formula (I); concentrate formulation containing the diketopiperazine according to formula (I), method of treating vegetation to control pest using the agrochemical formulation; and a seed coating composition containing the diketopiperazine according to formula (I), respectively.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18837133.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: the diketopiperazine according to formula (I) was found free of the art. Pertinent prior arts: US 2013/0190177 (Park et al) and Xi et al (Chem. Eur. J., 2019, 24: 3005-3009). While Park and Xi teach 2,5-diketopiperazine derivatives, the diketopiperazine compounds disclosed in Park and Xi are structurally different from the instantly claimed diketopiperazine according to formula (I).
Conclusion
Claims 1-12 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOAN THI-THUC PHAN whose telephone number is (571)270-3288. The examiner can normally be reached 8-5 EST Monday-Friday.
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/DOAN T PHAN/Primary Examiner, Art Unit 1613
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