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 .
Claim Status
Claims 1-13 are pending.
Election/Restriction
Applicant’s election with traverse of Group I (claims 1-13) in the reply filed 8/7/2026 is acknowledged. Applicant’s election with traverse of the species (shown below), wherein X is oxygen, R1 is ethyl, R2 is 3,4-dichlorophenyl, R3 is hydrogen, R4 is trifluoromethyl, R5 is hydrogen, R6 is hydrogen, and R7 is hydrogen, in the reply filed 8/7/2026 is acknowledged. The traversal is on the grounds that the International Search Authority found that claims 1-15 contain unity. Further, traversal is on the grounds that Group I and Group II are drawn to an acceptable combination of invention categories, and should be examined together as unity of invention exists.
Applicants arguments have been fully considered but are not found persuasive. Applicant is directed to MPEP 1893.03 and 37 CFR 1.499, which specifically address unity of invention during the national stage: "If the examiner finds that a national stage application lacks unity of invention under § 1.475, the examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted. Such requirement may be made before any action on the merits but may be made at any time before the final action at the discretion of the examiner. Review of any such requirement is provided under § 1.143 and 1.144.” Unity of invention further only exists when the invention makes a contribution over the prior art. As Changlun et al. teaches a compound that reads on instant claim 1, the instant claims do not make a contribution over the prior art. As unity of invention lack is lacking. Thus, lack of unity of invention as determined by the examiner in the Office Action dated 5/7/2026 on the basis of lack of novelty over Changlun et al. is maintained, and the requirement is maintained.
Further, the instant invention does not make a contribution over Park. Specifically, see below.
Further, the instant invention does not make a contribution over Selwood. Specifically, see below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The following elected species was found to be free of the art:
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167
221
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Claims 1-13 are under consideration to the extent of the generic structure of Formula (I), wherein the R groups are defined by the claims. The additional species searched are as follows:
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215
347
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209
246
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The restriction and election requirement still stands, and the claims are under consideration to the extent of the searched species.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for herbicidal compositions comprising compounds defined by Table 1 and Table 2, does not reasonably provide enablement for herbicidal compositions comprising compounds of the general Formula (I). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to produce and use the invention commensurate in scope with these claims.
As stated in MPEP 2164.01(a), “there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is ‘undue.’”
The criteria for determining such undue experimentation, summarized in In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988), are: 1) the nature of the invention; 2) the breadth of the claims; 3) the amount of direction or guidance presented; 4) the presence or absence of working examples; 5) the state of the prior art; 6) the predictability or unpredictability of the art; 7) the relative skill of those in the art; and 8) analysis of the quantity of experimentation necessary. While all of these factors are considered, a sufficient amount for a prima facie case is discussed below.
Regarding factors 1-2, instant claim 11, when given the broadest possible interpretation, encompasses a herbicidal composition comprising a compound of Formula (I). Two such compounds that may be in this composition that correspond to Formula (I)are as follows:
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220
290
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213
284
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This compound aligns with Formula (I), wherein X is oxygen, R1 is ethyl, R2 is hydrogen, R3 is hydrogen, R4 is hydrogen, R5 is a halogen (i.e. fluorine), R6 is hydrogen or a halogen, and R7 is hydrogen or a halogen.
Regarding factors 3-4, the specification provides various examples in Table 1. All examples in Table 1 demonstrate that R2 is a substituted phenyl ring. Further, 18 of 19 examples in Table 2 demonstrate that R2 is a substituted phenyl ring. That is, the specification teaches examples that are a specific subset of the claimed Formula (I) that is not representative of the entire scope of the claims. As the scope of the claims encompasses compounds where the R group is not a substituted phenyl ring, one would expect these to have herbicidal activity. As demonstrated by Table 1 and Table 2 of the instant application, the overwhelming majority of examples require R2 to be a substituted phenyl ring. In the case of the one example that lack a substituted phenyl ring at the R2 position, a substituted phenyl ring is present in the R1 position. Therefore, it seems that a substituted phenyl ring at R1 or, more preferably, R2 is required. Applicant has not successfully demonstrated the full scope of the disclosure, wherein R2 may be a group other than a substituted phenyl ring. One of ordinary skill in the art would not be guided by the instant disclosure to select R2 as being a substituted phenyl ring, and therefore cannot practice the full scope of the invention successfully. The specification provides inadequate guidance to allow the skilled artisan to determine, without undue experimentation, what other R groups may be used to achieve herbicidal activity. Therefore, the broad aspects of the composition are not reasonably enabled for the full scope embraced by the claimed invention.
Regarding factors 5-7, in relation to the above iterations of Formula (I) wherein X is oxygen, R1 is ethyl, R2 is hydrogen, R3 is hydrogen, R4 is hydrogen, R5 is a halogen (i.e. fluorine), R6 is hydrogen or a halogen, and R7 is hydrogen or a halogen, Wallace et al. (Herbicidal activity of fluoroquinolone derivatives, Plant Direct, published 9/14/2021) teaches that these compounds were investigated for their ability to be used a herbicide. However, they did not result in herbicidal activity (sec. 3.2, example 34 and 35). As the compounds in Wallace are within the broad scope of the claimed invention, there would be undue experimentation to determine the lack of herbicidal activity for compounds such as those disclosed in Wallace that would fall within the scope of the claims. Given the instant disclosure, one would expect all compounds that fall within the scope of the claims would have herbicidal activity. However, the compounds as described in Wallace which read on the instant claims are shown to have no herbicidal activity. The composition as described in the disclosure is therefore unpredictable and would require undue experimentation to arrive at a composition that has successful herbicidal activity. One of ordinary skill would be unable to practice the full scope of the invention, and would be unable to make and use an herbicidal composition comprising the compounds that read on the instant claims and are taught by Wallace to have no herbicidal activity. Therefore, the instant claimed invention does not result in the claimed herbicidal composition.
Regarding factor 8, the as-filed specification does not provide sufficient guidance to enable a person skilled in the art to develop a herbicidal composition comprising a compound of general Formula (I). This is evidenced by the lack of herbicidal activity of two species that reads on the genus of the instantly claimed invention. A person of ordinary skill in the art would not reasonably expect compounds as shown above, wherein according to Formula (I) X is oxygen, R1 is ethyl, R2 is hydrogen, R3 is hydrogen, R4 is hydrogen, R5 is a halogen (i.e. fluorine), R6 is hydrogen or a halogen, and R7 is hydrogen or a halogen, to lack herbicidal activity. However, the instant disclosure suggests that compounds as shown above, which are within the scope of the general Formula (I), would have herbicidal activity. Therefore, one of ordinary skill in the art would have to carry out undue experimentation to arrive at this conclusion, as there is no indication that compounds of Formula (I) wherein X is oxygen, R1 is ethyl, R2 is hydrogen, R3 is hydrogen, R4 is hydrogen, R5 is a halogen (i.e. fluorine), R6 is hydrogen or a halogen, and R7 is hydrogen or a halogen would not work as a herbicide.
In light of the foregoing, the claimed invention is not enabled for all permutations of R group substituents suggested by the instant disclosure, as evidenced by the lack of herbicidal activity for a species that reads on the instant claims.
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.
(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.
Note: In the interest of compact prosecution, rejections on the generic claims are being made. In the process of searching for the elected species in the prior art, though the elected species was found to be free of the prior art, Park was found to read on the instant generic claim and is therefore being applied as prior art, wherein X is oxygen, R1 is methyl, R2 is phenyl substituted with 2 halogens, R3 is hydrogen, R4 is hydrogen, R5 is a halogen, R6 is hydrogen, and R7 is hydrogen.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park (WO2022010150A1, published 1/13/2022, cited in IDS filed 8/16/2024).
Claims 1-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Park (WO2022010150A1, filed 6/28/2021, cited in IDS filed 8/16/2024).
Claims 1-9 recite a 4-quinolone compound of Formula (I), wherein X is O, wherein R1 may be selected from the group including methyl, wherein R2 may be selected from the group including phenyl substituted with 2 R8 groups that may be selected from the group including halogens, wherein R3 may be selected from the group including hydrogen, wherein R5 may be selected from the group including hydrogen or a halogen, wherein R4, R6, and R7 may be selected from the group including hydrogen or a halogen. These R groups are within the scope of claims 1-9.
Park teaches compounds that inhibit TNF activity. One such group of compounds is represented by the following formula, wherein the R groups are as listed.
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1313
931
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All compounds shown here by Park (examples 19-31) align with the instantly claimed Formula (I), wherein the substitutions are described supra. For example, Park describes example 19 (1-methyl-2-(2,4-difluorophenyl)-3-carboxy-7-chloro-4-(1H)-quinolone) which reads on the instant claims 1-8, wherein the Formula (I) substituent R1 is methyl, R2 is 2,4-difluorophenyl (i.e. a phenyl ring substituted with 2 halogens as R8), R3 is hydrogen, R4 is hydrogen, R5 is chlorine, R6 is hydrogen, and R7 is hydrogen.
The instant claims are anticipated by the teachings of Park, as Park teaches compounds of the general Formula (I), wherein the R group substituents are as described supra.
Therefore, claims 1-9 are anticipated by Park.
Note: In the interest of compact prosecution, rejections on the generic claims are being made. In the process of searching for the elected species in the prior art, though the elected species was found to be free of the prior art, Selwood was found to read on the instant generic claim and is therefore being applied as prior art, wherein X is oxygen, R1 is ethyl, R2 hydrogen, R3 is hydrogen, R4 is hydrogen, R5 is hydrogen, R6 is hydrogen, and R7 is hydrogen.
Claims 1-3, 5-8, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Selwood et al. (US10087144B2, published 10/2/2018).
Claims 1-3, 5-8, and 10 recite a 4-quinolone compound of Formula (I), wherein X is O, wherein R1 may be selected from the group including ethyl, wherein R2 may be selected from the group including hydrogen, wherein R3 may be selected from the group including hydrogen, wherein R5 may be selected from the group including hydrogen, wherein R4, R6, and R7 may be selected from the group including hydrogen. These R groups are within the scope of claims 1-3, 5-8, and 10.
Selwood teaches compounds for use in the treatment of cardiovascular and inflammatory diseases. One compound taught as an intermediate in the development of these agents is 1-ethyl-4-oxo-1,4-dihydroquinoline-3-carboxylic acid (see example 42).
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This compound aligns with instantly claimed Formula (I), wherein the substituent for R1 is ethyl, R2 is hydrogen, R3 is hydrogen, and R4, R5, R6, and R7 are hydrogen.
The instant claims are anticipated by the teachings of Selwood, as Selwood teaches compounds of the general Formula (I), wherein the R group substituents are as described supra.
Therefore, claims 1-3, 5-8, and 10 are anticipated by Selwood.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW RYAN BURKE whose telephone number is (571)272-8949. The examiner can normally be reached Mon-Fri. 8am-5pm.
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/MATTHEW RYAN BURKE/Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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