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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Current Status of 18/842,578
This Office Action is responsive to the amended claims of 29 August 2024.
Claims 5-14 have been amended in the amendment filed 08/29/2024. Claims 1-15 are pending and have been examined on the merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The effective filing date is 03/01/2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 08/29/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC §§ 101 and 112
35 U.S.C. 101 reads as follows:
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 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.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility.
Claim 15 reciting “Use of a compound … as a herbicide”, fails to assert or demonstrate a specific and substantial utility for the compound, and represents a generalized utility applicable to an entire broad class of herbicides without identifying any specific target weed. Because the claim fails to establish a specific and substantial utility, the invention lacks practical utility.
Claim 15 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention. The claim fail to satisfy the enablement requirement.
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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.
Claims 1-5, 7 and 11-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WAILES (WO2022/053422, published 03/17/2022, effectively filed, 09/11/2020, priority document cited as “PD” below). 1
Wales teaches the herbicidal compositions and their use for controlling weeds, in particular in crops of useful plants of compounds of Formula (I), one of which is shown below (compound 1.004, p 25, PD):
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It maps on Formula (I) of instant claim 1 (wherein R1 and R2 are H; R5 is H (n=0); Z1, Z2 and Y2 are N; Y1 is C-Cl (CR3 wherein R3=Cl); X1 is a single bond (when (CR10R11)q=0 and R9 is -CH2CH2CH2CF3 -- C1-C6alkyl-C1haloalkyl).
The compound also reads on the following claims:
Claim 2: R1 and R2 are H; Claim 3: Y1 is CR3 and Y2 is N; claim 4: R3 is chloro; claim 5: n=0; and claim 7: Z1 and Z2 are N.
Regarding claims 11-15, Wales teaches the herbicidal compositions and a method of controlling weeds (claims 11-15), thus anticipating instant claims 11-15.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No.18/044,821.
Reference Application ‘821 discloses herbicidal compounds of Formula (I), compositions and a method of use for controlling weeds (Abstract, claim 14). The overall structure of Formula (I) of instant claim 1 is very similar with that of reference ‘821. They differ in two variables (in red arrows), where X1 and R6 in reference ‘821 seem to be broader than X1 and CF3 in instant claim1, respectively.
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Nevertheless, they overlap at least when X1 is -CH2- (q=1) in instant claim 1 and R6 is CF3 in ‘821 while all other variables R1, R2, R5, Y1, Y2, Z1, Z2 and n are same in instant claim 1 and reference ‘821. For example, compound 1.015 cited above (see also Table 1, p 96 of ‘821). Other examples including, but not limited to, compounds 1.020 -1.027 (Table 1, p 96-97 of ‘821) also map on Formula (I) of instant claim 1.
In addition, instant claims 11-15 are almost identical with claims 11-15 of ‘821, respectively.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are presently allowable as written.
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/B.T./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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