CTNF 18/845,744 CTNF 87710 DETAILED ACTION 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. Claim Objections 07-29-01 AIA Claim s 2-12 are objected to because of the following informalities: dependent claims should begin with the article “The” not “A” . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-15 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. Claim 1 is indefinite because it recites “may optionally” which together are duplicative optional language which then calls into question whether the heteroatoms, etc. which can be contained are actually optional or if by using may optionally if the subsequent heteroatoms are actually optional or if they are required because may optionally means that it is optional/possible that it is optional and as such it is unclear if this language means the substitution is optional or if it actually required since the language states that it is possible/optional that it is optional. Claims 2-15 are also rejected because they depend from or include the limitations of claim 1 and do not resolve the above ambiguity. Changing the language from “may optionally” to “may” would resolve this issue. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation hydrogen, chlorine, bromine, cyano and aminothiocarbonyl, and the claim also recites more preferably chlorine, bromine and cyano which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-7, 9-12 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Puhl et al. US20040043903 (English version of WO2002/42275 (from IDS)) . Regarding claims 1-7, 9-12, Puhl teaches herbicidal compounds of applicant’s formula (I), specifically Puhl’s example 9 PNG media_image1.png 152 272 media_image1.png Greyscale and example 36 PNG media_image2.png 146 396 media_image2.png Greyscale and/or example 37 PNG media_image3.png 246 472 media_image3.png Greyscale which anticipate the instantly claimed compounds of claims 1-7, and 9-12 (see Example 9 ([306-310]); the Table beginning on pg. 35/[0366], specifically examples 36-37; claims; abstract), wherein each of the claimed variables in the compounds of formula (I) as instantly claimed in claims 1-7 and 9-12 are expressly taught and exemplified and therefore anticipated by Puhl’s Example 9 and examples 36-37. Specifically, wherein either of the instant X1 or X2 is N and the other is C-R1 or C-R17, etc. as instantly claimed as these examples in Puhl anticipate the compounds instantly claimed via the claim limitations in claims 1-7, 9-12. Puhl teaches all limitations of the claims and thereby anticipates the claims . 07-15-aia AIA Claim(s) 1-4, 6-7, 9-14 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by US20040092402 (‘402) . Regarding claims 1-4, 6-7, 9-12, ‘402 teaches examples/compound D-43 and D44 which anticipate the instant claims wherein applicant’s claimed X1 is C-R1, which is C-Cl, R2 is CHF2, X2 is N, X3 is C-R18 which is the CH, X4 is N, R3 is F, R4 is Cl, B is O, D is CH2 or CH(Me) wherein one of R6 and R7 is H and the other is Me, and n is 1, Y is CH, R8 is applicant’s OR9, wherein R9 is ethyl (See Table 6, D-43 and D-44). Regarding claims 13-14, ‘402 expressly teaches compositions comprising the claimed compounds D-43 and D-44 and an agrochemically acceptable diluent or carrier, specifically acetone and surfactants, wherein the compounds/compositions thereof are useful for controlling undesired plant growth by applied to plants, parts thereof, or to the locus thereof as is instantly claimed (See Table 6, D-43 and D-44; Table 23 entries discussing the use of D-43 and D-44, [0957-0963]). ‘402 teaches all limitations of the claims and thereby anticipates the claims . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-22-aia AIA Claim (s) 8, 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Puhl et a. (US20040043903) as applied to claim s 1-7, 9-12 above, and further in view of Chaky et al. (US20100186131) . Determination of the scope and content of the prior art (MPEP 2141.01) Puhl teaches the compounds of claims 1-7 and 9-12 as discussed above and incorporated herein. Regarding claim 8, Puhl broadly teaches wherein applicant’s n can be 2 as claimed. Specifically, they teach that Puhl’s X is a single bond, R5 is C(O)OYR7, wherein Y is methylene (which can be substituted with alkyl groups), and R7 is C(R10)(R11) (wherein this group along with the ethylene read on wherein applicant’s n is 2)-COOR12, wherein R12 reads on the claimed R9, e.g. hydrogen, C1-C6-alkyl, etc. which corresponds to the instantly claimed compounds wherein n is 2. Thus, it would be obvious to modify for example, Example 9 to have an additional -CH(CH3)- which would read on wherein n=2 because as discussed above Puhl broadly teaches wherein the instant n can be 2 in their compounds and because “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH 2 - groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Puhl also teaches wherein their herbicidal compounds can be formulated into herbicidal compositions comprising the claimed agriculturally acceptable diluent or carrier. Regarding claim 13, Puhl throughout the document teaches that their compounds are herbicides/have herbicidal activity and they specifically claim compositions comprising their compounds with the claimed agrochemically acceptable diluent or carrier and as such one of ordinary skill in the art would obviously be motivated to form the claimed agrochemical compositions with the exemplified Example 9 or compound(s) 36 or 37 from Puhl with the claimed agrochemically acceptable diluent or carrier as claimed as taught by Puhl in order to form additional herbicidal compositions within the scope of their invention (See entire document; abstract; claims; Example 9 ([306-310]); Table beginning on pg. 35/[0366], specifically examples 36-37; claims 12-14; [0031-0033]; [0394]). Regarding claim 14, Puhl teaches throughout the reference that their compounds are useful as herbicides that their compounds of formula (I) which include the claimed compounds of the instant formula I, e.g. Puhl’s Example 9 and examples 36-37 are useful in methods of controlling undesirable plant growth comprising applying an herbicidally effective amount of a compound of formula (I), e.g. the compound(s) of Puhl’s Example 9 and/or examples 36 or 37 can be at once envisaged to be used as a herbicidal active in the method of Puhl which is the instantly claimed because it is expressly taught as an example and as such can such be at once envisaged to be selected as a herbicidal active agent in Puhl (abstract; claims, specifically claims 1, 15-16; Example 9 ([306-310]); the Table beginning on pg. 35/[0366], specifically examples 36-37). Regarding claim 14, Puhl teaches throughout the reference that their compounds are useful as herbicides that their compounds of formula (I) which include the claimed compounds of the instant formula I, e.g. Puhl’s Example 9 and examples 36 and/or 37 (see structures above) are useful in methods of controlling undesirable plant growth comprising applying an herbicidally effective amount of a compound of formula (I), e.g. the compound(s) of Puhl’s Example 9 and/or examples 36 or 37 can be at once envisaged to be used as a herbicidal active in the method of Puhl which is the instantly claimed because it is expressly taught as an example and as such can such be at once envisaged to be selected as a herbicidal active agent in Puhl (abstract; claims, specifically claims 1, 15-16; Example 9 ([306-310]); Table beginning on pg. 35/[0366], specifically examples 36-37). Regarding claim 15, Puhl teaches throughout the reference that their compounds are useful as herbicides and wherein their compounds include the instantly claimed compounds, e.g. Example 9 and examples 36-37, and wherein their compounds which include the claimed compounds can be formulated into compositions and used in methods to control weeds/undesired vegetation in crop areas, e.g. in fields/growing areas with herbicide tolerant/resistant crops, and they teach wherein their herbicidal compounds which read on and in some cases are the claimed compounds as discussed above and compositions thereof can be used in crop areas to act against weeds without substantially harming the crop plants and are particularly useful in crops which tolerate the effect of herbicides owing to breeding including recombinant methods, e.g. genetically modified crops (see entire document; [0367-0370]; claims; abstract; Example 9 ([306-310]); the Table beginning on pg. 35/[0366], specifically examples 36-37; [0377-0384]; [0394-0397]). Ascertainment of the difference between prior art and the claims (MPEP 2141.02) Regarding claim 15, Puhl does not teach applicant’s step (a), specifically wherein the plants at the plant cultivation site having the specifically claimed mutation. However, as discussed above Puhl clearly teaches wherein their herbicidal compounds and compositions thereof, which include the claimed compounds, can be applied to fields of crops to control weeds wherein the crops are genetically modified to be tolerant/resistant to herbicides. However, this deficiency in Puhl is addressed by Chaky. Chaky teaches that it was known in the art to apply other PPO herbicides to PPO inhibitor resistant/tolerant crops and areas containing these crops and wherein the crops have the same at least one nucleic acid comprising a nucleotide sequence…resistant or tolerant to a PPO inhibiting herbicide as claimed (See entire document; abstract; [001-0012]; [0014-0015]; [0020-0023]; [0087-0091]; [0094-0097]; [0200]; [0254]; [0256-0257]; [0234-0257]). Finding of prima facie obviousness Rationale and Motivation (MPEP 2142-2143) It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed methods because Puhl also already teaches and exemplifies the claimed compounds as discussed above and wherein applicant’s n can be the claimed 2 and it would be obvious to form this claimed compound for reasons detailed above. Further, it would be obvious to form the claimed compositions because Puhl teaches forming compositions of their compounds of which they do exemplify at least several examples of the claimed compounds and it would be obvious to select these compounds for forming the claimed compositions because Puhl teaches that all of their compounds are herbicidal and can be formulated into compositions comprising the claimed carriers, etc. for controlling weeds. Thus, it would be obvious to select the claimed exemplified compounds as the active agents for forming herbicidal compositions because any of the exemplified compounds taught by Puhl would be obvious to select for forming herbicidal compositions as claimed. It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have developed the instantly claimed method whereby the composition/active compounds are being applied in fields of crops which are resistant/tolerant to PPO inhibitors because Puhl teaches using the claimed compounds to control weeds and wherein the crop fields to which the compounds/compositions thereof are applied in effective amounts include those having crops which are genetically modified, etc. to be resistant/have tolerance to herbicides and it would be obvious to use the claimed compounds on PPO inhibitor resistant crops because it was obvious to use herbicides in/on fields of crops which have resistance to the types of herbicides being applied so that any herbicide damage to the crop is reduced and/or eliminated by the herbicide tolerance/resistance modifications made to the crop. In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a). 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 would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary . 07-22-aia AIA Claim 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20040092402 (‘402) as applied to claim s 1-4, 6-7, 9-14 above and further in view of Chaky et al. (US20100186131) . Determination of the scope and content of the prior art (MPEP 2141.01) ‘402 teaches the compounds of claims 1-4, 6-7, 9-14 as discussed above and incorporated herein. Ascertainment of the difference between prior art and the claims (MPEP 2141.02) Regarding claim 15, ‘402 does not teach applicant’s step (a), specifically wherein the plants at the plant cultivation site having the specifically claimed mutation. However, as discussed above ‘402 clearly teaches wherein the claimed herbicidal compounds and compositions thereof are applied to fields of crops to control weeds and they further teach wherein the herbicide is selective for weeds over crops. However, this deficiency in ‘402 is addressed by Chaky. Chaky teaches that it was known in the art to apply other PPO herbicides to PPO inhibitor resistant/tolerant crops and areas containing these crops and wherein the crops have the same at least one nucleic acid comprising a nucleotide sequence…resistant or tolerant to a PPO inhibiting herbicide as claimed (See entire document; abstract; [001-0012]; [0014-0015]; [0020-0023]; [0087-0091]; [0094-0097]; [0200]; [0254]; [0256-0257]; [0234-0257]). Finding of prima facie obviousness Rationale and Motivation (MPEP 2142-2143) It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have developed the instantly claimed method whereby the composition/active compounds are being applied in fields of crops which are resistant/tolerant to PPO inhibitors because ‘402 teaches using the claimed compounds to control weeds and wherein the crop fields to which the compounds/compositions thereof are applied in effective amounts and wherein the herbicides are selective for weeds over crops and it would be obvious to use the claimed compounds on PPO inhibitor resistant crops because it was obvious to use herbicides in/on fields of crops which have resistance to the types of herbicides being applied so that any herbicide damage to the crop is reduced and/or eliminated by the herbicide tolerance/resistance modifications made to the crop especially when the herbicides are also selective for weeds over crops because this would result in even less damage to the crops than would be seen with crops which do not have PPO resistance/tolerance. In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a). 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 would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary. Additional Relevant Prior Art JP2003212860, WO2001010843, US6010980 all of which teach herbicidal compounds which anticipate at least some of the instant claims. Conclusion No claims are allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F. 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, Sue X Liu can be reached at 571-272-5539. 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ERIN E HIRT/Primary Examiner, Art Unit 1616 Application/Control Number: 18/845,744 Page 2 Art Unit: 1616 Application/Control Number: 18/845,744 Page 3 Art Unit: 1616 Application/Control Number: 18/845,744 Page 4 Art Unit: 1616 Application/Control Number: 18/845,744 Page 5 Art Unit: 1616 Application/Control Number: 18/845,744 Page 6 Art Unit: 1616 Application/Control Number: 18/845,744 Page 7 Art Unit: 1616 Application/Control Number: 18/845,744 Page 8 Art Unit: 1616 Application/Control Number: 18/845,744 Page 9 Art Unit: 1616 Application/Control Number: 18/845,744 Page 10 Art Unit: 1616 Application/Control Number: 18/845,744 Page 11 Art Unit: 1616 Application/Control Number: 18/845,744 Page 12 Art Unit: 1616 Application/Control Number: 18/845,744 Page 13 Art Unit: 1616
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