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 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.
Election/Restrictions
Applicant's election with traverse of Group II, claims 6-8, 10-11, and 13, in the response dated July 24, 2026, is acknowledged. The applicant further elects the following species of formula (II):
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The applicant also elected Group (b), fungicidal active ingredients.
The traversal is on the ground(s) that the Examiner did not provide a rationale for the claimed species of active ingredients in claim 8 and that the Examiner has not provided support for the breaking of unity of invention between groups I-III. This is not found persuasive because the cited prior art of Toriyabe teaches compounds of formula (I), breaking unity of invention between the Groups. Toriyabe also teaches classes of fungicides such as chlorothalonil ([0348]).
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-5, 9, and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
Claim Status
Claims 12-13 are newly added.
Claims 1-13 are pending.
Claims 1-5, 9, and 12 are withdrawn.
Claims 6-8, 10-11, and 13 are examined on the merits in this prosecution.
Objection to the Specification
Page 133, ninth line, “chlorophenyl” is misspelled. Appropriate correction is required.
Claim Objections
Claim 1 impermissibly contains multiple periods. See MPEP 608.01(m). Also in claim 1, (pg 9, two lines from the bottom) there is a single bracket of unknown function and a missing comma after “cyano group”. Appropriate correction is required.
Claim 6, second to the last line, after “atom” has a single bracket. The function of this bracket is unclear. Appropriate correction is required.
Claim 6, lines 6-8 and 10-11 contain bracketed “{ }” limitations. This is a confusing and non-standard representation. The Examiner suggests replacing the brackets with “wherein” clauses.
CLAIM REJECTIONS
Obviousness Rejection
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
1) Claims 6, 7, 8, 10, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Toriyabe (US 2003/0069242 A1).
Toriyabe teaches 3-arylphenyl sulfide derivatives represented by general formula (I):
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(I)
wherein R is a C2 -C6 alkyl group, a C2-C6 alkenyl group, a C2-C6 alkynyl group or the like; B0 to B2 and B3 are hydrogen atoms, halogen atoms, cyano groups, C1-C4 haloalkyl groups or the like; n is 0, 1 or 2, and Ar is a phenyl ring, a pyridine ring, a thiophene ring, a pyrazole ring or the like, and insecticides and miticides containing the 3-arylphenyl sulfide derivatives as an active ingredient (Abstract).
Regarding the elected species of formula (I), 4'-chloro-3-(ethylsulfonyl)-1,1'-biphenyl, while Toriyabe does not teach this specific species, Toriyabe teaches the following examples of formula 1, considered to be obvious variants of the elected compound.:
I70 (pg 4): Ar = 4-chlorophenyl, R = isopropyl, and n=2;
I536 (pg 18): Ar = 4-chlorophenyl, R = ethyl, and n=1.
In view of the close similarity of the elected compound to compounds I70 and I536 of Toriyabe, one of ordinary skill would expect the elected compound and the structurally similar compounds of Toriyabe to have similar utilities. As set forth in MPEP 2144.09:
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.
For claims 7 and 10, Toriyabe teaches the composition is useful against agricultural pests (pg 1, [0004]); pgs 62-64, [0334]-[360]).
For claim 8, Toriyabe teaches the composition comprises antifungal ingredients including chlorothalonil, myclobutanil, tricyclazole, flutolanil, and hexaconazole (pg 63, [348]). It is noted that antifungal agents are the elected species of the “one or more ingredients.”
For claim 10, Toriyabe teaches the composition comprises an inert carrier (pg 62, [334]).
For claims 11 and 13, Toriyabe teaches the formulation may be applied to the contents of a seeding box (pg 62, [0338]), interpreted by the Examiner as the box carrying seed (i.e. a hopper), prior to planting in the field.
The examiner acknowledges that some picking and choosing was used to arrive at the instantly claimed compositions in view of Toriyabe. However, the claimed combination of components, including the compound represented by formula (I), is taught as known and used for agricultural administration. Further, Toriyabe teaches administration with the same carriers. It would have therefore been prima facie obvious to a person having ordinary skill in the art to administer the claimed combination of ingredients, including compounds of Formula (II) and the elected species of Formula (II), to an agricultural area to treat or prevent a plant disease, with a reasonable expectation of success that the treatment would be efficacious, as taught by Toriyabe.
Nonstatutory Double Patenting Rejection
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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
1) Claims 6-8, 10-11, and 13 are rejected under the judicially created doctrine of nonstatutory double patenting as being unpatentable over claims 5-12, 16, and 20 of U.S. Patent Application No. 18/865,572 (reference application), in view of Ali (“Input of Isosteric and Bioisosteric Approach in Drug Design,” J.Chem.Soc.Pak., Vol. 36, No. 1, 2014 150-169).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims in the reference application always recite a structure represented by formula (II), claim 5, reciting a pyridiyl ring replacement for the instantly claimed benzene ring in the sulfur-substituted ring of the biphenyl moiety. This modification is not present in the instant claims.
However, Ali teaches the missing element of the instant claims.
Ali teaches pyridyl as a bioisosteric equivalent for a phenyl for a phenyl ring (pg 153, Fig. 1).
An ordinarily skilled artisan would have expected success in substituting Ali's pyridyl ring for the phenyl ring of the instant application because Ali teaches that pyridine rings are bioisosteric replacements for phenyl rings.
2) Claims 6-8, 10-11, and 13 are rejected under the judicially created doctrine of nonstatutory double patenting as being unpatentable over claims 3-6 and 9 of U.S. Patent Application No. 19/520,379 (reference application), in view of Ali (cited above).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims in the reference application always recite a structure represented by formula (II), claim 5, reciting a pyridiyl ring replacement for the instantly claimed benzene ring in the sulfur-substituted ring of the biphenyl moiety. This modification is not present in the instant claims.
However, Ali teaches the missing element of the instant claims.
Ali teaches pyridyl as a bioisosteric equivalent for a phenyl for a phenyl ring (pg 153, Fig. 1).
An ordinarily skilled artisan would have expected success in substituting Ali's pyridyl ring for the phenyl ring of the instant application because Ali teaches that pyridine rings are bioisosteric replacements for phenyl rings.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached on (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612
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