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 Objections
At least claims 1-6 are objected to because of the following informalities: the claim recites the “alkyl”….is each and the examiner believes that these listings should read “are each”. There are multiple instances of such language in the claims and the examiner requests applicant’s assistance in changing the appropriate instances of “is each” to “are each” when referring back to multiple groups/choices. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-14 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 recites “the general formula I”. However, no general formula I has been referred to previously and as such it is unclear where the general formula is coming from. Removing the word “the” would overcome this rejection. Claim 1 is also indefinite because it recites “the ring” in multiple places in the claim and appears to be referring back to various ring types claimed in the various substituents but it is unclear which of the previously mentioned rings applicants are referring to as “the ring”, e.g. the aryl ring or the heterocycylyl ring, etc.?
Claims 2-5 are also indefinite because it recites “the ring” in multiple places in the claim and appears to be referring back to various ring types claimed in the various substituents but it is unclear which of the previously mentioned rings applicants are referring to as “the ring”, e.g. the aryl ring or the heterocycylyl ring, etc.?
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, claims 2-8 recite the broad recitations of various variables within each of the formula, and the claims also recites preferably, more preferably, further preferably, etc. (there are multiple instances of this language) which are narrower statements of the ranges/limitations. 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. The examiner asks for applicant’s assistance in correcting all instances of this indefinite language in their claims as there are numerous instances throughout applicant’s claim set. Because of the multiple instances of ranges within ranges in the claims dependent upon claim 1 the examiner is completely unclear as to what scope of compounds applicants are trying to encompass with their claims, especially since several of the claims merely further limit the substituents but do not actually require the substituents that are narrowed to be present in light of claim 1 from which they depend, based on the plain language of the claims as it is currently written.
Claim 11, 13-14 are also rejected because they depend from or include the limitations of the rejected claims 2-8 above and do not resolve the above ambiguities.
Claim 6 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Specifically, the claim refers to Table 1 a table found in the specification. Claims must stand alone to define the invention and incorporation by express reference to the specification and/or drawings is not permitted. It is suggested that Applicant insert the table or rewrite the table into the claim which would overcome this rejection if applicants want to specifically claim the compounds in the table.
Claim 7 is indefinite because it recites the compound shown in the general formula II and the compound shown in the general formula III, however, the compounds shown in the general formulae II and III have never previously been disclosed or mentioned and as such these limitations lack antecedent basis.
Claims 9 and 11 recite controlling a weed but then recite applying to a plant. It is unclear to the examiner if the plant to which the composition is being applied is a weed or if it is a crop plant, and if applicant’s plants are crop plants then it is unclear to the examiner how merely applying a herbicidally effective amount of the compounds or compositions thereof to plants/crop plants which is all that is required by the claimed active steps would actually lead to/accomplish applicant’s claimed control of weeds?
Claims 10, and 12-14 are also rejected because they depend from or include the limitations of claim 1 either directly or indirectly and do not resolve the above ambiguities.
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.
Claim(s) 1-6, 8-14 and is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Syngenta (WO2022112072, from IDS).
Regarding claims 1-6, Syngenta teaches compounds of applicant’s formula I, specifically compounds of applicant’s Table 1, which are instantly claimed/preferred as in claim 6, specifically compounds I-3 and I-7, etc. in Table 1 (e.g. for instance I-7 corresponds to the instantly claimed compound wherein applicant’s M1 and M2 are both CH (instant CR5 wherein R5 is H), applicant’s Y is Cl (anticipates claims 1-2) and Z is F, Q is CX3X4 and is CH2, one of X1 and X2 is Me and the other is CO2Et which corresponds to C(=W1)-W2, wherein W2 is OW3 (which anticipates at least instant claims 1-5), applicant’s R1 is Cl, applicant’s R2 is H, applicant’s R3 is CF3, and applicant’s R4 is H (anticipates claims 1-3) which when all present in the I-7 anticipate instant claims 1-6 as claim 6 for instance merely further limits R11-R14 when they are present but they are not actually required by this claim based on the plain language of the claim as it is currently written (See examples in Table 1, e.g. I-3, etc. which anticipate the claimed compound scope, See also entire document; e.g. pg. 1, ln. 1-pg. 2, ln. 2, pg. 2, ln. 11-pg. 3, ln. 23, specifically the compound scope which has priority as disclosed in the priority document (as there is a broader scope of compounds disclosed/claimed in the WO document cited above, the examiner is noting to applicants that she is only citing the compounds and compound scope which have priority to the priority document); Table 1, compounds I-1 through I-312; pg. 6, ln. 39-pg. 8, ln. 17; pg. 8, ln. 19-pg. 9, ln. 22; Biological examples)).
Regarding claim 8, Syngenta broadly teaches forming herbicidal compositions with the claimed compounds and specifically teaches biological examples, e.g. of I-7 and forming compositions with these compounds which comprise herbicidally effective amounts of the compounds and formulation auxiliaries (See Biological examples section; Table 2, Table 3, entries for I-7; Table 1, I-7; pg. 3, ln. 24-27; additionally see sections cited above).
Regarding claims 9-14, Syngenta teaches using the claimed compounds and/or compositions comprising these compounds, e.g. compound I-7, etc. to control weeds in weedy areas, and/or weeds in crop areas comprising applying herbicidally effective amounts of at least one of their compounds and/or compositions comprising these compounds to plants and/or weedy areas and/or weeds or merely applying the claimed compounds and/or compositions thereof which is all that is required for instance by claims 10, 12-14 is applying effective amounts anywhere to achieve the claimed methods as the only active step is applying the compounds or compositions anywhere in herbicidally effective amounts which is taught by the examples in Syngenta(See entire document; sections cited above which are incorporated herein; pg. 3, ln. 28-33; pg. 52, ln. 3-8; pg. 52, ln. 32-pg. 53, ln. 29; Examples from table 2, I-7, I-19, I-31, etc. which are supported in the priority document).
Syngenta teaches all limitations of the claims and thereby anticipates the claims.
Claim Rejections - 35 USC § 103
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 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.
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Syngenta (WO2022112072, from IDS with priority to 11/24/2020), and further in view of Patani et al. (Chem. Rev., 1995, 96(8), 3147-3176), and Koyanagi et al. (Ch. 2, Bioisosterism in Agrochemicals, 1995, from Synthesis and chemistry of agrochemicals IV).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-6, Syngenta also broadly teaches applicant’s claimed compounds of formula I specifically applicant’s compounds of their Table 1, and specifically exemplifies homologous and/or structurally similar compounds to those instantly claimed in Table 1, and Syngenta teaches wherein their compounds also herbicidal compounds, for instance Syngenta’s compound I-103 (wherein Syngenta’s A is N and corresponds to the instant M2, Syngenta’s B is CH which corresponds to the instant R4, Syngenta’s X is C-CF3 which corresponds to the instant R3 which is CF3, Syngenta’s R2 is H which corresponds to the instant R2 is Me, and Syngenta’s D is CCl which corresponds to the instant R1 is Cl, etc.) and this compound is homologous and/or structurally similar/bioisosteric to compound I-1 in instant Table 1 as it merely differs in that applicant’s R2 is H in Syngenta’s compounds vs the instantly claimed R2 which is CH3 (See entire document; e.g. pg. 1, ln. 1-pg. 2, ln. 2, pg. 2, ln. 11-pg. 3, ln. 23, specifically the compound scope which has priority as disclosed in the priority document (as there is a broader scope of compounds disclosed/claimed in the WO document cited above, the examiner is noting to applicants that she is only citing the compounds and compound scope which have priority to the priority document); Table 1, compounds I-1 through I-312, e.g. I-103; pg. 6, ln. 39-pg. 8, ln. 17; pg. 8, ln. 19-pg. 9, ln. 22). The examiner notes that Syngenta does teach wherein their R2 can be the instantly claimed methyl group (See entire document; e.g. pg. 7, ln. 15; see compound I-224 for instance wherein R2 is methyl).
Regarding claim 8, Syngenta broadly teaches forming herbicidal compositions with the claimed compounds and as discussed above specifically exemplifies structurally similar and/or homologous compounds to those of applicants Table 1 and teaches forming compositions with these compounds which comprise herbicidally effective amounts of the compounds and formulation auxiliaries (See entire document; sections cited above; additionally see: pg. 3, ln. 24-27).
Regarding claims 9-14, Syngenta teaches using the claimed compounds and/or compositions comprising these compounds which are broadly taught to control weeds in weedy areas, and/or weeds in crop areas comprising applying herbicidally effective amounts of at least one of their compounds and/or compositions comprising these compounds which broadly read on the claimed compounds of applicant’s formula I, specifically of disclosed Table 1, as discussed above and incorporated herein to plants and/or weedy areas and/or weeds, and Syngenta teaches wherein the useful crops can be transgenic crops (See entire document; sections cited above which are incorporated herein; pg. 3, ln. 28-33; pg. 52, ln. 3-8; pg. 52, ln. 32-pg. 53, ln. 29; Examples from table 2, I-19, I-31, etc. which are supported in the priority document). Though as discussed above the examiner notes that with respect to some of the method claims merely applying the compounds/compositions thereof to any surface in effective amounts reads on the instant claims.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Syngenta merely does not appear to teach any specific examples of the instantly claimed herbicidal compounds in applicant’s disclosed Table 1 that have priority to their earliest effective filing date. However, it would be obvious to form the claimed compounds, compositions and methods when looking to Syngenta because Syngenta broadly teaches applicants compounds are useful for the same herbicidal purpose as is discussed above and because Syngenta clearly prefers as their R2 the Me group since they exemplify compounds with this group. Thus, it would be obvious to change the R2 of Syngenta’s I-103 from H to Methyl in order to form additional herbicidal compounds based on the totality of the teachings of Syngenta.
Regarding claim 7, Syngenta also teaches a similar method of forming their overlapping scope of the claimed compounds, specifically the method merely differs in that their oxime moiety in the starting material/reactant contains an H atom where the instantly claimed Hal/halogen is present on the claimed oxime group and the reaction is done in solvent and with base as claimed. However, it would have been obvious to switch the H atom of Syngenta for the claimed halogen, specifically an F atom because Patani teaches that H and F are known classical biosisteres of one another and Koyanagi teaches that bioisosterism as used in developing drugs is useful for developing agrochemicals (See Syngenta: Step 4 pg. 68 and all sections previously cited above; Koyanagi: entire document; See Patani: fluorine vs. hydrogen replacements section pg. 3149-3150).
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 compounds, compositions and methods when looking to Syngenta because Syngenta teaches and overlapping scope of the same compounds for the same use as herbicides and teaches forming compositions of their overlapping scope of compounds and their structurally similar examples with the same formulation auxiliaries and in the same methods of controlling weeds via the same active steps which are instantly claimed and as such Syngenta renders obvious the claimed compounds of Table 1, compositions comprising these compounds and methods of using these compounds to control weeds, etc. as claimed as is discussed above and incorporated herein. It would be obvious to substitute the H at R2 in compound I-103 of Syngenta for the instant methyl group in order to form the claimed I-1 because Syngenta clearly teaches wherein their R2 (Which corresponds to the instant R2) can be methyl and they specifically exemplify examples wherein their R2 is methyl as cited and discussed above. Additionally, Patani teaches that H and Me are known classical biosisteres of one another (See Patani: Section 4 fluorine…as replacements for hydrogen atoms, pg. 3152-3155, Table 12) and as such this provides yet another reason for one of ordinary skill in the art to make applicant’s claimed I-1 by switching the instantly claimed R2 group which corresponds to the R2 group which is H in Syngenta’s I-103 for the methyl group present in order to form additional herbicidally active compounds. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (claimed and prior art compounds used in a method of treating depression would have been expected to have similar activity because the structural difference between the compounds involved a known bioisosteric replacement).
It also would have been obvious to develop the claimed method of making the claimed compounds when looking to Syngenta because the method of Syngenta only differs in that it has an H atom on the oxime where the instantly claimed reactant has the Hal group. It would be obvious to make this substitution in Syngenta to form the claimed compounds because H and F (a halogen) are classical bioisosteres of one another and are commonly substituted for one another in reactions/compounds as per Patani and Koyanagi. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (claimed and prior art compounds used in a method of treating depression would have been expected to have similar activity because the structural difference between the compounds involved a known bioisosteric replacement).
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.
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18848956 (‘956) in view of Syngenta (WO2022112072, from IDS with priority to 11/24/2020), Patani et al. (Chem. Rev., 1995, 96(8), 3147-3176), and Koyanagi et al. (Ch. 2, Bioisosterism in Agrochemicals, 1995, from Synthesis and chemistry of agrochemicals IV). ‘956 claims a structurally similar scope of compounds and compositions comprising these compounds and methods of controlling weeds, etc. as claimed with their structurally similar scope of compounds and utilize similar methods of making their compounds to those instantly claimed comprising the same first reactant, base and solvent. The compounds of ‘956 and the instant claims merely differ in that they have an O where the instant claims’ Q, which is CX3X4 is found in the instant compounds. However, it would have been obvious to substitute the O atom of ‘956 in order to develop the instantly claimed compounds, compositions and methods because it was known to have CH2 at this position for forming herbicidal compounds, compositions and methods as is taught by Syngenta.
Regarding claims 1-6, Syngenta teaches compounds of applicant’s formula I, specifically compounds of applicant’s Table 1, which are instantly claimed/preferred as in claim 6, specifically compounds I-3 and I-7, etc. in Table 1, which anticipate claims 1-6 as claim 6 for instance merely further limits R11-R14 when they are present but they are not actually required by this claim. (See examples in Table 1, e.g. I-3, etc. which anticipate the claimed compound scope, See also entire document; e.g. pg. 1, ln. 1-pg. 2, ln. 2, pg. 2, ln. 11-pg. 3, ln. 23, specifically the compound scope which has priority as disclosed in the priority document (as there is a broader scope of compounds disclosed/claimed in the WO document cited above, the examiner is noting to applicants that she is only citing the compounds and compound scope which have priority to the priority document); Table 1, compounds I-1 through I-312; pg. 6, ln. 39-pg. 8, ln. 17; pg. 8, ln. 19-pg. 9, ln. 22; Biological examples)).
Regarding claim 8, Syngenta broadly teaches forming herbicidal compositions with the claimed compounds and specifically teaches biological examples, e.g. of I-7 and forming compositions with these compounds which comprise herbicidally effective amounts of the compounds and formulation auxiliaries (See Biological examples section; Table 2, Table 3, entries for I-7; Table 1, I-7; pg. 3, ln. 24-27; additionally see sections cited above).
Regarding claims 9-14, Syngenta teaches using the claimed compounds and/or compositions comprising these compounds, e.g. compound I-7, etc. to control weeds in weedy areas, and/or weeds in crop areas comprising applying herbicidally effective amounts of at least one of their compounds and/or compositions comprising these compounds to plants and/or weedy areas and/or weeds or merely applying the claimed compounds and/or compositions thereof which is all that is required for instance by claims 10, 12-14 is applying effective amounts anywhere to achieve the claimed methods (See entire document; sections cited above which are incorporated herein; pg. 3, ln. 28-33; pg. 52, ln. 3-8; pg. 52, ln. 32-pg. 53, ln. 29; Examples from table 2, I-7, I-19, I-31, etc. which are supported in the priority document).
Further, regarding claims 1-6, Syngenta also renders obvious the claimed compounds because Syngenta broadly teaches applicant’s claimed compounds of formula I specifically applicant’s compounds of their Table 1, and specifically exemplifies homologous and/or structurally similar compounds to those instantly claimed in Table 1, and Syngenta teaches wherein their compounds also herbicidal compounds, for instance Syngenta’s compound I-103 (wherein Syngenta’s A is N and corresponds to the instant M2, Syngenta’s B is CH which corresponds to the instant R4, Syngenta’s X is C-CF3 which corresponds to the instant R3 which is CF3, Syngenta’s R2 is H which corresponds to the instant R2 is Me, and Syngenta’s D is CCl which corresponds to the instant R1 is Cl, etc.) and this compound is homologous and/or structurally similar/bioisosteric to compound I-1 in instant Table 1 as it merely differs in that applicant’s R2 is H in Syngenta’s compounds vs the instantly claimed R2 which is CH3 (See entire document; e.g. pg. 1, ln. 1-pg. 2, ln. 2, pg. 2, ln. 11-pg. 3, ln. 23, specifically the compound scope which has priority as disclosed in the priority document (as there is a broader scope of compounds disclosed/claimed in the WO document cited above, the examiner is noting to applicants that she is only citing the compounds and compound scope which have priority to the priority document); Table 1, compounds I-1 through I-312, e.g. I-103; pg. 6, ln. 39-pg. 8, ln. 17; pg. 8, ln. 19-pg. 9, ln. 22). The examiner notes that Syngenta does teach wherein their R2 can be the instantly claimed methyl group (See entire document; e.g. pg. 7, ln. 15; see compound I-224 for instance wherein R2 is methyl).
Regarding claim 8, Syngenta also broadly teaches/renders obvious forming the claimed herbicidal compositions with the claimed compounds of applicant’s Table 1 and as discussed above specifically exemplifies structurally similar and/or homologous compounds and forming compositions with these compounds which comprise herbicidally effective amounts of the compounds and formulation auxiliaries (See entire document; sections cited above; additionally see: pg. 3, ln. 24-27).
Regarding claims 9-14, Syngenta teaches using the broadly disclosed/structurally similar compounds of applicant’s Table 1 and/or compositions comprising these compounds which are broadly taught to control weeds in weedy areas, and/or weeds in crop areas comprising applying herbicidally effective amounts of at least one of their compounds and/or compositions comprising these compounds which broadly read on the claimed compounds of formula I as discussed above and incorporated herein to plants and/or weedy areas and/or weeds, and Syngenta teaches wherein the useful crops can be transgenic crops (See entire document; sections cited above which are incorporated herein; pg. 3, ln. 28-33; pg. 52, ln. 3-8; pg. 52, ln. 32-pg. 53, ln. 29; Examples from table 2, I-19, I-31, etc. which are supported in the priority document). Though as discussed above the examiner notes that with respect to some of the method claims merely applying the compounds/compositions thereof to any surface in effective amounts reads on the instant claims.
Regarding claim 7, Syngenta also teaches a similar method of forming their overlapping scope of the claimed compounds, specifically the method merely differs in that their oxime moiety in the starting material/reactant contains an H atom where the instantly claimed Hal/halogen is present on the claimed oxime group and the reaction is done in solvent and with base as claimed. However, it would have been obvious to switch the H atom of Syngenta for the claimed halogen, specifically an F atom because Patani teaches that H and F are known classical biosisteres of one another and Koyanagi teaches that bioisosterism as used in developing drugs is useful for developing agrochemicals (See Syngenta: Step 4 pg. 68 and all sections previously cited above; Koyanagi: entire document; See Patani: fluorine vs. hydrogen replacements section pg. 3149-3150).
Patani teaches that O and CH2 are known classical biosisteres of one another and Koyanagi teaches that bioisosterism as used in developing drugs is useful for developing agrochemicals (See Koyanagi: entire document; See Patani: divalent isosteres involving two single bonds section pg. 3155-3156, e.g. tables 19-20).
Thus, one of ordinary skill in the art would conclude that the instantly claimed inventions are rendered obvious by copending 18848956 in view of Syngenta, Patani, and Koyanagi, it would have been obvious to make the substitution to the compounds of ‘956 when looking to Syngenta, and Patani and Koyanagi in order to form additional effective herbicidal compounds which were already known in the art at the time of the instant filing.
This is a provisional nonstatutory double patenting rejection.
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.
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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.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
Prosecution Insights