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 .
Status of the Claims
Claims 1-15 and 17-21 are pending in the preliminary amendment filed 5/20/25 and have been examined on the merits.
Priority
The instant application is a national stage filing of 3 PCT/US2023/018412, filed 04/13/2023, and claims the benefit of priority to US provisional 63/330,809, filed 04/14/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/11/24 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
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.
Claims 1-15 and 17-21 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.
The instant claims provide for the compound:
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where Q is either
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. However, it is unclear how Q1 or Q2 connects to the central structure of formula 1, as there is no indication that it is, for example connected directly, e.g.
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, where the dash indicates the attachment, or whether it is depicting that it is attached through a methylene unit, e.g.
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, or whether it is attached through one of the R-groups (11 or 12) or through A2, and the ring pendant group is a methyl group, e.g.
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. Because it has more than one potential conflicting interpretation, the claims are indefinite.
Further, because the connectivity is confusing and the structural limitations of the compounds are unclear, the compounds of claim 17 lack antecedent basis. It is unclear, at least in one interpretation of claim 1, that the compounds do not find support within claim 1.
This rejection may be overcome by rectifying the connectivity description for Q1 and Q2.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1-6, 8, 9, 11-15, and 18-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ARLT (US 2021/0155608 A1, pub 5/27/21).
The instant claims are drawn generally to a compound of formula 1, a coated seed, and a method of controlling an invertebrate pest via administration of the compound to the pest or the environment.
Arlt teaches the compound I-035 (page 62):
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, which maps to the instant claims where R1= alkyl (methyl), R2 is halogen (Cl), R3 is alkyl-R6, where R6 is S(O)pR7, where p=0, and R7= alkyl (methyl), R4 and R5 are interchangeable because they are on the same carbon and either is H or alkyl (methyl), Q is Q1, A1 is heterocycle-R6, where R6 is CN:
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, and R10 is H. Arlt teaches the compounds can be their isomers depending on their substituents, and that the “invention encompasses both pure stereoisomers and any mixture of these isomers.” (para [0405]). Because of this explicit teaching, and the structural depiction where Arlt teaches the compound in a ‘flat’ image (no stereochemistry), and there are so only two isomers possible around R4,R5, and Q, they are both necessarily embraced by the teachings of Arlt.
Arlt further teaches the compounds are in agrochem formulations with at least one additional component (e.g. claims 12-14), and identifies all of the agents to combine (e.g. “Mixtures”, para [0434] to [0449]), and that the compounds and mixtures are used in treatments for crop protection (e.g. claim 19), where the seed is contacted with the compound or formulation thereof (e.g. claim 22), as well as the resulting coated seed (e.g. claim 23). Arlt teaches the use of the compositions treat seeds (e.g. para [0457]+) and that the seeds are coated with the compound in 0.001 to 50 g/kg and preferably between 0.01 and 15g/kg of seed (para [0484]), and Arlt teaches using I-035 for coating seeds and it’s use in agrochemical applications, e.g. para [0710]m applying to Chinese cabbage at 500 g/ha, as well as coating seeds where the composition prepared with acetone, DMF, an emulsifier (alkylarylpolyglycol ether) (e.g. para [0683]-[0691]), where the active agent is 1 part by weight and germinating seeds were sprayed with the mixture prior to testing against beetle larvae (e.g. para [0687]). It should be noted that claim 19 limits the optional component being “at least one additional biologically active compound or agent” to specific agents, but does not require selection of said component, instead only limiting that specific portion of the “at least one additional component” Markush in claim 18, such that the group A, B, C, and optionally D is now A, B, C, and optionally D’.
Allowable Subject Matter
Claims 10 and 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The closest prior art, Arlt, cited above, does not teach or suggest the compounds of claim 17, differing structurally, nor does it teach or suggest, alone or in combination with any other art, the compounds where Q is Q2. The compound of Arlt shares a common core with the instant compounds, and general teachings for the moieties of the compounds of claim 17, but it does not provide sufficient guidance to arrive at those compounds.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew D Kosar whose telephone number is (571)272-0913. The examiner can normally be reached Monday-Friday, 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Michener can be reached at 571-272-1600. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew D Kosar/ Supervisory Patent Examiner, Art Unit 1625
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