DETAILED ACTION
This office action is in response to the Applicant’s filing dated November 1st, 2024.
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 .
Priority
This application is a 371 of PCT/EP2023/060917 filed on April 26th, 2023; and claims benefit of foreign priority of EP22171420.7 filed on May 3rd, 2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-11 are pending in the instant application. Acknowledgement is made of Applicant’s remarks and amendments filed on November 1st, 2024. Acknowledgment is made of Applicant’s amendment of claims 1-11.
Claim Objections
Claim 5 is objected to because of the following informalities: On page 4, in line 11 spanning into line 13 of claim 5, the claim recites “Papilionaceae sp.; major crop plants, the major crop plants selected from the group consisting of” but should recite “Papilionaceae sp.; the major crop plants selected from the group consisting of”.
Claim 6 is objected to because of the following informalities: The punctuation and spacing between members listed of the group of unwanted microorganisms needs to be consistent throughout the recitation.
Claim 7 is objected to because of the following informalities: On page 8, in line 3 spanning into line 5 of claim 7, the claim recites “Alternaria species, Cercospora species,” but should read “Alternaria species; Cercospora species;”.
Claim 8 is objected to because of the following informalities: On page 8, in line 2 of claim 8, the claim recites “phatopathogenic viruses” but should read “phytopathogenic viruses”.
Claim 9 is objected to because of the following informalities: On page 8, in the last line of claim 9, the claim recites “and plant growth regulator.” but should read “and plant growth regulators.”.
Claim 11 is objected to because of the following informalities: On page 8, in the last line, the claim recites “the group consisting of cotton, flax, grapevine, fruit, vegetables,” but should recite “the group consisting of cotton, flax, grapevine, fruit, and vegetables;”. On page 9, in line 10, the claim recites “Papilionaceae sp.; major crop plants, wherein the major crop plants are” but should recite “Papilionaceae sp.; wherein the major crop plants are”. On page 9, in line 13 spanning into line 15 the claim recites “Brassicaceae sp. Fabacae sp.,” but should recite “Brassicaceae sp., Fabacae sp.,”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-11 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.
Regarding claims 1-7 and 11, the language “A use of (5S)-3-[3-(3-chloro-2-fluorophenoxy)-6-methylpyridazin-4-yl]-5-(2-chloro-4-methylbenzyl)-5,6-dihydro-4H-1,2,4-oxadiazine according to Formula (I) for controlling unwanted microorganisms causing diseases on plants.” fails to clearly define the metes and bounds of the claim. Particularly, it is unclear whether the Applicant intended the instant claims to be drawn to a compound or a method of treatment. See MPEP § 2173.05(q).
Regarding claims 8-10, the language “A composition” recited in line 1 of claim 8, and “The method for” recited in line 1 of claim 10 and “or a composition according to claim 8” recited in the last two lines of claim 10, is unclear and fails to clearly define the metes and bounds of the claims. Particularly, it is unclear whether the Applicant intended the instant claims to be drawn to a composition or a method of treatment. See MPEP § 2173.05(q). In the interest of compact prosecution, the Examiner will examine these claims as they read on a composition.
Claim Rejections - 35 USC § 101
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.
Claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 1-7, the claims do not clearly fall within at least one of the four categories of patent eligible subject matter because they are drawn to “A use of (5S)-3-[3-(3-chloro-2-fluorophenoxy)-6-methylpyridazin-4-yl]-5-(2-chloro-4-methylbenzyl)-5,6-dihydro-4H-1,2,4-oxadiazine according to Formula (I) for controlling unwanted microorganisms causing diseases on plants” as recited in claim 1, which is not one of the four categories of patent eligible subject matter. “One cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101") In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961). See MPEP § 2173.05(q).
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.
Claims 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al (WO 2020/127780 A1).
Regarding claims 8-10, Chen teaches Compound I-302 shown below (page 149, Table 1):
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418
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which is the instantly claimed compound of Formula (I). It is noted that Chen teaches Compound I-338 and Compound I-339, which are the respective R and S enantiomers of Compound I-302 (page 150, Table 1, last compound; page 151, Table 1, first compound; page 152, last three lines). Chen further teaches Compound I-302 in a composition with DMSO, acetone and Tween 80 (page 294, lines 12-13; page 295, line 6). Furthermore, Chen teaches that the composition comprising of Compound I-302 can be combined with one or more biological control agents (page 95, lines 23-26) including fungicides (page 95, last line), insecticides and acaricides (page 98, lines 30-31), safeners (page 102, lines 18-19), herbicides (page 102, lines 25-26) and plant growth regulators (page 104, line 26).
Regarding claim limitations that are directed to the use of the claimed composition for the controlling of phytopathogenic fungi, phytopathogenic viruses and/or unwanted microorganisms, respectively, such limitations of the instant claims fails to patentably distinguish the instant claims over the cited prior art because such limitations are an intended use of the composition (i.e. an intent to use the disclosed composition for controlling of phytopathogenic fungi, phytopathogenic viruses and/or unwanted microorganisms), which does not impart any physical or material characteristics to the composition that is not already present in the cited prior art. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.2d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 378, 42 USPQ2d 1550, 1554 and MPEP § 2112.02(II). In the instant case, the claims are directed to a composition and, thus, would be reasonably expected to be capable of performing the intended use as instantly claimed, absent factual evidence to the contrary and further absent any apparent structural difference between the composition of the prior art and that of the instant claims.
Thus, the teachings of Chen anticipate the composition of instant claims 8-10.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4, 6-8 and 10-12 of U.S. Patent No. US 12,501,900 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the ‘900 patent are directed to a composition comprising Compound I-302 and a method of controlling phytopathogenic fungi comprising applying the a composition comprising of Compound I-302. Compound I-302 is the same as the instantly claimed compound of Formula (I), used in the same compositions for the same purpose.
Claims 8-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. US 12,653,191 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 in the ‘191 patent is directed to a composition comprising Compound I-302. Compound I-302 is the same as the instantly claimed compound of Formula (I), used in the same compositions.
Conclusion
Claims 1-11 are rejected.
Claims 5-9 and 11 are objected to.
No claim is allowed.
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/C.L.J./Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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