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
Claim 11 is objected to because of the following informalities: this claim appears to be missing a period at the end.
Claim 12 is objected to because of the following informalities: this claim should read one or more other active ingredients.
Appropriate correction is required.
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 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 contains multiple phrases within parentheses (e.g. which may be mono- or poly-substituted by R8, etc.) and it is unclear if these limitations are meant to be part of the claim or not. For compact prosecution purposes the examiner is interpreting these parenthetical phrases to be part of the claim but suggests removing the parentheses which would overcome the rejection, or deleting these phrases if they are not meant to be part of the claim which would also overcome the rejection. As there are multiple instances of these parenthetical phrases throughout claim 1 the examiner asks for applicant’s assistance to ensure that all instances of these phrases are addressed appropriately.
Claims 2-15 are also rejected because they depend either directly or indirectly upon claim 1 and do not resolve the ambiguities of claim 1.
Claim 13 is indefinite because it recites a method for combating and controlling insects, acarines or molluscs but then recites that the active step comprises applying to a pest. Pests are not limited by applicant’s specification to applicant’s species they are controlling and as such it is unclear how treating pests which would include pests which are associated with damage of man-made structures and would include things like rodents, raccoons, bears, etc. and as such it is unclear how the treatment of such pests would lead to the claimed combating and controlling insects, acarines, or molluscs as claimed. That is to say the scope of the claimed active step of applying the compound/compositions thereof to any and all pests which are associated with damage of man-made structures would not necessarily lead to control of the insect, acarine, or molluscs as claimed and as such there is disagreement between the active step and the intended use of the claimed method. The examiner suggests changing the pests to which the the compounds/compositions are applied to match that of applicant’s preamble which would overcome the above rejection.
Regarding claim 14, the claim recites the limitation "the attack by insects, etc.". There is insufficient antecedent basis for this limitation in the claim as any form of attack has not been previously disclosed in claim 14.
Regarding claim 15, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (WO 2021153720, with US20230110603 used solely as an English translation for citation purposes), and further in view of Patani et al. (Chem. Rev., 1996, 96(8), 3147-3176).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Claims 1-10, Tanaka teaches bioisosteric pesticidal compounds which are useful for controlling/combating the claimed insects, acarines, and molluscs as claimed. The compounds of Tanaka overlap for all variable instantly claimed except that all of the claimed X, Y, and Z in Tanaka are the claimed CR8 which is not allowed by the instantly claimed compounds. For instance Tanaka teaches compound D-006 wherein all of the variable in Tanaka overlap with the claimed compounds except that applicant’s X is not N as claimed and required by I-1a and which is also in the required S configuration and wherein all of the other variables overlap with/read on the claimed substituents, which is structurally very similar/bioisosteric to the instantly claimed compound wherein R6 is H, R5 is trifluoromethylsulfonylamino, R3 is Cl, R1 is CHCF3 and has the structure of I-1a and is in the S-configuration and merely lacks the N at applicant’s claimed position X. (See entire document; abstract; claims; compound D-006 in WO2021153720 as the tables from the US document would not load properly for the examiner; as well as [0007-0020]; etc.; [0533-0559]; [0507-0532]).
Regarding claim 11, Tanaka teaches similar methods of making their bioisosteric compounds wherein all of applicant’s X, Y, and Z are CR8 and wherein the reaction proceeds through an intermediate acid chloride or activated acylating agent similar to/bioisosteric to applicants formula IV wherein the activated group is halogen for displacement upon reaction with the same amines which are instantly claimed and wherein R4 and R3 can be the same as instantly claimed (see production method 2 section [0269-0297]).
Regarding claims 12, Tanaka teaches compositions comprising their pesticidal bioisosteric compound to that of formula I and one or more auxiliaries and diluent and optionally one or more other active ingredients (See entire document; all sections cited above and also the claims; [0533-0559]; [0507-0532]).
Regarding claims 13-15, Tanaka teaches methods of combating and controlling the claimed insects, etc. comprising applying to pests an insecticidally, etc. effective amount of their bioisosteric compounds to those of instant formula I or composition thereof and/or methods for the protection of plant propagation materials from attack by insects, etc. by applying to the propagation material, etc. an effective amount of their bioisosteric compounds to those of instant formula I and/or composition thereof and teaches propagation materials, e.g. seedlings in seedling growing facilities, which have been treating with their bioisosteric compounds to those of instant formula I (See entire document; all sections cited above and also the claims; [0533-0559]; [0507-0532]; examples; [0025-0031]; [0054]; [0056]; [0579]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-15, it would have been obvious to form the claimed compounds when looking to Tanaka because the compounds are bioisosteric to those instantly claimed and it would have been obvious to substitute for instance the CH group of Tanaka for the claimed N atom because CH for instance and N are bioisosteres and specifically it is known that the claimed pyridine rings are bioisosteric to the phenyl rings of Tanaka as is taught by Patani (See Ring equivalents section in entirety beginning on pg. 3158 left col.; Table 29, Figure 39 and discussion of these tables; see also table 2). One of ordinary skill in the art would have been motivated to make the instantly claimed compounds when looking to Tanaka and Patani in order to form additional pesticidal compounds because it is known that the compounds would be expected to have similar bioactivities since they are known classical bioisosteres of one another, 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.
Claim 1-10, 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19587186 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because 19587186 teaches compounds which are homologous to those instantly claimed in that they merely differ in that the stereocenter CH(CH3) group in for instance I-1a as instantly claimed is instead a -C(CH3)2- group e.g. both R5 and R6 in copending 186 are methyl groups and one cannot be the claimed H. However, it would have been obvious to form the claimed compounds compositions and methods of using the instantly claimed compounds because the compounds of 19587186 are homologous to those instantly claimed and would only need to lose the CH3 group at for instance R6 in copending ‘186 to form the claimed compounds and it is known that compounds that differ by only the addition/subtraction of an additional/succesive methyl group are homologous (See for instance MPEP 2144.09 (I) and (II)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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
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