DETAILED ACTION
Status of Application
Preliminary amendments to the claims, filed 11/27/2024, are acknowledged. Claims 1-15 are pending in this action. Claims 3-11, 14-15 have been amended. Claims 1-15 are currently under consideration. 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/EP2023/064172, filed May 26, 2023, which claims benefit of foreign priority to EP22176865.8, filed June 1, 2022.
Inventorship
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.
Specification
The lengthy specification (38 pages, exclusive of claims) 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. MPEP 608.01. The specification is objected to because of the following informalities:
The structures of disclosed herbicidal pyridine derivatives as shown in the instant specification (Pages 1-2) are not clear, because the substitutes R3, R6, R8 are missing and/or not identified/defined. Clarification is required.
The use of the trademarks/trade names has been noted in this application (e.g., Pages 15, 17). Although the use of trademarks/trade names is permissible in patent applications, the proprietary nature of the trademarks/trade names should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks. The use of language such as “the product X (a descriptive name) commonly known as Y (trademark)” is not permissible since such language does not bring out the fact that the latter is a trademark. Language such as “the product X (a descriptive name) sold under the trademark Y” is permissible. MPEP §608.01(v). Further, it is noted that the trademarks/trade names are used to identify a source of goods, and not the goods themselves. The formula or characteristics of the product may change from time to time and yet it may continue to be sold under the same trademark/trade name. Thus, a trademark/trade name does not identify or describe the goods associated with the trademark/trade name. Appropriate correction is required.
The specification comprises acronyms without proper definition, e.g., MCPA, MCPB (Page 19). The acronym should be given once in parenthesis after the first use of the full term, and then the acronym used alone thereafter if needed. Appropriate correction is required.
The data provided in the specification are unclear, given that the data are shown without units of measurements (e.g., Pages 23-25). Appropriate correction is required.
Information Disclosure Statement
The information disclosure statement, filed 1/27/2024, is acknowledged and has been considered. Please see the attached initialed PTO-1449.
Claim Objections
Claims 11, 14, 15 are objected to because of the following informalities: Claim 11 comprises the typographic error “a compound according to claim 1” that needs to be corrected to “the compound according to claim 1”. Similar is applied to claims 14, 15. Appropriate correction is required.
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.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a non-statutory subject matter.
The claim 15 does not fall within at least one of the four categories of patent eligible subject matter, because “a use of a compound” is not a composition, a manufacture, a process, or a machine. The claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim, which is not a proper process claim under 35 U.S.C. 101. See Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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 1-15 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 pre-AIA the applicant regards as the invention.
Claim 1 is unclear and indefinite, because the structures of recited compounds are not clearly delineated. To this point, it is noted that the structures of recited compounds are defined with substitutes R1, R2, R4, R5, R7, R9, R10, and no information is provided regarding substitutes R3, R6, R8. Clarification is required.
Claim 1 recites the limitations “may be optionally substituted”, “may each be optionally substituted” that is unclear. First, it is unclear what should be substituted – e.g., R2 as phenyl or heteroaryl, OR phenyl or heteroaryl may include additional substitutes. Second, the recitation of “may be optionally” or “may each be optionally” renders the claims indefinite, because it is unclear if said substitution is actually optional or it is required/disclosed. Therefore, said limitations and/or a combination thereof do not clearly define the scope of the claim. Similar is applied to claims 2-3, 6-9. Clarification is required.
Claim 15 provides for the “use” of the composition but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Clarification is required.
Claims 4-5, 10-14 are rejected as being dependent on rejected independent claim 1 and failing to cure the defect.
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 obviousness-type 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); 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) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(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 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,660,819.
Although the conflicting claims are not identical, they are not patentably distinct from each other, because the prior patent also claim derivatives of 3-pyridinecarboxylic acid having substituents as instantly claimed and their use in herbicidal compositions. Therefore, the claimed invention is directed to the same invention or is an obvious variation of the inventions claimed in said prior patents.
Claims1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/134,619.
Although the conflicting claims are not identical, they are not patentably distinct from each other, because the subject matter claimed in the instant application is fully disclosed in the referenced copending applications and would be covered by any patent granted on that copending applications since the referenced copending applications and the instant application are claiming common subject matter as derivatives of 3-pyridinecarboxylic acid having substituents as instantly claimed and their use in herbicidal compositions. This is a provisional obviousness-type double patenting rejection, because the conflicting claims have not in fact been patented.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The prior art teaches a large variety of pyridine derivatives that can be used in herbicidal compositions. The prior art does not teach derivatives of 3-pyridinecarboxylic acid having specific substituents as instantly claimed and their use in herbicidal compositions. Applicant teaches that said compounds can be used in herbicidal compositions for selectively controlling weeds at a locus comprising useful (crop) plants and weeds by applying to the locus of a weed a controlling amount of a composition comprising said claimed compounds.
Conclusion
No claim is allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA V. TCHERKASSKAYA whose telephone number is (571)270-3672. The examiner can normally be reached 9 am - 6 pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA V. TCHERKASSKAYA/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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