DETAILED ACTION
Formal Matters
Claims 1-15 are pending and under examination.
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 national stage entry of PCT/EP2023/064174 filed on 5/26/2023, which claims priority to EP22176867.4 filed on 6/1/2022.
Information Disclosure Statements
The information disclosure statement (IDS) filed on 11/27/2024 has been considered by the examiner.
Claim Objections
Claims 1, 5 and 6 are objected to for the misspelling of the word “memebered”, which needs to be spelled as “membered”. Appropriate correction is required.
Claim Rejections - 35 USC § 101 – Use Claim
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 rejected under 35 U.S.C. 101 because claim 15 is a use claim. It provides “Use of a compound of formula (I) according to claim 1 as a herbicide” without providing any steps where it might be considered a method of use. Thus, the claim walks the line between being toward a product with intended use or a method of use. See MPEP 2173.05(q) regarding “Use claims”.
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 13 and 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 13 recites the limitation "the additional pesticide" in dependence to claim 12 which provides “at least one additional pesticide”. There is insufficient antecedent basis for this limitation in the claim. Applicant should amend the limitation to be “the at least one additional pesticide”.
Claim 15 is indefinite for being a “Use claim”. See MPEP 2173.05(q). It does not set forth any steps to be a method, so it is unclear if it should be considered as a product with an intended use or a method of using. For the purpose of compact prosecution, the examiner will consider the claim as a product with intended use.
Claim Rejections - 35 USC § 103
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sherba EP0127313A1.
Sherba discloses a compound on page 5 that is :
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209
320
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where Z may be O, Y can be a hydrogen or alkyl, R2 is the phenyl group, R3 can be a hydrogen, alkyl or halogen atom, R4 is the phenyl group (pages 5-10 of Sherba for definitions and preferred compounds). Page 40 provides compounds including :
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175
688
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Additionally see compounds at the top of page 45.
A difference between a compound defined by Sherba and applicant’s claim is that there would need to be a methylene group attaching the phenyl group to the nitrogen containing ring at Sherba’s R4 position.
Sherba’s “the phenyl group” is allowed to have an Xn on the phenyl ring and this is allowed to be a hydrogen, halogen, C1-C6 alkyl group or C1-C6 alkoxy group (see page 5). X is allowed to be chloro, bromo, fluoro or iodo at the 3 and/or 4 positions of the phenyl (page 6). Sherba’s compound is intended to be applied to cereal grain plants (abstract) and is considered an apomixic agent (aids a form of reproduction of plants).
One of ordinary skill in the art before the time of filing would note that the addition of a short alkyl group (e.g. CH2) to attach the substituted or unsubstituted phenyl would not constitute a major design change that would drastically change properties of the compound (see MPEP 2144.09 “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).”). Thus, the addition of a methylene (a short alkylene group) to attach this substituted or unsubstituted phenyl at position R4 will still be expected to produce other suitable apomixic compounds with a reasonable expectation of success considering the teachings of Sherba.
Claims 1-13 and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Carlson US4964896A.
Carlson teaches a compound of formula I in column 2 with the structure and definitions of :
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687
314
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279
301
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(also see the table IV compounds, columns 23-28). Additionally, see the compound in column 42 (and column 44) with phenyl rings at each side adjacent to the N ring atom.
As these compounds are recognized as gametocides in plants, they will have herbicidal activity by destroying the reproductive gametes. Carlson also teaches the compounds as chemical hybridization agents on monocotyledonous crops (abstract). Column 3 of Carlson provides for agronomically acceptable salts. Carlson provides for use as plant growth regulators and foliar application as well as use with other plant growth regulators like ethephon, herbicides, fungicides, insecticides and plant bactericides (column 51). Carlson teaches agronomically acceptable carrier for the compound and additional agents (columns 51-52). Carlson teaches application by sprays (column 53). Thus, teachings of Carlson will allow application of its formulations to loci where unwanted plant growth is desired.
Carlson’s phenyl group is allowed to have an Xn on the phenyl ring and this is allowed to be a hydrogen or halogen with n of 1 or 2 (columns 3 and 4). X is allowed to be hydrogen, chlorine, or fluorine of the phenyl (column 4). Column 3 allows X to also be hydrogen, halogen, C1-C6 alkyl or C1-C6 alkoxy and n to be from 1 to 3.
A difference between a compound defined by Carlson and applicant’s claim is that there would need to be a methylene group attaching the phenyl group to the nitrogen containing ring at Carlson’s similar position on its compounds.
One of ordinary skill in the art before the time of filing would note that the addition of a short alkyl group (e.g. CH2) to attach the substituted or unsubstituted phenyl would not constitute a major design change that would drastically change properties of the compound (see MPEP 2144.09 “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).”). Thus, the addition of a methylene (a short alkylene group) to attach this substituted or unsubstituted phenyl will still be expected to produce other suitable active gametocide compounds of Carlson that can be used with other plant growth regulators such as herbicides to be applied to areas of plants in need of growth control.
Claim 14 in addition to Claims 1-13 and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Carlson US4964896A in view of Kezar et al (2022 Beltwide Cotton Conferences, San Antonio, TX, January 4-6, 2022, Chemical gametocides can suppress reproduction in late-season palmer amaranth escapes).
Carlson teaches the claims as discussed above and provides for the compounds as gametocides.
Carlson does not teach using the compound in a composition to control weeds.
Kezar teaches that a gametocide can effectively disrupt the week seedbank contributions by reproductive suppression (abstract). Kezar recognized a reduction in seed viability with applications.
Thus, one of ordinary skill in the art before the time of filing would have used gametocides taught in Carlson to control weeds by suppressing their reproduction by teachings of Kezar. There would have been a reasonable expectation of success in applying the compounds of Carlson to methods of using gametocides of Kezar and expecting reproductive suppression of weed species.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No 18/870,252 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each claim set provides for a structurally similar compound and its use as an herbicide to control unwanted plant/weed growth. The difference between ‘252 and the applicant’s examined claims is that the X group in ‘252 is either O, S(O)n or NR11 while in the examined claims this position would be CH. However, as the rest of the compound would form a very similar structure having similar groups attached to a same core ring, this change in atoms at this position would be seen as another suitable choice of a linking group resulting in a structurally similar compound with a similar herbicidal benefit. See MPEP 2144.09 regarding close structural similarity between chemical compounds.
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 MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached on M-F 9:00 am to 6:00 pm EST.
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/MARK V STEVENS/
Examiner, Art Unit 1613
Prosecution Insights