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 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 non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because 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 for example 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). Specifically, claim 15 is directed to a use which is not one of the 4 categories of patent eligible subject matter as it is not a process as it contains no active steps involved in the process and it is not a composition.
Claim Objections
Claims 12-13 is/are objected to because of the following informalities: claim 12 depends from claim 11 and adds a further active agent it should begin with “The” not “A” as the composition as claimed has antecedent basis to the composition of claim 11 from which claims 12 and 13 ultimately depend. The same issue is present for claim 13 which depends from claim 12 and ultimately claim 11. 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 is/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.
Claims 1 and 5 are indefinite because there are multiple instances of “may be optionally” used in the claim and may be optionally means that it is possibly optionally/optionally optional because may be means optional and optionally means optional. Thus, it is unclear if the substituents or any of the features after this phrasing are required or are optional or if they are optionally optional and therefore could be required. Rephrasing the “may be optionally” to “is optionally” or just “may be”, e.g. “is optionally substituted” or “may be substituted” would overcome these rejections.
Claims 2-4, 6-15 are also rejected because they depend either directly or indirectly from rejected claim 1 and do not resolve the above ambiguities.
Claim 14 is indefinite because the language is unclear/not grammatically correct which makes what applicants are claiming unclear. The claim recites, “A method of controlling weeds at a locus comprising applying to the locus of a weed controlling amount of a composition…” it is unclear to the examiner if applicant’s are intending for the claim to read as applying to the locus a weed controlling amount or if they are applying to the locus of a weed, a controlling amount of a composition as it appears that there are words missing from this claim and or an unnecessary “of” in the claim which makes it unclear to the examiner if it is intended that a weed controlling amount of a composition is being applied or if it is some other controlling amount being applied? For purposes of compact prosecution the examiner is interpreting the claim to read as follows which would overcome the above ambiguities: A method of controlling weeds at a locus comprising applying the locus a weed controlling amount of a composition according to claim 11.
Claim 15 provides for the use of “a compound of formula (I) as a herbicide” 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 or if applicants are merely trying to further define the claimed compounds via an intended use? Thus, it is unclear what applicants are actually trying to encompass and claim with this “Use” claim.
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. 18870231 (reference application) (‘231) in view of Patani et al. (Chem. Rev., 1996, 96, 8, 3147-3176). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘231 claims structurally similar specifically bioisosteric compounds to those instantly claimed, specifically they differ in that the compounds of ‘231 the CHR5R6 which is bioisosteric to the instant X-R5 group, specifically when CHR6 is CH2 which is bioisosteric for instance to when is O or NH, etc. as is taught by Patani (See pg. 3155-3156, divalent isosteres section, e.g. Table 19). The compounds of ‘231 in view of Patani render obvious the claimed compounds for the reasons discussed above and because the compounds of ‘231 are also taught to have the same herbicidal activity and compositions comprising these obvious bioisosteric compounds to those instantly claimed and agriculturally acceptable formulation adjuvants and wherein their compositions comprise the same additional pesticides, specifically the same herbicides or herbicide safener that are instantly claimed, and overlapping methods of controlling unwanted plant growth comprising the same active steps of applying their bioisosteric compounds having the overlapping scope of other substituents to the same areas, e.g. the unwanted plants or locus thereof and use of these compound as a herbicide as is instantly claimed. Thus, one of ordinary skill in the art would conclude that the instantly claimed compounds, compositions and methods are rendered obvious by the bioisosteric compounds, compositions and methods taught by copending 18870231 in view of Patani.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18720820 (‘820) in view of Patani et al. (Chem. Rev., 1996, 96, 8, 3147-3176). ‘820 teaches bioisosteric compounds to those instantly claimed. As the instantly claimed X which corresponds to the position with CHR6R5, e.g. wherein R6 is H in ‘820 is bioisosteric to the claimed X = S, O, or NR11 as is taught by Patani (See pg. 3155-3156, divalent isosteres section, e.g. Table 19) and wherein the heteroaryl groups which can make up R5 would when connected via the N atoms be bioisosteres of the claimed compounds. ‘820 further teaches wherein their bioisosteric compounds are also herbicidal and are effective for forming compositions comprising the same formulation adjuvants and additional pesticides, which are specifically a herbicide or herbicide safener. It would be obvious to form the claimed compounds by substituting the CH2 when R6 is H of ‘820 for the claimed S, O, or NR11 at instant position X when looking to the teachings of ‘820 in view of Patani in effort to form additional herbicidal compounds for use in the claimed compositions and methods.
Thus, one of ordinary skill in the art would conclude that the instantly claimed compounds, compositions and methods are rendered obvious by the bioisosteric compounds of ‘820 in view of Patani.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19579744 (reference application) (‘744) in view of) in view of Patani et al. (Chem. Rev., 1996, 96, 8, 3147-3176). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘744 claims a scope of compounds which are bioisosteric to those instantly claimed because the NRxRy group of ‘744 can together all form a heteroaryl ring which is connected to their CH2 group via an N atom and this CH2 group is bioisosteric to the claimed X group of S, O, or NR11 as is taught by Patani (See pg. 3155-3156, divalent isosteres section, e.g. Table 19) and ‘744 teaches wherein the other variables are the same as or overlap with those instantly claimed. ‘744 further teaches that the compounds are also taught to have herbicidal activity and compositions comprising these overlapping compounds to those instantly claimed and agriculturally acceptable formulation adjuvants and wherein their compositions comprise the same additional pesticides, specifically the same herbicides or herbicide safener that are instantly claimed, and overlapping methods of controlling unwanted plant growth comprising the same active steps instantly with an overlapping scope of the claimed compounds, etc. Thus, one of ordinary skill in the art would conclude that the instantly claimed compounds, compositions and methods are rendered obvious by the overlapping scope of compounds of ‘744, and the compositions and methods thereof taught by copending 19579744 in view of Patani.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Closest Prior Art
The closest prior art to applicant’s claimed compounds is for instance Sherba (EP0127313A1) which differ from the instantly claimed compounds in that their R4 is for instance a phenyl group which differs from the instantly claimed X-R5, in that it lacks the X group between the pyridone ring and the phenyl group and because the directly linked phenyl to the pyridone ring of the prior art Sherba would not render the instant compounds obvious as the compounds of Sherba are chemically different with different electronegativities, chemical reactivities, etc. from the instant compounds which require that linking O, N, or S(O)n group to link the phenyl group to the ring and these changes would not have been obvious to make to the compounds of Sherba without impermissible hindsight.
Other relevant prior art Carlson (US4964896) which is also does not render obvious the instantly claimed compounds for the same reasons as Sherba above.
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
Prosecution Insights