DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after December 23, 2024, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants claimed invention filed on 12/23/2024 in the matter of Application N° 18/878,521. Said documents are entered on the record. The Examiner further acknowledges the following:
Thus, claims 1-15 represent all claims currently under consideration.
Claim Objections
Claims 2-13 are objected to because of the following informalities. Claims 2-13 begin with the indefinite article “A”, however, these claims appear to be dependent claims. Accordingly, the claims should be amended to begin with “The” to properly reflect their dependency.
Claim 13 is further objected to because the recited language is grammatically incorrect. The claim should be amended to recite, for example, “applying to the locus a weed controlling amount”, or, alternatively, “applying to the locus of a weed a weed-controlling amount”, as appropriate and consistent with Applicant’s intended scope.
Claim 13 is also objected to because the claim is directed to a method, but the term “application” does not recite an active method step. For purposes of compact prosecution, the Examiner interprets “application” as intending to recite the active verb “applying”. 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.
Claim14 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 claim 14 is directed a Use of a compound and “Use” is not one of the four statutory categories of patent eligible subject matter in the US because as it does not recite any active method steps and as such is not directed to a method and a Use of a compound is not a compound or composition claim and therefore the claimed “Use” is not patent eligible subject matter. For compact prosecution purposes the examiner will interpret claim 14 as a method claim directed to a method of controlling weeds by application of the claimed.
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.
Claim 14 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.
Claim 14 provides for the use of “a compound of formula (I)” 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.
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.
The present application identifies joint inventors. For purposes of evaluating the patentability of the pending claims, and in the absence of evidence to the contrary, the Examiner presumes that the subject matter recited in the respective claims was commonly owned as of the effective filing date of the claimed inventions. 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) 1-3, 5-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagiwara et al. (WO1995033730) and further in view of Subbaiah et al. (J. Med. Chem., 2021, 64, 14046-14128 (available 09/30/21) https://pubs.acs.org/doi/pdf/10.1021/acs.jmedchem.1c01215?ref=article_openPDF).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-2, 5-10, and 15, Hagiwara et al. teaches structurally similar and/or bioisosteric herbicidal compounds, particularly compound 180, which is structurally similar to the compounds encompassed by Applicant’s formulas (I), (Ia), and (VIIIa), Specifically, compound 180 corresponds to the claimed structural features wherein Q is 4-chlorophenyl (n is 1 and R3 is chloro/4-chloro), R1 is positioned at the 4-position and is ethyl (i.e., C2 alkyl), R4 is bromo (Br), and R2 is trifluoromethyl (CF3).
PNG
media_image1.png
230
279
media_image1.png
Greyscale
The structural features disclosed by Hagiwara et al., particularly compound 180, read on the limitations recited in claims 1-2 and 5-10. (See Hagiwara et al., entire document, particularly compound 180).
Regarding claim 3, Hagiwara et al. teaches that one of Y and Z represents a C1-C6 haloalkyl group, while the other is selected from, inter alia, a hydrogen atom, a halogen atom, or a C1-C6 alkyl group (See Abstract and claims). Hagiwara et al.’s disclosure that either Y or Z may be a hydrogen atom reads on the claimed limitation wherein the instant R4 is hydrogen.
Regarding claims 10-12, Hagiwara et al. further teaches that its structurally similar herbicidal compounds may be formulated into herbicidal compositions comprising one or more of the disclosed compounds in combination with agriculturally acceptable formulation adjuvants. Hagiwara et al. additionally teaches that such compositions may further comprise one or more additional pesticides, including additional herbicides. The reference further describes various formulation components and additives that may be incorporated into such compositions, including vegetable oils and oil concentrates (See entire document; Abstract; compound 180; and the paragraph beginning, “The herbicide of the present invention contains one or more of the compounds” through the paragraph ending with the disclosure that vegetable oils and oil concentrates may also be added to the combinations).
Regarding claim 14, Hagiwara et al. further teaches that the compounds of the disclosed invention exhibit excellent herbicidal activity against various weeds, including paddy-field weeds such as Nobie, Tamagayari, Omodaka, and firefly. Hagiwara et al. discloses herbicidal compositions comprising one or more of the disclosed compounds as an active ingredient and further describes the application of such compositions and the concentration of the active ingredient employed therein. The herbicidal effectiveness of the disclosed compounds is further demonstrated throughout the working and test examples. Hagiwara et al. additionally teaches that an objective of the invention is to provide herbicides that can be industrially synthesized in an advantageous manner, are effective at relatively low application rates, exhibit a high degree of safety, and provide high crop selectivity (See paragraphs beginning “The herbicide of the present invention contains one or more of the compounds” and “The concentration of the active ingredient in the herbicide of the present invention”, Examples and Test Examples; claims; and industrial applicability section, including the paragraph beginning “The purpose of the present invention is to provide a herbicide”.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-3, and 5-15, Hagiwara et al. does not expressly teach or suggest that the disclosed phenyl ring may be replaced with the presently claimed pyrimidine ring. However, Subbaiah et al. addresses this deficiency by teaching that a pyrimidine ring is a bioisosteric replacement for a phenyl ring. Thus, Subbaiah et al. provides evidence that pyrimidine and phenyl rings were known in the art as bioisosteric structural alternatives (see Table 2, 4a and 4H; and Table 4, 4a and 4q).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the compounds disclosed by Hagiwara et al. by replacing the 4-ethylphenyl moiety with the corresponding pyrimidine moiety taught by Subbaiah et al., particularly a 4-ethylpyrimidine moiety. One of ordinary skills in the art would have been motivated to make such a substitution because Subbaiah et al. provides evidence that pyrimidine rings were known bioisosteric replacements for phenyl rings. Substitution of the ethyl substituted phenyl group of Hagiwara et al. with the corresponding ethyl-substituted pyrimidine group would have represented the use of a known bioisosteric replacement in the development of additional structurally related compounds.
One of ordinary skill in the art would have been motivated to make this modification in an effort to obtain additional compounds, compositions, and methods possessing herbicidal activity, particularly in view of Hagiwara et al.’s teaching that its structurally related compounds exhibit herbicidal activity. Based on the combined teachings of Hagiwara et al. and Subbaiah et al., one of ordinary skill in the art would have had a reasonable expectation that the resulting bioisosterically modified compounds would retain the desired herbicidal activity.
In view of the foregoing, the Examiner concludes that the subject matter of the above identified claims would have been obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. 103. The teachings of the cited references provide both a reason for making the proposed structural modification and a reasonable expectation of successfully obtaining the claimed compounds having herbicidal activity. The claimed invention as a whole is considered prima facie obvious over the cited prior art, absent persuasive 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.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/702,511 (“the ‘511 application”) in view of Subbaiah et al., as cited above.
The ‘511 application claims structurally related bioisosteric herbicidal compounds, compositions comprising such compounds in combination with additional herbicides and formulation adjuvants, and methods of controlling weeds using the disclosed compounds and compositions. These additional herbicides, formulation components, and methods of weed control correspond to those recited in the presently claimed compositions and methods.
The subject matter of the ‘511 application differs from the presently claimed subject matter principally in the identity of the Q ring. Specifically, the ‘511 application recites a 5-membered heteroaryl Q group, whereas the instant claims encompass a phenyl or C-linked 6-membered heteroaryl Q group.
Although the claims of the ‘511 application do not expressly recite the presently claimed Q groups, Subbaiah et al. provides evidence that the relevant heteroaryl ring systems constitute known bioisosteric replacements for phenyl and that the presently claimed Q groups, including phenyl and the recited heteroaryl groups, represent known bioisosteric alternatives to the corresponding ring systems recited in the ‘511 application (See, e.g., Tables 2 and 4).
One of ordinary skill in the art would have had reason to replace the 5-membered heteroaryl Q group recited in the ‘511 application with the bioisosteric phenyl or C-linked 6-membered heteroaryl Q groups presently claimed in an effort to obtain additional structurally related compounds while retaining the desired herbicidal activity. In view of the teachings of Subbaiah et al. concerning such bioisosteric substitutions, one of ordinary skill in the art would have had a reasonable expectation that the resulting compounds would possess similar useful properties.
Therefore, the presently claimed compounds, compositions comprising such compounds, and methods of controlling weeds using the compounds or compositions are considered obvious variants of the compounds, compositions, and methods recited in claims 1-15 of copending Application No. 18/702,511 in view of Subbaiah et al., claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting.
This is a provisional nonstatutory double patenting rejection.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/117,705 (“the ‘705 application”) in view of Subbaiah et al., as cited above.
The ‘705 application claims structurally related bioisosteric herbicidal compounds, compositions comprising such compounds together with additional herbicides and formulation adjuvants, and methods of controlling weeds using the claimed compounds and compositions. The additional herbicides, formulation adjuvants, and methods of weed control recited in the ‘705 application correspond to those recited in the presently claimed compositions and methods.
The claimed subject matter of the ‘705 application differs from the presently claimed subject matter principally with respect to the identity of the relevant heterocyclic ring. Specifically, the ‘705 application recites a 5-membered heteroaryl ring, whereas the instant claims recite a pyrimidine ring, including a 4-substituted pyrimidine ring.
Although the ‘705 application does not expressly disclose the presently claimed pyrimidine ring, Subbaiah et al. provides evidence that pyrimidine and the relevant 5-membered heteroaryl ring systems are known bioisosteric replacements for phenyl. Thus, Subbaiah et al. provides evidence that these ring systems were recognized in the art as bioisosteric structural alternatives that could be employed in place of a phenyl ring (See, e.g., Tables 2 and 4).
One of ordinary skill in the art would have had reason to replace the 5-membered heteroaryl ring recited in the ‘705 application with the presently claimed pyrimidine or 4-substituted pyrimidine ring as a known bioisosteric substitution in an effort to obtain additional structurally related compounds having herbicidal activity. In view of Subbaiah et al.’s teachings concerning such bioisosteric replacements, one of ordinary skill in the art would have had a reasonable expectation that the resulting compounds would retain useful herbicidal properties.
Therefore, the presently claimed herbicidal compounds, compositions, and methods are considered obvious variants of the herbicidal compounds, compositions, and methods recited in claims 1-15 of copending Application No. 19/117,705 in view of Subbaiah et al. Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kimberly Barber whose telephone number is (703) 756-5302. The examiner can normally be reached on Monday through Friday from 6:30 AM to 3:30 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax, can be reached at telephone number (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
Prosecution Insights