DETAILED ACTION
The receipt is acknowledged of applicant’s amendment filed 09/25/2025.
Claims 1-3, 5-6, 8, 12-17 and 19-21 previously presented. Claims 19-21 are currently canceled. Claims 1-3, 5-6, 8, 12-17 are pending.
Claims 8, 12-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/15/2020.
Claims 1-3, 5-6 are subject of this office 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 § 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 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 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 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.
Claims 1-3 and, 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Puritch et al. (US 5,047,424), the article by Feinstein et al. (“Insecticides Occurring in Higher Plants”), the article by Hall et al. (“Toxicity of insecticidal soaps to the Asian citrus psyllid and two of its natural enemies”), the article by Baldwin et al. (“Toxicity of fatty acid salts to German and American cockroaches”), CN 106614647 A (“CN ‘647”, machine translation previously provided), Hernandez Romero et al. (US 2015/0216181), and the article by Weinzierl (“Botanical insecticides, soaps, and oils”), all references are of record.
Applicant Claims
Claim 1 is directed to a pesticidal mixture comprising an effective amount of sabadilla alkaloids and a potassium salt of a fatty acid as the only pesticidally active ingredients, wherein the concentration ratio of sabadilla alkaloids to the potassium salts of a fatty acid is from about 1:1,000 to about 1:10.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Puritch teaches environmentally safe, stable, inexpensive, non-toxic to wide variety of plants and animals, and a broad spectrum insecticide composition. The insecticide composition comprises a mixture of monocarboxylic acid, e.g. oleic acid and linoleic acid that are insecticidal fatty acid soaps used and claimed by applicants, and pyrethroid (abstract; col.2, lines 26-35). The monocarboxylic acid is in the form of alkali metal potassium salt (col.2, lines 52-56; claims 3, 7). The monocarboxylic acid salts forms 2% of the mixture (claim 11).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
While Puritch teaches mixture of fatty acid soaps and another insecticide, the reference however does not teach sabadilla alkaloids and the ratio of sabadilla to fatty acid potassium salt as claimed by claims 1, and 19-21.
Feinstein teaches that sabadilla from Schoenocaulon officinale has insecticidal properties. The active constituents are alkaloids mixture of cevadine and veratridine that are both more active than pyrethrin, and less toxic than DDT (see pages 462-463).
Hall teaches insecticidal soaps toxic to several insects at concentration of 0.8-4% and safe and effective alternative to conventional insecticides. Insecticidal soap is potassium salt of fatty acids (see the entire document, and on particular: abstract, tables 1 and 2, right column of page 5, right column of page 7).
Baldwin teaches insect toxicity of potassium salts of fatty acid to cockroaches at concentrations of 0.125%, 0.25%, 0.5%, 1% and 2%. The reference teaches potassium salts of fatty acids having 10-18 carbon atoms, e.g. potassium laurate, and potassium myristate (see the entire document, and in particular the abstract, page 1386, and conclusion)
CN ‘647 teaches veratridine at concentration of 0.5% has insecticidal effect (¶¶ 0010, 0013, 0031, 0039, 0040, 0044, 0048).
Hernandez Romero teaches Sabadilla is a pesticide obtained from the Schoenocaulon officinale seeds. Its active principles are mainly cevadine and veratridine alkaloids. Commercial preparations includes sabadilla alkaloids as active ingredient in concentration less than 1% (¶ 0010).
Weinzierl teaches botanical derived insecticides and insecticidal soaps to be nontoxic to human, and they are nonchemical means of insect control. Therefore, they are less likely to cause environmental damage or reach human consumers of treated corps (page 117). The reference teaches sabadilla derived from the seeds of Schoenocaulon officinale comprising veratridine and cevadine that are most active insecticide. The mode of action of sabadilla is through toxicity of the nervous system (page 108-109). The reference further teaches insecticidal soaps including potassium oleate (potassium salt of oleic acid). Insecticidal soaps causes disruption of insect nervous system. The reference suggests insecticidal are effective at 1-2% concentration (pages 114-115).
Finding of Prima Facie Obviousness Rational and Motivation
(MPEP §2142-2143)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to provide insecticide comprising insecticidal fatty acid soap and pyrethrin as taught by Puritch, and replace pyrethrin by sabadilla alkaloids taught by Feinstein. One would have been motivated to do so because Feinstein teaches that active constituents of sabadilla alkaloids are more active than pyrethrin, and less toxic than DDT. One would reasonably expect formulating active nontoxic insecticidal composition comprising fatty acid soap and sabadilla alkaloids.
One having ordinary skill in the art would have used fatty acid soap in the mixture taught by the combination of Puritch and Feinstein in concentration of 2% as taught by Puritch, or 0.8-4% as taught by Hall, 0.125-2% as taught by Baldwin or 2% as taught by Weinzierl because all the references teaches effectiveness of such concentration as insecticide while being safe to the environment.
Further one having ordinary skill in the art would have used sabadilla in the mixture taught by the combination of Puritch and Feinstein in a concentration of 0.5% as taught by CN ‘647 or less than 1% as taught by Hernandez Romero because the references teaches effectiveness of such concentration as insecticide while being safe to human.
Furthermore, one having ordinary skill in the art would have used both sabadilla alkaloid and fatty acid soap in one composition because Weinzierl teaches both act by affecting the nervous system of insects, therefore may act synergistically.
Regarding the expression “only active ingredients” of the claim 1, it is noted that the expression “comprising” of the claims language allows for any other ingredients that may be unintentionally effective against insects.
Regarding the claimed ratio of sabadilla to fatty acid from about 1:1,000 to about 1:10 as claimed by claim 1, it is noted that the concentrations taught by the cited references embraced by the claimed ratios, e.g., Hernandez Romero teaches less than 1% sabadilla that can be 0.1% and the fatty acid soap can be 2% forming the ratio of 1:20 that falls within the claimed ratio be claim 1.
Regarding potassium salts of fatty acids as claimed by claim 1, it is taught by Puritch, Hall, Baldwin and Weinzierl.
Regarding claim 2 that the sabadilla alkaloid are derives from Schoenocaulon officinale, this is taught by Feinstein, Hernandez Romero and Weinzierl.
Regarding claim 3 that sabadilla alkaloids are veratridine and cevadine, it is taught by Feinstein, Hernandez Romero and Weinzierl.
Regarding fatty acids having 10-18 carbon atoms as claimed by claim 5, and the specific fatty acids claimed by claim 6, Puritch teaches oleic acid, Baldwin teaches potassium laurate, and potassium myristate, and Weinzierl teaches potassium oleate that all comprise 10-18 carbon atoms and claimed by claim 6.
Absent any evidence to the contrary, and based upon the teachings of the prior art, there would have been a reasonable expectation of success in practicing the instantly claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention.
Claims 1-3, and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over any of GB 971735 (GB ‘735), or GB 1005483 (GB ‘483), each as evidenced by the article by Weinzierl, each in combination with the article by Feinstein et al. (“Insecticides Occurring in Higher Plants”), Hall et al. (“Toxicity of insecticidal soaps to the Asian citrus psyllid and two of its natural enemies”), the article by Baldwin et al. (“Toxicity of fatty acid salts to German and American cockroaches”), CN 106614647 A (“CN ‘647”, machine translation previously provided), Hernandez Romero et al. (US 2015/0216181), and the article by Weinzierl (“Botanical insecticides, soaps, and oils”), all references are of record.
Applicant Claims
Claim 1 is directed to a pesticidal mixture comprising an effective amount of sabadilla alkaloids and a potassium salt of a fatty acid as the only pesticidally active ingredients, wherein the concentration ratio of sabadilla alkaloids to the potassium salts of a fatty acid is from about 1:1,000 to about 1:10.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
GB ‘735 teaches insecticidal composition comprising fatty acid soap and sabadilla or pyrethrum, and solvent. The composition effective against flies and mosquitoes (see the entire document and in particular page 2, lines 43-53, 93-100). Sabadilla and pyrethrum are both botanical insecticides as evidenced by Weinzierl, Table 4.1.
GB ‘483 teaches insecticidal composition comprising fatty acid soap and sabadilla or pyrethrum, and solvent (see the entire document, and in particular page 1, lines 51-80; page 2, lines 15-55; 93-100). Sabadilla and pyrethrum are both botanical insecticides as evidenced by Weinzierl, Table 4.1.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
While both GB references teach insecticidal composition comprising fatty acid soap and sabadilla, however the references do not exemplify the combination, and the references do not teach the ratio of sabadilla to fatty acid potassium salt as claimed by claim 1.
Feinstein teaches that sabadilla from Schoenocaulon officinale has insecticidal properties. The active constituents are alkaloids mixture of cevadine and veratridine that are both more active than pyrethrin, and less toxic than DDT (see pages 462-463).
Hall teaches insecticidal soaps toxic to several insects at concentration of 0.8-4% and safe and effective alternative to conventional insecticides. Insecticidal soap is potassium salt of fatty acids (see the entire document, and on particular: abstract, tables 1 and 2, right column of page 5, right column of page 7).
Baldwin teaches insect toxicity of potassium salts of fatty acid to cockroaches at concentrations of 0.125%, 0.25%, 0.5%, 1% and 2%. The reference teaches potassium salts of fatty acids having 10-18 carbon atoms, e.g. potassium laurate, and potassium myristate (see the entire document, and in particular the abstract, page 1386, and conclusion).
CN ‘647 teaches veratridine at concentration of 0.5% has insecticidal effect (¶¶ 0010, 0013, 0031, 0039, 0040, 0044, 0048).
Hernandez Romero teaches Sabadilla is a pesticide obtained from the Schoenocaulon officinale seeds. Its active principles are mainly cevadine and veratridine alkaloids. Commercial preparations includes sabadilla alkaloids as active ingredient in concentration less than 1% (¶ 0010).
Weinzierl teaches botanical derived insecticides and insecticidal soaps to be nontoxic to human, and they are nonchemical means of insect control. Therefore, they are less likely to cause environmental damage or reach human consumers of treated corps (page 117). The reference teaches sabadilla derived from the seeds of Schoenoecaulon officinale comprising veratridine and cevadine that are most active insecticide. The mode of action of sabadilla is through toxicity of the nervous system (page 108-109). The reference further teaches insecticidal soaps including potassium oleate (potassium salt of oleic acid). Insecticidal soaps causes disruption of insect nervous system. The reference suggests insecticidal are effective at 1-2% concentration (pages 114-115).
Finding of Prima Facie Obviousness Rational and Motivation
(MPEP §2142-2143)
Therefore, it would have been obvious to one having ordinary skill in the art at the before the effective filing date of the present invention to provide insecticidal composition comprising fatty acid soap and sabadilla or pyrethrum that are both botanical insecticides as taught by any of GB ‘735 or GB ‘483, as evidenced by Weinzierl, and make sure to use sabadilla alkaloids as taught by Feinstein because Feinstein teaches sabadilla alkaloids mixture of cevadine and veratridine are both active insecticides, and less toxic than DDT. One would reasonably expect formulating safe stable insecticidal composition comprising insecticidal fatty acid soap and sabadilla alkaloids that more effective and less toxic than other known insecticides.
One having ordinary skill in the art would have used fatty acid soap in the mixture taught by the combination of any of the GB references, as evidenced by Weinzierl, with Feinstein in concentration of 0.8-4% as taught by Hall, 0.125-2% as taught by Baldwin or 2% as taught by Weinzierl because all the references teaches effectiveness of such concentration as insecticide while being safe to the environment.
Further one having ordinary skill in the art would have used sabadilla in the mixture taught by the combination of any of the GB references with Feinstein in a concentration of 0.5% as taught by CN ‘647 or less than 1% as taught by Hernandez Romero because the references teaches effectiveness of such concentration as insecticide while being safe to human.
Furthermore, one having ordinary skill in the art would have used both sabadilla alkaloid and fatty acid soap in one composition because Weinzierl teaches both act by affecting the nervous system of insects, therefore may act synergistically.
Regarding the expression “only active ingredients” of the claim 1, it is noted that the expression “comprising” of the claims language allows for any other ingredients that may be unintentionally effective against insects.
Regarding the claimed ratio of sabadilla to fatty acid from about 1:1,000 to about 1:10 as claimed by claim 1, it is noted that the concentrations taught by the cited references embraced by the claimed ratios, e.g., Hernandez Romero teaches less than 1% sabadilla that can be 0.1% and the fatty acid soap can be 2% forming the ratio of 1:20 that falls within the claimed ratio be claim 1.
Regarding potassium salts of fatty acids as claimed by claim 1, it is taught by Hall, Baldwin and Weinzierl.
Regarding claim 2 that the sabadilla alkaloid are derives from Schoenocaulon officinale, this is taught by Feinstein, Hernandez Romero and Weinzierl.
Regarding claim 3 that sabadilla alkaloids are veratridine and cevadine, it is taught by Feinstein, Hernandez Romero and Weinzierl.
Regarding fatty acids having 10-18 carbon atoms as claimed by claim 5, and the specific fatty acids claimed by claim 6, Baldwin teaches potassium laurate, and potassium myristate, and Weinzierl teaches potassium oleate that all comprise 10-18 carbon atoms and claimed by claim 6.
Absent any evidence to the contrary, and based upon the teachings of the prior art, there would have been a reasonable expectation of success in practicing the instantly claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention.
Response to Arguments
Applicant's arguments filed 09/25/2025 have been fully considered but they are not persuasive.
Applicant argues that none of the cited prior art, alone or in combination, would motivate a skilled artisan to combine sabadilla alkaloids and a potassium salt of fatty acid. Further, none of the cited prior art, alone or in combination, teach at what ratio sabadilla alkaloids and a potassium salt of a fatty acid would provide synergistic control on any species of pest.
In response to this argument, it is argued that the combination of the cited references suggest combination of the claimed ingredients. The claimed ratio of sabadilla to fatty acid can be drawn from the teachings of the cited references in combination. It is noted that the concentrations of the pesticides taught by the cited references forms a ratio that falls within the claimed ratio, as set forth in this office action.
Regarding synergy, it is argued that: “There is no single, appropriate test for determining whether synergism has been demonstrated for chemical combination; rather, facts shown in each case must be analyzed to determine whether chosen method has clearly and convincingly demonstrated existence of synergism or unobvious result”. “Assuming arguendo that the differences in values presented are statistically significant, there is no evidence that they represent a true, practical advantage.” In re Freeman, 474 F.2d 1318, 177 USPQ 139 (CCPA 1973); In re Klosak , 455 F.2d 1077, 173 USPQ 14 (CCPA 1972); In re D'Ancicco, 439 F.2d 1244, 169 USPQ 303 (CCPA 1971). Also, prescinding from the Colby formula test, which as we have already indicated is at best controversial and in our view probably invalid, there is no evidence that the differences are unexpected. In re Merck, 800 F.2d 1091, 231 USPQ 375 (Fed.Cir. 1986); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed.Cir. 1985); In re Freeman”.
Applicant argues that in the “Response to Arguments” section regarding Hernandez Romero, the Examiner states that “less than 1% sabadilla....can be 0.1%”. However, teaching of less than 1% is not a teaching of 1% or 0.1%. See MPEP 2131.03 (II) stating “the disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points." Thus, there is no disclosure of 0.1% and thus no ratio of sabadilla to fatty acid soaps is taught by the prior art.
In response to this argument, it is argued that the claims do not recite amount of the ingredients, only the ratio, and the claimed ratio can be drawn from the amounts taught by the cited references, e.g. 1 gm and 10 mg for example will form the same ratio as 100 and 1000, same as 1000 and 10000. The claimed ratio of sabadilla to fatty acid of about 1:1,000 to about 1:10 as claimed by claim 1, is suggested by the combination of the cited references. The cited references teach concentrations that when combined can form ratios fall within the ratios of the claim. Yes, Hernandez Romero teaches less than 1% sabadilla without lower limit that can be 0.1% since the reference does not teach lower limit to the claimed amount. Puritch teaches the fatty acid soap can be 2%, and combination of the references suggests the ratio of 1:20 that falls within the claimed ratio by claim 1. The combination of the cited references suggests a species of the claimed range of ratios. The species of the ratio suggested by the art falls within all the claimed broad ratio and obviate the claimed ratios. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely.., on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Given the disclosure of the cited references, one having ordinary skill in the art would find it obvious to select the claimed amount of the claimed pesticides that fall within the claimed ratio.
It is further argued that Hernandez Romero teaches less than 1% sabadilla without lower limit at paragraph 10 of the reference, that can be as low as 0.1%. Fatty acid soaps are taught by Puritch that teaches 2% fatty acid soap, i.e. monocarboxylic acid salts claimed by claim 11. Combination of both ingredients will form the ratio of 1:20 that falls within the claimed ratio be claim 1. The amount of a specific ingredient in a composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. One having ordinary skill in the art would have determined the working amount of each ingredient and form the ratio that is suitable for a specific intended use. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results. Thus, absent some demonstration of unexpected results from the claimed parameters, this optimization of ingredient amount would have been obvious at the time of applicant's invention. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. There is no evidence of record as to the criticality of the claimed ranges.
Applicant argues that the Office Action opines that Weinzierl teaches that Sabadilla is synergized by PBO and MGK 264. Neither PBO nor MGK 264 are insecticides. Applicants attaching reference to show that PBO by itself is not designed to harm insects, instead, it works with bug killers to increase their effectiveness; and also MGK-264 is a human-made chemical that acts as a synergist. Synergists by themselves are not designed to harm insects. They work with pesticides to increase their success in controlling insects. Weinzierl teaches specifically that fatty acid soaps are insecticides. Thus, a skilled artisan would not be motivated by Weinzierl to combine sabadilla and insecticidal soaps as Weinzierl only teaches combining sabadilla with chemicals designed to be synergists and not insecticides.
In response to this argument, regardless if the reference teaches synergy of sabadilla and insecticidal soaps or not, synergy would be inevitably present when both are combined. Weinzierl teaches the effect of both Sabadilla and soap salts of fatty acids on the nervous system, which would have suggested to one having ordinary skill in the art to combine both in a single insecticidal composition to obtain third composition having the same effect or even stronger. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in the prior art. See In re kerkhoven 205 USPQ 1069, 1072.
The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir 1983). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005).
Further, It should be noted that the motivation to combine references can be different from the ones set forth by Applicant. That is, as long as motivation exists to combine the elements, the problem to be solved does not have to involve the same reason. As such, the examiner respectfully submits that there is motivation to combine the cited references to combine the claimed ingredients into one composition exists, as set forth in this office action.
Regarding synergy between both components, see the argument above.
Applicant argues that the Suranyi Declaration, submitted November 5, 2020 in the subject case, demonstrates synergistic control of house flies at 1:5, 1:50 and 1:500 ratios of sabadilla to potassium salts of fatty acids, synergistic control of mosquitoes at 1:7, 1:67, 1:100 and 1:1000 ratios of sabadilla to potassium salts of fatty acids, synergistic control of bed bugs at 1:5, 1:10 and 1:50 ratios of sabadilla to potassium salts of fatty acids, and synergistic control of cockroaches at 1:5, 1:10, 1:50 and 1:100 ratios of sabadilla to potassium salts of fatty acids. All of these concentration ratios demonstrate synergy overlap for each species tested. At no ratio within the claimed scope does the Applicant demonstrate a lack of synergy. When sabadilla is at a greater concentration than potassium salts of fatty acids, synergy is hardly ever demonstrated. See Suranyi Declaration, submitted November 5, 2020 in the subject case, demonstrating that ratios of sabadilla to potassium salts of fatty acids of 258:1, 32.25:1 and 3.5:1 demonstrate a lack of synergy. Thus, Applicant has demonstrated the criticality of having equal to or less sabadilla than potassium salt of fatty acids.
In response to this argument and the declaration filed November 05, 2020, it is argued that claimed ingredients were known at as insecticides effective against the specific insects in the claimed amounts that form the claimed ratio. The claimed ratio of sabadilla to fatty acid of about 1:1,000 to about 1:10 is suggested by the combination of the cited references. The cited references teach concentrations that when combined form ratios fall within the claimed ratios. For example, Hernandez Romero teaches less than 1% sabadilla that can be as low as 0.1%, and Puritch teaches the fatty acid soap can be 2%, and combination of the references suggests the ratio of 1:20 that falls within the claimed ratio by all claim 1 . The ratio drawn from teachings of the cited references suggests less sabadilla than potassium salt of fatty acids. The cited references teaches a species of the claimed ratio. The species of the ratio suggested by the art, falls within the claimed broad ratio and obviate the claimed ratio. The ratios that hardly demonstrate synergy by applicants are far away from the upper and lower limits of the claimed ratios and cannot establish the criticality of the upper and lower ends of the claimed ratios.
Further the declaration shows that specific insects require specific ratios of the claimed insecticides, while the claims are not directed to any specific insects. Therefore, the results provided by applicant do not commensurate in scope with the claims.
The argument regarding synergy is hereby reiterated.
Applicant argues that GB ‘735 GB is directed to novel organophosphorous compounds, and GB ‘483 is directed to a substituted vinyl phosphate and its use as an insecticide. A prior art reference must be considered as a whole. See MPEP 2141.02 “Differences Between Prior Art and Claimed Invention”. Specifically, the prior art must be considered in its entirety. See MPEP 2141.02 VI “Prior Art Must Be Considered In Its Entirety”. Both the GB ‘735 and GB ‘483 require components that are excluded from the instant claims. Thus, a skilled artisan would not look to either of GB ‘735 or GB ‘483 when determining how to formulate a mixture of the instant claims.
In response to this argument, GB ‘735 teaches insecticidal composition comprising fatty acid soap and sabadilla or pyrethrum. GB ‘483 teaches insecticidal composition comprising fatty acid soap and sabadilla or pyrethrum. Therefore, the both GB references teach both claimed elements, even not in a single embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). The claims do not exclude any ingredients in view of the “comprising” language.
Applicant argues that claim 1 is limited to a mixture of sabadilla alkaloids and a potassium salt of a fatty acid at ratios from about 1:1,000 to about 1:2 for control of mosquitoes.
In response to this arguments, applicant’s attention is directed to: (1) amended present claim 1 is not directed to any specific insects, (2) amended claim 1 has the open language “pesticidal mixture comprising”, that permits presence of other ingredients that may have effective active insecticidal, e.g. alcohol, vinegar, baking soda, organic acids, garlic sprays, etc.
Applicant’s attention is directed to the scope of the present claims that are directed to a composition, and all the elements of the composition are taught by combination of the cited references. Regarding the ratio of ingredients, it can be drawn from the cited references, and can be optimized. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. There is no evidence of record as to the criticality of the claimed ratios.
The cited references show that it was well known in the art at the time of the invention to use the claimed ingredient in insecticide/pesticide compositions. It is well known that it is prima facie obvious to combine two or more ingredients each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is useful for the same purpose. The idea for combining them flows logically from their having been used individually in the prior art. ln re Pinten, 459 F.2d 1053, 173 USPQ 801 (CCPA 1972); ln re Susi, 58 CCPA 1074, 1079-80) 440 F.2d 442, 445; 169 USPQ 423, 426 (1971); In re Crockett, 47 CCPA 1018, 1020-21; 279 F.2d 274, 276-277; 126 USPQ 186, 188 (1960). Based on the disclosure by these references that these substances are used in insecticidal compositions, an artisan of ordinary skill would have a reasonable expectation that a combination of the substances would also be useful in creating insecticidal composition. Therefore, the artisan would have been motivated to combine the claimed ingredients into a single composition. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See ln re Sussman, 1943 C.D. 518; In re Huellmantel 139 USPQ 496; ln re Crockett 126 USPQ 186.
Finally, the obviousness does not require absolute predictability of success all that is required is a reasonable expectation of success. See In re Kubin, 561 F.3d at 1360. The Court has held that "the test of obviousness is not express suggestion of the claimed invention in any or all of the references but rather what the references taken collectively would suggest to those of ordinary skill in the art presumed to be familiar with them." See In re Rosselet, 146 USPQ 183, 186 (CCPA 1965). "There is no requirement (under 35 USC 103(a)) that the prior art contain an express suggestion to combine known elements to achieve the claimed invention. Rather, the suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art." Motorola, Inc. v. Interdigital Tech. Corp., 43 USPQ2d 1481, 1489 (Fed. Cir.1997). An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. See KSR Int'l Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.").
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Isis A D Ghali whose telephone number is (571)272-0595. The examiner can normally be reached on Monday through Friday, 8:30 AM to 5:00 PM EST.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611 /I.G./