The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claims 9-25 are presented for examination.
Applicant’s Amendment filed October 6, 2025 has been received and entered into the present application.
Claims 9-25 are pending, newly added and under examination. Claims 1-2 and 6-7 are cancelled.
Applicant’s arguments, filed October 6, 2025, have been fully considered. Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Requirement for Restriction/Election
Applicant is reminded of his election without traverse of terpene alcohol polymeric derivatives as the single disclosed species of polymeric adjuvant to which examination on the merits has been confined, as stated in the reply filed February 17, 2022, which is still in effect over the claims.
Status of Rejections in the June 4, 2025 Non-Final Action
Applicant’s cancellation of claims 1-2 and 6-7 necessitates the withdrawal of the following rejections:
(i) the rejection of claims 1-2 and 6-7 under 35 U.S.C. §112(b) (pre-AIA second paragraph), as set forth at p.4-5 of the previous Office Action dated June 4, 2025; and
(ii) the rejection of claims 1-2 and 6-7 under 35 U.S.C. §103 as being unpatentable over Muehlebach et al. (WO 2010/066780 A1; 2010) in view of Gaskin et al. (“A Comparison of Sticker Adjuvants for their Effects on Retention and Rainfastening of Fungicide Sprays”, New Zealand Plant Protection, 2009; 62:339-342, cited by Applicant on the 10/16/20 IDS), as set forth at p.5-8 of the previous Office Action dated June 4, 2025.
Upon further reconsideration of the subject matter as amended, however, new grounds of rejection are necessitated and set forth infra.
Objections to the Claims (New Grounds of Objection)
Claim 9 is objected to for reciting “0.1 to 95% by w/w” at l.6 of the claim, which is grammatically awkward.
Appropriate correction is required.
Claim 9 is objected to for reciting “the pests which feed on the plant by sucking which feed on the plant” at l.25 of the claim, which is grammatically awkward.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a) (Pre-AIA First Paragraph)
Written Description, New Matter (New Grounds of Rejection)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
(1) Claims 9-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This is a new matter rejection.
There is insufficient written support for Applicant’s new limitations directed to (i) “wherein the applying of the pesticidal composition results in less than 30% phytotoxicity in the plant 7 days after application or 14 days after application” (claim 9), or (ii) “wherein the applying of the pesticidal composition results in a mortality rate of about 99.5% or full control of the pests which feed on the plant by sucking which feed on the plant” (claim 9).
In the reply dated October 6, 2025, Applicant states that “[s]upport for the new claims can be found in the [s]pecification as filed at, for instance, the EXAMPLES section”, further asserting that “[n]o new subject matter has been added”.
At p.60, l.8-10 of the as-filed specification, Applicant states, “Surprisingly, at the high rate of 200 g AI [active ingredient]/ha all compositions showed an unacceptable level of phytotoxicity on these glasshouse grown plants, except the compositions of the invention with the polymeric adjuvants Heliosol®, Spodnam® and Nu-film®”.
At Table 3, p.60 of the as-filed specification, Applicant reports the percentage of phytotoxicity in Chinese cabbage plants infected with the green peach aphid Myzus persicae using the instantly claimed compound of formula (I) (identified therein as “Compound (C)”) with 2000 mg HELIOSOL (terpene alcohol polymeric derivative) adjuvant/L as 26.7% at 7 days after application, and 23.3% at 14 days after application.
The disclosure fails to provide adequate written support for Applicant to now claim that the composition of any polymeric terpene alcohol adjuvant with the compound of formula (I) yields phytotoxicity of “less than 30%” at 7 days or 14 days after application when applied to a plant containing any pest that “feed[s] on a plant by sucking”. At best, Applicant’s originally filed specification teaches only that the specific terpene alcohol polymeric derivative adjuvant HELIOSOL in an amount of 2000 mg/L combined with the instantly claimed compound of formula (I) yields a phytotoxicity of 26.7% or 23.3% at 7 or 14 days after application, respectively, to a crop of Chinese cabbage plants infected with Myzus persicae when applied at the recited application rate of 200 g/ha. This limited disclosure does not establish sufficient written support to now broadly claim the combination of any polymeric terpene alcohol adjuvant (not just HELIOSOL) applied in any amount (not just 2000 mg/L) with the compound of formula (I) at any rate between 10 g/ha to 600 g/ha (not just 200 g/ha) to any plant infected with any pest that feeds on the plant by sucking (not just Myzus persicae, also known as green peach aphid) to yield phytotoxicity of the full range of “less than 30%” (not just 26.7% 7 days after application or 23.3% 14 days after application) as now claimed. This concept newly added in claim 9 constituted an impermissible broadening of the subject matter originally disclosed and claimed that does not find adequate written support in the as-filed specification.
Similar rationale applies also to claims 13-14, which seek to further define the phytotoxicity effect of the recited pesticidal composition.
At p.58, l.9-13 of the as-filed specification, Applicant states, “The efficacies of Compound (C) [instantly claimed compound of formula (I)] formulated as SC [suspension concentrate] formulation in combination with different commercially available adjuvants were evaluated in this test. The test was set up as ‘translaminar test’, i.e. mature and horizontally exposed leaves of Chinese cabbage plants were sprayed on top at a rate of 20 g AI [active ingredient]/ha. Right after application (2 h AA) a mixed population of Myzus persicae was infested to the bottom side of applied leaves.”
At Table 1, p.58-59 of the as-filed specification, Applicant reports the mortality rate 6 days after application of the compound of formula (I) (identified therein as “Compound (C)”) with 2000 mg HELIOSOL (terpene alcohol polymeric derivative) adjuvant/L as 99.5% at 6 days after application.
The disclosure fails to provide adequate written support for Applicant to now claim that the composition of any polymeric terpene alcohol adjuvant with the compound of formula (I) yields a mortality rate of “about 99.5% or full control” of the pests that “feed[s] on a plant by sucking” when applied to a plant containing any such pest. At best, Applicant’s originally filed specification teaches only that the specific terpene alcohol polymeric derivative adjuvant HELIOSOL in an amount of 2000 mg/L combined with the instantly claimed compound of formula (I) yields a mortality rate of 99.5% at 6 days after application, respectively, to a crop of Chinese cabbage plants infected with Myzus persicae when applied at the recited application rate of 20 g/ha. This limited disclosure does not establish sufficient written support to now broadly claim the combination of any polymeric terpene alcohol adjuvant (not just HELIOSOL) applied in any amount (not just 2000 mg/L) with the compound of formula (I) at any rate between 10 g/ha to 600 g/ha (not just 20 g/ha) to any plant infected with any pest that feeds on the plant by sucking (not just Myzus persicae, also known as green peach aphid) to yield a mortality rate that is “about 99.5%” (which allows variation above and below 99.5%) or “full control” as now claimed. This concept newly added in claim 9 constituted an impermissible broadening of the subject matter originally disclosed and claimed that does not find adequate written support in the as-filed specification.
Similar rationale applies also to claims 15-16, which seek to further define the mortality effect of the recited pesticidal composition.
As claims 10-12 and 17-25 do not remedy these points at issue in claim 9, they must also be rejected on the same grounds applied thereto.
MPEP §2163 states that “[t]he subject matter of the claim need not be described literally (i.e., using the same terms of in haec verba) in order for the disclosure to satisfy the description requirement.” However, considering the teachings provided in the specification and claims as filed, Applicant has failed to provide the necessary teachings by describing the claimed invention in such a way as to reasonably convey to one skilled in the relevant art that Applicant had possession of the concept directed to (i) “wherein the applying of the pesticidal composition results in less than 30% phytotoxicity in the plant 7 days after application or 14 days after application” (claim 9), or (ii) “wherein the applying of the pesticidal composition results in a mortality rate of about 99.5% or full control of the pests which feed on the plant by sucking which feed on the plant” (claim 9).
Accordingly, the claims are considered to lack sufficient written description and are properly rejected under 35 U.S.C. §112(a) (pre-AIA first paragraph).
Claim Rejections - 35 USC § 112(b) (Pre-AIA Second Paragraph)
(New Grounds of Rejection)
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.
(2) Claims 9-25 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.
Applicant’s claim 9 recites a step of “applying the pesticidal composition to foliage of the plant such that the compound of formula (I) penetrates the plant and moves to new shoot, leaf, and root tissues of the plant”.
This limitation renders the claim indefinite because it is unclear if the application is performed (i) in a specific manner that functions to “penetrate[s] the plant” and move the compound “to new shoot, leaf, and root tissues of the plant” (in which case the claim is additionally indefinite for failing to clearly identify the particular manner of application that yields this resultant effect), or (ii) any manner1.
Clarification is required.
Applicant’s claim 9 recites “wherein the pesticidal composition comprises 0.001 to 10% by weight by volume the polymeric terpene alcohol”.
It is unclear if the percentage range is (i) % by weight, (ii) % by volume, (iii) % by weight or % by volume, or (iv) % weight by volume.
Clarification is required.
Similar ambiguity exists also in claims 22-23, which each recite substantially identical claim language2.
Applicant’s claim 9 recites “wherein the applying of the pesticidal composition results in a mortality rate of about 99.5% or full control of the pests”.
The limitation “full control” renders the claim indefinite because it is unclear if Applicant intends to claim a mortality rate of 100%, a mortality rate of between “about 99.5%” and 100%, or something else.
Clarification is required.
Applicant’s claim 13 recites “[t]he method of claim 9, wherein the phytotoxicity in the plant is at 7 days after application”.
The claim is indefinite because it fails to introduce any further limitation to the active steps of the method defined in claim 9 that would specifically correlate to yielding the phytotoxicity property of claim 13. As a result, it is unclear whether claim 13 is directed to an inherent effect of the method defined by claim 9 (as there is no further active step performed, then claim 13 would not clearly further limit claim 9), or whether it intends to further limit the claim to narrower embodiments of the method that yield this specific phytotoxicity property (in which case the claim is additionally indefinite for failing to clearly set forth the specific embodiments within the broad scope of claim 9 that yield the recited property).
Clarification is required.
Similar ambiguity exists also in claim 14, which is directed to the same phytotoxicity property but “at 14 days after application”.
Applicant’s claim 15 recites “[t]he method of claim 9, wherein the applying of the pesticidal composition results in a mortality rate of about 99.5%”.
The claim is indefinite because it fails to introduce any further limitation to the active steps of the method defined in claim 9 that would specifically correlate to yielding the mortality property of claim 15. As a result, it is unclear whether claim 15 is directed to an inherent effect of the method defined by claim 9 (as there is no further active step performed, then claim 15 would not clearly further limit claim 9), or whether it intends to further limit the claim to narrower embodiments of the method of claim 9 that yield this specific mortality property (in which case the claim is additionally indefinite for failing to clearly set forth the specific embodiments within the broad scope of claim 9 that yield the recited property).
Clarification is required.
Applicant’s claim 16 recites “[t]he method of claim 9, wherein the applying of the pesticidal composition results in full control”.
The limitation “full control” renders the claim indefinite because it is unclear what is being controlled.
Clarification is required.
It is also unclear whether full control implies 100% mortality rate or something else.
Clarification is required.
The claim is additionally indefinite because it fails to introduce any further limitation to the active steps of the method defined in claim 9 that would specifically correlate to yielding the control property of claim 16. As a result, it is unclear whether claim 16 is directed to an inherent effect of the method defined by claim 9 (as there is no further active step performed, then claim 16 would not clearly further limit claim 9), or whether it intends to further limit the claim to narrower embodiments of the method of claim 9 that yield this specific control property (in which case the claim is additionally indefinite for failing to clearly set forth the specific embodiments within the broad scope of claim 9 that yield the recited property).
Clarification is required.
As claims 10-12, 17-21 and 24-25 do not remedy these points of ambiguity in claim 9, they must also be rejected for the same reasons applied thereto.
For these reasons, the claims fail to meet the tenor and express requirements of 35 U.S.C. §112(b) (pre-AIA second paragraph) and are, thus, properly rejected.
Claim Rejections - 35 USC § 112(d) (Pre-AIA Fourth Paragraph)
(New Grounds of Rejection)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
(3) Claims 13-16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As set forth in the §112(b) (pre-AIA second paragraph) rejections above, this rejection applies to the interpretation of claims 13-16 in which they define inherent effects of the method of claim 9 and do not provide any further limitation of the method consistent with the requirements of 35 U.S.C. §112(d) (pre-AIA fourth paragraph).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103 (New Grounds of Rejection)
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
(4) Claims 9-24 are rejected under 35 U.S.C. 103 as being unpatentable over Muehlebach et al. (WO 2010/066780 A1; 2010) in view of Gaskin et al. (“A Comparison of Sticker Adjuvants for their Effects on Retention and Rainfastening of Fungicide Sprays”, New Zealand Plant Protection, 2009; 62:339-342, cited by Applicant on the 10/16/20 IDS).
Muehlebach et al. teaches spiroheterocyclic N-oxypiperidine pesticide compounds of formula (I), which has the general structure
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251
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, wherein X, Y and Z are each independently, e.g., C1-4 alkyl, C1-4 alkoxy, halogen, etc.; m and n, independently of each other, are 0, 1, 2, or 3 and m+n is 0, 1, 2, or 3; G is hydrogen, a metal, ammonium, sulfonium or a latentiating group; R is, e.g., hydrogen, C1-4 alkyl, etc.; and A is, e.g., C1-6 alkyl, C1-6 haloalkyl, etc., or an agrochemically acceptable salt or N-oxide thereof (p.1, l.14-p.2, l.4). Muehlebach et al. teaches that the compounds are particularly effective for pest control in view of their favorable biocidal spectrum and are well-tolerated by warm-blooded species, fish and plants (p.46, l.18-21). Muehlebach et al. describes particular pests that may be controlled by use of a pesticidal compound of formula (I), including aphids, and are used for controlling pests on useful plants and ornamentals in agriculture (including the growing of crops for food and fiber products), horticulture, and in forests, or on organs, such as fruits, flowers, foliage, stalks, tubers or roots of such plants, including target crops such as cabbages (p.46, l.29-p.47, l.5; p.50, l.14-25).
Exemplified compounds of Muehlebach's formula (I) include the compound P1.293, which has the structure
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122
151
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(Table P1, p.141), and was experimentally determined to show good activity (over 80%) against Myzus persicae (green peach aphid) at 400 ppm (Example B1, p.161, l.5-15), and 200 ppm with less than 10% plant damage – a measure of phytotoxicity – in pepper plants infested with Myzus persicae (Example B16, p.167, l.20-p.168, l.4).
Muehlebach et al. teaches that a typical rate of concentration for the disclosed active compound of formula (I) is between 0.1 and 1000 ppm, preferably between 0.1 and 500 ppm (p.63, l.8-13).
Muehlebach et al. teaches that the rate of application per hectare (ha) of the disclosed pesticidal compounds of formula (I) is generally from 1 to 2000 g of active ingredient per ha, in particular 10 to 1000 g/ha, preferably 10 to 600 g/ha (p.63, l.13-15).
Muehlebach et al. teaches that the disclosed pesticidal compositions comprise 0.1-99% by weight, especially 0.1-95% by weight, of the active tetramic acid compound of formula (I) and 1-99.9% by weight, especially 5-99.9% by weight, of at least one solid or liquid adjuvant, with 0-25% by weight (especially 0.1-20% by weight) being surfactant (p.61, l.13-16).
Muehlebach et al. further teaches that the compounds of formula (I) may be used in a composition for application to a pest, a locus of a pest, or a plant susceptible to attack by a pest for combatting and controlling pests (p.56, l.19-23; p.64, l.29-32; p.69, l.29-p.70, l.3). Muehlebach et al. further teaches that the compounds are characterized by good plant and crop tolerance and compatibility, noting that phytotoxicity (damage to plants/crops) is significantly reduced (p.56, l.26-30). Muehlebach et al. teaches that such composition can be formulated as, e.g., a soluble powder, water soluble granules, water dispersible granules, wettable powders, granules (slow or fast release), soluble concentrates, emulsifiable concentrates, dispersible concentrates, emulsions (both oil in water and water in oil), or suspension concentrates (p.57, l.1-6; p.64, l.34-p.65, l.8; p.65, l.10-p.68, l.19).
Muehlebach et al. further teaches that the disclosed compositions may include one or more additives to improve the biological performance of the composition and include, e.g., surface active agents, spray additives based on oils (e.g., certain mineral oils, vegetable oils, or natural plant oils, such as soy bean and rape seed oil), and blends of these with other bio-enhancing adjuvants (ingredients that aid or modify the action of a compound of formula (I)) (p.68, l.20-29).
Muehlebach et al. additionally teaches that the pesticidal compound of formula (I) may be the sole active ingredient of the composition, or admixed with one or more additional active ingredients, such as a pesticide (insect, acarine, mollusc and nematode pesticide), fungicide, synergist, herbicide, safener or plant growth regulator where appropriate (p.70, l.32-35).
Muehlebach et al. differs from the instant claims only insofar as it does not explicitly teach the incorporation of a terpene alcohol polymeric adjuvant into the pesticidal composition (claim 9).
Gaskin et al. teaches that sticker adjuvants, such as terpene and synthetic latex polymers, are used to enhance the adhesion of pesticide sprays to plants and form a protective film over the target surface, which increases the resistance of pesticide deposits to rain wash-off (abstract; p.339, para.1). Gaskin et al. teaches that terpene adjuvants auto-polymerize upon exposure to air and UV light to form a rainfast film after drying and exposure to sunlight (p.339, para.1). Gaskin et al. teaches FILMSTAR, a polymerized terpene/fatty alcohol, as one of such sticker adjuvants (p.340, para.1).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining the polymeric sticker adjuvant FILMSTAR taught by Gaskin et al. with the spiroheterocyclic N-oxypiperidine pesticide P1.29 of Muehlebach et al. because Muehlebach et al. teaches that his spiroheterocyclic N-oxypiperidine pesticide compound may be further combined with another bio-enhancing adjuvant to aid or modify the action of such compound. The skilled artisan would have been motivated to make such a combination in view of the fact that FILMSTAR was well-known in the art as a terpene fatty alcohol polymeric adjuvant used to enhance adhesion of pesticides to plants and to form a protective film on the plant surface so as to increase resistance of pesticide deposits to wash off in rain conditions. The ordinarily skilled artisan would have reasonably expected that such properties would have been imparted to the P1.29 pesticide compound of Muehlebach et al. upon application to plants when combined with this known FILMSTAR sticker adjuvant, as taught by Gaskin et al. It would, therefore, have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Muehlebach’s spiroheterocyclic N-oxypiperidine pesticide compound P1.29 with FILMSTAR polymeric adjuvant to increase retention and rainfastening of the pesticide to plant surfaces.
Claim 9 recites “[a] method of combating and controlling pests” that “feed on a plant by sucking” comprising the steps of (i) cultivating a plant in an environment containing the pests which feed on a plant by sucking, (ii) obtaining a polymeric adjuvant composition comprising a polymeric terpene alcohol, (iii) obtaining an agrochemical composition comprising 0.1-95% by weight of a compound of formula (I), (iv) tank-mixing the polymeric adjuvant composition and the agrochemical composition to form a pesticidal composition, and (v) applying the pesticidal composition to foliage of the plant.
Here, the cited prior art teachings provide a reasonable expectation of success in mixing a composition of the spiroheterocyclic N-oxypiperidine pesticide P1.29 of Muehlebach et al. with a composition of the terpene fatty alcohol polymeric adjuvant FILMSTAR as taught by Gaskin et al. to form a pesticidal composition that is then applied directly to the foliage of a plant infested with a pest, such as the green peach aphid Myzus persicae4, to control such pest infestation.
Such teachings necessarily require a preceding step of “cultivating” the plant in an environment that contains the offensive pest (such that it is infested therewith) and “obtaining” the individual components of the composition – in this case, the P1.29 compound of formula (I) and the polymeric adjuvant – individually, prior to admixing the components to form the resultant pesticidal composition thereof.
Muehlebach et al. teaches that the pesticidal composition comprises 0.1-99% by weight (especially 0.1-95% by weight) of the active compound of formula (I) – of which Muehlebach et al. explicitly exemplifies P1.29 (the instantly claimed compound) as one of such species therein – and 1-99.9% by weight (especially 5-99.9% by weight) of at least one solid or liquid adjuvant, and the option to include a surfactant in an amount of 0-25% by weight (especially 0.1-20% by weight) (p.61, l.13-16).
The ordinarily skilled artisan would have naturally found it prima facie obvious to obtain an individual composition of the compound of formula (I) prior to admixing with the polymeric adjuvant that contains this preferred amount of 0.1-95% by weight of the compound of formula (I) to then be utilized in the resultant pesticidal composition when admixed with the polymeric adjuvant.
Claim 9 further recites that the pesticidal composition is applied to the plant foliage “such that the compound of formula (I) penetrates the plant and moves to new shoot, leaf, and root tissues of the plant”.
Applicant’s limitation directed to the compound of formula (I) penetrating the plant and moving “to new shoot, leaf, and root tissues of the plant” defines a functional result observed following execution of the recited step of application and, thus, must necessarily yield from the cited prior art teachings as combined.
Claim 9 recites that the resultant pesticidal composition comprises 0.0001 to 10% by weight of the polymeric terpene alcohol adjuvant.
Muehlebach et al. describes a pesticidal composition that comprises 0.1-99% by weight (especially 0.1-95% by weight) of the active tetramic acid compound of formula (I) – of which Muehlebach et al. explicitly exemplifies P1.29 (the instantly claimed compound) as one of such species therein – and 1-99.9% by weight (especially 5-99.9% by weight) of at least one solid or liquid adjuvant, and the option to include a surfactant in an amount of 0-25% by weight (especially 0.1-20% by weight) (p.61, l.13-16).
Such teachings clearly provide for a pesticidal composition comprising a compound of formula (I) (including the instantly claimed compound exemplified as P1.29 in Muehlebach et al.) with 1-99.9% by weight adjuvant – a range that clearly meets and/or overlaps the range of 0.001-10% by weight of the polymeric terpene alcohol adjuvant in claim 9. MPEP §2144.05 states, “In the case wherein the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) … “[A] prior art reference that discloses a range encompassing a somewhat narrower range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005).”
Claim 9 recites functional effects of the method as:
(i) “wherein the applying of the pesticidal composition results in less than 30% phytotoxicity in the plant 7 days after application or 14 days after application”; and
(ii) “wherein the applying of the pesticidal composition results in a mortality rate of about 99.5% or full control of the pests which feed on the plant by sucking”.
As the teachings of Muehlebach et al. as modified by Gaskin et al. above teach every limitation of the claimed method and defining active steps, the intended functional effects of (i) “less than 30% phytotoxicity in the plant 7 days after application or 14 days after application” or (ii) “a mortality rate of about 99.5% or full control of the pests which feed on the plant by sucking” must necessarily yield directly therefrom such combination as set forth above.
Similar rationale applies also to claims 13-16, which reiterate these functional effects recited in claim 9.
Claim 9 also recites that the “the pesticidal composition does not include an herbicide”.
The exclusion of an herbicide from the pesticidal composition is met by the prior art teachings, as Muehlebach et al. teaches that the pesticidal compound may be the sole active ingredient of the composition or alternatively mixed with other actives, such as an herbicide – thereby clearly providing for embodiments in which the pesticidal compound of formula (I) is present in the composition in the absence of another active ingredient, such as an herbicide.
Claim 10 defines the rate of application of the compound of formula (I) in the pesticidal composition as “between 20 g/ha to 200 g/ha”.
Claim 11 defines the rate of application of the compound of formula (I) in the pesticidal composition as “at least 200 g/ha” (with an upper limit of 600 g/ha, as previously defined in parent claim 9).
Claim 12 defines the rate of application of the compound of formula (I) in the pesticidal composition as “200 g/ha”.
Muehlebach et al. teaches that the rate of application per hectare (ha) of the disclosed pesticidal compound of formula (I) is generally from 1 to 2000 g of active ingredient per ha, in particular 10 to 1000 g/ha, preferably 10 to 600 g/ha (p.63, l.13-15).
Such teachings of 1-2000 g/ha, particularly 10-1000 g/ha, preferably 10-600 g/ha, rate of application of the disclosed pesticidal compound of formula (I) – of which Muehlebach et al. explicitly exemplifies P1.29 (the instantly claimed compound) as one of such species therein – clearly circumscribes the ranges or amounts instantly claimed of 20-200 g/ha (claim 10), “at least 200 g/ha” (with the upper limit of 600 g/ha defined in claim 9; claim 11) or 200 g/ha (claim 12), thereby rendering such ranges or amounts prima facie obvious. Again, see MPEP §2144.05.
Claim 17 defines the pests that feed on the plant as an aphid.
Claim 18 depends from claim 17 and defines the aphid as Myzus persicae.
Claim 19 depends from claim 18 and defines the plant as Chinese cabbage.
Muehlebach et al. teaches that his exemplified tetramic acid pesticidal compound P1.29 (which is identical to the instantly claimed compound of formula (I)) demonstrated clear activity against the green peach aphid (also known as Myzus persicae).
The teachings of Muehlebach et al. also clearly establish efficacy of the disclosed pesticidal compounds of formula (I) in target crops, including vegetable crops, such as cabbages.
Claim 20 depends from claim 19 and defines the rate of application of the compound of formula (I) as “at least 200 g/ha” (with an upper limit of 600 g/ha, as previously defined in parent claim 9).
Claim 21 depends from claim 20 and further defines the rate of application of the compound of formula (I) as “200 g/ha”.
As established above, Muehlebach et al. teaches that the rate of application per hectare (ha) of the disclosed pesticidal compound of formula (I) is generally from 1 to 2000 g of active ingredient per ha, in particular 10 to 1000 g/ha, preferably 10 to 600 g/ha (p.63, l.13-15).
Such teachings of 1-2000 g/ha, particularly 10-1000 g/ha, preferably 10-600 g/ha, rate of application of the disclosed pesticidal compound of formula (I) – of which Muehlebach et al. explicitly exemplifies P1.29 (the instantly claimed compound) as one of such species therein – clearly circumscribes the ranges or amounts instantly claimed of “at least 200 g/ha” (with the upper limit of 600 g/ha defined in claim 9; claim 20) or 200 g/ha (claim 21), thereby rendering such ranges or amounts prima facie obvious. Again, see MPEP §2144.05.
Claim 22 depends from claim 20 and defines the amount of polymeric terpene alcohol adjuvant of the pesticidal composition as 0.001-5% by weight.
Claim 23 depends from claim 20 and defines the amount of polymeric terpene alcohol adjuvant of the pesticidal composition as 0.01-1% by weight.
As established above, Muehlebach et al. describes a pesticidal composition that comprises 0.1-99% by weight (especially 0.1-95% by weight) of the active pesticidal compound of formula (I) – of which Muehlebach et al. explicitly exemplifies P1.29 (the instantly claimed compound) as one of such species therein – and 1-99.9% by weight (especially 5-99.9% by weight) of at least one solid or liquid adjuvant, and the option to include a surfactant in an amount of 0-25% by weight (especially 0.1-20% by weight) (p.61, l.13-16).
Such teachings clearly provide for a pesticidal composition comprising a compound of formula (I) (including the instantly claimed compound exemplified as P1.29 in Muehlebach et al.) with 1-99.9% by weight adjuvant – a range that clearly meets and/or overlaps the range of 0.001-5% by weight (claim 22) or 0.01-1% by weight (claim 23) of the polymeric terpene alcohol adjuvant. Again, see MPEP §2144.05.
Claim 24 depends from claim 20 and defines the composition of the compound of formula (I) as a suspension concentrate.
Muehlebach et al. teaches that the pesticidal compound of formula (I) may be formulated in a variety of forms, including a suspension concentrate.
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 claimed invention.
(5) Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Muehlebach et al. (WO 2010/066780 A1; 2010) in view of Gaskin et al. (“A Comparison of Sticker Adjuvants for their Effects on Retention and Rainfastening of Fungicide Sprays”, New Zealand Plant Protection, 2009; 62:339-342, cited by Applicant on the 10/16/20 IDS),
as applied above to claims 9-24,
further in view of Ghyczy et al. (U.S. Patent No. 4,506,831; 1985).
Muehlebach in view of Gaskin, as applied above to claims 9-24.
Muehlebach in view of Gaskin differ from the instant claim only insofar as they do not explicitly teach a combination pack5 containing the polymeric terpene alcohol adjuvant and the compound of formula (I) (claim 25).
Ghyczy et al. discloses packaging units comprising separate compartments useful for housing plant protectant spray mixtures prior to application (abstract; col.1, l.12-14; col.3, l.17). Ghyczy et al. teaches a two-component system for plant protection in which the two liquids to be combined are each housed in separate containers and are connected by means of connecting channels and a pump system in which the liquids are separately conducted to a mixing nozzle, wherein the liquids are mixed and then discharged from the container via spray (col.3, l.34-41).
A person of ordinary skill in the art before the effective filing date of the instant invention would have had a reasonable expectation of success in employing a two-container system to independently house (i) Muehlebach's P1.29 tetramic acid pesticide compound (Applicant’s compound of formula (I)) and (ii) the FILMSTAR terpene fatty alcohol polymeric adjuvant of Gaskin et al. because Ghyczy et al. teaches two container systems for storing plant protecting agents for mixing prior to application directly to plant surfaces. The skilled artisan would have been motivated to use such a two-container system to store his two components (the pesticidal compound P1.29 and the adjuvant FILMSTAR) separately prior to application to plant surfaces in a container system that facilitates mixing and distribution directly prior to the time of application. It would, therefore, have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a two-container system (a “combination pack” as claimed) for independently storing the pesticidal compound P1.29 of Muehlebach and the polymeric adjuvant of Gaskin prior to mixing and use thereof.
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 claimed invention.
Response to Applicant’s Arguments
In reply, Applicant traverses the previously applied rejections in light of the submitted claim amendments and accompanying remarks (Remarks, p.5-6).
Applicant’s amendments and remarks have been fully and carefully considered, and the previously applied rejections have been withdrawn as indicated above.
Upon further reconsideration of the claimed subject matter as amended, however, new grounds for rejection are necessitated and are set forth infra.
For these reasons supra, rejection of claims 9-25 is proper.
Conclusion
Rejection of claims 9-25 is proper.
No claims of the present application are allowed.
Applicant is requested to specifically point out the support for any amendments made to the disclosure in response to this Office action, including the claims (M.P.E.P. §§ 714.02 and 2163.06). In doing so, applicant is requested to refer to pages and line (or paragraph) numbers (if available) in the as-filed specification, not the published application. Due to the procedure outlined in M.P.E.P. § 2163.06 for interpreting claims, other art may be applicable under 35 U.S.C. § 102 or 35 U.S.C. § 103(a) once the aforementioned issue(s) is/are addressed.
Applicant is reminded that MPEP §2001.06(b) clearly states that “[t]he individuals covered by 37 C.F.R. 1.56 have a duty to bring to the attention of the examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications which are "material to patentability" of the application in question." See Armour & Co. v. Swift & Co., 466 F.2d 767, 779, 175 USPQ 70, 79 (7th Cir. 1972). MPEP §2001.06(b) clearly indicates that “if a particular inventor has different applications pending in which similar subject matter but patentably indistinct claims are present that fact must be disclosed to the examiner of each of the involved applications.” See Dayco Prod. Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003).
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 Leslie A. Royds Draper whose telephone number is (571)272-6096. The examiner can normally be reached Tuesday to Thursday (08:30 AM to 05:00 PM).
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey S. Lundgren can be reached at (571)-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Leslie A. Royds Draper/Primary Examiner, Art Unit 1629
January 22, 2026
1 For the purposes of examination, Applicant’s limitation will be interpreted as a functional result of any manner of application of the pesticidal composition.
2 For the purposes of examination, Applicant’s claims 9 and 22-23 will be interpreted as defining “% by weight” quantities.
3 P1.29 exemplified in Muehlebach et al. corresponds to Applicant’s instantly claimed compound of formula (I) as recited in instant claim 9.
4 Note that Applicant defines the “pest[s] which feed on a plant by sucking” as an aphid (claim 17), particularly the aphid Myzus persicae (claim 18).
5 At p.38, l.17 of the as-filed specification, Applicant defines the “combination pack” as referring to “a combination of a compound according to formula (I) and an adjuvant selected from one or more polymeric adjuvants, wherein a first container contains the tetramic acid compound according to formula (I) and a second container contains the adjuvant(s)”. Applicant’s reference, therefore, to a “combination pack” will be understood to define a two-container system in which the compound of formula (I) and the polymeric adjuvant are each contained in a separate container.