DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/20/2026 has been entered.
Status of the Claims
This action is in response to papers filed 02/03/2026 in which claims 1-12, 14, 16-18, and 23 were canceled; claims 15 and 19-22 were withdrawn; and claim 13 was amended. All the amendments have been thoroughly reviewed and entered.
Claims 13 and 24 are under examination.
Withdrawn Objection/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn.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.
New Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
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.
Claims 13 and 24 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.
Claim 13 introduces new matter as the claim recite the limitation: “the co-formulation maintains a spontaneity of dispersion above 90% when subjected to temperatures 0f 54°C for at least two weeks.” There is no support in the specification for the range of “at least two weeks” in the specification.
Applicant asserted that support for claim 13 can be found throughout as filed and at least in the published application at least at paragraph [0251] and Table 1 (see Remarks filed 02/03/2026, page 4).
However, after a thorough review of paragraph [0251] and Table 1 of the published application, as well as, throughout the specification, there remains no support for claimed range of “at least two weeks” as it pertains to the spontaneity of dispersion above 90%.
It is noted that paragraph [0251] and Table 1 disclosed accelerated storage rest results after 14 days storage at 54±2°C, and paragraph [0250] indicated that such test represent a simulation of behavior of a formulation after a 2 years storage period. However, this is not support for the length of “at least two weeks” which is a broad range that encompassed a length as long as 10 years, 20 years, or even 30 years, which is clearly not supported by the specification.
Claim 24 is also rejected as it dependent from claim 13, thereby also containing the conflicting new matter material
As such, the Examiner maintains the position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of claim 13 as amended at the time of filing of the instant application.
Maintained-Modified Rejections
Necessitated by Applicant’s Claim Amendments
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.
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.
Claims 13 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shah (US 2013/0253054 A1; hereafter as “Shah ‘054”) in view of Yan et al (US 2017/0105418 A1), Shah (US 2013/0302446 A1; hereafter as “Shah ‘446”) and Skillman et al (US 2015/0087622 A1), and as evidenced by Lei et al (US 2013/0330292 A1).
Regarding claim 13, Shah ‘054 teaches a ZC composition comprising a microcapsule formulation containing lambda cyhalothrin, and a suspension concentrate containing diafenthiuron (Abstract; [0007]-[0016]. [0024], [0029], [0034], [0120]; claims 1-2). Shah ‘054 teaches the composition showed higher effectiveness against pest population at lower dosages and for a longer period of time, thus reducing the impact of bioaccumulation on the environment ([0007], [0034] and [0120]).
However, Shah ‘054 does not teach the soybean oil or derivative thereof that solubilized the pyrethroid insecticide in the microencapsulate formulation; the microcapsule have a D50 particle size in a range from 0.1 µm to 10 µm; the novaluron as the active ingredient in the suspension concentrate; and the soybean oil or derivative thereof is present in an amount from 0.1% to 50% by weight, of claim 13.
Regarding the soybean oil that solubilized the pyrethroid insecticide in the microencapsulate formulation, the amount of soybean oil, and the microcapsules D50 particle size of claim 13, Yan teaches an insecticide composition comprising microcapsules containing an outer polymeric shell encapsulating a core containing pyrethroid such as lambda cyhalothrin, wherein the pyrethroid dissolved in a vegetable oil selected from soybean oil, epoxidized soybean oil, coconut oil, olive oil, safflower oil, cotton seed oil, corn oil, rape seed oil, or combination thereof (Abstract; [0008]-[0013], [0023]-[0040], [0063], [0065] and [0078]; claims 1-24). Yan teaches the core can contain only the vegetable oil as the solubilizer or dispersing agent which dissolves the insecticide ([0039]-[0040]; claims 5 and 8-9). Yan teaches the microcapsule formulation of pyrethroid such as lambda cyhalothrin provides a high loading and high efficacy insecticide formulation while also reducing toxicity of the formulation thereby improving the safety profile not only for the consumer but also in the local environment ([0012]-[0013], [0023] and [0078]). Yan teaches the amount of vegetable oil used to dissolve pyrethroid is predetermined and can be vary for example, at a weight ratio of pyrethroid to vegetable between 6:1 to 10:1 such as 39.67% by weight pyrethroid and 6.4% by weight vegetable oil of the formulation ([0075], [0087]-[0088], Table 1). Yan teaches the microcapsules have mean particle size (D50) of 10 micrometer or less ([0011], [0037], [0088]; Table 2; claims 33 and 36).
Regarding the novaluron as the active ingredient in the suspension concentrate, Shah ‘446 teaches a suspension concentrate formulation containing an insecticide selected from diafenthiuron and novaluron (Abstract; [0007]-[0008], [0012], [0014], [0016], [0032]-[0033]; Tables 8 and 9; claims 1, 4 and 6).
It would have been obvious to one of ordinary skill in the art to modify the ZC composition of Shah ‘054 such that the microcapsule containing pyrethroid such as lambda cyhalothrin is dissolved in vegetable oil such as soybean oil per Yan that is then incorporated as the microcapsule formulation, and novaluron is substitute or incorporated as the insecticide in the suspension concentrate formulation of Shah ‘054 per guidance from Shah ‘446, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Shah ‘446 provides the guidance for substituting or incorporating novaluron in place of diafenthiuron as the insecticide of the suspension concentration, as Shah ‘446 indicates that both diafenthiuron and novaluron are suitable insecticide for formulating in a suspension concentrate. One of ordinary skill in the art would have reasonable expectation of success of making said modification to the ZC composition of Shah ‘054 because Skillman indicated that lambda cyhalothrin is known to be useful in combination with benzoylurea insecticide such as novaluron to provide immediate insecticide/pesticide effects or fast acting knock-down effect, as well as long-term effect against pests/insects (Skillman: [0004], [0009], [0012]-[0013], [0036] and [0040]-[0046]; claims 1, and 4-5). Thus, it is noted that [t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.). As such, an ordinary artisan seeking to formulate an highly efficacious insecticide combination formulation of lambda cyhalothrin and a benzoylurea insecticide such as novaluron, would have looked to modify the ZC composition of Shah ‘054 such that the microcapsule containing pyrethroid such as lambda cyhalothrin is dissolved in vegetable oil such as soybean oil per Yan that is then incorporated as the microcapsule formulation, and novaluron is substitute or incorporated as the insecticide in the suspension concentrate formulation per guidance from Shah ‘446 and Skillman so as to provide a resultant ZC composition having higher effectiveness against pest population at lower dosages and for a longer period of time, thus reducing the impact of bioaccumulation on the environment, as required by Shah ‘054, and achieve Applicant’s claimed invention with reasonable expectation of success.
It would also have been obvious to routinely optimize the concentration of vegetable oil such as soybean oil used for dissolving pyrethroid in the formulation to an amount from 0.1% to 50% by weight of the co-formulation, and produce the claimed invention. One of ordinary skill the art would have been motivated to do so because Yan teaches that the amount of vegetable oil such as soybean oil used to dissolve pyrethroid is predetermined and can be vary for example, at a weight ratio of pyrethroid to vegetable oil between 6:1 to 10:1 such as 39.67% by weight pyrethroid and 6.4% by weight vegetable oil of the formulation (Yan: [0040], [0075], [0087], Table 1; claim 8), which are amounts with falls within or overlaps the claimed range of an amount from 0.1% to 50% by weight for soybean oil or derivative thereof. While the example is to corn oil as the vegetable oil, soybean oil is taught as functionally equivalent to corn oil as the vegetable oil for use in solubilizing the pyrethroid. Thus, said amount of corn oil as the vegetable oil as taught in the Example from Yan supra would be reasonably pertinent for use in all functionally equivalent vegetable oil including soybean oil. As such, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the amount of vegetable oil such as soybean oil in the co-formulation would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
It would also have been obvious to one of ordinary skill in the art to routinely optimize the microcapsules of Shah ‘054 to have a D50 particle size in a range from 0.1 µm to 10 µm, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Yan provided the guidance to do so by teaching that microcapsules containing a pyrethroid such as lambda cyhalothrin of Shah ‘054 can be routinely optimize to have a D50 particle size of 10 micrometer or less (Yan: [0011], [0037], [0088]; Table 2; claims 33 and 36). Thus, absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the D50 particle size of the microcapsules would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
With respect to the claimed “the free lambda-cyhalothrin content is 0.1-0.6% of the total lambda-cyhalothrin” as recited in claim 13, Yan teaches that the microcapsules encapsulating a pyrethroid such as lambda cyhalothrin have high loading, high efficacy, and reduce oral toxicity due to forming microcapsules having polyurea shell wall via interfacial polymerization (Yan: [0019], [0031], [0036]-[0038], [0072], [0078]. [0088[; Table 2). Thus, it would have been obvious to one of ordinary skill in the art to prepare the microcapsules of Shah ‘054 using known technique or process of interfacial polymerization, particularly, preparing the microcapsules of Shah ‘054 to have polyurea shell wall via interfacial polymerization so as to provide resultant microcapsules with high loading, high efficacy, and reduce oral toxicity, and thereby implicitly achieve a free lambda-cyhalothrin content of 0.1-0.6% of the total lambda-cyhalothrin. This is because Shah ‘054 objective is to provide a stable suspension of capsules and per evident from Lei, polyurea microcapsules have excellent stability, in which the percent leakage (free active oil) is less than 0.6% (Lei: Abstract; [0009], [0014]-[0031], [0163]-[0164]; Example 16; Table 1). Thus, an ordinary artisan would have looked to prepare the microcapsules of Shah ‘054 using known technique or process of interfacial polymerization, particularly, preparing the microcapsules of Shah ‘054 to have polyurea shell wall via interfacial polymerization so as to provide resultant microcapsules having high loading and reduced toxicity due to excellent microcapsule stability and low leakage of pyrethroid (lambda-cyhalothrin), and achieve Applicant’s claimed invention with reasonable expectation of success.
With respect to the claimed property of “the co-formulation maintains a spontaneity of dispersion above 90% when subjected to temperatures of 54°C for at least two weeks” as recited in claim 13, as discussed above, it is noted that Shah ‘054 teaches a ZC composition. Shah ‘054 teaches the a ZC formulation is known to be a stable suspension of capsules and active ingredient, in fluid, normally intended for dilution with water before use (Shah ‘054: [0014] and [0016]). Thus, claimed property of “the co-formulation maintains a spontaneity of dispersion above 90% when subjected to temperatures of 54°C for at least two weeks” would have been reasonably obvious as being an implicit property in the ZC composition of Shah ‘054 in view of Yan, Shah ‘446, and Skillman (an as evidenced Lei), absence of evidence to the contrary.
Regarding claim 24, Shah ‘054 teaches the composition contains lambda cyhalothrin in an amount in the range of 0.5% to 12% by weight (Shah ‘054: [0008], [0012], [0024]; claims 1 and 5). Shah ‘446 teaches the formulation containing novaluron in an amount in the range from 0.1% to 40% of the weight (Shah ‘446: [0014]-[0015]; claims 1-2). Skillman teaches lambda cyhalothrin and novaluron are used in combination in a pesticidal composition at weight ratio of 1:10 to 10:1 (Skillman: [0042]). The weight amounts of lambda cyhalothrin and novaluron as taught by Shah ‘054, Shah ‘446, and Skillman falls within or overlaps the claimed ranges of “the lambda-cyhalothrin is present in an amount from about 0.1% to about 60% w/w of the co-formulation, and novaluron is present in an amount from about 0.1% to about 60% w/w of the co-formulation” as recited in claim 24. It would have been reasonably obvious to routinely optimize the amounts of lambda cyhalothrin and novaluron in a co-formulation in view of the guidance from Shah ‘054, Shah ‘446, and Skillman. Thus, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the amounts of lambda cyhalothrin and novaluron in the co-formulation would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
Applicant argues that “none of the references alone or combined identify spontaneity of dispersion above 90 percent after two weeks at 54°C as a formulation target or result effective variable for a ZC co formulation of microencapsulated lambda cyhalothrin with a novaluron SC.” Thus, Applicant alleges “[t]he cited references provide no teaching that adjusting these variables would predictably deliver the claimed high temperature dispersion spontaneity in a combined ZC system, and there is no articulated rationale that would have led a skilled formulator to modify Shah with Yan and Shah '446 with a reasonable expectation of success to achieve the claimed property.” (Remarks, page 6).
In response, the Examiner disagrees. As discussed above in the pending 103 rejection, it was indicated that Shah ‘054 teaches a ZC composition, and per Shah ‘054, a ZC formulation is known to be a stable suspension of capsules and active ingredient, in fluid, normally intended for dilution with water before use (Shah ‘054: [0014] and [0016]). Thus, the claimed property of “the co-formulation maintains a spontaneity of dispersion above 90% when subjected to temperatures of 54°C for at least two weeks” would have been reasonably obvious as being an implicit property in the ZC composition of Shah ‘054 in view of Yan, Shah ‘446, and Skillman (an as evidenced Lei), absence of evidence to the contrary. See 103 rejection, pages 6, 11 and 12.
As a result, for at least the reason discussed above, claims 13 and 24 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior ats in the pending 103 rejection as set forth in this office action.
Conclusion
No claim is allowed.
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/DOAN T PHAN/Primary Examiner, Art Unit 1613