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 .
DETAILED ACTION
The Applicant’s reply filed on 1/12/26 is acknowledged. Claims 1, 3, 5, 8, 10, 12, 15, 17, 19, 23 and 25-49 are pending. Claims 1, 5, 8, and 15 have been amended. Claims 25-49 are new. Claims 1, 3, 5, 8, 10, 12, 15, 17, 19, 23 and 25-49 are under consideration.
Objections Withdrawn
The objection to claim 15 is withdrawn in view of the amended claim.
Rejections Maintained and New Grounds of Rejections
Claim Objections
Claims 28, 29, 32 and 33 are objected to because of the following informalities: The claims misspell the genus “Meloidogyne” Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 25-44 and 46-49 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 25 recites “wherein the applying is sprinkler irrigation”. Applicant states that support for the amendments can be found in the Specification as filed at, for example, pages 1-7. The Examiner is unable to find support for the limitation in the Specification as filed.
Claim 26 recites “wherein the field is a farm or crop field”. Applicant states that support for the amendments can be found in the Specification as filed at, for example, pages 1-7. While page 1 recites “controlling or suppressing nematodes in farm fields and soils in general”, no support can be found for a “crop field” specifically. Claims 27-36 are rejected as depending from claim 26 and including the new matter.
Claim 27 recites “further comprising identifying nematodes in the field”. Applicant states that support for the amendments can be found in the Specification as filed at, for example, pages 1-7. The Examiner is unable to find support for the limitation in the Specification as filed. Claims 28-36 are rejected as depending from claim 27 and including the new matter.
Regarding Claims 28-33, while there is support present for the genera and species recited, there is not support for a step of identifying these species. Applicant states that support for the amendments can be found in the Specification as filed at, for example, pages 1-7. The Examiner is unable to find support for the limitation in the Specification as filed.
Regarding Claims 34-36, while there is support distinct individual root knot nematode counts in the Tables on pages 5-7, there is not support for ranges of counts. Applicant states that support for the amendments can be found in the Specification as filed at, for example, pages 1-7. The Examiner is unable to find support for the claimed ranges in the Specification as filed.
Claim 37 recites “diluting a concentrate composition comprising abamectin and a polysorbate”. Applicant states that support for the amendments can be found in the Specification as filed at, for example, pages 1-7. The Examiner is unable to find support for the limitation in the Specification as filed. Claims 38-40 are rejected as depending from claim 37 and including the new matter.
Claim 40 recites “the concentrate composition is an SC (suspension concentrate)”. Applicant states that support for the amendments can be found in the Specification as filed at, for example, pages 1-7. The Examiner is unable to find support for the limitation in the Specification as filed.
Claim 41 recites “the applying is done twice at about 7 or about 14 days apart”. Applicant states that support for the amendments can be found in the Specification as filed at, for example, pages 1-7. The Examiner is unable to find support for the limitation in the Specification as filed.
Claim 42-44 recite “wherein the applying results in a reduction of root-knot nematodes between…”. Applicant states that support for the amendments can be found in the Specification as filed at, for example, pages 1-7. The Examiner is unable to find support for the limitation in the Specification as filed.
Claim 46 recites “wherein the weight ratio of polysorbate to abamectin is about 1.5:0.7”. Applicant states that support for the amendments can be found in the Specification as filed at, for example, pages 1-7. The Examiner is unable to find support for the limitation in the Specification as filed. Claims 47-49 are rejected as depending from claim 46 and including the new matter.
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 of this title, 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.
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 1, 3, 5, 8, 10, 12, 15, 17, 19, 23 and 25-49 are rejected under 35 U.S.C. 103 as being unpatentable over Guyon et al. (US 2008/0206345; cited in IDS) as evidenced by Mitkowski (apsnet.org; 2011), in view of Clemson (2012) and Keiper et al. (US 2011/0189294).
Guyon et al. teach a method for the control of soil-dwelling pests and/or soil-borne diseases comprising treating a plant propagation material with an effective amount of the pesticidal composition and/or applying an effective amount of a pesticidal composition to a locus where control is desired (e.g. abstract). Guyon et al. teach that the method comprises: applying through an irrigation system, to the soil of a field having nematodes, a composition comprising abamectin and water, wherein the abamectin is applied at a rate of from 3 to 90 g per hectare (g/ha) (i.e. 1.21 to 36.42 g/acre), which overlaps with the claimed range (e.g. paragraph 0092, 0139, 0141). In the case where 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) (MPEP 2144.05.I). Guyon et al. teach that the nematode species may be Meloidogyne species (e.g. paragraph 0055). As evidenced by Mitkowski, Meloidogyne is also known as root-knot nematode (e.g. page 1). Regarding Claims 1, 48 and 49, Guyon et al. are silent as to the rate of water application, however, it would have been obvious to one of ordinary skill in the art to have selected the range of 8,500,000-103,000,000 or 10,000,000-26,500,000 in order to optimize delivery of the abamectin and maintain the application rate of 3 to 90 g per hectare of abamectin. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In addition, Clemson teaches that abamectin is diluted in 2 gallons of water/1000 sqft and then incorporated with 0.1 inch irrigation/A. When converted, this is equivalent to about 10,605,400 g/acre [using the conversions 3,785 g = gal; 1000 sqft = 0.023 acre; 0.1 inch/acre = 2,715 gal], which is within the claimed range. It would have been obvious to have looked to the teachings of Clemson to determine the appropriate amount of water to use with the abamectin of Guyon et al., as Guyon are silent as to the water rate. One of ordinary skill in the art would have predicted success in looking to Clemson, as Clemson is also directed to application of abamectin and water to soil.
Guyon et al. teach the inclusion of a surfactant, which may be non-ionic, and that in the composition the ratio of the surfactant to the pesticide is 0.08-0.5 (e.g. paragraphs 0090 and 0099). Guyon et al. also teach the abamectin is applied at a rate of from 3 to 90 g per hectare (g/ha) (i.e. 1.21 to 36.42 g/acre) (e.g. paragraph 0141). This would result in a rate of surfactant application of 0.24-45 g/hectare (i.e. 0.18-9.1 g/acre), which overlaps with the claimed range (e.g. paragraph 0092, 0139, 0141). While Guyon et al. teach the inclusion of a surfactant in the claimed application rate, they do not teach the surfactant is polysorbate. This is made up for by the teachings of Keiper et al.
Keiper et al. teach a formulated composition suitable for controlling or preventing pathogenic damage in a plant comprising (A) at least one solid active ingredient having a water solubility of at most 100 μg/litre at 25° C. at neutral pH, in an amount of at least 1 weight %, based on the total weight of the formulated composition, (B) at least one non-ionic surface active compound having a hydrophile-lipophile balance (HLB) of between 10 and 18, one or more customary formulation auxiliaries, and water (e.g. abstract). Keiper et al. teach that the non-ionic surfactant is preferably a polyoxyalkylene-sorbitan ester, including TWEEN 80 or TWEEN 20 (i.e. polysorbate 20 or polysorbate 80) (e.g. paragraph 0049, 0112; Examples). Keiper et al. teach that their formulation provides a pesticide formulation that eliminates the need for organic solvents as a carrier, on the one hand, and exhibits optimal availability to the site to which it is applied (e.g. paragraph 0002-0006). Keiper et al. also teach that, “[i]t has been found that use of one or more adjuvants with an aqueous formulated composition comprising a pesticide, especially abamectin, reduces the pesticide residue levels on a plant. The adjuvants referred to herein are those commonly used in the agriculture, of which a skilled person would know. However, the present invention especially concerns adjuvants having non-ionic surfactants and/or oil components, and are commonly known as non-ionic adjuvants. An adjuvant generally tends to be a mixture or blend of components.”.
Regarding Claims 1 and 3, it would have been obvious to one of ordinary skill in the art to have selected the polysorbate nonionic surfactant of Keiper et al. for use in the compositions of Guyon et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both Guyon and Keiper are directed to pesticide formulations comprising abamectin, and one of ordinary skill would have been motivated in order to provide the benefits of improves solubility and availability without the need for solvents, as taught by Keiper et al.
Regarding Claims 5, 12, 19, 45, and 47-49, Guyon et al. teach that in the composition the ratio of the surfactant to the pesticide is 0.08-0.5 (e.g. paragraph 0099). Guyon et al. also teach the abamectin is applied at a rate of from 3 to 90 g per hectare (g/ha) (i.e. 1.21 to 36.42 g/acre) (e.g. paragraph 0141). This would result in a rate of polysorbate application of 0.24-45 g/hectare (i.e. 0.18-9.1 g/acre), which overlaps with the claimed ranges (e.g. paragraph 0092, 0139, 0141). In the case where 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) (MPEP 2144.05.I). In addition, Guyon et al. teach that “the rate and frequency of use of the pesticide particles in a suitable from on the plant may vary within wide limits and depends on the type of use, the specific pesticide, the nature of the soil, the method of application (pre- or post-emergence, etc.), the plant or pest to be controlled, the prevailing climatic conditions, and other factors governed by the method of application, the time of application and the target plant”. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to vary the application rates through routine optimization as suggested by Guyon.
Regarding Claims 8, 10, 15, 17, Guyon et al. exemplify compositions where abamectin is the only pesticide (e.g. Examples).
Regarding Claims 23 and 25, Guyon et al. teach the use of a center pivot irrigation system or sprinklers (e.g. paragraph 0139).
Regarding Claim 26, Guyon et al. teach application to soil or a planting site (i.e. farm or crop fields) (e.g. paragraph 0077, 0126, 0127, 0138-0139).
Regarding Claims 27-33, Guyon et al. teach that the nematode species may be Meloidogyne species, for example Meloidogyne incoginita and Meloidogyne javanica, and Pratylenchus spp., for example Pratylenchus neglectans and Pratylenchus penetrans (e.g. paragraph 0055). As evidenced by Mitowski, the most widespread and economically important species are M. incognita, M. Javanica, M. arenaria, M. hapla, M. chitwoodi and M. gramincola (e.g. page 4).
Regarding Claims 34-36, Guyon et al. are silent as to the “nematode count”. However, Guyon et al. teach application to the soil for the control of soil-dwelling pests (e.g. abstract; paragraph 0077). It would have been obvious to one of ordinary skill in the art at the time of filing to apply the composition to any soil comprising the pests, including 260, 678, or 743 per 250g of dry soil. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claims 37-40, Guyon et al. teach that the method further comprises diluting a concentrate composition, which may be a suspension concentrate (e.g. paragraphs 0059, 0099, 0122). Guyon et al. are silent as to the concentrate composition in terms of abamectin per gallon. However, it would have been obvious to one of ordinary skill in the art at the time of filing to vary a concentrate composition, such that the final application concentration was still within the ranges of Guyon et al. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 41, Guyon et al. are silent as to the application frequency. Keiper et al. teach two applications 7 days apart (e.g. paragraph 0153). In addition, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the pesticidal composition as needed to treat the soil. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claims 42-44, Guyon et al. teach efficacy rates of 45.2%-73.5%, which are within the claimed ranges. In addition, as the method of Guyon in view of Clemson and Keiper et al. comprises applying the claimed composition comprising the claimed components in the claimed amounts, then the reduction in root-knot nematodes would necessarily occur. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 45, Keiper et al. teach that the weight ratio of surface active compound (B) to active ingredient (A) is in the range of from 1.5 to 15.0, which overlaps with the claimed range (e.g. Claim 1). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Arguments
Applicant's arguments filed 1/12/26 have been fully considered but they are not persuasive.
Applicant argues that Guyon disclose “the ratio of pesticide to surfactant should be 0.08-0.5, i.e., more pesticide than surfactant, and in contrast Keiper discloses “surface active compound (B) to active ingredient (A) is in the range of from 1.5 to 15.0,” (Kieper, claim 1) i.e., less pesticide than surfactant”.
This is not found persuasive. Applicant has not explained how the surfactant to pesticide ratios of Guyon and Keiper differ from the instant claims, or why they could not be combined. Claim 1 encompasses compositions where either the surfactant or the pesticide may be present in a higher amount (5-30 g/acre abamectin and 1-1000 g/acre polysorbate).
Applicant further argues that Guyon et al. require two surfactants. This is not found persuasive. First, Guyon teaches “In an embodiment, at least two surface active compounds (designated herein as (β)) are present in the pesticidal composition” (e.g. paragraph 0097). And further teaches, “In the event, two surface active compounds (β)(ii) are present…”. Guyon also refers to single surfactants (e.g. paragraphs 0090-0096). Guyon therefore discloses embodiments which do not comprise a mixture of surfactants. Nevertheless, Guyon is not relied upon for teaching the claimed surfactant, as this is taught by Keiper. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Guyon et al. teach that “the rate and frequency of use of the pesticide particles in a suitable from on the plant may vary within wide limits and depends on the type of use, the specific pesticide, the nature of the soil, the method of application (pre- or post-emergence, etc.), the plant or pest to be controlled, the prevailing climatic conditions, and other factors governed by the method of application, the time of application and the target plant”.
Applicant further argues that Clemson refers to an emulsion concentration and not a suspension concentrate, as in Guyon. Applicant further argues that the application rate of Clemson is 30.3 g/acre, which is outside of the claimed range.
This is not found persuasive. Guyon et al. also teach the inclusion of an emulsion concentrate (e.g. paragraphs 0060-0061). It would have been obvious to have looked to the teachings of Clemson to determine the appropriate amount of water to use with the abamectin of Guyon et al., as Guyon are silent as to the water rate. One of ordinary skill in the art would have predicted success in looking to Clemson, as Clemson is also directed to application of abamectin and water to soil. Applicant has not explained how the water rate of Clemson would not also be applicable to Guyon et al. Regarding the abamectin concentration, this is already taught by Guyon as described supra. In addition, a prima facie case of obviousness exists where 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 the same properties. In the instant case, 30.3 g/acre abamectin and 30 g/acre are expected to have the same root-knot controlling abilities.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The claimed features are taught in the prior art by Guyon et al., Clemson, and Keiper et al., as described supra. Guyon et al. teach that the method comprises applying through an irrigation system (e.g. paragraph 0139). Guyon et al. teach that “the rate and frequency of use of the pesticide particles in a suitable from on the plant may vary within wide limits and depends on the type of use, the specific pesticide, the nature of the soil, the method of application (pre- or post-emergence, etc.), the plant or pest to be controlled, the prevailing climatic conditions, and other factors governed by the method of application, the time of application and the target plant”. Clemson teaches that abamectin is diluted in 2 gallons of water/1000 sqft and then incorporated with 0.1 inch irrigation/A. When converted, this is equivalent to about 10,605,400 g/acre [using the conversions 3,785 g = gal; 1000 sqft = 0.023 acre; 0.1 inch/acre = 2,715 gal], which is within the claimed range. And, Keiper et al. teach that, “[i]t has been found that use of one or more adjuvants with an aqueous formulated composition comprising a pesticide, especially abamectin, reduces the pesticide residue levels on a plant. The adjuvants referred to herein are those commonly used in the agriculture, of which a skilled person would know. However, the present invention especially concerns adjuvants having non-ionic surfactants and/or oil components, and are commonly known as non-ionic adjuvants”, which is preferably polysorbate 20 or polysorbate 80. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The claimed features are taught in the prior art by Guyon et al., Clemson, and Keiper et al., as described supra.
Accordingly, the rejections are maintained.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619