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
Claim Status
Claims 1, 3 and 5-6 remain present in this application.
Upon Amendment entrance, Claim 7 is cancelled.
Claims 1, 3 and 5-6 are pending investigation.
Priority
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Examiner acknowledges the translation of Foreign priority documents submitted 09/16/2025.
Information Disclosure Statements
Previous Examiner on case acknowledged one (1) IDS submitted on 10/05/2022.
Drawings
Examiner acknowledged the acceptance of the drawings on Office Action of 10/09/2024.
Examiner Responses to Amendments/Arguments
The issues raised in the Office Action are addressed below:
I. Response to Priority Documents–
Examiner acknowledges the submission of the he certified English translation of the priority document TW 109130409 filed in Taiwan on 09/04/2020.
Effective Filing Date is acknowledged as 09/04/2020.
II. Claim Amendments –
Upon amendment entrance, Claim 1 was modified with an added limitation “A method of killing pests, comprising administering an effective amount of a single active compound of a fumigant composition for pest control into a closed space, wherein at least one pest will be killed in the space; wherein the single active compound is selected from the group consisting of 2,5-dimethylfuran, 2,5-dimethylthiophene, 2- methylfuran and 2-methylthiophene, and an effective amount of the fumigant composition for pest control is more than 18 mg per thousand cubic centimeters of the space.”
III. Response to Claim Rejections –
A. Response to First U.S.C. 102 Rejection:
Claims 1, 3 and 6 rejected under 35 USC 102(a)(1) as being anticipated by Lin et al. (Fungicidal Activity of Volatile Organic Compounds Emitted by Burkholderia gladioli Strain BBB-01, hereinafter "Lin").
In view of Applicant’s amendment, since the priority date of the Instant Application is now September 4, 2020, which is earlier than the publication date of Lin (January 31, 2021), the rejection under 35 U.S.C. 102(a)(1) has been withdrawn.
B. Response to Second U.S.C. 102 Rejection:
Claims 1, 3 and 5-6 rejected under 35 USC 102(a)(1) and 102(a)(2) as being anticipated by Berna et al. (US 2019/0208777 Al, hereinafter "Berna").
Berna does not disclose, teach or suggest “wherein the single active compound is selected from the group consisting of 2,5-dimethylfuran, 2,5-dimethylthiophene, 2- methylfuran and 2-methylthiophene, and an effective amount of the fumigant composition for pest control is more than 18 mg per thousand cubic centimeters of the space.”
The closest inference of teaching for the compound to be released in an enclosed space is in para. [0117], “The appropriate concentration of the thio compound will vary depending on where the compound is to be released and the nature of the formulation. For example, release in an enclosed space may require a lower concentration of thio compound. In contrast, release into an open area may require a higher concentration of thio compound. As another example, the concentration of the thio compound is likely to be higher in a slow release formulation compared
to an aerosol for spraying in a confined space.”
This does not suggest or teach the added limitation of Claim 1: an effective amount of the fumigant composition for pest control is more than 18 mg per thousand cubic centimeters of the space. Therefore, in view of the above, the 35 USC 102 rejection on Claims 1, 3 and 5-6 is withdrawn.
C. Response to First U.S.C. 103 Rejection:
Claims 5 and 7 rejected under 35 USC 103 as being unpatentable over Lin, in view of Berna, and further in view of Rouseff (US 2010/0074972 Al, hereinafter "Rouseff').
In view of Applicant’s amendment, since the priority date of the Instant Application is now September 4, 2020, which is earlier than the publication date of Lin (January 31, 2021), the rejection under 35 U.S.C. 103 has been withdrawn.
In addition, in view of Applicant’s amendment with cancellation of Claim 7, the 35 U.S.C. 103 rejection is withdrawn.
D. Response to Second U.S.C. 103 Rejection:
Claim(s) 7 rejected under 35 U.S.C. 103 as being unpatentable over Berna and in view of R. Rouseff in US 2010/0074972 Al (pub’d 03/25/2010; hereinafter “Rouseff”).
In view of Applicant’s amendment, with cancellation of Claim 7, the 35 U.S.C. 103 rejection is withdrawn.
Though the 35 USC § 102 and 103 rejections were withdrawn because Applicant amended independent Claim 1 and cancelled Claim 7, the addition of a further limitation, “wherein the single active compound is selected from the group consisting of 2,5-dimethylfuran, 2,5-dimethylthiophene, 2- methylfuran and 2-methylthiophene, and an effective amount of the fumigant composition for pest control is more than 18 mg per thousand cubic centimeters of the space” has necessitated a new rejection.
Applicant’s amendment necessitated the new ground(s)
of rejection presented in this Office action.
IV. New Rejection –
The 35 USC rejections withdrawn were because Applicant amended independent Claim 1 with the addition of a further limitation, “wherein the single active compound is selected from the group consisting of 2,5-dimethylfuran, 2,5-dimethylthiophene, 2- methylfuran and 2-methylthiophene, and an effective amount of the fumigant composition for pest control is more than 18 mg per thousand cubic centimeters of the space.” This has necessitated a new rejection.
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 (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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Joint Inventors
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.
Claim(s) 1, 3, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over J. Tiebes in US 2002/0013326 Al in view of PubChem in CID 12266, 2,5-Dimethylfuran (hereinafter “PubChem”, which has a creation date of 03-26-2005).
With respect to Claim 1, Tiebes discloses a method of killing pests comprising administering an effective amount of a single active compound of a fumigant composition for pest control (use as pesticides, para. [0001]) into a closed space, wherein at least one pest will be killed in the space (para. [0002] which similar to the Instant specification - pg. 3, lns. 4-10);
an effective amount of the fumigant composition for pest control is more than 18 mg per thousand cubic centimeters of the space (para. [0226]). The range is listed in the prior art as “To this end, treatment can be carried out prior to sowing or planting (for example by special seed coating techniques, by seed dressings in liquid or solid form or by seed box treatment), during sowing or planting or after sowing or planting by special application techniques (for example seed row treatment). Depending on the application, the amount of active compound applied can vary within a relatively wide range. In general, the application rates are between 1 g and 10 kg of active compound per hectare of soil area.”
Through dimensional analysis, 18 mg per cubic centimeters is 1.8 kg per hectare. Based on these factors by the claim language for Claim 1, the prior art range of 1g – 10 kg per hectare includes the range of the Instant Claimed range of “above 18 mg per cubic centimeters.”
With respect to Claim 3, Tiebes continues teaching wherein the fumigant composition for pest control further comprises a pesticidally acceptable reagent (carriers and excipients; pg. 56, Claims 7-8).
With respect to Claim 5, Tiebes discloses several formulation including wherein the fumigant composition for pest control is an emulsion (paras. [0201]-[0202] and [0232]).
With respect to Claim 6, Tiebes teaches wherein the pests are selected from a group consisting of insects, mites and nematodes (pg. 56, Claims 7-8). This links the prior art to Claim 1 since one of the pathogens listed in the prior art is seen in the Instant specification (pg. 3, lns. 4-10; rice weevil; S. oryzae). The prior art and the Instant Specification consider the above specie a pest. Thus the art reads on the claims.
Tiebes fails to teach the Claim 1 wherein the fumigant composition (pg. 1) for pest control consists of 2,5-dimethylfuran (pg. 1, summary of chemical compound).
With respect to Claim 1, PubChem teaches wherein the fumigant composition (pg. 1) for pest control consists essentially of 2,5-dimethylfuran (pg. 1). Thus, based on PubChem is known in the art that 2,5-dimethylfuran is used in the application of the pesticide to plants, insects of target, and the area affected by insects.
It would therefore be obvious to one skilled in the art to combine PubChem & Tiebes - disclosing the limitations of Claim 1 - since the combination teaches the components related to the utility of a pest-killing composition. Tiebes also teaches one in the art would have been motivated by the formulation examples (such as those seen in paras. [0227]-[0233], Claim 10 with capability for variation), “the active compounds can therefore also be introduced…via below-ground and above-ground parts of plants (root, stem, leaf), when the active compounds are applied in liquid or solid form to the immediate surroundings… (for example granules in soil application, application in flooded rice fields).”
This used with the rationale of KSR Prong B, one would be motivated to substitute the methods and formulations of Tiebes with the compound in PubChem of 2,5-Dimethylfuran snce both prior arts share the same utility for their preparation, to compositions comprising them, to the use of compounds for controlling pests, in particular insects, mites, insects of target, and the area affected by insects.
.
Conclusion
Claims 1, 3, 5 and 6 are rejected.
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 Josmalen M. Ramos-Lewis whose telephone number is (571)272-0084. The examiner can normally be reached M-F 9:30-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A. Brooks can be reached at (571) 270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Josmalen M. Ramos-Lewis, Ph.D.
Patent Examiner
Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621