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
Election/Restrictions
The restriction requirement made 06/27/2024 was made final in the office action of 04/18/2025.
At examiner’s discretion, search and examination has been expanded to include useful plants selected from the order Solanaceae (claim 10), Cucurbitaceae (claim 11), Asparagaceae or Alliaceae (claim 12), perennial plants selected from coffee, banana, citrus, grape vine (claim 13), and soybean and cotton (claim 14).
Search and examination has also been expanded to include the compound wherein G is H (spiropidion dione).
Claim 5 is rejoined as claim 6, which is currently under examination, is dependent on claim 5.
Status of Claims
Claims currently pending are claims 1, 5-14, and 16-17.
Claim currently withdrawn is claim 16.
Claims currently under examination are claims 1, 5-14, and 17.
Response to Arguments
Arguments presented in the remarks received 10/16/2025 are persuasive and the 103 rejection over Bucholz made in the office action of 04/18/2025 has been reconsidered and withdrawn. The 103 rejection over Andre has been reconsidered and modified.
Modified Rejections
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.
KSR Rationale
The MPEP in section 2143, subsection I gives examples of Rationales for supporting a conclusion of obvious. These rationales are non-exhaustive and include (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Claim(s) 1, 5-9 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andre WO2010//066780) in view of Flint (University of California Agriculture and Natural Resources, Pests in Gardens and Landscapes – Whiteflies, url=https://ipm.ucanr.edu/PMG/PESTNOTES/pn7401.html, accessed 04/10/2025, last revised 09/2015).
Claim 1 is drawn to a method for controlling a pest, comprising: applying an active ingredient (shown below) to a growth substrate of a crop of a useful plant; wherein the growth substrate is soil; and wherein the applying is by drenching of the active ingredient.
Claim 5 is drawn to an embodiment wherein the compound is applied as a composition further comprising a diluent and/or carrier.
Claim 6, dependent from claim 5, specifies a composition wherein the composition comprises 20 to 60 grams of the active ingredient compound per 100 L.
Claim 7 specifies the compound wherein G is -C(O)OC2H5.
Claim 8 specifies the pest is selected from Homoptera (aphids, white flies).
Claim 9 specifies pests selected from white flies and aphids.
Claim 17 specifies that the drenching of the active ingredient is applied at a rate from about 10 mg ai/plant to about 400 mg ai/plant.
Regarding claims 1, 5, and 7-9, Andre on p. 167-168, Example B16 teaches administering compounds P1.29 and P2.33, diluted into test solutions, to pepper plants infested with Myzus persicae (green peach aphid). Andre additionally states “Compounds…P1.29…P2.33 show an activity of greater or equal to 80% against Myzus persicae [green peach aphids]”.
Compounds P1.29 and P2.33
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Regarding the limitation “wherein the applying is by drenching of active ingredient compound into the soil”, Andre on p. 63 l. 17-24 contemplates methods of application including “drenching the locus of the plants with a liquid composition” so that the “active ingredient can reach the plants via the root system”.
Regarding the diluent of claim 5, Andre on p. 57, l. 14-23 discusses suitable solvents including water.
Regarding claims 6 and 17, Andre on p. 63, l. 8-15 contemplates methods of applying a compound in rates of concentration between 0.1 and 1000 ppm or 1 to 2000 g of active ingredient per hectare.
Application to the soil is well known within the art as discussed by Flint. Flint in sec. Insecticide Sprays teaches of the insecticide imidacloprid. This insecticide is applied to the soil (“The soil-applied systemic insecticide…). Considering that Andre contemplates soil-application, it stands that one of ordinary skill in the art would find it obvious to apply the compounds to the soil of the elected plant.
Further the MPEP sec. 2144.05, subsection II states:
The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. 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). Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Applicant has not shown that the specific concentrations and rates of application are critical to unexpected effects discussed in Table 2 of the instant specification. The concentrations and rates of applications are therefore variables that one of ordinary skill in the art would easily be able to modify in efforts to optimize the effects.
Andre’s Example B16 teaches compounds P1.29 and P2.33 as effective against green peach aphids. Andre contemplates soil application and water solvents. Andre further contemplates concentrations and rates of applications. Flint affirms that the method of applying pesticides directly to the soil of a plant is a common method known within the art.
Therefore, it would have been prima facie obvious at the time of the effective filing date for one of ordinary skill in the art to have applied the compounds P1.29 and P2.33 via a drenching method diluted in water in concentrations and rates of application with a reasonable assumption of success. One of ordinary skill in the art would be motivated to apply the compounds via drenching as Andre teaches that compounds are effective pesticides against aphids, Andre contemplates water a diluent, and because it is well known in the art to apply pesticides to the soil of a plant (KSR Rationale A).
New Rejection
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 1, 6-14 and 17 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for compounds wherein G is -C(O)OC2H5, does not reasonably provide enablement for compounds wherein G is H. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The following Wands Factors have been considered if not explicitly discussed:
(A) The breadth of the claims, (B) The nature of the invention, (C) The state of the prior art, (D) The level of one of ordinary skill, (E) The level of predictability in the art, (F) The amount of direction provided by the inventor, (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Breadth of the Claims
The claims are drawn to a method of controlling pests via administering a pesticide of compound structure (I) to the soil of a plant in a drenching method.
Nature of the Invention
The invention involves administering a pesticide to control pests.
Guidance provided and Working Examples
The instant specification discusses the advantages of applying the compound wherein G is -C(O)OC2H5 on p. 19, Table 2. The compound, spiropidion, consistently shows a higher % mortality than spirotetramat, a commercial standard pesticide similar to the instant compound. The critical differences between spirotetramat and the instant compounds is the substituent pattern on the phenyl ring and the lack of methyl group on the nitrogen.
Instant compounds:
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Spirotetramat
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However, the instant specification only discloses results of administering spiropidion (G = -C(O)OC2H5). The only disclosure of spiropidion dione (G = H) is as a downstream product recovered. See p. 18, Table 1 discussion of the instant specification.
Outside of the instant specification, spiropidion is discussed in Andre (cited above) as an effective pesticide against green aphids. However, efficacy against white flies and other pests has not been shown by Andre.
Level of Predictability
There is sufficient information within the instant specification to enable one of ordinary skill to use spiropidion with a reasonable degree of predictability. However, this is not enabling for spiropidion dione. The art is also relatively silent on the efficacy of spiropidion dione against other pests and on other plants. The only discussion within the art that would enable methods involving spiropidion dione is found in Andre. Therefore, there is a significant level of unpredictability in regards to practicing the method claimed using spiropidion dione.
As claims 5-14 and 17 are dependent on claim 1, they are also rejected.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUISALBERTO GONZALEZ whose telephone number is (571)272-1154. The examiner can normally be reached M-F 8:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.G./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624