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
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Claim currently withdrawn is claim 16.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.
Withdrawn Rejection
Arguments presented in the remarks received 05/04/2026 regarding the 112(a) scope of enablement rejection are persuasive. The rejection has been withdrawn.
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, 5-14 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.
Claims 10-14 are drawn to specific useful plants from the orders Solanaceae (claim 10), Cucurbitaceae (claim 11), Asparagaceae or Alliaceae (claim 12), perennial plants including coffee, banana, citrus, or grape vine (claim 13), soybean plant or cotton (claim 14).
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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138
314
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100
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Greyscale
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.
Regarding claims 10-14, Andre on p. 50, l. 14-25 contemplates administration to a number of target crops including tomatoes, potatoes, asparagus, cotton, pumpkins, cucumbers, coffee, and onions.
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.
The specific concentrations and rates of application are have not been shown to be critical to the unexpected effects discussed in Table 2. 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).
Response to Arguments
Applicant’s arguments regarding the 103 rejection have been considered but are not persuasive.
Applicant points to In re Gurley and argues that Andre teaches away from the instant claims in that the examples provided in the Andre reference apply only to “foliar application” but not drench application. Applicant writes “To the extend that Example B16 would lead a person of ordinary skill in the art toward using compounds P1.29 or P2.33, they would be led toward a method using foliar application. Indeed the more relevant example to consider is B13, which describes drench activity against Myzus persicae. Ten compounds are disclosed as showing an activity of over 80% at a concentration of 25 ppm…Notable, compounds P1.29 and P2.33 are not among the compounds mentioned.” Applicant continues “Given that ten compounds are disclosed as having threshold activity in B13, and that the same compounds are active in other contexts, it is unclear why a person of ordinary skill in the art would look to use P1.29 or P2.33 in a drench application. The cited reference does disclose that other compounds meet threshold activity. This amounts to teaching away.”
The MPEP section 2145(X)(D)(1) states the following:
“A prior art reference that "teaches away" from the claimed invention is a significant factor to be considered in determining obviousness. However, "the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
Furthermore, ‘the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….’ In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).”
Applicant’s remarks do not indicate how the teachings of Andre “teach away” from using the compounds P1.29 and P2.33 in a drenching method. Simply because Andre lacks the administration of P1.29 and P2.33 in a drenching fashion but includes drenching applications of other compounds does not teach away from the instant claims. The examples applicant points to are effectively preferred embodiments.
Applicant points to the In re Soni and says “Here the specification…provides meaningful evidence that compound P1.29 (spiropidion) outperforms the market standard spirotetramat - evidence that must be given weight…The evidence of secondary considerations is sufficient to overcome the alleged prima facie case of obviousness.”
It is not clear how spirotetramat relates to the comparison of the instant claims to Andre’s compounds P1.29 and P2.33. The reference compounds are not spirotetramat.
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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/LUISALBERTO GONZALEZ/Examiner, Art Unit 1624
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