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 .
Priority
This application is a national stage application under 35 U.S.C. § 371 of International Application No. PCT/IB2020/052261, filed 03/13/2020, which claims the priority benefit of INDIA Application No. 201931009832, filed 03/13/2019.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 08/25/2021, 09/01/2022, 11/05/2024, 08/18/2025, and 12/29/2025 were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of claims
Claims 1, and 5-7 are pending and currently under examination. Claims 1, and 5-7 have been are amended. Claims 2-4 and 8-10 have been cancelled by applicant without prejudice or disclaimer.
Applicant’s arguments, filed 04/23/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. They constitute the complete set presently being applied to the instant application.
The obviousness rejection below is repeated from the 10/23/2024 Office Action and modified in order to address the most recent amendments.
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.
Claim 1 is 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. The open ended limitation of “comprising” in the preamble of claim 1, line one to a closed limitation term of “consisting” constitutes new matter as per MPEP 2111.03 and MPEP 2163.05. The result of using the closed limitation term “consisting” is a contradiction to the examples presented in the specification which use “comprising” which allows for other ingredients beyond what is disclosed in the claims. For example, the limitations of claim 1 currently lists “an aversive agent and at least one insecticide selected from the group consisting of flonicamid, thiamethoxam, imidacloprid, and combinations thereof; wherein said aversive agent is denatonium benzoate” whereas an aspect of an insecticidal composition from the specification lists i) an aversive agent, ii) at least one insecticide AND iii) agrochemically acceptable excipients (Specification, pg.. 5, lines 19-24). Here the agrochemically acceptable excipients, water as an example would fall outside the scope of the claims. Similarly, the narrower scope of limitations of claim 1 using the “consisting” terminology would be problematic with dependent claim 5 which uses “comprising” terminology and would allow other ingredients beyond what claim 1 was limited to.
This rejection may be overcome by amending claim language of claim 1 to use “comprising” terminology.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Dependent claim 5 uses the open ended claim limitation term of “comprising” whereas independent claim 1 from which claim 5 depends uses the closed limitation of “consisting” which does not allow for the inclusion of other acceptable excipients. See MPEP 2111.03 and MPEP 2173.05(h). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Claim 1 is rejected under 35 U.S.C.103 as being unpatentable over Asrar (WO 02/30201 A2) in view of Ichino (US PAT. 6468554 B1), further in view of Ajit (US 20130161222 Al), and further in view of Gullino (WO 2016009279 A2).
Regarding claim 1, Asrar teaches the control of plant pests and particularly to the provision of protection against insect damage to seeds and plant parts by the treatment of plant
seeds with the combination of pesticides; in particular, the invention teaches to the control of insect damage to seeds and plant parts by the treatment of plant seeds with a combination of thiamethoxam with pyrethrins and/or synthetic pyrethroids (insecticides) (Asrar, page 2). The reference teaches any plasticizers may be used; however, useful plasticizers include polyethylene glycol, glycerol, butylbenzylphthalate, glycol benzoates and related compounds (Asrar, page 26).
This reference does not explicitly teach denatonium benzoate in composition with the
insecticide.
This deficiency is remedied by Ichino (US 6468554) which teaches the utilization of denatonium benzoate as a bitter substrate that protects against gnawing by pests, a Isa known as an "aversive agent," that is “... imparted in a plastic matrix by distributing a measured amount of
denatonium benzoate throughout the plastic matrix formed by melting plastic material, imparting a bitter taste plastic matrix effective to provide protection from damage due to chewing animals, and extruding the plastic matrix to form a protective sheath," (Ichino, Abstract).
It would have been prima facie obvious at the time of filing to one of ordinary skill in the a rt to modify the composition of Reference N to include the limitation of Reference A. One would have been motivated to do so because denatonium benzoate is known as an aversive agent that is effectively utilized in pest repellents and it is a "benzoate" that is a related compound that is taught by Asrar. One would have had a reasonable expectation of success because this benzoate has proven useful as a pest repellent and would be thought to be successful in combination with thiamethoxam which has been utilized in combination with plasticizers.
Claims 5-7 are rejected over Asrar in view of Ichino as applied to claims 1 and 3 and further in view of Ajit (US PAT. 20130161222 Al) and Gullino (WO 2016009279 A2).
The teachings of Asrar and Ichino are set forth previously herein and are incorporated by
reference.
However, the above references fail to explicitly teach an agro-chemically acceptable excipient that may be used in addition to the insecticidal combination of an insecticide and an aversive agent.
Ajit explicitly teaches the utilization of denatonium benzoate as an aversive agent
within a solution designed to act as an insecticide (Ajit, Abstract). Ajit also teaches a product with 40% solution of denatonium benzoate that is utilized as an insecticidal combination, wherein the composition of the insecticide is 90% Paraffin Oil and 10% of 40% solution of
denatonium benzoate of the overall insecticide (Ajit, Abstract). In the case where the claimed
ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Gullino teaches how "advantageous" it is to include one or more surface active agents in insecticide-containing layer in addition to the insecticide-containing composition which
includes denatonium benzoate as an aversive agent (Gullino, Description of the Drawings).
Therefore, the addition of including other surface agents that are useful in insecticide-containing layers fits within agro-chemically acceptable excipients. In combination, the references teach the claimed invention.
It would have been prima facie obvious at the time of filing to one of ordinary skill in the art to modify the composition rendered obvious by the teachings of Asrar and Ichino to include the limitation of Gullino in view of the teachings of Ajit. One would have been motivated to do
so because the teaching of denatonium benzoate as an aversive agent within an insecticide that
maintains a product with 40% solution of denatonium benzoate that is utilized as an insecticidal
combination, wherein the composition of the insecticide is 90% Paraffin Oil and 10% of 40% solution of denatonium benzoate of the overall insecticide, would lead one of ordinary skill in the art to combine the teachings of these references since one would have had a reasonable expectation of success because an aversive agent utilized as a surface active agent within an insecticide-containing layer shows a likelihood of success for the combination to result in successful. The combination of these references would have resulted in an insecticidal composition that consisted of at least one insecticide in addition to denatonium benzoate acting as an aversive agent which is a known pest and insect deterrent. One would have had a reasonable expectation of success because thiamethoxam acts as a known insecticide that is used in combination with aversive agents which have demonstrated effective in terms of alleviating pest populations.
Response to Arguments
Applicant's arguments filed 04/23/2025 have been fully considered but they are not persuasive.
Applicant argues there is no disclosure or suggestion of a combination that consists of at least one insecticide selected from the group consisting of flonicamid, thiamethoxam, imidacloprid, and combinations thereof; and denatonium benzoate.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the IDS prior art of Massimo (WO 2017/202882 A1) discloses the compounds of imidacloprid and denatonium benzoate wherein they are formulated together in an embodiment.
Applicant further argues that none of these references (Asrar (WO2002/30201), Ichino (US PAT 6468554), Patel (US 0130161222) and Rettori (WO 2016009279)) teach a combination that only includes the two components as features in claim 1.
Examiner notes the IDS prior art of Massimo (WO2017/202882A1) discloses a formulation which includes only one compound of an insecticide agent (imidacloprid) and one compound of aversive agent of (denatonium benzoate) wherein they are formulated together in a single embodiment.
Conclusion
All claims are rejected, no claims are 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 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNESTO VALLE JR whose telephone number is (703)756-5356. The examiner can normally be reached 0730-1700 M-F EST, 1st Friday off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam C Milligan can be reached at 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.V./Examiner, Art Unit 1623
/SAMANTHA L SHTERENGARTS/Primary Examiner, Art Unit 1623
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