DETAILED ACTION
STATUS OF THE APPLICATION
Receipt is acknowledged of Applicants’ Amendments and Remarks, filed 18 September 2025, the matter of Application No. 17/435,003. Said documents have been entered onto the record. The Examiner notes the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-3, 5-9, and 13-14, and 21-23 are pending.
Claim 4 has been cancelled.
Claims 21-23 remain withdrawn.
Claim 1 has been amended.
Thus, claims 1-3, 5-9, and 13-14 represent all claims currently under consideration.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 18 September 2025 has been entered.
Objections and/or Rejections and Response to Arguments
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Objections and/or Rejections) or newly applied (New Objections and/or Rejections, Necessitated by Amendment or New Objections and/or Rejections, NOT Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 1 is objected to because of the following informalities:
In lines 1-2, “…at least one compound of formula (I)-2…” should read “…the compound of formula (I)-2…” because formula (I)-2 has no variables and thus represents a single compound.
In line 8, “…C18:1fatty acids…” should read “…C18:1 fatty acids…”
In line 8, “…and/or…” should read “…and…”
Claim 2 is objected to because of the following informalities:
In line 3, “…and/or…” should read “…and…”
Claim 6 is objected to because of the following informalities:
The first words describing the process steps (a)-(d) should not be capitalized.
Appropriate correction is required.
Claim Interpretation
Claim 6 recites “…obtainable by a process…” in lines 3-4. This phrase is being interpreted as a product-by-process within the process claim. MPEP § 2113(I) states that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Therefore, the patentability of claim 6 is determined based on the product itself (i.e., the compound combination) and will be interpreted as “The active compound combination according to claim 1, wherein the one or more fatty acids or derivatives thereof comprises one or more metal salts of fatty acids.”
Claim Rejections - 35 USC § 103
In the recent response filed 18 September 2025, Applicant’s amendment to claim 1 incorporated the limitation of previous claim 4 (now cancelled), wherein the one or more fatty acids or derivatives thereof comprises two or more fatty acids selected from C16:0 fatty acids, C16:1 fatty acids, C18:0 fatty acid, C18:1 fatty acids, C18:2 fatty acids, and C18:3 fatty acids, and/or salts thereof. As a result of this claim amendment, the previous prior art rejections from the previous Office Action mailed 28 April 2025 were withdrawn, and new 103 claim rejections are detailed herein which rely on the previously cited prior art of Fischer et al. and Gaudet et al., whose combined teachings adequately meet the limitations of amended claim 1 and its dependents. The previously issued claim rejections can be found on pages 5-9 of the previous Office Action mailed 28 April 2025.
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 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.
Claims 1-3, 5-9, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Fischer et al. (US 2010/0311677 A1; PTO-892 of 11-19-2024; hereinafter “Fischer”), in view of Gaudet et al. (US 4,826,678 A; IDS of 08-30-2021; hereinafter “Gaudet”).
Regarding claim 1, Fischer teaches active ingredient combinations having insecticidal and acaricidal properties (Fischer; Title). Of particular note, Fischer teaches an active ingredient combination consisting of potassium oleate (compound II-29-22) and a compound termed Ex. No. I-2 that is the identical structure of formula (I)-2 of instant claim 1, as shown below (Fischer; claims 1-3; page 12; paragraphs [0100], [0164], and [0167]-[0168]):
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In addition, Fischer teaches that the active compound combination of Ex. No. I-2 compound detailed above can include one or more further insecticides and/or acaricides for controlling animal pests such as insects and/or acarides (Fischer; paragraph [0020]). Furthermore, potassium oleate is known as the potassium salt of oleic acid, a C18 unsaturated fatty acid (IUPAC name (9Z)-octadec-9-enoic acid; a C18:1 fatty acid).
Fischer fails to teach wherein the one or more fatty acids or derivatives thereof comprises two or more fatty acids selected from C16:0 fatty acids, C16:1 fatty acids, C18:0 fatty acid, C18:1 fatty acids, C18:2 fatty acids, and C18:3 fatty acids, and/or salts thereof, as recited in instant claim 1. However, Gaudet teaches a fatty acid salt enhancement of bacterial insecticide, wherein the activity of a microbial insecticide has been found to be synergistically enhanced by the addition of unsaturated 18-carbon fatty acid salts, and the latter are known to be highly toxic to soft bodied insects including adelgids, aphids, mealybugs, whitefly, pear psylla, rose slugs, etc. (Gaudet; Title; Abstract; Col. 1, lines 53-58). Of particular note, Gaudet teaches an insecticidal composition consisting of (a) an insecticidally effective amount of a microbial insecticide and (b) sodium, potassium, or ammonium salt of an unsaturated fatty acid having 18 carbon atoms selected from the group consisting of oleic acid (IUPAC name (9Z)-octadec-9-enoic acid; a C18:1 fatty acid), linoleic acid (IUPAC name (9Z, 12Z)-octadeca-9,12-dienoic acid; a C18:2 fatty acid), and a mixture thereof in an amount sufficient to be insecticidally effective as well as to synergistically enhance the efficacy of the microbial insecticide (Gaudet; claim 1; Col. 2, lines 23-33). In one embodiment, Gaudet teaches an unsaturated C18 potassium salt A comprising oleate and linoleate (oleate/linoleate = 54.0%:43.0%, the balance being other fatty acids) in combination with the microbial insecticide and in a manner consistent with instant claim 1 (Gaudet; Col. 4, lines 10-15, Example 1). In addition, Gaudet further teaches that by increasing the efficacy of insect control with the addition of a C18 unsaturated fatty acid salt synergist, it may also be possible to reduce the amount of microbial insecticide needed for control and reduce the product cost (Gaudet; Col. 2, lines 14-18).
The prior art as taught by Fischer and Gaudet reside in the closely overlapping technical field of insecticidal compositions comprising fatty acid derivatives with synergistic effects, and are therefore deemed analogous art, as described in MPEP § 2141.01(a). Furthermore, Fischer also teaches that the insecticidal/acaricidal activity of the active compound compositions according to the invention is known to be substantially higher than the sum of the activities of the individual active compounds of said compositions (Fischer; paragraph [0165]). Thus, the skilled artisan would find sufficient motivation to combine the formulation methods of Gaudet with the compound of formula (I)-2 taught by Fischer with a reasonable expectation of success. Thus, the skilled artisan would be sufficiently motivated to substitute the potassium oleate of Fischer with one or more of the unsaturated C18 potassium salts A of Gaudet to arrive at an active compound combination comprising the compound of formula (I)-2 and one or more of the unsaturated C18 potassium salts (including those comprising oleate and linoleate) in an effort to increase the efficacy of insect control, reduce the amount of insecticide needed for control, and reduce the product cost, with a reasonable expectation of success. Such an endeavor would result in the simple substitution of one known element for another to obtain predictable results, as described in MPEP § 2143(I)(B). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the potassium oleate in the active compound combination of Fischer with one or more of the unsaturated C18 potassium salts A of Gaudet to arrive at an active compound combination comprising the compound of formula (I)-2 and one or more of the unsaturated C18 potassium salts (including those comprising oleate and linoleate) and arrive at the claimed invention. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, a pesticide composition with increased efficacy through synergism that can reduce the amount of microbial insecticide needed for control and thus reduce the product cost, as described above.
Regarding claims 2-3 and 5-9 depending from claim 1, Gaudet teaches an unsaturated C18 potassium salt A comprising oleate and linoleate (oleate/linoleate = 54.0%:43.0%, the balance being other fatty acids) in combination with the microbial insecticide and in a manner consistent with instant claim 1 (Gaudet; Col. 4, lines 10-15, Example 1). Furthermore, potassium oleate is known as the potassium salt of oleic acid, a C18 unsaturated fatty acid (IUPAC name (9Z)-octadec-9-enoic acid; a C18:1 fatty acid). Therefore, the use of potassium oleate in the active compound composition reads directly on the limitations of instant claims 2-3 and 5-9, and as with claim 1, it would have been prima facie obvious to combine Fischer and Gaucher to arrive at the claimed invention.
Regarding claims 13-14 depending from claim 1, Gaudet teaches the proportions of the active ingredient of the microbial insecticide (a) to the fatty acid salt (b) may range from about 1:1000 to about 1:1 by weight, preferably about 1:500 to about 1:15 by weight; weight proportions of 1:100 to 1:1 or 1:20 to 1:1 are also possible; more preferred proportions are from about 1:350 to 1:20 (Gaudet; claims 1 and 4-7; Col 3., lines 33-40). These disclosed ranges overlap with the ranges recited in instant claims 13-14. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success of arriving at the instantly claimed active compound combination. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Response to Arguments
Claim Rejections - 35 USC § 103
Applicant's arguments filed 18 September 2025, asserting that the teachings of Fischer and Gaudet do not disclose or make obvious Applicant’s claimed composition, and that the combination of Fischer and Gaudet do not make Applicant’s claimed composition obvious, have been fully considered but they are not persuasive.
Applicant argues the following:
“Applicant respectfully submits that the present obviousness rejection is based on impermissible hindsight and fails to account for the unexpected superiority of the claimed compositions. The prior art, taken as a whole, provides no reason for a person having ordinary skill in the art to have had a reasonable expectation of achieving the magnitude of the synergistic effect demonstrated by the pending claims. As demonstrated by the attached Declaration under 37 C.F.R. § 1.132 from Stefan Herrmann ("Herrmann Declaration"), the presently claimed compositions display dramatically synergistic insecticide results. This declaration provides compelling objective evidence of non-obviousness in the form of unexpected superior properties, as recognized by MPEP § 716.02.
The Herrmann Declaration details a test of an embodiment of the claimed invention, specifically a combination of Compound 1-2 and the fatty acid mixture ABPll1. The synergistic results, calculated using the standard Colby formula, were dramatic and surprising:
• At a specific concentration, Compound 1-2 alone exhibited only 5% mortality.
• At a corresponding concentration, the fatty acid mixture alone exhibited 0% mortality.
• The expected additive efficacy, calculated via the Colby formula, was therefore only 5%.
• However, the observed efficacy of the combination was 70%.
This result-a fourteen-fold increase over the expected efficacy-is not merely additive or slightly synergistic; it is a qualitatively different and superior outcome. A person having ordinary skill in the art, reviewing the general teachings of synergy in Fischer and Gaudet, would have had no basis to predict such a dramatic increase in potency. The cited references may suggest that some level of synergy is possible, but they do not suggest or motivate one to expect this specific, unexpectedly powerful result.
Therefore, because the claimed invention achieves unexpected and superior results, it is not obvious to one of ordinary skill in the art. Applicant respectfully submits that this dramatic objective evidence outweighs the Office's prima facie case of obviousness.
Rejected claims 13-14 (as well as claims 2-3 and 5-9 which are not rejected here) depend from claim 1. Since claim 1 is non-obvious for the reasons set forth above, these dependent claims, which further limit claim 1, are similarly non-obvious. Accordingly, reconsideration and withdrawal of the present obviousness rejection are respectfully requested.
The Examiner also rejects claims 13 and 14 as obvious over Popp in view of Gaudet (Gaudet et al., US 4,826,678).
Applicant submits that the incorporation of claim 12 into claim 1 renders the obviousness rejection of claims 3 and 13-14 moot since those claims now recite an element (i.e., the structure of Formula (1)-2) not found in the rejected claims. See MPEP 2143.01. Withdrawal of the rejection of those claims under obviousness is respectfully requested.”
This argument has been fully considered, but is not found to be persuasive. The Applicant argues that the rejection is based on impermissible hindsight because it fails to account for the unexpected superiority of the claimed compositions. The Applicant argues that there is an alleged synergistic effect which can be attributed to the claimed composition, which is allegedly supported by a declaration under 37 CFR 1.132 filed 8/22/2025.
Regarding impermissible hindsight: Applicants may argue that the Examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). See MPEP § 2145(X)(A).
In the instant case, the Examiner has properly supported the rejection of record with only the knowledge which was within the level of ordinary skill in the art. The combination of Fischer and Gaudet teach all the limitations of the instant claims for the reasons set forth in the rejection of record as detailed in the new claim rejections above. Further, Gaudet teaches that a synergistic effect is not unexpected. Therefore, the Applicant’s allegations of impermissible hindsight are not persuasive.
In addition, the extent of synergism as asserted by Applicant's affidavit as a demonstration of unexpected results is not persuasive because the skilled artisan would have a reasonable expectation of achieving synergistic effects from the combined teachings of Fischer and Gaudet, regardless of the extent of expected synergism. For example, Fischer teaches synergistic effects of the compound of formula (I)-2 using Colby’s formula and a variety of claimed combination additives (in a manner similar to Applicant’s affidavit), and reports synergistic effects ranging from a factor of 1.5 to 8 or greater-that is, several embodiments have a 0% calculated effect, yet observe 80-100% efficacy (Fischer; paragraph [0579]; Examples C-G; Tables C-1 and C-2, D-1, E-1 and E-2, F-1 and F-2, G-1 and G-2). Although, Fischer does not explicitly teach the active combination of the compound of formula (I)-2 with a mixed fatty acid salt composition, the teachings of Fischer as whole teach the use of the compound of formula (I)-2 in combination with potassium oleate (Fischer; claims 1-2). Furthermore, Gaudet teaches an unsaturated C18 potassium salt A comprising oleate and linoleate (oleate/linoleate = 54.0%:43.0%, the balance being other fatty acids) in combination with microbial insecticides that displays synergistic effects that cannot be attributed to additive effects, ranging from a factor of about 1.14 to about 2.65 (Gaudet; Tables 1-3). Although the exact assay conditions and (I)-2 concentrations are not identical between Applicant’s affidavit and the teachings of Fischer and Gaudet, the trend of synergism is established and sufficiently motivates the skilled artisan to combine the compound of formula (I)-2 of Fischer with the fatty acid salt combination of Gaudet to pursue a synergistic insecticide composition with a reasonable expectation of success.
Further regarding Applicant’s affidavit, it is worth noting that the level of synergy demonstrated in the claimed invention is highly dependent on the starting concentration of (I)-2. For example, the fourteen-fold increase over the expected efficacy as reported by Applicant is with an active agent combination comprising 4 ppm of (I)-2; however, a 1.07-1.15-fold increase is observed when a concentration of 8 ppm of (I)-2 is used (c.f., Table 1.1 and 1.2 of the affidavit). Finally, one of ordinary skill would not need to specifically predict a fourteen-fold increase over the expected efficacy to be sufficiently motivated to combine Fischer and Gaudet to arrive at the claimed invention. Rather, the skilled artisan need only to expect beneficial results to be obtained from the prior art combination. In view of Fischer and Gaudet, Applicant’s affidavit merely describes another example of synergism obtained with the compound of formula (I)-2, and would be an expected beneficial result based on the prior art cited above. MPEP § 716.02(c)(II) states that “Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.”
Accordingly, the Applicant’s arguments are not persuasive and the new claim rejections are maintained for the reasons of record and the reasons set forth above.
Further regarding claims 13 and 14, the Applicant refers to a rejection of said claims as obvious over Popp in view of Gaudet (Gaudet et al., US 4,826,678). See p. 8 of the response. However, this is not a rejection in the previous Office Action mailed 28 April 2025. Therefore, this argument is moot.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5-9, and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14, and 16 of U.S. Patent No. 12,127,558 B2 in view of Gaudet et al. (US 4,826,678 A; IDS of 08-30-2021; hereinafter “Gaudet”).
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claim 1, claims 1, 14, and 16 of U.S. Patent No. 12,127,558 B2 teach an insecticidal composition comprising a compound of formula (I-2):
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and N-methyl-(C8-C18) fatty acid-sarcosinate. The above compound of formula (I-2) from U.S. Patent No. 12,127,558 B2 corresponds to the compound of formula (I)-2 of instant claim 1.
Although U.S. Patent No. 12,127,558 B2 teaches an insecticidal composition comprising the compound of formula (I-2) and a fatty acid derivative comprising a genus of fatty acids (i.e., C8-C18) that overlaps with the genus recited in the instant claim, U.S. Patent No. 12,127,558 B2 fails to explicitly teach wherein the one or more fatty acids or derivatives thereof comprises two or more fatty acids selected from C16:0 fatty acids, C16:1 fatty acids, C18:0 fatty acid, C18:1 fatty acids, C18:2 fatty acids, and C18:3 fatty acids, and/or salts thereof, as recited in instant claim 1.
This deficiency is remedied by Gaudet, who teaches the following.
Gaudet teaches a fatty acid salt enhancement of bacterial insecticide, wherein the activity of a microbial insecticide has been found to be synergistically enhanced by the addition of unsaturated 18-carbon fatty acid salts, and the latter are known to be highly toxic to soft bodied insects including adelgids, aphids, mealybugs, whitefly, pear psylla, rose slugs, etc. (Gaudet; Title; Abstract; Col. 1, lines 53-58). Of particular note, Gaudet teaches an insecticidal composition consisting of (a) an insecticidally effective amount of a microbial insecticide and (b) sodium, potassium, or ammonium salt of an unsaturated fatty acid having 18 carbon atoms selected from the group consisting of oleic acid (IUPAC name (9Z)-octadec-9-enoic acid; a C18:1 fatty acid), linoleic acid (IUPAC name (9Z, 12Z)-octadeca-9,12-dienoic acid; a C18:2 fatty acid), and a mixture thereof in an amount sufficient to be insecticidally effective as well as to synergistically enhance the efficacy of the microbial insecticide (Gaudet; claim 1; Col. 2, lines 23-33). In one embodiment, Gaudet teaches an unsaturated C18 potassium salt A comprising oleate and linoleate (oleate/linoleate = 54.0%:43.0%, the balance being other fatty acids) in combination with the microbial insecticide and in a manner consistent with instant claim 1 (Gaudet; Col. 4, lines 10-15, Example 1). In addition, Gaudet further teaches that by increasing the efficacy of insect control with the addition of a C18 unsaturated fatty acid salt synergist, it may also be possible to reduce the amount of microbial insecticide needed for control and reduce the product cost (Gaudet; Col. 2, lines 14-18).
The prior art as taught by U.S. Patent No. 12,127,558 B2 and Gaudet reside in the closely overlapping technical field of insecticidal compositions comprising fatty acid derivatives, and are therefore deemed analogous art, as described in MPEP § 2141.01(a). Thus, the skilled artisan would be sufficiently motivated to substitute the N-methyl-(C8-C18) fatty acid-sarcosinate of U.S. Patent No. 12,127,558 B2 with the unsaturated C18 potassium salt A of Gaudet to arrive at an active compound combination comprising the compound of formula (I)-2 and the unsaturated C18 potassium salt A comprising oleate and linoleate in an effort to increase the efficacy of insect control, reduce the amount of insecticide needed for control, and reduce the product cost, with a reasonable expectation of success. Such an endeavor would result in the simple substitution of one known element for another to obtain predictable results, as described in MPEP § 2143(I)(B). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the N-methyl-(C8-C18) fatty acid-sarcosinate in the insecticidal composition of U.S. Patent No. 12,127,558 B2 with the unsaturated C18 potassium salt A comprising oleate and linoleate of Gaudet and arrive at the claimed invention. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, a pesticide composition with increased efficacy through synergism that can reduce the amount of microbial insecticide needed for control and thus reduce the product cost, as described above.
Regarding claims 2-3 and 5-9 depending from claim 1, Gaudet teaches an unsaturated C18 potassium salt A comprising oleate and linoleate (oleate/linoleate = 54.0%:43.0%, the balance being other fatty acids) in combination with the microbial insecticide and in a manner consistent with instant claim 1 (Gaudet; Col. 4, lines 10-15, Example 1). Furthermore, potassium oleate is known as the potassium salt of oleic acid, a C18 unsaturated fatty acid (IUPAC name (9Z)-octadec-9-enoic acid; a C18:1 fatty acid). Therefore, the use of potassium oleate in the active compound composition reads directly on the limitations of instant claims 2-3 and 5-9, and as with claim 1, it would have been prima facie obvious to combine U.S. Patent No. 12,127,558 B2 and Gaucher to arrive at the claimed invention.
Regarding claims 13-14 depending from claim 1, Gaudet teaches the proportions of the active ingredient of the microbial insecticide (a) to the fatty acid salt (b) may range from about 1:1000 to about 1:1 by weight, preferably about 1:500 to about 1:15 by weight; weight proportions of 1:100 to 1:1 or 1:20 to 1:1 are also possible; more preferred proportions are from about 1:350 to 1:20 (Gaudet; claims 1 and 4-7; Col 3., lines 33-40). These disclosed ranges overlap with the ranges recited in instant claims 13-14. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.
Claims 1-3, 5-9, and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 11-12 of U.S. Patent No. 12,213,484 B2 in view of Gaudet et al. (US 4,826,678 A; IDS of 08-30-2021; hereinafter “Gaudet”).
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claim 1, claims 1, 3, and 11-12 of U.S. Patent No. 12,213,484 B2 teach a composition for controlling insects comprising a compound of formula (I-2):
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The above compound of formula (I-2) from U.S. Patent No. 12,213,484 B2 corresponds to the compound of formula (I)-2 of instant claim 1.
U.S. Patent No. 12,213,484 B2 fails to teach an active compound composition comprising one or more fatty acids or derivatives thereof selected from the group consisting of unsaturated and saturated C11-24 fatty acids, salts thereof, esters thereof and/or mixtures thereof wherein the one or more fatty acids or derivatives thereof comprises two or more fatty acids selected from C16:0 fatty acids, C16:1 fatty acids, C18:0 fatty acid, C18:1 fatty acids, C18:2 fatty acids, and C18:3 fatty acids, and/or salts thereof, as recited in instant claim 1.
This deficiency is remedied by Gaudet, who teaches the following.
Gaudet teaches a fatty acid salt enhancement of bacterial insecticide, wherein the activity of a microbial insecticide has been found to be synergistically enhanced by the addition of unsaturated 18-carbon fatty acid salts, and the latter are known to be highly toxic to soft bodied insects including adelgids, aphids, mealybugs, whitefly, pear psylla, rose slugs, etc. (Gaudet; Title; Abstract; Col. 1, lines 53-58). Of particular note, Gaudet teaches an insecticidal composition consisting of (a) an insecticidally effective amount of a microbial insecticide and (b) sodium, potassium, or ammonium salt of an unsaturated fatty acid having 18 carbon atoms selected from the group consisting of oleic acid (IUPAC name (9Z)-octadec-9-enoic acid; a C18:1 fatty acid), linoleic acid (IUPAC name (9Z, 12Z)-octadeca-9,12-dienoic acid; a C18:2 fatty acid), and a mixture thereof in an amount sufficient to be insecticidally effective as well as to synergistically enhance the efficacy of the microbial insecticide (Gaudet; claim 1; Col. 2, lines 23-33). In one embodiment, Gaudet teaches an unsaturated C18 potassium salt A comprising oleate and linoleate (oleate/linoleate = 54.0%:43.0%, the balance being other fatty acids) in combination with the microbial insecticide and in a manner consistent with instant claim 1 (Gaudet; Col. 4, lines 10-15, Example 1). In addition, Gaudet further teaches that by increasing the efficacy of insect control with the addition of a C18 unsaturated fatty acid salt synergist, it may also be possible to reduce the amount of microbial insecticide needed for control and reduce the product cost (Gaudet; Col. 2, lines 14-18).
The prior art as taught by U.S. Patent No. 12,213,484 B2 and Gaudet reside in the closely overlapping technical field of insecticidal compositions, and are therefore deemed analogous art, as described in MPEP § 2141.01(a). Thus, the skilled artisan would be sufficiently motivated to incorporate the unsaturated C18 potassium salt A comprising oleate and linoleate of Gaudet with the compound of formula (I)-2 of U.S. Patent No. 12,213,484 B2 in an effort to increase the efficacy of insect control, reduce the amount of insecticide needed for control, and reduce the product cost, with a reasonable expectation of success. Such an endeavor would result in combining prior art elements according to known methods to yield predictable results, as described in MPEP § 2143(I)(A). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified U.S. Patent No. 12,213,484 to incorporate the unsaturated C18 potassium salt A comprising oleate and linoleate of Gaudet and arrive at the claimed invention. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, a pesticide composition with increased efficacy through synergism that can reduce the amount of microbial insecticide needed for control and thus reduce the product cost, as described above.
Regarding claims 2-3 and 5-9 depending from claim 1, Gaudet teaches an unsaturated C18 potassium salt A comprising oleate and linoleate (oleate/linoleate = 54.0%:43.0%, the balance being other fatty acids) in combination with the microbial insecticide and in a manner consistent with instant claim 1 (Gaudet; Col. 4, lines 10-15, Example 1). Furthermore, potassium oleate is known as the potassium salt of oleic acid, a C18 unsaturated fatty acid (IUPAC name (9Z)-octadec-9-enoic acid; a C18:1 fatty acid). Therefore, the use of potassium oleate in the active compound composition reads directly on the limitations of instant claims 2-3 and 5-9, and as with claim 1, it would have been prima facie obvious to combine U.S. Patent No. 12,213,484 B2 and Gaucher to arrive at the claimed invention.
Regarding claims 13-14 depending from claim 1, Gaudet teaches the proportions of the active ingredient of the microbial insecticide (a) to the fatty acid salt (b) may range from about 1:1000 to about 1:1 by weight, preferably about 1:500 to about 1:15 by weight; weight proportions of 1:100 to 1:1 or 1:20 to 1:1 are also possible; more preferred proportions are from about 1:350 to 1:20 (Gaudet; claims 1 and 4-7; Col 3., lines 33-40). These disclosed ranges overlap with the ranges recited in instant claims 13-14. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.
Response to Arguments
Claim Rejections – Double Patenting
Applicant's remarks filed 18 September 2025, requests that the double patenting rejections be held in abeyance until patentable subject matter is agreed upon. In view of Applicant’s amendments to the claims, the rejections of claims 1, 2, 4, and 6-8 on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,127,558 B2 issued in the previous Office Action mailed 28 April 2025 has been withdrawn, and Applicant’s amendments to the claims have further necessitated the new rejections of claims 1-3, 5-9, and 13-14 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14, and 16 of U.S. Patent No. 12,127,558 B2 in view of Gaudet et al. (US 4,826,678 A; IDS of 08-30-2021; hereinafter “Gaudet”), as detailed above. In addition, a new search necessitated by Applicant’s amendments has resulted in the new rejections of claims 1-3, 5-9, and 13-14 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 11-12 of U.S. Patent No. 12,213,484 B2 in view of Gaudet et al. (US 4,826,678 A; IDS of 08-30-2021; hereinafter “Gaudet”), as detailed above. The Examiner notes that filing a terminal disclaimer will ameliorate these double patenting rejections.
Conclusion
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/D.R./Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692