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 .
Status of Action
The outstanding FINAL office action of record is hereby replaced. This is a reissued/replacement FINAL action. This action restarts the period for reply.
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.
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) 1-2, 4, 6-7, 9, 11, 32-33, and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gries et al (WO2017079684) and further in view of CN102845466A, Mooney et al. (WO1991019417), and CN2126506Y, and as evidenced by Moyad (Urol. Nurs., 2008, 28(1), 73-75), Bogacka (Cen. Eur. J. of Chem., 2011, 9(2), 348-351), Blum (US5384120), and Howse et al. (CA2242781C).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-2 and 9, Gries teaches pesticidal compositions for insect and/or arthropod pests comprising bait/attractant ingredients, pesticidal actives and anticaking agents/which also read on pesticidal actives, specifically Gries teaches compositions which can comprise applicants elected indoxacarb as a lethal agent and silica (e.g. silica aerogel, amorphous silica), as a physical abrasive/anti-caking agent wherein the silica is capable of causing knockdown, immobilization and/or death of at least one cockroach, and wherein the composition can further comprise yeast, specifically brewer’s yeast and other types of food yeast, i.e. S. cerevisiae which is known as brewer’s yeast as is evidenced by Moyad (see Gries: see entire document; [0028-0032]; [0025]; [0060]; Claims; see Moyad title and abstract).
Regarding claims 4 and 35, Gries teaches wherein the silica is amorphous silica which broadly includes/broadly reads on the instantly claimed precipitated silica, fumed silica ([0031]).
Regarding claim 11, Gries teaches compositions which read on the claimed compositions and does not teach that the composition have to be consumed or are consumed only that they need to contact the insects being controlled, e.g. roaches and as such this reads on the claimed wherein the composition is non-consumable (See entire document; sections cited herein).
Regarding claim 32, Gries teaches wherein their compositions can comprise one or more lethal agents ([0028-0031]) in amounts of not more than about 2% by weight of the composition which reads on the claimed amounts of silica and indoxacarb ([0041]; [0028-0031]). Gries also teaches wherein the yeast can be present in an amount of about 1% to about 99% by weight of the composition ([0049]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding instant claims 1-2, 4, 6-7, 9, 11, 32-33, and 35, Gries does not teach an example of the instantly claimed invention and does not teach wherein the composition is electrostatically charged, specifically during application.
Regarding claim 7, Gries teaches wherein the silica in the composition can attach to the roaches, etc. and damage their exoskeletons leading to death and the silica used is amorphous silica which includes the claimed fumed silica ([0031]; [0028]; [0059]; claim 9, and S. cerevisiae yeast and as you would want the yeast particles to also be able to readily contact the roaches and attach to them and/or be consumed by them then they also must be of appropriate size to attach to the exoskeleton and be easily carried by the roaches or other insect pests or of a size to be consumed and it is known that this size is commonly 125 microns or less as claimed as taught by CN102845466A (which teaches this size for cockroach killing baits (see CN102845466A abstract; claims, e.g. claims 2, 8).
Regarding claim 1, Gries also teaches wherein their formulations can be formulated as granules/powders, liquids, etc. and combinations thereof, and wherein water can be present in amounts of 1% to 99%. Thus, one of ordinary skill in the art can readily optimize the amount of liquid/moisture/water present in the brewer’s yeast and/or added to the composition for application to fall within the claimed 2 wt% to 5 wt% that are instantly claimed because it is known in the art to optimize levels of moisture in order to provide the most effective powder formulations for controlling roaches and which do not have too much aggregation/clumping so that the particles can effectively stick to the insects to be carried back to the rest of the pests and/or be of the appropriate size that they can be consumed (see Gries: entire document; 0028-0032]; [0025]; [0060]; Claims; [0032, the composition can comprise water but does not have to]; [0048, water can be present in amounts of 1% to 99%]).
Regarding claims 1-2, 4, 9, 11, 32, 35, specifically 11, Gries teaches compositions which read on the claimed compositions and does not require that the composition has to be consumed only that they need to contact the insects being controlled, e,g. roaches, in some way and can work by contacting the outside of the insect, and as such this reads on the claimed wherein the composition is/can be non-consumable (entire document; [0028-0031]; [0026]).
Regarding claims 1, 6 and 32-33, Gries does not teach electrostatically charging their composition, specifically during application. However, it is known in the art as evidenced by Bogacka that brewer’s yeast can carry a negative surface electrostatic charge, e.g. that this is a property of brewer’s yeast (See Bogacka: bridging paragraph pg. 348-349), further as evidenced by Blum silica is a known electrostatic agent which allows it to better adhere to roaches and/or compositions containing silica can/will better adhere to roaches to control them (Blum: abstract; Tables 1-2, etc.) and as evidenced by Howse insects, specifically cockroaches, exoskeletons/cuticle carry a positive electrostatic charge (see Howse: pg. 4, ln. 21-25). It also was known to electrostatically charge pesticidal powders during application using an appropriate device as is taught by CN2126506Y(See abstract).
Regarding claims 1, 3-4 and 35, Gries teaches wherein the silica can be amorphous silica which is a genus which includes the claimed fumed silica ([0031]). Gries does not specifically teach fumed silica. This deficiency in Gries is addressed by Mooney.
Mooney teaches example 4 on pg. 10 which is dust formulation which comprises silica, specifically Cab-o-sil M5 which is a fumed silica as per Mooney (pg. 8, paragraph after the concentrate table) and reads on the claimed anti-caking agent, permethrin which is pesticidal ingredient, and baker’s yeast.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed pesticidal powder composition when looking to the combined prior art because Gries teaches that each and every component of applicant’s claimed composition, specifically the elected species of silica and indoxacarb were known to be effective lethal agents for cockroaches in amounts which overlap those instantly claimed. Gries also teaches that it was known to use brewer’s yeast, S. cerevisiae in compositions for baits/physical pest control agents (silica is a physical lethal agent) for roaches in the same/overlapping amounts to those which are instantly claimed and it was known to use overlapping amounts of silica and/or indoxacarb which Gries refers to as lethal agents in their compositions for controlling/baiting roaches. It would have been obvious to select indoxacarb and silica as the lethal agents and/or wherein silica will also function as an anti-caking agent because that it is property of the silica in that it absorbs moisture. “[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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it would be obvious to optimize the amounts of indoxacarb, silica, and brewer’s yeast in Gries which teaches overlapping amounts of each of the agents to those instantly claimed in order to form the claimed composition because it was known in the art and as taught by Gries to optimize the components in the roach bait composition in order to form the most effective pesticidal roach bait for use in controlling roaches.
It also would be obvious to optimize the size of the particles in the powder composition to be the claimed less than 125 microns because it was known to use particles less than 10 microns for controlling roaches and it would have been obvious to optimize the size of the particles so that they will better adhere to the cuticle of the insect/roach to be carried back to the rest of the population in order to achieve more effective control of the roaches.
It also would have been obvious to one of ordinary skill in the art to optimize the moisture levels in the powder formulation so that it can be effectively delivered to insects and applied without aggregating/clumping, etc. as it is known in the art to deliver effective pesticidal powders which can adhere to the cuticle of the insect and/or are of a size to be consumed, e.g. not too large to be carried and/or consumed which is known to occur if the particles are agglomerated/clumped due to too much moisture in the powder mixture.
It also would have been obvious to use fumed silica as the silica/amorphous silica in Gries because Mooney teaches that fumed silica is effective in combination with pesticides and yeast for controlling cockroaches and as such it would be obvious to select a known effective silica for controlling roaches to be used in a composition for controlling roaches in order to form a more effective powdered yeast, indoxacarb and fumed silica combination for controlling roaches. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It also would have been obvious to electrostatically charge the powder of Gries at the time of application/during application as taught by CN2126506Y in order to develop the instantly claimed electrostatic powder because by electrostatically charging the powder particles upon application will prompt them to have the negative charge they can have/hold and these negatively charged particles will then stick to the positively charged exoskeleton of the pest insect/roach thereby exerting their physical effects in the case of silica and delivering the indoxacarb from the silica and/or yeast particles to the insect/roach and the insect/roach can then carry the particles back to the nest/collective area where the pest insects congregate thereby delivering the control agents to more insects, especially since it was known in the art to electrostatically charge powders for treating insects which comprise silica as is taught/evidenced by CN2126506Y (see abstract; entire document).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 68-71 are rejected as being unpatentable over Gries et al (WO2017079684) and further in view of CN102845466A, Mooney et al. (WO1991019417), and CN2126506Y, and as evidenced by Moyad (Urol. Nurs., 2008, 28(1), 73-75), Bogacka (Cen. Eur. J. of Chem., 2011, 9(2), 348-351), Blum (US5384120), and Howse et al. (CA2242781C).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 68 and 71, Gries teaches pesticidal compositions for insect or arthropod pests comprising bait/attractant ingredients, pesticidal actives and anticaking agents/which also read on pesticidal actives, specifically Gries teaches compositions which can comprise applicants elected indoxacarb as a lethal agent and silica, as a physical abrasive/anti-caking agent wherein the silica is capable of causing knockdown, immobilization and/or death of at least one cockroach (insect or arthropod pest), and wherein the composition can further comprise yeast, specifically brewer’s yeast and other types of food yeast, i.e. S. cerevisiae which is known as brewer’s yeast as is evidenced by Moyad (see Gries: [0028-0032]; [0025]; [0060]; Claims; see Moyad title and abstract). Further regarding claims 68 and 71, Gries teaches wherein their compositions can comprise one or more lethal agents ([0028-0031]) in amounts of not more than about 2% by weight of the composition which reads on the claimed amounts of silica and indoxacarb ([0041]; [0028-0031]). Gries also teaches wherein the yeast can be present in an amount of about 1% to about 99% by weight of the composition ([0049]).
Further regarding claims 68 and 71, Gries teaches wherein their formulations can be formulated as granules/powders, liquids, etc. and combinations thereof. Thus, one of ordinary skill in the art can readily optimize the amount of liquid present in the brewer’s yeast and/or added to the composition for application to fall within the claimed 2 wt% to 5 wt% that are instantly claimed because it is known in the art to optimize levels of moisture in order to provide the most effective powder formulations for controlling roaches and which do not have too much aggregation/clumping so that the particles can effectively stick to the insects to be carried back to the rest of the pests and/or be of the appropriate size that they can be consumed (see Gries: entire document; [0028-0032]; [0025]; [0050]; [0048]; [0060]; Claims; [0032, the composition can comprise water but does not have to]; [0048, water can be present in amounts of 1% to 99%]).
Regarding claim 69, Gries teaches wherein the silica is amorphous silica which broadly includes the instantly claimed precipitated silica, fumed silica ([0031]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 68-71, Gries does not specifically teach a kit for pest control wherein the kit comprises a powder delivery device operable to electrostatically charge the pesticidal powder composition during delivery or wherein the amorphous silica is fumed silica; Gries also does not teach electrostatically charging their composition, specifically during application. However, these deficiencies in the combined references are addressed by Mooney and CN2126506Y and as evidenced by Bogacka, Blum, and Howse.
It is known in the art as evidenced by Bogacka that brewer’s yeast can carry a negative surface electrostatic charge, i.e. that this is a property of brewer’s yeast (See Bogacka: bridging paragraph pg. 348-349), and as evidenced by Blum silica is a known electrostatic agent which allows it to better adhere to roaches and/or compositions containing silica can/will better adhere to roaches to control them (Blum: abstract; Tables 1-2, etc.) and as evidenced by Howse insect’s exoskeletons/cuticle, specifically cockroaches, carry a positive electrostatic charge (see Howse: pg. 4, ln. 21-25).
It also was known to electrostatically charge pesticidal powders during application using an appropriate device as is taught by CN2126506Y(See abstract).
Regarding claims 68-69, Mooney teaches example 4 on pg. 10 which is dust formulation which comprises silica, specifically Cab-o-sil M5 which is a fumed silica as per Mooney (pg. 8, paragraph after the concentrate table) and reads on the claimed anti-caking agent, permethrin which is a pesticidal ingredient, and baker’s yeast.
Regarding claims 69-71, CN2126506Y teaches spray devices for electrostatically spraying powdered pesticides which allow for electrostatic charging of the particles with the nozzle and which allow for application of the powder to a site where pest control is sought and as such reads on the claimed a) powder delivery device of claims 68 and 71 (See abstract; paragraphs beginning: The utility mode relates to a kind of…; The purpose of this utility model is to provide a kind of…; Figures 1 and 2;). The electrostatic device of CN2126506Y is operable for precise application to control target pests as claimed and further this is an intended use of the kit as CN2126506Y teaches their nozzle allows for consistent application and no agglomeration over surfaces, etc. and as such when placed into nesting or gathering structures would allow for consistent application in these areas as claimed in claims 70 and 71.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed pesticidal powder composition when looking to the combined prior art because Gries teaches that each and every component of applicant’s claimed composition, specifically the elected species of silica and indoxacarb were known to be effective lethal agents for cockroaches in amounts which overlap those instantly claimed. Gries also teaches that it was known to use brewer’s yeast, S. cerevisiae in compositions for baits for roaches in the same/overlapping amounts to those which are instantly claimed and it was known to use overlapping amounts of silica and/or indoxacarb which Gries refers to as lethal agents in their compositions for controlling/baiting roaches. It would have been obvious to select indoxacarb and silica as the lethal agents and/or wherein silica will also function as an anti-caking agent because that it is property of the silica in that it absorbs moisture. “[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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it would be obvious to optimize the amounts of indoxacarb, silica, and brewer’s yeast in Gries which teaches overlapping amounts of each of the agents to those instantly claimed in order to form the claimed composition because it was known in the art and as taught by Gries to optimize the components in the roach bait composition in order to form the most effective pesticidal roach bait for use in controlling roaches.
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have used fumed silica as the amorphous silica of Gries because Mooney teaches that fumed silica when mixed with yeast and pesticides are effective for controlling cockroaches and as such it would be obvious to select fumed silica as the amorphous silica/silica being used in Gries since it is known effective silica for use in controlling cockroaches.
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed kit with the claimed powdered pesticide formulation as taught by the combined references and to supply it as a kit with an electrostatic sprayer/application device because it was known that silica and yeast can be electrostatically charged with devices and the active mixed in with these powdered and/or included in the yeast particles would be more effectively applied to pests and their locations via electrostatically charging the particles with the claimed device as taught by CN2126506 so that they exhibit a negative charge and are attracted to the positively charged cuticle of insects such as roaches because it was known that when the particles are electrostatically charged this leads to much improvement in adherence of the powder to the insect’s cuticle, and by combining the components and the electrostatic device together into a kit would make the system much easier/readily available for users to purchase and use without having to shop for the necessary components separately in order to effectively control their insect pests, specifically roaches.
It also would have been obvious to form the claimed method of controlling a pest using the claimed powdered delivery device to apply the claimed pesticidal composition to a site where pest control is sought wherein the pesticidal powder is as claimed (as taught by the combined references as discussed above and herein) because it was known to control roaches with the claimed components in overlapping amounts to those instantly claimed as is taught by Gries in view of Mooney above and it would have been obvious to one of ordinary skill in the art to have optimized the amounts of active agents, e.g. indoxacarb and silica, and attractants, e.g. brewer’s yeast in order to form the most effective powder for controlling roaches. It also would have been obvious to electrostatically charge the powder for controlling insects because Howse teaches that insect cuticles are positively charged and as such electrostatically charging particles to have a negative charge which Bogacka and Blum, teach is possible with the claimed components (yeast and silica) would allow for the powder pesticidal composition claimed and as taught by the combined references to better adhere to the insects surface thereby allowing the insect to carry the powder back to the nests/gathering places and expose further insect pests allowing for better control of the insect pest population in the area to be treated for control (see Howse: pg. 4, ln. 21-25; see Bogacka: bridging paragraph pg. 348-349; see Blum: abstract; Tables 1-2, etc.).
It also would have been obvious to one of ordinary skill in the art to optimize the moisture levels in the powder formulation of the claimed kit and method to be the claimed about 2% to about 5% w/w so that the powder formulation can be effectively delivered to insects and applied without aggregating/clumping, etc. as it is known in the art to deliver effective pesticidal powders which can adhere to the cuticle of the insect and/or are of a size to be consumed, e.g. not too large to be carried and/or consumed which is known to occur if the particles are agglomerated/clumped due to too much moisture in the powder mixture.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the previous 112(a) rejections which are withdrawn. Applicant’s terminal disclaimer has rendered moot the previous double patenting rejection which is hereby withdrawn.
Applicant’s arguments with respect to the 103 rejections of record have been fully considered but were not persuasive at this time. Applicants first argue that Gries does not teach the claimed system because Gries discusses attracting cockroaches and they argue that Gries does not teach anti-caking agents. The examiner respectfully points out that the instant claims are to a composition, and a method of using the composition, but the composition itself can be used for any purpose as long as contains the claimed compounds and has the claimed moisture content and is electrostatically charged. They argue that Gries does not teach wherein their system is electrostatically charged during application and that Gries does not teach any functional relationship between the moisture content and electrostatic behavior. Firstly the examiner notes that if even one particle of the composition is electrostatically charged it reads on wherein the composition is electrostatically charged, and further the instant claims are to a composition not a method of treating insects in the manner argued by applicants, e.g. that the particles electrostatically adhere to the insect cuticle and are transferred from insect to insect as this step is not actually required by applicant’s claimed method. Thus, applicants are arguing features which are not claimed. The claims are to a composition which contains the claimed components having the claimed properties (e.g. moisture level and some degree of electrostatic charge), and/or to methods of controlling pests comprising electrostatically charging the composition and because the particles can carry an electrostatic charge/have a charge then they could be electrostatically charged with the device from CN2126506Y as discussed above since it is a device for electrostatically charging powdered pesticidal compositions for delivery and would therefore be useful for charging particles which can/do inherently have some degree of electrostatic charge.
Applicant’s then argue that Gries does not teach electrostatically charging their formulation. Applicants are kindly reminded that the instant rejection is an obviousness rejection not an anticipatory rejection and as such Gries does not need to each and every feature of the instant claims when these features are actually being taught by the secondary references as discussed above which together render obvious the claimed composition. Additionally, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Additionally, whether the particles carry an electrostatic charge to any degree is a property of the particles as discussed above, thus the particles are electrostatically charged to some degree just by being made of what they are and that reads on for instance the instant composition claims as they are currently written.
Applicants then argue that the electrostatic combination (e.g. Bogacka, Blum, Howse, etc.) lacks technical basis to teach the electrostatic charging limitation. They argue that CN 2126506Y does not teach the claimed powders with yeast being charged. The examiner respectfully points out that the instant rejection is an obviousness rejection and as such each and every reference does not have to teach every claimed feature. CN 2126506Y is used to teach that it was known to use devices to electrostatically charge pesticidal powder for application to surfaces. Further, Moyad is used as an evidentiary reference and as such does not have to come from analogous art. With respect to Bogacka the examiner also respectfully disagrees because again this is just providing evidence that brewer’s yeast carries/can carry/carries a negative electrostatic surface charge, which is again a property of brewer’s yeast and as such these prior arts providing evidence about components which are already taught by analogous art do not have to be in the same field of endeavor and as such they are still proper prior art evidentiary documents. Applicants then further argue that the other references only deal with an intrinsic or passive electrostatic charge not imparting an electrostatic charge. The examiner respectfully points out that the instant claims do not require specifically imparting an electrostatic charge with respect to the composition or kit claims, as for instance claim 1 recites the composition is electrostatically charged. It does not require the charge to be anything but the intrinsic or passive electrostatic charge. Thus, applicants are arguing features which are not claimed and as such are not actually required by applicant’s claims as they currently written. Further as discussed above it would be obvious to electrostatically charge particles which already have some degree of electrostatic charge, e.g. the composition of Gries and the combined references because as evidenced above the yeast and silica would inherently already have some degree of charge. Thus, it would be obvious to use devices that charge these particles to deliver them to insects/areas with insects so that they better adhere to the insects being controlled.
Applicants further argue that CN 2126506Y does not teach or suggest a yeast dominant composition, that is capable of maintaining both electrostatic charge and free flowing behavior. Again the examiner respectfully points out that these are features that are not required of applicants claim as they are currently plainly written, see for instance claim 1 which does not require yeast let alone be yeast dominant nor do claims 1, or 67-71 for instance require the compositions to be free-flowing, etc. as is instantly argued.
Applicants then argue that the examiner has improperly conflated passive electrostatic properties with active electrostatic charging during delivery. Again the examiner respectfully points out that nothing in the instant claims actually requires active electrostatic charging during delivery with respect to the claimed composition or kit. Even claim 6 as it is plainly written still reads on a composition that is intrinsically charged because that composition is electrostatically charged during application. Thus, again, it is noted that the features upon which applicant relies (i.e., active electrostatic charging during delivery) is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further nothing in the instantly claimed method actually requires the device which electrostatically charges the composition to charge all particles or that the charge be lasting. Thus, the examiner maintains that the combination of the references is appropriate and still renders the claimed inventions obvious for the reasons of record and the reasons already discussed above because the examiner notes that applicant’s claims are actually much broader in scope than the compositions with which applicants are achieving their argued results and effects. That is to say applicants argued results and effects are not commensurate in scope with applicant’s claims as they are currently written.
Applicants then argue that the references are technically incompatible because Mooney is directed to encapsulating pesticides with yeast cells to improve stability and delivery, CN102845466 is directed to wettable formulations containing significant amounts of water and that these systems are incompatible to be used with powder delivery systems for electrostatic charging. Again the examiner respectfully points out that nothing in claim 1 requires a device for the electrostatic charging it is only required by the method claims which are rejected by Gries, etc. in view of CN2126506Y. The examiner respectfully points out that Mooney is not being used to teach encapsulating pesticides with yeast. Mooney is being used to teach that powder formulations comprising yeast are known to also contain/utilize anti-caking agents such as the claimed fumed silica and that combinations of yeast, permethrins, and silica are known to be used in dust insecticidal formulations. Further, nothing in the instant claims as they are currently written excludes the pesticides from being encapsulated in the yeast. Thus, whether or not Mooney is expressly solving applicant’s problem Mooney is still prior art for the reasons discussed above and herein. Regarding CN102845466, nothing in that reference states that the compositions used in their device require liquid or moisture or that the powders being applied must be wettable powders as asserted by applicants and as such the examiner is not persuaded by this argument. The examiner even looked at other English machine translations and still it discusses applying electrostatically charged powders, so the examiner believes that CN102845466 is properly applied as prior art for the instant claims at this time, especially since applicant’s have not pointed to any portions of CN102845466 which teach these argued features or sections that teach specifically a liquid must be part of the application process.
Applicants then argue that there is no reasonable expectation of success because their claimed invention requires the simultaneous achievement of electrostatic charging…etc. The examiner respectfully disagrees with this assertion. Specifically the instant claims are to a composition and a method of using the composition, etc. and the composition as currently claimed for instance still reads on compositions which can be inherently electrostatically charged and methods of using this composition comprising using a device to electrostatically charge the composition but if even one particle is charged it reads on the claimed composition. Additionally, none of the instant claims actually require simultaneous electrostatic charging, etc. are not required of the composition/method/kit instantly claimed. The composition as claimed for instance can be used with any devices or no devices. Applicant’s claimed method of using the composition, does not require of claim simultaneous electrostatic charging, etc. as argued. A composition or method need only contain what is claimed and have the properties claimed. The composition and method and kit instantly claimed do not have to achieve applicants simultaneous argued effects in order to read on and render obvious the instantly claimed inventions as none of the claims currently require these argued steps or results/features.
Applicants argue that their moisture levels are not optimization. The examiner respectfully disagrees. The prior art teaches that it was known to vary the water percentages in powder pest control formulations and these ranges specifically overlap with the instantly claimed ranges. Further, while applicant’s argue the criticality of their range the issue is that applicants claims are to a composition, method of using the composition and a kit and the composition for instance need not be used with applicant’s argued device for electrostatic charging further a device which charges even 1 particle of the composition would read on the claimed method. The claims read on compositions wherein the composition already naturally has some level of electrostatic charge as is discussed above in the previous responses to arguments. Applicant’s argue that moisture levels above 5% lead to agglomeration which materially affects the composition from flowing through the delivery device. However, nothing in the instant claims actually requires the composition to be delivered via a specific delivery device where agglomeration is a problem. Further applicants argue that the prior art does not recognize any relationship between moisture content and electrostatic performance or delivery characteristics. Again the examiner respectfully points out that none of these features are actually required by applicant’s claims. It is noted that the features upon which applicant relies (i.e., a specific electrostatic performance or specific delivery characteristics as argued) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus, the examiner disagrees that at this time the moisture is not optimizable because none of applicants argued features or properties are actually required by the instant claims which are actually much broader in scope than the compositions with which applicant’s achieved their argued different results. Further, the prior need not function in the manner of applicants composition in order to read on the claimed composition as a composition can be used for anything and does not have to be used in the manner that applicants intend in order to render applicants compositions obvious. The prior art teaches overlapping levels of moisture for powder pest compositions and as such it would be obvious to optimize within the range reported by the prior art in order to achieve the claimed moisture levels for the reasons which are discussed above and incorporated herein at this time.
Applicants then argue that the evidentiary references do not supply missing functionality. The examiner respectfully disagrees because again applicant’s functionality is not actually required by applicant’s composition claims. Further nothing in the instant claim 1 for instance actually requires the particles to be charged beyond the intrinsic or passive electrostatic charge taught by the evidentiary references. Thus, contrary to applicants arguments at this time the combination of the references remains appropriate and still renders the claimed composition obvious for the reasons discussed above which are incorporated herein. Applicant’s argue then that there would be no expectation that the compositions of the prior art would exhibit comparable electrostatic behavior and because of this the examiner is using impermissible hindsight. The examiner respectfully disagrees because each and every claimed feature of the instant claims is taught and/or rendered obvious by the combined prior art for the reasons set forth herein and as such is not impermissible hindsight, and furthermore there is no specific electrostatic behavior required of the composition instantly claimed or in the methods of using this composition, etc. Thus, there is no expectation that the composition of the prior art need to have features which are not actually required by the instant claims as they are plainly written. It is noted that the features upon which applicant relies (i.e., exhibiting comparable electrostatic behavior to the claimed composition/method/kit) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Specifically, the claims merely require any degree of electrostatic charge, e.g. 1 molecule of electrostatic charge in the composition reads on the instant claim 1 as it is currently written and as such reads on the claimed method, etc. instantly claimed.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Declaration Under 1.132
Janis Johnson Reed provided a declaration under 1.132, filed 04/23/26. The Declaration meets the formal requirements. In the most relevant part, the Declaration presents results Dr. Reed’s scientific opinion that excess moisture causes the powder to lose its free-flowing character needed for proper machine delivery due to clumping and agglomeration. Dr. Reed further states that the moisture content affects the electrostatic behavior of the powder compositions in that moisture levels higher than instantly claimed can interfere with the ability of the particles to retain electrostatic charge. Dr. Reed further states that she believes that the moisture range is critical and unexpected for the reasons disclosed in the declaration and discussed above.
A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)).
The relevant criterion here are 3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)) and 5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)).
The examiner has carefully reviewed the Declaration, including the Dr. Reed’s scientific opinions presented in the Declaration.
The examiner respectfully points out that applicants claims are much broader in scope than the features applicants are arguing for instance, nothing in the claimed composition claims requires the powders to be free-flowing or to have more than the intrinsic/passive electrostatic charge nor do the claims require the particles to have a specific electrostatic performance, e.g. retention of electrostatic charge, etc. Further, the experiments in the specification with which applicant’s achieved these results are much narrower in scope than for instance the instantly claimed composition claims, e.g. they contained yeast, etc. Thus, clearly applicants arguments/argued results are not commensurate in scope with applicant’s claims as they are currently written. Additionally, the primary reference Gries clearly teaches that it was known to vary the amount of moisture in powdered insect pest control formulations, and the formulations in Gries were known to contain particles which can/do carry an electrostatic charge. Thus, the examiner still maintains that due the reasons as detailed above and in light of the arguments and scientific opinions of Dr. Reed that the instant claims do remain obvious when taken in view of the combined prior art references for the reasons which have been previously detailed above specifically with respect to optimization of the moisture levels, etc. Thus, at this time applicant’s declaration is not persuasive.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the revised ground(s) of rejection presented in this Office action, specifically the addition of the insect or arthropod terms. 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 Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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