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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/11/25 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4, 6-7, 11, 32-33, 68-71 are rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicants are directed to the Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112 ¶1 "Written Description" Requirement, Rev. 1, 2008; at http://www.uspto.gov/web/menu/written.pdf.
The claims broadly embrace methods of treating/controlling pests and compositions for treating pests and kits for treating pests comprising the claimed ingredients. The specification discloses examples of the pests that can be treated, e.g. roaches, termites, carpenter ants, fire ants, mosquitoes, ticks, fleas, flies, chiggers, lice, and mites. However, the specification does not specifically define pests and does not limit the pests to the insects they exemplify and as such the scope of pests as claimed would include mammalian pests (e.g. deer), rodent pests (e.g. mice, rats), viral pests, bacterial pests, etc. which are not supported by the specification and claims as originally filed.
Specifically, the specification fails to disclose any other kinds of pests besides termites, carpenter ants, fire ants and roaches, mosquitoes, ticks, fleas, flies, chiggers, lice, mites, and arachnid, crustacean pests. As the specification fails to describe the entire scope of pests which would be encompassed by the claim terms, since applicants have not specifically defined pests to exclude mammalian pests, avian pests, microbial pests, etc. and the broadest reasonable definition of pests would include these types of pests because Maine.gov (www.maine.gov/dacf/php/gotpests/whatisapest/index.shtml) defines pest as any living thing—a plant, an animal, or a microorganism—that has a negative effect on humans.
Applicant’s attention is also directed to In re Shokal, 113 USPQ 283 (CCPA 1957), wherein it is stated:
It appears to be well settled that a single species can rarely, if ever, afford sufficient support for a generic claim. In re Soll, 25 CCPA (Patents) 1309, 97 F2d 623, 38 USPQ 189; In re Wahlforss, 28 CCPA (Patents) 867, 117 F2d 270, 48 USPQ 397. The decisions do not however fix any definite number of species which will establish completion of a generic invention and it seems evident therefrom that such number will vary, depending on the circumstances of particular cases. Thus, in the case of small genus such as the halogens, consisting of four species, a reduction to practice of three, perhaps even two, might serve to complete the generic invention, while in the case of a genus comprising hundreds of species, a considerably larger number of reductions to practice would probably be necessary.
As stated in MPEP 2163 II: If the application as filed does not disclose the complete structure (or acts of a process) of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. The instant specification is devoid of a description for the numerous possible types of pests which are to be controlled by applicant’s methods, or compositions or kits. The specification merely discloses examples of insect pests, e.g. roaches, termites, etc. Thus, Applicants have failed to demonstrate possession of the entire scope of numerous pests which would be included with applicant’s instant claim term “pests”. Disclosure of how the compounds can be derived or formed is little more than a wish for possession; it does not satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (written description requirement not satisfied by merely providing “a result that one might achieve if one made that invention”); In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming a rejection for lack of written description because the specification does “little more than outline goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate”).
The disclosure of only a few examples of insect pests, does not constitute an adequate description to demonstrate possession of any and all pests as claimed. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail such that the Artisan can reasonably conclude that the inventor(s) had possession of the claimed invention. Such possession may be demonstrated by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and/or formulae that fully set forth the claimed invention. Possession may be shown by an actual reduction to practice, showing that the invention was “ready for patenting”, or by describing distinguishing identifying characteristics sufficient to show that Applicant was in possession of the claimed invention (January 5, 2001 Fed. Reg., Vol. 66, No. 4, pp. 1099-11).
Therefore, the breadth of the claims as reading on the entire scope of any and all pests which could controlled via the claimed methods and compositions, appears to be broader in scope than what is found in the specification as instantly filed; in view of the level of knowledge or skill in the art at the time of the invention, and the limited information provided in the specification, an Artisan of ordinary skill would not recognize from the disclosure that Applicant was in possession of the entire scope of pests, at the time the application was filed. Thus, it is concluded that written description requirement is not satisfied.
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 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 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, 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.
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 1-2, 4, 6-7, 9, 11, 32-33, 35, and 68-71 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, 16, 2020 of copending Application No. 18798533 (‘533) in view of 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). ‘533 teaches powder pesticidal compositions comprising silica, pesticidal ingredients, and mimicking agents, and non-food attractants wherein the baits/pesticidal composition is also non-consumable, has the same particle size as instantly claimed and an overlapping moisture content, and wherein the composition can be/is electrostatically charged and used for precise application in the same areas as instantly claimed, and ‘533 teaches wherein the pesticidal actives are the same as instantly claimed, e.g. indoxacarb, and wherein the pests to be controlled include social pests.
‘533 does not teach the claimed brewer’s yeast or wherein the pests are roaches or forming a kit with the claimed agents in the claimed amounts of each component, etc. However, these deficiencies in ‘533 are addressed by Gries, Moyad, CN102845466A, Mooney, Bogacka Blum, Howse, and CN2126506Y. The examiner also notes that the non-food attractant in ‘533 is optional.
Regarding claims 1-2 and 9, Gries teaches pesticidal compositions 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 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]).
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), 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 that insect’s, 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, 35, and 69, 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.
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.
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 ‘533 in view of 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 as taught by both ‘533 and Gries 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 ‘533 when taken in view of 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/silica of the claimed composition as taught by‘533 in view of Gries and the other secondary references above 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 the composition taught ‘533 in view of Gries and the other secondary references 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 ‘533 in view of the secondary references above 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, because it is known to provide compositions with their necessary/desired applicators together for purchase for convenience of the user.
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 pests including roaches with the claimed components in overlapping amounts to those instantly claimed as is taught by ‘533 in view of Gries, Mooney, etc. 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 and other insect pests. 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.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments/Remarks
Applicant’s amendments to the claims and further consideration have prompted the revised/new grounds of rejection under 103 presented herein and the new double patenting rejection, and written description rejections
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 mainly discusses attracting cockroaches and they argue that Gries does not teach anti-caking agents. The examiner respectfully points out that Gries teaches wherein their formulation comprises silica. Silica is one of the claimed anti-caking agents. Thus, whether or not Gries recognizes it the silica in Gries is also functioning as an anti-caking agent because this is a property of silica whether or not it was recognized by Gries because "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Thus, silica is not separable from its properties, silica is going to function as both a pesticidal agent and an anti-caking agent in Gries because this function is a property of silica whether or not it was recognized by Gries.
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).
Applicants then argue that Moyad and Bogacka are non-analogous art. With respect to Moyad the examiner respectfully points out that this reference is only being 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 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 argue Howse and Blum. They argue that Howse and Blum do not teach the claimed actives and that actives in these references would have to be discarded for the claimed actives. The examiner respectfully disagrees. Howse and Blum are not primary references and are not being used to teach the pesticidal compounds. Again applicants appear to be improperly making piecemeal arguments that each and every reference must teach each and every feature of the instant claims. Respectfully, this is an incorrect argument. 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).
Applicants further argue that Blum and Howse cannot be used because they use fundamentally different pesticidal actives. The examiner respectfully disagrees because Howse is being used to teach a property, specifically that insect cuticles are positively charged and Blum is being used to teach that silica is known to be an electrostatic agent that adheres to roaches again a property of the silica of Gries and roaches and as such these references are properly used as references for teaching properties of the materials and insects disclosed in Gries and/or providing motivation for the obviousness of Gries. Further, the instant claims use comprising language which is open-ended and does not exclude the borates etc. of Blum or Howse’s particle coating contrary to applicants arguments that the exclusion of these elements would be required.
Applicant’s then argue that CN212656Y does not teach applying pesticides, the examiner respectfully disagrees because the abstract of CN212656Y specifically states that this device can be used for applying pesticide powders. Thus, the powders of Gries and the combined references can be electrostatically charged and applied with this device since that is what this device is for, especially since silica and yeast are known to have/be able to carry electrostatic charges and pesticidal compositions comprising silica having an electrostatic charge is known to adhere to roaches as taught by Blum. Thus, contrary to applicants arguments it is the combination of references together which render obvious the claimed inventions. Further, this is an obviousness rejection not an anticipatory rejection and as such CN212656Y does not have to teach the specifically claimed pesticidal composition contrary to applicants arguments.
Applicants have also argued/previously argued that Gries does not teach or suggest a composition having a moisture content between 2% to about 5% w/w and that the office action fails to provide sufficient reasoning or rationale to support Gries’ teaching of this feature. The examiner respectfully disagrees because Gries teaches that formulations for controlling roaches which comprise the claimed ingredients can take various forms including powders and wherein their formulations can comprise from 1 to 99% water. Thus, clearly if in the form of powders and wherein the formulations can comprise the overlapping amounts of water it would be obvious to optimize the amount of water in the powder formulations to give the most effective cockroach bait/control formulations. Further, applicants themselves have not provided any criticality regarding this percentage of moisture and as such, the percentage of moisture in applicants composition appears to be merely optimization from the teachings of the prior art, especially in the absence of evidence to the contrary. Thus, the examiner’s arguments that it would have been obvious to optimize the moisture concentration based on the teachings of Gries and the combined references above are proper at this time.
Applicants then argue the rejection over claims 68-70, and 71 for the same reasons as discussed above. The examiner respectfully disagrees for the same reasons which are already discussed above and incorporated herein.
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIN E HIRT/Primary Examiner, Art Unit 1616