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 .
Claim Interpretation
The examiner is interpreting the R2, R3, and R4 as substituents which are appended to the phenyl ring itself. That is to say that for instance the newly claimed ketone of 1 to 10 carbon atoms is any appended structure which contains a ketone functional group and 1 to 10 carbon atoms and the corresponding H atoms, but no other atoms are present, i.e. there cannot be a C1 ketone group because by definition a ketone group is R-C(=O)-R wherein the R moieties are carbon containing groups, e.g. the first ketone group that could be a substituent on the phenyl ring is C2 group e.g. -C(=O)-CH3 wherein the open – is the connection to the carbon atom of the phenyl ring. For example the now claimed ether moiety is any moiety containing 1-10 carbon atoms and an ether somewhere therein, and the same interpretation is being given to aldehyde, and amine, etc. groups as they are now amended in the instant claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-9, 11, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Feldmesser et al. (Pestic. Chem.: Hum. Welfare Environ., Proc. Int. Congr. Pestic. Chem., 5th (Conference 1983), vol. 1, pg. 261-264) as evidenced by Taylor et al. (Plant Dis. Rep., 1957, 41(6), 527-530).
Regarding claims 1, 3-7, 9, 11, and 13, Feldmesser teaches methods of killing pests, specifically nematodes with the claimed compounds of formula 1, via direct contact to the nematodes, which reads on contacting an area or object containing nematodes e.g. the nematodes themselves also read on the object to be treated, because presence of the nematodes for treatment makes the nematodes an object for treatment, wherein the compounds are used in pest killing effective amounts to contact the nematodes and are solubilized in a carrier for application and applied to the nematodes and/or area/object containing the nematodes(as evidenced by Taylor (see entire article which explains experimental process used in Feldmesser, specifically preparation of test chemicals section; testing procedure section, pgs. 529-530), and wherein the compounds include for instance the claimed methyl 2,4,6-trichlorobenzoate which is the compound of formula 1 wherein applicant’s R1 is methyl, both R2 groups are Cl, both R3 groups are H, and R4 is Cl, or methyl 2,3,6-trichlorobenzoate which is the compound of formula 1 wherein applicant’s R1 is methyl, both R2 groups are Cl, one R3 group is Cl and the other R3 group is H, and R4 is H, etc. (See entire document; pg. 263, Table 2; pg. 262, first full paragraph (~ ln. 3-11); pg. 263 entire section titled Benzoic acids and halogen-substituted derivatives).
Regarding claims 8-9, Feldmesser does not teach wherein their compositions/test solutions of the claimed compounds which are used to treat nematodes (which reads on the claimed object) contain any other pesticides besides the tested compounds, e.g. the claimed compounds: methyl 2,4,6-trichlorobenzoate which is the compound of formula 1 wherein applicant’s R1 is methyl, both R2 groups are Cl, both R3 groups are H, and R4 is Cl, or methyl 2,3,6-trichlorobenzoate which is the compound of formula 1 wherein applicant’s R1 is methyl, both R2 groups are Cl, one R3 group is Cl and the other R3 group is H, and R4 is H, etc. (See entire document; pg. 263, Table 2; pg. 262, first full paragraph (~ ln. 3-11); pg. 263 entire section titled Benzoic acids and halogen-substituted derivatives).
Feldmesser as evidenced by Taylor teaches all limitations of the claims and thereby anticipates the claims.
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feldmesser et al. (Pestic. Chem.: Hum. Welfare Environ., Proc. Int. Congr. Pestic. Chem., 5th (Conference 1983), vol. 1, pg. 261-264) as evidenced by Taylor et al. (Plant Dis. Rep., 1957, 41(6), 527-530) as applied to claims 1, 3-9, 11, and 13 above and further in view of Taylor et al. (Plant Dis. Rep., 1957, 41(6), 527-530) and Chodnekar et al. (US3957833).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Feldmesser as evidenced by Taylor teaches the method of claims 1, 3-9, 11, and 13 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Feldmesser as evidenced by Taylor does not specifically teach wherein the solubilized nematicidal compounds are solubilized in water or mineral oil or mixtures thereof as claimed. However, this deficiency in Feldmesser is addressed by Taylor and Chodnekar.
Taylor teaches that the chemicals being tested for nematicidal activity can be made into solutions with water, water and acetone mixtures, or emulsions made by the use of various wetting agents or suspensions but that care should be exercised in selection of solvents, wetting agents, emulsifying agents, etc. used in formulation since many materials are nematocidal and would affect the results of the assays of compounds for nematocidal activity (See Preparation of Test Chemical section of pg. 529).
Regarding claims 1, 3-7, 11, and 13, Chodnekar teaches compounds of applicant’s formula I, specifically their p-[(4,5-epoxy-1,5-dimethylhexyl)oxy]benzoic acid-propargyl ester which reads on the claimed compounds wherein applicant’s R1 is a propargyl group which reads on the claimed unsaturated alkyl group, both R2 groups and both R3 groups are H, and R4 is an ether group, specifically a diether group which contains 8 carbon atoms, and preferred/most preferred compounds: 3-bromo-4-[(6,7-dimethyl-2,6-octadienyl)oxy]-5-methoxybenzoic acid propargyl ester, wherein applicant’s R1 is again a propargyl group which reads on the claimed unsaturated alkyl group; both R2 groups are H, one R3 group is Br, and the other R3 group is OMe, and R4 is an ether group with 10 carbon atoms and as such reads on the claimed ether group; and p-(1,5-dimethylhexyl)oxybenzoic acid propargyl ester, wherein applicant’s R1 is a propargyl group, both R2 groups and both R3 groups are H and R4 is an ether group with 8 carbon atoms; and p-(1,4,5-trimethylhexyl)oxybenzoic acid propargyl ester, wherein applicant’s R1 is a propargyl group, both R2 groups and both R3 groups are H and R4 is an ether group with 9 carbon atoms, as well as multiple other propargyl ester containing compounds, etc. which read on those instantly claimed which can be formulated into compositions which are useful for treating/controlling/combatting nematodes and other invertebrates and are applied in effective amounts to the materials to be protected and it appears that the reference teaches that the compounds can be applied in the presence of laid normal eggs to disturb their development which would read on applying to an object or area in the presence of nematodes as claimed (see entire document; Col. 5, ln. ~55-57; Col. 6, ln. ~9-10, 13-16; Col. 3, ln. ~53-56, ~ln. 60-70; Col. 4, ln. 16-23;).
Regarding claim 2, Chodnekar teaches wherein their compounds which can include some of compounds instant claimed, as discussed above, can be formulated with carriers, specifically the instantly claimed mineral oil or water for application/treating objects/areas with nematodes/their eggs (see entire document; Col. 5, ln. ~55-57; Col. 6, ln. ~9-10, 13-16; Col. 3, ln. ~53-56, ~ln. 60-70; Col. 4, ln. 16-23).
Regarding claims 8-9, Chodnekar teaches wherein their compounds which can include some of compounds instant claimed, do not have to comprise and additional pesticides besides the compounds of applicant’s formula I which they teach (see entire document; Col. 5, ln. ~55-57; Col. 6, ln. ~9-10, 13-16; Col. 3, ln. ~53-56, ~ln. 60-70; Col. 4, ln. 16-23).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would be obvious to formulate the compositions for controlling/treating pests, specifically nematodes of Feldmesser with the claimed water and/or mineral oil as is instantly claimed. One of ordinary skill in the art would want to use the instantly claimed water and/or mineral oil as carriers in Feldmesser because Taylor and Chodnekar together teach that these are effective carriers/solubilizers for nematicidal actives, specifically actives which are structurally similar to those of Feldmesser in that both their nematicidal compounds and Chodnekar’s nematicidal compounds are substituted benzoate alkyl (saturated and unsaturated) esters and as such the claimed water and/or mineral oil are known effective carrier solvents for Chodnekar’s nematicidal benzoate alkyl esters and as such would be expected to effective carriers for the active compounds of Feldmesser because of their structural similarities and because Taylor expressly teaches that water is an effective carrier for solubilizing chemicals for testing for nematocidal activity.
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.
Claim(s) 1-9, 11, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chodnekar et al. (US3957833).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 3-7, 11, and 13, Chodnekar teaches compounds of applicant’s formula I, specifically their p-[(4,5-epoxy-1,5-dimethylhexyl)oxy]benzoic acid-propargyl ester which reads on the claimed compounds wherein applicant’s R1 is a propargyl group which reads on the claimed unsaturated alkyl group, both R2 groups and both R3 groups are H, and R4 is an ether group, specifically a diether group which contains 8 carbon atoms, and preferred/most preferred compounds: 3-bromo-4-[(6,7-dimethyl-2,6-octadienyl)oxy]-5-methoxybenzoic acid propargyl ester, wherein applicant’s R1 is again a propargyl group which reads on the claimed unsaturated alkyl group; both R2 groups are H, one R3 group is Br, and the other R3 group is OMe, and R4 is an ether group with 10 carbon atoms and as such reads on the claimed ether group; and p-(1,5-dimethylhexyl)oxybenzoic acid propargyl ester, wherein applicant’s R1 is a propargyl group, both R2 groups and both R3 groups are H and R4 is an ether group with 8 carbon atoms; and p-(1,4,5-trimethylhexyl)oxybenzoic acid propargyl ester, wherein applicant’s R1 is a propargyl group, both R2 groups and both R3 groups are H and R4 is an ether group with 9 carbon atoms, as well as multiple other propargyl ester containing compounds, etc. which read on those instantly claimed which can be formulated into compositions which are useful for treating/controlling/combatting nematodes and other invertebrates, including insects and are applied in effective amounts to the materials to be protected and it appears that the reference teaches that the compounds can be applied in the presence of laid normal eggs of insects to disturb their development and as such it also would be obvious to apply the compounds/compositions comprising the active compounds to an object or area in the presence of laid nematode eggs as claimed/in the presence of nematodes as claimed because the claimed compounds as taught by Chodnekar are taught to prevent maturation and proliferation of the pests (nematodes and insects) by interfering with their hormonal system, and in the case of insects the development of laid normal eggs is disturbed and the sequence of generations (of the pests) is interrupted and the insects (and nematodes) are indirectly killed (see entire document; Col. 5, ln. ~55-57; Col. 6, ln. ~9-10, 13-16; Col. 3, ln. ~53-70; Col. 4, ln. 16-23;).
Regarding claim 2, Chodnekar teaches wherein their compounds which can include some of compounds instant claimed, as discussed above, can be formulated with carriers, specifically the instantly claimed mineral oil or water for application/treating objects/areas with nematodes/their eggs (see entire document; Col. 5, ln. ~55-57; Col. 6, ln. ~9-10, 13-16; Col. 3, ln. ~53-56, ~ln. 60-70; Col. 4, ln. 16-23).
Regarding claims 8-9, Chodnekar teaches wherein their compounds which can include some of compounds instant claimed, do not have to comprise and additional pesticides besides the compounds of applicant’s formula I which they teach (see entire document; Col. 5, ln. ~55-57; Col. 6, ln. ~9-10, 13-16; Col. 3, ln. ~53-56, ~ln. 60-70; Col. 4, ln. 16-23).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Chodnekar does not specifically teach an example of the claimed invention or specifically teach examples where nematodes are present when applying/treating the object area, though it appears that Chodnekar does teach that their compounds can be applied to already laid eggs of pests which would include the claimed nematodes which reads on the claimed treating an object or area wherein the nematodes are present in the object or area.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art to form the claimed method when looking to the teachings and compounds of Chodnekar as discussed above because Chodnekar teaches compounds which read on and/or are compounds of applicant’s formula (I) which can be used to control invertebrate animals, specifically insects and nematodes and wherein the compounds are applied to an object or area to control nematodes and broadly include treating areas where already laid eggs are present when insects are being controlled and as such it would be obvious that treating objects or areas with already laid nematode eggs would lead to control of nematodes via the same mechanisms used for insects based on the teachings of Chodnekar because Chodnekar teaches that their compounds/the claimed compounds are taught to prevent maturation and proliferation of the pests (which would include both nematodes and insects) by interfering with their hormonal system, and in the case of insects the development of laid normal eggs is disturbed (these same effects would be reasonably expected to occur in nematodes as well since Chodnekar teaches their control with these compounds as well) and the sequence of generations (of the pests) is interrupted and the insects (and obviously nematodes) are indirectly killed which would obviously read on applicant’s newly added limitation requiring nematodes to be present when the compounds are applied.
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 1-9, 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Osieka et al. (US3711614) as evidenced by Entwistle (https://web.archive.org/web/20141006095206/https://archive.lib.msu.edu/tic/bigga/gki/article/2005sep24.pdf).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-9 and 12-13, Osieka teaches method of applying the claimed benzyl esters, specifically the claimed methyl-2-methylbenzoate (See entire document; e.g. 1st example table in example 4; Col. 1, ln. 9-Col. 2, ln. 44; claims) to soil (which reads on the claimed object or area) and other objects or areas to control fungi in effective amounts of 0.01% up to about 40% wt. of the mixtures which read on/encompass the instantly disclosed effective amounts (see entire document; e.g. abstract; Tables in Ex. 1-4), Osieka teaches wherein the compounds are applied with a carrier, e.g. talc or water or organic solvents, to soil, etc. and wherein the composition can only contain the claimed active compounds, e.g. methyl-2-methylbenzoate and talc/carrier which reads on claims 1-9 and wherein the only active step/e.g. method would consist of (and therefore reads on the claimed method consisting essentially of and/or method comprising and also reads on composition consisting of, consisting essentially and/or comprising the claimed active and carrier, and also reads on wherein the composition comprises no pesticide in addition to the claimed methyl-2-methylbenzoate) treating the soil with the claimed composition which only contains the active compound, e.g. methyl-2-methylbenzoate and talc/carrier (See entire document; e.g. Col. 4, ln. 13-31; 1st example table in example 4; Col. 1, ln. 9-Col. 2, ln. 44; claims).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)/ Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Regarding claims 1-9, 11-13, Oseika does not specifically teach wherein the pests being controlled are the claimed oomycetes or nematodes or that nematodes or oomycetes are present in/on the area/object to which the compounds/compositions thereof are being applied. However, as Osieka teaches treating soil (either directly or indirectly) with the same/overlapping effective amounts of the same methyl-2-methylbenzoate that is instantly claimed with the same carriers, and it is known that nematodes are ubiquitous in natural soils and the environment as is evidenced by Entwistle (See entire document; 1st complete paragraph), it is obvious that the application of the claimed compounds, e.g. methyl-2-methylbenzoate, in effective amounts which are taught by Oseika and which overlap with/read on the disclosed pest killing effective amounts would also obviously be accomplishing the claimed killing of pests, specifically nematodes, since Oseika teaches applying the same compounds, in the same/overlapping effective amounts, to the same objects/areas where the claimed pests are known to exist, e.g. soil/natural soil and/or onto plants or seeds which are planted or growing in soil and such would obviously be indirectly contacting the soil/applied to the soil when being applied to the seeds and/or plants, and as such would therefore obviously be killing nematodes whether or not this was recognized by Oseika and when applied to natural soil in which nematodes are ubiquitous either directly (or indirectly via application to seeds and/or plants) is invariably obviously being applied in the presence of nematodes as is now required by applicant’s amended claims.
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.
Claim(s) 1-9, 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. (Scientific Reports, 2018, 8, 7902, cited previously) in view of Chodnekar et al. (US3957833).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-9 and 12, Feng teaches method of applying the claimed benzyl esters, specifically the claimed methyl-2-methylbenzoate, methyl-2-methoxybenzoate, etc. as in Figure 1, to various surfaces to control/kill pests in effective amounts (see entire document; Results section; figure 1; table 2; methods section), and Feng teaches wherein the compounds are applied with a carrier, specifically water, as aqueous emulsions (see entire document; e.g. Results section; figure 1; table 2; methods section ; impacts of MB and analogs… section). Feng also teaches wherein the compositions comprise, consist essentially of, and/or consist of the claimed compounds and a carrier which are applied to various surfaces to control/kill pests in effective amounts, specifically wherein the compositions contain 1% of the claimed compounds (see entire document; e.g. Results section; figure 1; table 2; methods section ; impacts of MB and analogs… section), which read on the instantly disclosed effective amounts of 0.025% to 10% (see instant spec. [0023]) which are the only active steps required by the claimed method and as such when these steps are performed it would obviously lead to control/killing of the claimed nematode and/or oomycete pests because the claimed method does not even require the presence of the nematode or oomycetes on the surfaces to which the active compounds are applied in order to control/kill the claimed pests and as such the method steps of Feng would obviously be accomplishing the claimed method.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding the pesticidal activity of the claimed compounds as taught by Feng, Feng does not teach wherein the pests being killed are nematodes or oomycetes, or wherein nematodes or oomycetes are present in the area when the compound is applied. However, these deficiencies in Feng are addressed by Chodnekar.
Chodnekar teaches that other benzoate esters of applicant’s formula 1 are known to exhibit both insecticidal and nematicidal activity. Chodnekar teaches compounds of applicant’s formula I, specifically their p-[(4,5-epoxy-1,5-dimethylhexyl)oxy]benzoic acid-propargyl ester which reads on the claimed compounds wherein applicant’s R1 is a propargyl group which reads on the claimed unsaturated alkyl group, both R2 groups and both R3 groups are H, and R4 is an ether group, specifically a diether group which contains 8 carbon atoms, and preferred/most preferred compounds: 3-bromo-4-[(6,7-dimethyl-2,6-octadienyl)oxy]-5-methoxybenzoic acid propargyl ester, wherein applicant’s R1 is again a propargyl group which reads on the claimed unsaturated alkyl group; both R2 groups are H, one R3 group is Br, and the other R3 group is OMe, and R4 is an ether group with 10 carbon atoms and as such reads on the claimed ether group; and p-(1,5-dimethylhexyl)oxybenzoic acid propargyl ester, wherein applicant’s R1 is a propargyl group, both R2 groups and both R3 groups are H and R4 is an ether group with 8 carbon atoms; and p-(1,4,5-trimethylhexyl)oxybenzoic acid propargyl ester, wherein applicant’s R1 is a propargyl group, both R2 groups and both R3 groups are H and R4 is an ether group with 9 carbon atoms, as well as multiple other propargyl ester containing compounds, etc. which read on those instantly claimed which can be formulated into compositions which are useful for treating/controlling/combatting/killing nematodes and other invertebrates, including insects and are applied in effective amounts to the materials to be protected and it appears that the reference teaches that the compounds can be applied in the presence of laid normal eggs of insects to disturb their development and as such it also would be obvious to apply the compounds/compositions comprising the active compounds to an object or area in the presence of laid nematode eggs and/or in the presence of nematodes as claimed because the claimed compounds as taught by Chodnekar are taught to prevent maturation and proliferation of the pests (nematodes and insects) by interfering with their hormonal system, and in the case of insects the development of laid normal eggs is disturbed and the sequence of generations (of the pests) is interrupted and the insects (and the pests obviously include nematodes) are indirectly killed (see entire document; Col. 5, ln. ~55-57; Col. 6, ln. ~9-10, 13-16; Col. 3, ln. ~53-70; Col. 4, ln. 16-23;).
Chodnekar teaches wherein their compounds/compositions which can include some of compounds instant claimed, as discussed above, can be formulated with carriers, specifically the instantly claimed mineral oil or water for application/treating objects/areas with nematodes/their eggs (see entire document; Col. 5, ln. ~55-57; Col. 6, ln. ~9-10, 13-16; Col. 3, ln. ~53-56, ~ln. 60-70; Col. 4, ln. 16-23).
Chodnekar teaches wherein their compounds/compositions which can include some of compounds instant claimed, do not have to comprise additional pesticides besides the compounds of applicant’s formula I which they teach (see entire document; Col. 5, ln. ~55-57; Col. 6, ln. ~9-10, 13-16; Col. 3, ln. ~53-56, ~ln. 60-70; Col. 4, ln. 16-23).
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 method with the claimed compounds of applicants formula 1 in a composition and applied to object or areas having nematodes as instantly claimed when looking to the combined teachings of Feng and Chodnekar because Feng teaches the claimed compounds are known to be applied/used to treat objects or areas to kill pests when applied in the same amounts/effective amounts instantly disclosed and Chodnekar teaches that it was known to apply other benzoates of applicant’s formula 1 to objects or areas in the presence of nematodes and/or insects for their control/killing. Thus, it would have been obvious to one of ordinary skill in the art to try applying the instantly claimed benzoates/compositions thereof which are taught by Feng as nematicides for use in areas or objects having nematodes present as is now instantly claimed in order to kill the nematodes, because Chodnekar teaches that other benzoates are known to be both insecticidal and nematicidal. Thus, it would be obvious to try the compounds of Feng which were already known to have insecticidal activity against the nematodes of Chodnekar since other benzoates of applicants formula 1 were known to exhibit both insecticidal and nematicidal activity as is taught by Chodnekar. One of ordinary skill in the art would have been motivated to try the compounds of Feng as nematodes with a reasonable expectation of success based on the teachings of Chodnekar that other benzoates of applicants formula 1 are both insecticidal and nematocidal, thus one of ordinary skill in the art would try the compounds of Feng with a reasonable expectation that other benzoates of applicant’s formula 1 as taught by Feng would also exhibit both insecticidal and nematicidal activity based on the
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 and 103 rejections which are hereby withdrawn. Applicant’s amendments have prompted the new/revised grounds of rejection under 102 and 103 presented herein to address the newly added claim amendments and new claims. Applicants arguments insofar as they pertain to the new/revised grounds of rejection are presented herein.
Applicant’s arguments with respect to the prior art Feng are not persuasive with respect to the new grounds of rejection presented herein and are addressed insofar as they pertain to this new grounds of rejection prompted by applicant’s amendments and new claim. Applicants argue that this rejection no longer reads on the instant claims because the instant claims now require the presence of nematodes (or oomycetes) in the object or area being treated and that their own specification teaches that demonstration of activity against insects does not indicate that the same compounds will be nematotoxic or otherwise active against pests such as nematodes. They further argue that Feng fails to disclose or suggest a method of killing the claimed nematodes or oomycete pests by treating an object or area with a pest killing effective amount of a composition as set forth in claim 1, wherein the nematodes (or oomycetes) are present in the object or area being treated. The examiner agrees that Feng does not teach killing these specific type of pests when they are present in the object or area. However, it would have been obvious to one of ordinary skill in the art at the time of the instant filing to at least try killing nematodes and/or oomycetes with the compounds of Feng because Chodnekar teaches that other benzoates of applicant’s formula 1 are known to be effective as pesticides for both insects and nematodes and can be applied when the pests are already present in the area. Thus, it would be obvious to try other pesticidal benzoates such as those of Feng to kill/control nematodes in areas in which they are present since other benzoates are effective at controlling both insects and nematodes and Feng teaches that their benzoates are effective insecticides.
Applicants arguments with respect to the rejection over Osieka and Entwistle are not persuasive and are addressed herein insofar as they pertain to the new/revised grounds of rejection presented herein prompted by applicant’s amendments to the claims and new claims. Applicants argue that this rejection no longer reads on the instant claims because the instant claims now require the presence of nematodes (or oomycetes) in the object or area being treated and that their own specification teaches that demonstration of activity against insects does not indicate that the same compounds will be nematotoxic or otherwise active against pests such as nematodes. The examiner respectfully disagrees in this instance because as evidenced by Entwistle nematodes are ubiquitous in natural soil, e.g. they are present in all natural soils. Thus, it is clear that treatment of soil and/or plants or seeds which are planted in soil with the claimed compounds in Osieka in the effective amounts of Osieka which overlap the effective amounts instantly claimed would obviously be treating/controlling/killing nematodes because nematodes are ubiquitous in soil as is evidenced by Entwistle. Thus, the treatment of the soil in Osieka with the instantly claimed compounds which are applied in the claimed in effective amounts which are taught by Oseika and which overlap with the disclosed pest killing effective amounts would obvious also be accomplishing the claimed killing of pests, specifically nematodes, since Oseika teaches applying the same compounds, in overlapping effective amounts, to the same objects/areas where the claimed pests exist/are ubiquitous, e.g. soil, and as such would obviously be killing nematodes whether or not this was recognized by Oseika.
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 new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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