DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application was filed on March 02, 2022, and is a 371 application of PCT/IL2019/050982 (WO2021/044404A1) filed on September 3, 2019.
Status of Claims
In the response filed May 11, 2026, Applicants canceled claims 1-65, 69-77, and 92, and filed new claim 94.
Applicant’s election without traverse of Group IV (claims 66-69 and 78-92 drawn to a method for obtaining a predatory mite population) in the reply filed on March 17, 2025, is acknowledged.
Currently, claims 66-68, 78-91, and 93-94 are under examination.
Withdrawn Objections & Rejections
Rejections and/or objections not reiterated from the previous office action are hereby withdrawn due to amendment. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 66, 68, and 78-93 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea), without significantly more.
This rejection is repeated with regard to claims for the same reasons of record as set forth in the Official action mailed on Feb. 20, 2026. A response to applicant' s traversal follows the reiterated rejection below.
Claims 66-70 and 78-93 are directed to a method for obtaining a predatory mite population comprising Phytoseiulus predatory individuals capable of reproduction on a non-tetranychid arthropod prey (i.e. Astigmata order species). Thus, the method is directed to a natural phenomenon of rearing natural mite populations.
According to the 2019 Revised Patent Subject Matter Eligibility Guidelines (2019PEG), the claim is first analyzed to determine if it is directed to one of the acceptable statutory categories of invention (i.e. process, machine, manufacture, or composition of matter). Claim 66 and 69 are directed to the method comprises the steps of: (a) providing a rearing population of a predatory mite species selected from the genus Phytoseiulus, said rearing population comprising individuals of the Phytoseiulus species preferably together with a suitable food source for the Phytoseiulus individuals, (b) providing a the preselected non-Tetranychid arthropod species to the Phytoseiulus individuals as a food source; (c) selecting Phytoseiulus individuals that are capable of reproduction while using the preselected non-Tetranychid arthropod individuals as a food source; (d) rearing selected Phytoseiulus individuals on a food source comprising the preselected non-Tetranychid arthropod species. Thus, claims 66 and 69 meets the requirements for step 1 of the analysis.
Second, the claim is assessed to determine if it is directed to a judicial exception under step 2A. Under 2019PEG, “directed to” is determined via a two-prong inquiry: (1) Does the claim recite a law of nature, a product of nature, a natural phenomenon, or an abstract idea; and (2) Does the claim recite additional element(s) that integrate the judicial exception into a practical application. The phrase, “integration of a practical application”, requires the presence of an additional claim element(s) or a combination thereof to apply, rely on or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception, such that the claim does not monopolize the judicial exception. (See MPEP § 2106.05 for examples of integration of practical application).
Regarding the first prong (1), claims 66 and 69 are directed to a natural phenomenon (i.e. rearing). Regarding the second prong (2), dependent claim 68 recites, “wherein the provided rearing population is a population composed of a number of sub-populations, wherein said sub-populations are from distinct sources, such as from distinct production populations and/or from natural populations isolated from distinct geographical locations”.
Therefore, the rearing populations further describes a structural elements of the population and does not provide any type of integration into a practical application. Thus, since the additional elements of rearing the population solely provide structural limitations or describe a means by which the mite population is made, the claim does not recite any additional elements or a combination thereof that integrates the judicial exception identify in prong 1 as being integrated into a practical application. Further since the claims are not meaningfully limited to any particular practical application, the generic nature of the claim appears to monopolize the claimed rearing mite population. Thus, the claims meet the requirement of step 2A as being directed to a judicial exception.
Third, if a judicial exception is present in the claim, it is further assessed to determine if the claim recites any additional elements or steps that are sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception.
Under the holding of Myriad, an isolated but otherwise unchanged nucleic acid was not patent eligible subject matter because it was not different enough from what exists in nature to avoid improperly tying up the future use and study of naturally occurring nucleic acid. The isolated nucleic acid of the claim is analogous to the isolated nucleic acid in Myriad.
The prior art of Rifa and Griffiths (US20130202714A1) states that the phytoseiid mites’ prey on Astigmata mites (i.e. non-tetranychid arthropod) in nature (see e.g. page 1). Thus, the claims are also drawn to a method of rearing a naturally occurring population (i.e. products). There is no evidence to show that the combination of the claimed method with natural ingredients results in a product that has markedly different characteristics (structural, functional, or otherwise) in comparison with the naturally occurring counterparts of the individual components of the composition (i.e. natural population). Thus, the method does not have markedly different characteristics from what occurs in naturally occurring counterparts and is a product of nature/natural phenomenon exception. Accordingly, the claims are directed to an exception. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims does not recite any elements in addition to the naturally occurring products.
Claims 68-68, 70, and 78-93 ultimately depend from claims 66 and 69 and further characterize the claimed natural population. None of these characterizations differentiate the claimed rearing population from the naturally occurring counterpart. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims does not recite any elements in addition to the naturally occurring products.
In conclusion, the claims do meet all the requirements of the 2019PEG and therefore deemed patent ineligible.
Response to Traversal:
Applicant argues that the Office Action improperly applies Myriad to method claims because Myriad addresses composition of matter claims, not method claims (Remarks, page 9-10). Applicant argues that the claims are not directed to a natural phenomenon, because the Examiner conflates the two concepts of a natural phenomenon, which is directed to “mites in nature occasionally prey on various arthropods”, and the claimed method, which is directed to “human-directed selection and controlled rearing to obtain population with sustained reproductive capability on non-natural prey” (Remarks, page 10).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
In response to applicant's argument, it is acknowledging that the claims are directed to a method. It is noted that the claims recite a method that produces a product, and Myriad was used to support that the product would then be found in nature.
In the instant case, applicant explicitly states in the remarks that “mites in nature occasionally prey on various arthropods”, which relates to the fact that the mites in nature pry species that are encompassed in the broad claim limitation of a non-tetranychid arthropod prey (see Remarks, page 10).
In the instant case, it is noted that the claims do not explicitly recite the step of “human-directed” selection, or “controlled” rearing, or “a sustained reproduction”. The claims broadly recite the last step of “rearing the selected Phytoseiulus individuals on a food source comprising the preselected non-tetranychid arthropod species. As discussed above, Applicant has acknowledged that in nature the mite’s prey on various arthropods species. Therefore, it is unclear how these claims are different from a product that would be developed in nature from the claimed method.
Applicant argues that the claims are not directed to a natural phenomenon because the claimed method involves human intervention and active steps that transform the method from mere observation of a natural capability into a practice application that produces a commercially useful product (Remarks page 10-11).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. In the instant case, Applicant has acknowledged that in nature the mite’s prey on various arthropods species and has not provided the claim limitations that show the distinguished between what is recite din the claims and how it is different from a natural product produced by the claimed method. Therefore, it is unclear how these claims are different from a product that would have been found in nature. Further, it is noted that independent claim 66 does not recite a commercially useful product that is different than what is found in nature.
Applicant argues that Fidgett discloses that the p. persimilis is an obligate spider mite predator and cannot survive on alternate food sources such as pollen (para. 17)(Remarks, page 11). Applicant argues that the instant claims are not directed to the natural ability of the recited mites to be adapted to prey on non-natural prey. Applicant asserts that the claims are directed to a method of producing a desired product: an adapted predator population capable of sustained reproduction on non-natural prey (Remarks, page 11).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
In response to Applicants arguments, Fidgett discloses “Phytoseiulus persimilis is used in biological control programs for two-spotted spider mites (Tetranychus urticae), and related Tetranychus species. The mites are predators as nymphs and adults, mostly feeding on spider mite eggs and nymphs, but also consuming adults. Since P. persimilis is an obligate spider mite predator and cannot survive on alternate food sources such as pollen, survival tends to be poor if prey is in short supply.” (para. 16). Thus, this statement does not mean that in nature the P. persimilis predatory mite is not capable of reproducing on non-tetranychid arthropods that are eggs and nymphs as Fidgett suggests. Further, it is noted that the claim is directed to “capable of” and Rifa and Griffiths (US20130202714A1) discloses that the phytoseiid mites’ prey on Astigmata mites (i.e. non-tetranychid arthropod) in nature (see e.g. page 1). As discussed above, the claims do not recite “sustained reproduction on non-natural prey” (Remarks, page 11). The claim explicitly recites step (c) having non-tetranychid arthropod individuals as a food source.
Applicant argues that the method effects a transformation of the population by physically changing the functional biological capabilities, creating a commercial useful product, and is patent-eligible because it is analogues to the transformation in Diehr (raw rubber – cured rubber)(Remarks, page 11-12).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant has not recited in the claims the structure of the method that allows for the “transformation of the population”. Further, it is unclear what claim limitations are directed to the “physically changing” and “functional biological capabilities” that are recited in the claims when Applicant has already acknowledged that the prey is capably of the natural occurrence of rearing on non-tetranychid arthropod individuals as a food source. Further, the claim does not recite any structural limitations in the P. persimilis population that performs this physically change in the functional biological capability of the population that is different from those that are found in nature. Thus, it is unclear how the claims are analogues to the transformation in Diehr (raw rubber – cured rubber) and creating a commercial useful product when the claims are directed to a method and not a system.
Applicant argues that the claimed method creates a product that does not naturally exist: a Phytoseiulus population with sustained reproductive capability on non-Tetranychid prey (Remarks, page 12). Applicant asserts that the claimed method transforms a specialist predator population (capable of reproduction only on Tetranychid prey) into an adapted population (capable of sustained reproduction on non-Tetranychid prey) (Remarks page 12).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., sustained reproductive capability) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As discussed above, the claim does not recite “sustained reproductive capability” but rather “capable of reproduction”. As discussed above, Rifa and Griffiths (US20130202714A1) discloses that the phytoseiid mites’ prey on Astigmata mites (i.e. non-tetranychid arthropod) in nature (see e.g. page 1). Therefore, the claims read on a method that produces a product found in nature.
Applicant argues that the claims integrate any alleged exception into a practical application because the selection step is based on functional capability is an active intervention that distinguished the method from a natural occurrence or a natural phenomenon.
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
As discussed above, applicant acknowledges in the remarks that “mites in nature occasionally prey on various arthropods” (see Remarks, page 10). Therefore, it is unclear how the functional capability is an active intervention selection step because the mites are capable of doing this in nature. It is noted that the independent claim 66 ends on the last step of the ability of “rearing the selected Phytoseiulus individuals on a food source comprising the preselected non—Tetranychid arthropod species” rather than a mite population that is not found in nature.
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.
Claims 66-68 and 78-93 are rejected under 35 U.S.C. 103 as being unpatentable over
Bolckmans et al., (US2015/0128864A1, published 2015, cited IDS 8/7/2023, hereinafter as “Bolckman”, prior art of record), in view of Rifa and Griffiths (WO2011/131791A1, published 2011, hereinafter as “Rifa”, prior art of record), Fidgett et al., (US2010/0119645A1, published 2010, prior art of record), Ferrero et al., (US2017/0231255A1, published 2017, prior art of record), Bolckman et al., (US2009/0205057A2, published 2009, hereinafter as “Bolckman (2009)”, prior art of record), and Yao, D. S., and D. A. Chant. (Oecologia 80 (1989): 443-455, published 1989, hereinafter as “Yao”, prior art of record).
This rejection is repeated with regard to claims 66-70 and 78-93 for the same reasons of record as set forth in the non-final Official action mailed on Feb. 20, 2026, therefore any aspect of applicant's response considered relevant to the rejection as newly set forth is responded to following the statement of rejection.
Regarding Claim 66 , Bolckmans discloses a method for obtaining a predatory mite population comprising Phytoseiulus predatory individuals capable of reproduction on a non-tetranychid arthropod prey (see e.g. abstract, claims 1-2, para. 15). Further, Bolckmans discloses obtaining predatory mite population capable of reproduction on a non-tetranychid arthropod prey, and an immobilized non-tetranychid arthropod prey (i.e. non-spider mites), such as an Astigmatid prey having immobilized life stages comprising immobilized eggs (see e.g. abstract, para. 32-33, 42 60-63, claims 13-15, Examples 1-8). Further, Bolckmans discloses a predatory mite population capable of reproduction on a non-tetranychid arthropod prey (i.e. astigmata), and an immobilized non-tetranychid arthropod prey (i.e. non-spider mites), such as an Astigmatid prey having immobilized life stages comprising immobilized eggs (see e.g. abstract, para. 32-33, 42 60-63, claims 13-15, Examples 1-8),
Regarding Claim 66 (a), Bolckmans discloses said method comprising the steps of: providing a rearing population of a predatory mite species selected from the genus Phytoseiulus said rearing population comprising individuals of the Phytoseiulus species together with a suitable food source for the Phytoseiulus individuals (See e.g. para. 61-62, 96, claims 1-2, Examples 1-3)
Regarding Claim 66 (b), Bolckmans discloses providing preselected non-Tetranychid arthropod species (i.e. non-spider mites) such as storage mites (see e.g. para. 57) to Phytoseiulus individuals as a food source (see e.g. Example 2).
Regarding Claim 66, (c) and (d), and 70(d) and (e), Bolckmans discloses selecting Phytoseiulus individuals that are capable of reproduction while using the preselected non-Tetranychid arthropod individuals as a food source (see e.g. Examples 1-3 and 6). Further, Bolckmans discloses rearing the selected Phytoseiulus individuals on a food source comprising the preselected non-Tetranychid arthropod species (see e.g. Examples 3, 5-8).
Bolckmans does not explicitly teach the step of individually selecting and rearing Phytoseiulus.
However, the prior art of Rifa discloses a novel mite composition comprising a population of a phytoseiid predatory mite species and a factitious host population comprising a species selected from the Glycyphagidae, which may be employed for rearing said phytoseiid predatory mite species (see e.g. abstract and claims). Further, Rifa discloses rearing population of a phytoseiid predatory mite species and the use of an astigmatid mite selected from the family of the Glycyphagidae, as a factitious host for rearing a phytoseiid predatory mite (see e.g. claims 1 and 13), corresponding to the claim limitation of a method for obtaining a predatory mite population comprising Phytoseiulus predatory individuals capable of reproduction on a non-tetranychid arthropod prey (i.e. astigmatid mite) (see e.g. abstract, claims 1-19).
Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate selecting and rearing a particular predator on a food source as taught by Rifa with a reasonable expectation of success because Bolckmans discloses that the selection of suitable Astigmatid mites as a prey for selected predators is within the ambit of the knowledge of the skilled person (para. 33). Moreover, both Bolckman and Rifa disclose methods of controlling and rearing predatory mites (see e.g. respective abstracts). Further, the prior art of Fidgett discloses that it was obvious for a person of ordinary skill in the art to known that rearing method encompassed the step of “a particular predator will be selected on the basis of the target pest to be controlled, and the crop to which the predator will be applied” (see e.g. para. 33). Furthermore, an artisan of ordinary skill in the art of (i.e. rearing of predatory mites) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Regarding Claim 67 and 70, Bolckmans discloses wherein the method further comprises steps of: (a) separating eggs from the preselected non-Tetranychid arthropod species (see e.g. para. 111-112, Example 6); (c) freezing the mixture (see e.g. para. 114, Example 6); and (d) rearing the Phytoseiulus individuals on the mixture as a food source (see e.g. Example 6).
Bolckmans does not explicitly state the step of b) mixing the separated eggs with a carrier material, so as to coat the carrier material with layer of eggs (see e.g. para. 113, Example 6).
However, the prior art of Ferrero discloses mixing astigmatid mite eggs with a sprayable preparation (see e.g. Example 1).
Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate the mixing of the separated eggs with a carrier material (as taught by Ferrero) with a reasonable expectation of success because Bolckmans discloses that a person of ordinary skill in the art would be able to have a number of eggs laid on the carriers (see e.g. fig. 1 legend). Further, Bolckmans discloses that the total number of eggs (and hatchlings) found in each carrier mixture, where occurrence of female mites correlates with the number of eggs laid on the carriers (fig. 1, table 1). Therefore, Bolckmans discloses that a skilled person will be able to design and/or select suitable carriers comprising mite shelters, in particular shelters suitable for commercially relevant mites selected from predatory mites or rearing preys (see e.g. para. 63). Furthermore, an artisan of ordinary skill in the art of (i.e. rearing of predatory mites) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Regarding Claim 68, Bolckmans discloses wherein the provided rearing population is a population composed of a number of sub-populations, wherein said sub-populations are from distinct production populations and/or from natural populations isolated from distinct geographical locations (see e.g. para. 116, Example 6).
Regarding Claim 78, Bolckmans discloses wherein the suitable food source for the Phytoseiulus individuals comprises a prey species selected from the family Tetranychidae (i.e. spider mites such as Tetranychus urticae)(see e.g. para. 82).
Regarding Claim 79, Bolckmans discloses wherein the preselected non-Tetranychid species is an Astigmatid mite species (see e.g. abstract, para. 34, claim 1, Example 6)
Regarding Claims 80 and 93, Bolckmans discloses wherein the preselected non-Tetranychid arthropod species comprises an Astigmatid mite species having immobilized life stages comprising immobilized eggs (see e.g. para. 42).
Regarding Claim 81 and 92, Bolckmans discloses further comprising (e) alternatingly rearing selected Phytoseiulus individuals in a sequence of: rearing for at least 2 generations while using a food source comprising the preselected non-Tetranychid arthropod species (and the prey species selected from the Tetranychidae (see e.g. para. 123, Example 1, 8).
Regarding Claim 82, Bolckmans discloses predator densities in the chaff rearing are increasing in the first and second week, on both food types (see e.g. fig. 9), and the combination of live and immobilized prey resulted in significant higher densities of Phytoseiid predator mites wherein the rearing population comprises at least 100 individuals (i.e. see fig. 7 for at least 116 individuals)(see e.g. para. 116-117, fig. 7).
Further, the following is noted from the MPEP: MPEP 2144.05: “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” MPEP 2144.05(I) teaches “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).” In regards to overlapping ranges, MPEP 2144.05(I) states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”, continuing in regards to ranges are close, “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)”.
Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate a rearing population of at least 100 individuals with a reasonable expectation of success because Bolckmans discloses rearing a predatory mite was reared for greater than 2 generations on the test medium layers (see e.g. Example 8), which would result in at least 100 individuals. Furthermore, the prior art of Bolckmans (2009) discloses that economic rearing of predatory mite species allows the possibility for using them as an augmentative biological pest control agent (see e.g. para. 50). Furthermore, an artisan of ordinary skill in the art of (i.e. rearing of predatory mites) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Regarding Claim 83, Bolckmans discloses wherein at least 10% of female individuals of the obtained predatory mite population are capable of reproduction on a non-tetranychid arthropod prey (see e.g. figs. 8-9).
Regarding claim 84 and 88, Bolckmans discloses that in each substrate there were a large fraction of female individuals, i.e. 87% (26 individuals) of all A. limonicus and 60% (18 individuals) of all A. swirskii. Further, Bolckmans discloses that the occurrence of female mites correlates with the number of eggs laid on the carriers (i.e. females to eggs was 26/53 = 49% for A. limonicus and 18/67 – 26% of A. Swirskii)(see e.g. fig. 8), which reads on the claim limitation that at least 10% of female individual obtained are capable of reproduction on non-tetranychid arthropod prey.
Bolckmans is silent regarding a daily oviposition rate of at least 0.55 egg/day/female and is characterized by a juvenile or a female survival rate of at least 40% on the non-Tetranychid prey and is characterized by a daily reproduction rate in the range of about 1.10-1.40.
However, Bolckmans discloses a juvenile or a female survival rate of at least 40% on the non-Tetranychid prey (see e.g. table 3). Further, Bolckmans (2009) discloses when comparing the evolution of the number of eggs laid per female during the total experiment (making one counting assessment each 2-3 days), the mean ranges from 1.80 to 2.63 eggs/female/day (see e.g. para. 92-98, Table 1-3, Experiment 2).
Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate the daily oviposition rate of at least 0.55 egg/day/female as taught by Bolckmans (2009) with a reasonable expectation of success because both Bolckmans et al., discloses biological crop protection by use of predatory mites (see e.g. abstracts). Furthermore, the prior art of Bolckmans (2009) discloses that economic rearing of predatory mite species allows the possibility for using them as an augmentative biological pest control agent (see e.g. para. 50). Therefore, an artisan of ordinary skill in the art of (i.e. rearing of predatory mites) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Bolckmans (2009) does not explicitly state a daily reproduction rate in the range of about 1.10-1.40.
However, Yao et al., discloses a daily reproduction (i.e. number of eggs) rate in the range of about 1.10-1.40 (see e.g. page 450, Table 1).
Further, the following is noted from the MPEP: MPEP 2144.05: “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” MPEP 2144.05(I) teaches “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).” In regards to overlapping ranges, MPEP 2144.05(I) states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”, continuing in regards to ranges are close, “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)”.
Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate a daily reproduction (i.e. number of eggs) rate in the range of about 1.10-1.40 as taught by Yao with a reasonable expectation of success because Yao discloses that “the tendency of P. persimilis to feed on the immature stages, particularly protonymphs, of A. degenerans was significantly less compared to that of A. degenerans feeding on the corresponding immatures stages of P. persimilis” (See e.g. table 1). Furthermore, an artisan of ordinary skill in the art of (i.e. rearing of predatory mites) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Regarding Claim 85 and 90, Bolckmans discloses predator densities in the chaff rearing are increasing in the first and second week, on both food types (see e.g. fig. 9), corresponding to the claim limitation of improved reproduction on non-tetranychid arthropod prey by increasing daily reproduction rate.
Bolckmans does not explicitly state the improved production is compared to a control predatory population of the same species reared on Tetranychid prey as the sole food source.
However, the prior art of the prior art of Fidgett discloses using crop pests that can be controlled using a single biological control product (para. 56).
Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate a control reasonable expectation of success because Fidgett discloses using crop pests that can be controlled using a single biological control product (para. 56). Furthermore, an artisan of ordinary skill in the art of (i.e. rearing of predatory mites) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Regarding Claim 86, Bolckmans discloses wherein the Phytoseiulus predatory individuals are from a species selected from Phytoseiulus fragariae, Phytoseiulus persimilis, Phytoseiulus macropilis, Phytoseiulus longipes (see e.g. claim 2).
Regarding claim 87, as state supra, Bolckmans et al., discloses wherein at least 10% of female individuals of the obtained predatory mite population are capable of reproduction on a non-tetranychid arthropod prey (see e.g. figs. 8-9), which reads on the claim limitation that females are capable of oviposition on the non-tetranychid arthropod prey, and are capable of completing a full ontogenic cycle, and are characterized by the capability to produce female offspring in a number of subsequent generation (i.e. at least two generations)(see e.g. Example 7-8, figs. 7-9).
Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate wherein at least 10% of female individuals of the obtained predatory mite population are capable of reproduction on a non-tetranychid arthropod prey with a reasonable expectation of success because Bolckmans discloses that the amount of female mites correlates with the number of eggs laid on the carriers. (see e.g. para. 121). Furthermore, the prior art of Bolckmans (2009) discloses that a person of ordinary skill in the art would know that the rearing population may comprise one or more fertilized females that is capable of increasing the number of its individuals by means of sexual reproduction (see e.g. para. 54). Therefore, an artisan of ordinary skill in the art of (i.e. rearing of predatory mites) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Regarding Claim 89, Bolckmans is silent wherein female individuals of the obtained predatory mite population have predatory behavior towards individuals of a Tetranychid species, which is characterized by a daily oviposition rate of at least 10 eggs per female per 5 day.
However, Yao discloses experiments with different species regarding the tendency of adult females to prey on the three vulnerable immature stages of their own and of the other species (See e.g. page 445).
Regarding Claim 89, Yao discloses wherein “the two species, the oviposition periods lasted about 10 days longer with A. degenerans than with P. persimilis. However, the latter species laid about 1.7 times more eggs per day than the former regardless of the identity of the other predators in the same arena” (see e.g. page 453, fig. 12).
Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate the oviposition rate as taught by Yao because Yao teaches that the carrying capacities and oviposition rates regarding P. persimilis species could produce far more progeny and was more likely to reach adulthood than A. degenerans species (see page 453). Therefore, a person of ordinary skill in the art would use the genus Phytoseiulus with a reasonable expectation of success. Therefore, a person of ordinary skill in the art would have combined methods for similar mite species (i.e. from the genus Phytoseiulus) for the predatory mite population, which would have led to predictable results with a reasonable expectation of success. Furthermore, an artisan of ordinary skill in the art of (i.e. rearing populations) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Regarding Claim 91, Bolckmans discloses wherein the reproduction on a non-tertranychid prey is reproduction on an Astigmatid mite species selected from: ii) Pyroglyphidae iii) Glycyphagidae, iv) Acaridae, v) Suidasiidae (see e.g. para. 34, 42, 57 and claim 3).
Regarding claims 93, as stated supra, Bolckmans discloses wherein the preselected non-Tetranychid arthropod species comprises an Astigmatid mite species having immobilized life stages comprising immobilized eggs (see e.g. para. 32-34, 42, 57 and claim 3). Further, Bolckmans et al., discloses wherein at least 10% of female individuals of the obtained predatory mite population are capable of reproduction on a non-tetranychid arthropod prey (see e.g. figs. 8-9), which reads on the claim limitation that females are capable of oviposition on immobilized Astigmatid prey having immobilized life stages comprising immobilized eggs)(see e.g. Example 7-8, figs. 1, 7-9).
Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate wherein at least 10% of female individuals of the obtained predatory mite population are capable of reproduction on a non-tetranychid arthropod prey with a reasonable expectation of success because Bolckmans discloses that the amount of female mites correlates with the number of eggs laid on the carriers. (see e.g. para. 121). Furthermore, the prior art of Bolckmans (2009) discloses that a person of ordinary skill in the art would know that the rearing population may comprise one or more fertilized females that is capable of increasing the number of its individuals by means of sexual reproduction (see e.g. para. 54). Therefore, an artisan of ordinary skill in the art of (i.e. rearing of predatory mites) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Hence, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
Response to Traversal:
Applicant argues that the prior art cited teaches that Phytoseiulus mites cannot be reared on non-tetranychid arthropod prey (Remarks, page 15-16). Applicant presents Exhibit 1 for teaching the four-type classifications of Phytoseiida and presents Exhibit 2 for classification of Phytoseiulus belonging to type 1, which discloses as only feeding and reproducing on a particular type of pray, and that they can supplement their diet with other nutrients, adults do not reproduce if there is no presence of their natural prey (Remarks page 16).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
In response to Applicant argument, , it is noted that Applicant presents Exhibit 1 for teaching the four-type classifications of Phytoseiida if from 1997, and Applicant acknowledges that Exhibit 2 is from 2013 and revises that the type I is highly specific on Tetranychus species (Remarks, page 16). However, Applicants response of Exhibit 2 also shows that the genus Phytoseiulus can supplement their diet with other nutrients (Remarks, page 16). As discussed above, the prior art of Rifa and Griffiths (US20130202714A1) states that the phytoseiid mites’ prey on Astigmata mites (i.e. non-tetranychid arthropod) in nature (see e.g. page 1). Therefore, absent evidence to the contrary the Phytoseiulus predatory individual is capable of reproduction with a non-tetranychid arthropod prey. Further, it is noted that the claims recite “capable” in the claims limitation and do not recite a time period or number of generations that are being reared to obtain the predatory mite population.
Applicant argues that Bolckman provides no specific teaching regarding Phytoseiulus mites and that the working examples in Bolckmans all use generalist predators (A. swirskii, A. limonicus) not specialist Phytoseiulus (Remarks, page 16). Applicant argues impermissible hingsight because Bolckmans only mentions Phytoseiulus in a generic list and provides no specific guidance on whether Phytoseiulus mites would work with Astigmatid prey (Remarks page 17-18).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In response to Applicants arguments, it is noted that Bolckmans 2015 discloses a list of mesostigmatid mite species includes the predatory mites, Phytoseiulus (i.e. Phytoseiulus persimilis)(see Bolckmans 2015 claim 2). It is noted that a person of ordinary skill in the art would also know that Phytoseiulus have a very narrow host range. However, it is also noted that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Contrary to Applicants assertion Bolckmans 2015 discloses the mite species Phytoseiulus (i.e. Phytoseiulus persimilis)(see claim 2) and does not teach away from using the mite species Phytoseiulus. It is unclear how applicant believes the prior art of Bolckmans 2015 is teaching away when the mite species Phytoseiulus (i.e. Phytoseiulus persimilis) is recited in the claims (see claim 2). Furthermore, the obviousness rejection recites the prior art of Rifa obtaining a predatory mite population comprising Phytoseiulus predatory individuals capable of reproduction on a non-tetranychid arthropod prey (i.e. astigmatid mite) (see e.g. abstract, claims 1-19). Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate selecting and rearing a particular predator on a food source as taught by Rifa because both Bolckman and Rifa disclose methods of controlling and rearing predatory mites (see e.g. respective abstracts). Further, it is noted that the independent claim recites “non-tetranychid arthropod prey” which reads on a vast number of mite species. Contrary to applicants’ argument the claims recite “capable of reproduction” and do not recite “successfully selecting and rearing”.
Applicant argues that at the time of the invention, a person of ordinary skill in the art (POSA) understood that Phytoseiulus mites do not feed on non-Tetranychid arthropod species (Remarks, page 18). Applicant presents Exhibit 3 for disclosing that Phytoseiulus mites were known to be difficult to breed (Remarks, page 18). Applicant presents Exhibit 4 for disclosing that a skilled person is aware that Phytoseiulus species “require Tetranichids and more preferably eggs from Tetranichus urticase as a food source”(remarks, page 19). Applicant present Exhibit 5 for evidence that monophage predators (e.g. Phytoseiulus persimilis) can only feed on one species (see[0003])(remarks, 19).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
In response to applicant's argument that Phytoseiulus mites were known to be difficult to breed, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, Applicant presents Exhibit 2 also shows that the genus Phytoseiulus can supplement their diet with other nutrients (Remarks, page 16). Further, having the mite population being known to be difficult to breed does not mean that the population was not capable. As discussed above, Furthermore, the obviousness rejection recites the prior art of Rifa obtaining a predatory mite population comprising Phytoseiulus predatory individuals capable of reproduction on a non-tetranychid arthropod prey (i.e. astigmatid mite) (see e.g. abstract, claims 1-19).
Applicant asserts that Rifa reports that representatives of the Phytoseiid family may be reared on dead Astigmata prey, the genera (Amblyseius, Neoseiulus, Typhlodromalus, Typhlodromips, and Euseius) - all belonging to predators' types III - IV (par. bridging pages 6 - 7)(remakrs, page 19-20). Applicant argues that the prior art of Rifa does not mention the genus Phytoseiulus (remarks, page 20).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
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). As discussed above, the prior art of Bolckman discloses Phytoseiulus mites and the prior art of Rifa discloses a novel mite composition comprising a population of a phytoseiid predatory mite species, which encompasses the genus of Phytoseiulus mites. Further, Rifa discloses factitious host population comprising a species selected from the Glycyphagidae (i.e. non-tetranychid), which may be employed for rearing said phytoseiid predatory mite species (see e.g. abstract and claims).
Applicant argues that Phytoseiulus mites have been essentially still reared on T. urticae (see, e.g., Bolckmans US20090205057Al, e.g. para. [0008] cited by the Examiner)-with the disadvantage of being cumbersome and costly (Remarks, page 19).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Contrary to Applicants assertions that the predatory mite population of the monophage predators (e.g. Phytoseiulus persimilis) can only feed on one species (see[0003])(remarks, 19). It is acknowledged that Phytoseiulus mites have been essentially reared on T. urticae (see, e.g., Bolckmans US20090205057Al, e.g. para. [0008] cited by the Examiner)-with the disadvantage of being cumbersome and costly. Thus, a person of ordinary skill in the art before the effective filing date would have known that monophage predators of Phytoseiulus persimilis were capable of reproduction on non-tetranychid prey.
Applicant argues that the recited selection step of claim 66(c) is not taught by any of the cited references. Applicant argues that neither Blockman nor Rifa nor any other cited reference teach or suggest selecting individual mites because Bolckmans 2009 does not teach any methodology for selecting and that Rifa does not teach any selection process (Remarks, page 22-23). Further, Applicant argues that the prior art of Fidgett does not cure the deficiencies of Bockmans 2009 or Rifa. Applicant acknowledges that while Fidgett teaches a person of ordinary skill in the art to select a particular predator species based on the target pest to be controlled, the claim recites selecting Phytoseiulus individuals based on their capability of reproduction (remarks page 24).
Applicant arguments are acknowledged, have been fully considered, and have been deemed unpersuasive.
As discussed supra, it is acknowledged that the mites of the genus Phytoseiulus are specialist predators of Tetranychid mites as discloses in Bolckmans (2009). However, the prior art of Bolckman (2007) discloses that “due to the cost price of mites which are reared in this system (i.e. Tetranychus), only relatively low numbers can be released to control pests in a crop and does not indicate that the mites are not capable. Development of a mas-rearing method with a factitious host which can be reared on a suitable method would result in a much lower cost price”(page 7). Further, Bolckman (2007) discloses that “nevertheless one or more life stages of the factitious host or factitious prey (i.e. species of a different natural habitat (e.g. Glycyphagidae i.e. astigmatid mite species)) are suitable prey for at least one life stage of the phytoseiid predatory mite”(page 10). Therefore, a person of ordinary skill in the art would know that the mites of the genus Phytoseiulus are capable of preying on non-Tetranychid mites absent evidence to the contrary. 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). As discussed above, the prior art of Bolckman discloses Phytoseiulus mites and the prior art of Rifa discloses a novel mite composition comprising a population of a phytoseiid predatory mite species, which encompasses the genus of Phytoseiulus mites.
In response to Applicants argument, as discussed above, Fidgett is cited for discloses using crop pests that can be controlled using a single biological control product (para. 56). Accordingly, it would have been obvious for a person of ordinary skill in the art to have modified the methods of Bolckmans to incorporate a control reasonable expectation of success because Fidgett discloses using crop pests that can be controlled using a single biological control product (para. 56). Furthermore, an artisan of ordinary skill in the art of (i.e. rearing of predatory mites) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Claim 94 is rejected under 35 U.S.C. 103 as being unpatentable over Bolckmans et al., (US2015/0128864A1, published 2015, cited IDS 8/7/2023, prior art of record, hereinafter as “Bolckman”), in view of Rifa and Griffiths (WO2011/131791A1, published 2011, hereinafter as “Rifa”; prior art of record), Fidgett et al., (US2010/0119645A1, published 2010, prior art of record), Ferrero et al., (US2017/0231255A1, published 2017, prior art of record), Bolckman et al., (US2009/0205057A2, published 2009, hereinafter as “Bolckman (2009)”, prior art of record), and Yao, D. S., and D. A. Chant. (Oecologia 80 (1989): 443-455, published 1989, hereinafter as “Yao”, prior art of record), as applies to claims 66-70 and 78-93 above, and further in view of Nguyen, et al (Experimental and applied acarology 62.2: 181-194, published 2014).
This rejection is a new rejection as applicant has filed new claim 94; However, since it is substantially similar to a rejection set forth in the non-final Official action mailed on Feb. 20, 2026, therefore any aspect of applicant's response considered relevant to the rejection as newly set forth is responded to following the statement of rejection.
The teachings of Bolckmans et al., apply here as indicated above.
Regarding new claim 94, Bolckmans discloses a non-Tetranychid arthropod species (i.e. an Astigmatid mite species) that is selected from the group consisting of Carpoqlyphis lactis, Tyrophaqus putrescentiae, Aleuroglyphus ovatus, Acarus farris, Acarus siro, Suidasia medanensis, Thyreophagus entomophagus, (see e.g. para. 39-40); Glycyphagus domesticus, Lepidoglyphus destructor, (see e.g. para. 57), Dermatophagoides farina, Dermatophagoides pteronysinus, (see e.g. para. 39-40)
Bolckmans et al., do not explicitly state a non-Tetranychid arthropod species of Artemia.
However, the prior art of Nguyen discloses predatory mites of the family Phytoseiidae successfully reared six generation on the diet of Artemia franciscana cysts (i.e. a non-Tetranychid arthropod species of Artemia)(see e.g. abstract). Further, Nguyen discloses that the female mites’ fed on the artificial diet (i.e. Artemia franciscana cysts) displayed higher intrinsic rates of increase than those fed on several natural prey and performed as well as those reared on the factitious prey Carpoglyphus lactis L. (Acari: Carpoglyphidae), which is routinely used in the mass rearing of phytoseiid (see e.g. discussion section and fig. 1).
Accordingly, prior to the effective filing date of the instant claimed invention, it would have been prima facie to obvious for a person of ordinary skill in the art to have modified the methods, as taught by Zhang, to incorporate the non-Tetranychid arthropod species of artemia as taught by Nguyen, with a reasonable expectation of success because a person of ordinary skill in the art would know that the selection of suitable food substances is within the ambit of the knowledge of the skilled person (para. 60) and that a non-Tetranychid arthropod prey would encompasses all life stages (as suggested by Bolckmans, see e.g. para. 42). Further, a person of ordinary skill in the art would know that artemia is a well-known widely used foods in the laboratory rearing and commercial mass rearing of phytoseiid (as taught by Nguyen, see e.g. discussion section). Thus, a person of ordinary skill in the art would have had a reasonable expectation of success.
Hence, the claimed invention as a whole was prima facie obvious 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 66, 69, 79-81, 85, and 92, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5, 7, and 12 of U.S. Patent No. US 12310370B2, (Application No. 16/976,009; hereinafter as “‘370”).
This rejection is repeated with regard to claims 66-70 and 78-93 for the same reasons of record as set forth in the non-final Official action mailed on Feb. 20, 2026, therefore any aspect of applicant's response considered relevant to the rejection as newly set forth is responded to following the statement of rejection.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets indicate a method for rearing a predatory mite population with a selected non-Tetranychid arthropod, which are thus considered a species of the present claims, and would anticipate the present claims if available as prior art.
The ‘370 patented claims recite:
A method for rearing predatory mite population comprising at least one mite species of the genus Phytoseiulus, the method comprising: a. providing a rearing composition comprising:a predatory mite population of at least one mite species of the genus Phytoseiulus, and a prey mite population of individuals of at least one mite species from the order Astigmata, wherein said predatory mite population will oviposit for at least 2 generations on said Astigmata prey, further wherein said Astigmata prey is selected from the group consisting of non-viable eggs and a combination of non-viable eggs and non-viable mites of any developmental stage.; and b. allowing individuals of the predatory mite population to prey on individuals of the Astigmatid population for at least 2 generations (see claim 1 and claim 12).
While the instant claims recite:
A method for obtaining a predatory mite population comprising Phytoseiulus predatory individuals capable of reproduction on a non-tetranychid arthropod prey, said method comprising the steps of: (a) providing a rearing population of a predatory mite species selected from the genus Phytoseiulus, said rearing population comprising individuals of the Phytoseiulus species together with a suitable food source for the Phytoseiulus individuals, (b) providing preselected non-Tetranychid arthropod species to Phytoseiulus individuals as a food source (c) selecting Phytoseiulus individuals that are capable of reproduction while using the preselected non-Tetranychid arthropod individuals as a food source; and (d) rearing the selected Phytoseiulus individuals on a food source comprising the preselected non-Tetranychid arthropod species (see claim 66 and 69).
Thus, the patented claims could be used in the method of the instant claims as the predatory mite population and non-tetranychid arthropod prey if they were available as prior art. Providing guidance on instances where the method steps of the prior art and instant claims are the same, Ex parte Marhold, 231 USPQ 904, 905 (Bd. Pat. App. & Int. 1986) relying on In re Sussman, 141 F.2d 267, 269-70, 60 USPQ 538, 540-41 (CCPA 1944) states “[T]hat since the steps are the same, the results must inherently be the same unless they are due to conditions not recited in the claims.”
Accordingly, the patented claims are a species of the instant claims, and would thus anticipate the instant claims if they were available as prior art. Furthermore, the patented claim recites a rearing composition comprising a predatory mite population of at least one mite species of the genus Phytoseiulus, and a prey mite population of individuals of at least one mite species from the order Astigmatid. Thus, the instant claims are not patentable and distinct.
Regarding claims 66, 79-81 and 92, the ‘370 patent recites a rearing composition comprising: a predatory mite population of at least one mite species of the genus Phytoseiulus, and a prey mite population of individuals of at least one mite species from the order Astigmata, wherein said predatory mite population will oviposit for at least 2 generations on said Astigmata prey, further wherein said Astigmata prey is selected from the group consisting of nonviable eggs and a combination of non-viable eggs and non-viable mites of any developmental stage (claims 1-2, 4-5, and 7). Although claim 1 of the reference application teaches using a composition with a predatory mite population (i.e. Phytoseiulus), and a prey mite population from the order Astigmata (i.e. non-tetranychid), as used in the instant application, represents a species of the broader genus and would anticipate the broader genus recited in the reference application.
Regarding claims 69, 79-81, and 92, the ‘370 patent recites wherein said a method for rearing predatory mite population comprising at least one mite species of the genus Phytoseiulus, the method comprising: a. providing a composition according to claim 1; and b. allowing individuals of the predatory mite population to prey on individuals of the Astigmatid population for at least 2 generations (claim 12). Although claim 1 of the reference application teaches using a composition with a predatory mite population (i.e. Phytoseiulus), and a prey mite population from the order Astigmata (i.e. non-tetranychid), as used in the instant application, represents a species of the broader genus and would anticipate the broader genus recited in the reference application.
This is a provisional nonstatutory double patenting rejection.
Response to Traversal:
Applicant argues that the ‘370 Patent does not disclose a selecting step. Applicant asserts that the ‘370 Patent is direct to a “rearing composition” and that the pending application is directed to “a method of obtaining” a predatory mite population (Remarks, page 25-27).
Applicant’s arguments with respect to the previous rejection of have been fully considered and are not persuasive.
In response to Applicants argument, the ‘370 patent literally recites “wherein said Astigmata prey is selected from the group consisting of non-viable eggs” (claim 1). Therefore, it is unclear how this does not encompass a selection.
In response to Applicants arguments, it is acknowledged that the patent is directed to a “rearing composition.” Contrary to Applicants argument the ‘370 patent discloses “a method for rearing predatory mite population comprising at least one mite species of the genus Phytoseiulus, the method comprising: a. providing a composition according to claim 1; and b. allowing individuals of the predatory mite population to prey on individuals of the Astigmatid population for at least 2 generations (see claim 12), which reads on the claims of the claims of the instant application. Providing guidance on instances where the method steps of the prior art and instant claims are the same, Ex parte Marhold, 231 USPQ 904, 905 (Bd. Pat. App. & Int. 1986) relying on In re Sussman, 141 F.2d 267, 269-70, 60 USPQ 538, 540-41 (CCPA 1944) states “[T]hat since the steps are the same, the results must inherently be the same unless they are due to conditions not recited in the claims.” Thus, as states supra, the patented claims could be used in the method of the instant claims as the predatory mite population and non-tetranychid arthropod prey if they were available as prior art.
Conclusion
No claim is 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 JOSEPHINE GONZALES whose telephone number is (571)272-1794. The examiner can normally be reached M-Th: 10AM - 5:00PM (EST).
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, Tracy Vivlemore can be reached at 571-272-0763. The fax phone number for the organization where this application or proceeding is assigned is 571-272-2914.
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.
JOSEPHINE GONZALES
Examiner
Art Unit 1638
/JOSEPHINE GONZALES/ Examiner, Art Unit 1638
/Tracy Vivlemore/ Supervisory Primary Examiner, Art Unit 1638
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