DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 21 September 2026 has been entered.
Status
Applicant’s response dated 21 September 2026 to the previous Office action dated 22 April 2026 is acknowledged. Pursuant to amendments therein, claims 1-3, 5, and 7-47 are pending in the application.
The rejections under 35 U.S.C. 112 made in the previous Office action are withdrawn in view of applicant’s claim amendments, but new rejections under 35 U.S.C. 112 are made herein in view of applicant’s claim amendments.
The rejections under 35 U.S.C. 103 made in the previous Office action are withdrawn in view of applicant’s claim amendments, but new rejections under 35 U.S.C. 103 are made herein in view of applicant’s claim amendments as set forth below.
Election/Restrictions
Claims 9-46 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 31 July 2023.
Claims 1-3, 5, 7-8, and 47 are under current consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5, 7-8, and 47 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 47 recite “wherein the at least one microcapsule has a median particle size (D50) of less than 5µm”, and applicant cites to Examples 1-4 in support of such limitation (remarks page 12), yet such subject matter is not described in Examples 1-4 or elsewhere in the specification as filed.
Claim 1 recites “wherein the active agent remains stable in a liquid phase at room temperature prior to and after the microcapsule formation”, and applicant cites to Examples 1-4 in support of such limitation (remarks page 12), yet such subject matter is not described in Examples 1-4 or elsewhere in the specification as filed. Claims 2-3, 5, and 7-8 are rejected as depending upon claim 1 without remedying such deficiency.
Claim 8 recites “wherein the median microcapsule diameter is 1-5 microns”, and applicant cites to Examples 1-4 in support of such limitation (remarks page 12), yet such subject matter is not described in Examples 1-4 or elsewhere in the specification as filed.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 fails to include all the limitations of claim 1 upon which it depends in that the median microcapsule diameter range is 1-5 microns in claim 8 whereas claim 1 limits the median particle size (D50) of the microparticle (i.e., median microcapsule diameter) to less than 5 micron.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 5, and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dave et al. (US 2013/0109569 A1; published 02 May 2013; of record) in view of Coelho et al. (US 2019/0343122 A1; published 14 November 2019; of record).
Dave et al. discloses a stable aqueous pesticidal composition comprising: 1) a microcapsule consisting of (a) a water insoluble, thin-wall polyurea shell prepared by an interfacial polycondensation (i.e., polymerization) reaction between a water soluble polyamine monomer and an oil soluble polyisocyanate monomer and (b) a core comprising a low melting active ingredient, wherein (ii) the polyurea shell has a thickness of greater than about 20 nm and less than about 75 nm; (iii) the average microcapsule size is from about 10 μm to about 25 μm; (iv) the weight ratio of the core to the polyurea shell is from about 2 to about 165; (v) the low-melting active ingredient is present in an amount of from about 200 g/L to about 750 g/L; (vi) the core comprises no more than 5% of oil solvent with respect to the total weight of the core; and 2) a solid emulsifying or solid dispersing surfactant present in an amount, with respect to the total composition, of from about 5 g/L to about 150 g/L (claim 15) wherein the water soluble polyamine monomer is a diamine and the oil soluble polyisocyanate monomer is a diisocyanate (claim 16) wherein the composition includes polyvinyl alcohol surfactant (claim 22) wherein the composition further comprises one or more additional active ingredients (claim 27) wherein the core may carry additional pesticides or other ingredients such as semiochemicals (paragraph [0074]) wherein additional compatible ingredients include pheromones (paragraph [0095]) wherein the active ingredient is diluted with an oil solvent such as mineral oils or soybean oil (paragraph [0073]) wherein paraffin oil may be included (paragraph [0056]) wherein diisocyanates include isophorone diisocyanate and hexamethylene diisocyanate (paragraph [0075]) wherein diamines include ethylenediamine (paragraph [0076]) wherein application of the composition may be via spray (paragraphs [0007], [0028]) wherein the composition can control insects (paragraph [0028]) wherein a surfactant can be sodium lignosulfonate (paragraph [0096]) wherein a composition can have 0.94 wt% PAPI 27 (i.e., polyisocyanate) 1.99 wt% EDA (i.e., ethylenediamine) (Table 4) wherein an average microcapsule size is about 1-20 µm (claim 5) wherein prior to microcapsule formation the mixture can be brought to room temperature and then kept at room temperature through microcapsule formation (paragraph [0155]).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Dave et al. as discussed above and to make the composition of Dave et al. as discussed above as a spray to control insects with pheromones as semiochemicals and oil solvent diluent mineral oil or soybean oil in the microcapsule cores wherein paraffin oil (i.e., a species of mineral oil) is used as the mineral oil and using isophorone diisocyanate and ethylenediamine for the interfacial polymerization and using polyvinyl alcohol as surfactant wherein the microcapsules are about 1-20 microns average diameter and wherein prior to microcapsule formation the aqueous liquid mixture is brought to room temperature and then kept at room temperature through microcapsule formation, with a reasonable expectation of success.
Such range of about 1-20 microns overlaps the claimed ranges of less than 5 microns and 1-5 microns, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Dave et al. does not disclose that the pheromone is specifically a sex pheromone as claimed.
Coelho et al. discloses insect control strategies utilizing pheromones (title) wherein a known pheromone blend ratio of about 87:13 of (Z)-9-tetradecenyl acetate (Z9-14Ac) : (Z)-11-hexadecenyl acetate (Z11-16Ac) is known in connection therewith (paragraph [0082]).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Dave et al. and Coelho et al. as discussed above by using the pheromone blend ratio of about 87:13 of (Z)-9-tetradecenyl acetate (Z9-14Ac) : (Z)-11-hexadecenyl acetate (Z11-16Ac) (i.e., sex pheromones) of Coelho et al. as the pheromone in the microcapsule composition of Dave et al. as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to use therein a pheromone blend known in association with insect control strategies utilizing pheromones, given that Dave et al. suggests using pheromones therein, and given that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination per MPEP 2144.07.
Regarding claim 8, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to optimize insect control by varying the concentration of pheromone (i.e., insect control agent) in the composition of Dave et al. in view of Coelho et al. and Freed as discussed above through routine experimentation per MPEP 2144.05(II), with a reasonable expectation of success, given that the concentration of an active agent is a known result effective variable.
Further regarding claim 8, Dave et al. discloses a composition having 0.94 wt% PAPI 27 (i.e., polyisocyanate) 1.99 wt% EDA (i.e., ethylenediamine), thus having 2.93 wt% total microcapsule shell material content.
Claim(s) 1-3, 5, 7-8, and 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dave et al. in view of Coelho et al. as applied to claims 1-3, 5, and 7-8 above, and further in view of Moreno Moya (WO 02/35932 A1; published 10 May 2002; of record).
Dave et al. and Coelho et al. are relied upon as discussed above.
Dave et al. and Coelho et al. do not disclose the soybean oil as epoxidized as in claim 47.
Moreno Moya discloses diluent comprising natural or epoxidized vegetable oils (abstract) in agrochemical compositions (page 6 first paragraph) wherein epoxidized soybean oil is used therein (Table 1 page 8; claim 8).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Dave et al., Coelho et al., and Moreno Moya by making the sprayable microcapsules of Dave et al. in view of Coelho et al. as discussed above wherein epoxidized soybean oil as in Moreno Moya is used as the oil or soybean oil therein, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to use therein a type of soybean oil known to be used as diluent in agrochemical compositions as suggested by Moreno Moya, given that Dave et al. suggests using oil such as soybean oil as a diluent.
Response to Arguments
Applicant's arguments filed 21 September 2026 have been fully considered but they are not persuasive with respect to the current prior art rejections.
Applicant argues that a person of ordinary skill in the art would not have substituted the pheromones of Coelho et al for the principal ingredient of Dave et al. (remarks page 16). In response, Dave et al. specifically suggests including pheromones (paragraph [0095]) which provides sufficient motivation and expectation of success in including pheromones therein.
Applicant argues that the active ingredients of Dave et al. are not stable at room temperature (remarks page 17). In response, Dave et al. discloses stable aqueous liquid compositions that are brought to room temperature before and through microcapsule formation, as discussed in the rejections.
Applicant argues that adequate reasoning is not provided for making the particular selections in the rejections (remarks page 17). In response, the rejections provide reasoning for selecting and combining the references as set forth in the rejections. Moreover, the disclosure of “a multitude of effective combinations does not render any particular formulation less obvious.” Merck v. Biocraft, 10 USPQ2d 1843, 1846 (Fed Cir 1985). Furthermore, 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). Here, the rejections only take into account knowledge from the prior art and thus they are proper.
Applicant argues that rationale for replacement of the solvent of Dave et al. with the epoxidized soybean oil of Moreno Moya is lacking (remarks pages 18-19). In response, Dave et al. specifically suggests dilution with soybean oil, and Moreno Moya discloses diluent comprising natural or epoxidized vegetable oils in agrochemical compositions wherein epoxidized soybean oil is used therein, which provides sufficient motivation and expectation of success in using the epoxidized soybean oil as the soybean oil diluent in Dave et al., as discussed in the rejections.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached on (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
