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 .
DETAILED ACTION
This action is in response to Applicant’s amendment filed June 8, 2026 in reply to the Non-final Office Action mailed March 6, 2026. Claims 2-26 have been canceled. Claims 27-29 have been withdrawn. Claims 1, 30, and 31 are under examination.
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.
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 1, 30 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Trullinger et al. (U.S. Patent Application Pub. No. 2013/0089622).
Applicant Claims
Applicant claims a composition comprising a) a molecule having formula F1 (i.e. tiapyrachlor), and b) abamectin; wherein the weight ratio of a) to b) is 1:1.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Trullinger et al. disclose a composition comprising a) a molecule of formula 1, and b) an insecticide; wherein the molecule of formula 1 can be e.g. a molecule of formula F1 (i.e. tiapyrachlor); wherein the insecticide can be e.g. abamectin; and wherein the weight ratio of a) to b) is most preferably 1:1 (see abstract; paragraphs 0239, 0413, 0424; Table 1, compound 315; claims 4 and 13).
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Trullinger et al. do not anticipate the presently claimed subject matter with one specific example or preferred embodiment. However, the disclosure of Trullinger et al. is sufficient to render the presently claimed subject matter prima facie obvious within the meaning of 35 USC 103.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to employ the teachings of Trullinger et al., outlined supra, to devise Applicant’s presently claimed composition.
Trullinger et al. disclose a composition comprising a) a molecule of formula 1, and b) an insecticide; wherein the weight ratio of a) to b) is most preferably 1:1, and wherein the composition can successfully control pests. Since Trullinger et al. expressly disclose that the molecule of formula 1 can be e.g. a molecule of formula F1 (i.e. tiapyrachlor), and that the insecticide can be e.g. abamectin; one of ordinary skill in the art would thus be motivated to include the combination of the molecule of formula F1 (i.e. tiapyrachlor), and abamectin, in the composition, with the reasonable expectation that the composition will successfully control pests.
Therefore, one of ordinary skill in the art, in view of the cited prior art, would thus arrive at the claimed composition. Since the composition is the same, the properties must be the same as well, including the ability to control the specific species of pests listed in claim 31.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious 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 was 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
Applicant's arguments filed June 8, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “Trullinger recites not a single working example of any mixture of tiapyrachlor in combination with…abamectin”; that “Trullinger is merely speculative” that “the skilled artisan…would not have had a reason to believe that any particular combination would have resulted in greater-than-expected control of any particular pest”; and that “the present application is similar to that of Stepan (i.e. In re Stepan, 868, F.3d. 1342 (Fed Cir. 2017)” since “a single reference…is cited”, “the single reference lists many various ingredients that may or may not be present”, the “weight ratio range…has been identified having unexpected properties”, and the reference does not teach “any particular combination of ingredients will result in any particular unexpectedly beneficial properties”.
The Examiner, however, would like to point out the following:
1. Trullinger has not been cited for individually anticipating the presently claimed subject matter. Hence, Trullinger is not being relied on to disclose one specific example or preferred embodiment, or to recite verbatim Applicant’s claims, to preclude the patentability of the claimed subject matter. Trullinger, however, does render the claimed subject matter prima facie obvious within the meaning of 35 USC 103, and this, in fact, is already sufficient to preclude the patentability of the claimed subject matter.
2. In stark contrast to Applicant’s assertion, the present case is not similar to In re Stepan at all. In Stepan, the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) cannot dismiss an Applicant's evidence or shift the burden of proof when claiming routine optimization in an obviousness rejection. As Applicant here points out in their present remarks, PTAB (and the Examiner) in the Stepan case failed to recognize the criticality of the…Applicant’s claimed range of surfactants, and Pallas’s silence on the connection between optimizing surfactants and cloud point.
3. Unlike the situation in Stepan, the present prior art rejection does not rely on “routine optimization” at all. There is no claimed percentage range of any requisite constituent that has been claimed or identified as being critical. No connection between a critical range of any component and a specific property is being relied on for routine optimization. Again, there is no reliance on “routine optimization” at all in this case.
4. The present claims are directed to a composition comprising tiapyrachlor and abamectin in a 1:1 ratio. Trullinger is directed to the combination of a compound of Formula I and an insecticide in the ratio preferably of e.g. 1:1. Trullinger explicitly discloses that tiapyrachlor is a suitable compound of Formula 1, and that abamectin is a suitable insecticide. Not only that, Trullinger further discloses that the compound of Formula I, e.g. tiapyrachlor, may be used with the insecticide, e.g. abamectin, to form synergistic mixtures, and that “generally, weight ratios of the molecules of Formula I in a synergistic mixture with another compound are from about 10:1 to about 1:10…and even more preferably about 1:1”. This is an express disclosure in Trullinger itself. The 1:1 ratio is not somehow being attained by “routine optimization” based on the criticality of the concentration range of a surfactant, as Applicant would want is to believe.
5. Without question, then, one of ordinary skill in the art in view of Trullinger could certainly arrive at the claimed combination of tiapyrachlor and abamectin in a 1:1 ratio with a reasonable expectation of success, and, furthermore, would also reasonably expect that this combination in this ratio would exhibit a synergistic effect. Again, Trullinger expressly discloses that the compound of Formula I can be tiapyrachlor and also expressly discloses that the insecticide compound can be abamectin, and that the preferred ratio of these compounds is 1:1 for a synergistic effect. It is thus not a patentable advance in the art in any way whatsoever to select tiapyrachlor as the compound of Formula I and abamectin as the insecticide compound. It is not a patentable advance to include the two compounds in a 1:1 ratio. It is not a patentable advance to demonstrate that this combination in this ratio exhibits synergy. Without question, then, in stark contrast to Applicant’s assertion, this case is not similar to In re Stepan at all. Indeed, arriving at the claimed composition in view of Trullinger is really nothing more than the work of the ordinary mechanic in the art following the express disclosure of Trullinger like a recipe.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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/DAVID BROWE/Primary Examiner, Art Unit 1617
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