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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 10, 2026, that includes a response to the Final Office Action mailed November 10, 2025, has been entered. Claims 2-26 have been canceled; and claim 31 has been newly added. Claims 27-29 have been withdrawn. Claims 1, 30, and 31 are currently under examination in the application.
Withdrawal of Prior Objection - Abstract
The abstract of the disclosure has been satisfactorily amended. Therefore, the objection to the abstract presented in the Final Office Action mailed November 10, 2025 is hereby withdrawn.
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 February 10, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “while tiapyrachlor is disclosed in Trullinger” as an example of a compound of Formula I, that “Trullinger does not anticipate the previously claimed subject matter”; that “Trullinger states that its molecules of Formula I may be used with the compounds in the insecticide group 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”, that “any statement related to synergy is merely conjecture”; that “Trullinger is devoid of any disclosure, teaching, or suggestion of any particular combination of active ingredients”; that “a person having ordinary skill in the art would have had no motivation to select” tiapyrachlor and abamectin; that “while Trullinger speculates that a 1:1 ratio of some particular active ingredients may result in synergistic mixtures, it is clear that Trullinger did not have these two molecules in mind”; and “a person having ordinary skill in the art, in reviewing Trullinger alone, would not have arrived at the presently claimed subject matter absent hindsight”.
The Examiner, however, would like to point out the following:
1. Trullinger need not necessarily anticipate the presently claimed subject matter with one specific example or preferred embodiment, or to recite verbatim Applicant’s claims, to preclude the patentability of the claimed subject matter. Trullinger renders 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. Applicant has provided no hard evidence of any kind whatsoever to support the assertion that “while Trullinger speculates that a 1:1 ratio of some particular active ingredients may result in synergistic mixtures, it is clear that Trullinger did not have the combination of tiapyrachlor and abamectin in mind”. On the contrary, Trullinger is directed to the combination of a compound of Formula I and an insecticide in the ratio of e.g. 1:1. Trullinger explicitly discloses that tiapyrachlor is a suitable compound of Formula 1, and that abamectin is a suitable insecticide. Indeed, Applicant has correctly pointed out that Trullinger clearly provides that the compound of Formula I can be tiapyrachlor (i.e. “Applicant concedes that tiapyrachlor is disclosed in Trullinger” as a compound of Formula I). Applicant also correctly points out that Trullinger discloses that the other active can be an insecticide (i.e. the compound of Formula I may be used with the compounds in the insecticide group to form synergistic mixtures” and “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). Trullinger expressly discloses that the insecticide compound can be abamectin.
3. Hence, Trullinger expressly discloses that the compound of Formula I can be tiapyrachlor and also expressly discloses that the insecticide compound can be abamectin. 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. This is the work of the ordinary mechanic in the art following the express disclosure of Trullinger like a recipe.
4. Again, Applicant points out that “Trullinger states that its molecules of Formula I may be used with the compounds in the insecticide group to form synergistic mixtures”, and that the combination has a weight ratio “most preferably about 1:1”. With tiapyrachlor as the compound of Formula I and abamectin as the insecticide compound, it would clearly be obvious in view of Trullinger to employ this combination at a weight ratio of 1:1, and to reasonably expect this to be a synergistic mixture.
5. Applicant further contends that Trullinger does not provide proof that the specific combination of tiapyrachlor and abamectin in a weight ratio of 1:1 exhibits synergy. However, it is noted that the Trullinger reference does not need to provide proof of synergy to meet the claim limitations and render the claimed composition prima facie obvious. This is accomplished even if Trullinger never even mentioned synergy. Nevertheless, Trullinger, as Applicant points out, does expressly disclose that “its molecules of Formula I may be used with the compounds in the insecticide group to form synergistic mixtures”, and this is sufficient for one of ordinary skill in the art to thus reasonably expect the combination of tiapyrachlor and abamectin in a weight ratio of 1:1 exhibits synergy. The standard in this case is a reasonable expectation, and not an absolute guarantee with documented proof.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
Conclusion
No claims are allowed.
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