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 .
Applicants’ amendment filed 8/18/2025 has been entered. Claim 19 was amended.
Claims 1, 3-6, 9-16, 19 and 20 are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/18/2025 has been entered.
Withdrawn rejections
Applicant's amendments and arguments filed 8/18/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.
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 1, 3-6, 9, 10, 12, 15, 16, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,262,711. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims require bifenthrin (compound of claim 6), 5-15 wt.% chlorantraniliprole in claim 1 and further comprise a phosphate ester of Formula 1 that is selected from tris-(2-ethylhexyl) phosphate, tri-n-octyl phosphate and tri-iso-butyl phosphate in claims 6 and 7. The patented claims do not require a ratio of chlorantraniliprole to phosphate ester of Formula 1, however claim 6 of the patented claims allows for any amount of the phosphate ester compounds, therefore, one of ordinary skill would have been able to optimize the ratios by routine optimization to a ratio of phosphate ester to diamide insecticide to 0.1:1 to about 20:1 with a reasonable expectation of success. Additionally, the method claims of the patented invention do not specify “sucking pests”, however, claim 1 recites that the composition is effective at controlling stink bugs and boll worms which are heteropteran and lepidoptera species within the genus of the sucking insect pests claimed.
Claims 1, 3-6, 9, 10, 12, 15 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 18 of U.S. Patent No. 11,559,057. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims require 5-9 wt.% chlorantraniliprole in claim 1 and further comprise a phosphate ester of Formula 1 that is selected from tris-(2-ethylhexyl) phosphate, tri-n-octyl phosphate and tri-iso-butyl phosphate in claims 6 and 7. The patented claims do not require a ratio of chlorantraniliprole to phosphate ester of Formula 1, however claim 2 of the patented invention allow for 5-50 wt.% of adjuvant comprising at least one efficacy enhancer which the phosphate ester compounds are selected from tris-(2-ethylhexyl) phosphate, tri-n-octyl phosphate and tri-iso-butyl phosphate. Therefore, one of ordinary skill would have been able to optimize the ratio of phosphate ester to diamide insecticide to 0.1:1 to about 20:1 with a reasonable expectation of success.
Claims 11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,262,711 (herein ‘711) in view of Morita (US 2010/0317700; December 16, 2010). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims require bifenthrin (compound of claim 6), 5-15 wt.% chlorantraniliprole in claim 1 and further comprise a phosphate ester of Formula 1 that is selected from tris-(2-ethylhexyl) phosphate, tri-n-octyl phosphate and tri-iso-butyl phosphate in claims 6 and 7. Claims 11 require specific surfactants selected from alkyl benzene sulfonates and claim 13 requires the diamide insecticide cyantraniliprole. It is for this reason that Morita is joined.
Morita et al. teach pesticidal compositions comprising an anthranilamide compound with improved pesticidal activity [0001]. The anthranilamide compounds are known to control Lepidoptera [0002]. The formulation comprising anthranilamides selected from chlorantraniliprole and cyantraniliprole in amounts of 0.1-45wt % (Compounds 4 and 5) [0010-19]. The formulations may further comprise another pesticide and a dispersant selected from polyoxyalkylene surfactants, polyhydric alcohol surfactants, carboxylic surfactants, sulfonic acid surfactants and C8-12 alkyl phosphoric acid ester surfactants and preferably, alkyl benzene sulfonates [0019-31]. The formulations are used against Silverleaf Whitefly (Hemiptera) and Western Flower Thrips (Thysanoptera) (Examples 1-3).
It would have been prima facie obvious to one of ordinary skill to in the art to combine the teachings of ‘711 and Morita et al. to select cyantraniliprole as the diamine insecticide as an active ingredient to control sucking pests with a reasonable expectation of success. One of ordinary skill in the art would have been motivated at the time of filing to combine the teachings ‘711 and Morita et al. to substitute cyantraniliprole in place of chlorantraniliprole since Morita et al. teach cyantraniliprole can be used interchangeably with chlorantraniliprole as an anthranilamide to control Hemiptera pests.
It would have been prima facie obvious to one of ordinary skill to in the art to combine the teachings of ‘711 and Morita et al. to select alkyl benzene sulfonates as dispersant with a reasonable expectation of success. One of ordinary skill in the art would have been motivated at the time of filing to combine the teachings ‘711 and Morita et al. to alkyl benzene sulfonate as a dispersant since Morita et al. teach alkyl benzene sulfonate is the preferred dispersant used in the formulation.
Claims 11, 13, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 18 of U.S. Patent No. 11,559,057 (herein ‘057) in view of Morita (US 2010/0317700; December 16, 2010). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims require 5-9 wt.% chlorantraniliprole in claim 1 and further comprise a phosphate ester of Formula 1 that is selected from tris-(2-ethylhexyl) phosphate, tri-n-octyl phosphate and tri-iso-butyl phosphate in claims 6 and 7. Claims 11 require specific surfactants selected from alkyl benzene sulfonates and claim 13 requires the diamide insecticide cyantraniliprole. Claims 19 and 20 further limit the insect to sucking pest selected from insect orders including Hemiptera. It is for this reason that Morita is joined.
Morita et al. teach pesticidal compositions comprising an anthranilamide compound with improved pesticidal activity [0001]. The anthranilamide compounds are known to control Lepidoptera [0002]. The formulation comprising anthranilamides selected from chlorantraniliprole and cyantraniliprole in amounts of 0.1-45wt % (Compounds 4 and 5) [0010-19]. The formulations may further comprise another pesticide and a dispersant selected from polyoxyalkylene surfactants, polyhydric alcohol surfactants, carboxylic surfactants, sulfonic acid surfactants and C8-12 alkyl phosphoric acid ester surfactants and preferably, alkyl benzene sulfonates [0019-31]. The formulations are used against Silverleaf Whitefly (Hemiptera) and Western Flower Thrips (Thysanoptera) (Examples 1-3).
it would have been prima facie obvious to one of ordinary skill to in the art to combine the teachings of ‘057 and Morita et al. to select cyantraniliprole as the diamine insecticide as an active ingredient with a reasonable expectation of success. One of ordinary skill in the art would have been motivated at the time of filing to combine the teachings ‘057 and Morita et al. to substitute cyantraniliprole in place of chlorantraniliprole since Morita et al. teach cyantraniliprole can be used interchangeably with chlorantraniliprole as an anthranilamide to control Hemiptera pests.
It would have been prima facie obvious to one of ordinary skill to in the art to combine the teachings of ‘057 and Morita et al. to select alkyl benzene sulfonates as dispersant with a reasonable expectation of success. One of ordinary skill in the art would have been motivated at the time of filing to combine the teachings ‘057 and Morita et al. to alkyl benzene sulfonate as a dispersant since Morita et al. teach alkyl benzene sulfonate is the preferred dispersant used in the formulation.
Claims 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 18 of U.S. Patent No. 11,559,057 (herein ‘057) in view of Bell (WO 2013/087396; June 20, 2013). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims require 5-9 wt.% chlorantraniliprole in claim 1 and further comprise a phosphate ester of Formula 1 that is selected from tris-(2-ethylhexyl) phosphate, tri-n-octyl phosphate and tri-iso-butyl phosphate in claims 6 and 7. Claim 18 includes formulating the concentrate as an oil dispersible composition. With respect to Claim 14, ‘057 does not further requires an oil in a total content of about 10-40 wt.%. It is for this reason that Bell et al. is joined.
Bell et al. teach agrochemical formulations comprising aromatic phosphate esters and cyantraniliprole (claim 1, page 3, lines 12-17; page 5, lines 3-10). The composition is formulated as an oil suspension comprising 0.04-5% active ingredient (page 6, line 22 through page 8, line 28). The amount of aromatic phosphate esters can range from 0.0005-90% v/v of the total composition. Bell et al. does not specify range, however one of ordinary skill would have been motivated to optimize the amount of oil to the range of 10-40 wt.% assuming the formulation comprises 5 wt.% insecticide and 60 wt.% phosphate ester by routine optimization. Therefore, the range of oil is not a patentable distinction since oil dispersions are claimed in ‘057.
Conclusion
No claims allowed.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1617