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 .
Status of Claims
Claims 1-20 are pending. This is the first office action on the merits.
Information Disclosure Statement
The Information Disclosure Statements filed 6/28/2022, 8/19/2024 and 11/26/2024 have been reviewed.
Election/Restrictions
Applicant’s election of Group I (claims 1-18), with traverse in the reply dated September 25, 2025 is acknowledged. The election of the species of tris-(2-ethylhexyl)phosphate for the Phosphate Ester of Formula I and suspension concentrate and premix for the formulation type with traverse in the reply dated September 25, 2025 is acknowledged.
The election of formulation type was incomplete, however, since two formulation types were elected when only a single formulation type was requested. In a telephone call with Sabine Epelbaum on November 6, 2025, the election of the formulation type of suspension concentrate was made.
The traversal is on the basis that the claims are linked by a single inventive concepts and shar special technical features that define a contribution over the art. Specifically, both groups recite a composition comprising bifenthrin and chlorantraniliprole, a defined weight ratio of bifenthrin to chlorantraniliprole, a bifenthrin concentration of 10-60 wt% and a liquid, concentrate, dispersion, suspension or emulsion formulation. Applicants argue that the method claims are directly dependent on the composition claims and the method cannot be practiced without the specific composition disclosed in Group I.
Applicants assert that the cited CN 107668063 (“CN”) does not teach the specific formulation types and elected phosphate ester species that are elected. Applicants argue that CN does not recite the exact ranges that are claimed and generically describes emulsion, wettable powders and dispersible granules but does not teach the specific formulation types such as suspension concentrates that are the subject of the instant claims with the claimed active ingredient ratios and concentrations.
Applicants also argue that the instant invention provides unexpected synergistic insecticidal activity and enhanced formulation stability that are not disclosed by CN.
This traversal is not found to be persuasive because CN describes synergistic compositions of bifenthrin and chlorantraniliprol in a ratio 5:1 to 1:20., which overlaps with the ranges in the insecticidal concentrate. (See Abstract and claim 1). Wettable powders, water dispersible granules, suspensions, water emulsions, microemulsions are prepared. (See claim 4). In Formulation 1 an amount of biphenthrin of 12% is used. 12% falls within the about 10% to about 60% required by the insecticidal concentrate. Therefore, CN teaches the specific formulation types (emulsions) and even teaches the special synergistic effect of the combination bifenthrin and chlorantraniliprole. Since this special synergy is taught by the prior art, it cannot be said to be unexpected.
As explained in the Restriction Requirement dated March 27, 2025, the international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). PCT Rule 13.1; MPEP § 1850. The requirement for unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. PCT Rule 13.2; MPEP § 1850.
Lack of unity of invention may be directly evident “a priori,” that is, before considering the claims in relation to any prior art, or may only become apparent “a posteriori,” that is, after taking the prior art into consideration. In the case of independent claims to A + X (i.e., composition claims) and A + Y (i.e., method claims), unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art. See MPEP § 1850(II).
In the instant case, it is the Examiner's position that the common technical feature that is shared by the groups is the insecticidal concentrate, the composition comprising bifenthrin and chlorantraniliprole, wherein (i) the weight ratio of bifenthrin to chlorantraniliprole on an active ingredient basis is from about 10:1 to greater than 1.5:1 or from less than 1.5:1 to about 1:10; (ii) the bifenthrin concentration is from about 10 wt% to about 60 wt%; and (iii) the composition is a liquid, a dispersion, a suspension, or an emulsion.
However, this composition is known in view of the prior art of CN 107668063 (2/9/2018)(6/28/2022 IDS)(“CN”). CN describes synergistic compositions of bifenthrin and chlorantraniliprol in a ratio 5:1 to 1:20. (See Abstract and claim 1). Wettable powders, water dispersible granules, suspensions, water emulsions, microemulsions are prepared. (See claim 4). The examples concern the treatment of corn borer in corn and also the gravity against moth and foot worm. Field tests against borer on cord and stalk borer and fruit moth are carried out. (See claim 5 and Examples). Thus CN teaches an emulsion with a weight ratio of bifenthrin to chlorantraniliprole in a ratio of from about 5:1 to 1:20, the ratio range overlapping with that of the technical feature of from 10:1 to 1.5:1.
Because the common technical feature of the groups is taught by the prior art, the groups lack unity of invention a posteriori and the common technical feature does not rise to the level of a special technical feature as required by PCT Rules 13.1 and 13.2. Thus, restriction between the groups is proper.
For the reasons set forth herein, the requirement for restriction is still deemed proper and is therefore made FINAL.
Claims 7-9, 12-15 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no linking or generic claim.
Claims 1-6, 10-11 and 16-18 are examined on their merits in light of the species of tris-(2-ethylhexyl)phosphate for the Phosphate Ester of Formula I and suspension concentrate for the formulation type.
Claim Objection
Claim 10 is objected to because of the following informalities: The recitation of “Claims 1” is plural when only a singular claim is referred to. This appears to be a typographical error. Appropriate correction is required.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-6, 10-11 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over CN 107668063 (2/9/2018)(“CN”) in view of Benfatti et al. US 2016/0050930 (2/25/2016).
CN is directed to a pesticide combination with active components biphenthrin and Rynaxypr, which is also known as chlorantraniliprole. (See [0003] and Abstract). CN teaches that the pesticidal combination is present in a ratio of 5:1 to 1:20 biphenthrin to chlorantraniliprole. (See CN claim 1). A ratio range of 5:1 to 1:20 overlaps with the from about 10:1 to greater than 1.5:1 called for in instant claim 1i). A ratio range of 5:1 to 1:20 overlaps with the from about 1.7:1 to about 10:1 called for in instant claim 2. A ratio range of 5:1 to 1:20 overlaps with the from about 1.7:1 to about 5:1 called for in instant claim 3.
A ratio range of 5:1 is close to about 4:1 called for in instant claim 4. It is considered to be close enough to the claimed range to render it obvious, given that there is no reason to expect a substantially different result when using 5:1 compared to using 4:1, especially since both the Biphenthrin and chlorantraniliprole are used for the same purpose of pesticidal activity. See MPEP 2144.05 I: “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.” Also, Applicant is reminded that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05 II.
CN teaches that the percentage of active component in the pesticidal combination of biphenthrin and chlorantraniliprole (referred to as Rynaxypr) is 10%-80%. (See [0009]). This is inclusive of about 40% with the ratio of biphenthrin to chlorantraniliprole of 5:1. This amounts to about 33.33% biphenthrin and 6.67% chlorantraniliprole. 33.33% biphenthrin falls within the about 20% to about 35% called for in instant claim 10. 33.33% biphenthrin also falls within the about 10% to about 60% called for in instant claim 1. 33.33% biphenthrin also falls within the about 10% to about 50% called for in instant claim 6. 6.67% chlorantraniliprole falls within the about 5% to about 9% called for in instant claim 10. 6.67% chlorantraniliprole also falls within the about 5% to about 15% called for in instant claim 11. 6.67% chlorantraniliprole also falls within the about 2% to about 13% called for in instant claim 6.
CN teaches that the amount of biphenthrin and chlorantraniliprole can vary within the ranges of a total weight percentage of from 10-80% and a mass ratio of 5:1 to 1:20 biphenthrin to chlorantraniliprole. The amounts of biphentrin within these parameters overlap with the from 11% to 20% bifenthrin called for in instant claim 11.
Formulation 7 has the following components:
21% Biphenthrin, 1% Rynaxypyr, 20% styrene polyoxyethylene ether ammonium sulfate salt（Emulsifying agent),8% octyl phenol polyoxy Vinyl ethers sulfate (Dispersant）6% organic silicone（Defoamer）0.5% hydroxyethyl cellulose (Thickener) 0.1% poly- second two Alcohol (Antifreezing agent) 0.1% dimethyl fumarate (Preservative）0.1% deionized water adds to 100%, and 21% Biphenthrin chlorine.
Formulation 7 teaches 8% dispersant which falls within the from about 1% to about 10% called for in instant claims 10 and 11. In Formulation 7, 0.5% hydroxyethyl cellulose is used. Hydroxyethyl cellulose is described as a thickener which is a rheology modifier as called for in instant claims 10 and 11. 0.5% falls within the from about 1% to about 12% called for in instant claim 11. 0.5% falls within the from about 0.05% to about 5% called for in instant claim 10.
In Formulation 7, the solvent of water was used and this is an agriculturally acceptable carrier compound as called for in instant claim 5. Formulation 7 also contains styrene polyoxyethylene ether ammonium sulfate salt, which is an emulsifying agent as identified in Formulation 7 that is an agriculturally acceptable adjuvant as called for in instant claim 5.
Formulation 7 has the thickener and rheology modifier in the amounts called for in claims 10 and 11. However, Formulation 7 does not have the claimed amounts of biphenthrin and chlorantraniliprole. However, CN teaches that the amounts of biphenthrin and chlorantraniliprole can vary within the ranges of a total weight percentage of from 10-80% and a mass ratio of 5:1 to 1:20 biphenthrin to chlorantraniliprole.
CN teaches that its formulations can contain and be prepared with wetting agents and exemplifies various formulations with wetting agents. (See [0011] and Formulations 1, 2, 3, 5, 6).
CN teaches that the combination of biphenthrin with chlorantraniliprole has significant synergistic pesticidal effect. (See final paragraph and [0005]).
CN does not expressly teach a suspension concentrate. CN does not teach an amount of water in a suspension concentrate. CN teaches wetting agents but does not teach an amount of a wetting agent in a suspension concentrate. CN does not teach tris-(2-ethylhexyl)phosphate. These deficiencies are made up for with the teachings of Benfatti et al.
Benfatti et al. (Benfatti) teaches methods of controlling insects that are resistant to neionicotinoid insecticides using certain compounds and compositions containing these compounds. Benfatti teaches that its compositions can include additional suitable pesticides including bifenthrin (see [0209], [0210]) and chlorantraniliprole. (See [0226]).
Benfatti teaches that compositions for use as aqueous preparations (aqueous solutions or dispersion) are generally supplied in the form a concentrate to which water can be added before use. (See [0205]). One of the formulation types that these compositions can be in is a suspension concentrate. (See [0185] and [0191]). Benfatti teaches that the formulation type that is chosen will depend on the particular purpose envisioned and the physical, chemical and biological properties of the compound. (See [0177]). A suspension concentrate is taught to be a preferred composition for use in the methods of controlling insects taught in Benfatti. (See [190-191]). Benfatti teaches a suspension concentrate with 30% to 88% water which overlaps with the from 20% to 60% called for in instant claim 11 and also overlaps with the from about 20 to about 70% called for in claim 10. (See [190-191]). Water itself as a carrier is called for instant claim 10 and water is called for in instant claim 11.
A suspension concentrate is called for in instant claim 10. Claim 11 calls for a concentrate and a suspension concentrate is a concentrate. A suspension concentrate is also a suspension and claim 1 calls for a suspension. Benfatti teaches that an emulsion of any desired concentration can be produced from suspension concentrates by dilution with water. (See paragraph following Table 13).
Benfatti teaches that in order to apply an active ingredient to insects and or crops of plants, the active ingredient is usually formulated in a composition which includes a surface active agent. An example of an especially preferred surface active agent is tris-(2-ethylhexyl)phosphate. (See [0172]). tris-(2-ethylhexyl)phosphate is called for in instant claims 17 and 18 and falls within the formula I in instant claim 16 when R1 is branched alkyl with 8 carbons, R2 is branched alkyl with 8 carbons and R3 is branched alkyl with 8 carbons.
Benfatti teaches that suspension concentrates can have Surface active agents (referred to as SFA) in an amount of from 1 to 40%. (See [0191]). Benfatti also teaches that wetting agents may be surface active agents of the cationic, anionic, amphoteric or non-ionic type. (See [0197]). Thus, since Benfatti teaches that wetting agents can be surface active agents and surface active agents can be present in an amount of from 1 to 40%, an ordinarily skilled artisan would choose an amount of a wetting agent of from 1 to 40% for the amount of a wetting agent. 1 to 40% overlaps with the from about 1% to about 10% of a wetting agent called for in instant claim 11.
Benfatti teaches that suspension concentrates are preferred compositions for the formulations of the Bifenfatti composition. (See [0191]).
It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the CN composition with 5:1 to 1:20 biphenthrin to chlorantraniliprole, 5% dispersant, 0.5% hydroxyethylcellulose and water carrier to select tris-(2-ethylhexyl)phosphate phosphate ester as the surface active agent and have the concentrate be a suspension concentrate with an amount of water of 30% to 88% and an amount of wetting agent of 10% to 40% as taught by Benfatti.
One of ordinary skill in the art would have been motivated to include tris-(2-ethylhexyl)phosphate ester surface active agent because Benfatti teaches that surface active agents improve water dilution and prevent crystallization with suitable surface active agents being tris-(2-ethylhexyl)phosphate, see paragraphs ([0172]) and [0182]).
One of ordinary skill in the art would have been motivated to use 10% to 40% wetting agent because Benfatti teaches that wetting agents are suitable components of suspension concentrates at these amounts, and can assist in the application of an active ingredient by being able to modify the properties of an interface (for example, liquid/solid, liquid/air or liquid/liquid interfaces), thereby changing properties that include wetting properties and can also act to reduce the rate at which particles settle in a suspension concentrate, see paragraphs ([0172], [0185] and [0197]).
One of ordinary skill in the art would have been motivated to formulate the composition of CN as a suspension concentrate disclosed by Benfatti because suspension concentrates enable the formulation to withstand storage for prolonged periods of times before use (see paragraph [0205]).
There would be a reasonable expectation of success because both CN and Benfatti are directed to pesticidal compositions containing bifenthrin and chlorantraniliprole.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6, 10-11 and 16-18 are directed to an invention not patentably distinct from claims 12-15 and 18 of commonly assigned U.S. Patent No. 11559057 in view of Benfatti et al. US 2016/0050930 (2/25/2016).
Specifically, although the claims at issue are not identical, they are not patentably distinct from each other because in the instant case each case the claims are drawn to a composition comprising an insecticidal concentrate composition comprising bifenthrin and chloroantraniliprole wherein the composition is a suspension concentrate with a weight ratio of bifenthrin and chloroantraniliprole from about 10:1 to greater than 1.5:1 or form less than 1.5:1 to about 1:10 and from about 10 to 60 wt% bifenthrin with a wetting agent, dispersant, rheology modifier and carrier with a tris-(2-ethylhexyl)phosphate ester.
Claims 12-15 and 18 of US Patent No. 11559057 are drawn to an insecticidal concentrate composition comprising bifenthrin and chloroantraniliprole wherein the composition is a suspension concentrate with a weight ratio of bifenthrin and chloroantraniliprole from about 10:1 to about 1:10 and from about 20 to 35 wt% bifenthrin with a wetting agent, dispersant, rheology modifier and carrier with a tris-(2-ethylhexyl)phosphate phosphate ester.
Claims 12-15 and 18 differ from those of the instant application in that they do not teach why a tris-(2-ethylhexyl)phosphate phosphate ester would be selected among the disclosed phosphate esters and they do not teach why a suspension concentrate would be selected among the formulation types. These deficiencies are made up for with the teachings of Benfatti.
The teachings of Benfatti are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the concentrate of US Patent No. 11559057 to select tris-(2-ethylhexyl)phosphate phosphate ester and have the concentrate be a suspension concentrate as taught by Benfatti in order to have the most preferred surface active agent that assists in applying the active ingredients to plants in a preferred formulation type as taught by Benfatti.
Claims 1-6, 10-11 and 16-18 are directed to an invention not patentably distinct from claims 12-15 and 18 of commonly assigned U.S. Patent No. 11559057 in view of Benfatti et al. US 2016/0050930 (2/25/2016), as described above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned U.S. Patent No. 11559057, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-6, 10-11 and 16-18 are directed to an invention not patentably distinct from claims 1, 6-9 and 11 of commonly assigned U.S. Patent No. 12262711 in view of Benfatti et al. US 2016/0050930 (2/25/2016).
Specifically, although the claims at issue are not identical, they are not patentably distinct from each other because in the instant case each case the claims are drawn to a composition comprising an insecticidal concentrate composition comprising bifenthrin and chloroantraniliprole wherein the composition is a suspension concentrate with a weight ratio of bifenthrin and chloroantraniliprole from about 10:1 to greater than 1.5:1 or form less than 1.5:1 to about 1:10 and from about 10 to 60 wt% bifenthrin with a wetting agent, dispersant, rheology modifier and carrier with a tris-(2-ethylhexyl)phosphate phosphate ester.
Claims 1 and 6-9 and 11 of US Patent No. 12262711 are drawn to an insecticidal concentrate composition comprising bifenthrin and chloroantraniliprole wherein the composition is a suspension concentrate with a weight ratio of bifenthrin and chloroantraniliprole from about 1.5:1 to about 5:1 and from about 20 to 35 wt% bifenthrin with a wetting agent, dispersant, rheology modifier and carrier with a tris-(2-ethylhexyl)phosphate phosphate ester.
Claims 1 and 6-9 and 11 differ from those of the instant application in that they do not teach why a tris-(2-ethylhexyl)phosphate phosphate ester would be selected among the disclosed phosphate esters and they do not teach a suspension concentrate as the formulation type. These deficiencies are made up for with the teachings of Benfatti.
The teachings of Benfatti are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the concentrate of US Patent No. 12262711 to select tris-(2-ethylhexyl)phosphate phosphate ester and have the concentrate be a suspension concentrate as taught by Benfatti in order to have the most preferred surface active agent that assists in applying the active ingredients to plants in a preferred formulation type as taught by Benfatti.
Claims 1-6, 10-11 and 16-18 are directed to an invention not patentably distinct from claims 1, 6-9 and 11 of commonly assigned U.S. Patent No. 12262711 in view of Benfatti et al. US 2016/0050930 (2/25/2016) as described above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned U.S. Patent No. 12262711, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-6, 10-11 and 16-18 are provisionally rejected as being unpatentable over claims 1-6, 10-11 and 16-18 of commonly assigned U.S. Patent Appn. No. 19/079958 in view of Benfatti et al. US 2016/0050930 (2/25/2016).
Specifically, although the claims at issue are not identical, they are not patentably distinct from each other because in the instant case each case the claims are drawn to a composition comprising an insecticidal concentrate composition comprising bifenthrin and chloroantraniliprole wherein the composition is a suspension concentrate with a weight ratio of bifenthrin and chloroantraniliprole from about 10:1 to greater than 1.5:1 or form less than 1.5:1 to about 1:10 and from about 10 to 60 wt% bifenthrin with a wetting agent, dispersant, rheology modifier and carrier with a tris-(2-ethylhexyl)phosphate phosphate ester.
Claims 1-6, 10-11 and 16-18 of US Patent Appn. No. 19/079958 are drawn to an insecticidal concentrate composition comprising bifenthrin and chloroantraniliprole wherein the composition is a suspension concentrate with a weight ratio of bifenthrin and chloroantraniliprole from about 10:1 to about 1:10 and from about 10 to 60 wt% bifenthrin with a wetting agent, dispersant, rheology modifier and carrier with a tris-(2-ethylhexyl)phosphate phosphate ester.
Claims 1-6, 10-11 and 16-18 differ from those of the instant application in that they do not teach why a tris-(2-ethylhexyl)phosphate phosphate ester would be selected among the disclosed phosphate esters and they do not teach why a suspension concentrate would be selected among the formulation types. These deficiencies are made up for with the teachings of Benfatti.
The teachings of Benfatti are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the concentrate of US Patent Appn. No. 19/079958 to select tris-(2-ethylhexyl)phosphate phosphate ester and have the concentrate be a suspension concentrate as taught by Benfatti in order to have the most preferred surface active agent that assists in applying the active ingredients to plants in a preferred formulation type as taught by Benfatti.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 10-11 and 16-18 are directed to an invention not patentably distinct from claims 1-6, 10-11 and 16-18 of commonly assigned U.S. Patent Appn. No. 19/079958 in view of Benfatti et al. US 2016/0050930 (2/25/2016) as described above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned U.S. Patent Appn. No. 19/079958, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
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Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
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.
/SARAH CHICKOS/
Examiner, Art Unit 1619
/SARAH ALAWADI/Primary Examiner, Art Unit 1619