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 .
Applicant’s arguments, filed 09/11/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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, 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 1-3, 6, 7, and 13, stand rejected under 35 U.S.C. 103 as being unpatentable over Sano et al (WO 2018123971 A1, cited on IDS dated 09/01/2022) in view of Sawamura et al (JPH05902A, cited on IDS dated 09/01/2022).
Sano et al teach solid compositions for pest control comprising cyclaniliprole dissolved in a polar organic solvent, absorbed in an oil-absorbing powder and granular carrier (abs, ¶ 86). As evidenced by the instant specification, cyclaniliprole is a ryanodine receptor modulator (see ¶ 8 of the instant specification). The polar solvent is N-methyl-2-pyrrolidone, N,N-dimethyloctanamide, N,N-dimethyldecanamide, N-octyl-2-pyrrolidone, cyclohexanone, etc. (¶ 14). The granular carrier has a particle size of greater than 200 microns (i.e., greater than 0.2 mm) (¶ 16). The granular carrier itself may be a void-comprising material by or on which oily components can be absorbed or deposited (¶ 16). Granular carriers include minerals selected from pumice, silica sand, etc. (¶ 16). The composition can be used in combination with other pesticides other than cyclaniliprol and may be added to any of the components during at the time of preparation (¶ 26). Active agents include permethrin, cyfluthrin, beta-cyfluthrin, gamma-cyhalothrin, lambda-cyhalothrin, bifenthrin, deltamethrin, cypermethrin, alpha- beta- gamma- and zeta-cypermethrin, fenpropathrin, tefluthrin, fenvalerate, esfenvalerate, tau-fluvalinate, etc. (¶ 32). The working examples comprise polar solvent in amounts of 1.5, 6.74, etc. parts by weight, and the granular carrier in amounts of 95.65 parts by weight (examples 1, 2). The amount cyclaniliprole is usually 0.01 to 98 parts by weight with respect to the total weight of the composition, with working examples comprising 0.75 parts by weight cyclaniliprole (¶¶ 19, examples 1, 2).
Sawamura et al teach pesticidal granular formulations where it was known solid carriers having an oil absorption capacity lower than 5 wt% based on its own weight may not be able to sufficiently absorb the active ingredient (¶¶ 44-45). Natural pumice stone, including Kagalite™ and Ishikawa Light™, is preferable among the solid carriers (¶¶ 41-42, 45-46).
Regarding claim 1, it would have been obvious to select from N,N-dimethyloctanamide, N,N-dimethyldecanamide, N-octyl-2-pyrrolidone, cyclohexanone, as the polar organic solvent, as taught by Sano et al.
Regarding the amount of polar organic solvent, it would have been obvious to formulate the granules made obvious above with polar organic solvent in an amount of 1.5 and 6.74 parts by weight from the working examples of Sano et al, falling within the claimed range.
Regarding the limitation of impregnated, it would have been obvious to absorb the active solvent solution with the granular carrier, as taught by Sano et al. Further, where the active agent is dissolved in a polar organic solvent and is absorbed into a water-insoluble, oil-absorbing granular carrier, it appears that the limitation of impregnated is met, where the instant specification defines “impregnated granular composition” where a pesticide is dissolved or dispersed in an organic solvent and is retained in a solid carrier.
It would have been obvious to select from suitable granular carriers, such as pumice, where pumice is taught to be suitable and where Sano et al teaches the granular carrier can absorb oily components. Examiner notes that pumice and silica sand are listed as suitable water-insoluble granular carriers having an oil-absorption capacity as instantly claimed, where pumice has an oil absorption capacity of 8 to 9% (see ¶¶ 16, 18, and 36 of the instant specification).
Additional motivation for selecting granular carriers with an oil capacity of 5 wt% or more based on the weight of the granular carrier is provided by Sawamura et al, where granular carriers having high oil-absorption capacities were known to have better absorption of active ingredients compared to those at lower amounts.
Regarding the amount of water-insoluble, oil-absorbing granular carrier, it would have been obvious to formulate the granules made obvious above with the oil-absorbing granular carrier in an amount of 95.65 parts by weight, as taught by Sano et al.
Regarding wherein the granular carrier comprises at least one of a natural mineral and a crushed mineral, where Sano et al teach pumice and silica sand are minerals, appear to be natural, and where the instant specification lists pumice and silica sand as natural minerals, it appears the limitation is met.
Regarding the hardness, where the granular composition made obvious above comprises the same components instantly claimed, including a ryanodine receptor modulator, a polar organic solvent with Hansen solubility parameters as instantly claimed, and with a water-insoluble, oil-absorbing granular carrier with particle diameters overlapping the claimed range, it appears that the hardness of the granular composition is inherent to the components of the composition. See MPEP 2112(II) and (III).
Regarding particle size of the granules, it would have been obvious to use a granular carrier with a particle size of greater than 200 microns (i.e., greater than 0.2 mm), as taught by Sano et al, falling within the claimed range.
Regarding claims 3, 6, and 7, it would have been obvious to further include a pesticidal active ingredient such as permethrin, cyfluthrin, beta-cyfluthrin, gamma-cyhalothrin, lambda-cyhalothrin, bifenthrin, deltamethrin, cypermethrin, alpha- beta- gamma- and zeta-cypermethrin, fenpropathrin, tefluthrin, fenvalerate, esfenvalerate, or tau-fluvalinate, as taught by Sano et al.
Regarding claim 13, where the granular carrier can be 95.65% by weight or more, the oil capacity of pumice, for example is evidenced as 8 to 9% by the instant specification, the weight content of cyclaniliprole in the working embodiments is 0.75 parts by weight, and the polar organic solvent can be 1.5 parts by weight from the working embodiments, the resulting ratio calculated from the formula of claim 13 is about 3.4:1, falling within the claimed ratio range.
Response to Arguments
First, Applicants assert none of the prior art documents disclose the specified range of Hansen solubility parameters of claim 1. Applicants assert the Hansen solubility parameters have not been known as a result-effective parameter to lower the coefficient of variation, and therefore, the skilled artisan would not have been motivated to reach the claimed composition. Second, Applicants assert none of the prior art references disclose the claimed composition as a while, where there are no teachings, suggestions, or motivation to combine the elements recited in claim 1; and further specify the ranges of Hansen solubility parameters, the amount of polar organic solvent, the diameter of the carrier, the oil absorption capacity of the carrier, the amount of carrier, and the hardness of the composition. Applicants argue the composition as recited in claim 1 is not obvious over the prior art when examined without hindsight. Third, Applicants cite MPEP 2141.02(III). Applicants requests the Office to consider that the inventor discovered the source of the problem developed by the invention by adopting the means recited in claim 1. Applicants assert the problem discovered by the inventor is the instability of the biological effect of the impregnated pesticide granular composition comprising a certain type of insecticidal compound. Fourth, Applicants assert the claimed subject matter exhibits unexpected property not possessed by the prior art. Applicants assert the impregnated pesticide granular composition showed a smaller coefficient of the variation in the analytical value of the nicotinic acetylcholine receptor competitive modulator or the ryanodine receptor modulator, as compared with that of the comparative results. Applicants assert the cited prior art are silent regarding this property. Applicants point to Tables 2 and 6 of the instant specification for evidence of unexpected results. Applicants assert the Hansen solubility parameters of the solvents used in Examples 1, 2, and 3 are within the claimed range, and the examples exhibited coefficient of variation of 0.7%, 4.0% and 1.2%, respectively. The parameter of the Solvesso 150, which is used in the comparative example 1, is outside the claimed range, and comparative example 1 showed higher (56.2%) coefficient of variation. Applicants assert the higher coefficient of variation means unfavorable results and that the skilled artisan would not have expected such a difference.
First, respectfully, this argument is not persuasive. As recited above, Sano et al teach compositions comprising polar organic solvent, where the polar organic solvent is N-methyl-2-pyrrolidone, N,N-dimethyloctanamide, N,N-dimethyldecanamide, N-octyl-2-pyrrolidone, cyclohexanone, etc., which are solvents with Hansen solubility parameters falling within the claimed range, as evidenced by claim 1 and the instant specification (see ¶ 13 and claim 1). Therefore, where the selection of N-methyl-2-pyrrolidone, N,N-dimethyloctanamide, N,N-dimethyldecanamide, N-octyl-2-pyrrolidone, cyclohexanone, etc., are made obvious above, the limitations are met.
Second, respectfully, this argument is not persuasive. In response to Applicants’ 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). As discussed above, the combination instantly claimed was made obvious by Sano et al and Sawamura et al, both of which are directed to pesticidal granular formulations comprising an oil-absorbing granule. As such, it would have been obvious for the skilled artisan to adjust the properties of the pesticidal granular composition based on the teachings of Sano et al, as well as those taught to be suitable for other pesticidal granular compositions, such as those taught by Sawamura et al above.
Third, respectfully, this argument is not persuasive. Applicants who allege the inventor discovered the source of a problem must provide evidence substantiating the allegation, either by way of affidavits or declarations, or by way of a clear and persuasive assertion in the specification. See MPEP 2141.02(IV). Applicants point to paragraphs [0007]-[0008] of the instant specification, however the examiner notes that the reproduced text from Applicants’ response appears to come from paragraph [0006]. It does not appear that the reproduced recitations meet the requirement of providing substantial evidence of discovery of the source of the problem. Applicants have simply stated that they have discovered the solution to a problem, however, no evidence or support has been provided to substantiate the allegation.
Fourth, respectfully, this argument is not persuasive. While it does appear that production examples 1-3 have a lower coefficient of variation than those of comparative examples 1-4, assuming purely arguendo that unexpected results have been established, the instant claims do not appear to be commensurate in scope with the results from tables 2 and 6. From table 2, the embodiments that were tested only used one active agent (clothianidin), the solvents Rhodiasolv Polarclean (methyl 5- (dimethylamino)-2-methyl -5-oxopentanoate), Agnique AMD810 (mixture of N,N- dimethyloctanamide and N,N-dimethyldecanamide) and N-octyl-2-pyrollidone, and natural pumice. Further, very specific amounts of each component were tested. It is not clear if the same improvements to the coefficient of variation would be the same across all nicotinic acetylcholine receptor competitive modulators or ryanodine receptor modulators, all of the polar organic solvents instantly claimed, all oil-absorbing granular carriers with an oil absorption capacity of 1-70 wt%, over the whole range of amounts for each component, and the particle sizes of the granular carrier. It does not appear that the results from tables 2 and 6 can be reasonably extended to include the entire scope of the instant claims. Additionally, the examiner notes that solvents are typically chosen and tailored for specific active agents and their specific amounts. It does not appear that the broad classes of active agents instantly claimed, with no limitations to the amount of active agent, would be reasonably expected to have the same properties and solubility in all of the instantly claimed solvents, and across the entire scope of the claims. Applicant must explain the manner in which the specific compositions illustrated are considered to be commensurate is scope with the claimed invention and to represent the appropriate comparison between the invention claimed and the prior art. See MPEP 716.02(d) and MPEP 2145.
Claims 1-3, 6, 7, and 13, stand rejected under 35 U.S.C. 103 as being unpatentable over Sano et al (WO 2018123971 A1), in view of Sawamura et al (JPH05902A), Pentland et al (WO 2019036754 A1), Elvy (Br. Crop. Prot. Counc. Monogr. No 18, 1976, pp. 102-108) and Whitehead (Br. Crop. Prot. Counc. Monogr. No 18, 1976, pp. 81-92).
Sano et al and Sawamura et al are discussed above, and for the sake of argument, if the hardness would not be expected to fall within the range instantly claimed, the following applies.
Pentland et al teaches it was known to formulate pesticidal granular composition with a crush strength (i.e., hardness) of at least 150 g and preferably at least 500 g (abs, ¶ 16).
Elvy teaches granular pesticides, where the ideal granular carrier has sufficient capacity to fully absorb the pesticide to be incorporated, is sufficiently hard to withstand attrition and wear during transport, will not cause wear to the manufacturing or application equipment, and has a uniform particle size with no dust (pg 102 intro).
Whitehead teaches granular pesticides where it was known that hard granules give a dust free product but may have degradation problems than softer granules, however, the softer granules are not dust free (pg 83 last ¶).
It would have been obvious to formulate the granules with a hardness that was known to be preferable for granular pesticidal compositions, such as at least 150 g (i.e., 0.15 kg) and preferably 500 g (i.e., 0.50 kg), as taught by Pentland et al, overlapping the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Further, it would have been obvious for the skilled artisan to routinely optimize the hardness of the granules, where granule hardness is a result effective variable that can be optimized to achieve desired properties, such as low dusting, wear resistance, pesticide absorption, etc., as taught by Elvy and Whitehead. See MPEP 2144.05(II).
Response to Arguments
Applicants assert none of the prior art documents disclose the claimed composition as a whole.
Respectfully, this argument is not persuasive for the same reasons discussed above and of record. The examiner notes that Applicants have not provided arguments with respect to the teachings of the additional cited references. Accordingly, the claims stand rejected for the same reasons above and of record.
Claims 4 and 5 stand rejected under 35 U.S.C. 103 as being unpatentable over Sano et al (WO 2018123971 A1) and Sawamura et al (JPH05902A) as applied to claims 1-3, 6, 7, and 13 above, and further in view of Ostergaard (WO 2015028034 A1).
Sano et al and Sawamura et al are discussed above but do not specifically teach the actives of claims 4 and 5.
Ostergaard teaches pesticidal mixtures comprising a solid carrier (pg 35 lines 4-10), solvent and active ingredients. The granules may be impregnated (pg 35 lines 1-2). Suitable actives include imidacloprid, thiamethoxam, clothianidin, cyclaniliprole, chlorantraniliprole, cyantraniliprole, etc. (pg 9, 12).
It would have been obvious to substitute other actives suitable for pesticidal granular compositions that can be impregnated for cyclaniliprole of Sano et al, such as those of Ostergaard, depending on desired pest to be treated, as a simple substitution of one known element for another to obtain predictable results. See MPEP 2143(I)(B).
Response to Arguments
Applicants assert none of the prior art documents disclose the claimed composition as a whole.
Respectfully, this argument is not persuasive for the same reasons discussed above and of record. The examiner notes that Applicants have not provided arguments with respect to the teachings of the additional cited references. Accordingly, the claims stand rejected for the same reasons above and of record.
Claims 4 and 5 stand rejected under 35 U.S.C. 103 as being unpatentable over Sano et al (WO 2018123971 A1), Sawamura et al (JPH05902A), Pentland et al (WO 2019036754 A1), Elvy (Br. Crop. Prot. Counc. Monogr. No 18, 1976, pp. 102-108) and Whitehead (Br. Crop. Prot. Counc. Monogr. No 18, 1976, pp. 81-92), as applied to claims 1-3, 6, 7, and 13 above, and further in view of Ostergaard (WO 2015028034 A1).
Sano et al, Sawamura et al, Pentland et al, Elvy, and Whitehead are discussed above but do not specifically teach the actives of claims 4 and 5.
Ostergaard is discussed above.
It would have been obvious to substitute other actives suitable for pesticidal granular compositions that can be impregnated for cyclaniliprole of Sano et al, such as those of Ostergaard, depending on desired pest to be treated, as a simple substitution of one known element for another to obtain predictable results. See MPEP 2143(I)(B).
Response to Arguments
Applicants assert none of the prior art documents disclose the claimed composition as a whole.
Respectfully, this argument is not persuasive for the same reasons discussed above and of record. The examiner notes that Applicants have not provided arguments with respect to the teachings of the additional cited references. Accordingly, the claims stand rejected for the same reasons above and of record.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA A ATKINSON whose telephone number is (571)270-0877. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM + Flex.
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/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612