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 .
Acknowledgement is made to Applicant’s response filed 06/23/2026.
Claims 51-56, 61, 63, and 65-70 are pending.
Claims 55, 56, 61, 63, 65-70 remain withdrawn.
Claims 51-54 are currently amended.
Claims 51-54 are currently under consideration to the extent that they read upon Applicant’s elected species.
It is noted that Applicant elected:
Chlorantraniliprole as the specific anthranilamide compound,
Novaluran as the specific insecticide,
A weight ratio of the anthranilamide and insecticide of 1:10 to 10:1,
It is noted that in the process of searching the elected species of weight ratio that the Examiner came across art that reads on the weight ratio of 1:100 to 100:1, and for the sake of compact prosecution, the species election is expanded to read upon said ratio.
Applicant did not elect the weight of the components present or any additional ingredients being present.
Rejections Maintained and Made Again in view of Applicant’s Amendments
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 51-53 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 108432770 (CN ‘770).
CN ‘770 teaches a synergistic composition comprising (A) Rynaxypyr (Chlorantraniliprole) and (B) Nolvaluron (see entire document, for instance, claims 1-3 and page 4, 5th line). The ratio of components (A) to (B) is taught as being 100:1 to 1:100 or 50:1 to 1:50 (see entire document, for instance, page 3, third full paragraph). It is noted that CN ‘770 teaches several embodiments of the combination, including granules which comprise 9% of (A) and (B) (see embodiment 7), suspension seed coating agent which comprises 40% (A) and (B) (see embodiment 11), and seed treatment suspending agent which comprises 27% (A) and (B) (see embodiment 12). It is noted that the active agents can be present in an amount of 0.5-90% (see entire document, for instance, page 3, fourth full paragraph). Applicant is reminded that the intended use of a product claim carries no patentable weight unless it imparts a structural limitation. See MPEP 2111.02. Therefore, since the intended use of the composition in a method for insect pest control characterized by enhancing knock-down, having residual or prolonged control, and having high efficacy is merely identifying that the composition can have said features, and not imparting a structural limitation, it is the Examiner's position that the composition is capable of performing the intended use. It is further noted that MPEP 2112.01 states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
Regarding the product by process limitations of the claims, MPEP 2113 states that "product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps", and “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, it is noted that “[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Response to Arguments
Applicant argues in the Remarks filed 06/23/2026 that the prior art is directed to a different pest from those instantly claimed. Applicant’s argument is not found persuasive as the instant claims are directed to a product, not a method. Applicant further argues that the prior art does not teach Applicant’s intended use of the composition being a concentrate or ready for use sprayable composition, however, since the composition comprises all of the structurally required elements in their instantly required amounts, the composition is deemed to be capable of Applicant’s intended use.
New Grounds of Rejection – Necessitated by Applicant’s Amendments
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.
Claim(s) 51-54 (all claims currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 108432770 (CN ‘770).
CN ‘770 teaches a synergistic composition comprising (A) Rynaxypyr (Chlorantraniliprole) and (B) Nolvaluron (see entire document, for instance, claims 1-3 and page 4, 5th line). The ratio of components (A) to (B) is taught as being 100:1 to 1:100 or 50:1 to 1:50 (see entire document, for instance, page 3, third full paragraph). It is noted that CN ‘770 teaches several embodiments of the combination, including granules which comprise 9% of (A) and (B) (see embodiment 7), suspension seed coating agent which comprises 40% (A) and (B) (see embodiment 11), and seed treatment suspending agent which comprises 27% (A) and (B) (see embodiment 12). It is noted that the active agents can be present in an amount of 0.5-90% (see entire document, for instance, page 3, fourth full paragraph).
CN ‘770, while teaching the range of 50:1 to 1:50, does not exemplify the instantly claimed range of 1:1 to 1:2.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention, to utilize the range of 1:1 to 1:2 for the components of CN ‘770. One would have been motivated to do so since CN ‘770 directly teaches a range that overlaps the instantly claimed range. It is noted that MPEP 2144.05 states: "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. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” Further, MPEP 2144.05 states: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Applicant is reminded that the intended use of a product claim carries no patentable weight unless it imparts a structural limitation. See MPEP 2111.02. Therefore, since the intended use of the composition in a method for insect pest control characterized by enhancing knock-down, having residual or prolonged control, and having high efficacy is merely identifying that the composition can have said features, and not imparting a structural limitation, it is the Examiner's position that the composition is capable of performing the intended use. It is further noted that MPEP 2112.01 states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
Regarding the product by process limitations of the claims, MPEP 2113 states that "product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps", and “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, it is noted that “[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/TREVOR LOVE/Primary Examiner, Art Unit 1611
Prosecution Insights