DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-6, 8-19, 21-23, and 25 are pending. Claims 3, 4, 11-19, 21-23, and 25 are withdrawn. Claims 7, 20, and 24 are cancelled. Claims 1, 2, 5, 6, and 8-10 are under consideration in this action
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-6 and 8-10) and insecticide as the elected species (claims 1, 2, 5, 6, and 8-10) in the reply filed on February 5, 2026 is acknowledged.
Applicant requests modification of the restriction so that Group I includes the dependent method of Group II, claim 11 as no further search burden is imposed for this dependent claim.
Applicant’s argument is not found persuasive because the present application is a national stage application, and thus the restriction is not predicated on whether or not a search burden is present.
Claims 3, 4, 11-19, 21-23, and 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 5, 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 allows for the option that “both a supramolecular host and guest chemical are present”. Claim 8, however, depends from claim 1, which only recites the supramolecular host and guest chemical in the alternative. Thus, claim 8 fails to further limit the subject matter of claim 1 as it widens the scope of claim 1 by allowing for the option of both a supramolecular host and supramolecular guest chemical to be present.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 5, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Piccolo et al. (Piccolo) (US 2009/0130155 A1; published May 21, 2009).
With regards to Claims 1 and 2, Piccolo discloses a formulation characterized by the formation of a supramolecular complex in cyclodextrins of: (i) an active principle consisting of a component with insecticidal, acaricidal, fungicidal, snailcidal, or vermicidal activity and (ii) a component able to synergistically enhance the activity of the active principle. The formulation is obtained by jointly subjecting both the active principle and the synergistic compound to supramolecular formation with cyclodextrin (CD) (reading on supramolecular host configured to engage in host-guest chemistry with the pesticide)(para.0011, 0014).
The formulation may be dissolved in water or in aqueous solutions of water-miscible solvents (reading on solvent) (para.0024).
With regards to Claim 5, among the suitable insecticides include malathion (para.0014).
With regards to Claim 8, as evidenced by the instant Specification, cyclodextrin is an example of a cavitand (container-shaped molecule that is capable of engaging in host-guest chemistry with guest molecules of a complementary shape and size (Spec., P.G. Pub., para.0077).
Claims 1, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dennis et al. (Dennis) (US 2004/0076681 A1; published Apr. 22, 2004).
Dennis discloses nanotubes of various sizes and composed of a wide variety of materials, or combination of materials. Dennis also discloses the use of such nanotubes for the delivery of various payloads (abstract).
With regards to Claims 1 and 8, Dennis discloses a nanotube comprising: a hollow tubular body comprising a first end and a second end, wherein the first end is open; and a first end cap positioned over the first open end, wherein the end cap is attached to the hollow tubular body by a covalent bond, and the particle has a maximum dimension of less than 100 µm, such as less than 500 nm (para.0012 ; Dennis claims 1, 4-6). Alternatively, the nanocap can be held in place by electrostatic forces, hydrogen bonding, or other non-covalent interactions (par.0012). Dennis discloses that the present invention allows for the preparation of nanotubes of controlled dimensions. Hence, the nanotube size can be specifically tailored to the problem at hand (para.0062).
A nanotube has unique attributes which make it an ideal candidate for many agricultural applications requiring the delivery of materials. The nanotubes provide a means of delivering many “payload” materials to a required site (para.0027). Among the suitable payload materials include pesticides (para.0027, 0054).
In an embodiment, the payload is encased within a hollow nanotube having closed ends. Such nanotubes provide significant advantages over nanospheres because payloads can be more easily and inexpensively loaded into the payload space using various existing technologies. The nanotube is then sealed to capture the payload material (para. 0030). The hallow nanotube having closed ends is a nanostructure, thus reading on a supramolecular host chemical configured to engage in host-guest chemistry with the pesticide.
The nanotube delivery system can be incorporated into compositions with a pharmaceutically acceptable carrier, which includes solvents (para.0103-0104).
With regards to Claim 9, the nanocap can also be used to direct movement of the nanotube-nanocap system. For example, this may be achieved by magnetic guidance of a nanocap containing magnetically responsive tag (para.0049).
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, 2, 5, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Piccolo et al. (Piccolo) (US 2009/0130155 A1; published May 21, 2009).
The teachings of Piccolo as they apply to Claims 1, 2, 5, and 8 are set forth above and incorporated herein. Additional relevant teachings of Piccolo are set forth herein.
With regards to Claim 6, Piccolo discloses that the quantity of active principle (e.g., insecticide) relative to cyclodextrin (reading on supramolecular host chemical) is between 1% and 50% w/w (Piccolo claim 6). Piccolo exemplifies using cyclodextrin in an amount between 2% and 15% by weight, e.g., 10% (para.0035). In the case that cyclodextrin is present in an amount of 10 wt.%, when the insecticide is present in amount relative to cyclodextrin of 50 wt.%, the insecticide would be present in the composition in an amount of about 5 wt.%.
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. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Piccolo discloses that the main purpose of supramolecular complexes of insecticides and cyclodextrins are: modification of the physico-chemical properties of active principles without however altering their biological activity once the active principles are released, greater stability, increased wettability, and bioavailability of poorly soluble and difficulty absorbable active principles, reduced environmental toxicity, reduced toxicity for operators (para.0006). In light of this disclosure, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to engage in routine experimentation to determine the optimal ranges within the disclosed ranges or other workable ranges of the amount of insecticide and cyclodextrin based on art recognized factors such as the level of infestation of the target area, the type of insecticide being applied, and the application method. Where 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, 105 USPQ 233 (CCPA 1955).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the teachings of the prior art references is fairly suggestive of the claimed invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Piccolo et al. (Piccolo) (US 2009/0130155 A1; published May 21, 2009) as applied to Claims 1, 2, 5, 6, and 8, further in view of Ward et al. (Ward) (US 6,130,186; published Oct. 10, 2000).
The teachings of Piccolo as they apply to Claims 1, 2, 5, 6, and 8 are set forth above and incorporated herein. Additional relevant teachings of Piccolo are set forth herein.
Piccolo does not appear to explicitly disclose the amount of solvent present in the composition (Claim 10). Ward is relied upon for this disclosure. The teachings of Ward are set forth herein below.
Ward discloses plant treatment compositions comprising exogenous chemicals, such as insecticides (col.1, ln.24-29; col.3, ln.8-10). In an embodiment, Ward discloses a shelf-stable concentrate composition comprising the exogenous chemical in an amount of about 15% to about 90% by weight (Ward claim 41). In an embodiment, the concentrate composition further comprises a liquid diluent, and wherein the composition comprises the exogenous chemical substance in an amount of about 15% to about 60% by weight (Ward claim 44), leaving about 40-85 wt.% for the liquid diluent. The concentrate composition, upon dilution, dispersion, or dissolution in water forms the sprayable composition (col.5, ln.1-9).
With regards to Claim 10, as discussed above, Piccolo discloses that the formulation may be dissolved in water or in aqueous solutions of water-miscible solvents. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. In particular, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Piccolo and Ward and engage in routine experimentation to determine the optimal amount of solvent within Ward’s disclosed range (e.g., about 40-85%) or other workable ranges of solvent in the agricultural formulation of Piccolo based on art recognized factors such as the level of infestation of the target area, the type of insecticide being applied, and how the formulation is being applied. Where 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, 105 USPQ 233 (CCPA 1955).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Claims 1, 2, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Dennis et al. (Dennis) (US 2004/0076681 A1; published Apr. 22, 2004) and Anderson et al. (Anderson) (US 2003/0031694 A1; published Feb. 13, 2003).
The teachings of Dennis as they apply to Claims 1, 8, and 9 are set forth above and incorporated herein. Additional relevant teachings are Dennis are set forth herein below.
Dennis discloses that pesticides can be incorporated into nanotubes and delivered by methods well known in the art such as aerial spraying or mechanical application. Nanotubes have an application in situations where a payload must be delivered to a specific site and/or when the release of the payload must be controlled (para.0028).
A nanotube prepared to deliver fertilizer or pesticide can be prepared from a material that degrades over time when subjected to defined environmental conditions (par.0031). The nanocap can be used to impart several novel functions and degrees of intelligence to the nanotube-nanocap delivery system. These include the sealing of the payload contents within the nanotube in a cost-effective manner (para.0043). The nanotube-nanocap combinations can be efficiently and cheaply loaded with payloads, offering a significant advantage over nanoparticle based delivery systems (para.0095).
Dennis does not appear to explicitly disclose wherein the pesticide is an insecticide (Claim 2). Anderson is relied upon for this disclosure. The teachings of Anderson are set forth herein below.
Anderson discloses controlled release particles (para.0042). Anderson discloses that agricultural active agents suitable for controlled release include insecticides (para.0067).
With regards to Claim 2, Dennis discloses that pesticides are suitable payloads for their nanotube-nanocap delivery system, which provides controlled release of the payload. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Dennis with Anderson and use insecticide as the payload in Dennis’s nanotube-nanocap delivery system. One of ordinary skill in the art would have been motivated to do so as Dennis’s nanotube-nanocap delivery system provide novel functions and degrees of intelligence, including sealing the payload content within nanotube in a cost-effective manner and also providing controlled release of the payload, and targeted delivery of the payload. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Dennis discloses that pesticides may be the payload for their delivery system, and Anderson discloses that insecticides are known to be suitable for controlled release.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Conclusion
Claims 1, 2, 5, 6, and 8-10 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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/MONICA A SHIN/Primary Examiner, Art Unit 1616