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 .
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.
Claim(s) 1, 7, 21, 23-25, and 35-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamamoto et al. (US2018/0362470).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1 and 7, Hamamoto broadly teaches applicant’s formula II, and specifically teaches a close structural variant, specifically Table 4, compound 4-2, which only differs in that the pyridinyl ring contains a CF3 group in the claimed position instead of the claimed cyclopropyl. However, it would have been obvious to substitute a cyclopropyl for this moiety in Hamamoto in order to form the claimed compound because Hamamoto clearly teaches wherein their X1 can be the claimed cyclopropyl and wherein this substituent also affords compounds with pesticidal activity as claimed (See Table 4, compound 4-2; [0138]; [0323-0413, inclusive]; e.g. [0330-0331]; [0338-0339]; [0342]; [0345-0346]; [0350]; [0353]). Hamamoto further teaches wherein their pesticidal compounds can be combined with additional active agents, including insecticidal or acaricidal actives into compositions, including those having a mechanism of action classified according to IRAC, and they specifically teach the claimed fipronil, acetamiprid, flonicamid, chlorfenapyr, tolfenpyrad, metaflumizone, cyantraniliprole, fluxametamide, etc. of instant claims 1 and 7 are useful for combining with the claimed compounds, (see entire document; [0323-0413, inclusive]; e.g. [0330-0331]; [0338-0339]; [0342]; [0345-0346]; [0350]; [0353];). Hamamoto teaches methods of controlling pests comprising applying their cmpds (which broadly include the now required formula II which is an obvious compound to make in Hamamoto based on the above) which can be in combination/used with additional insecticidal or acaricidal active components as claimed (as a composition) to veterinary animals via local, oral, parenteral and subcutaneous administration and also by immersion liquid or by spraying, pour-on, spot-on or the like or in a resin and kneading into a collar, etc. to administer to veterinary animals in need of pest control, which reads on the claimed step of applying at least one compound of formula (II) and an additional insecticidal or acaricidal active component to an object ([0419]).
Regarding claims 21, and 23, Hamamoto teaches wherein their compounds which broadly include the claimed formula II as discussed above can be mixed with additional active agents including the claimed insecticidal and/or acaricidal actives and the claimed fungicides and applied to objects to control pests, and they specifically teach wherein these fungicides having a mechanism of action according to FRAC code and include the claimed: benalaxyl, benalaxyl-M, furalaxyl, metalaxyl, metalaxyl-M, oxadixyl, clozylacon, and ofurace, bupirimate, dimethirimol, ethirimol, hymexazol, octhilinone, oxolinic acid, benomyl, carbendazim, chlorfenazole, fuberidazole, thiabendazole, thiophanate, thiophanate-methyl, diethofencarb, zoxamide, ethaboxam, etc. (see entire document; e.g. [0323]; [0362-0411]).
Regarding claims 24-25, Hamamoto teaches wherein the pests being controlled are insects or mites (see entire document; e.g. [0489]; [0415-0487]; [0226-0229]; [0033]; [0001]; [0008]; [0225-0324]; [0222];).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1, 7, 21, 23-25, 35-36, Hamamoto does not teach an express example of the claimed method or composition.
Regarding claims 1, 7, 21, 23-25, 35-36, Hamamoto also does not specifically teach the newly claimed mass ratios of compound (A), specifically of formula II, and the claimed compound (B) of 200:1 to 1:200, more specifically 10:1 to 1:10 that are now claimed in claims 1, 7, 35-36. However, it would have been obvious to one of ordinary skill in the art to determine the most effective mass ratios of these compounds because the claimed combinations are known as Hamamoto teaches that it was already known in the art at the time of the instant filing to combine the claimed formula (II) with the claimed secondary active agents as discussed above to objects to control pests and it was known in the art, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), and further it was obvious to optimize the mass ratios of known effective pesticidal compounds in combination with each other in order to find the most effective pesticidal mass ratios. This is something that one of ordinary skill in the art routinely performs when developing pesticidal combinations.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed composition and methods when looking to Hamamoto because Hamamoto teaches that it was already known in the art at the time of the instant filing to combine the claimed compound of formula (II) with the claimed secondary active agents as discussed above to objects to control pests and it was known in the art, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It also would have been obvious to combine applicant’s formula II which is broadly taught by Hamamoto as discussed above, and it would have been obvious to form this compound for use in the claimed combinations which are broadly taught by Hamamoto because as discussed above Hamamoto clearly teaches that their X1 can be the claimed cyclopropyl and as such it would be obvious to substitute the CF3 group in the 5 position on the ring with a cyclopropyl in order to form additional pesticidal compounds with the claimed acaricidal or insecticidal active and a fungicidal active agent from those claimed because Hamamoto does not limit the number of secondary active agents which include the claimed acaricidal, insecticidal and fungicidal active agents which can be combined with their active compounds to form their pesticidal compositions and method of controlling pests by applying their compounds and compositions to objects, and it is known, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 13, 18-19, 26-28, and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamamoto et al. (US2018/0362470) as applied to claims 1, 7, 21, 23-25, 29, and 31 above and further in view of CN1111474A (‘474) and Purdue (https://web.archive.org/web/20170503112650/https://www.extension.purdue.edu/extmedia/ppp/ppp-96.pdf).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Hamamoto teaches the inventions of claims 1, 7, 21, 23-25, 29, and 31 as discussed above and incorporated herein.
Regarding claims 13, 18-19, and 26-28, Hamamoto broadly teaches applicant’s formula II, and specifically teaches a close structural variant, specifically Table 4, compound 4-2, which only differs in that the pyridinyl ring contains a CF3 group in the claimed position instead of the claimed cyclopropyl. However, it would have been obvious to substitute a cyclopropyl for this moiety in Hamamoto in order to form the claimed compound because Hamamoto clearly teaches wherein their X1 can be the claimed cyclopropyl and wherein this substituent also affords compounds with pesticidal activity as claimed (See Table 4, compound 4-2; [0138]; [0323-0413, inclusive]; e.g. [0330-0331]; [0338-0339]; [0342]; [0345-0346]; [0350]; [0353]). Hamamoto further teaches wherein these pesticidal compounds can be used in conjunction with additional active agents, including the claimed insecticidal or acaricidal actives, including those having a mechanism of action classified according to IRAC, and they specifically teach the claimed fipronil, acetamiprid, chlorfenapyr, tolfenpyrad, metaflumizone, cyantraniliprole, fluxametamide, etc. are useful for combining with the claimed compounds of applicant’s formula (I) (see Table 4, compound 4-2 [0323-0413, inclusive]; e.g. [0330-0331]; [0338-0339]; [0342]; [0345-0346]; [0350]; [0353];). Hamamoto teaches methods of controlling pests comprising applying their compounds which include the claimed formula II which is rendered obvious as discussed above, and wherein these compound(s) can be in combination/used with the claimed additional insecticidal or acaricidal active components as claimed in a composition, to veterinary animals via local, oral, parenteral and subcutaneous administration and also by immersion liquid or by spraying, pour-on, spot-on or the like or in a resin and kneading into a collar, etc. to administer to veterinary animals in need of pest control, which reads on the claimed step of applying the claimed formula (II) which is rendered obvious by Hamamoto as discussed above and an additional insecticidal or acaricidal active component to an object ([0419]).
Regarding claims 26-28, Hamamoto teaches wherein the pests being controlled are insects or mites ([0489]; [0415-0487]; [0226-0229]; [0033]; [0001]; [0008]; [0225-0324]; [0222];).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 13, 18-19, 26-28, and 37, Hamamoto does not specifically teach a kit/set comprising the claimed active agents separated and wherein the kit/set further includes a mixing tank. These deficiencies in Hamamoto are addressed by ‘474.
‘474 teaches it was known to formulate pesticides into kits wherein the active agents/components of the pesticidal composition are separated in separate containers within a reagent box, and the teaching mixing the separated components of the pesticidal composition together in a reagent box which would read on the claimed mixing tank prior to application of the pest control composition.
Regarding claim 19, Hamamoto does not specifically teach a kit comprising the claimed active agent composition of claim 7. This deficiency is addressed by Purdue.
Purdue teaches that it was known to package pesticide formulations as a kit with a measuring cup (see pg. 29, box discussing QuickPro and photos of Quick pro formulations with attached measuring cup).
Regarding claims 13, 18-19, 26-28, and 37, Hamamoto also does not specifically teach the newly claimed mass ratios of compound (A), specifically formula II, and the claimed compound (B) of 200:1 to 1:200, more specifically 10:1 to 1:10 that are now claimed in claims 13 and 37. However, it would have been obvious to one of ordinary skill in the art to determine the most effective mass ratios of these compounds because the claimed combinations are known as Hamamoto teaches that it was already known in the art at the time of the instant filing to use the claimed compound of formula (II) with the claimed secondary active agents as discussed above to objects to control pests and it was known in the art, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition/set to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), and further it was obvious to optimize the mass ratios of known effective pesticidal compounds which are to be used in combination with each other in order to find the most effective pesticidal mass ratios. This is something that one of ordinary skill in the art routinely performs when developing pesticidal combinations.
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would be obvious to have formed the claimed combinations when looking to the prior art because Hamamoto broadly teaches applicant’s formula II as discussed above. It would be obvious to form the claimed combinations as a kit/set in the necessary mass ratios and as separate active agents because it is known to use pesticidal active agents in combination (e.g. mixed just prior to use and applied together, etc.) with other pesticidal active agents in order to form more effective pesticidal combinations. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed pest control agent set, e.g. a kit, wherein the claimed active agents are in separate containers because it was known in the art to separate components of pesticidal compositions as necessary/desired and to provide a reagent box for mixing the components together prior to application wherein the reagent box functions as a mixing tank. One of ordinary skill in the art would do this so that the combination can be mixed to the desired ratio range depending on what pests are being treated in what crops and the level of control that is necessary.
It also would have been obvious to have formulated compositions comprising the claimed active agents as a kit with a measuring cup because it was known in the art to formulate pesticide compositions as kits in a container with measuring cups included so that the cup stays with the pesticide and is therefore used exclusively with the pesticide in the kit for appropriate dosing of the pesticide.
It also would have been obvious to form the claimed combinations and methods with the claimed compound of formula II because as discussed above Hamamoto broadly teaches applicant’s formula II as discussed above, and it would have been obvious to form this compound for use in the claimed combinations which are broadly taught by Hamamoto because Hamamoto clearly teaches that their X1 can be the claimed cyclopropyl and as such it would be obvious to substitute the CF3 group in the 5 position on the ring with a cyclopropyl in order to form additional pesticidal compounds.
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the previous claim objections and 112(b) rejections which are hereby withdrawn.
Applicant’s amendments to the claims and new claims have prompted the revised/new grounds of rejection presented herein. Applicants arguments insofar as they pertain to the revised grounds of rejection are addressed herein but are not persuasive at this time.
Applicants first argue that they have demonstrated synergy with the now amended scope of combinations claimed and that in the previous response to arguments section the examiner stated that the synergistic results were not commensurate in scope with the claims which encompass various ratios of compound (A) to at least one compound (B). They argue that instantly amended claims now are limited only to the compounds with clear synergistic results which are not within the expected standard deviation and that the synergistic results are commensurate in scope with the instant claims and as such by limiting the composition to these features the claims are now in condition for allowance.
The examiner respectfully disagrees because while applicant’s have demonstrated synergistic results with the combination of compound (II) and the claimed single compound (B) claimed at specific ratios falling with in the claimed range of ratios, specifically for instance applicants have demonstrated synergy with compound II and carbofuran in ratios of 0.12:2 which corresponds to 3:50 and ratios of 0.5:31 which corresponds to 1:62. Thus, applicants have only demonstrated synergy with two ratios of compound II and carbofuran, and it appears two ratios of compound II and fipronil, etc. which is not at all commensurate in scope with claiming the entire mass ratio range of 200:1 to 1:200 for all of the claimed combinations especially since it is known to be obvious to combine known pesticidal compounds together in order to form effective pesticidal combinations. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), especially since Hashimoto teaches that their combinations can exhibit synergy (see [0323]), especially since one of ordinary skill in the art would not expect the claimed combinations to exhibit synergy across the entirety of the claimed mass ratio ranges of 200:1 to 1:200, etc. which are now claimed especially since applicants themselves demonstrate that not all ratios work with all herbicides in providing synergy and they also assert how unexpected synergy with herbicide combinations are.
Further, the examiner respectfully points out that currently applicant’s claims do not actually require any synergy. Additionally, the examiner also respectfully points out that firstly, even if applicants have demonstrated synergistic effects with their combinations compound II and the specific secondary active agents, these results are not still not commensurate in scope with the instant claims which encompass very wide range of mass ratios of compound (A)/compound II with the numerous compound (B) compounds and while applicant’s have demonstrated numerous instances of synergy in these combinations the claims are still not commensurate in scope with applicant’s results, e.g. applicants have demonstrated synergy with Compound II at 0.5 ppm and fluxametamide at 2 ppm which is a 1:4 mass ratio exhibits synergy because they expect 36% activity but observed 100%. Thus, the claimed ratio ranges do not necessarily lead to synergistic results for all combinations contrary to applicant’s assertions and as such applicant’s argued synergistic results are still not commensurate in scope with their claims as currently written because the claims as written would encompass combinations of compound II and the claimed compound B in ratios which are not synergistic and would therefore be obvious for the reasons discussed above. As the examiner previously pointed out, applicant’s results were achieved with very specific combinations in specific amounts and mass ratios, etc. which are much narrower in scope than applicants instant claims as not all of the claimed mass ratios are synergistic with all of the claimed combinations of active agents.
Applicants then argue that it takes a lot of trial and error to determine synergistic combinations. The examiner respectfully points out that whether or not applicant’s had to run a lot of experiments does not necessarily make their claims patentable as they are currently written because as discussed above the claims are still not commensurate in scope with applicant’s results because it is clear from applicant’s experiments that not all of the claimed compounds B are synergistic with formula II across the very broad ranges of mass ratios for the reasons discussed above, specifically that it appears that some compounds B were only tested in single sets of ratios with formula II and a single data point, e.g. if you only tested compound II with a specific compound B at 1:4 ratio and achieved synergy this would not support the claiming of mass ratios of 200:1 to 1:200 or even 10:1 to 1:10 as is instantly claimed because these results are not commensurate in scope with applicant’s claim scope as currently written.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
Conclusion
No claims are allowed.
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 Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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