NON-FINAL REJECTION
This application is a 35 U.S.C. 371 (national stage) application of PCT/US2021/025350, filed Apr. 1, 2021, which claims benefit of priority to provisional applications 63/005,138, filed Apr. 3, 2020 and 63/043,633, filed Jun. 24, 2020.
Claims 1-23 and 25-32, as amended, are pending.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-23, 28, and 32, drawn to compositions, and the following component species:
i. Farnesene as the sesquiterpene;
ii. Soybean oil as the oil;
iii. Sodium citrate as the buffering agent;
iv. Ethoxylated sorbitan fatty ester as the detergent or surfactant; and
v. Ethanol as the additive,
in the reply filed on Sep. 4, 2025 is acknowledged.
Claims 17, 18, 25-27, and 29-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on Sep. 4, 2025.
Claims 1-16, 19-23, 28, and 32 are pending and under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Sep. 29, 2022 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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.
Claims 1, 2, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jimenez et al. (WO 2013/039937, cited on PTO-892).
Jimenez et al. claims methods of enhancing the health of a plant comprising applying at least one terpene or terpenoid compound to the plant or an area around the plant, specifically a sesquiterpene, e.g., farnesene, in a composition with a carrier which is a vegetable oil (claims 1, 5, 8, and 16), e.g., soybean oil (para. [0090]). The composition is diluted before application to a plant (claims 17-18), implicitly disclosing that the composition is a concentrate.
Thus, Jimenez et al. claim concentrated agricultural compositions comprising farnesene and a vegetable oil as a carrier fluid, anticipating claims 1, 2, and 5.
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.
Claims 1-16, 23, 28, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Veierov (USPN 6,001,874), as evidenced by Sigma (Tween Product Information Sheets, 2003) (both cited on PTO-892).
Veierov claims methods for controlling arthropods comprising applying to foliage a composition comprising:
(i) a Behavior Interfering Compound (BIC), e.g., a terpenoid, in a concentration of about 2% wt/wt or less;
(ii) a vegetable oil, e.g., soybean oil, in a concentration of about 3% wt/wt or less; and
(iii) a surfactant or diluent, e.g., ethanol.
(claims 1, 4, 10, and 16).
Veierov discloses β-farnesene as a suitable BIC (col. 2, line 58 to col. 3, line 6).
Veierov exemplify and claim compositions formulated as a concentrate which is diluted with water before application, as recited by claim 28, wherein the concentrate comprises:
5 parts BIC (e.g., β-farnesene)
16 parts vegetable oil (e.g., soybean oil)
78 parts of polar co-solvent (such as ethanol)
1 parts of surfactant (preferably high hlb surfactant such as Tween 80 or Tween 20),
wherein diluting with water results in a composition with the BIC being present in a concentration of about 2% wt/wt or less, and with the vegetable oil being present in a concentration of about 3% wt/wt or less (claim 20; Example 1, part c).
As evidenced by Sigma, Tween 20 and Tween 80 are polyethylene sorbitol esters, also known as polysorbates, which are ethoxylated sorbitan fatty esters, the elected surfactant species, which reads on claims 9-16.
Thus, Veierov disclose, teach and suggest agricultural concentrates comprising farnesene, soybean oil as a carrier fluid, ethoxylated sorbitan fatty esters as a detergent/surfactant, and ethanol, as recited by claims 1-5 and 32.
The oil is present in the concentrate in an amount of 16%, which reads on the range recited by claims 6 and 7.
Veierov further exemplify compositions comprising citric acid, (Examples 4 and 6), as recited by claim 8. Citric acid also functions as a preservative, stabilizer, and/or acidifier, as recited by claim 23.
The rationale to combine farnesene, soybean oil, Tween 20 or 80, ethanol, and citric acid into a single composition is premised on the findings that (1) Veierov discloses each component claimed, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single exemplified embodiment; (2) one of ordinary skill in the art could have combined the elements by known methods, and that in combination, each ele-ment merely performs the same function as it does separately; and (3) one of ordinary skill in the art would have recognized that the results of the combi-nation were predictable.
As recognized by MPEP § 2143, combining prior art elements according to known methods to yield predictable results would motivate the skilled artisan to modify the references with a reasonable expectation of success. The rationale to support a conclusion of prima facie obviousness is that all the claimed elements were known in the prior art, and a skilled artisan could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc. (550 U.S. 398, 409).
Regarding the amounts of farnesene present in the composition, the concentrates of Veierov comprise the active BIC compound (e.g., β-farnesene) in an amount of 5%, rather than 0.001-1 wt.% as recited by claim 3, or 0.01-0.1 wt.% as recited by claim 4. However, Veierov explicitly teaches diluting the compositions with water, as recited by claim 28, so that final concentrations of each component vary, depending on how much water the user adds.
Regarding the amounts of detergent/surfactant present in the composition, as recited by claims 11-16, the concentrates of Example 1 comprise Tween 80 or Tween 20, in an amount of 1%, 3%, or 6%. The range of 1% to 6% Tween surfactant/detergent overlaps the endpoint of the range of 5% to 40% recited by claims 11, 13, and 15; and falls slightly below the range of 10% to 20% recited by claims 12, 14, and 16.
However, MPEP § 2144.05 recognizes that
Generally, differences in concentration or tempera-ture will not support the patentability of subject mat-ter 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 dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, it would have been predictable to one of ordinary skill in the art before the effective filing date to modify the amounts of the components in the compositions of Veierov with a reasonable expectation of success, because Veierov teaches that farnesene and Tween are present in the compositions in some amount, and the “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Claims 1-16, 19-23, 28, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Veierov (USPN 6,001,874), as evidenced by Sigma (Tween Product Information Sheets, 2003), further in view of Fujita (EP 1 618 784 A1) (all cited on PTO-892).
As set forth above, Veierov disclose, teach and suggest agricultural concentrates to be diluted with water before application to foliage comprising farnesene, soybean oil as a carrier fluid, ethoxylated sorbitan fatty esters as a detergent/surfactant, citric acid, and ethanol, as recited by claims 1-16, 20-23, 28, and 32.
Fujita claims aqueous agrochemical suspension compositions which contain an agrochemically active ingredient (e.g., an insecticide, bactericide, herbicide, or plant growth
control component) and at least one water-soluble compound selected from organic acids (e.g., citric acid) and salts of the organic acid (e.g., sodium citrate) (claim 1; p. 4, para. [0012]), as recited by claim 19.
Fujita teaches that agrochemical compositions comprising organic acids and organic salts, e.g., citric acid and sodium citrate, have the advantage of long-term stability and suppress particle growth over time (para. [0010]).
Therefore, it would have been predictable to one of ordinary skill in the art before the effective filing date to employ sodium citrate and citric acid in the compositions of Veierov to arrive at the compositions of claims 19-22 with a reasonable expectation of success, because the compositions of Veierov and Fujita are both taught for agricultural use, and Fujita teaches the advantages of long-term storage stability with reduced particle growth.
As recognized by MPEP § 2144.06, “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).
Citation of Additional Prior Art
Additional references made of record are considered pertinent to applicant's disclosure:
EP 0583774 B1 and BR 102015016404 A2 (machine translation included).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA E. TOWNSLEY whose telephone number is 571-270-7672. The examiner can normally be reached on Mon-Fri from 9:00 am to 6:00 pm (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jeff S. Lundgren, can be reached at 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SARA ELIZABETH TOWNSLEY/Examiner, Art Unit 1629