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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/18/2025 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Petrea et al. (6,948,276) in view of Nishimura et al. (2014/0066405).
Regarding claims 1-8 and 11-12: Petrea et al. teach a wetting agent formulation comprising the claimed tri-brached blocked copolymer with a glycerine (same as glycerol) base and three ethylene oxide/propylene oxide block copolymer branches attached thereto (Example 6), water, and a pesticide (column 8, lines 29-36).
Petrea et al. fail to specify a pesticide.
However, Nishimura et al. teach a liquid pesticide (insecticide) composition comprising neonicotinoid-based compound, a silicone-based surfactant, and propylene carbonate [0031-0036].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the liquid pesticide composition of Nishimura et al. to the composition of Perea et al. as the pesticide. The composition will be flowable liquid at room temperature as it is a liquid, sprayable pesticide composition.
Regarding claims 9 and 10: Petrea et al. teach a EO:PO ratio of from 5:95 to 95:5 (column 6, lines 30-34).
The ratio provides overlapping ranges to claims 9 and 10.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 17/962584 in view of Nishimura et al. (2014/0066405).
The copending application claims the wetting agent block copolymer and an alcohol ethoxylate.
The copending application fails to claim the solvents.
However, Nishimura et al. teach adding a liquid pesticide (insecticide) composition comprising neonicotinoid-based compound, a silicone-based surfactant, and propylene carbonate [0031-0036] to a wetting agent that will be in a water based spraying composition.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the liquid pesticide of Nishimura et al. and water to the wetting agent composition of the copending claims to produce a sprayable pesticide composition.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
The Applicant has made the argument that (a) there must be a motivation or suggestion to combine [or modify] the references, (b) there must be a reasonable expectation of success if the combination or modification is made, and (c) all the claim limitations must be considered.
With regard to (a): In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the liquid pesticide composition of Nishimura et al. to the composition of Perea et al. as the pesticide. Since Perea et al. is silent on a particular pesticide there is motivation to utilize prior art for a specific pesticide.
With regard to (b): The Applicant has alleged that there is no expectation of success. It is expected that the pesticide of Nishimura et al. will function as a pesticide in the composition of Perea et al. Both documents are in the same field of endeavor. Parea et al. is a composition for turf areas and/or lawns (column 1, lines 14-34) and Nishimura et al. is a pesticide for treatment for lawns [0063]. Adding the pesticide of Nishimura et al. to Perea et al. will result in a composition that is added to sandy soil in turf areas and/or lawns. Therefore, the pesticide in the composition will not be added directly to insects.
With regard to (c): All of the claim limitations have been considered. The Applicant has cited a polar solvent and a protic solvent. In the rejection the propylene carbonate is the polar solvent and the protic solvent is water.
The Applicant has alleged unexpected results. This is not persuasive because the claims are not commensurate in scope with the data provided.
Regarding the double patenting rejection, the Applicant alleges that the combination of references fails to teach a combination of a polar solvent and a protic solvent. This is not persuasive because the copending claims with the addition of the liquid pesticide of Nishimura et al. comprises the claimed combination of solvents. Moreover, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the liquid pesticide of Nishimura et al. and water to the wetting agent composition of the copending claims to produce a sprayable pesticide composition.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. 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://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN E USELDING/ Primary Examiner, Art Unit 1763