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 .
Election/Restrictions
Applicant’s response to the restriction/ election requirement from 5/28/2026 is acknowledged. Applicant has made the following election:
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Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). The restriction/ election requirement is hereby MADE FINAL. Claims 1 and 19 are pending, and have been examined herewith.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the amounts of the ingredients in “% by weight”, but does not recite whether is it is “w/w” or “w/v”, which renders these amounts vague and indefinite.
In the interest of compact prosecution the Examiner, consistent with Table 1 in the specification, the Examiner interprets that the limitations as directed to “% by weight (w/w)”.
Claim Objections
Claims 1 and 19 are objected to because of the following informalities.
Claim 1, limitations a. and c., recite limitations lacking a proper transitional phrase, and using “is”. Claim 1, limitation, b., uses inconsistent claim term format, and is also lacking a transitional phrase.
In the interest of compact prosecution, the Examiner interprets claim 1 as directed to.
An insecticidal composition for pest control comprising:
an insecticide from diacylhydrazine group selected from methoxyfenozide, present in an amount of 1 %- 30 % by weight (w/w);
an insecticide from diamide group selected from (w/w);
an additional insecticide selected from (w/w).
Claim 19 only recites the full name of “CS”, but not that of “SC”. Neither are common abbreviations for any one of them to be left without a full name. Claim 19 is further objected to for double use of essentially the same word in claim language, namely “the said”. In accordance with para [0022], and in the interest of compact prosecution, the Examiner interprets claim 19 as directed to: Suspension concentrate
19. The insecticidal composition as claimed in claim 1, wherein a formulation for the Suspension concentrate (SC) (ZC).
Appropriate correction is required.
Specification
The title of the invention is objected to. The word “of” in “comprising of” is redundant. Appropriate correction is required.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 20210127680 to Rengan et al. (“Rengan”).
Rengan discloses an agricultural a combination comprising: at least one insecticidal diamide compound; at least one benzoylphenyl urea compound; and at least third insecticidal compound. (Abstract, Title). Claim 1 is directed to a combination comprising: a) at least one insecticidal diamide compound selected from the group consisting of broflanilide, chlorantraniliprole, cyantraniliprole, cyclaniliprole, cyhalodiamide, flubendiamide, tetrachlorantraniliprole, tyclopyrazoflor, and tetraniliprole; b) at least one benzoylphenyl urea compound; and c) at least a third insecticidal compound. Claim 4 recites that the third insecticidal compound is, inter alia, methoxyfenozide and flonicamid.
Per Rengan, the preferred combinations may be selected from the combinations of Table 1, which lists individual combinations of “Diamide compound Benzoylphenyl urea Third insecticide”. ([0509]). Table 1 recites that such preferred combinations are: “31 Chlorantraniliprole Chlorfluazuron Methoxyfenozide”, “41 Chlorantraniliprole Chlorfluazuron Flonicamid”, 427 “Chlorantraniliprole Novaluron Methoxyfenozide”, “437 Chlorantraniliprole Novaluron Flonicamid”.
Rengan further discloses Applicant’s claimed ranges. “[0548] In an embodiment, the total amount of diamide insecticidal compound in the composition may typically be in the range of 0.1 to 99% by weight, preferably 0.2 to 90% by weight. The total amount of benzoylphenyl urea insecticide in the composition may be in the range of 0.1 to 99% by weight. The total amount of the other insecticidal active in the composition may be in the range of 0.1 to 99% by weight. [0549] In an embodiment, the constituent insecticides of the combination of the present invention may be admixed in ratio of (1-80):(1-80):(1-80) of the benzoylphenyl urea insecticide, amide insecticidal compound and one other insecticide respectively.”
Rengan further discloses that the constituents may be formulated as capsule suspensions and ZC formulations. ([0551]).
“[0575] As demonstrated, the addition of a third insecticidal active to a combination of amide insecticidal compound and benzoylphenyl urea insecticides greatly improved the control of pests at a locus as well as improved yield and demonstrated a synergistic effect.”
It is noted that to the extent that there is any data of synergy in Applicant’s specification, it relates to the combination of just two of the claimed ingredients, namely chlorantraniliprole and methoxyfenozide. Rengan explicitly discloses this specific combination in Table 1, formulations 31 and 437. It further discloses combinations with Applicant’s third insecticide flonicamid.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 2, 3 and 4 of copending Application No. 18/866,818 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose overlapping subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The claims of the instant application are directed to:
An insecticidal composition for pest control comprising:
an insecticide from diacylhydrazine group selected from methoxyfenozide, present in an amount of 1 %- 30 % by weight (w/w);
an insecticide from diamide group selected from (w/w);
an additional insecticide selected from (w/w).
The claims of the reference application are directed to:
1. A fluxametamide composition comprising: A) fluxametamide or its agrochemically acceptable salts in an amount of 1 to 20 w/w %; B) at least one or more insecticide(s) selected from class of diamides in an amount of 1 to 20 w/w %; and C) at least one or more compound selected from insecticide(s), fungicide(s), plant health additive(s) in an amount of 0.001 to 60 w/w % and agrochemically acceptable excipients.
1. The fluxametamide composition as claimed in claim 1 wherein, B) insecticide(s) is selected from group consisting of chlorantraniliprole, cyantraniliprole, cyclaniliprole, tetraniliprole, tetrachlorantraniliprole, tyclopyrazoflor, cyhalodiamide, flubendiamide, fluchlordiniliprole and tiorantraniliprole.
2. The fluxametamide composition as claimed in claim 3 wherein, the insecticides of compound B are present in the range of 2% to 20%.
3. The fluxametamide composition as claimed in claim 1 wherein, the insecticide for compound C is selected from group consisting of abamectin, emamectin benzoate, tolfenpyrad, pyrifluquinazon, lambda cyhalothrin, fipronil, fenpyroximate, hexythiazox, etoxazole, diafenthiuron, methoxyfenozide, spinosad, indoxacarb, afidopyropen, flonicamid, pyriproxyfen, bifenthrin, deltamethrin, thiamethoxam and dinotefuran.
4. The fluxametamide composition as claimed in claim 5 wherein, the insecticides of compound C are present in the range of 1.5% to 20%.
Since the claims of the instant application contain the transitional phrase “comprising”, they are open-ended to the presence of additional ingredients.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of copending Application No. 18/016,701 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose overlapping subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The claims of the instant application are directed to:
An insecticidal composition for pest control comprising:
an insecticide from diacylhydrazine group selected from methoxyfenozide, present in an amount of 1 %- 30 % by weight (w/w);
an insecticide from diamide group selected from (w/w);
an additional insecticide selected from (w/w).
The claims of the reference application are directed to:
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Since the claims of the instant application contain the transitional phrase “comprising”, they are open-ended to the presence of additional ingredients.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SVETLANA M IVANOVA whose telephone number is (571)270-3277. The examiner can normally be reached 8:30-5:00.
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, Kortney L. Klinkel can be reached at (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SVETLANA M IVANOVA/ Primary Examiner, Art Unit 1627
1 Due to an apparent typographical error the claims of the reference application list claim 1 twice.
Prosecution Insights