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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/10/2026 has been entered.
Status of the Claims
Claims 1-2, 4, 6-7, 9-27, 41-49, and 53 are pending and under current examination. Claims 3, 5, and 8 are cancelled.
Withdrawn Claim Rejections
All rejections pertaining to claims 3, 5, and 8 are moot because the claims are cancelled in the amendments to the claims filed 3/10/2026.
All rejections not reiterated have been withdrawn.
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.
Claims 1-2, 4, 6-7, 9-26, and 41-48 are 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.
Claims 1 and 4 recite the limitation “the thermoplastic polymer is adapted to form the thermoplastic polymer matrix and the composite plug”. This renders the claim indefinite because it is not clear if the thermoplastic polymer matrix is forming a thermoplastic polymer matrix separate from the thermoplastic polymer matrix included in the composite plug.
Claim 7 recites the limitation “the thermoplastic polymer matrix further comprises a biodegradable thermoplastic polymer”. This renders the claim indefinite because it is not clear if the biodegradable thermoplastic polymer describes the thermoplastic polymer embraced by the instant claim 1 or if it is included in addition to the thermoplastic polymer embraced by the instant claim 1.
Claim 20 recites the limitation “the pesticide” in line 1. There is insufficient antecedent basis for this limitation in the claim 17, which recites the limitation “a biopesticide”.
Regarding claims 2, 6, 9-19, 21-26, and 41-48, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
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 20 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 20 recites the limitation “where in the pesticide is selected from the group consisting of…”. This fails to further limit the subject matter of claim 17, which limits the plant protection material to a biopesticide.
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 § 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.
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, 6, 9-11, 15-27, 41-44, 49, and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Wise (WO 2018/169904, publication date: 9/20/2018, available as prior art under 102(a)(1), cited in the IDS filed 5/15/2023, of record) in view of Pursell (U.S. Patent Application No. 2004/0033248, publication date: 2/19/2004, of record), as evidenced by Hapuarachchi et. al. (IEEE, pg. 293-296, publication year: 2016), National Pesticide Information Center (Imidacloprid, available 5/8/2019), MSU Chemistry (Polymers, available 10/26/2011, of record), Hilscher (Reliance Foundry, available 1/25/2019), and Prasad (Polymer Engineering and Science, pg. 1716-1728, publication year: 1998).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1, 2, and 6-7, Wise teaches a composite pesticide plug comprising imidacloprid, wood flour, and polylactic acid [0052]. The field trial of the pesticide plugs demonstrated successful delivery of active ingredient from injection point to the tree canopy of apple trees [0047 and 0051]. The exemplary composite pesticide plug disclosed by Wise does not contain water-soluble thermoplastic polymers, therefore the Examiner considers the exemplary composite pesticide plug to read on the “free from water-soluble thermoplastic polymer” limitation of the instant claim.
Regarding claim 9, Wise teaches the relevant limitations as described in the rejection of claim 1 above.
Regarding claims 10 and 11, Wise teaches that the cellulosic reinforcement may be from
any suitable source, for example a wood material such as fiber, chip, flake and flour [0033].
Regarding claim 15, Wise teaches that the cellulosic reinforcement is distributed throughout the thermoplastic polymer matrix [0026].
Regarding claims 16 and 19, Wise teaches a composite pesticide plug comprising imidacloprid, wood flour, and polylactic acid [0052].
Regarding claim 17, Wise teaches that the plant protection material can be selected from the group consisting of pesticides, biopesticides, plant growth regulators, fertilizers, and combinations thereof [0008].
Regarding claim 18, Wise teaches that the pesticide may be azadirachtin [0014].
Regarding claim 20, Wise teaches a composite pesticide plug comprising imidacloprid, wood flour, and polylactic acid [0052]. National Pesticide Information Center teaches that imidacloprid is a neonicotinoid insecticide (pg. 2).
Regarding claim 21, Wise teaches a composite pesticide plug comprising imidacloprid, wood flour, and polylactic acid [0052]. The thermoplastic polymer is present at 35.98% by weight (Table 1).
Regarding claim 22, Wise teaches a composite pesticide plug comprising imidacloprid, wood flour, and polylactic acid [0052]. The wood flour is present at 53.97% by weight (Table 1).
Regarding claims 23 and 24, Wise teaches a composite pesticide plug comprising imidacloprid, wood flour, and polylactic acid. The wood flour and polylactic acid are present in a 60:40 (w/w) mixture [0052], which is equivalent to a ratio of thermoplastic polymer: wood flour of 2:3 or 1:1.5.
Regarding claim 25, Wise teaches a composite pesticide plug comprising imidacloprid, wood flour, and polylactic acid [0052]. The imidacloprid is present at 10.05% by weight (Table 1).
Regarding claim 26, Wise teaches that the plug has an elongate geometry [0015].
Regarding claim 27, Wise teaches the relevant limitations as described in the rejection of claim 1 above.
Regarding claim 41, Wise teaches a method for delivering a pesticide or other active ingredient to a tree, the method comprising inserting the composite pesticide plug according to any of its variously disclosed embodiments into an interior trunk region of a live tree [0016]. The exemplary pesticide plugs were inserted into the trunks of apples trees [0047].
Regarding claim 42, Wise teaches that the method for delivering the composite plug comprises inserting the pesticide plug at a height ranging from 0.1m to 1m above the ground [0018]. The exemplary pesticide plugs were inserted at approximately 1 foot about the ground [0047].
Regarding claim 43, Wise teaches that the pesticide plugs may be distributed circumferentially around the tree trunk [0018]. The exemplary pesticide plugs were inserted into the trunks of apples trees with four injection ports per trunk and approximately 1 foot about the ground [0047].
Regarding claim 44, Wise teaches that the tree may be a fruit tree selected from the group consisting of apple trees, cherry trees, grapefruit trees, lemon trees, nectarine trees, orange trees, peach trees, pear trees, plum trees, and pomegranate trees [0018]. The exemplary pesticide plugs were inserted into the trunks of apples trees [0047].
Regarding claim 49, Wise teaches that the polylactic acid, wood flour, and imidacloprid blends are weighed and manually dry mixed in a kitchen blender at high intensity speed for 20 seconds [0053]. The Examiner considers the phrase “manually dry mixed in a kitchen blender” to read on the “admixing is performed at a temperature of about 15oC to about 30oC” limitation of the instant claim.
Regarding claim 53, Wise teaches a composite pesticide plug comprising imidacloprid, wood flour, and polylactic acid [0052]. The thermoplastic polymer is present at 35.98% by weight and the imidacloprid is present at 10.05% by weight (Table 1). The amount of cellulosic reinforcement in the composite plug may range from 30 to 85 wt.% [0034].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1, 2, and 6-7, Wise does not teach the inclusion of a thermoplastic polymer adapted to form the polymer matrix at a temperature below 120oC. However, this deficiency is cured by Pursell.
Pursell teaches a pesticide carrier composition comprising a core particle that is absorbent and a coated or absorbed pesticide release material. The core particles may be further coated with a filler/release control agent [0004]. The core particles may include saw dusts, cedar fines, spruce fines, hardwood fines, and wood chips including pine chips and fines [0014]. The filler/release control agent may comprise rubber latex or polyvinyl acetate [0016]. Hapuarachchi teaches that natural rubber latex is biodegradable (pg. 293, Introduction).
Regarding claims 9 and 27, Wise does not teach a plug free from biodegradable and water-soluble thermoplastic polymers. However, this deficiency is cured by Pursell.
Pursell teaches a pesticide carrier composition comprising a core particle that is absorbent and a coated or absorbed pesticide release material. The core particles may be further coated with a filler/release control agent [0004]. The core particles may include saw dusts, cedar fines, spruce fines, hardwood fines, and wood chips including pine chips and fines [0014]. The filler/release control agent may comprise polyethylene [0016]. MSU Chemistry teaches that both high- and low-density polyethylene are insoluble in water (pg. 3, 3. Properties of Macromolecules). Hilscher teaches that polyethylene is not biodegradable (pg. 7, Recycling). Prasad teaches that the melting peak of low-density polyethylene usually varies with density in the range of 106-112oC (pg. 1718, 3.1 DSC Results).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1, 2, 6-7, 9, and 27, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (polylactic acid and rubber latex, polyvinyl acetate, or polyethylene for the purpose of a filler/release agent to bind cellulose material containing a pesticide). See MPEP 2144.06 (II).
With regards to the “…at a temperature below 120oC” and “free from water-soluble thermoplastic polymers” limitations of instant claim 1, the prior art teaches the same thermoplastic polymer latex (polyvinyl acetate) as claimed and therefore, the temperature and water-solubility properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wise (WO 2018/169904, publication date: 9/20/2018, available as prior art under 102(a)(1), cited in the IDS filed 5/15/2023, of record) in view of Pursell (U.S. Patent Application No. 2004/0033248, publication date: 2/19/2004, of record), as applied to claims 1-2, 6, 9-11, 15-27, 41-44, and 53 above, and further in view of Naudet (WO 2019/162163, publication date: 8/29/2019, cited in the IDS filed 5/15/2023, of record), as evidenced by Hapuarachchi et. al. (IEEE, pg. 293-296, publication year: 2016), National Pesticide Information Center (Imidacloprid, available 5/8/2019), MSU Chemistry (Polymers, available 10/26/2011, of record), Hilscher (Reliance Foundry, available 1/25/2019), and Prasad (Polymer Engineering and Science, pg. 1716-1728, publication year: 1998).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 12-14, Wise, in view of Pursell, renders obvious the relevant limitations of claim 1 as described above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 12-14, Wise does not teach that the cellulosic material of the composite pesticide plug may comprise a cellulose derivative embraced by the instant claims. However, this deficiency is cured by Naudet.
Naudet teaches a method of introduction of a pesticidal dsRNA (line 4) to a plant by
topically applying a composition comprising interfering RNA to a plant or plant seed (line 16)
[0009]. The composition may be in the form of a wettable powder [0115]. The wettable powder
may be prepared by mixing the active ingredient with one or more solid diluents or carriers, one
or more wetting agents, one or more dispersing agents and one or more suspending agents
[0118]. Suitable suspending agents include sodium carboxymethyl cellulose [0129].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 12-14, it would have been prima facie obvious to one of ordinary skill in the art of filing to employ sodium carboxymethyl cellulose as the cellulosic agent in the
composite pesticide plug embraced by Wise. One would have understood in view of Naudet that
sodium carboxymethyl cellulose is a suitable suspending agent for a biopesticide intended for delivery to plants. The artisan of ordinary skill would have had reasonable expectation of
success because Naudet teaches that sodium carboxymethyl cellulose may act as a suspending agent for a biopesticide in delivery to plants. See MPEP 2144.07.
Claims 4 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Wise (WO 2018/169904, publication date: 9/20/2018, available as prior art under 102(a)(1), cited in the IDS filed 5/15/2023, of record) in view of Pursell (U.S. Patent Application No. 2004/0033248, publication date: 2/19/2004, of record), as applied to claims 1-2, 6, 9-11, 15-27, 41-44, and 53 above, and further in view of Boo (West Pharmaceutical Services, publication year: 2014), as evidenced by Hapuarachchi et. al. (IEEE, pg. 293-296, publication year: 2016), National Pesticide Information Center (Imidacloprid, available 5/8/2019), MSU Chemistry (Polymers, available 10/26/2011, of record), Hilscher (Reliance Foundry, available 1/25/2019), and Prasad (Polymer Engineering and Science, pg. 1716-1728, publication year: 1998).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 4 and 45, Wise renders obvious the relevant limitations of claims 1 and 2 above. Wise also teaches that before melt blending, the polylactic acid, wood flour, and imidacloprid blends are weighed and dry mixed in a kitchen blender at high intensity speed for 20 seconds [0053]. The composite pesticide plug can be formed by any suitable melt compounding method. Generally, the thermoplastic polymer components and the cellulosic reinforcement are initially dried at an elevated temperature. The thermoplastic polymer matrix components, the cellulosic reinforcement, the pesticide, and any desired other additives (e.g., processing aids or functional components) can be dry mixed in the desired proportions for the final plug. A pesticide in liquid form (e.g. as a solution or suspension) can be added to the dry mixture of the thermoplastic polymer matrix and the cellulosic reinforcement, or it can be added to the melt for compounding/mixing during plug formation. The dry mixture can be melt blended first and then melt processed into its desired plug shape, including extrusion, compression molding, and injection molding [0041].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 4 and 45, Wise does not teach that the composite plug may be formed at a temperature of about 15oC to about 30oC. However, this deficiency is cured by Pursell and Boo.
Pursell teaches a pesticide carrier composition comprising a core particle that is absorbent and a coated or absorbed pesticide release material. The core particles may be further coated with a filler/release control agent [0004]. The core particles may include saw dusts, cedar fines, spruce fines, hardwood fines, and wood chips including pine chips and fines [0014]. The filler/release control agent may comprise rubber latex or polyvinyl acetate [0016]. Boo teaches that latex refers to any polymer in a water-based liquid or viscous state and natural rubber latex is a milky fluid that consists of extremely small particles of rubber obtained from plants dispersed in an aqueous medium (pg. 1).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 4 and 45, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (polylactic acid and rubber latex, polyvinyl acetate, or polyethylene for the purpose of a filler/release agent to bind cellulose material containing a pesticide). See MPEP 2144.06 (II).
Regarding the temperature for formation of the composite plug, it would have been prima facie obvious to one of ordinary skill in the art of filing that a composite pesticide plug comprising rubber latex may be formed at a temperature in a range from 5oC to 30oC. One would have understood in view of Boo that rubber latex is in a liquid or viscous state and therefore is suitable to form the composite pesticide plug at room temperature. It would have been obvious that a polymer such as rubber latex that is a liquid at room temperature may be used to form the pesticide plug at room temperature. The artisan of ordinary skill would have had reasonable expectation of success because Pursell teaches that rubber latex may be used to form a composite cellulose pesticide release composition. See MPEP 2144.07.
Claims 46-48 are rejected under 35 U.S.C. 103 as being unpatentable over Wise (WO 2018/169904, publication date: 9/20/2018, available as prior art under 102(a)(1), cited in the IDS filed 5/15/2023, of record) in view of Pursell (U.S. Patent Application No. 2004/0033248, publication date: 2/19/2004, of record) and Boo (West Pharmaceutical Services, publication year: 2014), as applied to claims 4 and 45 above, and further in view of Ronden (U.S. Patent No. 5,981,631, issue date: 11/9/1999, of record), as evidenced by Hapuarachchi et. al. (IEEE, pg. 293-296, publication year: 2016), National Pesticide Information Center (Imidacloprid, available 5/8/2019), MSU Chemistry (Polymers, available 10/26/2011, of record), Hilscher (Reliance Foundry, available 1/25/2019), and Prasad (Polymer Engineering and Science, pg. 1716-1728, publication year: 1998).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Wise, in view of Pursell and Boo, renders obvious the relevant limitations of claims 1 and 45 above.
Regarding claim 46, Wise teaches that the composite pesticide plug can be formed by any suitable melt compounding method. The thermoplastic polymer matrix components, the cellulosic reinforcement, the pesticide, and any desired other additives (e.g., processing aids or functional components) can be dry mixed in the desired proportions for the final plug. A pesticide in liquid form (e.g., as a solution or suspension) can be added to the dry mixture of the thermoplastic polymer matrix components and the cellulosic reinforcement, or it can be added to the melt for compounding/mixing during plug formation. The dry mixture can be melt blended first and then melt processed into its desired plug shape, including extrusion, compression molding, and injection molding [0041]. The Examiner considers the terms “additive” and “liquid form” embraced by Wise to encompass the term “at least one liquid” embraced by the instant claim.
Regarding claim 47, Wise teaches that the composite pesticide plugs may be formed via a compression molding technique [0062].
Regarding claim 48, Wise teaches that dry-mixed thermoplastic polymer, wood flour, and pesticide may be directly extruded without a melt blending step [0054].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 46, Wise does not teach the mixture of the liquid, thermoplastic polymer, and cellulosic reinforcement may be dried to remove at least some of the liquid. However, this deficiency is cured by Ronden.
Ronden teaches a process for producing a composite of cellulosic material and thermoplastic polymer that comprises a step of mixing a coupling agent with the cellulosic material that may occur without heating (col. 15 lines 3-15). The thermoplastic polymer is added to the wetted cellulosic filler while being heating to a temperature greater than or equal to the melt temperature of the thermoplastic polymer and less than the char temperature of the organic filler (col. 15 lines 27-30). The composite material is heat processed into the desired end product, such as by molding or extrusion (col. 15 line 52). The extrusion step preferably includes a vacuum so that volatiles and moisture may be drawn off (col. 16. lines 15-16).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 46, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to include the vacuum embraced by Ronden in order to remove some of the liquid from the moldable mixture embraced by Wise. One would have understood in view of Ronan that a vacuum may be included in extrusion of thermoplastic polymer and cellulosic material composites in order to remove volatiles, such as solvents, or other moisture from the composite. It would have been obvious to one of ordinary skill in the art of filing that a vacuum may also be added to the method of making the composite pesticide plug embraced by Wise. One of ordinary skill would have been motivated to remove at least some liquid from the composite in order to remove unwanted volatiles or improve the structural properties of the final composite pesticide plug. The artisan of ordinary skill would have had reasonable expectation of success because Ronden teaches that a vacuum may be used to remove volatiles and other moisture from a cellulosic material and thermoplastic polymer composite during extrusion.
Response to Arguments
Applicant's arguments filed 3/10/2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the rejection over the teachings of Wise in view of Miller have been considered but are moot because the new ground of rejection does not rely on the teachings of Miller.
On page 9, Applicant argues that the embodiments of Wise that do not include a water-soluble thermoplastic polymer cannot meet the limitation in the amended claim 1 that the thermoplastic polymer is adapted to form the thermoplastic polymer matrix and the composite plug at a temperature below 120oC. This is not found persuasive. As described in the obviousness rejection above, Based on the teachings of the cited prior art, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (polylactic acid and rubber latex, polyvinyl acetate, or polyethylene for the purpose of a filler/release agent to bind cellulose material containing a pesticide). See MPEP 2144.06 (II). With regards to the “…at a temperature below 120oC” and “free from water-soluble thermoplastic polymers” limitations of instant claim 1, the prior art teaches the same thermoplastic polymer latex as claimed and therefore, the temperature and water-solubility properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
On pages 9 and 10, Applicant argues that any modifications based on Wise as the primary reference would require addition of a water-soluble thermoplastic polymer, which is taught by Wise as an essential component of its composite plug to facilitate pesticide release and xylem transport. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2123 (I), which states: “a reference may be relied upon for all that it would have reasonable suggested to one having ordinary skill in the art, including nonpreferred embodiments”. Wise teaches that the exemplary composite pesticide plug that does not include a water-soluble thermoplastic polymer (MSU 03-12) demonstrates successful delivery of imidacloprid, a water-soluble pesticide [0047], from injection point to the tree canopy [0051]. Therefore, a person of ordinary skill in the art would have understood that the water-soluble thermoplastic polymer is not required for xylem transport of the pesticide.
On page 10, Applicant argues that the pesticide plugs of Wise’s examples 1-2 including only wood flour and PLA do not meet the limitations of amended independent claim 27 because they include a biodegradable thermoplastic polymer that is excluded from claim 27. This is not found persuasive. As described in the obviousness rejection above, based on the teachings of the cited prior art, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (polylactic acid and rubber latex, polyvinyl acetate, or polyethylene for the purpose of a filler/release agent to bind cellulose material containing a pesticide). See MPEP 2144.06 (II). With regards to the “…at a temperature below 120oC” and “free from water-soluble thermoplastic polymers” limitations of instant claim 1, the prior art teaches the same thermoplastic polymer latex as claimed and therefore, the temperature and water-solubility properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
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, 4, 6-7, 9-17, 19, 21-27, 41-49, and 53 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12-23, and 25-29 of co-pending Application No. 18/022,586.
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims render obvious the instant claims.
Inter alia, the claims of the ‘586 application embrace a composite pesticide plug for delivery of one or more dsRNA plant protection materials to internal tree tissue comprising a cellulosic material, dsRNA, and a thermoplastic polymer matrix wherein the cellulosic material is distributed throughout the thermoplastic polymer matrix. The method of making the composite pesticide plug may be carried out at a temperature of about 15-30oC. The composite pesticide plug is free from water-soluble thermoplastic polymers and may be free from biodegradable thermoplastic polymers. The thermoplastic polymer may comprise polyvinyl acetate and polylactic acid. The cellulosic material is selected from cellulose powder, wood flour, wood fibers, wood chips, wood flakes, and combinations thereof. The cellulosic material may also comprise a cellulose derivative selected from the group consisting of carboxymethyl cellulose (CMC) carboxymethyl hydroxyethylcellulose, hydroxyethyl cellulose (HEC), hydroxypropyl cellulose (HPC), hydroxypropyl methylcellulose (HPMC), hydroxyethyl methylcellulose (HPMC), ethyl hydroxyethylcellulose, methyl ethyl hydroxyethylcellulose, methyl cellulose (MC), ethyl cellulose (EC), ethyl methyl cellulose (EMC), diethylaminoethyl cellulose (DEAE-C), or sodium carboxymethyl cellulose. The thermoplastic polymer matrix is present in an amount ranging from about 10 wt.% to about 50 wt.%, based on the total weight of the composite pesticide plug and the cellulosic reinforcement is present in an amount ranging from about 30 wt.% to about 60 wt.%, based on the total weight of the composite pesticide plug. The ratio of the cellulose to the thermoplastic polymer is about 1:4 to 1:1. With regards to the “adapted to form the thermoplastic polymer matrix and the composite plug at a temperature below 120oC” limitation of instant claim 1, the claims of the ‘586 application teaches the same polyvinyl acetate as claimed and therefore, the temperature of formation properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
The claims of the ‘586 application also embrace a method for delivering a plant protection material to a tree, the method comprising: inserting the plug into an interior trunk region of a live tree. The plugs may be inserted at a height from 0.1m to about 1m above ground and are distributed circumferentially around the tree trunk. The composite plugs may be used to treat fruit trees selected from apple trees, cherry trees, grapefruit trees, lemon trees, nectarine trees, orange trees, peach trees, pear trees, plum trees, and pomegranate trees. The claims of the ’586 application also embrace a method of preparing the composite pesticide plug comprising admixing the thermoplastic polymer, the cellulosic reinforcement, and the plant protection material to provide the composite pesticide plug, wherein the admixing is performed at a temperature of about 15oC to about 30oC.
The claims of the ‘586 application do not teach a weight percentage of plant protection material present in the composition or a geometry of the plug.
The concentration of plant protection material present in the pesticide plug is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal concentration in order to best achieve the desired results as such would provide advantageous pesticidal effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. 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). In the instant case, the claims of the ‘586 application teach that the plant protection material may be included in the composite pesticide plug. The Examiner considers it prima facie obvious to optimize the concentration of the plant protection material, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of plant protection material would have a direct effect on the potency of the pesticidal effect and therefore be an optimizable variable.
The shape of the composite plug is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal shape in order to best achieve the desired results as such would provide advantageous pesticidal effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. 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). In the instant case, the claims of the ‘586 application teach that the plugs may be inserted into the trunk of the tree in order to deliver pesticide to the tree. The Examiner considers it prima facie obvious to optimize the shape of the composite plug, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the shape would have a direct effect on how the plug may fit into and deliver pesticide to the target tree and therefore be an optimizable variable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12-23, and 25-29 of co-pending Application No. 18/022,586, as applied to claims 1, 4, 6-7, 9-17, 19, 21-27, 41-49, and 53 above, and further in view of Pursell (U.S. Patent Application No. 2004/0033248, publication date: 2/19/2004, of record).
Although the claims at issue are not identical, they are not patentably distinct from each
other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘586 application teach the relevant limitations as described above. The claims of the ‘586 application do not teach that the thermoplastic polymer is in the form of a latex. However, this deficiency is cured by Pursell. Pursell teaches a pesticide carrier composition comprising a core particle that is absorbent and a coated or absorbed pesticide release material. The core particles may be further coated with a filler/release control agent [0004]. The core particles may include saw dusts, cedar fines, spruce fines, hardwood fines, and wood chips including pine chips and fines [0014]. The filler/release control agent may comprise rubber latex [0016].
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to employ a latex as the thermoplastic polymer in the composite pesticide plug embraced by the claims of the ‘586 application. One would have understood in view of Pursell that rubber latex is a suitable filler/release control agent for a cellulosic core particle containing and absorbed pesticide. The artisan of ordinary skill would have had reasonable expectation of success because Pursell teaches that rubber latex may be used a filler/release control agent for a pesticide carrier composition comprised of a cellulosic material and absorbed or coated pesticide. See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 18 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12-23, and 25-28 of co-pending Application No. 18/022,586, as applied to claims 1, 4, 6-7, 9-17, 19, 21-27, 41-49, and 53 above, and further in view of Wise (WO 2018/169904, publication date: 9/20/2018, available as prior art under 102(a)(1), cited in the IDS filed 5/15/2023, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘586 application teach the relevant limitations as described above. The claims of the ‘586 application do not embrace a plant protection material comprising the pesticides embraced by the instant claims 18 and 20. However, these deficiencies are cured by Wise. Wise teaches that the plant protection material in a composite pesticide plug can be selected from the group consisting of pesticides, biopesticides, plant growth regulators, fertilizers, and combinations thereof [0008]. Wise also teaches that the pesticide is selected from the group consisting of neonicotinoids, avermectins, azadirachtin, diamides, sterol inhibitors, oxytetracycline, phosphorous acid, derivatives thereof, and combinations thereof [0014]. Wise also embraces the amount of pesticide in the composite plug 1-50% by weight relative to the combined amount of the thermoplastic polymer matrix and the cellulosic reinforcement [0039] and that the plug has an elongate geometry [0015].
It would have been prima facie obvious to one of ordinary skill in the art of filing to employ a pesticide embraced by Wise in the composite plugs embraced by the claims of the ‘586 application. One would have understood in view of Wise that various pesticides and biopesticides may be included in a composite pesticide plug comprising a thermoplastic polymer and cellulosic reinforcement material. It would have been obvious to simply substitute the pesticides embraced by Wise for the dsRNA in the composite plug embraced by the claims of the ‘586 application in order to deliver pesticidal benefits to the tree in the same manner. One of ordinary skill would have been motivated to substitute an alternative pesticide or biopesticide in order to better target a specific insect or pest. The artisan of ordinary skill would have had reasonable expectation of success because Wise teaches the inclusion of various pesticides and biopesticide in a composite plug identical to that embraced by the ‘586 application. See MPEP 2143 (I)(B).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 3/10/2026 with respect to the provisional non-statutory double patenting rejection over co-pending application no. 18/022,586 have been fully considered but they are not persuasive because a valid terminal disclaimer is not on file for either the co-pending or instant application. Please refer to the Terminal Disclaimer review decision mailed 03/25/2026.
Conclusion
No claims are allowed.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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