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 § 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 1-9 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.
The claim recites “effective surface area”. It is unclear if this is a reference to ‘specific surface area’, a known term of the art, or if it has some other meaning. For the sake of application of prior art, specific surface area will be interpreted as sufficient to meet the limitations of this parameter/property. Clarification is still required.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chelle et al. (previously cited) in view of Ren et al. (AU 2015234233) as evidenced by Chen (previously cited).
Chelle et al. teach a powdered pesticide composed of a mixture of hydrophilic and hydrophobic silica (see page 1 first paragraph). A small set of particular silica varieties are envisioned for each which both include amorphous silica that is commercially available and described with the Chemical Abstracts Service number 116926-00-8 (see page 2 first and second full paragraphs and table 1; Chen paragraph 107; instant claims 1 and 5-6). Chelle et al. teach the ratio of hydrophilic silica to hydrophobic silica to range from 1:10 to 2:1 (see page 2 first paragraph; instant claims 89 ). The envisioned silica has a specific surface area of between 85 and 300 m2/g (see page 2 third full paragraph; instant claim 4). The mixture is applied to the floor of a container (structure) to kill a collection of insects (see page 3 second full paragraph). Deposition amounts of 0.6 to 15 g/m2 were applied and the time to reach a given insect mortality rate decreased with increasing application density (see page 2 last paragraph-page fifth paragraph; instant claim 7). Chelle et al. detail a number of insects against which they teach their composition to be active and they include those that will become flying insects as adults as well as lepidopteran larvae (see page 2 fourth full paragraph; instant claims 2-3). The use of the composition is more broadly taught in domestic use which implies some sort of home structure (see page 1 first paragraph). A particle size, particle charge generation, or oil absorption are not detailed.
Ren et al. teach amorphous synthetic silica particles as an insecticidal powder (see page 1 last paragraph). The particles preferably have an average size less than 1000 nm, an effective surface area of at least 100 m2/g, an oil absorption of at least 50 mg/100g, and are adapted to generate a net negative charge on the substance to which the particles are applied of -0.003 to -0.1. (see page 3 fifth-sixth paragraphs an page 4 first-second paragraphs; instant claims 1 and 4-6). Ren et al. additionally teach that the particles may include surface modifications that yield hydrophilic or hydrophobic surfaces (see page 6 last partial paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare and use the composition of Chelle et al. where amorphous, synthetic forms of the hydrophobic and hydrophilic silica are included because they suggest to do so. The range of ratios of hydrophilic to hydrophobic silica and the deposition rate overlap with or embrace those instantly claimed, thereby rendering the instantly claimed ranges obvious. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990)” (see MPEP 2144.05). It additionally would have been obvious to employ synthetic hydrophilic and hydrophobic amorphous silica nanoparticles with the additional properties as detailed by Ren et al. because they are taught to be useful/beneficial for silica employed as an insecticide. The recitation of the locale of a composition does not impact or limit the composition itself, therefore the recitations of “is deposited or suspended in the air on or around the stored products or structure” in product claims 5 and 6 do not warrant patentable weight. Additionally, as noted in MPEP 2112.01(II), “where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art” (see instant claim 6). Therefore claims 1-9 are obvious over Chelle et al. in view of Ren et al. as evidenced by Chen.
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-11 of copending Application No. 18/023858 (reference application) as evidenced by Kirti et al. (Insect Environment 2013 19(3):176-179).
Although the claims at issue are not identical, they are not patentably distinct from each other because both recite a composition composed of a mixture of hydrophobic and hydrophilic synthetic silica. The copending claims also recite the hydrophobic and hydrophilic synthetic silica as amorphous. The copending claims additionally recite the same physical properties of the synthetic amorphous silica as those instantly claimed as well as the same deposition rate. These claims further detail depositing on a surface or suspending the composition in the air. The family Noctuidae are the insect target who are members of the Lepidoptera order (see Kirti et al. page 177 first full paragraph).
While the copending claims recite that the air is around an intact plant, there are a finite number of locations for such a plant and they must all be either inside or outside a structure. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the composition of the copending claims with amorphous hydrophobic and amorphous hydrophilic synthetic silica as they recite as well as suspend the combination into the air in a structure around an intact plant, as one of two options for the locale of a plant. Thus claims 1-9 are obvious over claims 1-3 and 6-11 of copending Application No. 18/023858 as evidence by Kitri et al.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of copending Application No. 18/938651 (reference application) in view of Chelle et al. and Ren et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both recite composition composed of amorphous synthetic silica applied to stored product to kill/control insects. The physical properties of the silica of the copending claims meet the limitations of the instant claims in regard to oil absorption and particle size. The silica is not detailed as a mixture of hydrophilic and hydrophobic varieties.
Chelle et al. teach a combination of hydrophilic and hydrophobic silica as effective to control and kill insects and that the combination is superior to their individual application (see page 1 first paragraph and page 3 seventh full paragraph). Deposition amounts of 0.6 to 15 g/m2 were applied and the time to reach a given insect mortality rate decreased with increasing application density (see page 2 last paragraph-page fifth paragraph). Chelle et al. also teach the ratio of hydrophilic silica to hydrophobic silica to range from 1:10 to 2:1 (see page 2 first paragraph; instant claims 89 ). The envisioned silica has a specific surface area of between 85 and 300 m2/g (see page 2 third full paragraph). Chelle et al. detail a number of insects against which they teach their composition to be active and they include those that will become flying insects as adults as well as lepidopteran larvae (see page 2 fourth full paragraph).
Ren et al. teach amorphous synthetic silica particles as an insecticidal powder (see page 1 last paragraph). The particles preferably have an average size less than 1000 nm, an effective surface area of at least 100 m2/g, an oil absorption of at least 50 mg/100g, and are adapted to generate a net negative charge on the substance to which the particles are applied of -0.003 to -0.1. (see page 3 fifth-sixth paragraphs an page 4 first-second paragraphs). Ren et al. additionally teach that the particles may include surface modifications that yield hydrophilic or hydrophobic surfaces (see page 6 last partial paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a mixture of hydrophilic and hydrophobic varieties of synthetic amorphous silica for the product of the copending claims. This modification would have been obvious in light of Chelle et al. as the application of the same technique to a similar product in order to yield the same improvement and as the simple substitution of one known element for another in order to yield a predictable outcome. It additionally would have been obvious to employ synthetic hydrophilic and hydrophobic amorphous silica nanoparticles with the additional properties as detailed by Ren et al. because they are taught to be useful/beneficial for silica employed as an insecticide. The range of ratios of hydrophilic to hydrophobic silica and the deposition rate overlap with or embrace those instantly claimed, thereby rendering the instantly claimed ranges obvious (see MPEP 2144.05). Also it would have been obvious to apply the method to the insects envisioned by Chelle et al. Therefore claims 1-9 are obvious over claims 1-31 of copending Application No. 18/938651 in view of Chelle et al. and Ren et al.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed July 31, 2025 have been fully considered. In light of the amendment to the claimed, the rejection under 35 USC 102 is withdrawn as are the rejection under 35 USC 103 over Allison et al. as a primary reference. The rejection over Chelle et al. under the latter statute is modified to address new limitations. The applicant’s arguments against the rejection under 35 USC 112(b) and against Chelle et al. as teaching combinations of hydrophilic and hydrophobic silicas are not persuasive.
Regarding the rejections under 35 USC 112:
The applicant argues that the use of the term “effective surface area” would have been construed as “specific surface area” by the artisan of ordinary skill. This interpretation imports limitations from the specification into the claims, based upon an inference about an optional technique stated as being used to measure an effective surface area (e.g., BET technique). The BET technique can be used for measuring specific surface area (see Szekeres et al. Langmuir 2002 18:2678-2685). However, Glajch et al. detail that their interpretation of effective surface area refers to the derivatizable surface area of a particle and that this value contributes a small fraction to the specific surface area of the particle, where both have units of area per mass (see US Patent No 6,254,852 column 7 lines 7-17). Wu et al. discusses specific surface area as the surface area per unit weight and effective surface area is the sum of the internal and external surface areas (see US Patent No. 5,776,425 column 1 lines 16-22). These interpretations differ, thus the meaning of the term “effective surface area” remains unclear .
Regarding the rejections under 35 USC 103:
The applicant notes a variety of siliceous materials that Chelle et al. teach and argues that these materials are distinct from those instantly claimed. In addition, to the listing highlighted by the applicant that includes amorphous silicas, Chelle et al. exemplify combinations of silicon dioxide and dimethyl siloxane, both of which Chelle et al. state are silicas (see table 1). Thus Chelle et al. direct the artisan to silica combinations, in particular, for their mixture of hydrophilic and hydrophobic particulate siliceous insecticide and exemplify amorphous varieties, as the rejection notes.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The applicant also argues that the Chelle et al. do not teach that hydrophilic and hydrophobic synthetic amorphous silica would have advantageous insecticidal properties. To the contrary, Chelle et al. broadly and specifically teach that combinations of hydrophilic and hydrophobic silica are advantageous for use as an insecticide. It appears that the applicant employs the term “advantageous” to mean useful. The teachings of Chelle et al. certainly fulfill this same goal. If the applicant instead means that their claimed combination has unexpectedly superior results, there is no evidence to support this contention. The applicant argues that the data of Chelle et al. teaches away from silica as an insecticide because an example testing diatomaceous earth or a single type of silica was less effective than an embodiment combining hydrophilic and hydrophobic silica. This argument from the applicant seems to miss the intent of this data by Chelle et al. which is to demonstrate that their combinations of hydrophilic and hydrophobic silica/siliceous particles are superior insecticides to solitary hydrophilic or hydrophobic siliceous particles (compare Alphitobius diaperinus tested samples of table 1 to figure 6). The data of Chelle et al. repeatedly shows that combinations of hydrophilic and hydrophobic silica are effective insecticides and there is no evidence of a unexpectedly superior outcome from the instantly claimed products.
The acknowledgement of the double patenting rejections is noted. It is also noted that 37 CFR 1.111 states that “[t]he reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated.” Double patenting rejections are not objections or requirements of form that may be held in abeyance and warrant a substantive reply.
Conclusion
No claim is 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 CARALYNNE E HELM whose telephone number is (571)270-3506. The examiner can normally be reached Mon-Fri 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Wax can be reached at (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARALYNNE E HELM/Examiner, Art Unit 1615
/MELISSA S MERCIER/Primary Examiner, Art Unit 1615
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