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 1-4 and 6-11 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.
Claims not explicitly elaborated upon are also indefinite because they rely on an indefinite claim and do not add clarity.
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 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Chelle et al. (FR 3066072 – English translation referenced for citations) in view of Ren et al. (WO 2015/139084) as evidenced by Chen et al. (US PGPub No. 2006/0166898).
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). The envisioned silica has a specific surface area of between 85 and 300 m2/g (see page 2 third full paragraph). The mixture is applied to the floor of a container (structure) to kill a collection of insects (see page 3 second 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). 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 and page 4 first-second paragraphs; instant claim 1 and 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 the composition of Chelle et al. where amorphous, synthetic forms of the hydrophobic and hydrophilic silica are included because they suggest to do so. 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 intact plant” in product claims 7 and 8 do not warrant patentable weight. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here the intended use of deposition or suspension in the air on or around an intact plant can be met by the composition of Chelle et al. in view of Ren et al. 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 8). Therefore claims 7 and 8 are obvious over Chelle et al. in view of Ren et al. as evidenced by Chen et al.
Claims 1, 4, and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Chelle et al. in view of Ren et al. as evidenced by Chen et al. as applied to claims 7 and 8 above, and further in view of Mucha-Pelzer et al. (HortScience 2010 5(9):1349-1356).
Chelle et al. in view of Ren et al. as evidenced by Chen et al. render obvious the limitations of instant claims 7 and 8 which meets the limitations of the insecticidal powdered mixture of synthetic hydrophobic and hydrophilic amorphous silica employed in claims 1 and 6. Chelle et al. also teach to apply the powdered composition at a deposition rate/density of 0.6 to 15 g/m2 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 11). Deposition on or around an intact plant is not detailed.
Mucha-Pelzer et al. teach the application of powdered silica insecticide to live plant surfaces via various application techniques that include spraying (see page 1349 third column third full paragraph-page 1350 third/last column first partial paragraph). They target agricultural plants and crops (see abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the product of Chelle et al. in view of Ren et al. to plants as taught by Mucha-Pelzer et al. This choice would have been obvious because Mucha-Pelzer et al. teach the recognized utility of silica based insecticides on intact plants. Thus spraying this composition as taught by Mucha-Pelzer et al. would deposit the modified composition of Chelle et al. in the air so as to fall on living (intact) plant surface. Since Chelle et al. teach the ratio of hydrophilic silica to hydrophobic silica to range from 1:10 to 2:1, employing this ratio range would follow (see instant claims 9-10). This range of ratios of hydrophilic to hydrophobic silica overlap with that instantly claimed, thereby rendering the instantly claimed range 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). Similarly, employing the deposition density of Chelle et al. would follow which also yields an overlapping range with the claimed range and renders the claimed range obvious (see MPEP 2144.05; instant claim 11). Crops are the taught plant and there are only two options for their locations, indoors and outdoors. Thus the application to these plants in either location would have been obvious because they present a small number of options (see instant claim 4). Therefore claims 1, 4, and 6-11 are obvious over Chelle et al. in view of Ren et al. and Mucha-Pelzer et al. as evidenced by Chen et al.
Claims 1-4 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Chelle et al. in view of Ren et al. and Mucha-Pelzer et al. as evidenced by Chen et al. as applied to claims 1, 4, and 6-11 and further in view of Bailey et al. (previously cited) and Aldryhim (Journal of Stored Products Research 1990 26(4):207-210) as evidenced by Baldwin et al. (previously cited).
Chelle et al. in view of Ren et al. and Mucha-Pelzer et al. as evidenced by Chen et al. render obvious the limitations of instant claims 1 and 6-11, where powder insecticide composed of amorphous hydrophilic and hydrophobic synthetic silica is applied to an intact crop plant. A particular target insect is not detailed.
Bailey et al. teach that a number of insects infest agricultural plants (see abstract and page 4 line 26-page 5 line 2). These insects include confused flour beetles (see page 5 lines 3-9). Baldwin et al. detail that these insects, also known as Tribolium confusum, fly as adults and are members of the Tenebrionidae family (see title and page 3 first column; instant claims 2 and 3).
Aldryhim teaches that amorphous silica is effective as an insecticide against Tribolium confusum see table 1 and page 207 fourth paragraph-page 208 first 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 the apply the composition of Chelle et al. in view of Ren et al. and Mucha-Pelzer et al. as evidenced by Chen et al. to crop plants in order to kill Tribolium confusum. This modification would have been obvious in light of Bailey et al. who teach these insects as an infestation hazard for agricultural plants and Aldryhim who teach that amorphous silica is an effective insecticide against this variety of insect. Therefore claims 1-4 and 6-11 are obvious over Chelle et al. in view of Ren et al., Mucha-Pelzer et al., Aldryhim, and Bailey et al. as evidenced by Chen et al. and Baldwin et al.
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 7-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-9 of copending Application No. 18/023770 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both recite a composition composed amorphous hydrophobic synthetic silica along with instructions for use. The copending claims additionally recite the same physical properties of the synthetic amorphous silica as those instantly claimed. 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 intact plant” do not warrant patentable weight. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here the intended use of deposition or suspension in the air on or around an intact plant can be met by the composition of the copending claims. Thus claims 7-8 are unpatentable over claims 1-2 and 4-9 of copending Application No. 18/023770.
Claims 1, 4, and 6-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-9 of copending Application No. 18/023770, further in view of Mucha-Pelzer et al.
Claims 1-2 and 4-9 of copending Application No. 18/023770 teach the limitations of instant claims 7-8 and of the composition recited in claims 1 and 6. The ratio of hydrophilic and hydrophobic silica and deposition rate instantly claimed are also recited by the copending claims. While application of a hydrophobic silica based insecticide on or in the air around a structure is detailed, application on or around an intact plant is not explicitly recited.
Mucha-Pelzer et al. teach the application of powdered silica insecticide to live plant surfaces via various application techniques that include spraying (see page 1349 third column third full paragraph-page 1350 third/last column first partial paragraph). They target agricultural plants and crops (see abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the product of the copending claims to plants as taught by Mucha-Pelzer et al. This choice would have been obvious because Mucha-Pelzer et al. teach the recognized utility of silica based insecticides on intact plants. Thus spraying this composition as taught by Mucha-Pelzer et al. would deposit the modified composition of Chelle et al. in the air so as to fall on living (intact) plant surface. Therefore claims 1, 4, and 6-11 are obvious over claims 1-2 and 4-9 of copending Application No. 18/023770 in view of Mucha-Pelzer et al.
Claims 1-4 and 6-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-9 of copending Application No. 18/023770 in view of Mucha-Pelzer et al. and further in view of Bailey et al. and Aldryhim as evidenced by Baldwin et al.
Claims 1-2 and 4-9 of copending Application No. 18/023770 in view of Mucha-Pelzer et al. render obvious the limitations of instant claims 1, 4, and 6-11, where amorphous hydrophobic synthetic silicas is applied to an intact crop plant. A particular target insect is not detailed.
Bailey et al. teach that a number of insects infest agricultural plants (see abstract and page 4 line 26-page 5 line 2). These insects include confused flour beetles (see page 5 lines 3-9). Baldwin et al. detail that these insects, also known as Tribolium confusum, fly as adults and are members of the Tenebrionidae family (see title and page 3 first column; instant claims 2 and 3).
Aldryhim teaches that amorphous silica is effective as an insecticide against Tribolium confusum see table 1 and page 207 fourth paragraph-page 208 first 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 the apply the composition of the modified copending claims to crop plants in order to kill Tribolium confusum. This modification would have been obvious in light of Bailey et al. who teach these insects as an infestation hazard for agricultural plants and Aldryhim who teach that amorphous silica is an effective insecticide against this variety of insect. Therefore claims 1-4 and 6-11 are obvious over claims 1-2 and 4-9 of copending Application No. 18/023770 in view of Mucha-Pelzer et al., Bailey et al., and Aldryhim as evidenced by Baldwin 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 August 19, 2025 have been fully considered. In light of the amendment, the previous objection and rejections under 35 USC 102, 35 USC 103, and double patenting are withdrawn. New grounds of rejection are presented in their place to address the new claim limitations. The arguments concerning the rejection under 35 USC1129b0 are unpersuasive.
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.
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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