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 election without traverse of Group I in the reply filed on 09/02/2025 is acknowledged.
Claims 15-18 and 20-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/02/2025.
Status of Claims
Preliminary amendment filed on 03/01/2023 and response to election filed on 09/02/2025 are acknowledged.
Claims 2-5, 7, and 10-14 are cancelled.
Claims 15-18 and 20-31 drawn to a nonelected group are withdrawn without traverse.
Claims 1, 6 and 8-9 are pending and being examined on merits herein.
Priority
This instant application 18024082, filed on 03/01/2023, is a 371 of PCT/US21/49127, filed on 09/03/2021, which claims domestic benefit of 63/074237, filed on 09/03/2020.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 08/04/2023, 11/20/2024, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Objection to Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract recites “The disclosure provides”, using phrase which can be implied as discussed above. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 is rejected under 35 U.S.C. 103 as being unpatentable over Marenda et al. (US20170013832, 01/19/2017, IDS of 08/04/2023) in view of Scialdone et al. (US20070264297, 11/15/2007).
Marenda teaches a mammal-safe method comprises administering to an insect a composition comprising erythritol (same as (2R, 3S)-butane-1,2,3,4-tetraol) (e.g., Abstract; [0006]) to kill or impair an insect (e.g., Claim 1) (corresponding to composition containing insecticidal erythritol in instant claim 1). Marenda presents erythritol-containing food decreases longevity of adult flies Drosophila melanogaster (Fig. 3; [0015]) and increasing concentrations of erythritol decreases longevity of flies ([0016]; Fig. 4), and significant decrease in longevity of flies in experiments where erythritol is provided with sucrose (Fig. 5; [0017]). Marenda teaches the insecticidal composition comprising an effective amount or concentration of erythritol (e.g., Claim 1) ranging from 0.1 M to 10M (Claim 12), or 0.5 M to 5.0 M (Claim 13), or 0.5 M to 2.0 M (Claim 14), which would result in concentration of erythritol is approximately 1.2% to 55% w/w (overlapping with erythritol amount in instant claim 1) (as calculated as following: at 0.1 M * MW 122.12 g/mol (12.212 g erythritol / 1012.212 g solution = about 1.2% ) to 10 M * 122.12 g/mol (1,221.2 g erythritol / 2,221.2 solution = about 55 %) since 1 liter of water weighs 1,000 grams); at least one additive such as one odorant, peptide, protein, or sodium salt (Claims 2-3); water (Claim 8); at least one sugar, sweetener or sugar-containing composition or sugar derivative not toxic to insects (Claim 9), such as molasses, sucrose, glucose or fructose (Claim 10). Marenda specifies that the composition can consist essentially of erythritol, or consist of erythritol, and in some embodiments the composition comprising at least one selected from the group consisting of water, erythritol, yeast, agar, cornmeal and erythritol [0007], and in certain embodiments, the composition further comprises at least one sugar, sweetener, such as sucrose, glucose or fructose [0008] (corresponding to the insecticidal composition consisting of erythritol, sucrose, additional component, and water, as well as erythritol as the only insecticide recited in instant claim 1). Marenda teaches that the method using the erythritol-containing composition targets insects selected from the group of flies, moths, beetles, bees, wasps, yellow jackets, ants, cockroaches, bed bugs, and silverfish (Claim 16) (corresponding to insect species in instant claim 1).
Marenda does not teach the composition as suspension concentrate or gel, containing
ingredients of acrylic thickener and glycerol with weight amounts, or sucrose amount range as recited in instant claim 1.
Scialdone teaches insect-repellent compositions comprising natural, plant-derived repellent active ingredient, e.g., dihydronepetalacone or DHN (e.g., [0013]) essential oil of nepeta plant [0021], admixed with adjuvants or modifiers (e.g., [0011]) or additives such as an antioxidant, an emulsion stabilizer, a preservative, a propellant, an emollient, a sunscreen agent, a surfactant, an emulsifying agent, a solubilizing agent and/or an ultraviolet light absorber (e.g., [0063], in the form of sprayable liquid or powder (e.g., [0046]), aerosol, gel, aerogel, foam [0044], emulsion [0735] (corresponding to suspension or gel in instant claim 1). Scialdone teaches that natural thickeners like xanthan, cellulose, carrageen, or guar, or synthetic materials such as polymers based, for example, acrylic acid, acrylates or acrylamides can be used in the composition (e.g., [0399]) (corresponding to acrylic thickener in instant claim 1), and humectant to retard moisture loss during use can be added to the composition, such as erythritol, fructose, glucose, glycerin, glycol, 1,2,6-hexanetriol, honey, hydrogenated honey, inositol, lactic acid, lactitol, maltitol, maltose, mannitol, polyglycerol sorbitol, propylene glycol, sodium glucuronate, sorbitol, C6-C400 polyethylene glycol ethers of sorbitol, sucrose, urea, urea-d-glucuronic acid, etc. (e.g., [0546]), along with other agents like fragrance (e.g., [0547]). Scialdone exemplifies 15% w/w active lotion with repellent at 15%, glycerin (or glycerol) 10%, sodium polyacrylate thickener sodium polyacrylate together with hydrogenated polydecene and thideceth-6 at 1.6%, preservative 1%, water 43.15%, with other ingredients like emulsifier, chelating agent, and emulsion stabilizer (e.g., Example 3, [0735]). As Scialdone specifies that a formulated mixture of one or more carriers, adjuvants and/or additives may be selected from the members of the groups or subgroups listed in the disclosure by omitting any one or more members from the whole groups, and can be an individual member of a whole group such that a carrier, adjuvant and/or additive [0729], suggesting that selection of individual ingredients representing functional groups can be highly flexible when combined into formulations. Through the examples, Scialdone presents various individual humectant weighs at 1.5%, 2.5%, 3%, 10%, 15% (Example 1-6, Table 1-6, [0733]-[0738]), indicating glycerol, sucrose, erythritol as individual humectant can be generally used in the range of 1.5-15% in the compositions.
It would have been prima facie obvious for a person with ordinary skills in the art to incorporate Scialdone’s teaching of ingredients including acrylic thickener and glycerol humectant for insect repellent composition into the insecticidal composition comprising erythritol of Marenda to arrive at current invention. Because Marenda teaches that erythritol as a sweetener constitutes insecticidal activity, while Scialdone insect repellent suggests erythritol can be used as a humectant in insect repellent compositions, the acrylic thickener and glycerol humectant are obviously suitable for the insecticidal composition taught by Marenda. As Marenda points out that the composition can consist essentially of erythritol, with water, sugar (e.g., sucrose) (e.g., [0007]-[0008]), at least one additive (e.g., an odorant, Claims 2-3), it would be convenient to add the suitable acrylic thickener and glycerol into Amenda’s composition to form the composition consisting of the components as claimed, using erythritol as the only insecticidal active agent in the composition. Furthermore, it would have been advantageous for safety concerns using the human safe insecticidal sweetener erythritol as the only active ingredient for impairing or killing insects in the composition when formulation is used in contact of human skin or human food, and that provides the motivation and a reasonable expectation of success in improving safety of the product. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, erythritol amount, sucrose, and glycerol amounts overlap with those in prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Marenda et al. (US20170013832, 01/19/2017, IDS of 08/04/2023) in view of Scialdone et al. (US20070264297, 11/15/2007) as applied to Claim 1 above, and further in view of Fabri et al. (US20080146444, 06/19/2008).
Marenda and Scialdone teaches insecticidal composition in the form like emulsion, gel, spray, or lotion containing erythritol, sucrose, acrylic thickener, glycerol, and at least one additional component, e.g., odorant, dispersing, agent, flavoring agent, preservative, etc., with defined amounts as discussed in great detail above and incorporated herein.
Combined teachings of Marenda and Scialdone do not teach using diethanolamide as a surfactant in the composition as recited in instant claim 6.
Fabri teaches a method for improving plant growth by adding at least one terpene and one or both of an organic solvent and a surfactant to the growth medium (e.g., Abstract; Claim 1), which can further comprise herbicides, insecticides, preservatives, wetting agents, etc. (Claim 17), in the form of a solid, a solution, or an emulsion (Claim 18). Fabri species that the surfactant can be selected from the group consisting of oleyl alcohol IO EO, Tween 20, stearyl alcohol 20 EO, castor oil 80 EO, Burco TME-S, coconut diethanolamide (corresponding to instant claim 6), Ethfac 161, cocoamine 2 EO, cocoamine 5 EO, Dowanol DB, Demulse DLN 532 CE, Tween 80, Dumulse DLN 622 EG, Span 20, Diacid 1550, decyl alcohol 4 EO, dipropyleneglycol method ester, sodium lauryl sulfate, sodium dodecyl sulfate, sodium xylene-sulfonate, Tergitol NP6, and combinations thereof (e.g. Claim 9).
It would have been prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate surfactant coconut diethanolamide taught by Fabri into the insecticidal composition taught by Marenda and Scialdone to arrive at current invention. Because Scialdone teaches that surfactants or emulsifying agents, e.g., fatty acid or fatty esters, are suitable for the gel or emulsion compositions (e.g., [0063], [0175], [0179]), while coconut diethanolamide is used as a suitable surfactant for the composition improving plant growth in Fabri and it is from natural coconut known as non-toxic for humans and the environment, that provides motivation of artisans in the field to select coconut diethanolamide as surfactant for the intended safe application of formulating sweetener erythritol as insecticidal composition and it would have provided reasonable expectation of success for the invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Marenda et al. (US20170013832, 01/19/2017, IDS of 08/04/2023) in view of Scialdone et al. (US20070264297, 11/15/2007) as applied to Claim 1 above, and further in view of Parker (US20040062785, 04/01/2004, IDS of 08/04/2023).
Marenda and Scialdone teaches insecticidal composition in the form like emulsion, gel, spray, or lotion consisting erythritol, sucrose, acrylic thickener, glycerol, and at least one additional component, e.g., odorant, dispersing, agent, flavoring agent, preservative, etc., with defined amounts as discussed in great detail above and incorporated herein.
Marenda indicates that erythritol is very well tolerated by humans and safe to be consumed by human, therefore, erythritol can be used in targeted bait presentations to fruit crop and urban insect pests [0074].
Both Marenda and Scialdone do not teach an insect bait comprising the composition and a substrate as recited in instant claim 8, and the substrate comprising cellulose as in instant claim 9.
Parker teaches an environmentally compatible pesticidal composition and method for the control of insect pests (e.g., Abstract), wherein the insecticidal composition can be prepared as a ready-to-use solution, a liquid concentrate, or a dry concentrate, and as a liquid, solid, or semi-solid bait [0023], effective against a wide range of insect pests including, but not limited to, aphids, leafhoppers, whitefly, caterpillars, beetles, cockroaches, ants, flies, mosquitoes, wasps, and silverfish [0029]. Parker specifies that the composition typically includes an environmentally safe pesticide and an additional component which is a carrier material (e.g., [0007]), wherein the carrier can be a liquid or a solid carrier and can be a food source that is preferably effective to promote ingestion and/or attract specific target pests as baits, such suitable food sources for use in bait formulations including, but not limited to, wheat flour, wheat cereal, bran, molasses, vinegar, agar, gelatin, pet food, wheat, soy products, oats, corn, corn cob, vegetable oils, citrus mash, rice, fruits, fish by-products, sugars (e.g., sucrose), coated vegetable seeds, coated cereal seeds, dairy products, whey powder, casein, albumen, blood meal, bone meal, yeast, fats, beer products, paper fiber, cellulose, gelatin and mixtures thereof (e.g., [0007]; [0014]). Parker states that The composition can also be applied to substrates or plants frequented by pests (e.g., [0007]).
It is prima facie obvious for a person with ordinary skills of art prior to filing date to incorporate Parker’s teaching on insect bait with the insecticidal composition taught by Marenda and Scialdone to arrive at current invention. Both Parker’s insecticidal composition and the composition taught by Marenda and Scialdone are effective against many common insect species, and using environmentally safe baits or substrates, e.g., cellulose, which are human-safe, abundant, and easy to reach/set up as taught by Parker, would effectively improve to promote ingestion and/or attract insects as Parker specified. These aspects would motivate an artisan in the field to generate such a bait for insects as instantly claimed and would have provided reasonable expectation of success for improving insect attraction, ingestion, and impairment/killing upon insects’ consumption on such a bait. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
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, 6, and 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 3-4, and 8-13 of U.S. Patent No. 12059000 (application US17970184, granted on 08/13/2024; Hereafter P’9000) in view of Scialdone et al. (US20070264297, 11/15/2007) and Fabri et al. (US20080146444, 06/19/2008).
P’9000 recites an insecticidal composition consisting of a suspension concentrate or a gel with the same ingredients and amount ranges (Claim 1) as instant claim 1, except without mentioning the at least one additional component selected from the group of agents as listed in instant claim 1, while reciting insect species in other claims, e.g., termites (Claim 8), ants (Claims 9-10), flies and mosquitos (Claim 11). P’9000 recites an insect bait comprising the composition and a substrate (Claim 3), wherein the bait comprises cellulose (Claim 4) (same as instant claims 8-9). P’9000 lists compositions with same ingredients but alternative weight amounts (Claims 12-13).
P’9000 does not recite an additional component as in instant claim 1, and does not recite coconut diethanolamide in the composition as in instant claim 6.
As discussed above in great detail and Scialdone teaches insect-repellent compositions comprising natural, plant-derived repellent active ingredient, e.g., dihydronepetalacone or DHN (e.g., [0013]) essential oil of nepeta plant [0021], admixed with adjuvants or modifiers (e.g., [0011]) or additives such as an antioxidant, an emulsion stabilizer, a preservative, a propellant, an emollient, a sunscreen agent, a surfactant, an emulsifying agent, a solubilizing agent and/or an ultraviolet light absorber (e.g., [0063], in the form of sprayable liquid or powder (e.g., [0046]), aerosol, gel, aerogel, foam [0044], emulsion [0735]. Scialdone teaches that surfactants or emulsifying agents, e.g., fatty acid or fatty esters, are suitable for the gel or emulsion compositions (e.g., [0063], [0175], [0179]), and Fabri teaches that coconut diethanolamide can be used as a suitable surfactant for the composition improving plant growth, which can comprise insecticide.
It would have been prima facie obvious for a person with ordinary skills of art incorporate surfactant and coconut diethanolamide taught by Scialdone and Fabri with the composition in P’9000 to arrive at current invention. Since coconut diethanolamide is generated from natural coconut, as known as non-toxic for humans and the environment, that provides motivation of artisans in the field to select coconut diethanolamide as surfactant for the intended safe application of formulating sweetener erythritol as insecticidal composition, and it would have provided reasonable expectation of success for the invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1617