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 .
Priority
The present application is a National Stage entry of International application PCT/IB2021/057351 filed 08/10/2021, which claims the benefit of Foreign application IN202021034295 filed 08/10/2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention, filed 02/09/2023, in the matter of Application N° 18/041,147. Said documents have been entered on the record. The Examiner further acknowledges the following:
Claims 1-9 are pending.
Claims 1-9 are presented for examination and rejected as set forth below.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chawla (Environmental Science and Pollution Research, 2018), and in further view of Ambily (International Journal of Agriculture Sciences, 2020; published April 30, 2020, prior to the instant priority date of 08/10/2020), as evidenced by Rawal (Journal of Entomology and Zoology Studies, 2018) and Colby (Weeds, 1967).
Applicant’s claims are directed to a method for controlling whitefly and/or spotted bollworm insect pest comprising contacting the insect pest with a wettable granular formulation comprising fipronil and flonicamid. Note that “to control whitefly and/or spotted bollworm” is an intended result of the method, and that: It must be remembered that a “whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005) (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)).
Chawla teaches a flonicamid and fipronil combination is useful for control of pests on cotton plants (abstract), and mentions whiteflies (pg 19168, paragraph 4) and bollworm (pg 19168, paragraph 2) as targets of these chemicals. Chawla also suggests synergy between fipronil and flonicamid (pg 19168, paragraph 2) with high effectiveness in controlling pests in cotton (pg 19168, paragraph 5). Chawla teaches of the urgent need for pesticide control of rice and cotton crops (pg 19168, paragraph 2), and cotton particularly is an important cash and oilseed crop (pg 19167, paragraph 1).
Regarding claims 1, 3, 5, and 8-9: Chawla teaches a flonicamid and fipronil combination is useful for control of pests on cotton plants (abstract), suggests synergy between fipronil and flonicamid (pg 19168, paragraph 2), and mentions whiteflies (pg 19168, paragraph 4) and bollworm (pg 19168, paragraph 2) as targets of these chemicals. Chawla teaches a method of equal weight application (e.g., 60 + 60) of a combination of fipronil and flonicamid on cotton crop (pg 19170, ‘field study’; pg 3 of ESI, Supplementary Table 2).
Regarding claims 2, 4 and 6: Chawla teaches an application rate of 60 or 120 g/ha (pg 19170, ‘field study’); however, the pesticides can be applied in rates of 150 g/ha (pg 19176, paragraph 1) and 300 g/ha (pg 19175, paragraph 1), covering all instantly claimed application rates. As evidenced by Rawal, bollworms infest cotton bolls and locules under unsprayed conditions (title, abstract), so it would be obvious to spray locules to prevent damage by the bollworm pest (pg 19168, paragraph 2).
Regarding claim 7: Chawla demonstrates multiple spray application to the cotton crops (i.e., line two separates spray application between 10/1/2014 and 11/29/2014, which is about 2 months) in Supplementary table 2 (pg 3 of electronic supplementary material). Furthermore, Chawla teaches a limited half-life of these pesticides (pg 19176, paragraphs 1 and 2), and thus, a PHOSITA would apply additional pesticide to maintain effective amounts of pesticide for pest control, which is demonstrated by the multiple spray application protocols of Supplementary table 2.
In summary, Chawla teaches a method of applying a combination of equal amounts of flonicamid and fipronil on cotton for control of pests. However, Chawla does not teach the specific flonicamid and fipronil water dispersible granules (WDG) formulation in the instant mass weight amounts (instant claims 1-3, 5-6, and 8-9).
Ambily teaches a method of applying flonicamid 15% and fipronil 15% water dispersible granules (WDG) to control pests (pg 9760, introduction; pg 9763, conclusions), and suggests synergy between fipronil and flonicamid (pg 9760, introduction). Ambily teaches an application rate of 0.6 to 200 g/ha (pg 9760, paragraph 1), 300 g/ha (pg 9763, paragraph 1), and 400 or 800 g/ha (abstract).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Chawla to use Ambily’s flonicamid 15% and fipronil 15% water dispersible granules (WDG) to control pests of the cotton crop because Chawla teaches high effectiveness of the general pesticidal combination of flonicamid and fipronil to control pests in cotton (pg 19168, paragraph 5), and cotton particularly is an important cash and oilseed crop (pg 19167, paragraph 1).
Furthermore, as Chawla and Ambily both suggest synergism between flonicamid and fipronil in pesticide use, and thus, the synergism between the two pesticides would be an expected result of the combination, even if demonstrated. Furthermore, since the pesticide combination of flonicamid and fipronil, and the application of this composition to cotton crops is obvious, such that the discovery of synergism against whitefly and/or spotted bollworm insect is merely the discovery of a previously unappreciated property of the prior art composition: “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Finally, with respect to claims of surprising synergism, Claims 3, 8, and 9 recite “synergism” of fipronil and flonicamid; however, synergism is not demonstrated in the specification (pg 11, Table 2) because the Colby method requires the kill data for the comparison of ingredient A (X g/ha), ingredient B (Y g/ha), and the combination of ingredient A (X g/ha) and ingredient B (Y g/ha). In the specification (pg 11, Table 2), the individual ingredients are applied in different amounts and formulations (flonicamid 50% WG, fipronil 5% SC) compared to the combined treatment (flonicamid 15% + fipronil 15% WG). Thus, the Colby equation cannot be used to derive conclusions of synergism based on the data (for an example, see Colby (Weeds, 1967) – Table 1). Furthermore, unexpected results must be commensurate with claim language, and it is unclear where synergism of “the wettable granular formulation” and the additional formulations of instant claim 3 is demonstrated in the Specification.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJAN PRAGANI whose telephone number is (703)756-5319. The examiner can normally be reached 7a-3p EST most days.
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/R.P./Examiner, Art Unit 1614 9/8/25
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614