DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/15/2025, has been entered.
Claims 40-60 are pending. Claim 60 is new.
Response to Amendment
The Declaration of Annett Rozek under 37 CFR 1.132 filed 9/15/2025, is insufficient to overcome the rejection of claims 39-42 and 48-59 based upon Delwich et al. (U.S. Patent 6,001,346) in view of Howse (WO 97/33472 A1) as applied to claims 39-42 and 48-59 above and further in view of Simonsen (WO02/20746) as set forth in the last Office action because:
Paragraphs 6 and 7 are moot because they discuss Delwich, which is not relied upon in the new grounds of rejection for any teaching or matter specifically challenged in the argument;
Paragraph 8 asserts that “[n]owhere does Howse teach or suggest that the electret material could be combined with the pesticidal or herbicidal composition to make a unitary particle that is capable of carrying an electrostatic charge.” However, the claims are not directed to a method of making a unitary particle much less a method of making a liquid formulation comprising a unitary particle.
Paragraph 9 incorrectly asserts that “Howse does not teach or suggest the possibility of incorporating such composite particles into a liquid formulation.” To the contrary, Howse teaches that “crop plants may be sprayed or dusted with herbicide containing particles.” Page 7, lines 6-7. This implies the particles may be suspended in a liquid formulation.
Paragraph 10 asserts that “none of the methods described by Howse explicitly require that the wax be melted.” However, none of the claims require melting much less heating.
Paragraph 11 suggests that the particle of Howse would fall apart if it were mixed with water to create a suspension. This is not persuasive because as stated above Howse implies the use of particles in liquid since they can be sprayed on plants.
Paragraph 12 merely opines on the issue of obviousness the conclusion of which is premised on unpersuasive assertions made in paragraphs 6-11.
Withdrawal of Claim Rejections
Any previous rejection not reiterated herein has been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 40-43 and 48-60 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, the specification fails to describe adding a chemical agent selected from at least one arthropodicial chemical and an arthropod pheromone to solid electret particles. While the general outline of steps in claim 43, as amended, resemble the steps provided on page 9 of the specification, there is no description of adding a chemical agent to solid electret particles. At best, the specification at page 19 describes an insecticide “formulated into” carnauba wax particles while Experiment 1 of the same page discloses insecticide (Mavrik) matrix encapsulated in carnauba wax particles. These disclosures describe nothing more than what has already been established as well-known and convention in prior art that provides for particles wherein an active is encapsulated or coated with a wax. If adding a chemical agent to solid electret particle is really untaught by the prior art then any novelty of this aspect lies in the amended claim not in the specification.
Claims 40-42 and 48-60 are rejected insofar as they depend from claim 43.
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 40-60 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 43 and 44 recite the limitation "the liquid formulation". There is insufficient antecedent basis for this limitation in the claim. Correction can be made by amended the preamble to be directed to “methods of manufacturing a liquid formulation comprising suspended solid electret particles” or something of the like.
Claims 40-42 and 45-60 are indefinite insofar as they depend from claims 43 and 44.
Claims 51, 52 and 60 recite the limitation "the liquid formulation". There is insufficient antecedent basis for this limitation in the claim.
Claims 58 and 59 recite the limitation "the eukaryotic tissue". There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 53, 54, 56 and 57 are 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.
Claims 53 and 56 fail to further limit the subject matter of the claim upon which they depend because they recite the same selection of chemical agents as independent claim 43.
Claims 54 and 57 fail to include all the limitation of the claim upon which they depend because they recite an “insecticide,” “insecticidal chemical,” or “insect pheromone,” which under their broadest reasonable interpretations are broader than “arthropodicial chemical” or “arthropod pheromone.”
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
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 44-47 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Howse (WO 97/33472 A1) in view of Shieh (GB 2127690).
Regarding claim 44, Howse teaches “a pesticidal or herbicidal compositions in particulate form which comprises composite particles each comprising a core of an inert substrate having a pesticide or herbicide associated therewith and a coating of an electrically resistive material carrying an electrostatic charge”. Abstract. The electrically resistive material “readily accepts an electrical charge, such as a wax.” The particles have a particle size in the range of form [sic] 1 to 100 µm , preferably 20 to 60 µm” (current claim 45). Page 3, lines 26-28. “The coating of the electrically resistive material may be applied to the cores of the particles by any suitable coating technique such as by fluidized bed coating, spraying or mixing.” Page 4, lines 8-11. Howse also teaches that the composition may be sprayed or dusted on crop plants, which implies the particles may be suspended in a liquid formulation. See page 7, line 6.
Howse’s decision to not provide details of spray coating intimates that the steps for spray coating are well understood and conventional.
For instance, Shieh provides “a free flowing and water floatable granular form of a pesticide . . compris[ing] a solid wax core or wax-coated cove [sic] less dense than water and a pesticide secured thereto by a matrix capable of releasing the pesticide in contact with water.” Abstract. To this end, Shieh teaches “to first liquify [a] wax by heating it well above its melting point . . . then distribute the melted wax onto [a] mass of particulate base material, e.g., by spraying, accompanied by mixing . . . until the temperature of the wax is well below its melting point.” Page 2, col. 1, lines 21-31. Shieh also teaches “admixing the pesticide or pesticidal material with the liquid matrix material, which mixture is then coated – directly or indirectly – onto the ‘core’.” Page 4, col. 1, line 9 – 12. In this regard. “the coating matrix material [is] sprayed.” Page 4, col. 1, line 39-40. This would read on “(i) independently spraying liquid electret forming materials and at least one liquid chemical agent into a collecting chamber; (ii) cooling the chamber to a temperature at which the electret material solidifies or begins to solidify; (iii) forming solid particles of electret material loaded with chemical agent.”
It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention in view of the combination of Howse and Shieh to arrive at the claimed invention. Simply put, a skilled artisan wanting to practice Howse’s specific teachings of particles carrying an electrostatic charge for improved pesticidal compositions while taking the suggestion to spray coat the particle would look to Shieh for well-known and conventional teachings in this regard.
Regarding claim 46, Howse discloses carnauba wax, candelilla wax and beeswax. See page 3, lines 19-20.
Regarding claim 47, Howse teaches that pesticides include insect growth regulators. See page 11, line 26-27.
Claim 40-43 and 48-60 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Howse (WO 97/33472 A1) in view of Martin et al. (WO 01/57144A1).
Regarding claim 43, Howse teaches “a pesticidal or herbicidal compositions in particulate form which comprises composite particles each comprising a core of an inert substrate having a pesticide or herbicide associated therewith and a coating of an electrically resistive material carrying an electrostatic charge”. Abstract. To this end, Howse teaches mixing the insecticide Sulfluramid with Carnauba wax particles (current claims 40, 41 and 54). See Example 1, page 8. Howse also teaches that the composition may be sprayed or dusted on crop plants, which implies the particles may be suspended in a liquid formulation (current claim 48). See page 7, line 6. In addition to disclosing insecticides, see e.g., page 2, line 28, Howse teaches the use of sexual pheromones as attractants (current claims 55-57). Page 5, line 10. These disclosures imply arthropodicidal chemicals and pheromones as recited in these claims.
Howse does not teach fusing the chemical agent loaded solid particles together to form a solid matrix.
Martin et al. relates to powder material for electrostatic application to a substrate. See Title. “At least some of the particles which constitute the powder material comprise a core and a shell surrounding the core.” Abstract. “Generally, the powder material includes a component which is fusible, and that component may be in the shell or in the core or in both the shell and the core.” Page 6, lines 21-23. “Preferred fusible materials generally function as a binder for other components in the powder.” Page 7, lines 16-18. By way of example, Example 2 demonstrates the preparation of core-shell particles wherein the components of the core, which comprises carnauba wax, are fused.
The core materials are pre-mixed in a Littleford Blender or V-Mixer to ensure a uniform blend is formed, and then blended together using a heated Triple Roll Mill to melt blend the material and to adequately disperse the components in the resin.
The cooled solid blend is chipped into large particles (approx. 800 microns in size) which are used as the feed for an air jet mill (micronizer). They are jetted to a mean volume particle size of 10 microns and classified to remove essentially all particles above 14 microns and all particles below 6 microns
(current claim 42). Page 37, lines 5-15. This reads on steps (ii)-(iv). Martin et al. also teaches that the powder may be applied by spraying, which implies suspending the powder in a liquid formulation.
It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention in view of the combined teachings of Howse and Martin et al. to arrive at the claimed invention. Here, one of ordinary skill in the art would find motivation to combine the references and have a reasonable expectation of success in their combination because both references teach compositions comprising particle comprising electrostatic charge that are useful for delivering insectides. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.”) In particular, one of ordinary skill looking to diversify or improve upon the teaching of Howse would have been motivated to modify its teachings with those of Martin et al. because Martin et al. addresses a need for preparing powder material that is more readily adaptable to changes in formulation.
Regarding claims 49, 58 and 59, Howse teaches that the composition gets on the feet of insect or mites. Page 6, lines 9.
Regarding claims 48-50, 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.
Regarding claims 52 and 60, Martin et al. teaches using a surfactant as a dispersing component. See page 12, lines 8-9. Although Martin et al. does not expressly teach the order of adding the surfactant, changes in sequence of adding ingredients is prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S CABRAL whose telephone number is (571)270-3769. The examiner can normally be reached M-F 8 am - 5 pm.
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/ROBERT S CABRAL/Primary Examiner, Art Unit 1614