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 .
Detailed Action
Filing Receipt and Priority
The filing receipt mailed 10/25/2023 states that the instant application is a 371 of PCT/IN2021/051142, filed 12/07/2021. The filing receipt also states that the application claims foreign benefit to INDIA application 202041053237, filed 12/07/2021.
Information Disclosure Statement
The information disclosure statement received 11/22/2023 has been considered.
Restriction/Species Election
Applicant’s election of Group I, claims 1-8, is acknowledged. Group II, claims 9-12 and 20, are hereby withdrawn being drawn to a non-elected invention.
Applicant’s election of composition EN-1, described in Table 5 is acknowledged. EN-1 is comprised of erythritol nonanoate ester and the agriculturally acceptable ingredients Tergitol™ (NP-40, nonyphenoxypolyethoxyethanol), Silwet® (polyalkyleneoxide modified hepta methyl trisiloxane), and water.
Applicant’s election of “fall armyworms” is also acknowledged. However, claim 5 is withdrawn being drawn to a non-elected species.
Claim 5 is drawn to a composition optionally further comprising seed treatment nutrient solutions. Claims 13-19 are drawn to compositions synthesized via specific methods. The claims are distinct from the elected composition because 1) they require additional ingredients not elected or 2) they require a process that was not elected.
Claims 5 and 13-20 are hereby withdrawn being drawn to non-elected species. Applicant may traverse the withdrawal of claims 13-20 in the reply to this action.
Objections
Title
The use of “novel” in the title of this disclosure is improper. See MPEP section 606 Title of Invention.
Drawings
Text within figures 1-14 is difficult or to read or cannot be read. See examples below.
PNG
media_image1.png
198
516
media_image1.png
Greyscale
Specification
The use of the terms Silwet® and Tergitol™, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claims
Claim 1 is objected to for the following informality. Claim 1 shortens “sugars and sugar alcohols” to “sugar, sugar alcohol” in l .5. The claim should not shorten this term as to remain consistent throughout the claims.
Claim 1 states “composition of esters” where it should state “composition of nonanoate esters of sugars and sugars and sugar alcohols”.
Claim 4 states “Nonanoates esters of Erythritol is selected…”. The claim should instead use “are” in place of “is”.
Claim 6 states “surfacts” where it should state “surfactants”. Claim 6 also uses “adjuvents” where it should state “adjuvants”.
Rejections
Claim Rejections - 35 USC § 112(b)
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 6-8 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.
Indefiniteness
Claims 1 and 6-7 are indefinite for the following reasons.
Regarding claim 1, the claim states “A bio-pesticidal composition comprising nonanoate esters of sugars and sugar alcohols derived from C3 to C8 carbon atoms along with agriculturally acceptable ingredients…”. Applicant formulation EN-1 which contains 3 agriculturally acceptable ingredients (Tergitol™, Silwet®, and water). However, the claim is ambiguous as to the total amounts. It is not clear if only one agriculturally acceptable ingredient is require or if at least two are needed. For the purpose of examination and because applicant has elected EN-1, the claim is interpreted to mean “at least one agriculturally acceptable ingredient”.
Regarding claim 6, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim 6 in bullet viii lists Tergitol™ and Silwet® which are known as surfactants within the art. Surfactants are listed separately in bullet iv. Bullet viii additionally states nonionic, cationic, and anionic [surfactants]. This claim language is broad claim language followed by narrow claim language.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Additionally, it is not clear if the Tergitol™ and Silwet® are included under bullet iv or just bullet viii.
Claim 6 states “…hydrogen sulphide which may act as adjuvents”. This claim language is not clear. Either the limitations are adjuvants or are not adjuvants.
Claim 6 states “oxidation pathways inhibitors…for reducing resistance.” This limitation is not explicitly defined within the specification and it is not explicitly clear to what resistance is being reduced or in what resistance is being reduced.
Regarding claim 7, which states “wherein the composition comprising nonanoate esters of [sugars and sugar alcohols is] formulated as an insecticidal soap along with agriculturally acceptable excipients selected from the group consisting of surfactants, carrier oil, anti-oxidants,…”. Claim 1 already claims a composition comprising the erythritol nonanoate esters and agriculturally acceptable excipients. Therefore, it is not clear if the second iteration in claim 7 is the same agriculturally acceptable excipients in claim 1 or new agriculturally acceptable ingredients introduced.
Indefinite Language
Regarding claims 6 and 7, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Additionally, the use of “etc.” in claim 6 and 7 is also indefinite as it is not explicitly clear what limitations are being claimed.
Antecedent Basis
Claim 1 states “the nonanoate esters of sugar or sugar alcohol” in l. 5. The first instance of a similar term is “sugars and sugar alcohols”. This difference makes the claim indefinite because it is not clear if the “nonanoate esters of sugar or sugar alcohol” is the same “nonanoate esters of sugars and sugar alcohols” in l. 2 of claim 1.
A similar issue is found in claim 7 where the claim uses “sugar/sugar alcohols”.
As claims 2-4, 6 and 8 are dependent on claim 1, they are also rejected.
Trademark in claims
Claim 6 contains the trademark/trade name Tergitol™ and Silwet®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name.
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.
KSR Rationales
The MPEP in section 2143, subsection I gives examples of Rationales for supporting a conclusion of obvious. These rationales are non-exhaustive and include (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Claim(s) 1-4, and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Puterka (J. Econ. Entomol. 96(3): 636-644, 2003), in view of Ma (US 9,169,191, published 2015), Bhoge (US20190261631) and Brown (Journal of the American Academy of Dermatology, 1997, Vol. 36, Iss. 2).
Claim 1 is drawn to a bio-pesticidal composition comprising nonanoate esters of sugars and sugar alcohols and agriculturally acceptable ingredients in a specific concentrations.
Claim 2 is drawn to a listing of nonanoate esters of sugars and sugar alcohols.
Claim 3 specifies erythritol esters.
Claim 4 is drawn to mono-, di-, tri-, and tetra-esters of erythritol.
Claim 6 is drawn to possible agriculturally acceptable ingredients.
Claim 7s is drawn to a insecticidal soap formulation.
Claim 8 is drawn to specific forms of the formulated composition and includes liquids, soaps, pellets, granules, suspensions, gels, solutions, and aerosol sprays.
Regarding claims 1-4, Puterka is drawn to sugar esters with insecticidal properties (title). Puterka in its abstract states “Synthetic sugar esters are a relatively new class of insecticidal compounds that are produced by reacting sugars with fatty acids.” Listed sugar esters include sucrose octanoate, sorbitol octanoate, sorbitol decanoate, sorbitol caproate, xylitol octanoate, xylitol decanoate, and xylitol dodecanoate. Puterka on p. 641, Table 5 lists the insecticidal efficacy of sucrose octanoate, sorbitol octanoate, xylitol decanoate, xylitol dodecanoate, sorbitol decanoate against arthropods M. sexta, M. nicotinnae, T. urticae.
Puterka does not explicitly mention erythritol nonanoate esters. This is addressed by Ma.
Ma teaches methods of synthesizing an erythritol mono- and di-esters (abstract). Ma in col. 7, Example 4 teaches a method of preparing erythritol-monooctanoate. Ma in col. 9, example 9 teaches methods of synthesizing erythritol dioleate. It would be within the skillset of one of ordinary skill to modify the procedures of Ma to synthesize higher order erythritol esters. Additionally, one of ordinary skill in the art would find it obvious to use nonanoic acid in place of the octanoic acid and oleic acid as used in examples 4 and 9, respectively.
Regarding claims 6-8, Bhoge in para. [0131] teaches Tergitol™ as an ingredient within a pesticidal composition. Bhoge in para. [0128[] also teaches Silwet® as an ingredient in a pesticidal composition. Both compositions contain water as an ingredient as well. Bhoge’s teaching shows that both Tergitol™ and Silwet® are well known within the pesticide arts.
Bhoge in para. [0004] teaches various agrochemical formulations including aqueous solutions, emulsifiable concentrates, suspensions, wettable powders, oil-in-water or water-in-oil emulsions, and granules. Bhoge in para. [0003] also states “Agrochemical formulations can be formulated in various wats primarily based on physical and chemical characteristics of the active ingredients.”
Regarding the concentrations of sugar esters and sugar alcohol esters, agriculturally acceptable ingredients, and water, Bhoge teaches concentrations of Tergitol™ in 1.5% w/w and Silwet® in 0.75% w/w. Concentrations of the active ingredient of Bhoge range from 13.5% to 32%. However, the MPEP section 2144.05(II) states:
“The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. 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.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.”
Therefore, one of ordinary skill would find it obvious to formulate a composition to contain 0.1% to 4% of erythritol nonanoate
Brown on p. 248, left col., para. 5 describes a “repellent soap” for use against sandflies.
Therefore, one of ordinary skill in the art would find it obvious to formulate a composition into aqueous solutions, concentrates, suspensions, powders, emulsions, and granules via the teachings of Bhoge. Soap formulations would be known to one of ordinary skill in the art as well.
Tergitol™ and Silwet® are well known within the pesticidal arts. Sugar esters are known for their efficacy as insecticides (pesticide) as well. While erythritol nonanoate esters are not explicitly disclosed within the art, one of ordinary skill would find it obvious to make said erythritol nonanoate esters via the teachings of Ma and one of ordinary skill would find it obvious to then incorporate the erythritol nonanoate sugar ester into a pesticidal composition. One of ordinary skill would be motivated to make the erythritol nonanoate ester as sugar esters are known for their pesticidal properties and could then incorporate said erythritol nonanoate into a pesticidal composition via KSR A-C.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUISALBERTO GONZALEZ whose telephone number is (571)272-1154. The examiner can normally be reached M-F 8:30-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LUISALBERTO GONZALEZ/Examiner, Art Unit 1624
Prosecution Insights