DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Amendments
2. The preliminary amendments filed Nov 26, 2025 have been entered. Claims 1-8, 11, 14-23, 26 and 29-20 were amended. Claims 1-30 are under consideration in this Office Action.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on November 26, 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawal of Objections and Rejections
4. The objection of claims 8 and 23 is withdrawn in view of applicants amendments.
5. The rejection of claims 1, 11, and 16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn in view of applicants amendments.
6. The rejection of claims 1-8 and 10-23 and 25-30 under 35 U.S.C. 102(a)(1) as being anticipated by Shakeel et al., is withdrawn in view of applicants amendments.
7. The rejection of claims 9 and 24 under 35 U.S.C. 103 as being unpatentable over Shakeel et al., as applied to claims 1-8 and 10-23 and 25-30 above, and further in view of Souter et al., is withdrawn in view of applicants amendments.
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.
8. Claims 14 is 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.
Claim 14 does not further limit the insecticidal composition. Claim 14 is drawn to the application locus; however the locus or application site does not further limit the insecticidal composition. Therefore clarification is required to overcome the rejection.
Response to Arguments
9. Applicant's arguments filed Nov. 26, 2025 have been fully considered but they are not persuasive. Applicants amendment claim 14 to provide a clear and boundary for the claimed subject matter. However the rejection is based upon the fact that claim 14 does not further limit the insecticidal composition. The locus or application site does not add additional components to the insecticidal composition; nor does the claim further limit the previously recited components. Therefore the rejection is maintained.
New Grounds of Rejection based Upon Applicants Amendments
Claim Objections
10. Claims 1, 16 and 22 is objected to because of the following informalities:
Claims 1 and 16 recites eugenol and clove oil. However, eugenol is also called clove oil. Thus, it appears the claims are repetitive. Appropriate correction is required.
Claim 22 recites “….said bioactive agent is thymol is of thymol oil rosemary.” Appropriate correction is required.
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.
11. Claims 1-8 and 10-23 and 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over Shakeel et al., (WO2018201161 published Nov. 1, 2018; priority to April 28, 2017) in view of Bessette et al., (WO 2000005964 published 2000-02-10; priority to 1998-07-28).
The claims are drawn to an insecticidal composition for controlling one or more insects comprising: (i) a minicell and (ii) a bioactive agent having insecticidal activity, wherein the bioactive agent is selected from thyme oil, cinnamon oil, tea tree oil, clove, orange oil, oregano oil, citronella oil, lemon grass oil, eucalyptus oil, lavender oil, cedar oil, thymol, eugenol, a saponin, and combinations thereof; wherein the one or more insects are controlled with application of said composition to a locus.
The claims are also drawn to a method of controlling one or more insects, the method comprising: applying an insecticidal composition to a locus, wherein said insecticidal composition comprising: (i) a minicell and (ii) a bioactive agent having insecticidal activity, wherein the bioactive agent is selected from thyme oil, cinnamon oil, tea tree oil, clove, orange oil, oregano oil, citronella oil, lemon grass oil, eucalyptus oil, lavender oil, cedar oil, thymol, eugenol, a saponin, and combinations thereof; wherein the one or more insects are controlled with application of said composition to a locus.
Shakeel et al., describe agricultural compounds within achromosomal and/or anucleated cells and methods of improving encapsulation and retention of agricultural compounds in achromosomal and/or anucleated cells [abstract]. The agricultural compounds and application of the platform to a desired locus such as a plant or a pest [para 8]. The intact anucleated cell is a bacterially derived minicell [para. 9]. Thus teaching the minicell of claims 1-2 and 16-17. The anucleated cell-based platform for the encapsulation and delivery of agricultural compounds is provided, which comprises an intact anucleated cell, having within said cell at least one non-expressed agricultural compound. The at least one non-expressed agricultural compound is an insecticide [para 10]. Thus teaching claims 3 and 18. The non-expressed agricultural compound can a neonicotinoid insecticide, clothianidin or a keto-enol insecticide [para 10]. The composition may include one or more insecticides/pesticides which include but are not limited to rosemary oil and/or geraniol [para 189-190]. Each plant essential oil or derivative thereof, which may be extracted from natural sources or synthetically made, generally contains, as a major constituent, an acyclic monoterpene alcohol or aldehyde, a benzenoid aromatic compound containing at least one oxygenated substituent or side chain, or a monocarbocyclic terpene generally having a six membered ring bearing one or more oxygenated substituents. Thus teaching claims 4-8 and 19-23. Shakeel et al., describe a method of delivering an agricultural compound to a plant, comprising: applying the composition as in any one of the preceding clauses to a plant, wherein the plant comprises the seed, stalk, flower, fruit, leaves, roots, or rhizome. A method of delivering an agricultural compound to a crop, comprising: applying the composition to a crop, or locus in proximity to said crop [para 67]. Thus teaching claim 16.
Compositions described herein can comprise an agriculturally acceptable carrier. The composition may include a microbial stabilizer, a fungicide, an antibacterial agent, a preservative, a stabilizer, a surfactant, an insecticide, a plant growth regulator, a fertilizer, a nutrient, or any combination thereof [para 209]. Thus teaching claims 10 and 25. The agrochemical encapsulated minicells can be formulated as a liquid, dry composition, powder, granule, seed coating, drench, in- furrow composition, or foliar spray [Example 9]. Thus teaching claims 11 and 26. The formulated minicells encapsulating agrochemicals can be applied to a plant [Example 9]. Thus teaching claims 14 and 29. In another embodiment, the formulated product comprises two agricultural compounds that are present in compositions of the disclosure in a weight ratio of at least 1 : 10, 1 :9, 1 :8, 1 :7, 1 :6, 1 :5, 1 :4, 1 :3, 1 :2, 1 : 1, 2: 1, 3 : 1, 4: 1, 5: 1, 6: 1,7: 1, 8: 1, 9: 1, or 10: 1 [para 274]. Thus teaching claims 12-13 and 27-28. The term "agrochemical" as used herein means a chemical substance, whether naturally or synthetically obtained, which is applied to a plant, to a pest or to a locus thereof to result in expressing a desired biological activity. The term "biological activity" as used herein means elicitation of a stimulatory, inhibitory, regulatory, therapeutic, toxic or lethal response in a plant or in a pest such as a pathogen, parasite or feeding organism present in or on a plant or the elicitation of such a response in a locus of a plant, a pest or a structure [para 187]. The relative drop in pesticide concentration in experimental samples that contain minicells when compared to pesticide samples that do not contain minicells is a direct measure of pesticide encapsulated within the minicell [Example 8]. Thus teaching claims 15 and 30.
Shakeel et al., teach an insecticidal composition for controlling one or more insects comprising: (i) a minicell and (ii) a plant essential oil bioactive agent having insecticidal activity, wherein the one or more insects are controlled with application of said composition to a locus; however Shakeel et al., do not teach the specific bioactive agent is of thyme oil, cinnamon oil, tea tree oil, clove, orange oil, oregano oil, citronella oil, lemon grass oil, eucalyptus oil, lavender oil, cedar oil, thymol, eugenol, a saponin, and combinations thereof.
Bessette et al., teach synergistic and residual pesticidal compositions containing synergistic and residual mixtures of plant essential oils and/or their constituents, plant essential oils and/or their constituents in admixture with known active pesticidal compounds or plant essential oils and/or their constituents in admixture with other compounds not previously used as active ingredients in pesticidal formulations [abstract]. Each plant essential oil or derivative thereof, which may be extracted from natural sources or synthetically made [Detailed Description of Preferred Embodiments]. Examples of such essential oils or their constituents include, but are not limited to, cinnamaldehyde, cinnamic alcohol, carvacrol, carveol, citral, citronellal, citronellol, eucalyptol (cineole), eugenol, iso-eugenol, geraniol, lavendustin A, lavendustin B, lavendustin C, thyme oil (white and red), thymol, and the like [Detailed Description of Preferred Embodiments]. Volatile organic compounds include, citronellol, citronelloxyacetaldehyde, eugenol, and the like. Illustrative of volatile essential oils are oil of cedar leaf, cedar wood, geranium, lavender, white cedar, and the like [Detailed Description of Preferred Embodiments]. Bessette et al., includes a synergistic pesticidal composition for agricultural use comprising a mixture of eugenol, citronellal, and thymol. Data below shows synergizing action of thyme oil and thyme oil derivatives such as thymol and carvacrol, which are believed to antagonize mitochondrial electron transport pathways in pests [Detailed Description of Preferred Embodiments].
Further, it will be appreciated by the skilled artisan that the synergistic and residual pesticidal compositions of the present invention unexpectedly exhibit pesticidal activity for extended periods of time, (i.e. using natural compounds as residual insecticides that in and of themselves provide little, if any, residual pesticide properties). Without wishing to be bound by the following theories, it is possible that plant essential oils antagonize a pest's nerve receptors or may act as P-450 inhibitors [Detailed Description of Preferred Embodiments]. Surface-active agents, i.e., conventional carrier vehicle assistants, that may be employed with the present invention include, without limitation, emulsifying agents [Detailed Description of Preferred Embodiments].
Therefore, it would have been prima facie obvious at the time of applicants’ invention to apply Bessette et al’s insecticidal/synergistic and residual pesticidal oils
to Shakeel et al., method and composition comprising: a minicell and plant extract oils, a bioactive agent having insecticidal activity, to include pesticides/insecticides in order to provide plant essential oils antagonize a pest's nerve receptors or may act as P-450 inhibitors. One of ordinary skill in the art would have a reasonable expectation of success by combining the components of Bessette et al., and Shakeel et al., when Bessette et al., when natural plants oil compounds exhibit pesticidal activity for extended periods of time. Furthermore, no more than routine skill would have been required to combine a minicell and (ii) plant extracts having insecticidal activity, as taught by Shakeel et al., and the natural oils such as thyme oil, cinnamon oil, tea tree oil, clove, orange oil, oregano oil, citronella oil, lemon grass oil, eucalyptus oil, lavender oil, cedar oil, thymol, eugenol, having insecticidal activity as taught by Bessette et al., useful for the same purpose of insecticidal/pesticidial activity, in order to form a third composition to be used for the very same purpose of insecticidal activity.
Additionally, KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007), discloses combining prior art elements according to known methods to yield predictable results, thus the combination is obvious unless its application is beyond that person's skill. KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) also discloses that "The combination of familiar element according to known methods is likely to be obvious when it does no more than yield predictable results". It is well known to take a method of controlling insects, comprising a minicell, and insecticidal oils and natural compounds, wherein there is no change in the respective function of the minicell or the natural compound, thus the combination would have yielded a reasonable expectation of success along with predictable results to one of ordinary skill in the art at the time of the invention. Therefore, it would have been obvious to a person of ordinary skill in the art to combine prior art elements according to known methods that is ready for improvement to yield predictable results. The claimed invention is prima facie obvious in view of the teachings of the prior art, absent any convincing evidence to the contrary.
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.
12. Claims 9 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Shakeel et al., (WO2018201161 published Nov. 1, 2018; priority to April 28, 2017) and Bessette et al., (WO 2000005964 published 2000-02-10; priority to 1998-07-28) as applied to claims 1-8 and 10-23 and 25-30 above, and further in view of Souter et al., (WO2001091555 published Dec 2001; priority to May 2001).
Shakeel and Bessette et al., described an insecticidal composition for controlling one or more insects comprising: (i) a minicell and (ii) a bioactive agent having insecticidal activity, wherein the bioactive agent is selected from thyme oil, cinnamon oil, tea tree oil, clove, orange oil, oregano oil, citronella oil, lemon grass oil, eucalyptus oil, lavender oil, cedar oil, thymol, eugenol, a saponin, and combinations thereof; wherein the one or more insects are controlled with application of said composition to a locus. However, neither teach the insecticidal composition further comprises a soap made with potassium salts of fatty acids.
Souter et al., teach an environmentally friendly, liquid soap based pesticidal composition having improved efficacy against aphids and other insect pests. The pesticide also has insect repellent properties. The composition comprises an insecticidal soap (alkali metal salt of a fatty acid) and a fragrance, preferably derived from a terpenoid natural oil such as eugenol [abstract]. Suitable fragrances herein include natural oils such as eugenol, geraniol, citronellal, thymol, cedarwood oil, cinnamic aldehyde, citronella oil, eucalyptus citriodora oil, lavender oil, L-carvone, marjoram oil. Preferred natural oils for use herein include eugenol, geraniol and mixtures of eugenol and geraniol. The liquid pesticide comprising soap and fragrance in levels such as to provide synergistic enhancement of insecticidal and/or other pesticidal activity [Summary of the Invention]. Regarding the soap, preferably, a mixture of fatty acid salts are normally employed. Preferred fatty acid salts are those having between eight and twenty carbon atoms in a straight chain structure with the alpha carbon comprising a monocarboxylic acid moiety esterified, preferably completely, with a monovalent metal such as sodium or potassium. This group of fatty acid salts are known to have insecticidal activity, and have been used for many years in the control of pestiferous arthropods. Fatty acid soap materials are widely commercially available [Detailed Description]. The fragrance comprises one or more terpenoid natural oils as insecticidal synergist and optionally one or more insect- repellant fragrance components [Summary of Invention]. Preferably, the fragrance herein comprises one or more terpenoid natural oils (and their synthetic equivalents). Suitable fragrances herein include natural oils such as eugenol [Summary of Invention]. The pesticides described herein are useful for controlling insects and related arthropods. Although the pesticide is useful for controlling insects on plants it can also be applied to any other insect infested hosts, such as pets or household surfaces. In preferred embodiments the pesticides are applied to garden, house and greenhouse plants and to vegetables and crops [Summary of Invention].
Therefore, it would have been prima facie obvious at the time of applicants’ invention to apply Souter et al’s insecticidal soap to Shakeel and Bessette et al., method and composition comprising: a minicell and a synergistic natural oils such as eugenol, thymol, cedarwood oil, citronella oil, eucalyptus oil, lavender oil, as bioactive agents having insecticidal activity, to further include soap based pesticides/insecticides in order to provide fatty acid salts known to have insecticidal activity, which have been used for many years to control pestiferous arthropods. One of ordinary skill in the art would have a reasonable expectation of success by combining the components when Souter et al., describe the synergistic enhancement of insecticidal activity using the natural oils and soap made with potassium salts of fatty acids. Furthermore, no more than routine skill would have been required to combine (i) a minicell and (ii) natural oils having insecticidal activity, as taught by Shakeel and Bessette et al., having insecticidal activity as taught by Souter et al., where each is taught by the prior art to be useful for the same purpose of insecticidal activity, in order to form a third composition to be used for the very same purpose of insecticidal activity.
Additionally, KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007), discloses combining prior art elements according to known methods to yield predictable results, thus the combination is obvious unless its application is beyond that person's skill. KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) also discloses that "The combination of familiar element according to known methods is likely to be obvious when it does no more than yield predictable results". It is well known to take a method of controlling insects, comprising a minicell, natural plant oils, and insecticidal soap, wherein there is no change in the respective function of the minicell, natural plant oils and soap, thus the combination would have yielded a reasonable expectation of success along with predictable results to one of ordinary skill in the art at the time of the invention. Therefore, it would have been obvious to a person of ordinary skill in the art to combine prior art elements according to known methods that is ready for improvement to yield predictable results. The claimed invention is prima facie obvious in view of the teachings of the prior art, absent any convincing evidence to the contrary.
Response to Arguments
13. Applicant’s arguments, filed Nov 26, 2025, with respect to the rejection of claims 1-8 and 10-23 and 25-30 under Shakeel et al., have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Bessette et al., (WO 2000005964 published 2000-02-10; priority to 1998-07-28).
Applicants argued that Shakeel et al., does not teach the bioactive agent as thyme oil, cinnamon oil, tea tree oil, clove, orange oil, oregano oil, citronella oil, lemon grass oil, eucalyptus oil, lavender oil, cedar oil, thymol, eugenol, a saponin, and combinations thereof. However, Shakeel et al., do teach plants extracts with insecticidal activity. Furthermore, Bessette et al., teach the bioactive agent is selected from thyme oil, cinnamon oil, tea tree oil, clove, orange oil, oregano oil, citronella oil, lemon grass oil, eucalyptus oil, lavender oil, cedar oil, thymol, eugenol, a saponin, and combinations thereof and its synergistic effects and insecticidal activities. Therefore, it would have been prima facie obvious at the time of applicants’ invention to apply Bessette et al’s insecticidal/synergistic and residual pesticidal oils to Shakeel et al., method and composition comprising: a minicell and plant extract oils, a bioactive agent having insecticidal activity, to include pesticides/insecticides in order to provide plant essential oils antagonize a pest's nerve receptors or may act as P-450 inhibitors.
Similarly, Souter et al., teach an environmentally friendly, liquid soap based pesticidal composition having improved efficacy against aphids and other insect pests. The pesticide also has insect repellent properties comprising natural oils such as eugenol, geraniol, thymol, cedarwood oil, citronella oil, eucalyptus oil, and/or lavender oil. Therefore, the combination of ingredients are well known in the art.
Double Patenting
14. 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.
15. Claims 1-3, 5-6, 8, 12-13, 16-18, 23, and 27-28 of 18/257,982 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6, 8-10, and 12-13 of copending Application No. 17/788,577 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are not identical, they are not patentably distinct from each other because both claim sets provide for similar compositions that comprise a minicell encapsulating an essential oil. Both sets of claims provides for encapsulation of a biologically active agent in a minicell, weight-to-weight ratios, a bacterial minicell, and eugenol and thymol of the instant claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
16. Claims 1-4 and 11-12 of 18/257,982 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 9-10 of copending Application No. 18/037,262 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are not identical. The claims are not patentably distinct from each other because both claim sets provide for similar compositions that comprise an agricultural composition for controlling growth of one or more plant species comprising:
(i) a minicell and (ii) a bioactive agent having herbicidal activity,
wherein the bioactive agent is selected from a botanical blend which is a plant extract or oil having a herbicidal activity, a metabolite, at least one microbial species, and combinations thereof; and wherein the growth of the plant species is controlled with application of said composition to the plant species, and wherein the minicell enhances herbicidal activity of the bioactive agent. The instant claims teach plant extracts which have both insecticidal and herbicidal activity. Clove oil (eugenol), eucalyptus oil, thyme oil, and cinnamon oil are essential oils known to possess both herbicidal and insecticidal properties. Both sets of claims provides for encapsulation of a biologically active agent in a minicell, weight-to-weight ratios. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
17. Claims 1-8, 12-14, and 16-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, and 19-27 of copending Application No. 18/257,995 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets provide for similar compositions comprising a minicell encapsulating an essential oil. Both sets of claims provide for encapsulation of a biologically active agent in a minicell, weight-to-weight ratios, a bacterial minicell, minicell size, essential oil, eugenol, and thymol,. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
18. Claims 1-3, 11, 14 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 24, 33, and 35 of U.S. Patent No. 11,649,265. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims are drawn to an anucleated cell composition comprising: (a) an intact anucleated cell having encapsulated within said cell at least one non-expressed agricultural compound, and wherein said at least one non-expressed agricultural compound is an insecticide. The instant claims recite a composition comprising: (i) a minicell wherein the minicell is capable of encapsulating the bioactive agent and wherein the bioactive agent is present within the minicell and (ii) a bioactive agent having insecticidal activity. Therefore the two sets of claims are not patentably distinct.
19. Claims 1-3, 11, 16 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 16-17 and 20-21 of U.S. Patent No. 11,970,518. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims and the patent claims are drawn to a minicell composition, comprising: a) a minicell having encapsulated within said minicell an agrochemical. Agrochemicals are pesticides, and/or insecticides. The instant claims recite essential oils and saponins which meet the definition of agrochemicals. Both the instant application and US Patent recite method for administering the composition to a plant. Therefore the two sets of claims are not patentably distinct.
20. Claims 1-3 and 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7 and 15 of U.S. Patent No. 12,193,439 in view of Shakeel et al., (WO2018201161 published Nov. 1, 2018; priority to April 28, 2017).
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims and the patent claims make claim to a minicell encapsulating an insecticidal protein or insecticidal oil. Shakeel described an insecticidal composition and method for controlling one or more insects comprising: (i) a minicell and (ii) geraniol, a bioactive agent having insecticidal activity. Thus, the claims in the US Patent are rendered obvious the instant technology of encapsulating minicells and insecticidal proteins and/or essential oils.
21. Claims 1-3, 11, 16 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,324,431.
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims and the patent claims are drawn to an agricultural composition, comprising: a) an insecticide and b) a minicell encapsulating a nucleic acid that is capable of inducing RNA interference in an agricultural target pest.
The instant claims recite an essential oil or saponin which are known insecticides
Therefore both sets of claims recite an insecticidal composition for controlling one or more insects comprising: (i) a minicell and (ii) a bioactive agent having insecticidal activity. Therefore the two sets of claims are not patentably distinct.
Pertinent Art
22. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. See also WO20140051571, WO2019222379, US 20200267971, WO 2021236799, US 20110281330, WO 201817137, US 20090071723
Conclusion
23. No claims allowed.
24. 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.
25. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JA-NA A HINES whose telephone number is (571)272-0859. The examiner can normally be reached Monday thru Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Dan Kolker, can be reached on 571-272-3181. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/JANA A HINES/Primary Examiner, Art Unit 1645