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 .
Claim Status
Claims 1-3 and 5-17 are currently pending.
Claim 4 is canceled.
Claims 14-16 are withdrawn.
Claims 1-3, 5-13, and 17 are being examined on the merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
This application is a CON of 18/484,427 (10/10/2023) as reflected in the filing receipt issued October 11, 2023.
Election/Restriction
Applicant's election with traverse Group I (claims 1-13 and 17) in the reply filed on April 02, 2026 is acknowledged. The traversal is on the ground(s) that there is no undue search or examination burden.
This is not found persuasive because each group would require a different search query, as each group is classified differently.
Claims 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 02, 2026.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
There is not an Information Disclosure Statement provided.
Claim Objection(s) / Rejection(s) Withdrawn
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 10/22/25) that are not repeated and/or maintained in the instant Office action are withdrawn.
New / Maintained Claim Objections
Claim Objections
Applicant is advised that should claim 13 be found allowable, claim 17 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
New / Maintained Claim Rejection(s)
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 9 and 11 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
Claim 9 states “the pesticide formulation of claim 1, further comprising an environment in which the pesticide composition is used, wherein the environment is one of a field, lawn, wooded area, forest, jungle, swamp, and body of water”, it is unclear because how can the pesticide formulation comprise an environment.
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). In the present instance, claim 11 recites the broad recitation at least one of a filler, an extender, a wetting agent, a disintegrant, and a surfactant, and the claim also recites one of alcohol, water, dextrin, calcium carbonate, lactose, propylene glycol, liquid paraffin, and saline. which is the narrower statement of the range/limitation. 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5, and 7-11 are rejected under 35 U.S.C 102(a)(1) as being anticipated by Shu et al (CN113288880A; Published on August 24,2021; Filed on June 04, 2021).
Claim 1, drawn to, a pesticide formulation used to control pests, the pesticide formulation comprising: a plurality of nanoparticles; chitosan; wherein each nanoparticle in the plurality of nanoparticles comprises at least one of oxymatrine and tea saponin, the at least one of oxymatrine and tea saponin being at predetermined concentrations; wherein the each of the nanoparticles in the plurality of nanoparticles are encased in the chitosan, and a chitosan solution, wherein the chitosan used to encapsulate the nanoparticles is in the chitosan solution.
Shu et al throughout teaches a tea saponin chitosan coated liposome.
For claim 1: Shu teaches a tea saponin/chitosan-coated dihydromyricetin liposome (which reads on the nanoparticle of the claim), comprising an active component and the first coating layer and the second coating layer that are coated on the surface of the active component successively, where the second coating layer is chitosan (claim 1), where further discusses that the second layer is the outer layer of the nanoparticle with chitosan (paragraph n0055). Shu further discloses that chitosan solution is mixed with the tea saponin when preparing the liposome (claim 6).
For claims 2 and 3: Shu teaches active component tea saponin (claim 1). The Instant specification inherently teaches that tea saponin is a known botanical extract for its pesticidal properties (paragraph 0009). It is evident that the composition could control pests.
For claim 5: Shu teaches concentration of tea saponin is 0.004 ~ 0.006g/mL (conversion 4000 ppm) (claim 8).
For claim 7: Shu teaches the that the tea saponin/chitosan-coated dihydromyricetin liposome is preferably 50-300 nm, which reads on the claim (paragraph n0034).
For claim 8: Shu teaches tea saponin/chitosan liposome solution is centrifuged for 20 minutes at 6000r/min (paragraph n0082).
For claim 9: Shu teaches active component tea saponin (claim 1). The instant specification inherently teaches that tea saponin is a known botanical extract for its pesticidal properties (paragraph 0009). It is evident that the active ingredient can control pests within in various environments, as indicated by instant specification (paragraph 0040).
For claims 10 and 11: Shu teaches mixing tea saponin, chitosan, acetic acid, a second emulsifier and water to obtain a tea saponin-chitosan mixed solution (n0046), which reads on the claims.
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 1,2,3, 5, 6, 7-11,12, 13, and 17 are rejected under 35 U.S.C 103 as being unpatentable over Shu et al (CN113288880A; Published on August 24,2021; Filed on June 04, 2021) in view of Xu et al (CN102484993B; Published on August 27, 2014) and Frank et al (WO2022140639A1; Published on June 30, 2022).
Shu et al throughout teaches a tea saponin chitosan coated liposome as discussed above.
Shu et al does not teach the absolute botanical and additional oils, as recited in claims 6, 12, 13 and 17.
However, Xu et al teaches an insecticidal and bactericidal synergistic composition containing a natural matrine and tea saponin.
For claim 6: Xu teaches tea saponin plays a synergistic insecticidal and bactericidal role of botanical active components with matrine (abstract). Reference also teaches wherein the tea saponin is a tea saponin extract, pure product of tea saponin or their mixture (claim 4), as evidenced by the specification (0009).
Frank et al throughout teaches a chitosan coated minicell capable of encapsulating botanical oils.
For claim 12: Frank teaches the insecticidal composition… wherein said
essential oil comprises … geraniol (claim 8).
For claims 13 and 17: Frank teaches that the essential oils are selected from group consisting of neem oil…cotton seed oil … rosemary oil…peppermint oil…cinnamon oil (page 2, paragraph 009 and claim 22).
Therefore, 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 substitute one type of tea saponin taught by Shu with another type of extract for tea saponin such as (absolute botanicals) as taught by Xu because both types of extracts would have similar pesticidal function. It would have been obvious to one of ordinary skill in the art to select a tea saponin that is an absolute botanical, which have little to no alcohol as desired in chitosan encased nanoparticles to achieve pesticidal effects.
Therefore, 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 incorporate tea saponin in the composition taught by Shu and Xu with additional oils such as neem oil, cotton seed oil, rosemary oil, peppermint oil, cinnamon oil, and geraniol taught by Frank in a chitosan encased nanoparticle with the desired diameter for pest control. In addition, because both the Xu and Frank references teach pesticide compositions with various botanical oils/extracts at various concentrations for pest management, it would have been obvious to one skilled in the art to optimize the amount (number of) of botanical oils as desired in the chitosan wrapped nanoparticle to achieve effective agricultural and environmentally friendly pesticides.
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since Shu reference demonstrates a chitosan wrapped nanoparticle with tea saponin, which is known for controlling various pests in multiple environments is routine and known in the art.
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 1-3, 5-13, and 17 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No.
18/484,427 (‘427) (reference application) in view of Xu et al. Although the claims
at issue are not identical, they are not patentably distinct from each other because both
applications claim compositions for controlling pests comprising nanoparticles,
botanical/essential oil(s), encapsulated in chitosan.
Instant claim 1, drawn to, a pesticide formulation used to control pests, the pesticide formulation comprising: a plurality of nanoparticles; chitosan; wherein each nanoparticle in the plurality of nanoparticles comprises at least one of oxymatrine and tea saponin, the at least one of oxymatrine and tea saponin being at predetermined concentrations; wherein the each of the nanoparticles in the plurality of nanoparticles are encased in the chitosan, and a chitosan solution, wherein the chitosan used to encapsulate the nanoparticles is in the chitosan solution.
Reference claim 1 is drawn, a pesticide formulation used to control pests, the pesticide formulation comprising: a plurality of nanoparticles; and chitosan; wherein each nanoparticle in the plurality of nanoparticles comprises garlic oil, clove oil, and thyme oil, the garlic oil, clove oil, and thyme oil being at predetermined concentrations; wherein the each of the nanoparticles in the plurality of nanoparticles are wrapped in the chitosan.
Both the reference application ‘427 (claim 4) and instant application (claim 1)
also claim further comprising a chitosan solution, wherein the chitosan used to
encapsulate the nanoparticles is in the chitosan solution.
Both the reference application ‘427 (claim 8) and instant application (claim 7)
also claim wherein the nanoparticle formulation comprises nanoparticles with a diameter of 20-200 nm.
Application ‘427 does not claim nanoparticle comprises at least one of oxymatrine and tea saponin.
However, Xu et al teaches a insecticidal and bactericidal synergistic composition containing a natural matrine and tea saponin.
Xu teaches a composition pesticide, is characterized in that the matrine and the tea saponin that contain synergy effective dose (claim 1). Reference further discusses that the matrine described in the present invention can be matrine, oxymatrine and a mixture of matrine and oxymatrine (page 3, paragraph 12).
Therefore, 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 substitute one type of tea saponin taught by Shu with another type of extract for tea saponin such as (absolute botanicals) as taught by Xu because both types of extracts would have similar pesticidal function. It would have been obvious to one of ordinary skill in the art to select a tea saponin that is an absolute botanical, which have little to no alcohol as desired in chitosan encased nanoparticles to achieve pesticidal effects claimed in Application 18/484,427.
This is a provisional nonstatutory double patenting rejection.
Answer to Argument
Since all previous rejections have been withdrawn, and all new rejections are added, applicants’ arguments are moot.
Conclusion
No claims are allowed.
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/J.A.E./ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616
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