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
This application was filed on 10/23/2023 and claims the benefit of the priority of United Kingdom of Great Britain Application No. GB2215797.8 filed 10/25/2022.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Status
Claims 8-9, 11-12, 14 and 23-26 are pending. Claims 8, 11-12, and 14 are amended. Claims 23-26 are new. Claims 8-9, 11-12, 14 and 23-26 are being examined on the merits in this office action.
Claim Rejections - 35 USC § 112 – Withdrawn
The rejection of claims 8-9, 11-12, and 14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the claim amendments.
Claim Rejections - 35 USC § 103 – Maintained and Modified
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.
Claims 8-9, 11-12, 14, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Junyu et al. (CN112851760A – hereinafter Junyu – cited and enclosed in the previous office action) in view of Alford et al. (WO2020115076A2 – hereinafter “Alford” – cited and enclosed in the previous office action) as evidenced by Howarth et al. (Journal of Insect Physiology 48 (2002) 75–82).
The teaching of the CN112851760A publication are based on the English language translation of the CN112851760A publication obtained by Espacenet and the citations are based on the English language translation.
This rejection has been modified to reject new claims 23-26.
Junyu teaches the analogs H-KVKFSAWG-NH2 (claim 2) and that the analog has an effect on Spodoptera frugiperda (claim 3; [0005, 0006, 0008) and that the object of the invention is to develop insecticides that targets and inhibits the insect (Object of the invention section). Junyu teaches that the injection solution includes the peptide and PBS buffer (Page 3, 2nd last paragraph), which reads on composition. Junyu teaches that such insect neuropeptides control and regulate the activities of organs or glands in insects thus used as insecticides (Page 1, 2nd paragraph). Junyu teaches that the analog as an insecticide and has an effect on Spodoptera frugiperda which belongs to the lepidoptera species (“Objective of the invention” section).
Junyu teaches that the results showed that peptides significantly reduced the food intake of Spodoptera frugiperda compared to the control group (See FIG. 2 reproduced below).
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Junyu teaches that the purpose of their invention is to use such peptides that have been shown to control insect feeding behavior to develop effective new insecticides with novel mechanisms of action and less environmental pollution, as well as new insecticide targets (See page 6 [0003, 0005, 0007] of the translation provided by Applicant). Junyu mentions it again in the summary of the invention on paragraph [0003, 0007], that the inhibitory effect on insect feeding is the most practically valuable and most promising for the development of novel insecticides (See page 5).
Junyu does not teach inhibiting infestation of a plant by Plutella xylostella, the method comprising contacting the plant with the compound. However, inhibiting insect infestation using neuropeptides by contacting the compounds with the neuropeptide is known in the art as taught by Alford.
Alford teaches insect neuropeptide families such as kinins and CAPA, CAP2b neuropeptides (Page 1, line 20-21) for targeting hemipteran insects and for plant protection (Page 2, line 11-15). Alford teaches a method of inhibiting infestation of a plant by hemipteran insects comprising contacting the plant with a compound (claim 19) and a method of reducing hempiteran insect infestation of a plant, or of reducing hemipteran insect load on a plant, the method comprising contacting the plant with a compound (claim 21). Alford teaches a composition comprising the compound or neuropeptide, in admixture with one or more solvents, carriers, diluents, adjuvants, preservatives, dispersants, emulsifying agents, or synergists (claim 53) or wherein the composition is an aqueous composition (claim 54).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the peptide composition of Junyu and contact it with plants to inhibit insect infestation such as Plutella xylostella since Junyu teaches that the neuropeptide can be used as an insecticide and Alford teaches that neuropeptides can be contacted to plants to inhibit insect infestation. One of ordinary skill in the art would be motivated and would have had a reasonable expectation of success in using the method of Alford of inhibiting infestation of a plant by contacting the plant with the insect neuropeptide of Junyu since Junyu teaches that the peptide can be used as an insecticide. Further, Examiner notes that one of ordinary skill in the art would be motivated to use the neuropeptide of Junyu that has an effect on Spodoptera frugiperda on Plutella xylostera since both species belong to the order lepidoptera. Further, evidentiary reference Howarth et al. discloses three peptides including the instant peptide, and teaches that the peptides were potent contractants of lepidoptera gut tissue. Examiner notes that the disclosures of Howarth indicate that the peptides are active in lepidoptera which includes both instant P. xylostella and S. frugiperda of Junyu. Thus, one of ordinary skill in the art would understand that the insecticide would be active in the species of the whole order such as P. xylostella. In addition, the Examiner notes that the claimed peptide is taught by Junyu as an insecticide; thus, the inhibiting of Plutella xylostera observed by Applicant and instantly claimed, is simply the discovery of a previously unappreciated property. "[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). MPEP 2112 (I). In the instant case, the neuropeptide is known to be used as an insecticide as taught by Junyu and Alford teaches contacting neuropeptides with the plants to inhibit insect infestation. The disclosures render obvious claims 8 and 12.
Regarding claim 9, Alford teaches a method of inhibiting infestation of a plant by hemipteran insects comprising contacting the plant with a compound (claim 19) and a method of reducing hempiteran insect infestation of a plant, or of reducing hemipteran insect load on a plant, the method comprising contacting the plant with a compound (claim 21). Alford further teaches method according to claim 19 wherein the compound is applied to the plant while the plant is free or substantially free of hemipteran insects (claim 20). It would have been obvious to use the neuropeptide of Junyu and contact it with the plants as taught by Alford for inhibiting insect infestation.
Regarding claim 11, and 14, Alford teaches the composition was sprayed on the plant (Page 38, line 1-20). It would have been obvious to use the neuropeptide composition of Junyu and spray it on the plants as taught by Alford for inhibiting insect infestation.
Regarding claims 23 and 25, Alford teaches the neuropeptides may be provided as part of a composition, such as an insect control composition (e.g. insecticide composition) or a plant protection composition, that the composition may be an aqueous composition (Page 7, line 4-6; Page 9, line 19-23). It would have been obvious to use the neuropeptide Junyu in an aqueous composition as taught by Alford.
Regarding claims 24 and 26, Junyu teaches that the concentration of the compound is 2.387×10-4mol/L (Page 3, 2n last paragraph), which falls within the instant range.
Response to Arguments
Applicant's arguments filed 02/17/2026 have been fully considered but they are not persuasive.
Applicant Arguments
Applicant argues that insect neuropeptides have variable and unpredictable efficacy across different target species, even within the same order. Applicant argues Blackburn et al., Seinsche et al. and Kolosov & O'Donnell (Page 5-7 of arguments).
Applicant argues that the methods of contacting plants with neuropeptides in Alford are performed with modified peptides, and a skilled person would not have expected the native peptide disclosed in Junyu to be environmentally stable in the same way (Page 7 of arguments).
Applicant makes an inherency argument.
Examiner’s Response
The arguments presented above have been fully considered but are unpersuasive. Examiner notes that the instant neuropeptide is taught by Junyu and taught to be used as an insecticide. Junyu further teaches the instant neuropeptide in a composition. Further, Alford describes the instant method in that the method inhibits the insect infestation by contacting the plant with the peptide (claim 19), that the method reduces insect infestation of a plant, or of reduces insect load on a plant, by contacting the plant with a compound (claim 21). Examiner used the Alford reference to teach the instant method of using neuropeptides, wherein the neuropeptides are used in the same way recited in the instant claims “contacting the plant with the compound”. Alford teaches a composition comprising the compound or neuropeptide, in admixture with one or more solvents, carriers, diluents, adjuvants, preservatives, dispersants, emulsifying agents, or synergists (claim 53) or wherein the composition is an aqueous composition (claim 54). One of ordinary skill in the art would be motivated to use the instant neuropeptide that is known to be used as an insecticide and apply it to plants using the method taught by Alford to inhibit insect infestation generally. The arguments regarding using the neuropeptide against P. xylostella is unpersuasive since both P. xylostella and S. frugiperda belong to the order Lepidoptera. Further, in an effort to rebut Applicant’s arguments, Examiner cites Howarth et al. (Journal of Insect Physiology 48 (2002) 75–82) which discloses three peptides including the instant peptide, and teaches that the peptides were potent contractants of lepidoptera gut tissue. Examiner notes that the disclosures of Howarth indicate that the peptides are active in lepidoptera which includes both instant P. xylostella and S. frugiperda of Junyu. One of ordinary skill in the art knows that the insecticide would be active in the species of the whole order such as P. xylostella. Thus, Applicant arguments that insect neuropeptide cannot be used against any given insect of the same order is unpersuasive. Regarding Applicant argument that the neuropeptides have variable and unpredictable efficacy across different target species, Examiner notes that even Blackburn discloses that all three peptides were potent stimulators of secretion by M. sexta. Even though Blackburn discloses that one of the peptide displayed better results, Examiner notes that "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." See MPEP 2123 (II). Further, Examiner notes that Seinsche discloses that the instant neuropeptide similarly had an effect controlling weight gain in H. virescens, which is a lepidoptera. Examiner further notes Howarth et al. teaches that the instant peptide is a potent contractants of lepidopteran gut tissue and indicates that these peptides may have a wider range of functions including the control of gut motility. Examiner notes that prior art discloses that the instant peptide is known in the art and known to be effective in controlling insects in the Lepidoptera order such as P. xylostella and S. frugiperda. Applicants’ argument that the neuropeptides have variable and unpredictable efficacy across different target species.
Regarding Applicants argument that methods of contacting plants with neuropeptides in Alford are performed with modified peptides, Examiner disagrees. It is already known that the instant peptide is used and known to control insects in the order Lepidoptera such as Plutella xylostella. Further, Examiner used the Alford reference to teach the method of contacting the plant with the compounds to control insect infestation. The instant peptide is already taught by Junyu. Alford teaches the use of neuropeptides to control insect infestation by contacting them with the neuropeptide. Alford further teaches that the method of using the neuropeptide may be prophylactic i.e. may be applied to the plant while the plant is free or substantially free of insects. Further, Examiner notes that Howarth teaches the use of the instant peptide on insects in the Lepidoptera order and the peptide of Howarth was not modified. This argument is unpersuasive.
Regarding the inherency argument and that the office action incorrectly infers that the claimed peptide ability to inhibit Plutella xylostera is an allegedly previously unappreciated property of a prior art that was inherently present and that the combination of Junyu 's disclosure and Alford's disclosure also never teaches a method of contacting the plant or a part thereof, or a site on which the plant is growing or is intended to be grown, Examiner reiterates that the instant peptide is known in the art and known to be effective in controlling insects in the Lepidoptera order such as P. xylostella and S. frugiperda. Examiner maintains that Applicants have simply identified a previously unappreciated property of the peptide, i.e. using it against P. xylostella. The peptide is already taught to be used as an insecticide. "[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). MPEP 2112 (I). The arguments are unpersuasive.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mercy H. Sabila whose telephone number is (571)272-2562. The examiner can normally be reached Monday - Friday 5:00 am - 3:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lianko G. Garyu can be reached at (571)270-7367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MERCY H SABILA/Examiner, Art Unit 1654
/LIANKO G GARYU/Supervisory Patent Examiner, Art Unit 1654