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 .
Status of the Claims
Claims 1-18 are pending. Claims 13-17 have been withdrawn.
Claims 1-12 and 18 are currently under examination.
All rejections not reiterated have been withdrawn.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 18 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).
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.
Claims 1-12 and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a composition comprising at least one fire ant food source and less than about 6.6 mg/g at least one fire ant venom alkaloid, wherein the composition optionally comprises a carrier and/or an insecticide, does not reasonably provide enablement for wherein the consumption of the composition by non-target organisms is inhibited while consumption of the composition by fire ants is not inhibited.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
Enablement is considered in view of the Wands factors (MPEP 2164.01 (A)). These include:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based
on the content of the disclosure
All of the Wands factors have been considered with regard to the instant claims
as discussed below:
(A)/(B) The breadth of the claims/The nature of the invention:
The claims are directed towards a composition comprising at least one fire ant food source and less than about 6.6 mg/g of at least one fire ant venom alkaloid, wherein the composition optionally comprises a carrier and/or an insecticide; and wherein consumption of the composition by non-target organisms is inhibited while consumption of the composition by fire ants is not inhibited. The scope of the phrase “wherein consumption of the composition by non-target organisms is inhibited while consumption of the composition by fire ants is not inhibited” is broad because it is not clear which food is exclusive to fire ants but is not acceptable for non-target organisms. The claims place no limitation on the identity of the food exclusive to fire ants only.
(C)/(E) The state of the prior art/The level of predictability in the art:
The prior art teaches that there are many food sources/attractants that fire ants like, but there is an overlap with at least one other organism that is also attracted to these same food sources/attractants. Chan et al. teaches that the typical commercial bait for roach control is composed of a carrier plus an attractant or food such as vegetable oil or soybean oil or a sugar as the attractant in the bait (paragraph [0013]). Fujita et al teaches that the cockroach attractant of the first invention comprises a flavor oil, wherein the fats and oils used in the preparation of flavor oils comprise soybean oil (paragraphs [0005]-[0006]). McHenry teaches the compounds of the present invention can be mixed with any conventional attractant for insects, and particularly fire ants or termites. Suitable attractants include soybean oil, peanut oil, corn oil, other vegetable oils, sugar (column 3, lines 43-47). Therefore, these facts establish that, there is an overlap in food sources that attract fire ants but also attract at least one other organism.
Therefore the level of unpredictability in the art of food sources only for fire ants alone is high.
Finally, MPEP 2164.03 indicates that the physiological art in general is unpredictable. “A single embodiment may provide broad enablement in cases involving predictable factors, such as mechanical or electrical elements. In re Vickers, 141 F.2d 522, 526-27, 61 USPQ 122, 127 (CCPA 1944); In re Cook, 439 F.2d 730, 734, 169 USPQ 298, 301 (CCPA 1971). However, in applications directed to inventions in arts where the results are unpredictable, the disclosure of a single species usually does not provide an adequate basis to support generic claims. In re Soll, 97 F.2d 623, 624, 38 USPQ 189, 191 (CCPA 1938). In cases involving unpredictable factors, such as most chemical reactions and physiological activity, more may be required. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (contrasting mechanical and electrical
elements with chemical reactions and physiological activity). See also In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Vaeck, 947 F.2d 488, 496, 20 USPQ2d 1438, 1445 (Fed. Cir. 1991). This is because it is not obvious from the disclosure of one species, what other species will work.”
(D) The level of one of ordinary skill: One having ordinary skill in the art would be an individual possessing an advanced degree in agrochemical formulations.
(F) The amount of direction provided by the inventor/(G) The existence of working examples:
The specifications discloses the fire ant food source in a composition with enhanced selectivity for fire ants can be any food source which will be consumed by fire ants. For example, the food source may be a vegetable oil such as canola oil, cottonseed oil, grapeseed oil, rapeseed oil, soybean oil, safflower oil, peanut oil, corn oil, olive oil, palm oil, or sunflower oil (paragraph [0025]). The examiner also points out that all the working examples use soybean oil as the food source. The examiner does not consider using soybean oil in the examples of the specification to provide enablement for practicing the full scope of the invention embraced by the phrase “wherein consumption of the composition by non-target organisms is inhibited while consumption of the composition by fire ants is not inhibited”.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
In view of the foregoing analysis, the examiner concludes that the quantity of
experimentation required to practice the full scope of the invention, as claimed, would be undue.
Claim Interpretation
The examiner interprets the limitation of “less than about 6.6 mg/g of the at least one fire ant venom alkaloid” to read on wherein the lowest amount of the at least one ant venom alkaloid to be 0 mg/g.
Claim Rejections - 35 USC § 102-New Rejection
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 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 1-8, and 18 are rejected under 35 U.S.C. 102(a)(I) as being anticipated by Chan (US20070014826A1, Published 01/18/2007).
The claims are drawn to a composition comprising at least one fire ant food source and less than about 6.6 mg/g of at least first ant venom alkaloid, wherein the composition optionally comprises a carrier and/or an insecticide; and wherein consumption of the composition by non-target organisms is inhibited while consumption of the composition by fire ants is not inhibited.
Regarding claims 1-8 and 18, Chan discloses in Example 7, granular solid, creamy solid paste and gel roach baits.
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The compositions comprise the soybean oil (i.e., fire ant food source, vegetable oil) and water (i.e., carrier) (paragraph [0086]). The examiner interprets the limitation of “less than about 6.6 mg/g of the at least one fire ant venom alkaloid” to read on 0 mg/g, therefore Chan’s compositions do not comprise the at least one fire ant venom alkaloid reading to the instant claims.
Accordingly, Chan anticipated the claimed invention.
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 1-12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bowen et al. (US6369078B1, Published 04/09/2002).
Applicant’s Invention
Applicant’s claims are a composition comprising at least one fire ant food source and less than about 6.6 mg/g of at least first ant venom alkaloid, wherein the composition optionally comprises a carrier and/or an insecticide; and wherein consumption of the composition by non-target organisms is inhibited while consumption of the composition by fire ants is not inhibited.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1-6 and 18, Bowen teaches in claim 1, a method for reducing or eradicating a population or for reducing or preventing the spread of a colony of fire ants comprising exposing to said population of fire ants a composition (i.e., kit) comprising an effective amount of a trans-2,6-disubstituted piperidine (i.e., fire ant venom alkaloid) compound according to the structure:
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wherein R1 and R2 are selected from a C1 to C20 saturated or unsaturated linear, cyclic or branch-chained substituted or unsubstituted hydrocarbon group, a substituted or unsubstituted aromatic group or an ester group and salts thereof; in combination with a bait and optionally, a carrier. Compositions according to the present invention include about 0.001% to about 99% or more by weight of the composition including the bait, with a preferred composition including about 0.1% to about 40% by weight of the present compound and the remainder comprising a fire ant bait and optionally, a non-repellent carrier (column 12, lines 23-27). The Examiner interprets the term “bait” of the prior art to read on “fire ant food source” as instantly claimed. Bowen et al defines “bait” to mean “a carrier which is an attractant to fire ants. Preferred baits include food products or other materials which attract or draw fire ants to it and which the fire ant ingests or takes back to its colony so that other fire ants may ingest the material. As used herein, the term bait shall be directed to any material which is sought after by a fire ant and includes numerous types of insect bait. The term bait includes, for example, any material or substance which is formulated or may be formulated for the biology, feeding behavior and food preferences of fire ants and includes materials which contain, for example, any one or more of sucrose, fructose, proteins, peptides, amino acids, and different salts and minerals and other materials which the fire ant obtains from the environment. Suitable baits can include for example, sugar, jelly, peanut oil, soybean oil, corn oil, other vegetable oils, peanut butter, honey, and related food items, including grains, cereals, soy protein etc.” (column 11, lines 51-67).
Regarding claims 7-8, Bowen teaches the carrier can be preferably, an inert, non-repellant carrier, wherein the non-repellent carrier includes water (i.e., an aqueous solution), and other non-repelling solvents such as water and minor quantities of ethanol (i.e., an alcohol) (column 12, lines 7-14).
Regarding claims 9-12, Bowen teaches in this aspect of the present invention, an effective amount of one or more analogues of solenopsin are placed in a carrier or vehicle and are then delivered to or spread on areas from which insects susceptible to solenopsin A or B are to be repelled, resulting in a marked decrease in insects in the treated area (column 9, lines 1-6). Bowen further teaches the present invention relates to solenopsin alkaloid derivatives which are trans-2,6-disubstituted piperidines (i.e., trans-solenopsin A) according to the structure:
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wherein R1 and R2 are selected from a C1 to C20 saturated or unsaturated linear, cyclic or branch-chained substituted or unsubstituted hydrocarbon group, a substituted or unsubstituted aromatic group or an ester group and salts thereof (column 8, lines 1-17).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Bowen does not disclose a single embodiment or example where every limitation recited in the instant claims is taught.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
The claims are considered prima facie obvious to one of ordinary skill in the art before the time of filing because Bowen teaches all of the claimed elements. It would have been prima facie obvious to one of ordinary skill in the art before the time of filing to make a composition comprising at least one fire ant food source and less than about 6.6 mg/g of at least first ant venom alkaloid, wherein the composition optionally comprises a carrier and/or an insecticide; and wherein consumption of the composition by non-target organisms is inhibited while consumption of the composition by fire ants is not inhibited because Bowen teaches and contemplates all the elements required to make the composition. With regards to the limitation of less than 6.6 mg/g of at least one fire ant venom alkaloid, it would have been obvious to optimize the amount of the fire ant venom alkaloid. Bowen teaches compositions according to the present invention include about 0.001% to about 99% or more by weight of the composition including the bait, with a preferred composition including about 0.1% to about 40% by weight of the present compound and the remainder comprising a fire ant bait and optionally, a non-repellent carrier (column 12, lines 23-27). Therefore, it would have been obvious to optimize the amount of the fire ant venom alkaloid by routine experimentation using the teachings of Bowen as a starting point to achieve desired results. Where 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, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
Response to Arguments
Applicant's arguments filed 04/28/2026 have been fully considered but they are not persuasive.
On pages 5-6 of Applicants remarks, Applicants argue that Bowen does not teach or suggest claims 1 to 12 and 18 as a whole. Bowen teaches that a composition containing an effective amount of a venom alkaloid to attract fire ants and reduce population will have been between 10 and 400 mg/g of the venom alkaloid, therefore, reading Bowen a person of skill in the art will not expect to successfully attract fire ants with a composition comprising less than about 6.6 mg/g venom alkaloid.
This argument is not persuasive. The examiner could not find any support for Applicants assertion that a composition according to Bowen which comprises about 0.1% to about 40% by weight of the present compound and the remainder comprising a fire ant bait and optionally, a non-repellent carrier (column 12, lines 23-27), must mean that Bowen’s composition comprises 10 to 400 mg/g of the venom alkaloid. The Examiner further points out that Bowen teaches compositions according to the present invention include about 0.001% to about 99% or more by weight of the composition including the bait, with a preferred composition including about 0.1% to about 40% by weight of the present compound and the remainder comprising a fire ant bait and optionally, a non-repellent carrier (column 12, lines 23-27). Therefore, it would have been obvious to optimize the amount of the fire ant venom alkaloid by routine experimentation using the teachings of Bowen as a starting point to achieve desired results. Where 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, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFUA BAMFOAA BOATENG whose telephone number is (703)756-1358. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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, Ali Soroush can be reached at (571) 272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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AFUA BAMFOAA BOATENGExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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