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 Interpretation
Spray and fumigant are being interpreted according to applicants definitions at [0038-0039]. Thus, a spray formulation can function as both a spray for direct or indirect contact by the insects for control and because the sprays instantly claimed contain actives which are known in the art to be easily volatile liquids which readily vaporize/evaporate then sprays can also function as fumigants because a fumigant is a composition whose active agent can evaporate and thus become a vapor or gas and as applicant’s claimed actives are active agents which readily evaporate then the instantly claimed compositions are/contain fumigants. Thus, the spray formulation of Ishikawa below can function functions as both or either a spray formulation and a fumigant formulation.
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 1-3, 5-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims broadly embrace controlling pests. The specification discloses various species of insect pests which can be controlled with the claimed method. However, the specification does not disclose controlling any and all pests claimed which would include plant pests, e.g. weeds, as well as fungal pests, bacterial and viral pests, mammalian pests, avian pests, etc.
Specifically, the specification fails to disclose controlling any other pests except the various insect pests, specifically the pests which are disclosed in claim 3 which is supported by the specification (and as such is not included in this rejection). As the specification fails to describe controlling any other types of pests besides insects, the original disclosure lacks written support for the entire scope of pests as are instantly claimed.
Applicant’s attention is also directed to In re Shokal, 113 USPQ 283 (CCPA 1957), wherein it is stated:
It appears to be well settled that a single species can rarely, if ever, afford sufficient support for a generic claim. In re Soil, 25 CCPA (Patents) 1309, 97 F2d 623, 38 USPQ 189; In re Wahlforss, 28 CCPA (Patents) 867, 117 F2d 270, 48 USPQ 397. The decisions do not however fix any definite number of species which will establish completion of a generic invention and it seems evident therefrom that such number will vary, depending on the circumstances of particular cases. Thus, in the case of small genus such as the halogens, consisting of four species, a reduction to practice of three, perhaps even two, might serve to complete the generic invention, while in the case of a genus comprising hundreds of species, a considerably larger number of reductions to practice would probably be necessary.
As stated in MPEP 2163 II: If the application as filed does not disclose the complete structure (or acts of a process) of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. The instant specification is devoid of a description for controlling all of the innumerable pests which are encompassed by applicant’s claimed scope of pests. The specification merely discloses controlling various insect pests but does not provide written description for controlling any and all known and unknown pests which encompass animals, bacteria, fungi, etc. which are yet to be discovered. Thus, Applicants have failed to demonstrate possession of the innumberable organisms which fall within their scope of claimed pests.
Disclosure of how the compounds can be derived or formed is little more than a wish for possession; it does not satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (written description requirement not satisfied by merely providing “a result that one might achieve if one made that invention”); In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming a rejection for lack of written description because the specification does “little more than outline goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate”).
The lack of disclosure of any kinds of pests besides the exemplified insect pests, does not constitute an adequate description to demonstrate possession of any and all known and unknown pests of any type as is claimed. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail such that the Artisan can reasonably conclude that the inventor(s) had possession of the claimed invention. Such possession may be demonstrated by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and/or formulae that fully set forth the claimed invention. Possession may be shown by an actual reduction to practice, showing that the invention was “ready for patenting”, or by describing distinguishing identifying characteristics sufficient to show that Applicant was in possession of the claimed invention (January 5, 2001 Fed. Reg., Vol. 66, No. 4, pp. 1099-11).
Therefore, the breadth of the claims as reading on innumerable pests of every type including bacteria, viruses, fungi, weeds, rodents, mammalian pests, etc. is broader in scope than what is disclosed and supported in the specification as instantly filed; in view of the level of knowledge or skill in the art at the time of the invention, and the limited information provided in the specification, an Artisan of ordinary skill would not recognize from the disclosure that Applicant was in possession of controlling any and all pests of any type with the claimed actives, at the time the application was filed. Thus, it is concluded that the written description requirement is not satisfied.
Claims 2-3, and 5-7 are also rejected because they depend from claim 1 and do not resolve the written description issue discussed above.
Claims 1-2 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims broadly embrace 10, 12, 14, and 16 carbon alkanes and any and all isomers thereof. The specification discloses various examples. However, the specification only discloses a few examples of the isomers and these few examples, e.g. 2,2,4,6,6-pentamethylheptane, 2-methylnonane, 2,2,4,4,6,8,8-heptamethylnonane, 3-methylundecane, etc. as exemplified in paragraphs [0032-0035], and these examples do not constitute support for each and every isomer of the 10, 12, 14, and 16 carbon alkanes as is instantly claimed.
Specifically, the specification fails to disclose controlling any other pests with any other isomers of C10, C12, C14, and C16 alkanes. As the specification fails to describe controlling pests with any other C10, C12, C14, and C16 alkane isomers other than the specifically disclosed examples. Thus, the original disclosure lacks written support for the entire scope of isomers of C10, C12, C14, and C16 alkanes as are instantly claimed.
Applicant’s attention is also directed to In re Shokal, 113 USPQ 283 (CCPA 1957), wherein it is stated:
It appears to be well settled that a single species can rarely, if ever, afford sufficient support for a generic claim. In re Soil, 25 CCPA (Patents) 1309, 97 F2d 623, 38 USPQ 189; In re Wahlforss, 28 CCPA (Patents) 867, 117 F2d 270, 48 USPQ 397. The decisions do not however fix any definite number of species which will establish completion of a generic invention and it seems evident therefrom that such number will vary, depending on the circumstances of particular cases. Thus, in the case of small genus such as the halogens, consisting of four species, a reduction to practice of three, perhaps even two, might serve to complete the generic invention, while in the case of a genus comprising hundreds of species, a considerably larger number of reductions to practice would probably be necessary.
As stated in MPEP 2163 II: If the application as filed does not disclose the complete structure (or acts of a process) of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. The instant specification is devoid of a description of the numerous isomers which are encompassed by applicant’s claimed scope of isomers of C10, C12, C14, and C16 alkanes. The specification merely discloses controlling various insect pests with a few specific isomers and alkanes within applicant’s compound scope. Thus, Applicants have failed to demonstrate possession of the numerous isomers which fall within their scope of claimed compounds.
Disclosure of how the compounds can be derived or formed is little more than a wish for possession; it does not satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (written description requirement not satisfied by merely providing “a result that one might achieve if one made that invention”); In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming a rejection for lack of written description because the specification does “little more than outline goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate”).
The lack of disclosure of any isomers outside of applicants few examples of isomers of C10, C12, C14, and C16 alkanes, does not constitute an adequate description to demonstrate possession of any and all isomers of C10, C12, C14, and C16 alkanes as claimed. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail such that the Artisan can reasonably conclude that the inventor(s) had possession of the claimed invention. Such possession may be demonstrated by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and/or formulae that fully set forth the claimed invention. Possession may be shown by an actual reduction to practice, showing that the invention was “ready for patenting”, or by describing distinguishing identifying characteristics sufficient to show that Applicant was in possession of the claimed invention (January 5, 2001 Fed. Reg., Vol. 66, No. 4, pp. 1099-11).
Therefore, the breadth of the claims as reading on numerous isomers of C10, C12, C14, and C16 alkanes is broader in scope than what is disclosed and supported in the specification as instantly filed; in view of the level of knowledge or skill in the art at the time of the invention, and the limited information provided in the specification, an Artisan of ordinary skill would not recognize from the disclosure that Applicant was in possession of controlling any and all pests of any type with the any and all isomers of C10, C12, C14, and C16 alkanes, at the time the application was filed. Thus, it is concluded that the written description requirement is not satisfied.
Claims 2-7 are also rejected because they depend from claim 1 and do not resolve the written description issue discussed above.
Claim Rejections - 35 USC § 112—Fourth paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 recites wherein the at least one kind of pests comprises insects and non-insect organisms. However, all pests are either insects or non-insect organisms because non-insect organisms includes microorganisms such as viruses, bacteria, fungi, as well as mammalian pests, avian pests, rodent pests, weeds, etc. which in no way limits the scope of pests of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-3, 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishikawa (JP2010180139A).
Regarding claims 1-3, and 5, Ishikawa teaches methods of killing ants, which are insect pests, comprising spraying isododecane (which is particularly preferred by Ishikawa ([0012])), which is a branched alkane with 12 carbon atoms, e.g. an isomer of n-dodecane as is specifically claimed in claims 1-2, whereby Ishikawa provides the isododecane via spraying to a space comprising ants in an effective amount to kill the ants by toxicity specifically by volatilization/evaporation of the isododecane into the air (See entire document; specifically table 1 and Table 5, paragraphs [0034-0038]; [0020-0022]; [0011-012]; [0016]; [0018]; etc.).
.Regarding claim 6, the examples of Table 5 and [0034-0038] used 100% isododecane and achieved 100% killing of ants within 24 hours of exposure. The isododecane was sprayed into the space and the space had a volume of ~1.77L calculated using simple calculations by the examiner (volume of a cylinder, πr2h, which was in mm3 which was then converted to L, density of isododecane is ~0.745 g/mL, and ~0.7mL of isododecane was sprayed into the cylinder, which is 0.522 g =522 mg of isododecane used and volume of the cylinder/Ishikawa’s space is = ~294 to 295 mg/L), which anticipates the claimed amount of at least 2.5 mg/L of the volume of the space (See entire document; specifically table 1 and Table 5, paragraphs [0034-0038]), Ishikawa teaches that the isododecane was sprayed into the container thereby passively allowing the insects to contact the isododecane thereby anticipating the claimed not a fumigant form.
Regarding claim 7, the examples of Table 5 and [0034-0038] used 100% isododecane and achieved 100% killing of ants within 24 hours of exposure. The isododecane was sprayed into the space and the space had a volume of ~1.77L calculated using simple calculations by the examiner (volume of a cylinder, πr2h, which was in mm3 which was then converted to L, density of isododecane is ~0.745 g/mL, and ~0.7mL of isododecane was sprayed into the cylinder, which is 0.522 g =522 mg of isododecane used and volume of the cylinder/Ishikawa’s space is = ~294 to 295 mg/L), which anticipates the claimed amount of at least 2.5 mg/L of the volume of the space (See entire document; specifically table 1 and Table 5, paragraphs [0034-0038]), Ishikawa further teaches that isododecane functions as a fumigant because the active agents naturally evaporate and therefore can penetrate enclosed spaces that are difficult to reach, e.g. gaps in walls, cracks in concrete ([0008]), and there isn’t need for direct contact to ants.
Ishikawa teaches all limitations of the claims and thereby anticipates 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa (JP2010180139A) as applied to claims 1-3, and 5-7 above, and further in view of UCIPM .
Determination of the scope and content of the prior art
(MPEP 2141.01)
Ishikawa teaches and exemplifies the method of claims 1-3, and 5-7 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claim 4, Ishikawa does not specifically teach wherein the ant is the specifically claimed Solenopsis invicta. However, Ishikawa clearly teaches ants in general being effectively controlled with the claimed isododecane and other claimed C10 or C12 n-alkanes and C10 or C12 isoalkanes taught by Ishikawa (See entire document; specifically table 1 and Table 5, paragraphs [0034-0038]; [0020-0022]; [0011-012]; [0016]; [0018]). This deficiency in Ishikawa is addressed by UCIPM. UCIPM teaches that actives which are useful for controlling/killing other common ant species are commonly useful for controlling S. invicta, e.g. fipronil, spinosad, abamectin, etc. as long as any baits used with the active agents are lipophilic as that is attractive to fire ants (See Management section; Table 1).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have used the isododecane or the other claimed C10 or C12 n-alkanes/isoalkanes which are taught by Ishikawa on the claimed S. invicta because Ishikawa teaches these compositions are useful for controlling ants and S. invicta is a species of ant. One of ordinary skill in the art would be motivated to try the compositions of Ishikawa to control the claimed S. invicta because S. invicta is known to commonly be controlled with the same pesticidal active ingredients as other common ant species. Thus, because the claimed compounds were already known in the art to be useful for controlling ants one of ordinary skill in the art would be motivated to try controlling the claimed S. invicta ant species with these actives with a reasonable expectation of success because S. invicta are commonly controlled with the same pesticidal actives that are used to control other common ant species.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616