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 .
Response to Amendments
Applicant’s amendments to the claims of February 18, 2026, in response to the Office Action of November 21, 2025, are acknowledged.
Response to Arguments
The method claims are directed to controlling a harmful arthropod by applying a compound of formula (I) to a habitat. The prior art of record is directed to nematodes. As such, Applicant argues that the pest type matters and it is not clear from the art that the compound claimed would control arthropods.
The examiner notes that the active steps taught by the prior art include applying a claimed composition to a habitat. The habitat for arthropods and nematodes is substantially similar, as shown/evidenced below. Whether the intent of a method is to control arthropods or nematodes is not clearly relevant as the claimed active steps of applying a compound of formula (I) to a habitat is the same. The below reference is also consistent with the Specification that refers to arthropod and nematode habitats to include plant bodies, soil, etc. See Spec. @ pp81-82, bridging par.
As evidenced by Certini et al., “The impact of fire on soil-dwelling biota: A review,” Forest Ecology and Management 488 (2021) 118989: Arthropods live in soil, e.g., and include insects, ants, termites, spiders, and others. See p7. Nematodes also live in soil, e.g. See p10. The study researched the effect of fire on nematodes and arthropods.
As such, when the claimed compounds is applied to control nematodes, it is also controlling arthropods, whether or not this is the primary intent- absent evidence to the contrary.
With regard to the arguments against the product of nature rejection under § 101, the examiner notes that there is no showing that the natural components function differently in any respect when combined than they would in nature. The mere fact that they are separate in nature does not, per se, obviate this rejection if each component functions equivalently in nature as they do when combined in the instant claims. As such, the § 101 rejection is maintained. To obviate this rejection, a specific form of claimed composition can be made if it materially alters the natural components.
The Double Patenting Rejection is held in abeyance, as requested, and is therefore maintained at this time.
Status of the Claims
Claims 1, 2, and 4-6 are pending and examined.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 4 and 6 do not fall within at least one of the four categories of patent eligible subject matter because they are naturally occurring compositions of matter.
According to Behenna et al., “Marine Natural Products The Biology and Chemistry of the Zoanthamine Alkaloids,” Angew. Chem. Int. Ed. 2008, 47, 2 – 24 (cited in IDS), zoanthamine was isolated as a natural product in 1984, and Behenna notes that Uemura and co-workers identified five new natural products including norzoanthamine, norzoanthaminne, and oxyzoanthamine, e.g. See p4. Antibacterial properties of zoanthamine have been investigated. See p8. Thus, compounds of formula (I) are marine natural products.
Claims 4 and 6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural products without significantly more.
There is no indication that the composition has any characteristics that are markedly different from the naturally occurring counterpart. The claims do not, therefore, include additional elements that are sufficient to amount to significantly more than the judicial exception.
With regard to claim 4, the examiner notes that many repellent ingredients and others are also naturally occurring components such as essential oils that are repellents, including: lavender, basil, thyme, pine, vetiver, bergamot, peppermint, eucalyptus, and others. See Petersen, https://achs.edu/blog/green-cleaning-repel-insects/ (date accessed- November 19, 2025).
With regard to claims 6, Applicant has claimed coating a seed with the composition of claim 3. Faske et al., “Crop Protection Network, “How seed-applied nematicides work,” 2020, teaches: seed-applied nematicides can be used to protect the root system and is one of the most commonly used nematicide-application methods in row-crop agriculture. See Abstract. MPEP § 2106.05(d) states that well-understood, routine, and conventional activities are not sufficient to show that the claims amount to significantly more than the judicial exception.
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. Step 1 asks if a claim is directed to a statutory category of invention. Applicant’s claims 3, 4, and 6-8 are directed to a product; thus, the answer to Step 1 is Yes.
The analysis then moves to Step 2A, Prong One, which asks if a claim recites to a product of nature. In this case, instant claims are directed to a composition comprising a compound of formula (I) which is found in nature, and therefore patent ineligible judicial exceptions (natural products) under 35 USC 101.
MPEP § 2106.04(b) states that “When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A.”
MPEP § 2106.04(c)(I) states that “if the nature-based product limitation is not naturally occurring, for example due to some human intervention, then the markedly different characteristics analysis must be performed to determine whether the claimed product limitation is a product of nature exception…”. To perform the markedly different characteristic analysis, MPEP § 2106.04(c)(II) states “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties…”.
With respect to the inclusion of compound of formula (I) and/or inert carrier, and/or in a seed or a vegetative reproductive organ, there is no indication that instant claimed composition, will have a function or characteristic that alters the seed in any marked way. It appears to merely function as a component part of additive feature when applied to a seed that provides a functionality that is a sum of those multiple part.
Therefore, the answer to Step 2A, Prong One, is Yes.
Thus, the analysis must move to Step 2A, Prong Two, which asks if the claim recites additional elements that integrate the judicial exception into a practical application. As discussed in MPEP § 2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the exception into a practical application. The additional element is a concentration or amount of a naturally occurring form is not sufficient, per se, to integrate the judicial exception into a practical application. Thus, the answer to Step 2A, Prong Two, is No.
Thus, the analysis must move to Step 2B which asks if claims recite additional elements that amount to significantly more than the judicial exception. MPEP § 2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.”
In this case, the additional element in the claims is an extract and/or an extract applied to a seed. However, MPEP § 2106.05(d) states that well-understood, routine, and conventional activities are not sufficient to show that the claims amount to significantly more than the judicial exception. Mixing specific compounds does not amount to significantly more than a combination of judicial exception because combining a compound of formula (I) with a seed is well-understood, routine, and conventional in the field for improving memory. As referenced above, Faske teaches: seed-applied nematicides can be used to protect the root system and is one of the most commonly used nematicide-application methods in row-crop agriculture. See Abstract. MPEP § 2106.05(d) states that well-understood, routine, and conventional activities are not sufficient to show that the claims amount to significantly more than the judicial exception.
Thus, the answer to Step 2B is No. Therefore, the claims are not directed to patent eligible subject matter."
As elaborated above, claims 4 and 6 do not provide sufficient limitation beyond the judicial exceptions or provide anything that adds significantly more to the judicial exceptions. Consequently, it is not directed to patent eligible subject matter.
The indefiniteness rejection over harmful arthropod is removed. In appears recognized in the art in view of U.S. Pat. No. 10,721,929.
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.
Claims 1, 2, and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Atta-Ur-Rahman et al., “Nematacidal Activity of Marine Organisms, ResearchGate, Pak, J Nematol, 15(1-2);95-100 (1997) (cited in IDS), in view of Faske et al., “Crop Protection Network, “How seed-applied nematicides work,” 2020, and in view of Hellwege et al., (U.S. Pat. No. 9,433,214).
Atta-Ur-Rahman teaches zoanthamine showed 100% larval mortality against root-knot nematode larvae. See p99. Using agents to control threat to agricultural crops is common to control parasitic netamodes. Zoanthamine was shown to work.
Atta-Ur-Rahman does not teach application to a seed.
Faske teaches seed-applied nematicides can be used to protect the root system and is one of the most commonly used nematicide-application methods in row-crop agriculture. See Abstract.
Faske does not teach combination treatment.
Hellwege teaches combinations for treating nematodes. See abstract. Such treatment includes treating the seeds and the composition can comprise a combination of agents, including a biological control agent and a fungicide and a nematicide or combination thereof. See Abstract. One species of nematode includes the root knot nematode which attacks a broad range of plants, shrubs, and crops. See prior art claims 1, 2, 5-8, and others. Carriers and other excipients can be used. See prior art claim 5. Inert carriers are suitable in agriculture.
As evidenced by Certini et al., “The impact of fire on soil-dwelling biota: A review,” Forest Ecology and Management 488 (2021) 118989: Arthropods live in soil, e.g., and include insects, ants, termites, spiders, and others. See p7. Nematodes also live in soil, e.g. See p10. The study researched the effect of fire on nematodes and arthropods.
It would have been prima facie obvious to a person having ordinary skill in the art prior to the filing of the instant application to combine the teachings of Atta-Ur-Rahman, Faske, and Hellwege to arrive at the claimed products and methods of treating seeds. One would be motivated to do so because compounds of formula (I) are known to treat pests and root-knot nematode larvae and seed-applied nematicides can be used to protect the root system and are a most common way of applying nematicides to protect crops. While the instant application is directed to controlling arthropods rather than nematodes, it is shown on the record and recognized in the art that arthropods and nematodes share a substantially similar habitat, which includes soil for crops. Thus, when a claimed compound or compositions is applied to soil where plants and/or crops are grown, e.g., it would (absent evidence to the contrary) have an effect of controlling arthropods and nematodes. The intent of administration does not obviate the effect of administration as methods steps are examined based on active steps that are required. Further, using multiple compositions including a biological control agent, fungicide, and others are known for use in treating root knot nematode and seed application is taught for the same. Thus, applying the claimed compound of formula (I) with a second known agent by application to a seed to treat and prevent soil based arthropods or nematodes has a reasonable and predictable expectation of success in view of the cited prior art.
As such, no claim is allowed.
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, 2, and 4-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, 9, 11-15, 17, 18, and 20-25 of copending Application No. 18/843,151. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘151 application are directed a genus of compounds that includes those of instant formula (I) and they are directed to treating and controlling harmful nematode or arthropods. Similarly, the claimed include product claims with an inert carrier and an N-oxide of the formula claimed with a secondary agent. See claim 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
As such, no claim is allowed.
Conclusion
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 extension fee 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 JARED D. BARSKY whose telephone number is (571)-272-2795. The examiner can normally be reached on Monday through Friday from 8:30 to 5:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Amy L. Clark can be reached on 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JARED BARSKY/Primary Examiner, Art Unit 1628