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 .
Summary
Claims 1, 34-35, 37-38, 73-74, 76-77, and 104 are pending in this office action. Claims 2-33, 36, 39-72, 75, and 78-103 cancelled. All pending claims are under examination in this application.
Priority
The current application was filed on October 2, 2023 is a 371 of PCT/IL2022/050347 filed March 31, 2022. The current application claims foreign priority to IN202131015784, IN202111028811, and IN20213105786 filed April 2, 2021, June 26, 2021 and April 2, 2021, respectively.
Claim Objections
Claims 1, 34-35, 37-38, 73-74, 76-77, and 104 are objected to because of the following informalities:
Claim 1: Please delete the Markush Groups if there is only one member. There is no group if there is only one member.
Dependent claims 34-35, 37-38, 73-74, 76-77, and 104 are included here because they fail to cure the defects of claim 1.
Claim 37: Please use lowercase when using the text “phenylpyrazole.”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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 non-obviousness.
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.
Claims 1, 34-35, 37-38, 73-74, 76-77, and 104 are rejected under 35 U.S.C. 103 as being unpatentable over Wilhelm et al. (US2018/0271095A1) in view of Nave et al. (WO2019/012377A1) and (CN108271801A).
1. Wilhelm et al.
Wilhelm et al. is the closest prior art to the present invention as it teaches pesticidal mixture comprising a pyrazole compound, an insecticide and a fungicide (see title). In addition, Wilhelm et al. disclose compositions and methods of using a pesticidal mixture PM that includes at least one compound of formula I defined above, an insecticide and a fungicide for protecting crop, plant propagation material, or soil or water in which the plants are growing, against attack or infestation by invertebrate
pests and/or phytopathogenic fungi are described. Also described is a seed treatment composition that includes the pesticidal mixture PM, as well as seeds treated using the
pesticidal mixture PM or the seed treatment composition. Methods for controlling invertebrate pests and/or phytopathogenic fungi on crop plants are described that include contacting the plant or the plant propagation material; the pest or its food supply, habitat or breeding ground; and/or the fungi or habitat, with an effective amount of the pesticidal mixture PM or the seed treatment composition. Binary mixtures of a compound of formula I and a second pesticidal component are also described (see abstract).
2. Nave et al.
Nave et al. teach mixtures comprising an insecticide and a nitrification inhibitor such as 2-(3,4-dimethyl-1h-pyrazol-1-yl)succinic acid (DMPSA) or 3,4-dimethyl pyrazolium glycolate (DMPG) (see title). Additionally, Nave et al. disclose that the present invention relates to pesticidal mixtures comprising as active components at least one specific nitrification inhibitor (compound I) and at least one insecticide (compound II); to a method for controlling insects, acarids or nematodes, or for improving the nitrification-inhibiting effect, or for increasing the health of a plant using mixtures of at least one compound I and at least one compound II; to the use of mixtures comprising compounds I and compounds II for controlling insects, acarids or nematodes or to increasing the health of a plant; to agrochemical compositions comprising these mixtures; and to plant propagation material, comprising these mixtures or these agrochemical compositions (see abstract).
3. CN ‘801
CN ‘801 teaches insecticidal compositions containing novaluron (see title). Furthermore, CN ‘801, discloses that the invention provides an insecticidal composition containing novaluron. The insecticidal composition is characterized by being prepared from an active component A and an active component B, wherein the A is the novaluron and the B is one or a combination of more than one of efficient cyfluthrin, bacillus thuringiensis, benfuracarb, lufenuron, cyromazine, chromafenozide, methoxyfenozide, azadirachtin, fosthiazate, pyrazine fipronil, pyridine fipronil, kappa-bifenthrin, kappa-tefluthrin, lepimectin, cyenopyrafen and cyflumetofen; the insecticidal composition further comprises auxiliary agents capable of being used for processing pesticide preparations; the components are prepared into a convectional pesticide preparation which is applied to prevent and control plant insects (see abstract).
Regarding instant claim 1, Wilhelm et al., Nave et al., and CN ‘801 teach a pesticidal mixture. The necessary citations of Wilhelm et al., Nave et al., and CN ‘801 that pertain to instant claim 1 are presented in Table I.
Table I
Instant Claim 1
Wilhelm et al., Nave et al., and CN ‘801 Citations
A pesticidal mixture comprising, as active compounds:
Wilhelm et al. disclose pesticidal mixtures (see title, abstract, and claims within Wilhelm et al.).
Nave et al. disclose pesticidal mixtures (see abstract within Nave et al.).
CN ‘801 discloses pesticidal mixtures (see claim 1 within CN ‘801).
i) a compound I, which is novaluron of formula (I)
PNG
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200
400
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Greyscale
and ii) at least one active compound II selected from the groups A.1 to A.26:
A.1. Diacylhydrazine insecticides, which are ecdysone agonists selected from the group consisting of halofenozide and tebufenozide; A.2. Pyrethroid insecticides, selected from the group comprising consisting of Tau Fluvalinate;
wherein the weight ratio of novaluron and the at least one active compound II is from 1:100 to 100:1.
Wilhelm et al. disclose a pesticidal mixture containing novaluron (see paragraph [0012]; M.15 within Wilhelm et al.) and Tau Fluvalinate (see paragraph [0012]; M.3 within Wilhelm et al.).
Nave et al. disclose a pesticidal mixture containing novaluron (see page 8, line 21 within Nave et al.) and tebufenozide (see page 8, line 25 within Nave et al.).
CN ‘801 discloses mixtures comprising novaluron (see paragraph [0011] in combination with non-claimed insecticides (see paragraph [0011] within CN ‘801).
[For the purposes of brevity only A.1-A.2 are listed due to the fact that Wilhelm et al. and Nave et al. meet the instant claim limitations of these groups.]
Wilhelm et al. disclose the appropriate weight ratio (see claim 2 within Wilhelm et al.).
It would have been obvious to one of ordinary skill in the art to combine the teachings of Wilhelm et al., Nave et al., and CN ‘801 prior to the effective filing date of the claimed invention, as all references are directed to pesticidal mixtures. Based on the prior art of record it would be routine for a skilled artisan (POSITA; person having ordinary skill in the art) to create a pesticidal mixture containing novaluron and another claimed insecticide. The motivation to combine the three references would be to design a synergistic pesticidal mixture within the agricultural arts.
Regarding instant claim 34, Wilhelm et al., Nave et al., and CN ‘801 teach wherein the mixture exhibits synergistic effects. Wilhelm et al. disclose provide a synergistically effect in terms of the insecticidal and/or fungicidal activity (see paragraph [0178] within Wilhelm et al.).
Regarding instant claim 35, Wilhelm et al., Nave et al., and CN ‘801 teach wherein novaluron and at least one active compound II, as defined in instant claim 1, are applied jointly or in a succession. Wilhelm et al. disclose the components of said mixture can be applied simultaneously, jointly or separately, or in succession, that is immediately one after another and thereby creating the mixture "in situ" on the desired location, e.g. the plant, the sequence, in the case of separate application, generally not having any effect on the result of the control measures (see paragraph [0325] within Wilhelm et al.).
Regarding instant claims 37-38, Wilhelm et al., Nave et al., and CN ‘801 teach wherein the weight ratio of novaluron and at least one active compound II, as defined in claim 1, is from 1:100 to 100:1 (see claim 2 within Wilhelm et al.).
Regarding instant claims 73-74, Wilhelm et al., Nave et al., and CN ‘801 teach a pesticidal composition comprising: (i) the mixture of instant claim 1; and (ii) an agriculturally acceptable carrier and at least one surfactant, solid diluent, liquid diluent, or a combination thereof. Wilhelm et al. disclose examples for suitable auxiliaries are solvents, liquid carriers, solid carriers or fillers, surfactants, dispersants, emulsifiers, wetters, adjuvants, solubilizers, penetration enhancers, protective colloids, adhesion agents, thickeners, humectants, repellents, attractants, feeding stimulants, compatibilizers, bactericides, anti-freezing agents, anti-foaming agents, colorants, tackifiers and binders (see paragraph [0285] within Wilhelm et al.).
Regarding instant claims 76-77, Wilhelm et al., Nave et al., and CN ‘801 teach a method for controlling insects comprising contacting the insect or their food supply, habitat, breeding grounds or their locus with an effective amount of instant claim 1 so as to thereby control insects (see paragraph [0323] within Wilhelm et al.). The method can be directed to S. littoralis (see paragraph [0370] within Wilhelm et al.).
Regarding instant claim 104, Wilhelm et al., Nave et al., and CN ‘801 teach a method for protecting plants from attack or infestation by insects comprising contacting the plant, or the soil or water in which the plant is growing, with an effective amount of the mixture of instant claim 1 so as to thereby protect plants from attack or infestation by insects (see paragraphs [0220], [0276], and [0322] all within Wilhelm et al.). Please also see the discussion and citations within instant claim 1.
Analogous Art
The Wilhelm et al., Nave et al., and CN ‘801 references are directed to the same field of endeavor as the instant claims, that is, a pesticidal mixture as disclosed within instant claim 1.
Obviousness Analysis
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the pesticidal mixture comprising novaluron and Tau Fluvalinate disclosed by Wilhelm et al., using the teachings of Nave et al. and CN ‘801 teach, in order to arrive at the subject matter of the instant claims.
The Wilhelm et al., Nave et al., and CN ‘801 references all have considerable overlap in the preparation of synergistic pesticidal mixtures within the agrochemical arts. In this instance, Wilhelm et al. supplies a template for the novaluron combination, Nave et al. supports this combination with a different pesticide, while CN ‘801 supplies examples of additional novaluron pesticidal mixtures. All references are directed to the preparation of synergistic pesticidal mixtures within the agrochemical arts and therefore constitute analogous art under MPEP §2141.01(a). A POSITA would have reasonably consulted the three references when seeking to prepare a novaluron pesticidal mixtures.
Starting with Wilhelm et al., the skilled person only had to try the necessary claim limitations disclosed by Nave et al. and CN ‘801. The combination of Wilhelm et al., Nave et al., and CN ‘801 would allow one to arrive at the present application without employing inventive skill. This combination of the synergistic pesticidal mixture comprising novaluron and Tau Fluvalinate taught by Wilhelm et al. along with the use of the necessary claim limitations taught by Nave et al. and CN ‘801 would allow a research and development scientist (POSITA) to develop the invention taught in the instant application. It would have only required routine experimentation to modify the synergistic pesticidal mixture comprising novaluron and Tau Fluvalinate disclosed by Wilhelm et al. with the use of the necessary claim limitations taught by Nave et al. and CN ‘801. Incorporating the disclosure of Wilhelm et al. into the specific examples of methods employing the pesticidal mixture presented by Nave et al. and CN ‘801 represents a predictable use of prior art elements according to their established functions, consistent with MPEP §2143 and KSR.
Furthermore, the additional claim limitations taught by Nave et al. and CN ‘801 would have been viewed by a POSITA as routine design optimizations or known modifications to treat plants. The motivation to combine the three references would be to design a synergistic pesticidal mixture within the agricultural arts. Implementing the additional features in Wilhelm et al.’s template employing a synergistic pesticidal mixture would not require more than ordinary skill or routine experimentation.
Accordingly, the combination of Wilhelm et al., supplemented by Nave et al. and CN ‘801 provides all the elements of the claimed invention. The resulting synergistic pesticidal mixture comprising novaluron and Tau Fluvalinate constitutes no more than the predictable outcome of combining familiar prior art components, and therefore the claimed subject matter would have been obvious to a POSITA prior to the effective filing date of the invention.
Response to Arguments
Applicant's arguments filed July 6, 2026 have been fully considered but they are not persuasive.
The instant claim amendments were sufficient to address the claim objections and the 35 U.S.C. §112(b) rejections. Therefore, they are both withdrawn from the non-final office action dated February 5, 2026.
The amendments did necessitate a new ground of rejection. The Examiner added the Wilhelm et al. rejection.
Applicant Argument: The Applicant argues that the CN ‘801 35 U.S.C. §102 rejection is improper due to the claim amendments. Furthermore, the second 35 U.S.C. §102 rejection supported by Nave et al. encompasses hundreds of insecticides and it would not be apparent to a skilled artisan (POSITA) to combine the claimed pesticides.
Examiner’s Rebuttal: The Examiner found both arguments pertaining to the 35 U.S.C. §102 rejections persuasive. As a result, they are withdrawn from the record.
Applicant Argument: The Applicant argues that the Examiner has used impermissible hindsight in constructing the 35 U.S.C. §103 rejection.
Examiner’s Rebuttal: The Examiner respectfully disagrees. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight [or piece-meal reasoning.] But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).]
Applicant Argument: The Applicant argues that the unexpected results of the synergistic pesticidal mixture support patentability of the invention.
Examiner’s Rebuttal: The Examiner respectfully disagrees. Evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (Claims directed to a method of effecting analgesia without producing physical dependence by administering the levo isomer of a compound having a certain chemical structure were rejected as obvious over the prior art. Evidence that the compound was unexpectedly nonaddictive was sufficient to overcome the obviousness rejection. Although the compound also had the expected result of potent analgesia, there was evidence of record showing that the goal of research in this area was to produce an analgesic compound which was nonaddictive, enhancing the evidentiary value of the showing of non-addictiveness as an indicium of nonobviousness.). [see M.P.E.P. 716.02(c)]. In this instance, the prior art of record is stronger than the unexpected results.
Furthermore, Table 4 on page 16 of the Remarks section only discusses one novaluron combination from A.1 to A.26. The Applicant cannot claim unexpected results for all the combinations based on one result.
Applicant Argument: The Applicant argues that the Nave et al. reference has to many combinations to be used for rejection purposes.
Examiner’s Rebuttal: The Examiner respectfully disagrees. Yes, the 35 U.S.C. §102 rejection has been withdrawn, however the 35 U.S.C. §103 rejection using the Nave et al. reference is applicable to the instant application. The disclosure supports the rejection. sAdditionally, since the transitional phrase selected by the Applicant is “comprising”, other components can be included, such as a nitrification inhibitor.
Thus, the 35 U.S.C. §103 rejection for instant claims 1, 34-35, 37-38, 73-74, 76-77, and 104 is maintained.
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.
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/JOHN W LIPPERT III/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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