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 July 20, 2026, in response to the Office Action of April 20, 2026, are acknowledged.
Response to Arguments
The Double Patenting Rejection is withdrawn in view of the filing and approval of a Terminal Disclaimer on July 30, 2026.
Further, the § 112 Rejection is withdrawn in view of the amendments to the claims.
Applicant’s arguments and allegations of unexpected results have been considered by the examiner. The arguments set forth indicate that unexpected results are presented for compounds with a CF3-sulfinyl compared to the same compound with a CF3-sulfonyl. In particular, the efficacy on pests is shown within 4 hours as compared to an evaluation at 1 day. See Table 4. This is shown to be faster time to action for (1) a specific compound; (2) when applied to a pest; and (3) at a specific concentration.
The examiner notes that unexpected results must be compared to the closest prior art AND they must be commensurate in scope with the breadth of the claims. In this case, the primary references teaches the following and claims the following compounds:
PNG
media_image1.png
342
352
media_image1.png
Greyscale
Thus, included in the limited chemical compound genus claimed is a haloalkyl sulfinyl in the position of R1. While it is true that both the sulfonyl and sulfinyl moieties are claimed and one performs differently under very specific conditions, it is also true that a POSA would immediately envisage each of these R1 groups because they comprise minimal options. The examiner does not believe that the claimed data is sufficient, as compared to prior art that teaches a small genus of compounds that is inclusive of the advantageous compound, and the comparator.
Moreover, the proffered showing is that a specific agent is superior to another specific agent. The data is set forth to show the unexpected nature of a specific chemical formula.
The examiner notes that the comparison is of a direct application to a pest. The claims provide for application to a place which a pest can pass or where a pest can inhabit. The showing is not as broad as this claim language. Further, there is no concentration claimed other than in claim 10 and it is not clear that 0.01 parts of a compound of Formula (I) would exhibit unexpected properties if applied to a pest and if applied to an environment where a pest can inhabit. Presumably a higher concentration of compound would act faster.
The examiner notes that a prima facie showing is established because the combination of prior art teaches the claimed compound can be applied to the agriculture environment (as claimed) and it can be used with claimed solvents, secondary agents, and to address the claimed pests. Even further, Matsuo teaches a liquid or dust coating of seeds to adhere to their surface. Application to crops foliage, grain, forests, homes, and others locations is taught as a non-exhaustive list, which a POSA would read as relatively unlimited. The compounds are also taught to be applied to soil, cultivation media for seeds, etc. See par.’s 99, 103, and others.
As such, unexpected results are not shown because they are not commensurate in scope with the claims and they are not unexpected as compared to prior art that teaches the claimed compound among a limited few for treating claimed pests through application to their environment.
Applicant’s showing is not persuasive. A rejection is set forth below.
With regard to new claims 16-21, applicant claims specific pests. The dependent claim still allows for application to an environment, among other places, that a pest may inhabit. Further, each of the claims species is taught by Matsuo, including Blattodea, Hymenoptera, Diptera, and Hemiptera.
Status of the Claims
Claims 1-7, 9-11, 13-21 are pending and examined.
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 1-7, 9-11, 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuo et al., (US2019/0045786), in view of Takahashi et al., (US2015/0246911), and in view of Notomi et al., (US2017/0071186), and in view of Fujii, (US2006/0182774).
Matsuo teaches compounds of the claimed core having R1 being a trifluoromethylsulfinyl or trifluoromethoxy, and R2 being hydrogen or cyano. See Abstract. Further, Table 1 provides a claimed compound at 1-12. See par. 77. The compounds is intended to provide a novel agricultural and horticultural insecticide. See Abstract. Solvents can be used and can be hydrocarbon solvents. See par. 30. Multiple inert solvents can be used and water is contemplated as one as well. See par. 35. Additional insect control agents can be used to include allethrin, dimeflurthin, and many other claims insecticidal active agents. See par. 122. Species that can be controlled include: Blattodea, Hymenoptera, Diptera, Hemiptera, and many others. See par. 79. The benzoxazole compounds are effective also against pests which live on non-human animals in addition to agriculture and horticulture applications. See par 12.
Takahashi teaches pest control compositions with a similar core structure. See Abstract. It includes benzoxazole compounds species. Additionally, the insecticide can be in the form of an aerosol spray. See par. 284. Such liquid carriers can include liquefied petroleum gas (LPG), including fluorocarbon, butane gas. See par. 288. Numerous examples provide aerosol formulations with propellant LPG. See Example 9. Aerosol containers are filled with propellants under pressure through a valve to obtain an aqueous aerosol. See par. 417. Similar species can be treated including Blattodea, Hymenoptera, and others. See par. 283. Further, hydrocarbon solvents are contemplated for use along with water. See par. 147. In examples 0.1-10 parts API are used. See Examples 1, 4, 8, and others. Examples also include 25-40 parts LPG. See Examples 8 and 9. Solvents can include 60 parts, 70 parts, 0.5 ml to 2 ml. See Examples 1, 4, 6, 7, 10, and others. The container comprising the claimed product is filled under pressure and is therefore interpreted to include a pressure-resistant container. Further, such would be immediately envisaged in view of the pressure-filling of the same. Notomi and Fujii are merely cited below to show that pressure-resistant containers have long been known and utilized in the art for the application of pesticide and insecticide compositions.
Notomi teaches using an aerosol method to apply a pesticide using a liquid aerosol forming material and a pressure-resistant container with an organic solvent and a propellant. See Abstract and par. 1. The container can allow for a metered spray value. See par. 15.
Fujii also teaches an aerosol for disinsectization for a fly, mosquito, cockroach, e.g. See par. 2. A container that is used includes a pressure-resistant container having an active agent, solvent, and a propellant, e.g. See Abstract.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); and Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been prima facie obvious to a person of ordinary skill in the art prior to the filing of the instant application to combine the teachings of Matsuo et al., (US2019/0045786), in view of Takahashi et al., (US2015/0246911), and in view of Notomi et al., (US2017/0071186), and in view of Fujii, (US2006/0182774) to arrive at the claimed method. One would be motivated to do so because Matsuo teaches the claimed agent for use as a pesticide for claimed pests used in combination with a claimed secondary active agent. Even further, the water and claimed hydrocarbon solvents are contemplated for use. Takahashi use similarly structured compounds for a same use and employs those compounds in methods that utilize aerosol with the claimed LPG propellant. Takahashi uses the composition for the same insects with the same solvents at similar percentages. Even further, Notomi and Fujii provide examples of aerosols that utilize pressure-resistant containers for use in applying pest and insect control compositions. They are able to include solvents and propellants and water and can be metered in their application. As such, there is a reasonable and predictable expectation of success in arriving at the claimed products and methods in view of the cited prior art.
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 1-7, 9-11, 13-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/553,870, in view of Takahashi et al., (US2015/0246911), and in view of Notomi et al., (US2017/0071186), and in view of Fujii, (US2006/0182774)
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘870 application are directed to applying a same composition as a pest control agent when applied to a place that a pest can occupy with an additional active agent. Those secondary agents overlap, including indoxacarb, e.g. Further, the target pests are of the same species: Blattodea, Hymenoptera, Diptera, and it can be combined with water and sprayed. Takahashi further teaches oils and emulsifiable concentrations. As such, the same API can be used with a propellant in a claimed form as shown by Takahashi with a reasonable and predictable expectation of success. Even further, Notomi and Fujii provide examples of aerosols that utilize pressure-resistant containers for use in applying pest and insect control compositions. They are able to include solvents and propellants and water and can be metered in their application. As such, there is a reasonable and predictable expectation of success in arriving at the claimed products and methods in view of the cited prior art.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JARED BARSKY/Primary Examiner, Art Unit 1628
Prosecution Insights