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 Status
The claim set and Applicant’s remarks filed May 12, 2026 have been entered.
Claims 1-15 are canceled.
Thus, claims 16-28 as amended are examined on the merits herein.
Withdrawn Objections and Rejections
With respect to the objections and/or rejections mailed in the non-final office action on February 17, 2026:
(I) The rejection of claim 17 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn in view of Applicant’s amendment.
(II) The rejection of claim 24 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph is withdrawn in view of Applicant’s amendment.
(III) The rejection of claim 1 under 35 U.S.C. 103 is withdrawn in view of the cancelation of claim 1 by the Applicant.
Response to Arguments
The rejection of claims 16-28 under 35 U.S.C. 103 is maintained.
Applicant argues:
(A) The compounds disclosed by Suyou are all non-quaternary amines; and while Suyou describes insecticidal activity, it contains no teaching or suggestion of quaternary ammonium spinosyns, see Applicant’s remarks, pg. 12, first full paragraph.
(B) The compounds of Luo that include a quaternary ammonium group do not include an acyloxyalkyl substituent as required by the present claims, and the compounds of Luo that include an acyloxyalkyl moiety (e.g. compounds 1 and 50) are not quaternary ammonium compounds, see Applicant’s remarks, pg. 12, second full paragraph.
(C) Applicant argues a person of ordinary skill in the art of agricultural chemistry starting from Suyou would have had no teaching or motivation to explore prodrug behavior, nor to modify Suyou’s non-quaternary amine insecticides by borrowing features from medically directed spinosyn derivatives such as Luo, see Applicant’s remarks, pg. 13, first full paragraph.
With respect to Applicant’s arguments (A)-(C), the Examiner notes within the maintained 103 rejections, Suyou’s spinosad compounds do not comprise a quaternary nitrogen atom having an unsubstituted C1-C6 alkyl as required in R3 of general formula (I) of the instant claims.
However, Luo is relied upon to teach a spinosad derivative comprising a substituted quaternary nitrogen, wherein said quaternary nitrogen comprises two C1-C20 alkyls; and wherein the nitrogen atom is connected to the required sugar moiety of general formula (II) of instant claim 16, line 3.
The Examiner also notes in the maintained 103 rejections below one of ordinary skill in the art would have been motivated to make this substitution as discussed above in order to create spinosad derivatives as taught by Suyou above, because Luo teaches compounds which comprise either a substituted amino or a substituted ammonium directly connected to the sugar moiety of the spinosyn core; and where the Examiner notes Suyou teaches a substituted amino directly connected to the sugar moiety of the spinosyn core.
The Examiner further particularly notes claims 16-25 are compounds claims; claim 26 is a composition comprising the compound of claim 16; and claims 27-28 are drawn to methods of using the compound of claim 16.
Accordingly, the Examiner notes Suyou already teaches their compounds as insecticides; and wherein the Examiner reasonably interpreted the substitution of the substituted amino present on the compounds of Suyou for the substituted ammonium present on the compounds of Luo was a reasonable substitution based on Suyou’s teaching of applying spinosad derivatives as insecticides; and Luo’s teaching of the substituted amino for the substituted ammonium directly connected to the sugar moiety of the spinosyn core is a known modification of spinosad taught within the prior art.
Additionally, MPEP 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”; and where the Examiner further notes as evidenced by Melnikov (Published Year 1971, “VIII. Amines and salts of quaternary ammonium bases” in Gunther et al., Chemistry of Pesticides (New York, Springer-Verlag, 1971), pp. 83-88, PTO-892), Melnikov discloses quaternary ammonium salts have an insecticidal effect; and where quaternary ammonium salts have been proposed as systemic insecticides, see pg. 84, last paragraph of the page.
(D) The presently claimed compounds are distinguished from the cited art not only structurally, but functionally; in particular the R1 substituent of the presently claimed compounds is chemically unstable; is activated under alkaline pH conditions and not neutral pH conditions; and thus such quaternary ammonium functionality renders the compounds highly soluble at neutral pH conditions; where the compounds of Suyou are not quaternary amines and do not exhibit said solubility properties or address prodrug behavior, see Applicant’s remarks, pp. 12, last paragraph of the page – 13, first paragraph of the page.
With respect to Applicant’s argument (D), the Examiner notes the compounds of Suyou already teach the structural limitation of R1 within formula (II) recited in claim 16, therefore, the Examiner reasonably interprets said functional limitations above are met by the teachings of Suyou.
Furthermore, the Examiner notes Melnikov discloses positive properties of the substituted ammonium salts are their high solubility in water (which permits their use in aqueous solutions), see pg. 85, first paragraph. Accordingly, the Examiner notes when combining the teachings of Suyou and Luo above, the Examiner reasonably interprets said combination will preserve the solubility of Suyou’s compounds.
(E) The present invention provides compounds that exhibit strong insecticidal activity while having a very limited effect on beneficial insects such as honey bees, see Applicant’s remarks, pg. 13, second full paragraph.
With respect to Applicant’s argument (E), the Examiner reiterates their arguments above and in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., having very limited effect on beneficial insects such as honey bees) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, the Examiner notes even if this argument were claimed it would not be found persuasive as the specification only tests four compounds J1A, J1Aa, J7 and J7a which refer to only four specific structures comprised within formula (II) of claim 16.
Accordingly, in view of the claimed genus of instant claim 16, the Examiner reasonably interprets the specification has not demonstrated said effect may be attributable to the entirety of the compounds recited within formula (II) of claim 16.
Thus, Applicant’s arguments (A)-(E) have been fully considered but are not found persuasive.
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.
(I) Claims 16-25 and 27-28 remain rejected under 35 U.S.C. 103 as being unpatentable over Suyou et al. (Published 21 September 2011, CN-102190694-A, IDS filed 01/05/2024; English Machine Translation, PTO-892 mailed 02/17/2026) in view of Luo et al. (Published 08 September 2020, CN-111632061-A, IDS filed 01/05/2024, English Machine Translation, PTO-892 mailed 02/17/2026).
Regarding claims 16-25 and 27-28, Suyou teaches spinosad derivatives, preparation methods thereof, and application of said spinosad derivatives as insecticides, see English Machine Translation, pg. 1, title.
Suyou teaches N-amino substituted alkyl-spinosad derivatives of general formula I, salts thereof and a preparation method thereof. Suyou teaches said derivatives have insecticidal and miticidal activities and provide the application of said spinosad derivatives in protecting crops and preventing and treating sanitary pests and garden pests. See English Machine Translation, pg. 1, abstract.
Suyou exemplifies a method of preventing and treating sanitary and garden pests by inhibiting Acarina mites by applying to the locus of the mites a concealed, inactivating amount of a compound of general formula (I) (e.g. controlling a pest, required in claim 27), see English Machine Translation, pg. 6, paragraph 8.
Suyou exemplifies a method of protecting crops by inhibiting leidopteran-susceptible insects by applying to a plant an insect-inactivating effective amount of a compound of general formula (I) (e.g. protecting a plant against a plant pest, required in claim 28), see English Machine Translation, pg. 6, paragraph 8.
Suyou teaches the compound of general formula (I) which is depicted as,
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, see Suyou, pg. 2, paragraph [0010].
Suyou teaches R1 is chosen from and including C1-C5 alkyl (e.g. R2, required in claim 24), see English Machine Translation, pg. 4, summary of invention, line 4.
Suyou teaches R2 is H, see English Machine Translation, pg. 4, summary of invention, line 5; and R3 is chosen from and including an aliphatic hydrocarbon acyl, see English Machine Translation, pg. 4, summary of invention, line 9.
The Examiner respectfully notes the teachings of R1, R2, and R3 of Suyou above correspond to the limitation of R1 is –(CH2)n-O-C)O-R1b, wherein n is 2 and R1b is C(R2b)3, wherein each R2b is hydrogen or C1-C20 alkyl, as required in claim 16, lines 6-13; claim 17, pg. 7, lines 4-11; claims 21-23; and claim 25, pg. 11, the compound recited in line 1.
Suyou teaches R6 is a substituted 2-5 carbon chain alkyl group and exemplifies an ethyl and a 1-butenyl, see pg. 5, line 3.
Suyou teaches A-B is -CH2CH2- or -CH=CH- (e.g. the dashed line is a single or double bond, as required in claim 16, line 5), see pg. 5, line 4.
Suyou teaches R5 is hydrogen or methyl (e.g. R5, as required in claim 16, pg. 5 line 27 and claim 18, line 2), see pg. 5, line 3.
Suyou teaches R4 is depicted as
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104
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, see, Suyou, pg. 2, paragraph [0014]; wherein each of R10, R11 and R12 are independently chosen from and including hydrogen, methyl, ethyl, propyl, isopropyl, allyl and other alkyl groups (e.g. R8, R9, R10, as required in claim 16, pg. 6, lines 5-6, lines 12-13 and lines 19-20; and claims 19-20), see English Machine Translation, pg. 5, lines 1-2.
The Examiner respectfully notes general formula (I) of Suyou as depicted above teaches a methyl group which corresponds to R11 of general formula (II) of the instant claims in claim 16, pg. 6, lines 26-27.
Additionally, the Examiner respectfully notes general formula (I) of Suyou as depicted above teaches a hydrogen at both locations corresponding to R6 and R7 of general formula (II) of the instant claims in claim 16, pg. 5, lines 28-29 and claim 18; and in general formula (III) of claim 17, pg. 8, lines 14-15.
Although, Suyou does not teach general formula (I) when (a) general formula (I) comprises a quaternary nitrogen atom having an unsubstituted C1-C6 alkyl as required in R3 of general formula (I) of the instant claims in claim 16, pg. 5, line 17; claim 18, pg. 8, lines 3-4; claim 24, line 2; and claim 25, pg. 11, line 1; or (b) wherein R6 is an unsubstituted ethyl, as required in R4 in claim 16, pg. 5, line 24; claim 17, pg. 8, line 10; claim 18, line 1; and claim 25, pg. 11, line 1.
However, in the same field of endeavor of N-amino substituted alkyl-spinosad derivatives, with respect to limitations (a)-(b), Luo teaches a spinosad derivative having the general formula (I), see English Machine Translation, pg. 7, disclosure of the invention, paragraphs 1-2.
Luo depicts general formula (I) as,
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, see Luo, pg. 3, paragraph [0013]; wherein R1 is selected from the following groups including (II) and (III), see English Machine Translation, pg. 7, disclosure of the invention, paragraphs 1-2.
Luo depicts group (II) as,
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104
128
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, see Luo, pg. 3, paragraph [0014]; wherein R8 and R9 are each independently selected from the group consisting of and including an alkyl of 1 to 20 carbon atoms, see English Machine Translation, pg. 7, disclosure of invention, line 8; and depicts group (III) as,
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91
153
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, see Luo, pg. 3, paragraph [0014]; wherein R10 and R12 are each independently selected from and including an alkyl of 1 to 20 carbon atoms, see English Machine Translation, pg. 7, disclosure of invention, line 16.
The Examiner respectfully notes that Luo teaches a spinosad derivative comprising a substituted quaternary nitrogen, wherein said quaternary nitrogen comprises two C1-C20 alkyls; where the nitrogen atom is connected to the required sugar moiety of general formula (II) of instant claim 16, line 3; and wherein said sugar moiety is connected through an ether bond to the C17 carbon of the spinosyn compound backbone as required in general formula (II) of instant claim 16, line 3.
Thus, the Examiner respectfully notes the teachings of Luo meet all structural limitations of R3 which is connected to the quaternary nitrogen of general formula (II) of the instant claims as required in claim 16, line 3 and claim 16, pg. 3, line 8.
Luo also teaches R2 is selected from and including ethyl, see English Machine Translation, pg. 8, line 3. The Examiner notes R2 of general formula (I) of Luo is located at the identical position corresponding to R4 of general formula (II) of the instant claims as required in claim 16, pg. 4, line 3 and pg. 5, line 24; as well as general formula (III) of the instant claims as required in claim 17, pg. 7, line 1 and pg. 8, line 10; R4 of claim 18; and R4 of the compound of claim 25, pg. 11, line 1.
It would have been prima facie obvious to one of ordinary skill in the art at the invention’s effective filing date to have incorporated limitations (a)-(b) as taught by Luo above into the compounds of general formula (I) of Suyuo above as within the scope of the artisan as combining prior art elements according to known compounds to yield predictable results; as Luo teaches the structural requirements of limitations (a)-(b) as discussed above as simple substitutions known to spinosad derivatives which is discussed in greater detail by the teachings of Luo above.
One of ordinary skill in the art would have been motivated to make these substitutions as discussed above in order to create spinosad derivatives as taught by Suyuo above. One of ordinary skill in the art would have had a reasonable expectation of success of incorporating limitations (a)-(b) as taught by Luo into the compounds of general formula (I) of Suyuo above, as both Suyuo and Luo are drawn to N-amino substituted alkyl-spinosad derivatives, where Luo teaches a substituted amino or a substituted ammonium are known structures directly connected to the sugar moiety of the spinosad core; and where Suyuo explicitly teaches a preparation method of their compounds as discussed above.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have incorporated limitations (a)-(b) as taught by Luo above into the compounds of general formula (I) of Suyuo above as within the scope of the artisan as combining prior art elements according to known compounds and methods to yield predictable results. One of ordinary skill in the art would have been motivated to create spinosad derivatives as taught by Suyuo above for the purposes of applying said spinosad derivatives in protecting crops and preventing and treating sanitary pests and garden pests as taught by Suyuo above.
One of ordinary skill in the art would have had a reasonable expectation of success of incorporating limitations (a)-(b) as taught by Luo above into the spinosad compounds as taught by Suyuo above; as both Suyuo and Luo are drawn to spinosad derivatives; and where Suyuo explicitly teaches a preparation method of their compounds as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
(II) Claim 26 remains rejected under 35 U.S.C. 103 as being unpatentable over Suyou et al. (Published 21 September 2011, CN-102190694-A, IDS filed 01/05/2024; English Machine Translation, PTO-892 mailed 02/17/2026) and Luo et al. (Published 08 September 2020, CN-111632061-A, IDS filed 01/05/2024, English Machine Translation, PTO-892 mailed 02/17/2026) as applied to claims 16-25 and 27-28 above, and further in view of Terada (Published 19 June 2014, JP-2014111571-A, English Machine Translation, PTO-892 mailed 02/17/2026).
Suyou and Luo address claims 16-25 and 27-28. Although, Suyuo and Luo do not teach a composition as required in claim 26.
However, in the same field of endeavor of controlling pests, Terada teaches an agrochemical formulation, an efficient control method, and many pesticidal formulations for application to the control method have been developed, see English Machine Translation, pg. 5, lines 2-5.
Terada exemplifies the agrochemical formulation as a granule (e.g. a composition, required in claim 26, line 1), English Machine Translation, pg. 5, line 1.
Terada teaches the agrochemical granule comprises one or more compounds including spinosyn A and spinosyn D, see English Machine Translation, pg. 14, document claims, lines 18-19.
Terada teaches the granule was obtained by kneading the mixture and if necessary, a formulation adjuvant (e.g. a physiologically acceptable adjuvant, required in claim 26, line 2), see English Machine Translation, pg. 3, second paragraph from the bottom.
It would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have incorporated the teachings of Terada into the compounds and methods as taught by Suyuo above as within the scope of the artisan as combining prior art elements according to known compositions and methods to yield predictable results. One of ordinary skill in the art would have been motivated to formulate the compounds as taught by the combination of Suyuo and Luo above into an agrochemical granule as taught by Terada, in order to implement the application of the compounds as taught by Suyuo for protecting crops and preventing and treating sanitary pests and garden pests as taught by Suyuo above. One of ordinary skill in the art would have had a reasonable expectation of success of incorporating the teachings of Terada into the compounds and methods as taught by Suyuo above, as Terada teaches an agrochemical formulation and making said formulation as a granule which contains spinosyns as a control method for pests as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
Conclusion
No claims are allowed in this action.
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 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 JARET J CREWS whose telephone number is (571)270-0962. The examiner can normally be reached Monday-Friday: 9:00am-5:30pm EST.
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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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