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 .
DETAILED ACTION
This action is in response to papers filed March 16, 2026. Applicant’s reply to the restriction/election requirement of January 16, 2026 has been entered. Claims 3, 4, 6, 8, 12, 13, 15, 21, 24, 25, 29, 31-57, 60, and 61 have been canceled. Claims 1, 2, 5, 7, 9-11, 14, 16-20, 22, 23, 26-28, 30, 58, and 59 are pending in the application.
Priority
Applicant’s claim for the benefit of prior-filed WIPO International Application No. PCT/CA2022/050685, filed May 3, 2022 under 35 U.S.C. 365(c), which claims the benefit of prior-filed U.S. Provisional Patent Application No. 63/183,942, filed May 4, 2021 under 35 U.S.C. 119(e), is acknowledged.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 2, 5, 7, 9-11, 14, 16-20, 22, 23, and 26-28, is acknowledged. Applicant’s elections of i) “spinosad” as the species of spinosyn active, ii) “0.01 to 30%” as the species of spinosyn active amount, iii) “an ester of salicylic acid” as the species of salicylate solvent, iv) “methyl salicylate” as the species of salicylate, v) “1:1 to 1:10” as the species of ratio of spinosyn active to salicylate solvent, vi) “an oil carrier” as the species of further constituent, vii) “safflower oil” as the species of oil carrier, viii) “octanoic acid” as the species of aliphatic acid, ix) “1:1 to 1:10” as the species of ratio of spinosyn active to synergist, x) “a plant” as the species of entity to which the composition is applied, xi) “infested with a plant pest” as the species of status of the plant, locus, or propagation material being treated are all also acknowledged. The Examiner has determined that claims 1, 2, 7, 9, 10, 14, 19, and 20 read on the elected subject matter.
Accordingly, claims 5, 11, 16, 18, 22, 23, 26-28, 30, 58, and 59 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected subject matter, there being no allowable generic or linking claim.
Election was made without traverse in the reply filed on March 16, 2026. Claims 1, 2, 7, 9, 10, 14, 17, 19, and 20 are under examination.
Claim Objections
Claims 2, 7, 9, 10, 14, 17, 19, and 20 are objected to because of the following:
i). In claims 2, 7, 9, 10, 14, 17, 19, and 20, there should be a comma between the preamble and the body of the claim. For example, in claim 2, the expression “The pesticidal composition of claim 1 wherein a ratio” should be “The pesticidal composition of claim 1, wherein a ratio”.
ii). Claim 9 is in improper English grammatical form.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 7, 9, 10, 14, 17, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 is indefinite for the following reasons:
1. Claim 2 recites at least one broader range together with at least one narrower range that falls within the scope of the broader range, in the alternative, in the same claim, which is indefinite. One of ordinary skill in the art cannot make heads or tails out of the metes and bounds of the claimed subject matter.
2. Claim 2 first recites various ratios, which appear to be weight ratios. However, claim 2 then recites optional, alternative ratios, but for these other, alternative ratios the claim does not specify what type of ratio, e.g. weight ratio, molar ratio, volume ratio, or what?
Claim 7 is indefinite for the following reasons:
1. Claim 7 stipulates that the spinosyn active “is in a range of at least one of” those recited, “by weight”. The spinosyn active is a chemical compound, and one of ordinary skill in the art cannot definitively ascertain what these range percentages of the chemical compound mean. Moreover, the claim never discloses or defines what these percentages are “by weight” of, e.g. “by weight of what?”. Perhaps the claim intends to recite that the spinosyn active is “present in the composition in the amount” that is in the recited range “by weight of the composition”? Or perhaps the claim intends to convey something else entirely?
2. Claim 7 recites at least one broader range together with at least one narrower range that falls within the scope of the broader range, in the alternative, in the same claim, which is indefinite. One of ordinary skill in the art cannot make heads or tails out of the metes and bounds of the claimed subject matter.
Claim 9 recites that the composition “further comprises an oil carrier”, then the claim stipulates that “optionally, the oil carrier comprises at least one of” those recited, e.g. a seed oil, sunflower oil, etc., and then the claim provides, in the alternative, i.e. “or”, that the oil carrier contains a trans-esterified derivative of those oils recited, e.g. a seed oil, sunflower oil, etc. One of ordinary skill in the art cannot make heads or tails out of the metes and bounds of the claimed subject matter. Can the oil carrier be any oil? Is the oil carrier limited only to those expressly enumerated? Can the oil carrier comprise, for example, only sunflower oil, or only trans-esterified derivates of sunflower oil, or can the oil carrier contain both sunflower oil and a trans-esterified derivative of sunflower oil? Are trans-esterified derivatives of oils even oils? Does the oil carrier even need to contain any oil at all? Or what?
Claim 10, which depends from claim 9, stipulates in a wherein clause that “the oil carrier comprises a neutral oil”. In view of the indefiniteness issues with claim 9, just discussed, supra, one of ordinary skill in the art cannot definitively ascertain the metes and bounds of the claimed subject matter. Can the “neutral oil” be any neutral oil, or just neutral oils selected from those expressly enumerated, e.g. seed oil, sunflower oil, etc. Does claim 10 thus exclude the oil carrier from containing any non-oil components, or exclude the oil carrier from containing the trans-esterified derivatives expressly enumerated in claim 9? Or what?
Claim 14, which depends from claim 9, stipulates in a wherein clause that “the spinosyn active is less soluble in the oil carrier than in the salicylate solvent”, and that “the spinosyn active…is substantially insoluble in the oil carrier”, which renders the claim indefinite for the following reasons:
1. In light of the specification, the “salicylate solvent” can be e.g. wintergreen oil, which is an oil. One of ordinary skill in the art thus cannot definitively ascertain what constitutes the salicylate solvent and what constitutes the “oil carrier”, i.e. what oils are thus necessarily excluded from being the “oil carrier”, such as wintergreen oil. This is on top of the indefiniteness issues already discussed with respect to claim 9.
2. The term “substantially” is arbitrary, relative, and subjective, and not defined by the claim. One of ordinary skill in the art cannot definitively ascertain the metes and bounds of the claimed subject matter. For example, does “substantially insoluble” necessarily include or necessarily exclude “insoluble” (i.e. completely insoluble). What degree of insolubility constitutes being “substantially insoluble”, or, in other words, to what extent can the spinosyn active be soluble and still be “substantially insoluble”?
Claim 17, which depends from claim 1, provides in a wherein clause that “the salicylate solvent comprises at least one botanical oil and a hydrophobic extract, in each case comprising an ester”. Claim 1 appears to be limited to a salicylate compound as the solvent, and not merely an undefined solvent that happens to include a salicylate compound as but one constituent element thereof, in some undisclosed amount. Moreover, as just discussed, supra, the present invention appears to make a distinction between the “salicylate solvent” and “an oil carrier”, but if the “salicylate solvent is an oil, this distinction is blurred and confusing. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
***For examination, the salicylate solvent is being interpreted as a salicylate compound, and claim 17 is intending to merely stipulate the source from which the salicylate compound is extracted or derived. It is further noted that methyl salicylate, and not wintergreen oil, is the elected species of salicylate.
Claim 20 first stipulates in a wherein clause that “the salicylate solvent comprises…an alkyl group”, then the claim goes on to stipulate that “optionally…the salicylate comprises at least one of” those recited, e.g. methyl salicylate. One of ordinary skill in the art cannot make heads or tails out of the metes and bounds of the claimed subject matter. Can the salicylate contain any alkyl group? Or is the salicylate compound limited only to those expressly enumerated? Or what?
Claims 10, 14, and 20 are (also) indefinite for depending from an indefinite claim.
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 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.
Claims 1, 2, 7, 9, 10, 14, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bessette et al. (U.S. Patent Application Pub. No. 2003/0194454), in view of Liu et al. (Chinese Patent Application Pub. No. CN 111567530 A).
Applicant Claims
Applicant’s elected subject matter is directed to a pesticide composition comprising Spinosad, methyl salicylate, and safflower oil; wherein the Spinosad is present in the amount of 0.01-30 wt%, and wherein the ratio of the Spinosad and the methyl salicylate is 1:1 to 1:10.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Bessette et al. disclose a pesticide composition comprising e.g. a pesticide active, wintergreen oil (i.e. methyl salicylate), and safflower oil; wherein the methyl salicylate is present in the amount of e.g. 22.5 wt% (abstract; paragraphs 0013, 0027, 0029, 0031, 0039, 0041, 0046, 0055, 0056, 0059, 0061, 0069, 0085).
Liu et al. disclose a pesticide composition comprising e.g. 10 wt%, or 5-15 wt% Spinosad and an organic oil solvent; wherein Spinosad is a high-efficiency biological pesticide with very high insecticidal activity but no effect on most major beneficial insects on the target crop and also has a shorter environmental half-life..
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Bessette et al. do not explicitly disclose that the pesticide active is Spinosad. This deficiency is cured by the teachings of Liu et al.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Bessette et al. and Liu et al., outlined supra, to devise Applicant’s claimed composition.
Bessette et al. disclose a pesticide composition comprising e.g. a pesticide active, methyl salicylate, and safflower oil; wherein the methyl salicylate is present in the amount of e.g. 22.5 wt%. Since Liu et al. disclose that e.g. 10 wt%, or 5-15 wt% Spinosad, when combined with an organic oil solvent, is a high-efficiency biological pesticide with very high insecticidal activity but no effect on most major beneficial insects on the target crop and also has a shorter environmental half-life; one of ordinary skill in the art would thus be motivated to employ Spinosad as the pesticidal active compound in the Bessette et al. composition, with the reasonable expectation that the resulting composition will successfully provide high pesticidal activity but no effect on most major beneficial insects on the target crop and with minimal environmental impact.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious 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 was 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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue 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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/DAVID BROWE/Primary Examiner, Art Unit 1617
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