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 .
Election/Restrictions
Applicant’s election of Group I, encompassing claims 1-14, drawn to a method for controlling a whitefly pest on a crop by applying clethodim, in the reply filed on 4/22/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant has not pointed to any errors in Examiner’s analysis of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
In the Response to Restriction Requirements as filed on 4/22/2026, applicants have amended no claims; cancelled no claims; and added no new claims. Claim 15 is withdrawn from consideration as being drawn to a nonelected invention. Therefore, claims 1-15 are currently pending and claims 1-14 are under consideration.
Priority
The instant application is a 35 U.S.C. § 371 International Application PCT/EP2022/061847, filed May 3, 2022, which claims priority to EP 21172045.3, filed May 4, 2021.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 11/03/2023 is in compliance with the provisions of 37 CFR 1.97. All references have been considered except where marked with a strikethrough. A signed copy of Form 1449 is included with this Office Action.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because: it does not meet the length requirements and does not sufficiently assist readers in deciding whether there is a need for consulting the full patent for details. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 8-10 are objected to because of the following informalities: the genus and species taxonomy of claims 8 and 9, and the order taxonomy of claim 10, should be italicized. 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 3-5 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 3 recites the limitation "the adjuvant". There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 4 is rejected as vague and indefinite for “the use”. It is unclear what the “use of at least one herbicidal safener” is meant to embrace. Is the claim intending to embrace the use of an herbicidal safener in a composition; the use of an herbicidal safener as a separate compound not part of a composition; or some other different use altogether?
Regarding claim 5, the phrase "including" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 4 and 5 broaden the scope of independent claim 1. Claim 4 recites the limitation “…further comprising the use of a least one herbicide safener” (emphasis added). Claim 1 is written in closed Markush format, while dependent claim 4 uses the open-ended “comprising”. The term “comprising” leaves the method claim open to include other unknown and unspecified elements. Therefore, claim 4 is broader than the claim from which it depends. Since claim 5 depends on claim 4 and does not resolve the issue, it is also rejected. In order to overcome the rejection, Applicant may amend claim 1 to include the term “comprising” as follows: “A method for controlling a whitefly pest on a crop plant comprising applying…”. Relevant guidance can be found in the MPEP § 2173.05(h), titled “Alternative Limitations,” which deals with claims that list alternatives.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 7-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Applebaum et al. (WO 2004/060058 A2, published July 22, 2004, cited on IDS filed on 11/03/2023)(hereinafter, ‘Applebaum’) and Kontsedalov et al. (“Toxicity of spiromesifen to the developmental stages of Bemisia tabaci biotype B”, published September 10, 2008)(hereinafter, ‘Kontsedalov’).
Regarding claim 1: Applebaum discloses the use of herbicides for inhibiting the action of eukaryotic-type Acetyl CoA carboxylase (ACCase) for controlling pests, selected from both arylphenoxypropionates and cyclohexanedione oximes. Applebaum discloses a method for controlling undesired pests by applying an effective amount of eukaryotic-type ACCase inhibitors (Abstract, claims 1, 2, 4, 6, 8). Applicant discloses that said pests are insects (claim 8) and that the ACCase inhibitor can be clethodim (page 5, line 19; claim 4). Altogether, Applebaum discloses that clethodim is an ACCase inhibitor for use to control pests.
Applebaum does not disclose that clethodim can be used to control the whitefly pest, specifically.
Kontsedalov discloses the use of spiromesifen as an insecticide against whiteflies, specifically the whitefly pest Bemisia tabaci (silverleaf whitefly), and mites, whose mode of action is through inhibition of ACCase (page 5, Introduction; page 7, Results).
Regarding claim 7: Kontsedalov teaches (Discussion, page 12), “these results suggest that spiromesifen can be used as a new and valuable tool in whitefly resistance management when combined with neonicotinoid (thiamethoxam and acetamiprid) insecticides”.
Regarding claim 8-9: Kontsedalov teaches the use of spiromesifen against silverleaf whitefly.
Regarding claim 10: Kontsedalov teaches the use of spiromesifen with cotton plants (Experimental Results, Section 2.1 – 2.8).
Regarding claim 12-13: The claim language around the rate of application of clethodim is language around amounts and concentrations. In this instance, modifying concentrations or quantities (result effective variables) would be obvious based on routine optimization (In re Aller), unless there is evidence to the contrary. Furthermore, the specification does not show that modification of said variables is critical to the claimed invention. The selection of application rates is mere optimization by modification of routine experimentation and within one skilled in the art. Therefore, the determination of workable application rates would have been well within the practice of routine experimentation by the skilled artisan. It is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228; 169 U.S.P.Q. 426 (C.C.P.A. 1971). Please see MPEP 2144.05 [R-2](II)(A) and In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). ("[W]here the general conditions of claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). Accordingly, claims 12-13 are rejected.
Therefore, it would have been prima facie obvious to a person of ordinary skill in the art, at the time before the effective filing date of the claimed the invention, to practice the disclosed utility of Applebaum with the claimed compound and pharmaceutical composition: controlling whitefly pests. A person of ordinary skill in the art would have been motivated to use the ACCase inhibitor of Applebaum (clethodim) for controlling whitefly pests because the compound is particularly known as a ACCase inhibitor. Further, Kontsedalov teaches that ACCase inhibitors can be used to kill the whitefly pest. It is no more than the simple substitution of one known element for another with the predictable result of obtaining a method to control whitefly pests.
Claim(s) 1-3 and 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Applebaum and Kontsedalov in further view of Whittington et al. (US 6,300,281 B1, published October 9, 2001)(hereinafter, ‘Whittington’).
The previous 103 rejection is incorporated herein.
Regarding claim 2: Whittington teaches compositions of matter containing (-) clethodim and methods of controlling vegetative growth using said compositions (Abstract). Whittington further teaches, in reference claim 7, an herbicidal composition comprising a biologically inert carrier, an herbicidally effective amount of (-) clethodim, further comprising one or more adjuvants.
Regarding claim 3: Whittington teaches (col 9, lines 3-6) that “useful adjuvants include, without limitation, crop oil concentrates, surfactants, fertilizers, emulsifiers, dispersing agents, foaming activators, foam suppressants, and correctives” (emphasis added) and further teaches (col 9, lines 13-18): “one or more adjuvants in the herbicidal composition is a crop oil concentrate. Crop oil concentrates are generally comprised of from 65-96% by weight of a hydrocarbon oil or solvent with the balance being a surfactant. The hydrocarbons may be petroleum or vegetable based” (emphasis added). Thus, Whittington teaches that the adjuvant is a crop oil concentrate, wherein the crop oil concentrate is comprised of vegetable-based hydrocarbons.
Regarding claim 6: Instant claim 6 is drawn to the method of claim 1, wherein the composition is “an emulsifiable concentrate diluted in aqueous medium.” Whittington teaches (col 14, lines 5-14):
Each spray mixture contained the crop oil concentrate Agridex at the concentration of 32 fluid ounces per acre. The total spray volume was 20 gallons per acre. Each spray mixture was prepared by adding, on an acre equivalent basis, half of the required water, the clethodim dose, and the adjuvant. The mixture was then brought to 100% by adding the remaining amount of water. (emphasis added)
Therefore, Whittington teaches the dilution of a clethodim dose in aqueous medium. Furthermore, regarding the instant claim terminology of “emulsifiable concentrate”, the instant specification does not provide any rationale as to why the composition has to be an emulsifiable concentrate versus another physical form. Therefore, any compositional form may satisfy the “emulsifiable concentrate” limitation of claim 6, unless there is evidence to the contrary.
Regarding claim 11: Whittington teaches (col 2, lines 13-21) that clethodim is “generally systematically applied to crop plants, such as soybeans, so that growth of grass weeds in the plot can be controlled.”
Regarding claim 14: Whittington teaches (col 9, lines 27-28; col 10, lines 43-45) that the clethodim composition is a spray mixture and that “in a preferred embodiment, the formulation is applied by spraying the formulation onto the plants.”
Claims 1, 4-5, 7-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Applebaum and Kontsedalov in further view of Li et al. (CN 114586797 A, published June 7, 2022, effectively filed December 3, 2020)(hereinafter, ‘Li’).
The first 103 rejection is incorporated herein.
Regarding claims 4 and 5: The use of herbicidal safeners in compositions, and methods directed to their use, is well known in the art. Li teaches (Claim 1) a composition comprising active ingredient C, which is selected from the ACCase inhibitor compounds of clethodim, quizalofop-p-ethyl, and haloxyfop-R-methyl. Li further teaches (claim 5) that the composition further comprises at least one safener selected from the group consisting of isoxadifen, cyprosulfamide, mefenpyr, cloquintocet, gibberellic acid, furilazole, metacamifen.
Conclusion
All claims are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUKE ALAN BORALSKY whose telephone number is (571)272-9746. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 am.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/L.A.B./Examiner, Art Unit 1624
/SUSANNA MOORE/Primary Examiner, Art Unit 1624
Prosecution Insights