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 .
Status of the Claims
Claims 1-20 are pending.
Election of Invention
Applicants’ election without traverse (see page 5 of Remarks filed on 03/20/2026), of the invention of Group I (claims 1-16), is acknowledged and entered.
Applicants’ election of the following species (see page 11 of Remarks filed on 04/22/2026), is acknowledged and entered:
a) broflanilide as the meta-diamide active ingredient;
b) tributyl O-acetyl citrate as the tricarboxylate solvent;
c) polyalkylene carbonate as the second solvent; and
d) an alkoxylated alcohol as the surfactant.
Because Applicants did not distinctly and specifically point out the supposed errors in the species election requirement, the election of species has been treated as an election of species without traverse (MPEP § 818.01(a)).
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected invention. Claims 8-9 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected species. Therefore, claims 1-7, 10-11 and 13-16 are subject of the Office action below.
Priority
This application, filed on 02/16/2024, is a 371 of PCT/US22/29461, filed on 05/16/2022, which claims priority to U.S. provisional application No. 63/188,897, filed on 05/14/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/20/2026, is in compliance with the provisions of 37 CFR 1.97. Accordingly, each of the information disclosure statement is being considered by the examiner.
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.
Claims 1-7 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kida of record (US Pub. No. 20210386062) in view of: 1) Takahiro of record (FR3047639A1, Machine Translation); and 2) Stridde of record (US Pub. No. 20040106523).
By way of a background, Applicants’ invention is directed to an insecticidal composition comprising a meta-diamide compound as the active ingredient (see, e.g., ¶ 0004 of the specification).
Independent claim 1 is drawn to an insecticidal composition comprising: a) a meta-diamide as an active ingredient; b) a tricarboxylate solvent; c) a second solvent; and d) a surfactant.
Similar to the Applicants’ invention (see discussions above), Kida (see, e.g., ¶s 0013-0016), teaches an insecticidal composition comprising: a) a meta-diamide, b) a solvent, c) a nonionic surfactant and d) a second solvent.
Although Kida is not explicit in teaching a solvent of instant claims in the insecticidal composition, the claimed insecticidal composition would have been obvious over Kida. This is because at the time of the instant invention, it was known in the art that a solvent of the instant claims, can increase the efficacy of an insecticide. For example:
1) Takahiro discloses that insecticide compositions comprising C1-C6 trialkyl citrate such as triethyl citrate and tributyl acetyl citrate (a tricarboxylate solvent, see, e.g., ¶s 0010), were found to exhibit excellent efficacy (see, e.g., abstract and ¶s 0006-0010).
2) Stridde discloses that the presence of alkylene carbonate such as ethylene carbonate (a second solvent, see instant claims 6-7) in agricultural formulations, increase the efficacy of herbicides and pesticides used in controlling unwanted foliage and insects in commercial agriculture (see abstract and ¶ 0013).
Accordingly, a person skilled in the art would have envisaged an insecticidal composition comprising: a) a meta-diamide, b) a tricarboxylate solvent, c) a surfactant and d) alkylene carbonate (a second solvent), in the disclosures of Kida, Stridde and Takahiro.
One skilled in the art would have considered adding a tricarboxylate solvent of Takahiro and alkylene carbonate of Stridde to a composition of Kida, with a reasonable expectation that the efficacy of an insecticide would be increased and the composition would exhibit excellent efficacy.
Obviousness requires only a reasonable expectation of success, not complete confidence in a given outcome; "at least some degree of predictability" is all that is required. M.P.E.P. § 2143.02.
The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
Therefore, claim 1 is obvious over Kida, Stridde and Takahiro.
Regarding claim 2, Kida discloses that surfactant can be in an amount of 0.01 wt% to 20 wt% (see ¶ 0052).
A prima facie case of obviousness exists in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (see MPEP § 2144.05). 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 (see MPEP § 2144.05). As recognized by MPEP § 2144.05.
In the instant case, because the claimed surfactant range overlaps or lies inside ranges disclosed by the prior art (see discussions above), a prima facie case of obviousness exists.
Furthermore, MPEP § 2144.05(II)(B), states that “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
It is noted that no criticality (emphasis added) has been demonstrated in the specification with regard to the claimed range recited in claim 2.
Regarding claims 3-5, Kida discloses that diamide can be in an amount of 0.1 wt% to 30 wt% (see ¶ 0022).
A prima facie case of obviousness exists in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (see MPEP § 2144.05). 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 (see MPEP § 2144.05). As recognized by MPEP § 2144.05.
In the instant case, because the claimed diamide range overlaps or lies inside ranges disclosed by the prior art (see discussions above), a prima facie case of obviousness exists.
Furthermore, MPEP § 2144.05(II)(B), states that “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
It is noted that no criticality (emphasis added) has been demonstrated in the specification with regard to the claimed range recited in claims 3-5.
Regarding claims 6-7, Stridde discloses ethylene carbonate (see discussions above).
Regarding claim 13, Kida discloses broflanilide (see ¶ 0027).
Regarding claim 14, the claimed ratio of 0.67:1 to 1.5:1 for the tricarboxylate:second solvent, is a that would have been routinely determined and optimized by one skilled in the art. For example:
1) Takahiro discloses that the C1-C6 trialkyl citrate can be in amount of 0.5 wt% to 20 wt% (see ¶ 0010); and
2) Stridde discloses that the alkylene carbonate can be in amount of 3 wt% to 75 wt% (see ¶ 0006)
Furthermore, MPEP § 2144.05(II)(B), states that “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
It is noted that no criticality (emphasis added) has been demonstrated in the specification with regard to the claimed ratio range recited in claim 14.
Regarding claims 15-16, Kida, Stridde and Takahiro combine to disclose a composition of claim 1 (see discussions above). Therefore, a composition of Kida, Stridde and Takahiro, must necessarily exhibit the same properties of recited 15-16.
An inherent characteristic may “be part of the prior art in an obviousness analysis even if the inherent characteristic was unrecognized or unappreciated by a skilled artisan.” Endo Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381 (Fed. Cir. 2018).
Therefore, claims 15-16, are obvious over Kida, Stridde and Takahiro.
In light of the forgoing 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. Thus, the claims fail to patentably distinguish over the state of the art as represented by the cited references.
Claims 1-7, 10-11 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kida of record (US Pub. No. 20210386062) in view of: 1) Takahiro of record (FR3047639A1, Machine Translation); and 2) Stridde of record (US Pub. No. 20040106523), as applied to claims 1-7 and 13-16 above and further in view of Desousa et al (hereinafter “Desousa”, WO2021067678A1, published 04/08/2021).
The limitation of claims 1-7 and 13-16, as well as the corresponding teachings of Kida, Stridde and Takahiro are described above, and are hereby incorporated into the instant rejections.
The invention of claims 10-11 are similar to claim 1, however, claims 10-11 differ slightly from claim 1 in that claims 10-11 require that the surfactant is an alkoxylated alcohol.
Kida, Stridde and Takahiro differ from claims 10-11 only insofar as the cited references don not combine to explicitly disclose an alkoxylated alcohol as a surfactant.
However, the claimed invention would have been obvious over Kida, Stridde and Takahiro.
This is because at the time of the instant invention, an alkoxylated alcohol was known in the art as a surfactant. For example, Desousa discloses an alkoxylated alcohol as a surfactant (see ¶ 0131).
Accordingly, a person skilled in the art would have envisaged an insecticidal composition comprising: a) a meta-diamide, b) a tricarboxylate solvent, c) an alkoxylated alcohol as a surfactant and d) alkylene carbonate (a second solvent), in the disclosures of Kida, Stridde, Takahiro and Desousa.
Therefore, claims 10-11 are obvious over Kida, Stridde, Takahiro and Desousa.
In light of the forgoing 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. Thus, the claims fail to patentably distinguish over the state of the art as represented by the cited references.
Conclusions
No claim is allowable.
If Applicants should amend the claims, a complete and responsive reply will clearly identify where support can be found in the disclosure for each amendment. Applicants should point to the page and line numbers of the application corresponding to each amendment, and provide any statements that might help to identify support for the claimed invention (e.g., if the amendment is not supported in ipsis verbis, clarification on the record may be helpful). Should the Applicants present new claims, Applicants should clearly identify where support can be found in the disclosure.
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
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM D BORI whose telephone number is (571)270-7020. The examiner can normally be reached on Monday through Friday 8:00AM-5:00PM(EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY S LUNDGREN can be reached on 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IBRAHIM D BORI/
Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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