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
Status of Application
1. Applicants’ arguments/remarks filed 2 January 2026 are acknowledged. Claims 15-20 and 24-37 are currently pending. Claims 1-14 and 21-23 are cancelled. Claims 27-37 are newly added. Claims 15-18, 20, and 24-25 are currently amended. Claims 15-20 and 24-37 are examined on the merits within.
Withdrawn Objections/Rejections
2. Applicants’ arguments, filed 2 January 2026, with respect to the claim objections have been fully considered and are persuasive. The objection of claim 20 has been withdrawn. The 35 U.S.C. 112(a) Rejection of claims 15 and 20-26 has been withdrawn in view of the claim amendments. The 35 U.S.C 112(b) Rejection of claims 17-18 and 20 have been withdrawn in view of the claim amendments. The 35 U.S.C. 102(a)(1) Rejections have been withdrawn in view of the claim amendments.
New/Modified Rejections
Claim Rejections – 35 U.S.C. 103
3. 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.
4. Claim(s) 15-20 and 24-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (WO2021/007545) in view of Faers et al. (WO2020/225437) and Orimoto et al. (U.S. Patent Application Publication No. 2021/0230137).
Regarding instant claims 15-16 and 24, Zhang teaches a composition comprising the compound of Formula II and methods for controlling an invertebrate pest with the compound. See abstract.
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The composition may comprise an additional pest control agent such as flonicamind (B-11), spinetoram (B-13), spirotetramat (B-12), thiacloprid (B-14), flupyradifurone (B15), iprodione (B-37), fludioxonil (B-38), metalaxyl (including metalaxyl-M/mefenoxam) (B-39), thiacloprid, tetraniliprole, etc. See pages 2-4. A seed is contacted with a biologically effective amount of the compound to control the invertebrate pests. See page 7.
Regarding instant claim 17, Zhang teaches 0.001 g to 10 g per kg of seed of the compound. See page 55.
Regarding instant claims 18 and 20, the ratio of the compound of Formula II to the additional biologically active component is 1:50 to 5:1. See page 15. Since compound II is present in an amount of 0.001 to 10 g per kg of seed and in a 1:50 to 5:1 ratio, the amount of compound B would overlap the range of 0.001 g to 10 g per kg of seed.
Regarding instant claim 19, the composition additionally comprises an additional component selected from surfactants and diluents. See page 15.
Regarding instant claim 26, compositions of the disclosure have significant activity on members from the order Homoptera including: Myzus persicae Sulzer (peach-potato aphid, green peach aphid), Rhopalosiphum padi Linnaeus (bird cherry-oat aphid), Sitobion avenae Fabricius (English grain aphid), Bemisia tabaci Gennadius (tobacco whitefly, sweet potato whitefly), Bemisia argentifolii Bellows & Perring (silverleaf whitefly), etc. See pages 37-38.
Zhang does not teach a combination of three ingredients or a pesticide selected from B1 to B10.
Faers et al. teach an agrochemical composition for controlling pests. See abstract. The formulation comprises one or more active ingredients, an uptake enhancer, other formulants and a carrier. See page 3. Active ingredients include spirotetramat, spidoxamat, etc. See page 14. The formulation is applied to seeds. See page 21. The composition can be uses to treat peas. See page 23.
Orimoto et al. teach the compound of formula I as an arthropod pest control agent. See abstract. M1 and M2 contain a 2,2,3,3,3-pentafluoropropyl group and can represent (3-ethylsulfonyl-2-pyridyl)-5-(2,2,3,3,3-pentafluoropropoxy)pyrazine. See paragraphs [0475 and 0483].
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to substitute one insecticide compound for another to yield predictable results because Faers et al. teach the functional equivalency of spirotetramat and spidoxamat in agrochemical formulations to control pest by application to a seed and Orimoto et al teach the effectiveness of (3-ethylsulfonyl-2-pyridyl)-5-(2,2,3,3,3-pentafluoropropoxy)pyrazine as an arthropod pest control agent. It would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to combine more than two insecticidal ingredients because Zhang teaches a combination of two ingredients while Faers et al. teach the effectiveness of one or more insecticides; adding additional insecticides would provide greater insecticidal effect. Since the prior art makes obvious the combination of ingredients, the composition should function in the same manner.
Double Patenting
5. 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.
6. Claims 15-20 and 24-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/560899 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant invention and Application No. 18/560899 are directed to compositions comprising a combination of two compounds. Compound A of Application 18/560899 is directed to Formula 1 with various substituents. Selecting H for R1 and the first ring structure for R2 arrives at the same compound as claimed in the instant invention as Compound A. In addition, the options for compound B for both applications are the same. Thus the two are not patentably distinct. The dependent claims are included in this rejection for further narrowing compound B, and claiming amounts and ratios of each ingredient.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants’ arguments filed 2 January 2026 have been fully considered but they are not persuasive.
7. Applicants argued, “Zhang’s data undercuts Examiner’s conclusion that adding additional insecticides would provide greater insecticidal effect. Compounds with the same mode of action do not provide similar results. The instant specification shows that the combination of component A with spidoxamat can provide greater than expected pest control.”
In response to applicants’ arguments, Zhang provides data showing the combination of instantly claimed compound A with various additional compounds. It is noted that the data show various results regarding increase/decrease in activity depending on the amounts of ingredients, ratios of ingredients, and type of pest. Zhang is directed to administering the compound with “at least one additional pest control agent different from the compound.” The pest control agent can be for invertebrate pest control, insecticide, fungicide, nematocide or bactericide. See page 2. Thus Zhang is directed to providing additional effect by combining at least two agents together, whether this effect provides an enhanced effect against one pest or an enhanced effect by protecting against numerous different types of pests. Thus, it would have been well within the purview of the skilled artisan to substitute one agent for another, since Faers teach the functional equivalency of spirotetramat and spidoxamat wherein the combination of ingredients may provide an enhanced effect in which additional pest are treated against.
With regards to the data from the instant specification, it is first noted that claim 15 is directed to applying a composition to a seed comprising component A and component B. The claims do not recite amounts or ratios of the two components. The data provided from the instant specification shows that the combination of component A and component B provided the same or decreased results than expected when combined at ratios of 1.2. While the ratio remained the same, the amounts of component A and component B were decreased, resulting in a decreased effect at each amount tested. The second set of data used a ratio of 0.3. At this specific ratio, the effect observed increased over that which was expected; however the data does not show if this is statistically significant. As in the previous results, the effects observed overall decreased as the amounts of components A and B decreased. The third set of data tested ratios of 0.07 wherein an increase was observed at two values tested, however, the lowest value resulted in no effect observed. Thus it is clear that both the ratio of ingredients and the amount of each ingredient are essential to provide an increased effect. These limitations are not included in the claim and thus the claims are not commensurate in scope with the data.
Thus this rejection is maintained.
8. Applicant has requested that the provisional rejections be held in abeyance until patentable subject matter is identified. However, this request cannot be considered, especially in view that no patentable subject matter has yet been identified.
The obviousness double patenting rejections are hereby maintained.
Conclusion
9. Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
10. No claims are allowed at this time.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WORSHAM whose telephone number is (571)270-7434. The examiner can normally be reached Monday-Friday (8-5).
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, Robert Wax can be reached at 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WORSHAM/Primary Examiner, Art Unit 1615
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