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. Receipt of the Request for Continued Examination (RCE) under 37 C.F.R. 1.114, the Amendment and Applicants’ Arguments/Remarks, all filed 4 August 2026 are acknowledged.
Claims 15-20 and 24-42 are currently pending. Claims 1-14 and 21-23 are cancelled. Claims 38-42 are newly added. Claims 15-16 are currently amended. Claims 15-20 and 24-42 are examined on the merits within.
Continued Examination Under 37 C.F.R. 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4 August 2026 has been entered.
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 24-42 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, 24 and 38-42, 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. The ratio of the compound of Formula II to the additional biologically active component is 1:50 to 5:1. See page 15.
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 used 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. It would have been obvious to modify the ratio of ingredients based on the teachings of Zhang to optimize the formulation to achieve the desired pest controlling effect.
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 24-42 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 4 August 2026 have been fully considered but they are not persuasive.
7. Applicants argued, “Claims 15-16 are amended to recite the weight ratio of Component A to Component B from 100:1 to 1:100. The table is reproduced to show synergy.”
In response to applicants’ arguments, Zhang teaches a ratio of the compound of Formula II to the additional biologically active component is 1:50 to 5:1. See page 15. This falls within the claimed range.
With regards to the data from the instant specification, the data shows that at a ratio of 1.2:1 (wherein component A is provided at 0.375 and component B at 0.312) the observed effect is the same as the additive effect, i.e., no synergy exists. However, synergy exists at the same ratio wherein the values of A and B are different. Thus it is clear that both the ratio of ingredients and the amount of each ingredient are essential to provide the synergist effect. Independent claims 15-16 do not include the amounts of ingredients, only a ratio. Thus the claims are not commensurate in scope with the data resulting in synergistic effects.
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.
Correspondence
9. No claims are allowed at this time.
10. 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).
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/JESSICA WORSHAM/Primary Examiner, Art Unit 1615
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