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 .
Current Status
This action is responsive to the amended claims of 05/10/2026. Claims 1-2, 4, 9, and 11-18 are pending and have been examined on the merits.
Election/Restrictions
Applicant’s election of the species recited in amended claim 1 in the reply filed on 05/10/2026 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)).
Note, Applicant does state that the inventive concept lies in the species now recited in claim 1. However, Applicant did not address the merits on which the election requirement was made: i.e., the compounds are not regarded as being of similar nature due to differences in structure and not all belonging to recognized class of chemical compounds. Examiner maintains that the genera of active ingredient insecticides and carrier/solvents still are not of similar nature due to differences in structure and belonging to different chemical classes (e.g., methoxyfenozide is a Ecdyson receptor agonist while tolfenpyrad is a mitochondrial electron transport inhibitor).
For all other genera (c. and e. of claim 1), the claims only recite one species or a few species of similar nature. Thus, the election requirement is withdrawn from c. and e. of claim 1.
Applicant did not elect a single disclosed species of active ingredient insecticide, so Examiner chose methoxyfenozide, recited in claim 4, to begin the search. Applicant did not elect a single disclosed species of carrier/solvent, so Examiner chose methyl ester of palm oil, recited in claim 9, to begin the search.
A search for the above species retrieved prior art (see attached search notes). Thus, the search will not be extended to further species in this action, in line with Markush search practice. The search reads on all pending claims.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in India on 05/27/2021. It is noted, however, that applicant has not filed a certified copy of the IN202121023694 application as required by 37 CFR 1.55.
The effective filing date is 05/27/2022.
Claim Objections
Claims 1-2, 4, 9, and 11-18 are objected to because of the following informalities. Appropriate correction is required.
Claim 1: please add a space between the two words “atleast” in line b. Dependent claims 2, 4, 9, and 11-18 are objected to since they do not fix the issue.
Claim 2: please add “the” before “formulation excipient”. Each instance of the components of the composition should be preceded by either “a” (first time recited) or “the” (second+ times recited).
Claim 4: please add “and” before the last insecticide listed.
Claim 9: replace “oil phase as a carrier/solvent” with “the carrier or solvent” to improve claim grammar and consistency with claim 1.
Claim 12: please replace the comma after “ethoxylates” with “or” to improve grammar.
Claim 13: please add “a” before “Preparation”.
Claim Rejections - 35 USC § 112
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 1-2, 4, 9, and 11-18 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 1 recites in c. “(Modified trisiloxane)”. It is unclear if the limitation in parentheses is required or is optional. Thus, the metes and bounds of the claim are undefined rendering the claim indefinite. If applicant intends to claim the agent in c. as only “polyalkyleneoxide modified heptamethyl trisiloxane” please strike “(Modified trisiloxane)”. Dependent claims 2, 4, 9, and 11-18 are also rejected since they do not fix the issue.
Claim 1 recites a.- e. with no conjunction(s) such as “and”, “or”, or “and/or”. Therefore, it is unclear if each of a-e are required or if each of a-e is optional. Thus, the metes and bounds of the claim are undefined rendering the claim indefinite. Dependent claims 2, 4, 9, and 11-18 are also rejected since they do not fix the issue.
Claim 2 recites a)-h) with no conjunction(s) such as “and”, “or”, or “and/or”. Therefore, it is unclear if each of a)-h) are required or if each of a)-h) is optional. Thus, the metes and bounds of the claim are undefined rendering the claim indefinite.
Claim 9 recites the carrier is selected from “methyl ester of palm oil; or blend of methyl ester of palm oil, and sunflower oil”. The inconsistent use of punctuation (semicolon vs. comma) and conjunctions (or vs. and), leaves the scope of the claim undefined. Is the blend of methyl ester of palm oil a blend with any other vegetable oil or is the blend specifically made with sunflower oil? The comma before sunflower oil makes this unclear. Thus, the metes and bounds of the claim are undefined rendering the claim indefinite.
Claims 11 and 13-18 each recite a formulation excipient; however, each claim lacks the appropriate article “a” before the recited excipient. As drafted, the claims recite “wherein [excipient] is selected from” and do not specifically call these excipients as formulation excipients to explicitly put them in the scope of parent claim 1. The use of “wherein [excipient]” implies a reference back to parent claim 1, as if “the” preceded each excipient. Thus, the parent claim should recite each of these excipients; however, claim 1 does not recite these excipients. Therefore, the excipients: co-solvent (claim 11), dispersing agents (claim 13), stabilizer (claim 14), antifoaming agent (claim 15), anti-freezing agent (claim 16), preservative (claim 17), and buffering agent (claim 18), each lack antecedent basis in the claims. Thus, the metes and bounds of the claim are undefined rendering the claim indefinite.
Claim 13 recites “dispersing agents are Preparation of condensed naphthalene sulfonate, and Propoxylated Ethoxylated copolymer monoalkylether”. “Preparation” implies more than one ingredient; however, the comma preceding the second dispersing agent makes it unclear if both the naphthalene and monoalkylether are required in the “preparation” or if only the naphthalene is required and the monoalkylether is a separate dispersing agent. Thus, the metes and bounds of the claim are undefined rendering the claim indefinite.
Claim 13 recites “(ethylhexanol)”. It is unclear if the limitation in parentheses is required or if it is merely exemplary of the copolymer monoalkylether. Thus, the metes and bounds of the claim are undefined rendering the claim indefinite.
Claim 16 recites “glycols – monoethylene glycol…”. Use of the dash after glycol followed by species of glycols is indefinite because it is unclear if the species after the dash are required or are merely exemplary of glycols. Thus, the metes and bounds of the claim are undefined rendering the claim indefinite.
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 11 and 13-18 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 11 and 13-18 recite excipients which are not recited in and are not explicitly within the scope of parent claim 1 (see ¶23). Thus, these claims do not properly further limit claim 1. 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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 4, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HE (CN 102696603). A machine translation of HE is relied upon.
HE teaches an emulsifiable concentrate (i.e., an oil dispersion) comprising 7% spinetoram, 28% methoxyfenozide, 9% emulsifying agents, 3% stabilizer triphenyl phosphite, 15% co-solvent dimethylformamide, and 38% solvent oil S-180 (Pg. 34 ¶59). These ingredients, in view of the above 112b (¶20-21), read on parts a., b., and e. of instant claim 1. The concentrations read on those in instant claim 1 and the cosolvent, emulsifying agent, and stabilizer of instant claim 2. Methoxyfenozide is recited in instant claim 4.
HE also teaches a microemulsion (i.e., oil dispersion) of 16% spinetoram, 4% methoxyfenozide, 24% emulsifying agents, 15% cyclohexanone cosolvent, 5% solvent, and 1% stabilizer epichlorohydrin (Pg. 37 ¶65). These ingredients, in view of the above 112b (¶20-21), read on parts a., b., and e. of instant claim 1. The concentrations read on those in instant claim 1 and the cosolvent, emulsifying agent, and stabilizer of instant claim 2. Methoxyfenozide is recited in instant claim 4. Cyclohexanone is recited in instant claim 11.
HE teaches the compositions are synergistic (Pg. 50 ¶91).
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, 4, 9, 11-13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over HE (CN 102696603) in view of: NAULT (Pest Management Science, 2013, 39, 841-849) and MOHSIN (Palm Oil Developments, 2017, 66, 32-38). A machine translation of HE is relied upon.
Determining the Scope and Contents of the Prior Art:
HE teaches synergistic compositions (Pg. 50 ¶91) comprising 1-16% spinetoram, 2-28% methoxyfenozide, 10-38% carrier oil including xylene, 9-24% emulsifying agents, 5-15% co-solvent cyclohexanone, and 1-3% stabilizer (Pg. 34 ¶59, Pg. 37 ¶65, Pg. 38 ¶67). The compositions are taught as microemulsions and concentrates (Pg. 34 ¶59, Pg. 37 ¶65, Pg. 38 ¶67), due to the presence of carrier oil, these qualify as oil dispersions. The composition may further comprise the dispersant alkyl naphthalene sulfonate, the emulsifier sorbitan ester ethoxylates, silicone-based antifoaming agents, and the anti-freezing agent propylene glycol (Pg. 16 ¶20).
NAULT teaches methylated crop oils and penetrating surfactants are recommended for application of spinetoram to improve efficacy (Pg. 841 Left col. ¶2). Application of spinetoram formulated with 0.25% v/v of the penetrating surfactant polyalkyleneoxide modified heptamethyl trisiloxane Silwet (Pg. 843 Table 1) was more efficacious than spinetoram without Silwet (Pg. 846 Fig. 3A).
MOHSIN teaches methyl ester palm oil as carrier solvent in agrochemical compositions enhances pesticide efficacy and overcomes disadvantages of traditional petroleum-based solvents (Pg. 37 Conclusions) such as xylene (Pg. 33 Col. 1 last ¶).
Ascertaining the Differences Between the Prior Art and the Claims at Issue:
HE does not teach the super wetting-spreading-penetrating agent is polyalkyleneoxide modified heptamethyl trisiloxane nor the carrier/solvent is palm oil.
NAULT and MOHSIN do not teach synergistic oil dispersion of spinetoram comprising the instantly recited concentrations of each of a-e.
Resolving the Level of Ordinary Skill in the Pertinent Art:
The level of ordinary skill in the art is represented by an artisan who has sufficient background in the development of agrochemical compositions of spinetoram and possesses the technical knowledge necessary to make adjustments to the ingredients to optimize/enhance the formulation. Said artisan has also reviewed the problems in the art regarding synergistic spinetoram compositions and understands the solutions that are widely-known in the art.
Considering Objective Evidence Present in the Application Indicating Obviousness or Nonobviousness:
The instant claims are prima facie obvious in light of the combination of references HE in view of: NAULT and MOHSIN.
Regarding claims 1-2, 4, 11, HE teaches (above) the instant spinetoram, methoxyfenozide, and cyclohexanone. The artisan would be motivated to replace the xylene carrier oil of HE with methyl ester palm oil since methyl ester palm oil overcomes disadvantages of xylene and increases pesticide efficacy, as recognized by MOHSIN. The artisan would have a reasonable expectation of success since methylated crop oils are recommended for spinetoram, as recognized by NAULT.
The artisan would be motivated, with an expectation of success, to add polyalkyleneoxide modified heptamethyl trisiloxane Silwet to the composition of HE since such penetrating surfactant increased the efficacy of spinetoram, as recognized by NAULT.
Regarding concentrations of claims 1-2, the composition of HE teaches (above) the instant concentrations of spinetoram (1-16% significantly overlaps 2-20%), methoxyfenozide (2-28% falls in 0.1-30%), carrier oil (10-38% falls in 10-80%), emulsifying agents (9-24% falls in 5-30%), co-solvent (5-15% falls in 2-15%), and stabilizer (1-3% falls in 0.1-4%).
The artisan would be motivated to optimize the concentrations of the other ingredients in the oil dispersion: the polyalkyleneoxide modified heptamethyl trisiloxane, the dispersing agent, and the anti-freezing agent.
MPEP 2144.05(II)(A) provides guidance about the routine optimization of prior art conditions: "Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.").”
Furthermore, MPEP 2144.05(I) provides guidance about overlapping ranges: “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”
In the instant case, NAULT teaches 0.25% v/v polyalkyleneoxide modified heptamethyl trisiloxane Silwet (Pg. 843 Table 1). The weight percent of the dispersing agent and anti-freezing agent is simple subtraction. These concentrations are considered to overlap with/approach the instantly claimed 1-10%, 1-20%, and 0.5-10%, respectively. The artisan would recognize the concentration of each ingredient as a result-effective variable, i.e., a variable that achieves a recognized result, since concentration inherently effects the strength of the ingredient in the composition. Since “concentration” is recited in the MPEP, the concentrations may be optimized by routine experimentation. Absent any evidence demonstrating otherwise, the determination of the optimum or workable concentrations given the guidance of the prior art would have been generally prima facie obvious to and well within the practice of the artisan.
Regarding claims 9, 12-13, and 16, the artisan would be motivated to incorporate the further formulation excipients naphthalene sulfonate, sorbitan ester ethoxylates, silicone-based defoamers, and propylene glycol to act as a dispersing agent, emulsifier, antifoaming agent, and anti-freezing agent, respectively. The artisan would have a reasonable expectation of success since HE specifically teaches these chemicals as exemplary species of such functional formulation excipients (Pg. 16 ¶20) and states that such compositions are synergistic (Pg. 50 ¶91).
Claims 1-2, 12, 14-15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over HE (CN 102696603) in view of: NAULT (Pest Management Science, 2013, 39, 841-849) and MOHSIN (Palm Oil Developments, 2017, 66, 32-38) as applied to claims 1-2 above, and further in view of: CASANA (WO 2010/099965), WU (WO 2011/139647), and BROWN (US 2020/0107542). A machine translation of HE is relied upon.
Determining the Scope and Contents of the Prior Art:
HE in view of: NAULT and MOHSIN teach the limitations of claims 1-2, see ¶36 above.
CASANA teaches an oil dispersion comprising polyethoxylated sorbitan derivatives, antioxidants, and pH regulators (Pg. 36 claim 1) further comprising spinetoram (Pg. 40 claim 8). The oil dispersions show excellent storage stability and biological efficacy (Pg. 1 Abstract). Exemplary dispersions comprise Tween 80 & 85 as sorbitan derivatives, butyl hydroxyl toluene (BHT) as an antioxidant, and citric acid as a pH regulator (Pg. 25 Table 1 & Pg. 34 Example 19). Vegetable oil-based solvents are prone to degradation (Pg. 21 Lines 23-24).
WU teaches agrochemical oil dispersions can be stabilized against particle sedimentation by use of silica and a polymer capable of hydrogen bonding (Pg. 1 Lines 1-3). A preferred polymer capable of hydrogen bonding is polypropylene glycol (Pg. 19 claim 3).
BROWN teaches polydimethylsiloxane (PDMS) can aid in spreading and deposition of agricultural compositions (Pg. 1 ¶5) comprising methylated palm oil (Pg. 1 ¶8). The addition of PDMS reduces surface tension enhancing droplet adhesion (Pg. 1 ¶3).
Ascertaining the Differences Between the Prior Art and the Claims at Issue:
The combination of HE, NAULT and MOHSIN do not teach the species of claims 14-15 and 17-18.
CASANA, WU, and BROWN do not each, individually, teach synergistic oil dispersions of spinetoram comprising the concentrations of each of a-e and each of the instant formulation excipients.
Resolving the Level of Ordinary Skill in the Pertinent Art:
The level of ordinary skill in the art is represented by an artisan who has sufficient background in the development of spinetoram agrochemical compositions and possesses the technical knowledge necessary to make adjustments to the ingredients to optimize/enhance the formulation. Said artisan has also reviewed the problems in the art regarding synergistic spinetoram compositions and understands the solutions that are widely-known in the art.
Considering Objective Evidence Present in the Application Indicating Obviousness or Nonobviousness:
The instant claims are prima facie obvious in light of the combination of references HE in view of: NAULT and MOHSIN as applied to claims 1-2 above, further in view of: CASANA, WU, and BRO.
Regarding claims 1-2 and 12, the artisan would be motivated to add sorbitan ester ethoxylates as emulsifying agents to the composition made obvious by HE, NAULT, and MOHSIN since both HE (Pg. 16 ¶20) and CASANA (Pg. 36 claim 1) teach such agents as exemplary/preferred and compatible with spinetoram. Further, the compositions of CASANA are taught as stable and efficacious (Pg. 1 Abstract), thus, the artisan would have a reasonable expectation of success in maintaining/improving the stability/efficacy of the obvious composition.
Regarding claims 1-2, 14, and 16, the artisan would be motivated to add the stabilizer silica and polypropylene glycol to the composition made obvious by HE, NAULT, and MOHSIN since WU teaches such agents protect against particle sedimentation in oil dispersions (Pg. 1 Lines 1-3). While WU does not teach polypropylene glycol as an anti-freezing agent, HE teaches propylene glycol as such (Pg. 16 ¶20). Thus, the artisan would have a reasonable expectation of success in stabilizing and ensuring the oil dispersion does not freeze by addition of silica and glycols.
Regarding claims 1-2 and 15, the artisan would be motivated, with a reasonable expectation of success, to add the antifoaming agent PDMS to the composition made obvious by HE, NAULT, and MOHSIN to aid in spreading and deposition of the composition by reducing surface tension and increasing adhesion, as recognized by BROWN. While BROWN does not call PDMS an antifoaming agent, HE teaches silicone-based antifoaming agents (Pg. 16 ¶20). Thus, the artisan would expect the PDMS to also act as an antifoaming agent – i.e., by reducing surface tension.
Regarding claims 1-2 and 17-18, the artisan would be motivated, with a reasonable expectation of success, to add BHT and citric acid to the composition made obvious by HE, NAULT, and MOHSIN to act as an antioxidant (preservative) and regulate pH (buffering agent), respectively, as recognized by CASANA. Since CASANA teaches vegetable oils are prone to degradation (Pg. 21 Lines 23-24) and since the obvious composition utilizes palm oil (a vegetable oil), the artisan would expect the BHT to preserve the oil’s integrity. Further, the artisan would expect regulation of pH to help in stability since CASANA teaches excellent storage stability (Pg. 1 Abstract).
Further regarding claim 2, for each of the above formulation excipients, the instant claims recite specific concentration ranges. By the same logic applied in ¶36, the concentrations of such could be optimized by routine experimentation and absent evidence to the contrary would be obvious to the artisan.
Conclusion
Claims 1-2, 4, 9, and 11-18 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA ELIZABETH BELL whose telephone number is (703)756-5372. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/S.E.B./Examiner, Art Unit 1625
/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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