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 without traverse of Group I (claims 1-22 and 24) in the reply filed on 3/12/2026 is acknowledged. Claim 23 has been canceled.
Specification
The use of terms including SASOL LPA 210, Tomadol 23-5, and CAB-O-SIL, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware of in the specification."
Claim Objections
Applicant is advised that should claim 14 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 24 is objected to because of the following informalities: The claim reads as if it is recites an animal of claim 1, however, claim 1 merely recites the intended use of "a pour-on formulation for controlling pests on animals" but does not explicitly include "an animal" in any of the claimed limitations. For purposes of compact prosecution, claim 24 is being interpreted as “A kit for controlling pests in animals, the kit comprising the pour-on formulation of claim 1.”
Appropriate correction is required.
Claim Interpretation
Regarding claims 13-15 and 17, these claims recite a fumed metal oxide. Claims 14, 15, and 17 further narrow the scope to specify that the fumed metal oxide is a fumed silicon oxide. While silicon oxide is not typically classified as a metal oxide, for purposes of compact prosecution, fumed silicon oxide/fumed silica will be understood to satisfy the claim limitation of fumed metal oxide.
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 5, 7-9, 12, 15-17, and 22 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.
Regarding claim 5, the term “highly refined” used to describe mineral oil is not defined in the claims nor the specification. Mineral oil, by definition, is refined from crude petroleum oil, and mineral oil formulations vary based on the petroleum crude oil and the refining methods used. [USDA Mineral Oil Identification of Petitioned Substance pg. 3]. The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014). In the instant case, neither the claims nor specification provides an objective definition for “highly refined”, rendering unclear the degree of refinement denoted by the term. Thus, the scope of the term is not understood when read in light of the specification.
For purposes of compact prosecution, the claim is being interpreted such that any mineral oil will meet the recited limitation.
Regarding claims 7 and 8, the term “naphthenics” is not defined in the claims nor the specification. The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. In the instant case, it is unclear whether “naphthenics” is referring to naphthenes, naphethenic oils, or naphthenic acids.
For purposes of compact prosecution, the claim is being interpreted such that “naphthenics” refers to “naphthenes”.
Regarding claim 9, claim 9 contains the trademark/trade name SASOL LPA 210. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a mixture of hydrotreated isoparaffins and naphthenics and, accordingly, the identification/description is indefinite.
Regarding claim 12, claim 12 contains the trademark/trade name Tomadol 23-5. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe an ethoxylated alcohol oil-soluble surfactant and, accordingly, the identification/description is indefinite.
Regarding claim 15, it is unclear whether the “/” in “hydrophobic/hydrophilic” is meant to indicate “and/or” or “or” or “and”. For purposes of compact prosecution, the term is being interpreted to mean “hydrophobic and/or hydrophilic”.
Regarding claim 16, this claim recites the limitation "amount of fumed silicon oxide". There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 17, claim 17 contains the trademark/trade name CAB-O-SIL. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe fumed silica and, accordingly, the identification/description is indefinite.
Regarding claim 22, this claim is indefinite because it recites incompatible ranges. As a result, it is unclear which limitations are correct and/or intended. Claim 22 uses the term “comprising”, which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986). In the instant case, the minimum amounts of the mixture of hydrotreated isoparaffins and naphthenics, oil-soluble surfactant, and fumed silicon oxide add up to the total amount of about 86.5% by weight of the formulation. However, the claim recites indoxacarb in an amount ranging from about 5% to about 50% by weight. If the ranges recited in parts (b), (c), and (d) are correct, then the upper limit of indoxacarb present in the formulation is about 13.5% instead of about 50% as written.
For purposes of compact prosecution and applying art, the limitations will be interpreted as they are written in the claim.
Furthermore, the claim language is indefinite because the term “about” associated with the upper and lower amounts of each of these claim limitations is ambiguous. It is not clear whether “about” is some minor measurement uncertainty (e.g., the precision associated with tablet production, such as within 0.5%) or just a broader estimate of how close the dosages are, which can have higher variance (such as ± 10, ± 20, or ± 50% of each value). A brief review of the patent and patent application literature for defined meanings of “about” identified a very wide range of meanings. US 8,461,129 (col. 5, lines 43-47) indicates “about” has the meaning of within 10%, preferably within 5%, more preferably within 1%, and most preferably within 0.5%. US 6,579,851 (col. 9, lines 55-56) defines “about” as ±10% of a dosage unit. US 2013/0041004 A1 (paragraph 0030) defines “about” as ±10%, preferably ±5%. US 2013/0084243 A1 (paragraph 0032) defines “about” to encompass variations of ±15%. US 2013/0096073 A1 (paragraph 0033) defines “about” as 20% greater than to 20% less than the indicated value. US 2011/0028412 A1 (paragraph 0035) defines “about” to mean ±50% of the indicated amount. US 5,558,071 (col. 5, lines 14-15) indicates that “about” includes from one half to twice the value it qualifies (i.e., from -50% to +100% of the numerical value). Thus, “about" has a widely varying meaning in patent specifications, including ±0.5%, ±1%, ±5%, ±10%, ±15%, ±20%, ±50%, and even -50/+100% of a numerical value it qualifies, as well as other meanings. It is not clear which of these meanings, or some other meaning, is meant by the claimed “about” limitations.
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 18-21 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 18-21 merely recite an intended use that does not change the patentability of the product and has no limiting effect on the structure of the claimed invention. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 10, 13-14, 18-21, and 24 /are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN105010383A (published 11/4/2015), cited on the 7/1/2024 IDS.
Regarding claims 1-3, CN’383 teaches an insecticidal composition comprising indoxacarb (reads on voltage-dependent sodium channel blocker), mineral oil (reads on paraffinic oil), dispersant (reads on surface acting agent), and thickener (reads on rheology modifier), wherein a mixture of fipronil and indoxacarb comprises 30% by weight of the composition [claim 7]. CN’383 further teaches that the weight ratio of fipronil to indoxacarb may be 1:15 to 3.2:1 [claim 3]. Accordingly, the percentage weight of the indoxacarb in the insecticidal composition taught by CN’383 is from 7.14% to 28.12% by weight. ((15/16) x 30 = 28.12%; (1/4.2) x 30 = 7.14%)). As the prior art teaches a range that falls within the claimed range of about 5% to about 50% by weight of indoxacarb, the prior art anticipates the claimed invention.
While CN’383 does not explicitly teach a pour-on insecticidal composition for controlling pests in animals, this limitation in the preamble of the instant claims is merely intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. MPEP 2111.02. In the instant case, the preamble does not add a structural distinction to the claim. As the prior art application anticipates the claimed structure, the limitations of the claim have been met.
Regarding claim 5, CN’383 teaches that pesticidal composition may comprise mineral oil [claim 7]. As discussed above in a 112(b) rejection, the instant claim limitation of “highly refined” is indefinite, and under the broadest reasonable interpretation, is met by the recitation of mineral oil in CN’383 since by definition all mineral oil is refined.
Regarding claim 10, CN’383 teaches that the dispersant may comprise sulfonyl succinate (reads on oil-soluble surfactant) [claim 7].
Regarding claims 13 and 14, CN’383 teaches that the thickener may comprise of gaseous silica (reads on fumed silicon oxide) [claim 7].
Regarding claims 18-21, these claims depend from claim 1 (said discussion above being incorporated herein in its entirety) and further recite intended uses of the claimed composition that do not change the patentability of the composition. The additional limitations recited in claims 18-21 do not add any structural distinction to these claims. Therefore, claims 18-21 are anticipated by the teachings of CN’383 and the composition of CN’383 would be capable of controlling the claimed pests on cattle.
Regarding claim 24, CN’383 teaches the pour-on formulation of claim 1 (see discussion above). The only claimed structure in the kit is the composition, and thus the limitations have been met since the claimed composition is anticipated by the prior art.
Claim(s) 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN105010383A (published 11/4/2015), cited on the 7/1/2024 IDS, as evidenced by Cabot (2021)
Regarding claim 15, claim 15 depends from claim 13 (said discussion above being incorporated herein in its entirety), and further recites the limitation wherein the fumed metal oxide is hydrophobic/hydrophilic fumed silicon oxide. Untreated fumed silica is hydrophilic [Cabot pg. 3]. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
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.
Claim(s) 4, 11, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN105010383A (published 11/4/2015), cited on the 7/1/2024 IDS, as applied to claims 1-3, 5, 10, 13-14, 18-21, and 24 above.
Regarding claim 4, CN’383 teaches an insecticidal composition wherein a mixture of fipronil and indoxacarb comprises 30% by weight of the composition [claim 7]. CN’383 further teaches that the weight ratio of fipronil to indoxacarb may be 1:15 to 3.2:1 [claim 3]. Accordingly, the percentage weight of the indoxacarb in the insecticidal composition taught by CN’383 is from 7.14% to 28.12% by weight. ((15/16) x 30 = 28.12%; (1/4.2) x 30 = 7.14%)). This range overlaps with the instant claimed range of about 5% to about 15% by weight of indoxacarb. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, the claimed range is made obvious by the range taught in CN’383.
Regarding claim 11, CN’383 teaches that the dispersant, which may comprise of sulfonyl succinate (reads on oil-soluble surfactant) may be present in the pesticidal composition in the amount of 0.3% to 10% by weight. This range overlaps with the instant claimed range of about 0.5% to about 2% by weight. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, the claimed range is made obvious by the range taught in CN’383.
Regarding claim 16, CN’383 teaches that fumed silicon oxide (gaseous silica) may be present in the composition in the amount of 0.2% to 5% [claim 7]. This range overlaps with the instant claimed range of about 1% to about 5% by weight fumed silicon oxide. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, the claimed range is made obvious by the range taught in CN’383.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN105010383A (published 11/4/2015), cited on the 7/1/2024 IDS, as applied to claim 1 above, and further in view of Fuchs et al. (US 10,864,195), patented 12/15/2020.
Regarding claim 6, claim 6 depends from claim 1 (said discussion above being incorporated herein in its entirety), and further recites the limitation wherein the paraffinic oil is an isoparaffin. CN’383 does not explicitly teach that the paraffinic oil may be an isoparaffin. Fuchs et al. teaches a localized topical formulation (i.e. pour-on) comprising a pesticide for use on domestic animals. Fuchs further teaches that the formulation may comprise a veterinarily suitable carrier comprising solvents, including isoparaffin [col. 17 line 57]. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). Furthermore, Fuchs teaches teaches mineral oil as a suitable equivalent carrier as isoparaffin for use in a pesticide formulation [col. 17 line 57]. Where there is art recognized equivalence, it would be prima facie obvious to substitute one for the other. See MPEP 2144.06. Thus, it would be obvious to one having ordinary skill in the art, before the effective filing date of the claimed in invention, to modify the teachings of CN’383 with that of Fuchs to select isoparaffin as suitable carrier for a pour-on pesticide formulation.
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN105010383A (published 11/4/2015), cited on the 7/1/2024 IDS, as applied to claim 1 above, and further in view of SASOL (2013).
Regarding claim 7, claim 7 depends from claim 1 (said discussion above being incorporated herein in its entirety), and further recites the limitation wherein the paraffinic oil is a mixture of hydrotreated isoparaffins and naphthenics. CN’383 does not explicitly teach that the paraffinic oil may be a mixture of hydrotreated isoparaffins and naphthenics. The SASOL Technical Data Sheet for LPA 210 Solvent teaches that SASOL LPA 210 is a mixture of hydrotreated isoparaffins and naphthenics and may be used as a pesticide carrier [SASOL pg. 1]. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). Thus, it would be obvious to one having ordinary skill in the art, before the effective filing date of the claimed in invention, to modify the teachings of CN’383 with that of SASOL to select a mixture of hydrotreated isoparaffins and naphthenics as a suitable carrier for a pour-on pesticide formulation.
Regarding claim 8, claim 8 depends from claim 7 and 1 (said discussion above being incorporated herein in its entirety), and further recites the limitation wherein the amount of hydrotreated isoparaffins and naphthenics in the formulation ranges from about 85% to about 95% by weight. CN’383 further teaches an embodiment of the insecticide wherein the solvent is present in the amount of 30.91% to 94.09% (100 – 0.07 – 0.84 – 5 = 94.09; 100 – 29.16 – 29.92 – 10 = 30.91) [0042]. This amount falls within the instant claimed range of about 85% to about 95% by weight of hydrotreated isoparaffins and naphthenics. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, the claimed range is made obvious by the range taught in CN’383.
Regarding claim 9, claim 9 depends from claims 7 and 1 (said discussion above being incorporated herein in its entirety), and further recites the limitation wherein the paraffinic oil is SASOL LPA 210. CN’383 does not explicitly teach that the paraffinic oil may be SASOL LPA 210. The SASOL Technical Data Sheet for LPA 210 Solvent teaches that SASOL LPA 210 may be used as a pesticide carrier [SASOL pg. 1]. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). Thus, it would be obvious to one having ordinary skill in the art, before the effective filing date of the claimed in invention, to modify the teachings of CN’383 with that of SASOL to select SASOL LPA 210 as a suitable carrier for a pour-on pesticide formulation.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN105010383A (published 11/4/2015), cited on the 7/1/2024 IDS, as applied to claims 1 and 10 above, and further in view of WO 2014/064681, published 5/1/2014.
Regarding claim 12, claim 12 depends from claim 10 (said discussion above being incorporated herein in its entirety), and further recites the limitation wherein the surface acting agent is Tomadol 23-5. CN’383 teaches does not explicitly teach a pesticide formulation wherein the surface acting agent (i.e. surfactant) is Tomadol 23-5. WO’681 teaches a pesticide composition and discloses Tomadol 23-5 as a suitable surfactant for use in the composition [pg. 10 line 1]. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). Thus, it would be obvious to one having ordinary skill in the art, before the effective filing date of the claimed in invention, to modify the teachings of CN’383 with that of WO’681 to select a Tomadol 23-5 as a suitable surfactant for a pour-on pesticide formulation.
Claim(s) 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN105010383A (published 11/4/2015), cited on the 7/1/2024 IDS, as applied to claim 1, 13 and 14 above, and further in view of Cabot (2021).
Regarding claim 15, claim 15 depends from claim 13 (said discussion above being incorporated herein in its entirety), and further recites the limitation wherein the fumed metal oxide is hydrophobic/hydrophilic fumed silicon oxide. CN’383 does not explicitly teach that the fumed metal oxide is hydrophobic or hydrophilic. The CAB-O-SIL Fumed Silica Agriculture and Lawn Care Application Overview (hereinafter Cabot) teaches that CAB-O-SIL fumed silicas function as a rheology modifier of liquids [pg. 5]. Furthermore, CAB-O-SIL products are available with differing degrees of hydrophilicity and hydrophobicity [pg. 6], for example, CAB-O-SIL-TS720 being hydrophobic [pg. 6]. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). It would be obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to select a suitable CAB-O-SIL product as a rheological modifier for its hydrophobicity or hydrophilicity.
Regarding claim 17, claim 17 depends from claim 14 (said discussion above being incorporated herein in its entirety), and further recites the limitation wherein the fumed metal oxide is CAB-O-SIL. CN’383 does not explicitly teach the use of CAB-O-SIL as a rheology modifier for use in a pesticidal composition. Cabot teaches that CAB-O-SIL fumed silicas function as a rheology modifier of liquids [pg. 5]. Cabot further teaches that fumed silica may be mixed with water- or oil-based crop protection compositions [pg. 6] for purposes such as pest control [pg. 5]. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. Thus, it would be obvious to one having ordinary skill in the art, before the effective filing date of the claimed in invention, to modify the teachings of CN’383 with that of Cabot to select CAB-O-SIL as a suitable rheology modifier for a pour-on pesticide formulation.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN105010383A (published 11/4/2015), cited on the 7/1/2024 IDS, in view of SASOL (2013).
Regarding claim 22, this claim recites limitations that have been discussed as either anticipated or made obvious above.
Regarding (a), CN’383 teaches an insecticidal composition comprising indoxacarb in an amount ranging from 7.14% to 28.12% by weight [claim 7]. As the prior art teaches a range that falls within the claimed range of about 5% to about 50% by weight of indoxacarb, the prior art makes obvious the claimed limitation.
Regarding (b), CN’383 does not explicitly teach that the paraffinic oil may be a mixture of hydrotreated isoparaffins and naphthenics in an amount ranging from about 85% to about 95% by weight. The SASOL Technical Data Sheet for LPA 210 Solvent teaches that SASOL LPA 210 is a mixture of hydrotreated isoparaffins and naphthenics and may be used as a pesticide carrier [SASOL pg. 1]. The selection of a known material based on its suitability for its intended use is prima facie obvious. CN’383 further teaches an embodiment of the insecticide wherein the solvent is present in the amount of 30.91% to 94.09% (100 – 0.07 – 0.84 – 5 = 94.09; 100 – 29.16 – 29.92 – 10 = 30.91) [0042]. This amount falls within the instant claimed range of about 85% to about 95% by weight of hydrotreated isoparaffins and naphthenics. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, the claimed range is made obvious by the range taught in CN’383.
Regarding (c), CN’383 teaches that the dispersant may comprise sulfonyl succinate (reads on oil-soluble surfactant) [claim 7].
Regarding (d), CN’383 teaches that fumed silicon oxide (gaseous silica) may be present in the composition in the amount of 0.2% to 5% [claim 7]. This range overlaps with the instant claimed range of about 1% to about 5% by weight fumed silicon oxide. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, the claimed range is made obvious by the range taught in CN’383.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA LYNN CHI whose telephone number is (571)272-0026. The examiner can normally be reached Monday - Friday 9 am-5pm ET.
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/AMANDA LYNN CHI/ Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613