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 Claims
The preliminary claim amendments filed 08 May 2024, cancelled claims 1-24 and added new claims 25-44. Claims 25-44 are pending and presented for examination herein.
Information Disclosure Statement
The information disclosure statement (IDS) filed 08/05/2024 has been considered by the Examiner. A signed and initialed copy of the IDS is included with the instant Office Action.
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 32 and 39 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.
Claims 32 and 39 are indefinite due to the recitation “substantially…” which is a relative term/degree that is not defined. The instant specification does not disclose a definition for the term “substantially”. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claims.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 25-44 are rejected under 35 U.S.C. 103 as being unpatentable over TARANTA (US 20100028295 A1, publication date of 04 February 2010, cited in IDS filed 08/05/2024) in view of KRAUSE (US 2019/0021311 A1, effective filed date of 13 July 2018, cited in IDS filed 08/05/2024) AGBAJE (US 6,451,731 B1, patent issue date of 17 November 2002, cited in IDS filed 08/05/2024) and MCKNIGHT (US 2013/0123104 A1, publication date of 16 May 2013, cited in IDS filed 08/05/2024) as evidenced by EVONIK (“AEROSIL® 200”, product information sheet, April 2021, obtained from URL: https://products-re.evonik.com/www2/uploads/productfinder/AEROSIL-200-EN.pdf, obtained on 16 December 2021).
Taranta is primarily directed towards a pesticide composition in the form of a gel material or solid material which are suitable for combating arthropod pests, in particular insects (abstract).
Regarding claims 25, 28-30, 33-36, 40-41 and 43, Taranta discloses that most of the pesticide compounds are water insoluble (paragraph [0003]). Taranta discloses a pesticide composition in the form of including a gel material which is suitable for combating arthropod pests, in particular insects (paragraph [0001]). Taranta discloses that the composition comprises at least one pesticide compound (e.g. insecticide active agent) and from 0.5 to 20% by weight of at least one superabsorbent polymer, from 5 to 94.5% by weight of at least one filler material, and from 5 to 94.5% by weight of water (e.g. solvent) (paragraph [0014]). Taranta discloses that the filler material comprises at least one material which renders the composition attractive to the pest to be controlled, which is also referred to as attractants (paragraph [0083]). Taranta discloses that attractants include glucose, fructose, sucrose and sorbitol (paragraph [0089]). Taranta discloses that the total amount of the attractant which includes sugar and sorbitol (paragraph [0089]) ranges from 1 to 80% by weight of the composition (paragraph [0094]). Taranta discloses that the composition comprises including surfactants and thickeners (paragraph [0101]). Taranta discloses that thickening agents including xanthan gum (paragraph [0142]). Taranta discloses that the composition comprises including thickeners (paragraph [0101]). Taranta discloses that thickening agents including xanthan gum and are in amounts ranging from 0.001 to 1% (paragraph [0142]). Taranta discloses that suitable pesticides include indoxacarb (paragraph [0023]).
Regarding claims 26-27, 37 and 42, Taranta discloses that the composition contains at least one hydrophobic material selected from preferably including peanut butter (e.g. protein) and is present in an amount of from 1 to 50% by weight (paragraph [0096]).
Regarding claims 31, 38 and 44, Taranta discloses that the composition comprises including surfactants (paragraph [0101]). Taranta discloses that the surfactants include anionic surfactants (e.g. emulsifier) (paragraph [0110]). Taranta discloses that the amount of the surfactant will preferably not exceed 5% by weight, based on the total weight of the composition and vary from 0.001 to 5% by weight, based on the total weight of the composition (paragraph [0139]). Taranta discloses that co-formulants including repellents (paragraphs [0101-0108]). Taranta discloses that the amount of the co-formulants range from 0.01 to 20% by weight of the total weight of the composition (paragraph [0100]). Taranta discloses that repellents including bitterness agents (e.g. bittering agent) is to avoid uptake by particularly human beings (paragraph [0145]). Taranta discloses that the composition comprises from 5 to 94.5% by weight of water (e.g. solvent) (paragraph [0014]).
Taranta does not specifically teach that the composition comprises hydrophilic fumed silica. Taranta does not specifically teach that under force the viscosity of the gel formulation decreases as the shear rate increases and that not under force the gel formulation remains intact and the viscosity remains substantially the same from about 4 °C to about 49 °C. The deficiencies are made up for by the teachings of Krause, Agbaje and McKnight.
Krause is primarily directed towards formulations comprising including agrochemically active compounds including insecticides which have high storage stability (abstract and paragraph [0075]).
Regarding claims 25, 32-34 and 39-41, Krause teaches a composition with sufficient storage stability, without any negative effects such as flocculations, sedimentations, agglomerations and crystal growth occurring (paragraph [0009]). Krause teaches that the composition contains a specific thickener mixture of at least one organic thickener based on xanthan gum and at least one inorganic thickener and agrochemically active compounds (paragraph [0010]). Krause teaches that agrochemically active compounds including insecticides (paragraph [0075]). Krause teaches that the inorganic thickener includes Aerosil ® 200 (e.g. hydrophilic fumed silica) (TABLE 1). As evidenced by Evonik, Aerosil ® 200 is a hydrophilic fumed silica (See a copy of Evonik). Krause teaches that the amount of the organic thickener (e.g. xanthan gum) is including 0.05-0.5% by weight (paragraph [0065]). Krause teaches that the amount of the inorganic thickener is including up to 5% by weight (paragraph [0068]). Krause teaches that comparative compositions that only have either the organic thickener Rhodopol ® G (e.g. xanthan) only (C2 in TABLE 1 of Krause) or the inorganic thickener including Aerosil ® 200 (e.g. hydrophilic fumed silica) only (C3 in TABLE 1 of Krause), and not have both the organic thickener and the inorganic thickener (Examples 1-7 in TABLE 1 of Krause), show a strong sediment formation which leads to unusable formulations (TABLE 2 and Comment of TABLE 2). Krause teaches that the examples 1-7 (have both the organic thickener and the inorganic thickener) have excellent storage stability, where at room temperature, they are stable for at least 2 years (paragraph [0119]).
Agbaje is primarily directed towards an emulsifiable pesticidal suspension concentrate composition (abstract).
Regarding claims 25, 32-34 and 39-41, Agbaje teaches a pesticidal composition that comprises a stabilizing amount of a suspension aid (column 4, lines 2-8). Agbaje teaches that the suspension aid improves physical stability by maintaining a stable suspension of the solid particulate pesticide in the liquid pesticide and that composition prepared without a suspension aid typically exhibit separation into two layers (column 8, lines 37-44). Agbaje teaches that the preferred suspension aids useful are those capable of providing thixotropic or shear thinning characteristics (column 8, lines 45-46). Agbaje teaches that the preferred suspension aid includes hydrophilic fumed silica (column 8, lines 52-53). Agbaje teaches that the amount of the silica is about 0.05% to about 5% (column 9, lines 6-7).
McKnight is primarily directed towards an agricultural composition for making a pesticidal composition (paragraphs [0002] and [0025]).
Regarding claims 25, 39 and 40-41, McKnight teaches a composition comprising thickening agents (paragraphs [0008] and [0021]). McKnight teaches that the thickening agent is selected from including a group including fumed silica (paragraph [0236]). McKnight teaches that the thickening agent is in an amount effective to improve the room temperature stability of the composition, typically by imparting shear thinning viscosity, to impart yield strength, or to impart shear thinning viscosity and yield strength to the composition (paragraph [0235]). McKnight teaches that the amount of the thickening agent, of fumed silica, is more typically about 0.5 to about 5 pbw (e.g. parts by weight, 0.5 to about 5% by weight) to impart shear thinning viscosity to the composition, based on 100 part by weight of the composition (paragraph [0239]). McKnight teaches a composition having pseudoplastic rheological properties that resists flow at low shear stress, but that when subjected to elevated shear stress, such as being shaken in a bottle or squeezed through an orifice, the composition flows and can be easily pumped, poured, or otherwise dispensed from a container (paragraph [0297]). McKnight teaches that the composition remains stable, including retains its rheological properties (e.g. viscosity remains substantially the same), during storage at temperatures of from -16 °C to 54 °C (paragraph [0306] and [0349]; TABLE III)
It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to produce a gel composition comprising at least one pesticide compound to combat insects (e.g. insecticide), from 5 to 94.5% by weight of at least one filler material, from 5 to 94.5% by weight of water (e.g. solvent), xanthan gum in an amount of including 0.05-0.5% by weight, an inorganic thickener including Aerosil ® 200 (e.g. hydrophilic fumed silica) in an amount of including up to 5% by weight, at least one hydrophobic material selected from preferably including peanut butter (e.g. protein), and a repellent including a bitterness agent (e.g. bittering agent); and wherein the filler material comprises at least one attractant including glucose, fructose, sucrose and sorbitol; wherein the amount of the Aerosil ® 200 (e.g. hydrophilic fumed silica) is efficient to stabilize the gel composition and to cause the gel composition to have a rheological property that allows easy dispensing from a container. The person of ordinary skill in the art would have been motivated to make those modifications to obtain an insecticide composition that is stable by including an inorganic thickener including Aerosil ® 200 (e.g. hydrophilic fumed silica) in an amount of including up to 5% by weight and optimized the amount of Aerosil ® 200 (e.g. hydrophilic fumed silica) to provide a composition that in addition to being stable, also has shear thinning properties so that the composition can be easily dispensed from a container. The person of ordinary skill in the art would have reasonably expected success because Taranta discloses that most of the pesticide compounds are water insoluble (paragraph [0003]). Taranta discloses a pesticide composition in the form of including a gel material which is suitable for combating arthropod pests, in particular insects (paragraph [0001]). Taranta discloses that the composition comprises at least one pesticide compound (e.g. insecticide active agent) and from 0.5 to 20% by weight of at least one superabsorbent polymer, from 5 to 94.5% by weight of at least one filler material, and from 5 to 94.5% by weight of water (e.g. solvent) (paragraph [0014]). Taranta discloses that the filler material comprises at least one material which renders the composition attractive to the pest to be controlled, which is also referred to as attractants (paragraph [0083]). Taranta discloses that attractants include glucose, fructose, sucrose and sorbitol (paragraph [0089]). Taranta discloses that the composition comprises including surfactants and thickeners (paragraph [0101]). Taranta discloses that thickening agents including xanthan gum (paragraph [0142]). Krause teaches that the composition contains a specific thickener mixture of at least one organic thickener based on xanthan gum and at least one inorganic thickener and agrochemically active compounds (paragraph [0010]). Krause teaches that agrochemically active compounds including insecticides (paragraph [0075]). Krause teaches that the inorganic thickener includes Aerosil ® 200 (e.g. hydrophilic fumed silica) (TABLE 1). As evidenced by Evonik, Aerosil ® 200 is a hydrophilic fumed silica (See a copy of Evonik). Krause teaches that the amount of the organic thickener (e.g. xanthan gum) is including 0.05-0.5% by weight (paragraph [0065]). Krause teaches that the amount of the inorganic thickener is including up to 5% by weight (paragraph [0068]). Krause teaches that comparative compositions that only have either the organic thickener Rhodopol ® G (e.g. xanthan) only (C2 in TABLE 1 of Krause) or the inorganic thickener including Aerosil ® 200 (e.g. hydrophilic fumed silica) only (C3 in TABLE 1 of Krause), and not have both the organic thickener and the inorganic thickener (Examples 1-7 in TABLE 1 of Krause), show a strong sediment formation which leads to unusable formulations (TABLE 2 and Comment of TABLE 2). Krause teaches that the examples 1-7 (have both the organic thickener and the inorganic thickener) have excellent storage stability, where at room temperature, they are stable for at least 2 years (paragraph [0119]). Agbaje teaches a pesticidal composition that comprises a stabilizing amount of a suspension aid (column 4, lines 2-8). Agbaje teaches that the suspension aid improves physical stability by maintaining a stable suspension of the solid particulate pesticide in the liquid pesticide and that composition prepared without a suspension aid typically exhibit separation into two layers (column 8, lines 37-44). Agbaje teaches that the preferred suspension aids useful are those capable of providing thixotropic or shear thinning characteristics (column 8, lines 45-46). Agbaje teaches that the preferred suspension aid includes hydrophilic fumed silica (column 8, lines 52-53). Agbaje teaches that the amount of the silica is about 0.05% to about 5% (column 9, lines 6-7). McKnight teaches that the thickening agent is in an amount effective to improve the room temperature stability of the composition, typically by imparting shear thinning viscosity, to impart yield strength, or to impart shear thinning viscosity and yield strength to the composition (paragraph [0235]). McKnight teaches that the amount of the thickening agent, of fumed silica, is more typically about 0.5 to about 5 pbw (e.g. parts by weight, 0.5 to about 5% by weight) to impart shear thinning viscosity to the composition, based on 100 part by weight of the composition (paragraph [0239]). McKnight teaches a composition having pseudoplastic rheological properties that resists flow at low shear stress, but that when subjected to elevated shear stress, such as being shaken in a bottle or squeezed through an orifice, the composition flows and can be easily pumped, poured, or otherwise dispensed from a container (paragraph [0297]). McKnight teaches that the composition remains stable, including retains its rheological properties (e.g. viscosity remains substantially the same), during storage at temperatures of from -16 °C to 54 °C (paragraph [0306] and [0349]; TABLE III).
Regarding the amount of “at least 3.6% by weight” recited in claims 33 and 40, Krause teaches that the amount of the organic thickener (e.g. xanthan gum) is including 0.05-0.5% by weight (paragraph [0065]). Krause teaches that the amount of the inorganic thickener is including up to 5% by weight (paragraph [0068]). Krause teaches that comparative compositions that only have either the organic thickener Rhodopol ® G (e.g. xanthan) only (C2 in TABLE 1 of Krause) or the inorganic thickener including Aerosil ® 200 (e.g. hydrophilic fumed silica) only (C3 in TABLE 1 of Krause), and not have both the organic thickener and the inorganic thickener (Examples 1-7 in TABLE 1 of Krause), show a strong sediment formation which leads to unusable formulations (TABLE 2 and Comment of TABLE 2). Therefore, the total amount of the organic thickener (e.g. xanthan gum) and the inorganic thickener including Aerosil ® 200 (e.g. hydrophilic fumed silica) is a result-effective parameter, e.g., provides storage stability of at least 2 years at room temperature, which a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of the organic thickener (e.g. xanthan gum) and the inorganic thickener including Aerosil ® 200 (e.g. hydrophilic fumed silica) combined in the ranges taught by Krause including 0.05-0.5% by weight of the xanthan and up to 5% by weight of the inorganic thickener including Aerosil ® 200 (e.g. hydrophilic fumed silica), to add to the composition in order to obtain composition that is storage stable at room temperature of at least 2 years. Thus, absent some demonstration of unexpected results from the claimed parameters, this optimization of ingredient amount would have been obvious at the time of Applicant's invention.
Regarding the limitation “not under force the insecticidal gel formulation remains intact and the viscosity remains substantially the same from about 4 °C to about 49 °C; and wherein not under force and within a temperature from about 4°C to about 49 °C, a storage modulus of the insecticidal gel formulation is higher than a loss modulus of the insecticidal gel formulation” (e.g. claims 1, 10 and 18), the composition which is prima facie obvious in light of the disclosure of Taranta and the teachings of Krause, Agbaje and McKnight, contains the same amount of xanthan gum and Aerosil ® 200 (e.g. hydrophilic fumed silica), which effects the stability of the composition and the rheological properties of the composition. Further, McKnight teaches a composition having pseudoplastic rheological properties that resists flow at low shear stress, but that when subjected to elevated shear stress, such as being shaken in a bottle or squeezed through an orifice, the composition flows and can be easily pumped, poured, or otherwise dispensed from a container (paragraph [0297]). McKnight teaches that the composition remains stable, including retains its rheological properties (e.g. viscosity remains substantially the same), during storage at temperatures of from -16 °C to 54 °C (paragraph [0306] and [0349]; TABLE III). Therefore, the composition which is prima facie obvious in light of the disclosure of Taranta and the teachings of Krause, Agbaje and McKnight, necessarily, has the same properties as the instantly claimed composition, e.g., not under force the composition remains intact and the viscosity remains substantially the same from about 4 °C to about 49 °C and not under force and within a temperature from about 4°C to about 49 °C, a storage modulus of the insecticidal gel formulation is higher than a loss modulus of the insecticidal gel formulation; absence of evidence to the contrary.
Thus, the claimed invention as a whole is clearly prima facie obvious over the teachings of the prior art.
Double Patenting
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 25-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 12,010,989 (Date of patent: 18 June 2024, hereafter '989).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 25-44, claim 1 of ‘989 recites an “insecticide gel formulation comprising an insecticide active agent, wherein the insecticide active agent is indoxacarb; sugar; sorbitol; a structuring agent comprising from about 2.5% to about 4.0% by weight of a hydrophilic fumed silica and from about 0.05% to about 0.5% by weight of a xanthan gum, based on total weight of the insecticide gel formulation; and a solvent; wherein under force the viscosity of the viscosity of the insecticidal gel formulation decreases as the shear rate increases; wherein not under force the insecticidal gel formulation remains intact and the viscosity remains substantially the same from about 4° C. to about 49° C.; and wherein not under force and within a temperature range from about 4° C. to about 49° C. a storage modulus of the insecticidal gel formulation is higher than a loss modulus of the insecticidal gel formulation.” Claim 2 of ‘989 recites that the composition “additionally comprising about 10% to about 25% by weight protein based on total weight of the insecticide gel formulation.” Claim 3 of ‘989 recites that the protein is peanut butter. Claim 4 of ‘989 recites that the composition “comprising about 0.1% to about 1.0% by weight insecticide active agent based on total weight of the insecticide gel formulation.” Claim 5 of ‘989 recites that the composition “comprising about 20% to about 30% by weight sugar and about 20% to about 30% by weight sorbitol based on total weight of the insecticide gel formulation.” Claim 6 of ‘989 recites that the composition comprises “the solvent is water and the formulation comprises about 25% to about 45% by weight water based on total weight of the insecticide gel formulation.” Claim 7 of ‘989 recites the composition “additionally comprising about 0.01% to about 2% by weight emulsifier based on total weight of the insecticide gel formulation.” Claim 8 of ‘989 recites that the composition “additionally comprising about 0.01% to about 0.1% by weight bittering agent based on total weight of the insecticide gel formulation.” Therefore, the gel formulation of claims 1-27 of’989 is the same as the instantly claimed gel formulation.
Conclusion and Correspondence
No claims are found allowable.
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/John P Nguyen/
Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
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