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 .
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.
Telephonic Election/Restrictions
Restriction is required under 35 U.S.C. 121 and 372. This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-13, drawn to a method for preventing, controlling, or inhibiting insect pests.
Group II, claim(s) 14-15, drawn to an insecticidal combination.
As set forth in Rule 13.1 of the Patent Cooperation Treaty (PCT), "the international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.” Moreover, as stated in PCT Rule 13.2, "where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features." Furthermore, Rule 13.2 defines "special technical features" as "those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art."
The inventions listed as Groups I-II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The special technical feature of Group I is a method of inhibiting insect pests in sugarcane comprising administering flupyrimin. The method of claim 1 appears to lack an inventive step in view of Huang et al. (EP 3628156 A1). Huang et al. (hereafter referred to as Huang) is drawn to controlling invertebrate pests on various plants including sugarcane, as of Huang, title and abstract. Huang teaches flupyrimin, as of page 16, line 2.
As such, Group II does not share a special technical feature with the instant claims of Group I. Therefore, the claims are not so linked within the meaning of PCT Rule 13.2 so as to form a single inventive concept, and unity between Groups I-II is broken.
Joint Inventors
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Rejoinder Information
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
The examiner notes that in this case, as applicant has elected Group I which is drawn to method claims, Group II would not appear to be eligible for rejoinder.
Telephonic Election
During a telephone conversation with Peter Jackman on 29 May 2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-15 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 112(b) – Indefiniteness
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.
Claim 9 is 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 9 recites the diamide insecticide of claim 1. There is no antecedent basis for the diamide insecticide of claim 1 because claim 1 does not recite a diamide insecticide.
For the purposes of examination under prior art, the examiner will proceed with the assumption that claim 9 depends from claim 5, which recites a diamide insecticide.
Claim Interpretation
Various claims recite the abbreviation “g ai/ha.” The examiner understands this to refer to grams of active ingredient per hectare.
Claim Rejections - 35 USC § 103 – Obviousness
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) 1-7 and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (EP 3628156 A1).
Huang et al. (hereafter referred to as Huang) is drawn to a method for controlling invertebrate pests in various plants including sugarcane, as of Huang, title and abstract. Huang teaches flupyrimin in a list of compounds to be added, as of page 16, line 2.
As to claim 1, Huang is not anticipatory because Huang teaches flupyrimin in a long list of compounds to be added and not as a single example. As such, while the prior art teaches all of the claimed components, the prior art is not anticipatory insofar as these components must be selected from various lists/locations in the prior art reference. It would have been prima facie obvious; however, to have selected the recited components from various lists/locations in the prior art reference and to have combined them together. This is because such a modification would have represented nothing more than the predictable use of prior art components according to their established functions. Combining separate prior art components (from a single prior art reference) according to known methods to yield predictable results is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
As to claim 1, the examiner notes that Huang teaches applying compounds other than flupyrimin; see the abstract of Huang. Nevertheless, the term “comprising” does not exclude additional unrecited elements. See MPEP 2111.03(I).
As to claim 2, Huang teaches the various types of recited formulations on page 28, relevant text reproduced below.
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As such, the skilled artisan would have been motivated to have formulated flupyrimin in one of the above-indicated formulation types.
As to claims 3-4, Huang teaches the following, as of page 21, relevant text reproduced below.
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The binary mixture here appears to refer to the ratio of the compound in the abstract of Huang to an additional compound, which may be flupyrimin. Regardless, this would appear to provide motivation for the skilled artisan to have optimized the dose of the flupyrimin, as the above-reproduced text would appear to indicate that flupyrimin concentration (as well as the concentration of other actives taught by Huang) is a result-effective variable.
In the alternative as to claims 3-4; generally, differences in concentration between the prior art and claimed invention will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. See MPEP 2144.05(II)(A). In this case, no evidence of the criticality of the flupyrimin concentration has been provided. Additionally, where 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. See MPEP 2144.05(II)(A). In this case, the general conditions of administration of flupyrimin to sugarcane have been taught by the prior art. As such, it would not have been inventive for the skilled artisan to have discovered the optimum or workable ranges of flupyrimin by routine experimentation.
As to claim 5, Huang teaches other agents such as pyrethroids and neonicotinoids as of page 12, paragraph 0066-0067.
As to claim 6, Huang teaches chlorantraniliprole on page 15, lines 30-35.
As to claim 7, Huang teaches contacting with the locus of a plant on page 30 lines 45-50.
As to claim 12, Huang teaches Sphenophorus levis on page 10 line 50.
As to claim 13, Huang teaches administration in the case where insects are resistant to various insecticides, as of Huang, page 12, relevant text reproduced below.
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The skilled artisan would have understood imidacloprid to have been a neonicotinoid, as of Huang, page 14, lines 47-52. As such, the skilled artisan would have been motivated to have administered to have controlled insects resistant to imidacloprid, as imidacloprid is a neonicotinoid and Huang teaches administration to control insects resistant to neonicotinoids.
Claim(s) 4-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (EP 3628156 A1) in view of Xu et al. (CN 103030473 A).
As an initial matter, Xu et al. (CN 103030473 A) has been written in Chinese. The examiner has provided an English language translation as of Google Patents at https://patents.google.com/patent/CN103030473A/en?oq=CN+103030473+ accessed on 4 June 2026.
Huang is drawn to a method for controlling invertebrate pests (e.g. insects) in sugarcane, comprising administering flupyrimin. See the rejection above over Huang by itself.
For the purposes of this rejection, the examiner understands that Huang fails to teach chlorantraniliprole.
Xu et al. (hereafter referred to as Xu) is drawn to chlorantraniliprole as a sugarcane insecticide, as of Xu, page 1, title and abstract.
It would have been prima facie obvious for one of ordinary skill in the art to have combined the flupyrimin of Huang with the chlorantraniliprole of Xu to have predictably had an insecticidal effect for the growing of sugarcane. Huang is drawn to flupyrimin as an insecticide that may be used for sugarcane cultivation. Xu teaches chlorantraniliprole as an insecticide used for sugarcane cultivation. As such, the skilled artisan would have been motivated to have combined the flupyrimin of Huang with the chlorantraniliprole of Xu in order to have predictably had an insecticidal effect to allow for sugarcane to grow with a reasonable expectation of success. Combining prior art elements (e.g. flupyrimin, of Huang, and chlorantraniliprole, as of Xu) according to known methods to yield predictable results (an insecticidal effect in the cultivation of sugarcane) is prima facie obvious. See MPEP 2143, Exemplary Rationale A. See also MPEP 2144.06(I).
As to claims 4-6, the chlorantraniliprole of Xu is understood to read on the additional requirements of this claim.
As to claim 7, Huang teaches contacting with the locus of a plant on page 30 lines 45-50.
As to claim 8, the claim requires a particular range of ratios between flupyrimin and chlorantraniliprole. The prior art does not explicitly teach said ratios. Nevertheless, where 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. See MPEP 2144.05(II)(A). In this case, the general conditions of using flupyrimin and chlorantraniliprole as insecticides for sugarcane cultivation have been taught by the prior art. As such, it would not have been inventive to have discovered the optimum or workable ranges of the ratio of these components via routine experimentation. Additionally, generally, differences in concentration between the claimed invention and prior art will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. See MPEP 2144.05(II)(A). In this case, no evidence of criticality appears to have been provided. The examiner additionally notes here that after KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. As such, even if, purely en arguendo, the ratio of one type of insecticide to another is not a result-effective variable, the skilled artisan would still have been motivated to have optimized the ratio of flupyrimin and chlorantraniliprole because the skilled artisan would have been motivated to have used both of these ingredients as insecticides.
Additionally as to claim 8, the end of MPEP 2144.05(II)(A) states that it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. The examiner takes the position that changes in the ratio of flupyrimin to chlorantraniliprole are changes in proportion that would not sustain a patent.
As to claims 9-11, these claims recite particular ranges of administered concentrations in grams of active ingredient per hectare. While the prior art does not appear to teach these values explicitly, this is insufficient to overcome the applied obviousness rejection. Generally, differences in concentration between the claimed invention and prior art will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. See MPEP 2144.05(II)(A). In this case, no evidence of criticality appears to have been provided. The examiner understands that the units of grams of active ingredient per hectare reflect the concentration of active ingredient applied; as such, the above section from the MPEP is relevant. Additionally, where 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. See MPEP 2144.05(II)(A). In this case, the general conditions of using flupyrimin and chlorantraniliprole as insecticides for sugarcane cultivation have been taught by the prior art. As such, it would not have been inventive to have discovered the optimum or workable ranges of the concentrations of each ingredient in grams of active ingredient per hectare via routine experimentation. Additionally, the end of MPEP 2144.05(II)(A) states that it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. The examiner takes the position that changes in the amount of active ingredient applied in grams per hectare are changes in degree that would not sustain a patent.
Note Regarding Comparative Testing in Specification
The examiner briefly reviewed comparative testing in the specification and has provided the following comments regarding the comparative testing in the specification.
Applicant appears to have compared flupyrimin with controls of thiamethoxam and ethiprole. See the instant specification as of e.g. page 40, table reproduced below.
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In order to overcome a prima facie case of obviousness based upon unexpected results, applicant must compare the claimed invention to the closest prior art. See MPEP 716.02(e). It is unclear if the comparative examples here are the closest subject matter to actually exist in the prior art. This is especially the case regarding ethiprole. As best understood by the examiner, flupyrimin, which is in the claimed invention, is a neonicotinoid insecticide, as of the instant specification on page 6 lines 5-20. The examiner understands this to mean that flupyrimin has a structure and function similar to that of nicotine and acts on nicotinic acetylcholine receptors, as of the instant specification on page 6 line 6. In contrast, ethiprole is a GABA (i.e. gamma amino butyric acid) antagonist; see Seevers et al. (US 2016/0270405 A1), paragraph 0083. As such, a comparison of the application of flupyrimin to ethiprole does not appear to be a comparison to the closest prior art. This is because, as best understood by the examiner, the closest prior art would be a method of administering a different neonicotinoid rather than an insecticide of a completely different class.
Additionally, the burden is on applicant to establish that results are unexpected and significant, and applicant has the burden to explain proffered data. See MPEP 716.02(b)(I & II). In this case, the above-reproduced table is unclear. This is because the table contains two separate columns labeled % Control 30 DAA, which have different results. The table also contains two separate columns labeled % Control 60 DAA, which have different results. It is unclear how the testing between these two columns differed. In view of this, the examiner takes the position that the above-reproduced table fails to show unexpected results to rebut the prima facie case of obviousness.
Additional Relevant Prior Art
As an additional relevant reference, the examiner cites Horikoshi et al. (WO 2020/256091 A1). Horikoshi is drawn to flupyrimin containing formulations for treatment of rice fields.
As best understood by the examiner, Horikoshi is drawn to rice and does not teach using flupyrimin to treat sugarcane. As such, for at least this reason, the examiner does not consider Horikoshi to be the closest prior art. Nevertheless, Horikoshi is a relevant reference as Horikoshi teaches flupyrimin in the title and abstract, and this is the same insecticide as recited by instant claim 1.
Relevant Copending Application – No Double Patenting
The examiner notes US application serial number 18/704,200. This application has the same inventor as the instant application and is drawn to similar subject matter. Nevertheless, the examiner decided not to reject the instant application over the claims of the ‘200 application on the grounds of provisional non-statutory double patenting. The examiner presents the following rationale in support of this position.
The claims of the ‘200 application are drawn to a method of controlling infestation of corn insects by applying flupyrimin to a plant. The examiner understands the phrase “corn insects” to refer to insects present in a corn field. As such, the examiner understands the claims of the ‘200 application to be drawn to applying the flupyrimin to corn plants (i.e. maize plants), though the flupyrimin may also affect plants that grow with or near corn plants, such as soybean.
The claims of the ‘200 application differ from the instant claims because the claims of the ‘200 application are drawn to application to corn, whereas the instant claims are drawn to application to sugarcane.
Instant claim 12 lists various types of insect pests of sugar cane, and instant claim 2 of the ‘200 application lists various types of insect pests of corn. These appear to be different insect types. As such, the types of insect pests of corn appear to differ from those of sugar cane.
Additionally, as best understood by the examiner, sugarcane and corn are generally grown in different climates. As best understood by the examiner, in the United States, corn production is predominant in states such as Iowa which have hot summers and cold winters, whereas sugarcane production is predominant in states such as Florida which are warm year-round. See e.g. Baccum et al. (“An Overview of Florida Sugarcane” https://growables.net/informationVeg/documents/SugarCOverviewUF.pdf accessed 15 June 2026, originally published August 2009, pages 1-8), which teaches the following as of page 2, left column, relevant text reproduced below.
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As such, the above-reproduced text indicates that sugarcane must be grown in an area that does not experience cold weather and frosts. This is clearly not an issue with corn because corn is grown in states with very cold winters. As such, the skilled artisan would have expected that this difference in the climate where sugarcane is grown as compared with the climate where corn is grown would have led to sugarcane having different pests as compared with corn.
In view of these differences, the instant claims have not been rejected on the grounds of provisional non-statutory double patenting over the claims of the ‘200 application.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ISAAC SHOMER whose telephone number is (571)270-7671. The examiner can normally be reached 7:30 AM to 5:00 PM Monday Through Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at (571)272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ISAAC . SHOMER
Primary Examiner
Art Unit 1612
/ISAAC SHOMER/ Primary Examiner, Art Unit 1612
Prosecution Insights