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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/17/2026 has been entered.
Priority
This application is claimed as being a DIV of parent Application No. 17307466 (ABN) filed 05/04/2021.
17307466 is a CON of 16097934 (PAT 11026424) filed 10/31/2018.
16097934 is a 371 of PCT/US2017/034500 filed 05/25/2017.
PCT/US2017/034500 has PRO of 62341382 filed 05/252016.
However, the claiming of the priority of the instant Application as a divisional (DIV) of parent Application No. 17307466 is improper because there was no requirement for restriction/election in parent Application No. 17307466. Thus, the instant application cannot be a divisional (DIV) of parent Application No. 17307466.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, provisional Application No(s). 62341382, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The provisional Application No(s). 62341382 does not provide support for the claimed anti-oxidant additive of dependent claims 6 and 7.
Thus, pending claims 6 and 7 of this instant application will not receive priority filing date benefit of provisional Application No(s). 62341382.
It is further noted that this instant application appears to be a CIP, rather than a DIV because the instant application contains subject matters that were not present in parent applications 16097934 and 17307466, notably coated article, “fused silica” and texturizing agent being fused silica, etc., were newly added to the disclosure (specification). Applicant is requested to make appropriate correction(s) to the continuing data in a corrected Application Data Sheet (ADS). Please submit a written request for a corrected Filing Receipt, including a properly marked-up ADS showing the changes with strike-through for deletions and underlining for additions
Accordingly, claims 1-3, 11-14, and 21-22 are afforded the effective filing date of 05/25/2016; and claims 6 and 7 are afforded the effective filing date of 05/25/2017.
Status of the Claims
This action is in response to papers filed 03/17/2026 in which claims 4-5, 8-10, and 15-20 were canceled; and claims 1 and 6 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-3, 6-7, 11-14, and 21-22 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claim Interpretation
Claims 21-22 are structured as a product-by-process due to the recitations of “the object is treated with the insecticidal composition by the method comprising spraying the insecticidal composition on a surface of the object” in claim 21 and “the object is produced by injection molding the insecticidal composition with a plastic ” of claim 22. Thus, claims 21 and 22 will be interpreted and examined for art rejections purposes (103 rejection) as product-by-process type claims. The process of how the object is treated or produced is immaterial to the patentability of the object (product) itself. MPEP 2113 (I) states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Thus, while the structure implied by the process steps should be consider when assessing patentability of product-by-process claims over the prior art; however, burden of proof is placed upon Applicant to show that the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979).
Modified Rejections
Necessitated by Applicant’s Claim Amendments
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, 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.
Claim(s) 1-3, 6-7, 11-12, 14 and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koehler et al (US 2014/0259876 A1; hereafter as “Koehler ‘876”) in view of Schneider et al (US 2015/0264923 A1) and Norton et al (US 2014/0187424 A1), and as evidenced by Valles (Journal of Polymer Science: Part A, 1965, 3: 3853-3856) and Infinitia (“Plastic materials: Types, composition and uses.” Retrieved on the internet on 3 May 2015; pages 1-5).
The product-by-process claim interpretation applies here.
Regarding claims 1, 21 and 22, Koehler ‘876 teaches a coating formulation containing pyrethroid insecticide and a polymer, wherein the formulation is coated on a surface of an object (Abstract; [0008]-[0148]). Koehler ‘876 teaches the coating formulation is applied to the object by spraying ([0100]-[0107]).
However, Koehler ‘876 does not the teach the texturizing agent, the polymer consisting of poly(isobutyl methacrylate), and the solvent consisting of acetone of claim 1.
Regarding the polymer consisting of poly(isobutyl methacrylate) of claim 1, Schneider teaches an composition comprising an insecticide active ingredient, poly(isobutyl methacrylate), and a solvent (Abstract; [0019]-[0100], [0159]-[0165], [0221]-[0226]; claims 1, 3, 4, and 5). Schneider teaches the poly(isobutyl methacrylate) acts as a thickener for increasing the viscosity of the composition ([0087]).
It would have been obvious to one of ordinary skill in the art to incorporate poly(isobutyl methacrylate) as the polymer in the formulation of Koehler ‘876, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Shneider indicated that poly(isobutyl methacrylate) acts as a thickener for increasing the viscosity of the insecticide composition, and Koehler ‘876 is drawn to providing a textured coating (Koehler ‘876: [0100]-[0107]). Thus, the use of poly(isobutyl methacrylate) as the polymer in the coating formulation of Koehler ‘876 would provide a textured coating as desired by Koehler ‘876. One of ordinary skill in the art would have reasonable expectation of success in incorporating poly(isobutyl methacrylate) as the polymer in the formulation of Koehler ‘876 because acrylic polymers were indicated by Koehler ‘876 to be suitable for used in the insecticide coating formulation (Koehler ‘876: [0107]), and poly(isobutyl methacrylate) as taught by Schneider is within the scope of the acrylics of Koehler ‘876.
Regarding the texturizing agent and the solvent of claim 1, respectively, Norton teaches a pyrethroid formulation comprising amorphous precipitated silica dioxide, a polymer including isobutyl methacrylate monomers, a solvent and a pyrethroid agent (an insecticide agent), wherein acetone was indicated as the suitable solvent ([0009], [0014], [0028], [0056], [0070], [0115], [0118], [0129], [0139], [0142]-[0143], [0156], [0159]; Table 2; claims 80, 90 and 96). Norton teaches ratio of pyrethroid compound to polymer is between about 5:1 and about 1:5 ([0007] and [0059]). Norton teaches that the ideal formulation is one that provide longer lasting or superior residual activity ([0096]). Norton teaches the pyrethroid formulation further contains tocopherol or butylated hydroxytoluene ([0014] and [0136]; claim 43).
It would have been obvious to one of ordinary skill in the art to include amorphous precipitated silica dioxide in the pyrethroid formulation of Koehler ‘876, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Norton provided the guidance to do so by teaching that amorphous precipitated silica dioxide is included in the pyrethroid formulation so as to provide the formulation with a desired thickening, as well as, silica functions as an anti-settling agent in the formulation (Norton: [0013], [0028], [0070], [0072[, [0129], [0135], [0139], [0142], [0159], [0187]-[0188]; claim 39). Thus, an ordinary artisan provided the guidance from the prior art would looked to including amorphous precipitated silica dioxide in the pyrethroid formulation of Koehler ‘876 with a reasonable expectation of obtaining a resulting pyrethroid formulation in which the silica provides the pyrethroid formulation with the desired rheology, and achieve Applicant’s claimed invention with reasonable expectation of success.
It would also have been obvious to one of ordinary skill in the art to include a solvent such as acetone in the pyrethroid formulation of Koehler ‘876, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Norton provided the guidance to do so by teaching that acetone is included in the insecticide composition as an organic solvent to help dissolve pyrethroid insecticide (Norton: [0013], [0070], [0072] and [0129]). Thus, an ordinary artisan provided the guidance from the prior art would looked to include a solvent such as acetone in pyrethroid formulation of Koehler ‘876 with a reasonable expectation of obtaining a resulting pyrethroid formulation in which acetone as an organic solvent sufficiently dissolved pyrethroid active ingredient in the formulation, and achieve Applicant’s claimed invention with reasonable expectation of success.
With respect the claimed “the poly(isobutyl methacrylate) is dissolved in the solvent [acetone]” as recited in claim 1, it is noted that the addition of acetone in the pyrethroid formulation of Koehler ‘876 to help dissolve pyrethroid insecticide per guidance from Norton would also dissolve the poly(isobutyl methacrylate) that is added to the pyrethroid formulation of Koehler ‘876 per guidance from Schneider. This is reasonably obvious because Schneider teaches that poly(isobutyl methacrylate) is soluble in organic solvents (Schneider: [0020]), and the acetone that is added in the pyrethroid formulation of Koehler ‘876 to help dissolve pyrethroid insecticide, is also an organic solvent (Norton: [0070]). There is reasonable expectation of success that the acetone that is used for dissolving pyrethroid insecticide would also dissolve poly(isobutyl methacrylate) because as evidenced by Valles, acetone is a well-established solvent suitably known for dissolving poly(isobutyl methacrylate) (Valles: pages 3853-3854).
Regarding claim 2, as discussed above, Norton provided the guidance to do so by teaching that amorphous precipitated silica dioxide is included in the pyrethroid formulation so as to provide the formulation with a desired thickening, as well as, silica functions as an anti-settling agent in the formulation (Norton: [0013], [0028], [0070], [0072[, [0129], [0135], [0139], [0142], [0159], [0187]-[0188]; claim 39).
Regarding claim 3, as discussed above, Koehler ‘876 teaches the formulation contains pyriproxyfen.
Regarding claims 6-7, as discussed above, Norton teaches the formulation contains tocopherol or butylated hydroxytoluene ([0014] and [0136]; claim 43). Thus, Norton provided the guidance for including tocopherol in the formulation of Koehler ‘876, as tocopherol can be included as a preservative in the formulation of Koehler ‘876 with a reasonable expectation that the inclusion of tocopherol would provide a desired formulation which prevent microbial or fungal degradation of the composition during storage (Norton: [0136]).
Regarding claims 11-12 and 14, Koehler ‘876 teaches the object contains a plastic material or an ovitrap (Koehler ‘876: [0013], [0016]-[0022], [0100]-[0105]). As evidenced by Infinitia, a plastic material is made from polyethylene, polypropylene, polyethylene terephthalate, polyvinyl chloride or copolymers (Infinitia: pages 2-5).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koehler et al (US 2014/0259876 A1; hereafter as “Koehler ‘876”) in view of Schneider et al (US 2015/0264923 A1) and Norton et al (US 2014/0187424 A1), and as evidenced by Valles (Journal of Polymer Science: Part A, 1965, 3: 3853-3856), as applied to claim 1 above, and further in view of Perich et al (US 5,983,557).
The object of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
However, Koehler ‘876, Schneider and Norton do not teach the article comprises a ceramic, clay or cement of claim 13.
Regarding claim 13, Perich teaches a mosquito breeding container that contains an insecticide formulation, wherein the wall of the container can formed from a material containing ceramic or plastic (Abstract; columns 2-8; claims 14 and 30).
It would have been obvious to one of ordinary skill in the art to incorporate a ceramic as the material of the object (container) of Koehler ‘876, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Perich provided the guidance to do so by teaching that aside from plastic, the object (container) of Koehler ‘876 can also be made from a ceramic material (Perich: claims 14 and 30). Thus, an ordinary artisan seeking to produce an insecticide container would have looked to material including ceramic or plastic, known to be suitable for use in forming a container, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 03/17/2026 have been fully considered but they are not persuasive.
Below is the Examiner’s response to Applicant’s arguments as they pertain to the pending 103 rejections.
Applicant argues:
“Staring with the teachings of Koehler '876, the skilled artisan would at most select and use solid grains of acrylics to produce a roughened surface (i.e., for use as a texturizing agent). Assuming arguendo the skilled artisan was to select poly(isobutyl methacrylate) as taught in Schneider et al., the skilled artisan would ultimately use the poly(isobutyl methacrylate) as solid particles (i.e., texturizing agent) and not dissolve the polymer in a solvent as provided in the present invention.
Conversely, adding acrylic grains to the insecticidal composition as taught in Koehler '876 will not dissolve but merely be dispersed in the insecticidal compositions of Koehler '876. This is consistent with the teachings of Koehler '876, where the acrylic grains are used as a texturizing agent at most and not a polymeric support for the texturizing agent. Koehler '876 does not teach or suggest the use of solvents, particularly solvents for dissolving polymers such as poly(isobutyl methacrylate). Therefore, the skilled artisan would readily recognize an insecticidal composition composed of poly(isobutyl methacrylate) dissolved in a solvent with texturizing agent will result in a different coating and product when compared to the use solid grains of acrylic (e.g., poly(isobutyl methacrylate) dispersed in a paint as taught in Koehler '876.
Norton at most teaches the skilled artisan that acetone is used as an organic solvent to help dissolve pyrethroid. However, none of the art of record teaches or suggest the use of acetone to dissolve poly(isobutyl methacrylate) and produce insecticidal compositions. Therefore, it would not have been obvious to select a solvent such as acetone to dissolve poly(isobutyl methacrylate) and use it in an insecticidal composition as recited in the present claims based on teachings of the art of record.” (Remarks, pages 5-7).
In response, the Examiner disagrees. The poly(isobutyl methacrylate) of Schneider was articulated in the pending 103 rejection as being obvious to be added as the polymer in the formulation of Koehler '876 (see 103 rejection, pages 6-7 of this office action). Thus, Applicant’s argument focusing on selecting poly(isobutyl methacrylate) of Schneider and using it as the solid grains of acrylics disclosed in Koehler '876 is not pertinent to the obviousness analysis in the pending 103 rejection.
Applicant argues that none of the art of record teaches or suggest the use of acetone to dissolve poly(isobutyl methacrylate). However, as discussed above in the pending 103 rejection, the addition of acetone in the pyrethroid formulation of Koehler ‘876 to help dissolve pyrethroid insecticide per guidance from Norton would also dissolve the poly(isobutyl methacrylate) that is added to the pyrethroid formulation of Koehler ‘876 per guidance from Schneider. This is reasonably obvious because Schneider teaches that poly(isobutyl methacrylate) is soluble in organic solvents (Schneider: [0020]), and the acetone that is added in the pyrethroid formulation of Koehler ‘876 to help dissolve pyrethroid insecticide, is also an organic solvent (Norton: [0070]). There is reasonable expectation of success that the acetone that is used for dissolving pyrethroid insecticide would also dissolve poly(isobutyl methacrylate) because as evidenced by Valles, acetone is a well-established solvent suitably known for dissolving poly(isobutyl methacrylate) (Valles: pages 3853-3854).
As a result, for at least the reasons discussed above, claims 1-3, 6-7, 11-14, and 21-22 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the pending 103 rejections as set forth in this office action.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 6-7, 11-14, and 21-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11026424.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘308 significantly overlap with the subject matter of the instant claims, i.e., both set of claims are drawn to the same insecticide compositions containing a texturizing agent such as silica, an insecticide agent such as pyriproxyfen, permethrin, or combination thereof, a polymer that is poly(isobutyl methacrylate), a solvent such as acetone, and an anti-oxidant additive.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 8841308.
Response to Arguments
Applicant's arguments filed 03/17/2026 have been fully considered but they are not persuasive.
Applicant argues that “[o]nce all remaining rejections have been withdrawn, at terminal disclaimer will be filed to address the rejection.” (Remarks, page 8).
In response, the double patenting rejection as set forth in this office action is maintained for the reason of record, and pending filing of a terminal disclaimer.
Conclusion
No claim is allowed.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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