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 1-2, 4-9 in the reply filed on 06/08/26 is acknowledged. The examiner disagrees with applicant’s assertion that the elected species of silica reads on the precipitated calcium carbonate claimed in claim 3 as applicant’s assert because precipitated calcium carbonate is a completely different compound from the elected silica. As such, contrary to applicant’s assertion claim 3 does not read on the elected speces and as such the claims reading on the elected species which are being examined in this office action are claims 1-2, 4-9.
Claims 3, and 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/08/26.
Claim Interpretation
The examiner is interpreting non-consumable to mean non-consumable by non-target insects/pests. The examiner is interpreting environmentally mimicking agent as any agent which mimics something in the environment where the pest to be controlled resides/is found or is something from the environment where the pest to be controlled resides/is found, e.g. powdered cellulose, sawdust, etc.
Claim Objections
Claims 1, 32, 68, and 71, etc. are objected to because of the following informalities: the components in the compositions should be listed as a), b), c), etc. not a., b., c., i., etc. as periods are not to be used in claims except for abbreviations or at the end of the claim. See MPEP 608. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4-9 are rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicants are directed to the Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112 ¶1 "Written Description" Requirement, Rev. 1, 2008; at http://www.uspto.gov/web/menu/written.pdf.
The claims broadly embrace methods of treating/controlling pests and compositions for treating pests and kits for treating pests comprising the claimed ingredients. The specification discloses examples of the pests that can be treated, e.g. roaches, termites, carpenter ants, fire ants, mosquitoes, ticks, fleas, flies, chiggers, lice, and mites. However, the specification does not specifically define pests and does not limit the pests to the insects they exemplify and as such the scope of pests as claimed would include mammalian pests (e.g. deer), rodent pests (e.g. mice, rats), viral pests, bacterial pests, etc. which are not supported by the specification and claims as originally filed.
Specifically, the specification fails to disclose any other kinds of pests besides termites, carpenter ants, fire ants and roaches, mosquitoes, ticks, fleas, flies, chiggers, lice, mites, and arachnid, crustacean pests. As the specification fails to describe the entire scope of pests which would be encompassed by the claim terms, since applicants have not specifically defined pests to exclude mammalian pests, avian pests, microbial pests, etc. and the broadest reasonable definition of pests would include these types of pests because Maine.gov (www.maine.gov/dacf/php/gotpests/whatisapest/index.shtml) defines pest as any living thing—a plant, an animal, or a microorganism—that has a negative effect on humans.
Applicants attention is also directed to In re Shokal, 113 USPQ 283 (CCPA 1957), wherein it is stated:
It appears to be well settled that a single species can rarely, if ever, afford sufficient support for a generic claim. In re Soll, 25 CCPA (Patents) 1309, 97 F2d 623, 38 USPQ 189; In re Wahlforss, 28 CCPA (Patents) 867, 117 F2d 270, 48 USPQ 397. The decisions do not however fix any definite number of species which will establish completion of a generic invention and it seems evident therefrom that such number will vary, depending on the circumstances of particular cases. Thus, in the case of small genus such as the halogens, consisting of four species, a reduction to practice of three, perhaps even two, might serve to complete the generic invention, while in the case of a genus comprising hundreds of species, a considerably larger number of reductions to practice would probably be necessary.
As stated in MPEP 2163 II: If the application as filed does not disclose the complete structure (or acts of a process) of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. The instant specification is devoid of a description for the numerous possible types of pests which are to be controlled by applicant’s methods, or compositions or kits. The specification merely discloses examples of insect pests, e.g. roaches, termites, etc. Thus, Applicants have failed to demonstrate possession of the entire scope of numerous pests which would be included with applicant’s instant claim term “pests”. Disclosure of how the compounds can be derived or formed is little more than a wish for possession; it does not satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (written description requirement not satisfied by merely providing “a result that one might achieve if one made that invention”); In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming a rejection for lack of written description because the specification does “little more than outline goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate”).
The disclosure of only a few examples of insect pests, does not constitute an adequate description to demonstrate possession of any and all pests as claimed. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail such that the Artisan can reasonably conclude that the inventor(s) had possession of the claimed invention. Such possession may be demonstrated by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and/or formulae that fully set forth the claimed invention. Possession may be shown by an actual reduction to practice, showing that the invention was “ready for patenting”, or by describing distinguishing identifying characteristics sufficient to show that Applicant was in possession of the claimed invention (January 5, 2001 Fed. Reg., Vol. 66, No. 4, pp. 1099-11).
Therefore, the breadth of the claims as reading on the entire scope of any and all pests which could controlled via the claimed methods and compositions, appears to be broader in scope than what is found in the specification as instantly filed; in view of the level of knowledge or skill in the art at the time of the invention, and the limited information provided in the specification, an Artisan of ordinary skill would not recognize from the disclosure that Applicant was in possession of the entire scope of pests, at the time the application was filed. Thus, it is concluded that written description requirement is not satisfied.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 4-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite because it recites non-consumable and non-food which are not defined by the claims or specification as originally filed and which are indefinite because different species, e.g. different pest species, have different things they can/do consume and/or are food and have different things that are not consumable and/or are not food. Thus, it is unclear what the metes and bounds are for the claims as originally filed because the examiner is unclear as to what is included in the scope of non-consumable and/or non-food and what it to be excluded by these limitations.
Claims 2, 4-9, which depend from claim 1 and do not resolve the above ambiguities are also rejected due to their dependency on claim 1.
Claims 8-9 are also indefinite because they recite “the pest” which lacks antecedent basis as there is no actual mention of any pests in claim 1 from which claims 8 and 9 depend. Specifically claim 1 merely has pesticidal powder as the intended use of the composition of claim 1 but does not disclose or claim any actual pests. Thus, claims 8-9 lack antecedent basis for this claim limitation.
Claim 9 is also indefinite because the claim is directed to a composition, a pesticidal powder, but claim 9 recites that the composition is electrostatically charged during application using a device operable to electrostatically charge the composition during application, implying method steps for using this product. Per MPEP 2173.05(p), a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). In Katz, a claim directed to “A system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data” was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. In re Katz, 639 F.3d at 1318 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited “an input means” and required a user to use the input means was found to be indefinite because it was unclear “whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.”); < Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph). Further, the composition claim also appears to be directed to limiting the device used to electrostatically charge the composition, but the claims are not directed to a device they are directed to the composition and as such the limiting of the device to be operable to…also renders the claim indefinite because it appears that the applicants are also trying to claim a device within the composition making it unclear if applicant’s are claiming the composition as recited in the preamble of the claim or if they are trying to claim a device? Merging claims for different inventions into a single claim makes the claim indefinite as to when direct infringement of the claimed composition occurs because the device has nothing to do with the composition.
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.
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) 1-2, 4-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vander Meer et al. (US20090148398) and further in view of JP H0692813 A and CN2126506Y, and as evidenced by CN 105431043 A and Blum (US5384120).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-2, 4-5, and 7, Vander Meer teaches powder/granular bait compositions for insect control by broadcasting (which is a known method of dispersing/administering powders/granules to an area) and as such Vander Meer obviously envisions dry powder formulations (formulations comprising a moisture content ranging from about 0.2% to about 5% w/w, which would include 0% moisture as 0% moisture is about 0.2% for instance) with this limitation especially since Vander Meer clearly teaches and exemplifies wherein the carrier (which reads on the claimed anticaking agent/environmentally mimicking agent and additional attractant) can be dry powdered material including the claimed silica and corncob grits (which read on the claimed corn grit(s)) which can comprise as carriers/components both of the instantly elected corn grits and silica which read on the instantly claimed anticaking and environmentally mimicking agent, etc. as elected and pesticides/insecticides which are not limited as long as they do not repel the pests and attractants are attracting to the powder pest control composition, wherein they require the presence of volatile chemical attractants, specifically pyrazine compounds, e.g. dimethyl pyrazines, which read on the claimed optional non-food attractant, e.g. dimethyl pyrazines which read on the claimed optional non-food attractant and phagostimulants for the pests desired to be controlled, e.g. solids such as sugars, fish meal, vegetable seed meals, cereals, etc. which would make them non-consumable for non-target pests (See entire document; [0007-0008]; [0011]; [0020]; [0034-0042]; Claims).
Regarding claim 8, Vander Meer does not teach wherein the pest is a termite. However, this is the intended use of the claimed composition which is taught by the prior art Vander Meer and as such there is nothing in the composition of Vander Meer which would make the composition incapable of use with termites, because for instance pyrazines are known to be active against termites as is evidenced by CN 105431043 A (see CN 105431043 A: see entire document; see paragraph beginning: The subject of the invention relates to seed treatment compositions comprising active termite killing agent compound,…pyrazine fipronil (vaniliprole)).
Regarding claim 9, Vander Meer does not teach wherein the composition is electrostatically charged. However, as evidenced by Blum silica is/carries an electrostatically charge (see abstract; Tables 1-2, etc.) and it also was known to electrostatically charge pesticidal powders during application using an appropriate device as is taught by CN2126506Y (See abstract).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claim 6, Vander Meer does not teach wherein the particle size of their broadcast powder formulations is the claimed size or wherein the composition is electrostatically charged using a device operable to electrostatically charge the composition during application. However, these deficiencies in Vander Meer are addressed by JP H0692813 A.
JP H0692813 A teaches particles used in powder formulations for termite control wherein the claimed size of 1 to 150 microns (See [0004]; paragraph section beginning: The termite control agent of the present invention uses the above borosilicate glass as fine particles having a particle size of 1 to 150 μm).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed composition by using particle sizes which are instantly claimed for the silica etc. in the powdered composition because these are known effective particle sizes for powdered control agents for controlling and/or treating termites.
It also would have been obvious to one of ordinary skill in the art to more fully electrostatically charge the powders of Vander Meer for application for controlling pests because it was known to electrostatically charge powders for pesticidal applications and because silica is known to hold an effective electrostatic charge and exhibit pesticidal activity itself, the silica would obviously be a great carrier and component to select for such formulations in combination with the corn grits in order to form the most effective powdered pest formulations. Especially since both components are known effective carriers/formulants for forming effective pesticidal powders for insect control and it is known, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It also would have been obvious to optimize the moisture content of the powdered formulations of Vander Meer in order to specifically develop powdered bait/control formulations which contain the claimed moisture levels because they want to effectively broadcast the powder/granules evenly as such controlling the moisture levels to prevent aggregation of the powder/granules to allow for effective broadcasting of uniform amounts over the areas containing the pests would have been obvious for one of ordinary skill in the art to do as it is known to optimize powder and granule formulations for effective uniform broadcasting without aggregation which would occur if there is too much moisture in the powder/granules.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
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 would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
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 1-2, 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7, and 9 of copending Application No. 17491491 in view of US200700104826. The examiner recognizes that applicants have filed the instant application as a DIV based on the election of species required in 17491491. However, the instant claims still read on and/or are anticipated by the composition claimed in copending 17491491 which is what prompts this double patenting rejection because the fipronil and silica which are claimed in the powdered composition of copending ‘491 and which have/claim the same level of moisture and the same electrostatic aspects instantly claimed and attractants which are not specifically limited in for instance claim 1 of ‘491 and as such the powders claimed in ‘491 are obvious variants of and/or anticipate the powders instantly claimed. ‘491 merely does not specifically disclose that the attractant is the claimed corn grits which is addressed by US20070014826 which teaches that corn grits are known effective carriers, etc. for roach baits/control powder compositions (See [0058-0059]). Thus, it would have been obvious to one of ordinary skill in the art that the instantly claimed application is an obvious variant of the powder pest control composition of copending ‘491 in view of US200700104826 since ‘491 is claiming the same active agents and the same carrier components and do not limit the attractants in their claimed compositions and as such anticipate the instantly claimed powders and/or the instant elected species in for instance the broadest claims of copending ‘491.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
Prosecution Insights