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 .
This is the first action on the merits.
Claims 1-19 are pending and under consideration.
Claim Objections
Claim 3 is objected to because of the following informalities: the phrase, “A process of using [of] pelargonic acid” is not grammatically correct. Appropriate correction is required.
Claims 12 and 17 are objected to because of the following informalities: the phrase, “(B) at least one additional pesticidally active agent” should be replaced with “at least one additional pesticidally active agent (B)” or removing (B) from the claim. The same applies to (A) and (B) in claim 17. Appropriate correction is required.
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 1-19 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 pre-AIA the applicant regards as the invention.
Claim 1 is rendered indefinite as the preamble of the claim recites a method of controlling arthropod pests on a perennial crop, however the steps of the method in the body of the claim is directed toward applying pelargonic acid to a “plant susceptible to attack by a pest.” One would not understand if the limitation is directed towards a perennial crop or a plant susceptible to attack, and therefore the meaning of the step is unclear. Thus, claims 1 and 4-19 are rejected.
Claim 1 is rendered indefinite for the phrase a “plant susceptible to attack by a pest.” The instant specification does not provide a definition as to which plants are susceptible to attack by a pest. Therefore, under broadest reasonable interpretation, any plant reads on the claimed limitation as any plant could be considered susceptible to attack by arthropod pests. Thus, claims 1 and 4-19 are rejected.
Claim 2 lacks antecedent basis for the term “plant” cited in the claim.
Claim 11 lacks antecedent basis for the term “the oilseed rape plant” cited in the claim.
Claim 3 is drawn to a “A process for using,” which renders the claim indefinite as there are no actionable steps provided in the claimed process. The claim merely recites the use of the pelargonic acid to control and/or prevent damage by infestation of arthropod pests, but it does not recite any active steps to limit how the use is practiced. See MPEP 2173.05(q).
Regarding claim 4, the phrase “the pest comprises” is indefinite since the term pest is singular.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1, 2, 4, 6, 11 and 13-16 recites a broad recitation, and the claim also recites “preferably…,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of the fourth paragraph of 35 U.S.C. 112:
Subject to the [fifth paragraph of 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim is drawn to applying simultaneously or sequentially components A and B. This is not further limiting since these are the only two options for applying A and B. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 10 and 17 are rejected under 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim is drawn to applying to a plant, which is broader than claim 1. Note also the 112(b) rejection regarding plant. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 8-12 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(1) as being anticipated by De Saegher (WO 2020104645) as evidenced by Mansson et al. (Entomology Experimentalis et Applicata, 2006, 121, 191-201, cited on the IDS).
De Saegher’s general disclosure relates to applying a pelargonic acid (C9:0 fatty acid) or salt thereof to plants (see abstract).
Regarding claims 1-3, De Saegher anticipates applying a composition comprising pelargonic acid (also known as C9:0 fatty acid) to a plant susceptible to attack by a phytopathogenic fungi pest (see pg. 8, ¶ 4). As De Saegher discloses the application of the pelargonic acid to the plants as also recited in the claim, the recitation in the preamble would be the implicit outcome as evidenced by the Mansson reference, which teaches pelargonic acid as an antifeedant. As noted in the 112b rejection above, claim 1 recites both “perennial crop” and “plant susceptible to attack by a pest” and thus the meaning of the limitation is indefinite. As defined in the claim interpretation section, prior art reciting a plant could read on the claim under broadest reasonable interpretation. Furthermore, claim 3 is rejected since said claim is indefinite, see the 112b rejection above, however the reference teaches perrenial plants, e.g., grapes, coffee and fruit trees (see pg. 13, ¶ 20, 21 and 26).
Regarding claim 8, De Saegher anticipates the pelargonic acid composition further comprises a carrier (see pg. 8, ¶ 7).
Regarding claim 9, De Saegher anticipates the pelargonic acid composition is applied as spray onto the plant parts (see De Saegher pg. 8, ¶ 4) and this reads on “foliar” as it is defined in the instant specification as the application to the foliage of the plant (see specification pg. 33, lines 31-30).
Regarding claim 10, De Saegher anticipates the plant exhibits low phytotoxicity following application of the pelargonic acid composition (see pg. 8, ¶ 6).
Regarding claim 11, De Saegher anticipates the pelargonic acid was applied at a concentration between 0.00001%-5% (see pg. 8, ¶ 4) which converts to 100-50,000,000 g/ha. The prior art range encompasses the claimed range of 300-6,500 g/ha and therefore reads on the limitation.
Regarding claim 12, De Saegher anticipates applying additional active agents choline caprylate or choline caprate (see pg. 8, ¶ 7).
Thus, said claims are anticipated.
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 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(a) 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 under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Davies (Publication No. WO 2021113419, date of publication 6/10/2021) in view of or as evidenced by Mansson et al. (Entomology Experimentalis et Applicata, 2006, 121, 191-201, cited on the IDS).
The general disclosure of the Davies reference relates to an insecticidal composition to control pests (see abstract).
Regarding claims 1-3, Davies teaches applying an active ingredient comprising pelargonic acid (see pg. 10, line 17) to crops, trees, fruits, cereal plants (see pg. 15, ¶ 3) to control arthropod pests, of which acari insects such as mites are taught (see pg. 19, ¶ 1). As noted in the 112b rejection above, claim 1 recites both “perennial crop” and “plant susceptible to attack by a pest” and thus the meaning of the limitation is indefinite. As defined in the claim interpretation section, prior art reciting a plant could read on the claim under broadest reasonable interpretation. Furthermore, as Davies suggests the application of the pelargonic acid to the plants as also recited in the claim, the preamble’s recitation would be the implicit outcome. As noted in the 112b rejection above, claim 3 is indefinite as there are no actual steps limiting the process.
However, Davies does not teach combining the pelargonic acid pesticide with the method of controlling arthropod pests on plants in one singular embodiment and one would not immediately envisage pelargonic acid.
Though it would be obvious to one of ordinary skill in the arts before the effective filing date to combine the pelargonic acid pesticide to the pest control method as taught in Davies. One would be motivated to do so because Davies suggests the use of pelargonic acid in one example and the use of pesticides against arthropod pests in another example. As such, the ordinary artisan would have found it obvious to combine these elements as Davies suggests an embodiment wherein one or more of the suggested active ingredients can be used in a composition as an insect repellant (see pg. 40, ¶ 7-8 and pg. 41, ¶ 1-2).
Regarding claim 4, Davies teaches the pest is Tetranychus urticae (see pg. 24, ¶ 7-8).
Regarding claim 5, Davies teaches the pelargonic acid is applied to coffee (see pg. 62, ¶ 1-2) and the pest is Hypothenemus hampei (see pg. 20, ¶ 2).
Regarding claim 6, Davies teaches the pelargonic acid is applied to fruit trees (see pg. 62, ¶ 3) and the pest is Otiorhynchus spp. (see pg. 19, ¶ 26).
Regarding claim 7, Davies teaches the pelargonic acid is applied to grapes (see pg. 62, ¶ 2) and the pest is Panonychus spp. (see pg. 24, ¶ 6).
Regarding claim 8, Davies teaches the pelargonic acid is applied together with a carrier (see pg. 43, ¶ 2).
Regarding claim 9, Davies teaches the pelargonic acid is applied as foliar spray (see pg. 50, ¶ 1).
Regarding claim 10, Davies teaches the plants exhibit low phytotoxicity after application of Formula One (which can contain an additional active ingredient such as the suggested pelargonic acid) and the application of the formula can present low toxicity effects, if not beneficial effects on the plants (see pg. 49, ¶ 2).
Regarding claim 11, Davies teaches the pelargonic acid is applied at a concentration of 0.0001-5000 g/ha (see pg. 25, ¶ 2) which is within the claimed concentration range of 300-6,500 g/ha.
Regarding claim 12, Davies teaches applying additional active agents (see pg. 3, ¶ 3).
Regarding claims 13-16, Davies teaches an applying an additional active agent of a biological control agent (see pg. 15, ¶ 2).
Regarding claim 17-19, Davies teaches applying the pesticidal Formula One with an additional active ingredient(s) (which can contain an additional active ingredient such as the suggested pelargonic acid) to plants sequentially or simultaneously (see pg. 38, ¶ 3 and pg. 40, ¶ 6). As noted in the 112d rejection above for claim 17, the claim limitation recites a more general “plants” from a more specified “perennial crop” or “plants susceptible to attack by a pest.” See also the first 112(b) rejection for the phrase “plants susceptible to attack by a pest.”
Therefore, it would be obvious to one of ordinary skill in the arts before the effective filing date to combine the pelargonic acid pesticide to the pest control method as taught in Davies. One would be motivated to do so because Mansson teaches pelargonic acid as a pesitice and Davies suggests the use of pelargonic acid in one example and the use of pesticides against arthropod pests.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18835030.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-13)
Wherein the pest is a member of Diabrotica speciosa (claim 4)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 8-11)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 12-19)
Copending Application No. 18835030 claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-18)
Wherein the pest is a member of Diabrotica speciosa (claim 6)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 11-14)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 15-18)
As such, the instant application and the copending application no. 18835030 both are directed towards significant overlapping subject matter and are rendered obvious over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of copending Application No. 18835031 in view of Davies (Publication No. WO 2021/113419, date of publication 6/10/2021).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-13)
Wherein the pest is a member of Diabrotica speciosa (claim 4)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 8-11)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 12-19)
Copending Application No. 18835031 claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-27)
Wherein the pest is a member of Diabrotica speciosa (claims 4, 6-11, 13)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 18-21)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 22-27)
Wherein the additional pesticide is a biological control agent Bacillus firmus (claims 23-24)
Copending Application No. 18835031 does not claim:
Wherein the plant is a perennial crop, see the first 112(b) rejection above for the inconsistency in claim 1.
Davies teaches perennial crops (a nuts, canola and tea, see pg. 62, ¶ 1-4).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to substitute the perennial crop as taught in Davies for the vegetable plant as taught in ‘031. One would be motivated to do so because Davies teaches that the pesticide can be applied to both perennial crops and vegetable plants (see pg. 62, ¶ 1-4). As the two plants are both exemplified as plant loci for the pesticidal application, they could be considered functional equivalents and it would only be a matter of simple substitution to replace one with another.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18835032 in view of Davies (Publication No. WO 2021/113419, date of publication 6/10/2021).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-13)
Wherein the pest is a member of Diabrotica speciosa (claim 4)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 8-11)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 12-19)
Copending Application No. 18835032 claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-13)
Wherein the pest is a member of Diabrotica speciosa (claim 4)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 5-8)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 9-13)
Copending Application No. 18835032 does not claim:
Wherein the plant is a perennial crop, see the first 112(b) rejection above for the inconsistency in claim 1.
Davies teaches perennial crops (a nuts, canola and tea, see pg. 62, ¶ 1-4).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to substitute the perennial crop as taught in Davies for the sorghum (cereal) plant as taught in ‘032. One would be motivated to do so because Davies teaches that the pesticide can be applied to both perennial plants and cereal plants (see pg. 62, ¶ 1-4). As the two plants are both exemplified as plant loci for the pesticidal application, they could be considered functional equivalents and it would only be a matter of simple substitution to replace one with another.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18835027 in view of Davies (Publication No. WO 2021/113419, date of publication 6/10/2021).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-13)
Wherein the pest is a member of Diabrotica speciosa (claim 4)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 8-11)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 12-19)
Copending Application No. 18835027 claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-14)
Wherein the pest is a member of Diabrotica speciosa (claim 4)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 5-8)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 9-14)
Copending Application No. 18835027 does not claim:
Wherein the plant is a perennial crop, see the first 112(b) rejection above for the inconsistency in claim 1.
Davies teaches perennial crops (a nuts, canola and tea, see pg. 62, ¶ 1-4).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to substitute the perennial crop as taught in Davies for the cereal plant as taught in ‘027. One would be motivated to do so because Davies teaches that the pesticide can be applied to both perennial plants and cereal plants (see pg. 62, ¶ 1-4). As the two plants are both exemplified as plant loci for the pesticidal application, they could be considered functional equivalents and it would only be a matter of simple substitution to replace one with another.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18835036 in view of Davies (Publication No. WO 2021/113419, date of publication 6/10/2021).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-13)
Wherein the pest is a member of Diabrotica speciosa (claim 4)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 8-11)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 12-19)
Copending Application No. 18835036 claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-13)
Wherein the pest is a member of Diabrotica speciosa (claim 4)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 5-8)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 9-13)
Copending Application No. 18835036 does not claim:
Wherein the plant is a perennial crop, see the first 112(b) rejection above for the inconsistency in the claim 1.
Davies teaches perennial crops (a nuts, canola and tea, see pg. 62, ¶ 1-4).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to substitute the perennial crop as taught in Davies for the rice plant as taught in ‘036. One would be motivated to do so because Davies teaches that the pesticide can be applied to both perennial crops and rice plants (see pg. 62, ¶ 1). As the two plants are both exemplified as plant loci for the pesticidal application, they could be considered functional equivalents and it would only be a matter of simple substitution to replace one with another.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18835032 in view of Davies (Publication No. WO 2021/113419, date of publication 6/10/2021).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-14)
Wherein the pest is a member of Diabrotica speciosa (claim 4)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 5-8)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 9-14)
Copending Application No. 18835032 claims are directed towards:
Method of applying pelargonic acid to a plant for controlling pests (claims 1-13)
Wherein the pest is a member of Diabrotica speciosa (claim 4)
Wherein pelargonic acid composition comprises a carrier, is applied as a foliar spray, is applied at a concentration of 300-6,500 g/ha, and wherein it exhibits low phytotoxicity to the plant (claims 5-8)
Wherein the method comprises an additional pesticide and the pelargonic acid, and wherein the additional pesticide are applied sequentially and/or simultaneously (claims 9-13)
Copending Application No. 18835032 does not claim:
Wherein the plant is a perennial crop, see the first 112(b) rejection above for the inconsistency in claim 1.
Davies teaches perennial crops (a nuts, canola and tea, see pg. 62, ¶ 1-4).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to substitute perennial crops (a nuts, canola and tea) as taught in Davies for the perennial sorghum plant as taught in ‘047. One would be motivated to do so because Davies teaches that the pesticide can be applied to both sorghum plants (cereal) and perennial plants (see pg. 62, ¶ 1-4). As the two plants are both exemplified as plant loci for the pesticidal application, they could be considered functional equivalents and it would only be a matter of simple substitution to replace one with another.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
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/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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