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 .
Information Disclosure Statement
Three information disclosure statement (IDS) submitted: two on 10/31/2024; and one on 02/09/2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The use of the term HALLCOMID®, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore, the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
While the Examiner has made every attempt to check the Specification for trade mark compliance, Applicant is required to carefully check the entire Specification for any and all issues regarding trade mark use compliance.
Status of the Claims
Claims 1-17 are pending in this application.
Duplicate Claims Warning
Applicant is advised that should claim 1 be found allowable, claim 8 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Applicant is advised: If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). Claim 8 is drawn to the same agricultural composition of claim 1, and the preamble of “A composition for organism control” is not further limiting.
Claim Objections
Claims 5-6 are objected to because of the following informalities:
Regarding claim 5, the wording should be amended for clarity. It is believed Applicant intended: “…wherein the (a) fatty acid ester is derived from a saturated fatty acid and/or unsaturated fatty acid having 8 to 22 carbon atoms.” Or something to that effect.
Regarding claim 6, the wording should be amended for clarity. It is believed Applicant intended: “…wherein the (a) fatty acid ester is derived from one or more fatty acids selected from a group consisting of…” Or something to that effect.
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.
Claim 1 and 5-17 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 1 is indefinite because it states: “Ra and Rb are each independently a hydrogen atom and/or an alkyl group…” It is unclear how either of Ra or Rb could possibly be a hydrogen atom and an alkyl group simultaneously. Examiner suggests amending claim to read: “Ra and Rb are each independently a hydrogen atom or an alkyl group…”
Claims 5-17 are rejected for depending upon the limitations of claim 1 without resolving ambiguity.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 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.
Claims 12 and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 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.
Claims 12 and 16 are rejected for failing to further limit claim 1, from which they depend. Claim 1 is drawn to an agricultural composition which does not include fungicides, insecticides, miticides, herbicides, or plant growth regulators. Claims 12 and 16, however, require a chemical selected from fungicides, insecticides, miticides, herbicides, or plant growth regulators
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.
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.
Claims 1-2 and 4-17 are rejected under 35 U.S.C. 103 as being unpatentable over Arimoto et al. (US 8,940,314 B2) (“Arimoto”); in view of Stepan Agricultural Solutions (Obtained from stepan.com [retrieved on 07/10/2026] <URL: https://www.stepan.com/content/dam/stepan-dot-com/webdam/website-product-documents/literature/agricultural-solutions/Green-Solventsv.6.pdf> Pub. Date: March 2021) (“SAS”).
Regarding claims 1, 5-6, and 8-9, Arimoto discloses a repellant for flying insects harmful to plants (such as whiteflies, which belong to the order Hemiptera – reading on claims 8-9) comprising at least one of sucrose fatty acid esters (oleate and laurate – see Table 5 – reading on claim 6), sorbitan fatty acid esters, propylene glycol fatty acid esters, polyglycerin fatty acid esters, etc. (col. 1, lines 53-67; Table 5; and Arimoto’s claim 1). Arimoto teaches their repellent may be formulated with auxiliaries and may be in the form of an emulsifiable concentrate (col. 6, lines 50-55).
Regarding claims 10-11 and 14-15, Arimoto discloses diluting their formulation in water so that the concentration of the repellent is within 0.05-5% by mass (reading on the instantly claimed range of 100-2000 ppm of compound (a) – claims 11 and 15) in the formulation (see Arimoto’s claim 9), thus reading on the instant aqueous dispersion liquid.
Regarding claim 7, Arimoto discloses different ratios of their repelling agents in their compositions (see col. 2, lines 45-64).
Further regarding the instantly claimed ranges in claims 7, 11, and 15, Applicant is advised that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). The courts have also found that 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05-II. Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claims 12 and 16, Arimoto teaches their formulations may further comprise insecticides, microbicides, plant growth regulators, etc. (col. 6, lines 55-57).
Regarding claims 13 and 17, Arimoto discloses their method of repelling whiteflies, reading on instant claims drawn to controlling harmful organisms (see Arimoto’s claim 1).
While Arimoto does not teach their composition further comprising the instant (b) amide compounds (1); the teachings of SAS are relied upon for these disclosures.
SAS teaches green solvents with lower volatile compounds (VOC), higher flash points, and lower health hazards compared to traditional solvents useful for agricultural formulations (para. 1-2, page 1). SAS also discloses solvents like N,N-dimethylcaprylamide (reading on claims 2 and 4). SAS teaches solvents or oils are commonly used in agrochemical formulations like emulsifiable concentrates (EC), oil in water emulsions (EW), suspoemulsions (SE) and oil dispersions (OD); for OD formulations, oils should not act as solvents for dissolving actives, but can be used as or in adjuvants to improve pesticide efficacy.
Therefore, regarding instant claims 1-2, 4-12, and 14-16, it would have been prima facie obvious to one of ordinary skill prior to the effective filing date of the claimed invention to prepare an agricultural formulation for harmful organism control (such as whitefly control), comprising a fatty acid ester (a) (with or without water, as taught by Arimoto) and a compound (b), such as N,N-dimethylcaprylamide, as taught by Arimoto in view of SAS. One of ordinary would have been motivated to do so with a reasonable expectation of success because Arimoto discloses their agricultural formulations and aqueous suspensions thereof, and discloses the repelling effects of polyoxyethylene sorbitans and other repellants on greenhouse and silverleaf whiteflies (see tables 1-2 for example); furthermore, one would have been motivated to do so with a reasonable expectation of success because SAS discloses green solvents which are beneficial for agricultural applications include N,N-dimethylcaprylamide. Thus, the instantly claimed formulations are obvious in view of the art of record.
Applicant is advised, with respect to a mixture of the two claimed reagents, the courts have found that “[i]t 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).” See MPEP2144.06. It is therefore obvious to provide a mixture of the two agents.
Regarding the method claims 13 and 17, it would have been prima facie obvious to one of ordinary skill prior to the effective filing of the claimed invention to spray (Arimoto in view of SAS)’s composition in a method of controlling a harmful organism in crops. One of ordinary skill would have been motivated to do so with a reasonable expectation of success because Arimoto discloses their compositions and a method of repelling whiteflies, reading on instant claims drawn to controlling harmful organisms (see Arimoto’s claim 1); and further because SAS discloses that solvents are commonly used in agrochemical formulations.
Claims 1 and 3-17 are rejected under 35 U.S.C. 103 as being unpatentable over Arimoto et al. (US 8,940,314 B2) (“Arimoto”); in view of Narayanan et al. (American Society for Testing and Materials, Special Technical Publication, No. 1146. Pesticide Formulations and Application Systems: 12th Volume, 1993, 85-104) (“Narayanan”).
Regarding claims 1, 5-6, and 8-9, Arimoto discloses a repellant for flying insects harmful to plants (such as whiteflies, which belong to the order Hemiptera – reading on claims 8-9) comprising at least one of sucrose fatty acid esters (oleate and laurate – see Table 5 – reading on claim 6), sorbitan fatty acid esters, propylene glycol fatty acid esters, polyglycerin fatty acid esters, etc. (col. 1, lines 53-67; Table 5; and Arimoto’s claim 1). Arimoto teaches their repellent may be formulated with auxiliaries and may be in the form of an emulsifiable concentrate (col. 6, lines 50-55).
Regarding claims 10-11 and 14-15, Arimoto discloses diluting their formulation in water so that the concentration of the repellent is within 0.05-5% by mass (reading on the instantly claimed range of 100-2000 ppm of compound (a) – claims 11 and 15) in the formulation (see Arimoto’s claim 9), thus reading on the instant aqueous dispersion liquid.
Regarding claim 7, Arimoto discloses different ratios of their repelling agents in their compositions (see col. 2, lines 45-64).
Further regarding the instantly claimed ranges in claims 7, 11, and 15, Applicant is reminded that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. The courts have also found that 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. Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claims 12 and 16, Arimoto teaches their formulations may further comprise insecticides, microbicides, plant growth regulators, etc. (col. 6, lines 55-57).
Regarding claims 13 and 17, Arimoto discloses their method of repelling whiteflies, reading on instant claims drawn to controlling harmful organisms (see Arimoto’s claim 1).
While Arimoto does not teach their composition further comprising the instant (b) amide compounds (2) – reading on claims 1 and 3; the teachings of Narayanan are relied upon for these disclosures.
Narayanan teaches N-alkyl pyrrolinones (such as instant compounds (2) wherein x is 2) were needed for the preparation of stable, water based microemulsions of agrochemical formulations (abstract).
Therefore, regarding instant claims 1, 3-12, and 14-16, it would have been prima facie obvious to one of ordinary skill prior to the effective filing date of the claimed invention to prepare an agricultural formulation for harmful organism control (such as whitefly control), comprising a fatty acid ester (a) (with or without water, as taught by Arimoto) and a compound (b), such as an N-alkyl pyrrolidone, as taught by Arimoto in view of Narayanan. One of ordinary would have been motivated to do so with a reasonable expectation of success because Arimoto discloses their agricultural formulations and aqueous suspensions thereof, and discloses the repelling effects of polyoxyethylene sorbitans and other repellants on greenhouse and silverleaf whiteflies (see tables 1-2 for example); furthermore, one would have been motivated to do so with a reasonable expectation of success because Narayanan discloses that N-alkyl pyrrolidone in aqueous agrochemical formulations allowed for the formation of stable microemultions. Thus, the instantly claimed formulations are obvious in view of the art of record.
Applicant is reminded, with respect to a mixture of the two claimed reagents, the courts have found that “[i]t 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. It is therefore obvious to provide a mixture of the two agents.
Regarding the method claims 13 and 17, it would have been prima facie obvious to one of ordinary skill prior to the effective filing of the claimed invention to spray (Arimoto in view of Narayanan)’s composition in a method of controlling a harmful organism in crops. One of ordinary skill would have been motivated to do so with a reasonable expectation of success because Arimoto discloses their compositions and a method of repelling whiteflies, reading on instant claims drawn to controlling harmful organisms (see Arimoto’s claim 1); and further because Narayanan discloses that N-alkyl pyrrolidone allows for the formation of stable microemulsions in agrochemical applications.
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 12 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 7-21 of copending Application No. 18/845,312 (Co. ‘312). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 12 and 16 are broader than claims 1, 10, and 16, from which they depend – see 112(d). Therefore, these rejections apply.
Regarding instant claims 12 and 16, Co. ‘312 claims an agrochemical emulsifiable composition comprising an active ingredient (A), a solvent (B), and an emulsifier (C), wherein A is flometoquin (an insecticide); (B) can be a fatty acid amide, such as N, N-dimethyl dodecamide (see Co. ‘312’s claim 14) – reading on instant compound (1); and (C) can be a non-ionic surfactant may be a propyloxyalkelene fatty acid ester, etc. (see Co. ‘312’s claim 18) – reading on instant compounds (a). Thus, Co. ‘312 anticipates the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKSON J HERNANDEZ whose telephone number is (571)272-5382. The examiner can normally be reached Mon - Thurs 7:30 to 5.
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/JACKSON J HERNANDEZ/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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