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 .
Claim Objections
Claim(s) 5 and 8 are objected to because of the following informalities:
In claim 5, “such oils” should read “vegetable oils”
In claim 8, “emusifier system” should read “emulsifier system”
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(s) 3 and 12-15 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.
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, claim 3 recites the broad recitation “the botanical extract is a wood extract”, and the claim also recites “in particular, a Sextonia rubra (Mez.) Van der Werff (Lauraceae) wood extract” 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.
Claim(s) 12-15 are indefinite because they are directed to a “use” of a composition. “Use” type claims are not a statutory category of invention. Thus, it is unclear if the claims are drawn to a method of making the insecticidal composition or if the claims are drawn to a method of using an insecticidal composition. Thus, the metes and bounds of the claim are unclear.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim(s) 12-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because it is directed to a “use” type claim which is a non-statutory category of invention. The claims are not further examined as it is not drawn to a statutory category of invention.
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) 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Taranta (U.S. Pub. No. 20020098221 A1) in view of Falkowski (FR 3025979 A1 – English translation provided), Lavaud (WO 2015140290 A1) and Braun (WO 2019115619 A1 – English translation provided).
Taranta teaches an oil-in-water emulsion formulation optionally compris[ing] further antifoams and defoamers (paragraph 0056). Taranta teaches [that] the invention relates to liquid formulations of insecticides (paragraph 0001). Taranta teaches that the antifoams/defoamers are optionally added in an amount of generally 0.01 to 2% by weight (paragraph 0062). Taranta teaches [that] a preferred group of aliphatic monocarboxylic acid esters are vegetable and animal oils. The term vegetable oil as used herein includes oils from oil producing plants, such as rape oil, soya oil, palm oil, sunflower oil, cotton oil, maize oil, linseed oil, coconut oil, thistle oil or castor oil. The term animal oil as used herein includes oils from oil producing animals, such as tallow oil. Other examples of monocarboxylic acid esters are the transesterification products of these oils such as alkyl esters, like rapeseed oil methyl ester, such as Radia 7961 (Fina Chemicals, Belgium), or rapeseed oil ethyl ester (paragraph 0033). Taranta teaches [that] the formulations further comprise two or more non ionic emulsifiers (paragraph 0047). Taranta teaches that the two non ionic emulsifiers [can be within] polyethoxylated (30 to 40 EO) castor oils ([e.g. a bio-based non-ionic surfactant]) (paragraph 0049). Taranta teaches 0.01 to 15% by weight of two or more non ionic emulsifiers (paragraph 0052).
Taranta does not teach a composition comprising an oil phase that would also include a botanical extract (as stated within claim 1 of the present invention). Taranta does not teach that the composition comprises from 0.01 to 11% by weight, based on the total weight of the composition, of botanical extract (as stated within claim 2 of the present invention). Taranta does not teach that the botanical extract is a wood extract, in particular, a Sextonia rubra (Mez.) Van der Werff (Lauraceae) wood extract (as stated within claim 3 of the present invention). Taranta does not teach that the composition comprises from 55 to 85% by weight, based on the total weight of the composition, of bio-based non-ionic surfactants (as stated within claim 6 of the present invention). Taranta does not teach that the two or more bio-based non ionic surfactants are chosen from alkylpolyglucosides and methyl ester alkoxylates (as stated within claim 7 of the present invention). Taranta does not teach that the emusifier system has a HLB value comprised between 8 and 20, with in particular one of the bio-based non-ionic surfactants having a HLB value comprised between 8 and 12 and one of the bio-based non-ionic surfactants having a HLB value comprised between 12 and 20 (as stated within claim 8 of the present invention). Taranta does not teach that the botanical extract comprises rubrenolide and/or rubrynolide (as stated within claim 9 of the present invention).
Falkowski teaches the use of an extract of Sextonia rubra or its constituents, rubrenolide and / or rubrynolide, as an insecticidal agent (abstract). Falkowski teaches [that the extract of Sexontia rubra] relates to the use of a sustainable Amazonian wood extract of Sextonia rubra (Mez) van der Werff (Lauraceae) and / or at least one of its constituents as an insecticidal agent (page 1).
Lavaud teaches [that the composition can be used as a] bactericide, fungicide (page 2). Lavaud teaches [that the composition can include] alkyl-polyglucosides ([also known as bio-based non-ionic surfactants]) [such as] heptyl glucoside and undecyl glucoside (page 12). Lavaud teaches [that the composition can be in the form of] an emulsion, it may be a water-in-oil or oil-in-water emulsion (page 13).
Braun teaches [a composition that is in the form of an] emulsion (page 4). Braun teaches [that the emulsion can include] heptyl glucoside (Simulsol™ SL 7 G) and undecyl glucoside (Simulsol™ SL 11 W) ([with HLB values of 14.2 and 12.4, respectively, also stated within lines 28-29 of page 7 of the specification]) (page 7).
Regarding claim(s) 1, 3, 4, 5, 7, 8, 9, 10 and 11, one of ordinary skill in the art would reasonably expect to use Taranta’s composition and further modify Taranta’s composition to include the Sextonia rubra extract that can comprise rubrenolide and/or rubrynolide as taught by Falkowski, and two bio-based non-ionic surfactants such as heptyl glucoside (Simulsol™ SL 7 G) and undecyl glucoside (Simulsol™ SL 11 G) as taught by Lavaud along with using Braun’s reference to effectively prove that Simulsol™ SL 7 G and Simulsol™ SL 11 W are also known as heptyl glucoside and undecyl glucoside, respectively. Although Lavaud does not explicitly teach that Simulsol™ SL 7 G and Simulsol™ SL 11 W has the HLB values of 14.5 and 12.4, respectively, Lavaud does teach that those agents can be present within an emulsion for a bactericide or fungicide (which are both under pesticide and insecticides are also under pesticide) which would seamlessly fit in with Taranta’s composition. Moreover, additional knowledge can be added to Taranta’s composition in the sense that Simulsol™ SL 11 W possesses an HLB value of 12.4 in which, when rounded to the nearest whole number would be 12, therefore, Simulsol™ SL 11 W is in line with a bio-based non-ionic surfactant that has a HLB value comprised between 8 and 12 (also stated within claim 8 of the present invention) and Simulsol™ SL 7 G is in line with a bio-based non-ionic surfactant that has a HLB value comprised between 12 and 20 (also stated within claim 8 of the present invention). Therefore, one would reasonably expect to create a succinct composition using the combination of the aforementioned references.
Regarding claim(s) 2 and 6, the combined aforementioned references does not teach all of the amounts of the components within the composition as stated by the applicant within claim(s) 2 and 6 of the present invention, however, as discussed in MPEP section 2144.05(II)(A), “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here 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.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” The references teach the use of each of the ingredients in a composition. Varying the concentration of ingredients within a composition is not considered to be inventive unless the concentration is demonstrated as critical. In this particular case, there is no evidence that the claimed concentration of the ingredients produces an unexpected result. Thus, absent some demonstration of unexpected results from the claimed parameter, this optimization of ingredient concentration would have been obvious before the effective filing date of applicant’s claimed invention.
In addition, these references show that it was well known in the art prior to the effective
filing date of the invention to use the claimed ingredients in a pesticide-based composition. It is well known that it is prima facie obvious to combine two or more ingredients each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is useful for the same purpose. The idea for combining them flows logically from them having been used individually in the prior art. Based on the disclosure by these references that these substances are used in compositions, an artisan of ordinary skill would have a reasonable expectation that a combination of the substances would also be useful in creating compositions. Therefore, the artisan would have been motivated to combine the claimed ingredients into a single composition. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See MPEP section 2144.06, In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nashara L Moreau whose telephone number is (571)272-5804. The examiner can normally be reached Monday - Thursday, 8 AM - 4 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand U Desai can be reached at (571)272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NASHARA L MOREAUExaminer, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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