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 .
Amendments filed on 09/13/24 presented claims 1-11 and 13-21 for examination on the merits.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of foreign priority has been filed on 09/123/24.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/03/25 is being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites the abbreviation of HASE without spelling the full name of the compound. When Abbreviations are used in claim at least the first recitation should include the full name. Appropriate correction is required.
Suggestion:
In claim 13, the term “when they are present” is redundant as “optionally” relates that they may be present.
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 8-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The Specification does not provide adequate disclosure or support for the full scope of claimed compounds, carbon black additives and UV-additives. It is not clear from the Specification what compounds fit into this class of compounds. The Specification discloses that:
“black particle dispersing additive, preferably non-ionic”;
“carbon black particle dispersing additive can be Disperbyk® 163 from Byk Chemie or can be Borchi® Gen 0451 from Borchers. Such dispersants can be prepared according to EP2091984 or EP2125909, the teaching of which is incorporated by reference, concerning the compositions and copolymers that can be used as dispersant agent” (See [0056] and [0076]).
“anti-UV additive: Tinuvin® 536 from the family of benzotriazoles. In U.S. Pat. No. 6,252,106, the benzotriazole-type ant-UV compound Tinuvin® P is used, at levels between 0.1% and 10% by weight relative to the weight of the pheromone” (See [0010]). (Recitations are from the PG Publication).
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.
Claims 1-11, 13-14 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Guerret et al (US 20180064102) in view of Klassen (US 20030202999) and JP 20044004765A.
Guerret et al teach microparticles consisting of a solid shell made of polymer, in particular an acrylic polymer, surrounding a core comprising a mixture of oil and wax and also pheromone, and a production process and the use of an aqueous suspension of such microparticles containing pheromones comprising fatty chains, such as lepidopteran pheromones, and which are capable of releasing the pheromones in a sustained manner (See abstract).
Regarding claims 1-2 and 6, Guerret et al teach particles comprising a solid shell surrounding a core, characterized in that: the solid shell comprises at least one polymer, preferably an acrylic copolymer, selected from HASE-type copolymers, the core comprising a mixture of wax, oil and pheromone, the core representing 90-99% by weight of the particles (See [0026], [0032], [0038] and claim 1).
Further regarding claims 1-2, 6, 16 and 20, Guerret et al teach that said particles have an average size of from 0.5 to 100 μm, or from 1 μm to 40 μm. When the particles are spherical, the average particle size is the average particle diameter (See [0052]).
Regarding claims 3-5 and 18, Guerret et al teach that the one or more pheromones contained in the said particles are particularly insect pheromones, more particularly fatty-chain insect pheromones, such as lepidopteran fatty-chain pheromones. In a particular manner, the particles contain lepidopteran sex pheromones made of pheromones of Tuta absoluta, Plodia interpunctella, Plutella xylostella, Gortyna xanthenes, Agrotis spp., for example. More particularly, the pheromone may be a sex pheromone of the European grapevine moth, Lobesia botrana, a lepidopteran grapevine pest, (meeting molecule I of claim 5 and claim 18) or Pine Processionary Moth (meeting molecule V of claim 5) (See [0059], [0062] and [0118]).
Regarding claims 7, 11 and 19, Guerret et al teach an embodiment wherein the said microparticles have a core composed of 10% to 90% by weight of wax, 10% to 90% by weight of oil, 0.1% to 25% by weight of pheromone, and 0 to 0.8% by weight of stabilizer. (See [0047]). The stabilizer may be selected from the group consisting of n-butyl-4-hydroxybenzoate (BHB), tocopherol, t-butyl-hydroxy-toluene (BHT), etc, and mixtures thereof (i.e an antioxidant). The one or more stabilizers protect the core of the particles from oxidation (See [0055]).
Regarding claim 13, Guerret et al teach a process for preparing a suspension of said microparticles comprising the following steps:
a) Prepare a fatty phase comprising oil, wax and pheromone, and optionally one or more stabilizers,
b) Heat the fatty phase to a temperature above the melting point of the wax,
c) Prepare an aqueous solution comprising the acrylic polymer, having a pH between 7.5 and 10 and heated to a temperature similar to that of the fatty phase,
d) Mix the fatty phase in the aqueous solution to form a dispersion of fatty-phase droplets in a continuous aqueous phase,
e) Acidify at a pH between 2 and 7, preferably between 4 and 7, in order to solidify the acrylic polymer (See [0065]).
Regarding claim 14, Guerret et al teach the fatty phase is heated to a temperature between 50° C. and 80° C. (See [0072]).
Regarding claims 20-21, Guerret et al teach that preferably, the oil is selected as a function of the crop one wishes to protect from insect pests, in particular lepidopterans. Disclosed is a process for protecting an agricultural plot, in particular a cultivated agricultural plot, against lepidopterans comprising applying a composition comprising said particles. In a particular embodiment, the agricultural plot may be a covered plot such as a greenhouse or a nursery or an open plot such as a field or a forest. Preferably, the crops protected by the particles are grapevine, field crops (rice, corn, cotton, soy, sunflower), market garden crops, ornamental trees or fruit trees, and forests (such as pine or oak forests (See [0054] and [0077]-[0079])
Guerret et al lack an express disclosure on the addition of carbon black, its concentration range, or the concentration range of HASE in the aqueous solution. These are taught in the art including Klassen and JP ‘762.
Klassen teaches microcapsule comprising (a) an interfacially-polymerized polymer shell comprising at least one shell stabilizer; and (b) a fill composition comprising (1) at least one semiochemical and (2) at least one fill stabilizer. The said semiochemical is a pheromone, particularly an insect pheromone (See abstract and claims 1 and 3-4).
Regarding the presence of carbon black in the microcapsules comprising a pheromone, Klassen teach that stabilizers that can be used in the fill composition (referred to herein as “fill stabilizers”) include, antioxidants, thermal stabilizers, and ultraviolet (UV) absorbers (preferably, antioxidants and UV absorbers). V blockers (for example, carbon black, iron oxide(s), or titanium dioxide) can also be used in combination with antioxidants, thermal stabilizers, and/or UV absorbers in the said microcapsules (See [0012] and [0019]).
Klassen further teach that generally the said microcapsules can contain at least about 0.3 wt % fill stabilizer, preferably at least about 2 wt %; more preferably at least about 5 wt % based upon the total weight of all components of the microcapsule (See [0037]).
JP ‘765A teach a carbon black-containing resin composition and carbon black dispersion (See background, Page 1 of translation).
Regarding claims 1-2, 17 and 20, JP ‘765 discloses that when carbon black having an average primary particle diameter of less than 50 nm is used, the coating film roughness and pattern shape are better than when carbon black with average diameter of above 50 nm is used. It is also disclosed that this effects ultraviolet light transmission (See 2nd page of the translation).
Additionally, regarding claims 8-10, JP ‘765 discloses that the carbon black coated with a resin has good dispersion stability and development characteristics (See 2nd page of the translation).
It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have combined the teachings of JP ‘765 and Klassen with that of Guerret et al to arrive at the instant invention. It would have been obvious to do se because Guerret et al and Klassen teach microcapsules comprising a shell comprising a polymer and a core comprising pheromone and additives such as stabilizers. While Guerret et al do not expressly teach adding carbon black nanoparticles to the fill/core, Klassen expressly disclose that both the shell and the fill should include stabilizers including a UV-block including carbon black. Thus, it would have been obvious to one of ordinary skill in the art to follow Klassen’s guidance and add carbon black particles to the pheromone mixture to stabilize the mix. It further would have been obvious to have taken guidance from the prior art on the particle diameter for carbon black particles as taught by JP ‘765. It is also common sense that when a microcapsule with a diameter of 0.5 micron encapsulates another component/particle that it should be sufficiency smaller so it would properly fit into its shell structure.
In other words, the claims would have been obvious because the technique for improving a particular formulation was part of the ordinary capabilities of a person of ordinary skill in the art, in view of the teaching of the technique for improvement in other situations.
From the combined teaching of the cited references, 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.
Claims 1-11, 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over Guerret et al (US 20180064102) in view of Klassen (US 20030202999) and JP 20044004765A as applied to claims 1-11, 13-14 and 16-21, and in further view of Guerret et al (US 20180279607).
The teachings of Guerret et al ‘102, Klassen and JP ‘765 are delineated above and incorporated herein.
The combined references lack a specific disclosure on the amount of HASE polymer in the shell or aqueous solution as recited in claim 15. This is taught by Guerret et al ‘607.
Guerret et al ‘607 teach projectiles containing insect pheromones encapsulated in an aqueous oil-in-water-type formulation. Said formulation is enveloped with the projectile composed of oxo-degradable polymer. The aim of the invention is to use said projectiles to treat trees against insect pests by spraying said projectiles on the trunks of said trees (See abstract).
Regarding claim 15, Guerret et al teach that the polymer may be acrylic copolymer, in particular a HASE type acrylic copolymer and used as water-soluble gelling agent, the amount thereof in the aqueous phase can be from 5 wt% to 10 wt % (See [0050]).
It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have combined the teachings of Guerret et al ‘607, JP ‘765 and Klassen with that of Guerret et al ‘102 to arrive at the instant invention. The reasons for combining Guerret et al ‘102, Klassen and JP ‘765 are delineated above and incorporated herein. It further would have been obvious to have taken guidance from the prior art on the suitable concentration of the polymer in the aqueous solution to prepare an effective shell structure for the desired microcapsules as taught by Guerret et al ‘607 with a reasonable expectation of success.
In other words, the claims would have been obvious because the technique for improving a particular formulation was part of the ordinary capabilities of a person of ordinary skill in the art, in view of the teaching of the technique for improvement in other situations.
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 1-11, 13-14 and 16-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10,271,547 in view of Klassen (US 20030202999) and JP 20044004765A.
The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Klassen and JP ‘765.
The examined claims and reference claims are directed to microcapsules/ microparticles comprising a core and a solid shell wherein the core comprises wax, oil and a pheromone and the shell comprises an acrylic polymer, HASE type copolymer, a method of preparing the microparticles and a method of protecting crop or agricultural plots applying the microparticles to the area.
The differences between the recited claims of the instant application and the recited claims of Patent ‘547 is that the examined claimed microcapsules additionally comprise carbon black particles whereas reference claims do not recite this limitation. The examined claims also recite particle diameters for the microcapsules and carbon black, whereas the reference claims do not. However, the recited claims of the instant application are not mutually exclusive since 1- the reference claims recite the open ended transitional phrase of “comprising” which allows for unrecited elements to be included, 2-the addition of carbon black particles to a similar microcapsule is known and disclosed by Klassen and JP ‘765 discloses the suitable particle size for the said carbon black particles. Thus, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of Klassen and JP ‘765 into the reference claimed microparticles to arrive at the claimed microcapsules/microparticles with a reasonable expectation of success. It would have been obvious because Klassen teach the advantages of adding fill stabilizers including carbon black to such microcapsules comprising a shell comprising a polymer and a core comprising pheromones.
Claims 1-11, 13-14 and 16-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 11-16 of U.S. Patent No. 10,517,292 in view of Guerret et al (US 201800064102), Klassen (US 20030202999) and JP 20044004765A.
The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Klassen and JP ‘765.
The examined claims and reference claims are directed to microcapsules/ projectile comprising a core and a solid shell wherein the core comprises wax, oil and a pheromone and the shell comprises an acrylic polymer, HASE type copolymer, a method of preparing the said microcapsule/projectile and a method of protecting crop or agricultural plots applying the said microcapsule/projectile to the area.
The differences between the recited claims of the instant application and the recited claims of Patent ‘292 is that the examined claimed microcapsules additionally comprise carbon black particles whereas reference claims do not recite this limitation. The examined claims also recite particle diameters for the microcapsules and carbon black, whereas the reference claims do not. However, the recited claims of the instant application are not mutually exclusive since 1- the reference claims recite the open ended transitional phrase of “comprising” which allows for unrecited elements to be included, 2-the addition of carbon black particles to a similar microcapsule is known and disclosed by Klassen and JP ‘765 discloses the suitable particle size for the said carbon black particles. Guerret et al ‘102 also discloses suitable particle diameter for microcapsules. Thus, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of Guerret et al ‘102, Klassen and JP ‘765 into the reference claimed projectile to arrive at the claimed microcapsules with a reasonable expectation of success. It would have been obvious because Klassen teach the advantages of adding fill stabilizers including carbon black to such microcapsules comprising a shell comprising a polymer and a core comprising pheromones.
Claims 1-11 and 13-21 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mina Haghighatian whose telephone number is (571)272-0615. The examiner can normally be reached M-F, 7-5 EST.
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/Mina Haghighatian/
Mina Haghighatian
Primary Examiner
Art Unit 1616
Prosecution Insights