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 .
Claims 1-4 are pending in this application and were examined on their merits.
The objection to the Abstract because it is too short to describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details, has been withdrawn due to the Applicant’s amendment to the Specification filed 09/24/2026.
The objection to the Specification because the title of the invention is not descriptive has been withdrawn due to the Applicant’s amendment to the Specification filed 09/24/2026.
The objections to Claims 1, 3 and 4 have been withdrawn due to the Applicant’s amendments to the claims filed 09/24/2026.
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.
Claims 1-4 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a Judicial Exception (nature-based product) without significantly more. The claim(s) recite(s) a composition comprising humic acid, Bacillus thuringiensis and water.
This judicial exception is not integrated into a practical application because the claims are drawn to a nature-based product which is not markedly different from the naturally occurring counterparts. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following analysis:
Step 1) Is the claim to a process, machine, manufacture of composition of matter?
The claims are drawn to a composition.
Step 2A, P1) Does the claim recite an Abstract Idea, Law of Nature or Natural Phenomenon?
Yes, the claims recite a Natural Phenomenon, a composition comprising humic acid, Bacillus thuringiensis and water.
Step 2A, P2) Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
No, the claim does not recite any additional elements beyond the mere recitation of the concentrations of the phenolic groups in the humic acid, the concentration of humic acid and the concentration of water in the composition.
Step 2) Does the claim recite additional element that amount to significantly more than the Judicial Exception?
No, as discussed above, the claim does not recite any additional elements beyond the mere recitation of the concentrations of the phenolic groups in the humic acid, the concentration of humic acid and the concentration of water in the composition.
The individual claimed natural products, humic acid, Bacillus thuringiensis and water, have not acquired any new biological or pharmacological functions or activities; chemical and physical properties; phenotype, including functional and structural characteristics; or structure and form, whether chemical, genetic or physical, when compared to naturally occurring humic acid, Bacillus thuringiensis and water. While the claims recite “pest control”, this is a known characteristic of the humic acid and Bacillus thuringiensis, as set forth below. With regard to the bacteria viability after exposure to light, the disclosure provides no data to indicate that bacterial viability is altered when the bacteria themselves are exposed to light. For example, Jones et al. (1991) discloses naturally occurring UV-light resistant mutants of Bacillus thuringiensis (Pg. 460, Abstract).
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 1-4 are rejected under 35 U.S.C. § 103 as being unpatentable over Lebo et al. (CA 2,201,165), cited in the IDS, in view of Li et al. (US 2017/0129820 A1), as
evidenced by de Melo et al. (2016), both of record.
Lebo et al. teaches an aqueous (water-based) solution with a minimum of 5%
oxidized humate (Pg. 10, Line 30 and Pg. 11, Lines 1-2); useful as an adjuvant in
pesticides (Abstract);
and a method of preparing a solution of 0.5-95 wt.% of pesticide modified humate
(Pg. 13, Claim 1), wherein the pesticide is a Bacillus-based insecticide obtained from
Bacillus thuringiensis (Pgs. 14-15, Claims 15, 16 and 19), and reading on Claim 1.
The teachings of Lebo et al. were discussed above.
Lebo et al. did not teach a method wherein the humic acid has a concentration of
phenolic groups between 0.19-1.30 mmol/g of the humic acid, as required by Claim 1;
wherein the humic acid is from 0.1 wt.% to 5.0 wt.% of the pest control composition based upon a total weight of a combination of the humic acid, the bacillus thuringiensis, and the water, as required by Claim 2;
wherein the water is from 25.00 wt.% to 99.89 wt.% of the composition based upon the total weight of the humic acid, the Bacillus thuringiensis, and the water, as required by Claim 3;
or wherein the humic acid has a concentration of phenolic groups of 0.375 to 1.26 millimoles per gram of the humic acid, as required by Claim 4.
Li et al. teaches a humic acid composition comprising phenol hydroxy group content in a range from 0.76-2.42 mmol/g in the humic acid composition (Pg. 9, Claim 1);
wherein the humic acid composition improves soil physicochemical properties and utilization efficiency of a fertilizer, stimulates crop growth, strengthens anti-adversity of crop, and improves quality of agricultural products (Pg. 1, Paragraph [0002]).
While the above cited references do not specifically teach the claimed concentration range/amount limitations, those of ordinary skill in the art before the effective filing date would recognize the concentration or amount of a composition component as an optimizable variable dependent on the desired effect thereof. In this instance, Lebo teaches an aqueous (water-based) solution with a minimum of 5% oxidized humate which is useful as an adjuvant in pesticides.
De Melo et al. evidences that Humic Acids (HA) contain different functional groups whose quantities depend on the origin, age, climate, and environmental conditions of extraction/production of the humic acids. The various functions of HAs are mainly attributable to the phenol and carboxylic acid functional groups, which allow the deprotonation of OH/OOH. This situation provides HAs with many capabilities, such as the improvement of plant growth and nutrition, complexation with heavy metals, and antiviral and anti-inflammatory activity. In addition, the presence of phenols, carboxylic acids and quinones in the structure of HAs is related to their antioxidant, antimutagenic/desmutagenic and fungicidal/ bactericidal activities (Pg. 968, Column 1, Lines 9-19). Thus, the concentration of humic acid in an aqueous pesticide composition, the amount of phenols present in the humic acid, and the amount of water in the aqueous composition are effective results based on the concentration of the components therein as too little humic acid (and the inherent phenols therein) or water in the composition will not produce the desired results. This is motivation for the ordinary artisan to practice or test the concentration values widely to determine those that are functional and optimal which would be inclusive or cover the instantly claimed ranges. Absent any teaching of criticality by the Applicant concerning the concentration of the claimed components, it would be prima facie obvious that the ordinary artisan would recognize these limitations are an optimizable variable which can be met as a matter of routine optimization, see the MPEP at 2144.05 II. B.
There would have been a reasonable expectation of success in making this modification because the prior art teaches the use of the same components and the determination of the optimal concentrations by routine optimization was within the purview of those of ordinary skill in the art prior to the effective filing date.
Claims 1-4 are rejected under 35 U.S.C. § 103 as being unpatentable over Arumugam et al. (WO 2021/158420 A1), cited in the IDS, in view of Li et al. (US 2017/0129820 A1), as evidenced by de Melo et al. (2016), both of record.
Arumugam et al. teaches a pesticide formulation comprising 66.47 wt.% Bacillus thuringiensis, 28.83 wt.% water and a polyphenol, wherein the polyphenol comprises 1.01 wt.% humic acid and 0.12% fulvic acid (Pg. 4, Lines 10-13 and Pg. 9, Table 1 and Pg. 13, Claims 1, 7 and 8), and reading on Claims 1, 2 and 3.
The teachings of Arumugam et al. were discussed above.
Arumugam et al. did not teach a method wherein the humic acid has a concentration of phenolic groups between 0.19-1.30 mmol/g of the humic acid, as required by Claim 1;
or wherein the humic acid has a concentration of phenolic groups of 0.375 to 1.26 millimoles per gram of the humic acid, as required by Claim 4.
Li et al. teaches a humic acid composition comprising phenol hydroxy group content in a range from 0.76-2.42 mmol/g in the humic acid composition (Pg. 9, Claim 1);
wherein the humic acid composition improves soil physicochemical properties and utilization efficiency of a fertilizer, stimulates crop growth, strengthens anti-adversity of crops, and improves quality of agricultural products (Pg. 1, Paragraph [0002]).
While the above cited references do not specifically teach the claimed concentration range/amount limitations, those of ordinary skill in the art before the effective filing date would recognize the concentration or amount of a composition component as an optimizable variable dependent on the desired effect thereof. In this instance, Arumugam et al. teaches a pesticide formulation comprising 66.47 wt.% Bacillus thuringiensis, 28.83 wt.% water and a polyphenol, wherein the polyphenol comprises 1.01 wt.% humic acid and 0.12% fulvic acid. De Melo et al. evidences that Humic acids (HA) contain different functional groups whose quantities depend on the origin, age, climate, and environmental conditions of extraction/ production of the humic acids. The various functions of HAs are mainly attributable to the phenol and carboxylic acid functional groups, which allow the deprotonation of OH/OOH. This situation provides HAs with many capabilities, such as the improvement of plant growth and nutrition, complexation with heavy metals, and antiviral and anti-inflammatory activity. In addition, the presence of phenols, carboxylic acids and quinones in the structure of HAs is related to their antioxidant, antimutagenic/desmutagenic and fungicidal/ bactericidal activities (Pg. 968, Column 1, Lines 9-19).
Thus, the amount of phenols present in the humic acid is an effective result
based on the origin, age, climate, and environmental conditions of extraction/production
of the humic acids and the concentration of the components therein as too little humic
acid (and the inherent phenols therein) will not produce the desired result. This is
motivation for the ordinary artisan to practice or test the concentration values widely to
determine those that are functional and optimal which would be inclusive or cover the
instantly claimed ranges. Absent any teaching of criticality by the Applicant concerning
the concentration of the claimed components, it would be prima facie obvious that the
ordinary artisan would recognize these limitations are an optimizable variable which can
be met as a matter of routine optimization, see the MPEP at 2144.05 II. B. There would
have been a reasonable expectation of success in making this modification because the
prior art teaches the use of the same components and the determination of the optimal
concentrations by routine optimization was within the purview of those of ordinary skill in
the art prior to the effective filing date.
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 1-4 are provisionally rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-5 of copending Application No.
18/863,109 (reference application). Although the claims at issue are not identical, they
are not patentably distinct from each other because the instant claims are drawn to:
A pest control composition comprising humic acid, wherein the humic acid has a
concentration of phenolic groups of 0.19 to 1.30 millimoles per gram of the humic acid;
bacillus thuringiensis; and water.
This is made obvious by Claim 5 of the co-pending '109 application which is drawn to:
A pest control composition comprising humic acid; a polymer, wherein the polymer has a weight average molecular weight from 10,000 daltons to 30,000 daltons and contains from 20 wt.% to 100 wt.% of monomeric structural units derived from a monomer with log P from 2.0 to 6.0; bacillus thuringiensis; and water; wherein the humic acid has a phenolic group concentration of from 0.35-0.45 millimoles per gram of humic acid (encompassed within the 0.19 to 1.30 millimoles per gram of the humic acid of the instant application).
Instant Claim 2 is made obvious by Claim 2 of the co-pending '109 application as the humic acid concentration of the '109 application is encompassed within the instant humic acid concentration.
Instant Claim 4 is made obvious by Claim 5 of the co-pending '109 application as the humic acid phenol group concentration of the '109 application is encompassed within the instant humic acid concentration.
Those of ordinary skill in the art would have recognized that the "comprising" language of the instant claims does not preclude the presence of additional components, such as the polymer of the co-pending '109 application.
With regard to instant Claim 3, while the '109 application does not specifically teach the limitations of the weight percentage of water in the composition, one of ordinary skill in the art would recognize that the weight percent of water in a composition is a result-effective optimizable variable. The water concentration will affect the viscosity and final concentration of the composition. This is motivation for someone of ordinary skill in the art to practice or test the parameter values widely to find those that are functional or optimal in the composition, which then would be inclusive or cover that values as instantly claimed. Absent any teaching of criticality by the Applicant concerning the weight percentage of water in the composition, it would be prima facie obvious that one of ordinary skill in the art would recognize this limitation as an optimizable variable which can be met as a matter of routine optimization (see MPEP § 2144.05 (II)(B).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 18/863,122 (reference application), as evidenced by de Melo et al. (2016), of record. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are drawn to:
A pest control composition comprising humic acid, wherein the humic acid has a concentration of phenolic groups of 0.19 to 1.30 millimoles per gram of the humic acid; Bacillus thuringiensis; and water.
This is made obvious by Claims 1 and 2 of the co-pending '122 application which is drawn to:
A pest control composition comprising humic acid; an emulsion polymer comprising methyl methacrylate, butyl acrylate, acrylic acid and vinyl toluene; Bacillus thuringiensis; and water, wherein the humic acid is from 0.01 wt.% to 5.00 wt.% of the pest control composition based upon a total weight of a combination of the humic acid, the emulsion polymer, the Bacillus thuringiensis, and the water.
Those of ordinary skill in the art would have recognized that the "comprising" language of the instant claims does not preclude the presence of additional components, such as the polymer of the co-pending '122 application.
With regard to instant Claims 1, 3 and 4, while the above cited '122 application does not specifically teach the claimed concentration range/amount limitations, those of ordinary skill in the art before the effective filing date would recognize the concentration or amount of a composition component as an optimizable variable dependent on the desired effect thereof. In this instance, the '122 teaches an aqueous (water-based) pest control composition solution comprising 0.01-5 wt.% humic acid. De Melo et al. evidences that Humic acids (HA) contain different functional groups whose quantities depend on the origin, age, climate, and environmental conditions of extraction/ production of the humic acids. The various functions of HAs are mainly attributable to the phenol and carboxylic acid functional groups, which allow the deprotonation of OH/OOH. This situation provides HAs with many capabilities, such as the improvement of plant growth and nutrition, complexation with heavy metals, and antiviral and anti-inflammatory activity. In addition, the presence of phenols, carboxylic acids and quinones in the structure of HAs is related to their antioxidant, antimutagenic/desmutagenic and fungicidal/ bactericidal activities (Pg. 968, Column 1, Lines 9-19). Thus, the concentration of humic acid in an aqueous pesticide composition, the amount of phenols present in the humic acid, and the amount of water in the aqueous composition are effective results based on the concentration of the components therein as too little humic acid (and the inherent phenols therein) or water in the composition will not produce the desired result.
This is motivation for the ordinary artisan to practice or test the concentration values widely to determine those that are functional and optimal which would be inclusive or cover the instantly claimed ranges. Absent any teaching of criticality by the Applicant concerning the concentration of the claimed components, it would be prima facie obvious that the ordinary artisan would recognize these limitations are an optimizable variable which can be met as a matter of routine optimization, see the MPEP at 2144.05 II. B. There would have been a reasonable expectation of success in making this modification because the prior art teaches the use of the same components and the determination of the optimal concentrations by routine optimization was within the purview of those of ordinary skill in the art prior to the effective filing date.
This is a provisional nonstatutory double patenting rejection because the
patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see Remarks, filed 09/24/2026, with respect to the withdrawn objections have been fully considered and are persuasive. The remaining arguments have been considered insofar as they apply to the pending rejections.
The Applicant argues that neither Lebo nor Arumugam in view of Li or De Melo recognized phenolic-group concentration for retaining B. thuringiensis viability after light exposure (Remarks, Pg. 6, Lines 7-22).
This is not found to be persuasive for the following reasons, initially the Examiner has presented logical rationale as to why those of ordinary skill in the art before the effective filing date would recognize the concentration or amount of a composition component as an optimizable variable dependent on the desired effect thereof. For example, Arumugam et al. teaches a pesticide formulation comprising 66.47 wt.% Bacillus thuringiensis, 28.83 wt.% water and a polyphenol, wherein the polyphenol comprises 1.01 wt.% humic acid and 0.12% fulvic acid. De Melo et al. evidences that Humic acids (HA) contain different functional groups whose quantities depend on the origin, age, climate, and environmental conditions of extraction/ production of the humic acids. The various functions of HAs are mainly attributable to the phenol and carboxylic acid functional groups, which allow the deprotonation of OH/OOH. This situation provides HAs with many capabilities, such as the improvement of plant growth and nutrition, complexation with heavy metals, and antiviral and anti-inflammatory activity. In addition, the presence of phenols, carboxylic acids and quinones in the structure of HAs is related to their antioxidant, antimutagenic/desmutagenic and fungicidal/ bactericidal activities (Pg. 968, Column 1, Lines 9-19). Thus, the amount of phenols present in the humic acid is an effective result based on the origin, age, climate, and environmental conditions of extraction/production of the humic acids and the concentration of the components therein as too little humic acid (and the inherent phenols therein) will not produce the desired result. This is motivation for the ordinary artisan to practice or test the concentration values widely to determine those that are functional and optimal which would be inclusive or cover the instantly claimed ranges.
Absent any teaching of criticality by the Applicant concerning the concentration of the claimed components, it would be prima facie obvious that the ordinary artisan would recognize these limitations are an optimizable variable which can be met as a matter of routine optimization, see the MPEP at 2144.05 II. B. There would have been a reasonable expectation of success in making this modification because the prior art teaches the use of the same components and the determination of the optimal concentrations by routine optimization was within the purview of those of ordinary skill in
the art prior to the effective filing date. Secondly, In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., retaining B. thuringiensis viability after light exposure) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The Applicant argues that the Specification provides evidence of the criticality of the claimed range by identifying a correlation between the compositional makeup of humic acid and improved retaining bacterial viability after light exposure wherein humic acid amounts of less than 0.19 phenolic groups were found ineffective compared to no humic acid of humic acid in a concentration of 0.009-0.09 and amounts of humic acid of 1.256, 0.423, 0.394, 0.375 and 0.192 mmol/g retained bacterial viability after light exposure (Remarks, Pg. 6, Lines 24-28 and Pg. 7, Lines 1-11).
This is not found to be persuasive for the following reasons, the alleged showing of criticality is not commensurate in scope with the claims which are drawn to humic acid having a concentration of phenol groups in a range of 0.19 to 1.26 mmol/g and does not require exposure of B. thuringiensis to light, much less any amount of percent bacterial viability to any amount of any type of light.
The Applicant argues that Lebo does not measure phenolic group concentration, identify the claimed range or teach the alleged unexpected result. Applicant asserts that therefore the combination of Lebo with the other cited prior art requires selecting an intrinsic property from Li and transferring it into Lebo with an expectation of success in producing the claimed unexpected result (Remarks, Pg. 7, Lines 13-23).
This is not found to be persuasive for the following reasons, the prior art does not need to produce the non-claimed alleged unexpected result. Lebo teaches a method of preparing a solution of 0.5-95 wt.% of pesticide modified humate (Pg. 13, Claim 1), wherein the pesticide is a Bacillus-based insecticide obtained from Bacillus thuringiensis (Pgs. 14-15, Claims 15, 16 and 19). While Lebo does not teach the particular claimed concentration of the phenol groups per gram of the humic acid/humate, Li et al. teaches a humic acid composition comprising phenol hydroxy group content in a range from 0.76-2.42 mmol/g in the humic acid composition (Pg. 9, Claim 1); wherein the humic acid composition improves soil physicochemical properties and utilization efficiency of a fertilizer, stimulates crop growth, strengthens anti-adversity of crop, and improves quality of agricultural products (Pg. 1, Paragraph [0002]).
While the above references do not specifically teach the claimed concentration range/amount limitations, those of ordinary skill in the art before the effective filing date would recognize the concentration or amount of a composition component as an optimizable variable dependent on the desired effect thereof. In this instance, Lebo teaches an aqueous (water-based) solution with a minimum of 5% oxidized humate which is useful as an adjuvant in pesticides. De Melo et al. evidences that Humic Acids (HA) contain different functional groups whose quantities depend on the origin, age, climate, and environmental conditions of extraction/production of the humic acids. The various functions of HAs are mainly attributable to the phenol and carboxylic acid functional groups, which allow the deprotonation of OH/OOH. This situation provides HAs with many capabilities, such as the improvement of plant growth and nutrition, complexation with heavy metals, and antiviral and anti-inflammatory activity. In addition, the presence of phenols, carboxylic acids and quinones in the structure of HAs is related to their antioxidant, antimutagenic/desmutagenic and fungicidal/ bactericidal activities (Pg. 968, Column 1, Lines 9-19). Thus, the concentration of humic acid in an aqueous pesticide composition, the amount of phenols present in the humic acid, and the amount of water in the aqueous composition are effective results based on the concentration of the components therein as too little humic acid (and the inherent phenols therein) or water in the composition will not produce the desired results. This is motivation for the ordinary artisan to practice or test the concentration values widely to determine those that are functional and optimal which would be inclusive or cover the instantly claimed ranges.
Absent any teaching of criticality by the Applicant concerning the concentration of the claimed components, it would be prima facie obvious that the ordinary artisan would recognize these limitations are an optimizable variable which can be met as a matter of routine optimization, see the MPEP at 2144.05 II. B. There would have been a reasonable expectation of success in making this modification because the prior art teaches the use of the same components and the determination of the optimal concentrations by routine optimization was within the purview of those of ordinary skill in the art prior to the effective filing date.
The Applicant argues that Arumugam does not measure phenolic group concentration or identify phenol concentration as a variable affecting B. thuringiensis viability. Applicant asserts that Li does not provide a reason to isolate or optimize the parameters of Arumugam and the Examiner’s finding is based on improper hindsight (Remarks, Pg. 8, Lines 3-8).
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this instance, Arumugam et al. teaches a pesticide formulation comprising 66.47 wt.% Bacillus thuringiensis, 28.83 wt.% water and a polyphenol, wherein the polyphenol comprises 1.01 wt.% humic acid and 0.12% fulvic acid (Pg. 4, Lines 10-13 and Pg. 9, Table 1 and Pg. 13, Claims 1, 7 and 8). While Arumugam does not teach the claimed phenol group concentration, Li teaches a humic acid composition comprising phenol hydroxy group content in a range from 0.76-2.42 mmol/g in the humic acid composition (Pg. 9, Claim 1); wherein the humic acid composition improves soil physicochemical properties and utilization efficiency of a fertilizer, stimulates crop growth, strengthens anti-adversity of crops, and improves quality of agricultural products (Pg. 1, Paragraph [0002]). While the above cited references do not specifically teach the claimed concentration range/amount limitations, those of ordinary skill in the art before the effective filing date would recognize the concentration or amount of a composition component as an optimizable variable dependent on the desired effect thereof. In this instance, Arumugam et al. teaches a pesticide formulation comprising 66.47 wt.% Bacillus thuringiensis, 28.83 wt.% water and a polyphenol, wherein the polyphenol comprises 1.01 wt.% humic acid and 0.12% fulvic acid. De Melo et al. evidences that Humic acids (HA) contain different functional groups whose quantities depend on the origin, age, climate, and environmental conditions of extraction/ production of the humic acids. The various functions of HAs are mainly attributable to the phenol and carboxylic acid functional groups, which allow the deprotonation of OH/OOH.
This situation provides HAs with many capabilities, such as the improvement of plant growth and nutrition, complexation with heavy metals, and antiviral and anti-inflammatory activity. In addition, the presence of phenols, carboxylic acids and quinones in the structure of HAs is related to their antioxidant, antimutagenic/desmutagenic and fungicidal/ bactericidal activities (Pg. 968, Column 1, Lines 9-19). Thus, the amount of phenols present in the humic acid is an effective result based on the origin, age, climate, and environmental conditions of extraction/production of the humic acids and the concentration of the components therein as too little humic acid (and the inherent phenols therein) will not produce the desired result. This is motivation for the ordinary artisan to practice or test the concentration values widely to determine those that are functional and optimal which would be inclusive or cover the instantly claimed ranges. Absent any teaching of criticality by the Applicant concerning the concentration of the claimed components, it would be prima facie obvious that the ordinary artisan would recognize these limitations are an optimizable variable which can be met as a matter of routine optimization, see the MPEP at 2144.05 II. B. There would have been a reasonable expectation of success in making this modification because the prior art teaches the use of the same components and the determination of the optimal concentrations by routine optimization was within the purview of those of ordinary skill in the art prior to the effective filing date.
The Applicant argues that dependent claims 2-4 are not taught or suggested by the cited prior art or teach or suggest the alleged unexpected result (Remarks, Pg. 8, Lines 10-14).
This is not found to be persuasive for the reasoning provided both in the prior action in the above response to arguments.
The Applicant argues that the co-pending ‘109 and ‘122 applications have additional components and are based on different principles than the claimed application. Applicant requests the rejections be held in abeyance until a finding of allowable subject matter (Remarks, Pg. 8, Lines 21-29 and Pg. 9, Lines 1-6.
This is not found to be persuasive for the reasoning provided both in the prior action in the above response to arguments. As there is not provision for holding rejections “in abeyance” they remain in effect.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to PAUL C MARTIN whose telephone number is (571)272-3348. The Examiner can normally be reached Monday-Friday 12pm-8pm EST.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Sharmila G Landau can be reached at (571) 272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL C MARTIN/Examiner, Art Unit 1653 09/29/2026
