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.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract 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. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Pest Control Compositions Comprising Humic Acid and Bacillus Thuringiensis
Claim Objections
Claim 1 is objected to because of the following informalities: Bacillus Thuringiensis should be italicized. Appropriate correction is required.
Claims 3-4 are objected to because of the following informalities: The claims recite “any one of” but only depend from Claim 1. Appropriate correction is required.
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 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).
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 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 Il. 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).
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 Il. 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 Claims 1 and 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). 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 Il. 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.
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 07/30/2026
Prosecution Insights