DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on November 5, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1 – 2 are objected to because of the following informalities:
The recitations of “bacillus thuringiensis” should be properly identified as “Bacillus thuringiensis,” including proper italicized text and capitalization.
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.
Claims 1 – 5 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.
Claims 1, 4 and dependents are drawn to a spray dried pest control composition, however are rendered indefinite for reciting “using Laser Diffraction” because it is unclear whether the limitation requires active steps to be carried out, e.g., as in a product by process; or if the limitation is attempting to recite an intended use of the composition, e.g., a step of how the composition will be evaluated. Since the method of measuring particle size does not materially affect the actual particle size, for purposes of examination the limitation is not interpreted to materially change the composition itself, nor to limit the composition in any material way. Rather, the limitation is interpreted as an intended future means or use to qualify the composition, rather than limit the claimed composition.
In claims 3 – 5, the recitation of “of any one of” in line 1 renders the claims indefinite as it is unclear to what additional “claim 1” the claims refer. Clarification is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 4 are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by Fowler et al. (US 5851545) as evidenced by Wikipedia “Styrene,” Wikipedia “Styrene maleic anhydride” and “EPA” (2026).
Regarding claims 1 and 4, Fowler teaches spray dried biopesticidal (pest control) compositions (col.3) comprising styrene/maleic anhydride copolymer (a polymer with at least 50% monomeric units of styrene, a monomer having log P of 2.7, See Wikipedia ““Styrene” and “Styrene maleic anhydride” which falls within the claimed range of 2.0 – 6.0) (col.5 line 8 – 21); and Bacillus thuringiensis (col.6); wherein the average particle size is 1 – 50 microns (col.7 line 60 – 67) which overlaps with the claimed range of 30nm – 100 microns and falls within the claimed range of 1 – 100 microns. Fowler teaches the polymer has a “high molecular weight” (col.5 line 15 – 20) which is defined as greater than 10,000 daltons (EPA, 2026), and encompasses the claimed molecular weight of 10,000 – 30,000 daltons.
Regarding the limitation of “using Laser Diffraction,” the limitation is regarded as a means to analyze the claimed composition, or an intended use of the composition, and does not further limit the composition itself. The intended use of (or later analysis of) the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the composition of the prior art. In the instant case, the intended use fails to create a structural difference, thus, the intended use is not limiting. Please note that when applicant claims a composition in terms of function, and the composition of the prior art appears to be the same, the Examiner may make rejections under both 35 U.S.C 102 and 103 (MPEP 2112).
Therefore, the reference anticipates the claimed subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claims 1 – 4 are rejected under 35 U.S.C. 103 as being unpatentable over Fowler et al. (US 5851545) as evidenced by Wikipedia “Styrene,” Wikipedia “Styrene maleic anhydride” and “EPA” (2026).
Regarding claims 1 and 4, Fowler teaches spray dried biopesticidal (pest control) compositions (col.3) comprising styrene/maleic anhydride copolymer (a polymer with at least 50% monomeric units of styrene, a monomer having log P of 2.7, See Wikipedia ““Styrene” and “Styrene maleic anhydride” which falls within the claimed range of 2.0 – 6.0) (col.5 line 8 – 21); and Bacillus thuringiensis (col.6); wherein the average particle size is 1 – 50 microns (col.7 line 60 – 67) which overlaps with the claimed range of 30 nm – 100 microns and 1 – 100 microns. Fowler teaches the polymer has a “high molecular weight” (col.5 line 15 – 20) defined as greater than 10,000 daltons (EPA, 2026), which encompasses the claimed molecular weight of 10,000 – 30,000 daltons.
Regarding the limitation of “using Laser Diffraction,” the limitation is regarded as a means to analyze the claimed composition, or an intended use of the composition, and does not further limit the composition itself. The intended use of (or later analysis of) the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the composition of the prior art. In the instant case, the intended use fails to create a structural difference, thus, the intended use is not limiting. Please note that when applicant claims a composition in terms of function, and the composition of the prior art appears to be the same, the Examiner may make rejections under both 35 U.S.C 102 and 103 (MPEP 2112).
Regarding claim 2, Fowler does not teach the composition comprising the claimed amount of polymer. However, Fowler teaches the active component, B. thuringiensis, is included at 30 – 90%, encompassing the claimed range of 1 – 50% and the polymer at 0.5 – 25% (col.5). At the time the claims were filed, it would have been obvious to one of ordinary skill in the art to optimize the amounts of polymer since the polymer is disclosed as a functional component encapsulating and entrapping active toxins such that the toxins are delivered to the target pest (col.2). Thus, in following the teachings of Fowler, one of ordinary skill in the art would have been motivated to optimized the amount of polymer in the compositions disclosed therein, with a reasonable expectation for successfully obtaining an effective biopesticidal composition.
Regarding claim 3, Fowler does not teach the specifically claimed molecular weight of the polymer. However, Fowler teaches preferred polymers are “high molecular weight polymers” (col. 5) (or greater than 10,000 daltons, per EPA definition). Thus, in following the teachings of Fowler, one of ordinary skill in the art would have been motivated to use a polymer having the claimed molecular weight with a reasonable expectation for successfully obtaining an effective pesticidal composition.
Thus, the invention as a whole is prima facie obvious over the references, especially in the absence of evidence to the contrary.
Claims 1 and 4 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over Fowler et al. (US 5851545) as evidenced by Wikipedia “Styrene,” Wikipedia “Styrene maleic anhydride” and “EPA” (2026) in view of CN 112438254 A.
Regarding claims 1 and 4, Fowler teaches spray dried biopesticidal (pest control) compositions (col.3) comprising styrene/maleic anhydride copolymer (a polymer with at least 50% monomeric units of styrene, a monomer having log P of 2.7, See Wikipedia ““Styrene” and “Styrene maleic anhydride” which falls within the claimed range of 2.0 – 6.0) (col.5 line 8 – 21); and Bacillus thuringiensis (col.6); wherein the average particle size is 1 – 50 microns (col.7 line 60 – 67) which overlaps with the claimed range of 30 nm – 100 microns and 1 – 100 microns. Fowler teaches the polymer has a “high molecular weight” (col.5 line 15 – 20) defined as greater than 10,000 daltons (EPA, 2026), which encompasses the claimed molecular weight of 10,000 – 30,000 daltons.
Regarding the limitation of “using Laser Diffraction,” the limitation is regarded as a means to analyze the claimed composition, or an intended use of the composition, and does not further limit the composition itself. The intended use of (or later analysis of) the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the composition of the prior art. In the instant case, the intended use fails to create a structural difference, thus, the intended use is not limiting. Please note that when applicant claims a composition in terms of function, and the composition of the prior art appears to be the same, the Examiner may make rejections under both 35 U.S.C 102 and 103 (MPEP 2112).
Regarding claim 5, Fowler does not teach the composition comprising the claimed copolymer. However, at the time the claims were filed, diisobutylene maleic anhydride copolymer was a well known and used copolymer for dispersing pesticides. In support, CN ‘254 teaches dispersing polymers for spray dried pesticides wherein the polymer is a copolymer of diisobutylene and maleic anhydride (DIBMA) (examples 1,3-6, claims). The reference teaches the polymers “solve the balance problem of the suspension percentage and the water absorbability in the pesticide dispersion process by limiting the composition and the proportion of the dispersing auxiliary agent, so that the prepared pesticide composition has high dispersion efficiency and low moisture absorbability” (p.2 of EngTrans). In this regard, the copolymer meets the requirements of Fowler including that the polymer “must be soluble in the environment of the insect gut…must not be soluble in the carrier of a formulation if the carrier is a liquid…must be substantially insoluble in the water used as a carrier in the spray tank and spray equipment” (col.5). Moreover, at the time the claims were, one of ordinary skill in the art would have been motivated to use DIBMA in the compositions of Fowler since the polymer was well known and used in the art, was known to meet the requirements set forth by Fowler, and with a reasonable expectation for successfully obtaining an effective pesticidal composition.
Thus, the invention as a whole is prima facie obvious over the references, especially in the absence of evidence to the contrary.
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 – 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 6 of copending Application No. 18/863 096 in view of Fowler et al. (US 5851545).
The reference application claims a pest control composition comprising a polymer, wherein the polymer has a weight average molecular weight from 15,000 daltons to 30,000 daltons and contains from 50 wt % to 70 wt % of monomeric structural units derived from a monomer with a log P of from 2.0 to 6.0; Bacillus thuringiensis; and water; wherein the polymer is from 0.10 wt % to 20.00 wt % of the composition; wherein the polymer contains from 50 wt % to 70 wt % of monomeric structural units derived from a monomer with log P of from 2.75 to 4.08l; wherein the polymer contains 90 wt % or greater of monomeric structural units derived from a monomer with log P of 1.0 or greater; and wherein the polymer comprises a copolymer of diisobutylene and maleic anhydride.
The reference patent does not claim the composition spray dried. However, Fowler teaches similar pesticidal compositions that are spray dried (col. 3, 7). In this regard, it was well known in the art to spray dry pesticidal compositions comprising B. thuringiensis and copolymers. As such, it would have been well within the purview of one in the art to spray dry the composition of the reference application as a matter of routine practice and procedure.
This is a provisional nonstatutory double patenting rejection.
Claims 1 – 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 4 of copending Application No. 18/863 109 in view of Fowler et al. (US 5851545).
The reference application claims a pest control composition comprising a polymer, 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; and Bacillus thuringiensis; wherein the polymer is from 0.10 to 20.00 wt % of the composition based upon a total weight of the combination; and wherein the polymer is a copolymer of diisobutylene and maleic anhydride.
The reference patent does not claim the composition spray dried. However, Fowler teaches similar pesticidal compositions that are spray dried (col. 3, 7). In this regard, it was well known in the art to spray dry pesticidal compositions comprising B. thuringiensis and copolymers. As such, it would have been well within the purview of one in the art to spray dry the composition of the reference application as a matter of routine practice and procedure.
This is a provisional nonstatutory double patenting rejection.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUTH A DAVIS whose telephone number is (571)272-0915. The examiner can normally be reached Monday - Friday (8am - 4pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUTH A DAVIS/Primary Examiner, Art Unit 1699
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