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 .
Priority
The present application is a continuation of 17/269,135 (now, U.S. Patent No. 12,150,967; filed on 02/17/2021), which is a § 371 National Stage Entry of PCT/US2019/047059 (filed on 08/19/2019), which claims benefit of U.S. provisional application 62/765,004 (filed on 08/18/2018).
Claim Status
Claims 1-20 are currently pending and have been examined on their merits.
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,150,967.
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Regarding claim 1, the present claim is directed to a method of using a composition for protecting honeybees from a pesticide. The method comprises administering to a hive in need thereof a composition that includes at least one Lactobacillus strain that comprises Lactobacillus rhamnosus GR-1 and wherein the pesticide is a neonicotinoid pesticide.
Claim 1 of the ‘967 patent is directed to a method of using a composition for protecting honeybees from a pesticide. The active steps of claim 1 involve administering to a hive in need thereof a composition that includes at least one Lactobacillus strain wherein the at least one Lactobacillus strain comprises Lactobacillus rhamnosus GR-1.
Instant claim 1 is generic to the ‘967 patent because the ‘967 patent recites “acetamiprid, clothianidin, dinotefuran, nitenpyram, thiacloprid, and thiamethoxam” but the instant claim encompasses any neonicotinoid pesticide. Because acetamiprid, clothianidin, dinotefuran, nitenpyram, thiacloprid, and thiamethoxam are neonicotinoid pesticides (see ‘967 patent, col. 8, lines 1-14; instant specification, [0037]; and claims 2-7).
As discussed in MPEP § 804(II)(B)(2), a nonstatutory double patenting rejection is appropriate where a claim in an application under examination claims subject matter that is different, but not patentably distinct, from the subject matter claimed in a prior patent or a copending application. This type of nonstatutory double patenting situation arises when the claim being examined is, for example, generic to a species or sub-genus claimed in a conflicting patent or application (MPEP § 804(II)(B)(2)).
For this reason, claim 1 is unpatentable over the claims of ‘967.
Regarding claims 2-7, as discussed above, claim 1 of ‘967 recites acetamiprid, clothianidin, dinotefuran, nitenpyram, thiacloprid, and thiamethoxam.
Regarding claim 8, claims 1 and 7 of ‘967 teach that the composition is included in a pollen patty.
Regarding claim 9, claim 2 of ‘967 recites a method for protecting honeybees from a pesticide wherein the composition is formulated for application as an isotonic spray.
Regarding claim 10, although the claims don’t explicitly state that the composition is formulated for application to a honeybee hive, the compositions used in the ‘967 patent are necessarily “formulated for application to a honeybee hive” and if they are not necessarily “formulated for application to a honeybee hive”, then it would have been obvious to have formulated the composition in such a way because the claims of ‘967 are directed to “protecting honeybees” and require a step of “administering to a hive”. As such, it would have been obvious to have formulated the composition for the explicit purpose recited in ‘967.
Regarding claim 11, claim 8 of ‘967 recites a carbohydrate source selected from the group consisting of sugar syrup, cane sugar, beet sugar, corn syrup, honey, malt, glucose, fructose, sucrose, trehalose, maltose, melezitose, and combinations thereof.
Regarding claim 12, claim 9 of ‘967 recites a protein source selected from the group consisting of soy flour and brewer’s yeast, or a combination thereof.
Regarding claim 13, claim 8 of ‘967 recites an amino acid selected from the group consisting of arginine, histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine, and combinations thereof.
Regarding claim 14, the present claim is directed to a method of using a composition for protecting honeybees from a pesticide. The method comprises administering to a hive in need thereof a composition that includes at least one Lactobacillus strain that comprises Lactobacillus rhamnosus GR-1 and wherein the pesticide is a neonicotinoid pesticide.
Claim 1 of the ‘967 patent is directed to a method of using a composition for protecting honeybees from a pesticide. The active steps of claim 14 involve administering to a hive in need thereof a composition that includes at least one Lactobacillus strain wherein the at least one Lactobacillus strain comprises Lactobacillus rhamnosus GR-1.
Claim 14 overlaps with the scope of the ‘967 patent because claim 1 of ‘967 recites clothianidin and thiamethoxam.
For this reason, claim 14 is unpatentable over the claims of ‘967.
Regarding claim 15, claim 8 of ‘967 recites a carbohydrate source selected from the group consisting of sugar syrup, cane sugar, beet sugar, corn syrup, honey, malt, glucose, fructose, sucrose, trehalose, maltose, melezitose, and combinations thereof.
Regarding claim 16, claim 9 of ‘967 recites a protein source selected from the group consisting of soy flour and brewer’s yeast, or a combination thereof.
Regarding claim 17, claim 8 of ‘967 recites an amino acid selected from the group consisting of arginine, histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine, and combinations thereof.
Regarding claim 18, the present claim is directed to a method of using a composition for protecting honeybees from a pesticide. The method comprises administering to a hive in need thereof a composition that includes at least one Lactobacillus strain that comprises Lactobacillus rhamnosus GR-1 and wherein the pesticide is a neonicotinoid pesticide.
Claim 1 of the ‘967 patent is directed to a method of using a composition for protecting honeybees from a pesticide. The active steps of claim 18 involve administering to a hive in need thereof a composition that includes at least one Lactobacillus strain wherein the at least one Lactobacillus strain comprises Lactobacillus rhamnosus GR-1.
Claim 18 overlaps with the scope of the ‘967 patent because claim 1 of ‘967 recites acetamiprid, dinotefuran, nitenpyram, thiacloprid, and thiamethoxam.
For this reason, claim 18 is unpatentable over the claims of ‘967.
Regarding claim 19, claim 8 of ‘967 recites a carbohydrate source selected from the group consisting of sugar syrup, cane sugar, beet sugar, corn syrup, honey, malt, glucose, fructose, sucrose, trehalose, maltose, melezitose, and combinations thereof.
Regarding claim 20, claim 8 of ‘967 recites an amino acid selected from the group consisting of arginine, histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine, and combinations thereof.
Pertinent Prior Art
The closest prior art is Daisley et al. (Scientific Reports, 2017, Vol. 7, Article 2703, p. 1-13) which teaches the use of the probiotic Lactobacillus plantarum in Drosophila melanogaster (an insect model for the honeybee). Daisley teaches that L. plantarum Lp39 can protect honeybees from imidacloprid-induced toxicity. However, Daisley differs from the instantly claimed invention because it does not teach the recited strain L. rhamnosus GR-1. There is no teaching or motivation in the art to modify Daisley to instead use a different species of lactic acid bacteria, let alone the specific strain recited in the claims. Accordingly, the prior art does not teach or suggest the claimed invention.
Conclusion
No claim is allowed.
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/GRANT C CURRENS/Examiner, Art Unit 1651
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