DETAILED ACTION
Status of Application
Receipt of the response to the non-final office action, the amendments to the claims and applicant arguments/remarks, filed 12/08/2025, is acknowledged.
Claims 1, 4, 17-19, 22, 39-40 are pending in this action. Claims 2-3, 5-16, 20-21, 23-38 have been cancelled previously. Claims 1, 39 have been amended. Claims 1, 4, 17-19, 22, 39-40 are currently under consideration.
Any rejection or objection not reiterated in this action is withdrawn. Applicant's amendments necessitated new ground(s) of rejection presented in this office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Priority
This application, filed April 29, 2018, is a 371 of PCT/IL2016/51168, filed October 28, 2016, which claims benefit of provisional U.S. Application No. 62/367,952, filed July 28, 2016, and U.S. Application No. 62/247,972, filed October 29, 2015.
Claim Rejections - 35 USC § 112(b)
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, 4, 17-19, 22, 39-40 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 pre-AIA the applicant regards as the invention.
Newly amended claim 1 recites the limitation “the material that is coated is wood chips; cloth; calcium carbonate powder; sand; paper; and vermiculite” that is not reasonably clear. In the present case, it is unclear what is disclose as “the material”. Is it a mixture of recited constituents, OR at least one of them? Therefore, the scope of the claim is not clear. Similar is applied to claim 39. Clarification is required.
Claim 1 recites the limitation “at least one volatile non-polar liquid compound includes an essential oil; fragrance oil; a pheromone; a pyrethrin; pyrethroids; alkanes; alkenes; alkynes; aldehydes; ketones; and mixtures thereof” that is not reasonably clear. In the present case, it is unclear what is discloses as “at least one volatile non-polar liquid compound”. Is it a mixture (i.e., includes) that include recited compounds and may include other compounds even in a large amount? Therefore, the scope of the claim is not clear. Similar is applied to claim 39. Clarification is required.
Claim 1 recites the limitation “a carrier oil comprising a vegetable oil; a paraffin oil; a canola oil; a lanolin oil; a plant extracted oil” that is not reasonably clear. In the present case, it is unclear what is disclosed as “a carrier”. Is it a mixture (i.e., comprising) that include recited compounds and may include other compounds/components even in a large amount? Therefore, the scope of the claim is not clear. Similar is applied to claim 39. Clarification is required.
Claims 4, 17-19, 22, 40 are rejected as being dependent on rejected independent claims 1, 39 and failing to cure the defect.
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, 17-19, 22, 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over McGee et al., US 2005/0214337 (cited in IDS; hereinafter referred to as McGree) in view of Mysore et al., Water Research 2005, 39:2643–2653 (hereinafter referred to as Mysore), and of Bessette et al., WO 2001/000033A1 (hereinafter referred to as Bessette), and further in view of Rolf, US 5,142,817, and Sakurada et al., US 6,159,489 (cited in IDS; hereinafter referred to as Sakurada).
McGee teaches compositions providing controlled release of an essential oil having pesticidal or fungicidal activity, wherein said compositions comprise a carrier material for said essential oil and a component(s) that controls the release of said essential oil from the carrier material (Abstract; Para. 0006-0007, 0026). McGee teaches that said compositions may include carrier materials and volatile non-polar liquid compounds associated with said carrier material (Para. 0005-0007).
McGee teaches that said compositions may include (i) hydrophobic silica, sand as auxiliary agents (Para. 0020); talc, vermiculite, calcium carbonates as carrier materials, wherein said carrier materials may be in form of particles; minerals, e.g., clay, wood shavings (Para. 0022 as applied to claims 1, 4). Further, McGee teaches that the use of such hydrophobic material as hydrophobic silica, sand and/or supporting materials that absorb the essential oil allows controlling the release of the essential oil from the supporting material (Claim 2; Para. 0008).
McGee teaches the use of such volatile compounds as essential oils extracted form plants, pyrethrins, (Para, 0007), and also teaches that said compositions may include a carrier oil; e.g., vegetable oils, non-vegetable oils, mineral oils (Para. 0007, 0009, 0016 as applied to claim 1).
McGee teaches that said compositions can be prepared by mixing with stirring the oil component(s) with carrier/support material until the liquid portion is well incorporated into the supporting material (Example 1 as applied to claim 39).
McGee further teaches that said compositions can be contained in a sachet/bag that allows egress of the essential oil, such that when the composition is placed in an environment, it will release the essential oil to the environment in a slow and controlled manner (Para. 0025 as applied to claims 17, 40).
Though McGee teaches the use of such hydrophobic material as hydrophobic silica, sand as supporting materials that absorb the essential oil allowing thereby controlling the release of the essential oil from the supporting material (Claim 2; Para. 0008), McGee does not specifically teach the use of hydrophobized carrier materials (claims 1, 39), and/or the use of canola oil, paraffin oil as a carrier oil (claims 1, 39).
Mysore teaches that the use of hydrophobized vermiculite (i.e., comprising a carnauba wax coating on the surface of vermiculite) allows increasing sorption of oils, e.g., mineral oils, canola oil (Abstract; Page 2645, right; Page 3646, right).
Bessette teaches compositions for controlling house dust mites and comprising plant essential oils as repellants (Title; Pages 1 and 4), and specifically teaches that said compositions comprising plant essential oils as repellants also include inert dispersible liquid diluent carrier such as paraffin(s) (e. g. petroleum or mineral oil fractions), as well as inert, dispersible, finely divided solid carriers such as kaolin(s), clays, vermiculite, silica, calcium carbonate, talc, etc. (Page 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use/try hydrophobized carrier materials, e.g., such as hydrophobized vermiculate (as taught by Mysore) as well as carrier oils such as canola oil, paraffin oil (as taught by Mysore and Bessette) preparing compositions taught by McGee. One would do so with expectation of beneficial results, because the cited prior art teaches that (i) said approach would provide improved sorption of carrier oils to the carrier matrix and provide slow controlled release of the essential oil from said carrier matrix, and (ii) the hydrophobic carrier material, e.g., such as hydrophobized vermiculate, has high adsorptive capacity to canola oil (Mysore), whereas the use of paraffin oil as a carrier oil allows providing homogeneous mixture of carrier materials and essential oils used as an active agent (Bessette).
McGee also does not teach the use of a pheromone as a volatile compound (claims 1, 39), and/or the use of a polyolefin bag that is permeable to a volatile non-polar liquid compound (Claims 18, 40), comprising polyethylene material (Claim 19), or polypropylene (Claim 22).
Rolf teaches a protective wrap for trees and other plants (Title) comprising a flexible tape backing composed of a water insoluble polymeric sheet, and wherein to the backing is applied a homogeneous matrix comprising a biologically active composition dispersed therein (Abstract). Rolf teaches that said matrix serves as a reservoir for an agency to repel or kill pests and protect the plants, given that during the use the protective composition is released to the surface of the tape and to the surface of the plant to which the tape is applied (Col. 4, Lns. 12-16). Rolf further teaches that said protective composition may include a pheromone for attracting a particular species that is beneficial to the plant and which is a predator to another species that cause damage to the plant (Col. 4, Lns. 21-27), and also teaches that one can use active repellants, e.g., pyrethrins (Claims 4, 7; Col. 4, Lns. 31-30).
Sakurada teaches a reservoir type dispenser, which permits, during application, stable sustained release of a pheromone (i.e., a volatile compound; see instant specification Para. 011) over a long period of time (Abstract; Col. 4, Lns. 12-15). Sakurada teaches that said dispenser is a bag-shaped dispenser that is permeable to said volatile compound, and may include polyolefin materials, e.g., polyethylene and/or polypropylene (Col. 18, Ln. 59-Col. 19, Ln. 8), and/or a polyester material (Fig. 2; Col. 15, Lns. 11-16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use/try pheromones as taught by Rolf in compositions taught by McGee, Mysore, and Bessette, because Rolf teaches that said approach would allow attracting a particular species that is beneficial to the plant and which is a predator to another species that cause damage to the plant, i.e., would allow repealing undesired insects. It also would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the materials taught by Sakurada in permeable bags taught by McGee. One would do so with expectation of beneficial results, because Sakurada teaches that said materials can be used to make composite bags with controlled permeability to specific volatile compound and/or providing slow-release profile of said compound from the composite.
Regarding the properties of the disclosed formulations (i.e., rates of release of volatile fraction being in the range effective as an insecticide, fungicide, bactericide, etc. as in claims 1, 39) it is noted that the cited prior art teaches formulations that are substantially the same as the compositions recited by the instant claims, i.e., comprise components as instantly claimed. Therefore, it is expected that since the prior art is comprised of the same components, the same beneficial properties and effects would also be provided. Further, it is noted that an inherent feature needs not to be recognized by one of ordinary skill in the art at the time of the invention. It is only required that the subject matter is, in fact, inherent in the prior art reference. Schering Corp. v. Geneva Pharmaceuticals, Inc. (339 F.3d 1373, 1377, 67 U.S.P.Q.2d 1664, 1668) (Fed. Cir. 2003). In the present case, it is expected that since the prior art is comprised of the same components, the same beneficial properties and effects would also be provided. Further, it is noted that the fact that applicant has recognized another advantage, which would flow naturally from following the suggestion of the prior art, cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 5,688,509 (cited in IDS) - teaches controlled-release insect repellent devices, which comprises an insect repellent composition contacting a substrate and remain useful for desired period of time (Abstract; Col. 1, Ln. 33 – Col. 2, Ln. 6). To this end, Radwan teaches that rate of release of vapors of a compound having the ability to repel insects (e.g., essential oils) may be adjusted by the addition of a controlled-release agent (Col. 2, Ln. 34 – Col. 3, Ln. 18). Radwan further teaches that substrates, upon which the precursor mixture may be applied, include such materials as cloth, paper, molded fibers (Col. 4, Lns. 28-43). Radwan teaches that polyethylene, polypropylene films/barriers/containers/bags/pachages can be used for controlling rate of release of the active ingredient vapor from the insect repellent composition (Claim 36; Col. 5, Lns. 1-8).
DE19824680A1 (cited in IDS) - teaches the use of ethereal oils in depot form for control of mites, wherein (i) said ethereal/essential oils are dissolved or adsorbed in a solid matrix and slowly released; and (ii) said depot comprises porous, adsorptive hydrophobic substances such as zeolites, ion exchange resin, porous polymers, inert granular activated carbons. Grewe teaches that one can use glass fiber impregnated with essential oil, and also teaches that essential oil in the depot form can be hanged in a gas-permeable fabric bag (Abstract; Pages 2-3).
WO2015/150595 A1 (cited in IDS)- teaches a diffuser (i) comprising a powdery or granular matrix that is impregnated or mixed with active compounds (here as insect attractants), and (ii) is arranged inside a bag or container, which is partially or entirely formed by a permeable membrane via which the vapors of the active compounds diffuse (Abstract), and wherein said bag may comprise polyethylene membrane as the material permeable to the vapors of volatile active compounds, e.g., pheromone (Examples 1, 3 and 4).
US 4,923,119 (cited in IDS) – teaches a bag-like dispenser that contains a pheromone compound and provides a sustained release of said pheromone compound at a uniform emission rate over a long period of time (Abstract; Col. 1, Lns. 6-11), and wherein said bag-like dispenser body is formed of a specific polymeric laminate film having at least two layers comprising such (co)polymers as polyvinylidene chloride, polyesters, and polyolefins (Abstract; Col. 3, Ln. 60 - Col. 4, Ln. 5), e.g., polyethylene and/or polypropylene (Col. 5, Lns. 23-54).
Response to Arguments
Applicant's arguments, filed 12/08/2025, have been fully considered, but they were not found to be persuasive for the reasons set forth above. New arguments and/or rejections have been added to the record to address newly introduced amendments and to clarify the position of the examiner. Additional examiner’s comments are set forth next.
In response to applicant's arguments against the references individually, as stated previously (see Office Actions filed 08/10/2023, 02/15/2023, 07/18/2022), one cannot show nonobviousness by attacking references individually, where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Further, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In the present case, all cited references are reasonably drawn to the same field of endeavor that is controlled release compositions/articles comprising a carrier material and a non-polar liquid compound(s) and their use for providing controlled release of incorporated constituents/oils/compounds to the environment. Therefore, the examiner maintains the positions that the claimed 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, because every element of the invention has been collectively taught by the combined teachings of the references to be used for the same purpose. To this point, it is noted that the Supreme Court decided (KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007)) that:
(i) The obviousness analysis needs not seek out precise teachings directed to the subject matter of the challenged claim and can take into account the inferences and creative steps that one of ordinary skill in the art would employ.
(ii) The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.
(iii) It is error to look only the problem the patentee was trying to solve. Any need or problem known in the field of endeavor at the time of invention and addressed by the prior art can provide a reason for combining the elements in the manner claimed.
(iv) It is error to assume that one of ordinary skill in the art in attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. Common sense teaches that familiar items may have obvious uses beyond their primary purposes, and in many cases one of ordinary skill in the art will be able to fit the teachings of multiple patents together like pieces of a puzzle (one of ordinary skill in the art is not automaton).
(v) It is error to assume that a patent claim cannot be proved obvious merely by showing that the combination of elements was “obvious to try”.
Applicant is advised to clarify the claim language, the structure of the claimed product, and clearly point out the patentable novelty, which the applicant thinks the claims present in view of the state of the art disclosed by the references cited, to place the application in condition for allowance.
Conclusion
No claim is allowed at this time.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA V. TCHERKASSKAYA whose telephone number is (571)270-3672. The examiner can normally be reached 9 am - 6 pm, Monday - Friday.
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/OLGA V. TCHERKASSKAYA/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615