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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 28 February 2025 has been entered.
Claim Status
Applicant’s claim amendments, and arguments, filed 28 February 2025 are acknowledged.
Claims 1, 5-9, 11, 18-22 & 24-26 are pending.
Claims 2-4, 10, 12-17 & 23 are cancelled.
Claims 1, 6, 8, 11 & 24 are amended.
Claims 19-22, 25 & 26 are withdrawn.
Claims 1, 5-9, 11, 18 & 24 are under consideration.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied and constitute the complete set presently being applied to the instant application.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file. The foreign document is in English.
Withdrawn Rejections
The rejection of claim 11 under 35 USC 112-lack of antecedent basis is withdrawn due to claim amendments which correct the issue.
The rejection of claims 1-3, 5-7, 9, 11, & 18 under 35 USC 103 over Enan, Jiao, Schnorback and claim 8 over Enan, Jiao and Schnorbach, Moyer, and Yang is withdrawn due to claim 1 amendment requiring the solvent comprise 1,5-pentanediol in a concentration of 25 to 40% w/w.
The rejection of claims 1-3, 5, 6, 7, 9, 11 & 18 under 35 U.S.C. 103 over Enan, Ukita, Songkro and Jiao; and claims 8 & 24 are over Enan, Ukita, Songkro, Jiao, Moyer and Yang is withdrawn due to claim 1 amendment requiring the solvent comprise 1,5-pentanediol in a concentration of 25 to 40% w/w.
The rejection of claim 23 under 35 USC 103(a) is withdrawn due to cancellation of the claim.
New & Maintained Rejections
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, 5-9, 11, 18 & 24 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.
Claim 1 recites “(w/w)”. Therefore it is unclear if the weight percent is an optional unit or is required by the claim. It is suggested that the parenthesis can be removed to overcome this rejection.
Claims 5-9, 11, 18 & 24 are rejected under 35 USC 112(b) because they ultimately depend from indefinite to claim 1 and do not clarify the issue.
Claim 6 recites “(w/w)”. Therefore it is unclear if the weight percent is an optional unit or is required by the claim. It is suggested that the parenthesis can be removed to overcome this rejection.
Claim 8 recites “(w/w)”. Therefore it is unclear if the weight percent is an optional unit or is required by the claim. It is suggested that the parenthesis can be removed to overcome this rejection Claim 24 recites “(w/w)”. Therefore it is unclear if the weight percent is an optional unit or is required by the claim. It is suggested that the parenthesis can be removed to overcome this rejection.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 5-9, 11, 18 & 24 are rejected under 35 U.S.C. 103 as being unpatentable over Enan (US 2008/0020078; Published: 2008-01-24; IDS filed-01/06/2022; previously cited), Jiao (US 20170173162; Published: 2017-06-22; previously cited), Schnorbach (US 20020094993; Published: 2002-07-18; previously cited), Moyer (US 2019/0133115; Published: 2019-05-09; Filed: 2017-11-08; previously cited), and Yang (CN 104161192; Published: 2014-11-26; previously cited).
With regard to claims 1, 5, 6, 7, 9, 11 & 18, and the elected species, Enan teaches pest control compositions including “at least one ingredient such as, for example,…thymol…” [0013]. “Thymol can be included at a concentration of between 5% or less to 40% or more; at a concentration of between 15%-25%; or at a concentration of about 20% by weight” [0034] . “Vanillin is included, preferably at a concentration between 0.5 and 4%, most preferably about 1%”[0038]. With regard to claim 7, “ For another example, one composition of the present invention comprises about 50% water and surfactant and about 50% of a composition, including: about 39% Methyl salicylate; about 20% Thymol (crystal); about 20% Geraniol 60; and about 1% Vanillin.” [0045].With regard to claim 9, Enan does not teach or require “N,N-diethyl-m-toluamide…(EBAAP), or any combination thereof”. With regard to claim 11, Enan teaches the “compositions of the present invention can be used to control insects”(i.e. insecta) [0046] . With regard to claim 11, Enan also prepared and tested the compositions of their invention for efficacy against spiders (i.e. arachnida; [0076]). Enan teaches formulation of their invention in solid and/or liquid dispersible carrier vehicles and/or other known compatible active agents such as fungicides and bactericides [0042]. Enan teaches the composition can comprise BHT [0013]. With regard to claim 7, Enan teaches embodiments of their invention comprise water (i.e. diluent; [0044]). Enan also teaches the compositions of their invention may be used as coating compositions for use on seeds [0042]. Enan teaches that in certain exemplary embodiments thymol is crystallized [0039].
Enan does not teach the amount of vanillin at a concentration of 10% to 40% by weight, nor does Enan teach the solvent is 1,5 pentanediol present in a concentration of 25 to 40 % w/w.
In the same field of invention of repelling pests, Schnorbach teaches a repellant and an additive in a ratio of 10:100 to 200:100% by weight to the repellent (i.e. 33.3-90.9 % additive; abstract). Schnorbach teaches a combination of DEET and vanillin have a prolonged repellent effect compared to DEET alone [0007]. Schnorbach teaches vanillin is a preferred additive [0062]. Schnorbach teaches “[s]urprisingly, it has been found that the action of repellents against crawling insects can be prolonged to a degree which was unforeseeable, by mixing these repellents with one of the above additives. Repellent and additive act synergistically, resulting in the more than proportional prolongation of action. This effect cannot be explained by an inhibition of the evaporation of the repellent by the additive alone” [0010].
In the same field of invention of natural compositions, Jiao teaches the compositions of their invention comprise BHT or 1,5 pentanediol as one or more known antimicrobial preservatives [0045]. Jiao contemplates the inclusion of compounds which kill insects (Jiao’s claim 19).
In the same field of invention of seed treatment which comprise insecticides (abstract; [0023]), Moyer teaches solvents which may be 1,5-pentandiol and tetrahydrofurfuryl alcohol [0044]. Moyer teaches their solvents resulted in formulations which showed no crystals after being stored at −6 C for 6 weeks, 45 °C for 6 weeks and after freeze-thaw cycles. This innovation addresses the prior art problem of crystallization [0021]. Moyer teaches the formulation of their invention comprise “0.1 to about 35% w/w of at least one or more pesticide active ingredients, about 2-98% tetrahydrofurfuryl alcohol, or one or a combination of other suitable solvents, about 0.1 to 98% water” [0013]. Moyer teaches “[t]he unexpected result is that the efficacy of the fungicide or insecticide or both is unaffected and the inventive formulations do not exhibit, or exhibit far less, crystallization after exposure to cool, cold or freezing temperatures followed by thawing” [0044]. Moyer also teaches “alkyl diols or alkyl triols may optionally be added as a co-solvent/antifreeze” [0020].
In the related field of feed additives; Yang teaches dissolved/solubilized thymol has improved bioavailability so that it improves the effect of thymol (abstract). Yang teaches thymol is antibacterial and an insect repellant [0002].
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to have modified Enan’s pest repellent by adjusting the amount of vanillin to be 33.3-90.9% of the composition [yielding a ratio of 1:2.22 to 1:3.6*] as suggested by Schnorbach and substituting Enan’s BHT with 2-98% 1,5 pentanediol as suggested by the combined teachings of Jiao and Moyer because Enan, Jiao, Schnorbach and Moyer are directed to killing/repelling insects which may be used as seed treatments and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success in order to prolong the effect of the thymol through inclusion of vanillin in an amount of 33.3-90.9%, improve the bioavailability of thymol by solubilizing it as suggested by Yang and prolong the shelf-life of the composition through inclusion of 1,5 pentanediol to prevent recrystallization and the added benefit of an anti-freeze effect to the seed treatment as taught by Moyer.
With regard to the recited amounts of thymol; vanillin; and 1,5-pentanediol; and the ratio of thymol: vanillin, the combined teachings of Enan, Jiao, Schnorbach, Moyer and Yang teach these parameters with values which fall within the recited ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With specific regard to the concentration of vanillin as it pertains to claim 24, the prior art’s teaching of 33.3% as compared to the recited amount of 30% vanillin, 33.3% is close to 30%. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) . In the instant case, 33.3% vanillin and 30% vanillin is expected to have the same property of crawling insect repellence as taught by Schnorbach.
*Math: 15% thymol: 33.3% vanillin = 1: 2.22; 25% thymol: 90% vanillin = 1: 3.6
Claims 1, 5-9, 11, 18 & 24 are rejected under 35 U.S.C. 103 as being unpatentable over Enan (US 2008/0020078; Published: 2008-01-24; IDS filed-01/06/2022; previously cited), Ukita [WO 2020059761; Published: 03/26/2020 (using US 20210329915; Published:10/28/2021, as the English language translation)], Jiao (US 20170173162; Published: 2017-06-22; previously cited), Moyer (US 2019/0133115; Published: 2019-05-09; Filed: 2017-11-08; previously cited), and Yang (CN 104161192; Published: 2014-11-26; previously cited).
All references refer to the English language translation.
With regard to claims 1, 5, 6, 7, 9, 11 & 18, and the elected species, Enan teaches pest control compositions including “at least one ingredient such as, for example,…thymol…” [0013]. “Thymol can be included at a concentration of between 5% or less to 40% or more; at a concentration of between 15%-25%; or at a concentration of about 20% by weight” [0034] . “Vanillin is included, preferably at a concentration between 0.5 and 4%, most preferably about 1%”[0038]. “ For another example, one composition of the present invention comprises about 50% water and surfactant and about 50% of a composition, including: about 39% Methyl salicylate; about 20% Thymol (crystal); about 20% Geraniol 60; and about 1% Vanillin.” [0045]. With regard to claim 9, Enan does not teach or require “N,N-diethyl-m-toluamide…(EBAAP), or any combination thereof”. With regard to claim 11, Enan teaches the “compositions of the present invention can be used to control insects” [0046] . With regard to claim 11, Enan also prepared and tested the compositions of their invention for efficacy against spiders (i.e. arachnida; [0076]). Enan teaches formulation of their invention in solid and/or liquid dispersible carrier vehicles and/or other known compatible active agents such as fungicides and bactericides [0042]. Enan teaches the composition can comprise BHT [0013]. Enan teaches embodiments of their invention comprise water (i.e. diluent; [0044]).
Enan does not teach the amount of vanillin at a concentration of 10% to 40% by weight, nor does Enan teach the solvent is 1,5 pentanediol or its amount.
With regard to claims 1, 5 & 24, in the same field of invention of insect repellent products, Ukita teaches vanillin to be fragrance component and in Tables 1 & 2 teaches its inclusion in pest repellant fragrance compositions in an amount of 13.8, 25.1, 28.7, and 33.8% ([0073]; pg. 9 & 10).
In the same field of invention of natural compositions, with regard to claim 1, Jiao teaches the compositions of their invention comprise BHT or 1,5 pentanediol as one or more known antimicrobial preservatives [0045]. Jiao contemplates the inclusion of compounds which kill insects (Jiao’s claim 19).
With regard to claims 1, 8, & 24, in the same field of invention of seed treatment which comprise insecticides (abstract; [0023]), Moyer teaches solvents which may be 1,5-pentandiol and tetrahydrofurfuryl alcohol [0044]. Moyer teaches their solvents resulted in formulations which showed no crystals after being stored at −6 C for 6 weeks, 45 °C for 6 weeks and after freeze-thaw cycles. This innovation addresses the prior art problem of crystallization [0021]. Moyer teaches the formulation of their invention comprise “0.1 to about 35% w/w of at least one or more pesticide active ingredients, about 2-98% tetrahydrofurfuryl alcohol, or one or a combination of other suitable solvents, about 0.1 to 98% water” [0013]. Moyer teaches “[t]he unexpected result is that the efficacy of the fungicide or insecticide or both is unaffected and the inventive formulations do not exhibit, or exhibit far less, crystallization after exposure to cool, cold or freezing temperatures followed by thawing” [0044]. Moyer also teaches “alkyl diols or alkyl triols may optionally be added as a co-solvent/antifreeze” [0020] . Moyer in Example 1 teaches inclusion of the solvent, tetrahydrofurfuryl alcohol, in an amount of 51.22% [0052].
In the related field of feed additives; Yang teaches dissolved/solubilized thymol has improved bioavailability so that it improves the effect of thymol (abstract). Yang teaches thymol is antibacterial and an insect repellant [0002].
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to have modified Enan’s pest repellent by adjusting the amount of vanillin to be 13.8-33.8% of the composition [yielding a ratio of 1:0.552 to 1:2.25; including 1.135*] as suggested by Ukita and substituting Enan’s BHT with 2-98% 1,5 pentanediol as suggested by the combined teachings of Jiao, Moyer, and Yang because Enan, Ukita, Jiao, Moyer and Yang are directed to killing/repelling insects and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, in order to use reagents suitable for insecticides in amounts art recognized as suitable for their purpose with the added benefit of inhibiting crystalization.
With regard to the recited amounts of thymol; vanillin; 1,5-pentanediol and the ratio of thymol: vanillin, the combined teachings of Enan, Ukita, Jiao, Moyer and Yang teach these parameters with values which fall within the recited ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
*Math: 15% thymol: 33.8% vanillin = 1: 2.25; 25% thymol: 33.8% vanillin = 1:1.35; 25% thymol : 13.8% vanillin = 1:0.552
Response to Arguments
Applicant points to paragraph numbers and the table of the published application for support (reply, pg. 6 & 10).
This is not persuasive. The as-filed disclosure was not filed with paragraph numbers. Applicant’s representative appears to be point to the US Publication. This is improper. The US Publication is not the original disclosure in that it is not Applicant’s immediate work as filed and there is potential for errors to be inadvertently introduced by the printers/typesetters. MPEP 608 is quite clear. “All amendments and claims must find descriptive basis in the original disclosure. No new matter may be introduced into an application after its filing date. Applicant may rely for disclosure upon the specification with original claims and drawings, as filed. See also 37 CFR 1.121(f) and MPEP § 608.04.” (emphasis added; MPEP 608). Applicant’s future responses should point to support in the as-filed specification by page and line number.
In the rejection of claims 1-3, 5-7, 9, 11 and 18 under 35 USC 103 over Enan, Jiao and Schnorback; and claims 1-3, 5-7, 9, 11, and 18 under 35 USC 103 over Enan, Ukita, Songkro and Jiao, Applicant argues claim 23 has been incorporated to overcome these rejections with none of the cited references teaching the amount of 1,5-pentanediol (reply, pg. 7-8).
This is not persuasive. Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues the ranges recited by claim 1 are critical and demonstrate superior results (reply, pg. 10). Applicant argues formulation F8 has a CPT of 90, demonstrating that high concentrations of thymol are effective (reply, pg. 10 & 11). Applicant supplies a visual representation which is Table 1 for the concentrations of thymol and vanillin against mosquitoes (reply, pg. 12).
PNG
media_image1.png
652
1089
media_image1.png
Greyscale
(reply, pg. 12). Applicant argues the combination of thymol and vanillin in the amounts recited are capable of achieving the protection of high-thymol sample F8 (reply, pg. 11). Applicant argues the results are greater than the sum of each of the effects taken separately (i.e. synergism; pg. 12).
This is not persuasive. Applicant’s Table 1 shows that as the thymol and vanillin concentrations increase, so does the protection time. It also appears to be a predictable improvement given the linearity of the protection times. This is a scientific discovery, a demonstration of good science, and The Federal Circuit concluded that “[g]ood science and useful contributions do not necessarily result in patentability.” Id. at 1364, 83 USPQ2d at 1304 (MPEP 2145). Further, this linear protection is occurring with thymol and vanillin concentrations known as suitable for repelling crawling insects and insecticides.
Applicant argues Enan is cite to teach thyme oil concentrations and that thymol is found in thyme oil (reply, pg. 13).
This is not persuasive. Enan expressly teaches “Thymol can be included at a concentration of between 5% or less to 40% or more; at a concentration of between 15%-25%; or at a concentration of about 20% by weight” at paragraph [0034].
Applicant argues the Schnorbach reference individually, arguing the repellant effects of vanillin only occur when vanillin is included at a 100:100 weight ratio which is above the claimed range of 10-40% (reply, pg. 14).
This is not persuasive. Schnorbach teaches a repellant and an additive in a ratio of 10:100 to 200:100% by weight to the repellent. When Schnorbach is read in its entirety, taking in account for the weight ratio, Schnorbach teaches inclusion of 33.3-90.9 % additive (i.e. vanillin).
Applicant argues the Ukita reference individually, arguing Ukita teaches vanillin ranges of 13.8-33.8% and does not recognize that 10-40% was critical for formulation (reply, pg. 14).
This is not persuasive. Ukita teaches vanillin ranging from 13.8-33.8% in insect repellent products. This falls within Applicant’s claimed range. Applicant is using vanillin in an amount known as suitable for the purpose of insect repellent products.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619