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 .
Status of Application
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/02/2026 has been entered.
Receipt of Applicants’ Arguments, Remarks and Amended claims filed on 07/02/2026 is acknowledged.
Claims 1, 4-8 and 14-20 are pending; claims 2-3 and 9-13 stand canceled..
Claims 1 and 19 are amended.
Claim 20 is new.
Claims 1, 4-8 and 14-20 are pending and under examination in this application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 20 recite that component (A) is a non-volatile liquid oily component "comprising a silicone oil and an ester oil." This transitional phrase renders component (A) open-ended, such that the claims read on embodiments in which component (A) contains, in addition to a silicone oil and an ester oil, any further unrecited oily material. The originally-filed specification at paragraphs ([0007], [0008], [0014], [0016]) discloses component (A) only as "at least one non-volatile liquid oily component selected from the group consisting of a silicone oil, an ester oil, an ether oil, a hydrocarbon oil, an aliphatic alcohol, and a polyhydric alcohol" -- i.e., a closed Markush group whose members are drawn exclusively from these six named classes. The originally-filed specification does not disclose, and does not reasonably convey to a person having ordinary skill in the art that the inventor had possession of, an embodiment of component (A) that includes any additional oily material outside of this closed group of six. Accordingly, the open "comprising" language of amended claims 1 and 20 introduces new matter and lacks written description support. Applicant is advised that this rejection may be overcome by amending "comprising" to "selected from the group consisting of," consistent with the closed-group disclosure of paragraphs ([0007], [0008], [0014], [0016]), which does provide support for a composition in which the required members of component (A) are a silicone oil and an ester oil selected from that group.
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
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.
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, 4-8 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yusuke et al. (JP 2016069294 A) hereinafter the reference is referred to as Yusuke in view of Nakagawa (JP 2016172715 A), Onishi et al. (JP H0858447 A) hereinafter the reference is referred to as Onishi, Goldblum (WO 2014/031790), (JP20180308106 A) hereinafter the reference is referred as Yomogida, evidentiary reference Bioinspired Slippery Cone for Controllable Manipulation of Gas Bubbles in Low-Surface-Tension Environment (hereinafter the reference is referred as Xiao) and further in view of Okpara (Toxicity and Repellent Effects of Eugenol, Thymol, Linalool, Menthol, and other pure compounds on Dinoderus Bifloveatus (Coleoptera: Bostrichidae), and further in view of Takken (WO 2015/063238 A1), Wachira (Acta Tropica, 2016, 160:53-57), and Rod (WO 99/05910 A1).
Yusuke teaches insect repellent composition for human body, wherein the insect repellent effect, high sustainability, high utilization efficiency and favorable spray property, comprises insect repelling component, water and hydroxyl substituted cellulose fiber having average fiber diameter of 2 nm or more and 500 nm or less, a substituent introduced into a hydroxyl group in a cellulose molecule, a substitution degree of 0.01 or more and 0.5 or less, I type and/or II type crystal structures, and an aspect ratio of 50 or more. Thus, Yusuke teaches (A) an insect repelling component, (B) an insect repelling component, and (C) water, where the insect repelling component functions as component (A), a non-volatile liquid oily component (pages 2-3, Abstract, Use, Advantage). Yusuke specifically discloses that the insect repelling component may comprise silicone oil, vegetable oil, animal oil, and synthetic oil, including silicone oil (page 10/27, arbitrary components list). Silicone oil is a well-known non-volatile liquid oily component having a surface tension at 25°C of 40 mN/m or less, consistent with the limitation of component (A) as recited in claim 1. The Examiner relies on Yusuke's broad disclosure of silicone oil as the non-volatile liquid oily component (A) generally, rather than any specific phthalate ester, to meet the surface tension and viscosity limitations of component (A).
Regarding claim 1, amended component (C) now requires water content of between 35% and 75% by mass. Yusuke teaches insect repellent composition comprising water and in Example 1, Yusuke discloses water was added for the cellulose fiber to make 100 parts (page 14/27), and that water for density and concentration adjustment. Therefore, the water content is taught in the composition and it would have been reasonably obvious to adjust the water content to the amended range of 35% and 75% by mass or less in the composition in order to achieve the desired density, securing long-term stability and improving the repellent sustaining effect. Moreover, Yusuke teaches insect repellent composition comprises, wherein the insect repelling component quantity is in the range of 1 mass % to 30 mass % or less (when it is a N, N-diethyl-m-toluamide, although it changes with kinds of insect repelling component (page 11/27), and viscosity range is 2,000 mPa*s or more and 80,000 mPa*s or less at 25 degree C (page 11/27, paragraphs 6-8). Notably, Yusuke disclose the viscosity of the insect repellent composition can be adjusted by increasing or decreasing the amount of cellulose fiber to generate the desired flowability in the finishing gel form or cream type (page 11/27, last paragraph). Additionally, Yusuke teaches component (D) thickener (page 6/27, paragraph 4). Moreover, Yusuke discloses insect repelling component comprising of dioctyl phthalate, dibutyl phthalate, an N-diethyl-m-toluamide, a 2-ethyl-1, 3-hexadiol, , a N,N-diethyl-m-toluamide (DEET) and these may be used in combination, two or more types together (page 9/27, paragraph 5), corresponding to the recitation of a pest repellant that is other than instant component (A) and component (B), as defined in the specification at paragraph [0057]. Furthermore, Yusuke discloses these insect repelling component of more than normally 1 mass % to 30 % mass or less, when it is a N, N-diethyl-m-toluamide (DEET), and if it is less than 1 mass %, even if sufficient insect repellent effect is not obtained but it adds more than 30 mass %, wherein the insect repellent effect corresponding to addition amount is not obtained (page 11/27, paragraph 6). Therefore, limitation of wherein the composition comprises non-volatile liquid oily component, 0.1 % by mass or less of a pest repellant that is other than component (A) and component (B); 0.01 % by mass or less other than component (A) and component (B); and 0% other than component (A) and component (B) by mass is taught. Moreover, the requirement of component (A) having a surface tension at 25°C of 40 mN/m or less, a Yusuke teach dibutyl phthalate which have surface tension of 37.0 mN/m at 20°C as evidenced by (Xiao, page 4084, right column, ¶ 1).
Furthermore, claim 1 is a composition claim, and the recitations of "a pest repellant" and "a pest stay inhibition composition" are directed to the intended use of the claimed composition rather than to any additional structure. Yusuke teaches an insect repellent composition for application to skin (page 6/27, paragraph 4). Because claim 1 is a composition claim, its recitation of intended use as a pest repellant and/or a pest stay inhibition composition is given little patentable weight, and the claim is instead limited to the structure implied by its recited components. See MPEP § 2111.02. The claim limitation is met because Yusuke's composition possesses the same structural components recited in claim 1: a non-volatile liquid oily component selected from a silicone oil, an ester oil, an ether oil, a hydrocarbon oil, an aliphatic alcohol, or a polyhydric alcohol; at least one fragrance; water; and a thickener.
Regarding claims 1 and 4, as noted above, Yusuke teaches silicone oil, an ester oil, and a hydrocarbon oil in the pest repellent composition and the insect repelling component quantity is in the range of 1 mass % to 30 mass % or less. Therefore, overlaps with the instant range of 13% by mass or more and 99.95% by mass or less of at least one non-volatile liquid oily component selected from the group consisting of a silicone oil, for example.
Regarding claim 5, Yusuke teaches the insect repellent composition is to be applied to the skin of human body (page 6/27 to 7/27).
Regarding claims 7 and 8, as noted above, Yusuke teaches the insect repellent composition with surface tension, viscosity and mPa*s. However, differs from instant claims which specifies that a nonvolatile liquid oil having a predetermined surface tension and a predetermined viscosity has a specific surface tension of 13 mass % or more and 99.95 mass % or less, and the repellent component has a content of 0.05 mass % or more and 3.5 mass % or less. However, Yusuke disclose that it is well known that the viscosity and the surface tension of the repellent composition can affect the durability of the repellent effect (pages 7/27 to 11/27), and to obtain the desired repellent lasting effect of a composition, it would have been obvious to a person having ordinary skill in the art (PHOSITA) to optimize the viscosity, the surface tension, and the content of the component contained in the pest repellent composition in order to achieve the desired insect repellency and/or insect stay-inhibition, stability of the formulation and safety with respect to a human body (pages 6-7/27).
Regarding claim 15, Yusuke teaches insect repellent composition comprising the cellulose fiber was prepared to the 0.6 mass % of slurry, 0.1 M aqueous hydrochloric acid was added (page 13/27, paragraph 1). Therefore, the thickener (D) of cellulose overlaps the instant content of component (D) thickener in the range of 0.01 % by mass or more and 5% by mass or less.
Regarding claim 16, Yusuke teaches insect repellent composition comprises water-soluble polymers, natural water-soluble polymer, a synthetic water-soluble polymer, a cellulose derivative, and an acryl type polymer (page 10/27, paragraph 1) and in example 5, Yusuke disclose xanthan gum in the composition (page 15/27, paragraph 2). Therefore, a thickener (component D) comprises a water-soluble cationic polymer is taught.
Yusuke fails to specifically teach a fragrance falling within the component (B) Markush group of any of claims 1, 19, or 20.
Nakagawa teaches insect repellent comprising active ingredients fragrance, one or more compounds selected from octahydro-7-methyl-1, 4-methanonaphthalen-6(2H)-one (claim 1), 9-ethylidene-3-oxacyclo(6.2.1.02,7)undecane-4-one, octahydro-2h-1-benzoyran-2-one (abstract). Notably, Nakagawa discloses that use of fragrance has suppression effect of the insect’s thermal and carbon-dioxide responses, the induction (attraction) lure action to the human of an insect was also suppressed favorably and discovered that fragrance was more useful as the insect repellent (page 8, MEANS to solve the problem paragraph). Furthermore, Nakagawa disclose the compound suppresses the heat/fever acceptance system of Aedes albopictus, and can be used in order to be able to become heat/fever acceptance inhibitor wherein the compound and the fragrance/flavor component has carbon-dioxide response suppression effect when used together (page 10/24, paragraph 6).
Regarding claim 20, Nakagawa teaches octahydro-7-methyl-1,4-methanonaphthalen-6(2H)-one, which corresponds to component (B1)/(B2) of claim 20, wherein the content is 0.001-80 mass % (page 11/24, paragraph 6), overlapping the instant range of 0.05% to 3.5% by mass. This compound is not recited in the component (B) Markush group of amended claims 1 and 19, and Nakagawa is relied upon only in support of claim 20; the component (B) limitation of claims 1 and 19 is rejected below on the basis of Takken.
Regarding claim 5, Nakagawa teaches insect repellent method can apply to skin of mammal (page 7, claims 8, 9).
Nakagawa specifically fails to disclose stay inhibitor activity and method of application to the limbs of the insect.
Onishi teaches skin protective agent comprising a mixture of fluorine/polyether co-modified silicone and a compound having an ultraviolet protection and insect repellent effect (page 3/25, paragraph 0009), wherein the amount of the fluorine/polyether co-modified silicone is 0.1 to 98 parts by weight and examples of the insect repellent are diethyl toluamide, citronella oil, rose oil, lavender oil, anise oil, paramethane-3,8-diol, cinnamic acetate, and methyl anthranilate (page 15/25, paragraph 1).
Regarding claims 1, 19, and 20, Onishi teaches insect repellent comprising fluorine/polyether co-modified silicone corresponding to component (A), wherein the amount of fluorine/polyether co-modified silicone is 0.1 to 98 parts by weight. Regarding claim 20 only, Onishi's disclosed methyl anthranilate corresponds to component (B9) of claim 20. Methyl anthranilate is not recited in the component (B) Markush group of amended claims 1 and 19, and cinnamic acetate is not recited in the component (B) list of any pending claim; neither is relied upon against claims 1 or 19. The component (B) limitation of claims 1 and 19 is rejected below using Takken, Wachira, and Rod.
Goldblum teaches pest repellent, pesticidal compositions, methods of formulating and using the compositions, containing one or more active ingredients (Abstract), and additional carrier in the composition can be silicone oil (page 9, paragraph 2), and in one example, the composition comprising a carrier selected from the group consisting of water, an alcohol, an aldehyde, an ester, an ether, silicone, tall oils, a terpene hydrocarbon, and the alcohol can be aromatic alcohol, a C2-C6 polyhydric alcohol (page 7, paragraph 3), and in another example, a non-volatile silicone oil is selected from the Markush listing provided in (page 9, paragraph 2). Notably, Goldblum discloses the carrier forms a viscous fluid or gel when dispensed, and in another example, the carrier contains 0.2% to 20% of a viscosity modulating agent that is selected from among an acrylate copolymer, a carrageenan, a cellulosic polymer, xanthan gum (page 18, paragraphs 2; page 19, paragraph 1). Therefore, the above satisfy limitation and structural features of component (A) wherein at least one non-volatile liquid oily component is taught.
Regarding claim 6, Goldblum teaches that a carrier selected to adhere to the insect or pest to penetrate the exoskeleton of the insect or pest (page 18, paragraph 2). Therefore, the limitation of the composition applying onto limbs of a pest is met.
Regarding claim 14, Goldblum teaches insect repellent composition can be prepared in water-in-oil (page 81, paragraph 1).
Yomogida teaches insect repellent comprising water in the quantity 80 mass % or more (page 11/36,¶ 6, line 1) establishing the upper boundary used in the routine-optimization analysis of claim 1's water content, supra.
Okpara directly teaches the toxicity and repellent effects of eugenol against insects. Specifically, Okpara evaluates eugenol's repellent activity against Dinoderus bifloveatus using an area preference method and reports a mean percent repellency of 43.33 ± 1.04%, placing eugenol in Repellency Class III (40.1-60% repellency range) (Table 3). Okpara thus directly establishes that eugenol is a known insect repellent compound. Okpara further establishes that repellency and toxicity are distinct, separately measurable endpoints of eugenol's bioactivity against insects, confirming that eugenol's repellent properties are independent of its contact or fumigant toxicity.
Regarding claim 20, eugenol corresponds to component (B4) of claim 20's (B) Markush group, which -- unlike claims 1 and 19 -- was not amended and retains eugenol as a listed member. Okpara's data therefore continues to support a rejection of claim 20's component (B) limitation, in combination with Nakagawa (component (B1)/(B2), ketones/lactone) and Onishi (component (B9), methyl anthranilate), as set forth above.
Regarding claim 19, the claim is directed to a pest stay inhibition composition comprising components (A) through (D) with the same structural limitations as claim 1 — including the component (A) non-volatile liquid oily component physical property limitations, compositional ratios, water content, and pest repellant upper limit — with the exception that component (B) is restricted to a subset of fragrance compounds consisting of: gamma decalactone, delta decalactone, delta nonalactone, gamma undecalactone, 7-hydroxy-3,7-dimethyloctanal, 2-(4-methyl-2-thiazolyl) ethanol, (3-pentyloxan-4-yl) acetate, and phenylethyl dimethyl carbinyl acetate. Eugenol and phenylethyl methyl ethyl carbinol were deleted from claim 19's component (B) list by the amendment filed 07/02/2026 and are not part of the currently pending claim; Okpara's eugenol data is accordingly not relied upon against claim 19. Claim 19's component (B) limitation is instead rejected below using Takken (delta decalactone), Wachira (delta nonalactone), and Rod (gamma undecalactone) -- three of the eight compounds actually remaining in claim 19's list, each independently taught as an effective insect repellent.
For all structural limitations of claim 19 other than the specific fragrance (B) options, the rejection rests on the same basis as claim 1 above. Specifically, Yusuke teaches the base insect repellent composition with components (A), (C), and (D) and the compositional ratios; Yomogida teaches the water content range; Goldblum and Onishi support the component (A) structural and physical property requirements; and the ester oil formulae (1)-(4) are supported as set forth above. These limitations are therefore met for the reasons set forth in the rejection of claim 1 supra.
Yusuke fails to specifically teach delta decalactone. However, Takken (WO 2015/063238 A1, published May 7, 2015, prior art under pre-AIA /AIA 35 U.S.C. 102(a)(1)/(b), effectively filed November 4, 2013) teaches that delta decalactone, applied topically to human or animal skin in a cream, lotion, ointment, spray, or gel vehicle, is an effective insect repellent against mosquitoes (order Diptera, genera Anopheles, Aedes, Culex, Culiseta, Haemogogus, Mansonia and Psorophora), with repellent efficacy similar to or better than DEET, and further teaches that this compound may be delivered in a vehicle carrier including silicones such as dimethylsiloxane. It would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select delta decalactone as the fragrance component (B) of Yusuke's pest stay inhibition composition, in place of Yusuke's arbitrarily-disclosed fragrance compound, with a reasonable expectation of success, because Takken establishes that delta decalactone was already known in the art to function as an effective topical insect repellent in a vehicle compatible with Yusuke's composition, such that its selection would have amounted to the use of a known compound for its established purpose (repelling insects) in an analogous composition (a topical, skin-applied pest-repelling composition), yielding the predictable result of a fragrance component that also confers repellency, consistent with MPEP 2143(I)(A)-(B).
Regarding the mass ratio [(A)/(B)] limitation of claims 1 and 19 (30 to 400), Onishi's polyether co-modified silicone (component (A)) is disclosed in an amount of 0.1 to 98 parts by weight, and Takken's delta decalactone (component (B)) is disclosed across a range of concentrations from about 0.1% to about 99% (v/v) in a suitable vehicle, including specific exemplified subranges such as about 1% to about 40%. These disclosed ranges for components (A) and (B) overlap substantially with the instantly claimed mass ratio range of 30 to 400, and a person having ordinary skill in the art would have arrived at a ratio within the claimed range through routine selection of art-recognized, overlapping concentration values for each component, absent a showing of new and unexpected results for the claimed ratio. See MPEP 2144.05(I). For example, selecting 40 parts by weight of Onishi's polyether co-modified silicone as component (A) and 1% (w/w) of Takken's delta decalactone as component (B), both squarely within each reference's respective disclosed range, yields a mass ratio (A/B) of 40, which falls within the instantly claimed range of 30 to 400.
As additional, alternative support for the component (B) limitation of claims 1 and 19, Wachira (Acta Tropica, 2016, 160:53-57, "Responses of Glossina pallidipes and Glossina morsitans morsitans tsetse flies to analogues of delta-octalactone and selected blends") teaches that delta nonalactone is an effective insect repellent compound, and Rod (WO 99/05910 A1, published February 11, 1999, effectively filed March 24, 1993) teaches that gamma undecalactone is an effective insect repellent compound for use on human or animal skin in combination with a silicone fluid additive. Either delta nonalactone or gamma undecalactone would similarly have been prima facie obvious selections for component (B) of claims 1 and 19 for the same reasons set forth above with respect to delta decalactone, and are identified here as alternative, mutually reinforcing bases for the rejection, given that claims 1 and 19 recite component (B) in Markush form such that a showing as to any one recited species supports the rejection of the claim as a whole. Gamma decalactone, 7-hydroxy-3,7-dimethyloctanal, 2-(4-methyl-2-thiazolyl) ethanol, (3-pentyloxan-4-yl) acetate, and phenylethyl dimethyl carbinyl acetate are not relied upon in this rejection.
As to claim 20 specifically, it would have been prima facie obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to use the insect repellent composition as taught by Yusuke and incorporate the fragrance options, for example octahydro-7-methyl-1, 4-methanonaphthalen-6(2H)-one into the pest repellent composition as taught by Nakagawa and alternatively incorporate skin protective agent comprising a mixture of fluorine/polyether co-modified silicone to improve the composition when application to surface of human skin as taught by Onishi. One of ordinary skill in the art would have been motivated to incorporate the fragrance option because the use of fragrance has improvement in odor control, and favorable suppression effect of the insect’s thermal and carbon-dioxide responses and repellent sustaining effect as disclosed by Nakagawa.
Regarding the mass ratio [(A)/(B)] limitation (30 to 400) recited in claims 1, 19, and 20, this ratio calculation as drafted depends on Nakagawa's octahydro-7-methyl-1,4-methanonaphthalen-6(2H)-one as the exemplary component (B) value and is therefore currently reliable only as to claim 20, whose (B) Markush group retains this compound. Onishi's polyether co-modified silicone amount is 0.1 to 98 parts by weight, corresponding to component (A), and Nakagawa's octahydro-7-methyl-1,4-methanonaphthalen-6(2H)-one, corresponding to component (B) of claim 20, is 0.001-80 mass %, calculating the mass ratio (A/B) = [(0.1)/(0.001)] equates to 100; therefore, the mass ratio overlaps with the instant range of 30 or more and 400 or less for claim 20. For claims 1 and 19, see the overlapping-ranges ratio analysis using Onishi and Takken set forth above. MPEP 2144.06 states: "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." Thus, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to combine said actives with a reasonable expectation of success because each active is taught to be useful for the same purpose and it is prima facie obvious to combine said actives to form a third composition to be used for the very same purpose.
Additionally, the teachings of Yusuke discloses that it is well known that the viscosity and the surface tension can affect the durability of the repellent effect (pages 7/27 to 11/27), and in order to obtain the desired repellent lasting effect of a composition, it would have been obvious to a person having ordinary skill in the art (PHOSITA) to optimize the viscosity, the surface tension, and the content of the component contained in the pest repellent composition as taught by Yusuke.
The teachings of Goldblum’s insect repellent composition contains similar components of a C2-C6 polyhydric alcohol (page 7, paragraph 3), and the composition can be prepared in water-in-oil. One of ordinary skill in the art would have been motivated to do this because the reduced surface tension characteristics of the repellent emulsion allow for improved adhesion of the composition to the surface to which it is applied and as a result, the repellent effectiveness of the composition is maintained for long periods of time.
One of ordinary skill in the art would have been motivated to do this because all cited references are drawn to components used in pest repellent compositions. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success to include the components such as hydrocarbon oils, fragrances, optimization of surface tension and viscosity as taught by the references.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention.
Response to Amendments/Remarks
1. Applicant argues that none of Yusuke, Nakagawa, Onishi, Yomogida, or Okpara, alone or in combination, teaches or suggests the mass ratio [(A)/(B)] of 30 to 400, or the mass ratio [(A)/(C)] of 0.173 to 2.86 (claim 1) / 0.15 to 3 (claim 19), recited in claims 1 and 19.
This argument is not persuasive. As set forth above, the mass ratio [(A)/(B)] limitation is met by the combined teachings of Onishi (component (A), 0.1 to 98 parts by weight) and the newly cited Takken reference (component (B), delta decalactone, disclosed across concentrations of about 0.1% to about 99% (v/v), including an exemplified subrange of about 1% to about 40%); selecting values within these overlapping, independently disclosed ranges -- for example, 40 parts by weight of component (A) and 1% (w/w) of component (B) -- yields a ratio of 40, within the claimed range of 30 to 400. As to the mass ratio [(A)/(C)], component (A) is independently rendered obvious in the range of 13% to 99.95% by mass (as set forth in the rejection of claim 1/4, supra, over Yusuke's broad disclosure of silicone oil), and component (C) is independently rendered obvious in the range of 35% to 75% by mass (as set forth in the rejection of claim 1, supra, over Yusuke and Yomogida, and consistent with the specification's own paragraph [0044] preference hierarchy). Where, as here, the endpoints of two component ranges are each independently taught or rendered obvious by the prior art, a ratio mathematically derived by selecting values from within those ranges is likewise obvious, absent a showing of new and unexpected results specifically attributable to the claimed ratio. See MPEP § 2144.05(I); In re Aller, 220 F.2d 454 (CCPA 1955). No such showing has been made here. Applicant's argument that the ratio limitations are unsupported is accordingly not persuasive.
2. Applicant argues that Yusuke's working examples disclose a water content of 83.3% or 88.5% by mass, that Nakagawa's sole example discloses a fragrance content of 0.1% and an ethanol content of 99.9% (i.e., 0% water), and that Onishi's examples disclose a water content of 0% or 10%, such that none of these references teaches or suggests the claimed water content of 35% to 75% by mass.
This argument is not persuasive. The cited water contents are the values used in each reference's specific working examples and do not limit the broader, generic teachings of each reference as to water as a suitable, and indeed common, diluent in topical pest-repelling compositions. A reference's disclosure is not limited to its working examples; the entirety of the disclosure, including generic teachings, must be considered for what it would have fairly suggested to a person having ordinary skill in the art. See In re Mills, 470 F.2d 649 (CCPA 1972); MPEP § 2123. Yomogida, moreover, affirmatively teaches a water content of 80% by mass or more in the same general field of endeavor, confirming that water contents at and above the upper end of the claimed 35%-75% range were well known to be suitable for topical pest-repelling and floor-treatment compositions. Selection of an intermediate water content within the range of 35% to 75% -- bounded below by Yusuke's teaching that water is a suitable diluent and above by Yomogida's disclosure of 80% or more -- constitutes routine optimization of a result-effective variable (formulation dilution, stability, and repellent-sustaining effect) within a range recognized in the art, particularly where, as here, Applicant's own specification at paragraph [0044] confirms 35% as a suitable lower bound and identifies 75% as merely the "still more preferable" value within a broader operable range extending to 86.95%. See In re Aller, 220 F.2d 454 (CCPA 1955); MPEP § 2144.05(II).
3. Applicant argues that Yusuke and Onishi each require an insect repellent component as a main ingredient (see, e.g., Yusuke, Claim 1; Onishi, Claim 2), and that this fundamentally differs from the composition of claims 1 and 19, which recite 0.1% by mass or less of a pest repellant other than components (A) and (B).
This argument is not persuasive in view of the newly cited Takken, Wachira, and Rod references. As set forth above in the rejection of the component (B) limitation, these references establish that fragrance compounds falling within the scope of component (B) -- including delta decalactone, delta nonalactone, and gamma undecalactone -- were independently known in the art to function as effective insect repellents in their own right. Because component (B), as modified in view of Takken, Wachira, and Rod, already supplies a recognized repellent function, a person having ordinary skill in the art would have had reason to reduce or eliminate Yusuke's and Onishi's separately-disclosed insect-repelling component (e.g., DEET, dioctyl phthalate, dibutyl phthalate), relying instead on the repellent activity of component (B), and would have had a reasonable expectation of success in doing so given the recognized, overlapping repellent function of the two ingredient classes. This modification directly yields the claimed limitation of 0.1% by mass or less (claim 1), 0.01% by mass or less (claim 17), or 0% by mass (claim 18) of a pest repellant other than components (A) and (B). See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (a combination that only unites old elements with no change in their respective functions, yielding predictable results, is likely obvious); MPEP § 2143(I)(A). Applicant's characterization of Yusuke's and Onishi's insect-repelling component as a "main ingredient" in those references' own preferred embodiments does not preclude a POSA, motivated by the teachings of Takken, Wachira, and Rod, from arriving at a modified embodiment with a reduced or eliminated quantity of that ingredient.
4. Applicant argues that Yusuke does not consider, and Yusuke's disclosure does not establish, a pest landing-prevention or pest-stay-inhibition effect, and that this distinguishes the claims from Yusuke's disclosure.
This argument is not persuasive. Claims 1 and 19 are composition claims, and it is well settled that a composition claim is anticipated or rendered obvious by a prior art composition possessing the same structure and structural components, regardless of whether the prior art recognizes, tests for, or articulates the same property, function, or effect relied upon by Applicant. See MPEP § 2112(II) ("Products of identical composition cannot have mutually exclusive properties."); In re Best, 562 F.2d 1252 (CCPA 1977). Further, a finding of obviousness does not require that the prior art recognize the same problem or advantage relied upon by Applicant; it is sufficient that the prior art teaches or suggests the claimed structural combination for any suitable reason. See MPEP § 2144(IV); In re Kemps, 97 F.3d 1427 (Fed. Cir. 1996). The structural composition recited in claims 1 and 19 is fully taught by the combined references as set forth above, irrespective of whether Yusuke articulates a landing-prevention rationale for its own disclosure.
5. Applicant argues that Yomogida discloses its repellent (e.g., DEET) as an arbitrary component that "may be incorporated," and that this fundamentally differs from the pest repellant limitation of claims 1 and 19, which is capped at 0.1% by mass or less.
This argument is not persuasive, and in fact supports the rejection. By Applicant's own characterization, Yomogida discloses its repellent component as optional and arbitrary rather than mandatory. An embodiment of Yomogida's composition that omits this optional repellent, or includes it only in a minor amount of 0.1% by mass or less, is therefore squarely within the scope of Yomogida's own disclosure and requires no modification to arrive at the claimed limitation. See MPEP § 2123.
6. Applicant argues that Nakagawa, Onishi, Yomogida, and Okpara each fail to disclose or suggest a fragrance selected from the group consisting of gamma decalactone, delta decalactone, delta nonalactone, gamma undecalactone, 7-hydroxy-3,7-dimethyloctanal, 2-(4-methyl-2-thiazolyl) ethanol, (3-pentyloxan-4-yl) acetate, and phenylethyl dimethyl carbinyl acetate, as recited in claims 1 and 19.
Applicant's argument is persuasive as to the previously cited references, and the rejection of claims 1 and 19 insofar as it relied on Nakagawa's ketones, Onishi's methyl anthranilate, and Okpara's eugenol for the component (B) limitation is withdrawn, since none of those species remains within the component (B) Markush group of claims 1 and 19 as amended. However, this argument is not persuasive as to the composition as a whole, in light of the new ground of rejection set forth above. The newly cited Takken reference (WO 2015/063238 A1) teaches delta decalactone, and Wachira (Acta Tropica, 2016, 160:53-57) and Rod (WO 99/05910 A1) provide corroborating, independently sufficient art directed to delta nonalactone and gamma undecalactone, respectively -- three species that remain within the component (B) Markush group of claims 1 and 19 as currently amended, each taught by the respective reference as an effective insect repellent. Because claims 1 and 19 recite component (B) in Markush form, a showing as to any one recited species is sufficient to support the rejection of the claim as a whole. See Ex parte Markush, 1925 Dec. Comm'r Pat. 126. Applicant's argument that the art of record fails to teach or suggest any of the recited fragrance compounds is accordingly no longer accurate.
7. Applicant argues, in conclusion, that a person of ordinary skill in the art would find no teaching or suggestion of the claimed composition from the cited references, whether considered individually or in combination, and requests withdrawal of the rejection and issuance of a Notice of Allowance for all pending claims.
This argument is not persuasive. Applicant's remaining arguments address the teachings of Yusuke, Nakagawa, Onishi, Yomogida, and Okpara individually, but the rejection of claims 1 and 19 is based on the combined teachings of these references together with Takken, Wachira, and Rod, and the test for obviousness is what the combined teachings of the references would have suggested to a person having ordinary skill in the art, not whether the features of one reference may be bodily incorporated into another or whether any single reference discloses every claimed feature. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). For the reasons set forth above and in the rejection of claims 1, 4-8, 14-20 under 35 U.S.C. 103, the combined teachings of the cited references render the claimed composition obvious, and a Notice of Allowance is not warranted at this time.
Conclusion
No claims are allowed.
This action is a first action on the merits following the Request for Continued Examination filed 07/02/2026, and applies new grounds of rejection under 35 U.S.C. 112(a) and new prior art under 35 U.S.C. 103. Accordingly, this action is a non-final Office action.
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/ANDRE MACH/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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