DETAILED 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 (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.
Receipt and consideration of Applicant’s arguments/remarks and Affidavit pursuant to 37 C.F.R. 1.130(a) submitted on December 26, 2025 are acknowledged.
All rejections/objections not explicitly maintained in the instant office action have been withdrawn per Applicant’s claim amendments and/or persuasive arguments.
Status of the Claims
Claims 1-3, 5-7, 9, 11-13, and 15-25 are pending. Claims 1-3, 5-7, 9, and 11-13 are withdrawn. Claims 15-25 are under consideration in this action.
Change in Examiner
The examiner for your application in the USPTO has changed. Examiner Monica Shin can be reached at 571-272-7138.
Election/Restrictions
Applicant’s election without traverse of Group IV (claims 15-19) in the reply filed on November 8, 2023 is acknowledged.
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.
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 15-25 are rejected under 35 U.S.C. 103 as being unpatentable over Manhas et al. (Manhas) (US 2014/0220164 A1; published Aug. 7, 2014), Black et al. (Black) (US 2014/0208636 A1; published Jul. 31, 2014), and Booysen et al. (Booysen) (US 2015/0272132 A1; published Oct. 1, 2015).
With regards to Claims 15-17, 19, 20, 23, and 25, Manhas discloses compositions useful for controlling pests (abstract). In an embodiment, the compositions include a pesticidal natural oil and a polar aromatic solvent. The compositions exhibit both improved or more rapid knockdown of pests as compared with either used alone, and also prolonged dry residual pesticidal activity (para.0052).
The pesticidal natural oil is present at a concentration of between 0.25% and 99.3% by weight; and a polar aromatic solvent at a concentration between 0.7% and 99.75% by weight (para.0064). In an embodiment, the pesticidal composition comprises a combination of neem oil at a concentration of 5.5% by weight, acetophenone at a concentration of 15.5% by weight, and a surfactant at a concentration of 5.0% by weight. In an exemplary embodiment, the pesticidal composition includes a combination of neem oil (pesticidal natural oil) at a concentration of 5.5% by weight, acetophenone (polar aromatic solvent; aryl ketone) at a concentration of 18.25% by weight, and 1.25% ethoxylated castor oil (surfactant) by weight (para.0061, 0067).
The surfactant is added to the pesticidal natural oil, and then one or more solvents are added to the pesticidal natural oil, allowing the solvent to solvate the oil before addition of other ingredients. Once all ingredients are completely solvated, they may optionally be combined with an appropriate amount of a conventional diluent and/or additional solvent (including different types of solvents). Other carriers, solvent, surfactants, pesticides, fragrances, or odor neutralizers may optionally be added (para.0080).
The compositions may be applied in either liquid or vapor form (Manhas claim 18). To kill and/or control the pests, the compositions are applied to any surfaces so that the pests and/or their eggs will be exposed to the compositions, including to vapors of the compositions (para.0077). The compositions are formulated in a deliverable form suited to a particular application. Among the suitable deliverable forms include fumigants, aerosol sprays, and fumigating mist or candles (par.0074; Manhas claim 22).
With regards to Claims 18 and 24, the compositions can be used to control pests such as arthropods, including insects and arachnids, such as bed bugs (par.0070). Manhas exemplifies solutions of neem oil to control bed bugs (para.0097, 0099-0102, 0107-0110).
With regards to Claim 22, the pesticidal composition includes a suitable carrier. Among the suitable commonly used carriers include water (para.0062). Manhas exemplifies the use of Solution B in knockdown activity against bed bugs in Example 13. Solution B included 5.5% neem oil by weight, 1.25% ethoxylated castor oil by weight, 18.25% acetophenone by weight, and water as a carrier solvent (75 wt.%) (para.0115; Table 14).
Further regarding Claim 25, as Manhas does not require the inclusion of isopropanol, as evidenced by examples that do not include isopropanol (e.g., aforementioned Solution B of Example 13, para.0115; Table 14)), absent evidence to the contrary, Manhas encompasses pesticidal compositions that do not comprise isopropanol.
Manhas does not appear to explicitly disclose the inclusion of a vapor forming carrier. Black and Booysen are relied upon for this disclosure. Their teachings are set forth herein below.
Black discloses an environmentally safe and highly effective method for killing bed bugs by enclosing infested items (e.g., belongings or possessions) in a sealed container along with a small amount of at least one solvent, the vapors of which skill bed bugs. The invention provides an inexpensive, very simple and safe method of killing bed bugs (abstract; para.0008).
It is preferred that the solvent have a low vapor pressure and that it be essentially odorless. Among the suitable solvents include acetone and ethyl acetate (para.0014).
Booysen discloses a pesticide granule containing neem oil (abstract). Booysen discloses that because neem oil may be viscous and difficult to spray, mixing the neem oil with acetone forms a solution that is less viscous and easier to spray onto the granules. The solution is preferably about 50% neem oil and about 50% acetone (para.0030).
With regards to the inclusion of the vapor forming carrier (Claims 15, 21, and 25), as discussed above, Manhas discloses that their compositions can be applied in either liquid or vapor form, and be formulated in a deliverable form suited to a particular application, including fumigants, aerosol sprays, and fumigating mist or candles. To kill and/or control the pests, the compositions are applied to any surfaces so that the pests and/or their eggs will be exposed to the compositions, including to vapors of the compositions. Manhas discloses that other carriers and solvents may additionally be added. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Manhas with the teachings of Black and Booysen and add acetone as a solvent into Manhas’s composition. One of ordinary skill in the art would have been motivated to do so as the vapors of acetone are also known to be effective in killing bed bugs (Black). Furthermore, acetone is known to form a solution with neem oil, making neem oil less viscous and easier to spray (Booysen). One of ordinary skill in the art would have had a reasonable expectation of success in doing so Manhas discloses their pesticidal composition may include other carriers and solvents, and acetone is a known solvent for neem oil and also known to be used in controlling bed bugs.
Furthermore, as a general principle 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, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. In the present case, Manhas is directed to a pesticidal composition, in particular, one for controlling bed bugs; acetone is disclosed as also being used to control bed bugs; and both are being combined for the very same purpose of controlling bed bugs.
With regards to the amount of the vapor forming carrier (acetone) and water (Claims 1, 21, 22, and 25), as discussed above, Manhas exemplifies formulations wherein the carrier (e.g., water) is present in an amount of 75 wt.%, and Booysen discloses that solutions of 50 wt.% acetone and 50 wt.% neem oil are known in the art for pesticidal purposes. As Manhas discloses that in an exemplary formulation, the remainder (i.e., after the neem oil, surfactant, and polar aromatic solvent) may be about 75 wt.%, and Black discloses that acetone is a known solvent, whose vapors are known to kill bed bugs, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to adjust the amount of water and acetone (i.e., carrier or solvent) in the formulation of the combined teachings of the prior art references to total about 75 wt.% and optimize the amount of each component based on art recognized factors, such as the desired amount of vapors to be released, the amount of insecticidal action needed, and the desired duration of vapor release, to obtain the desired or optimal pesticidal formulation.
The adjustment of particular conventional working conditions (e.g., determining optimal or workable amount of carriers and solvents for a pesticidal formulation) is deemed merely a matter of judicious selection and routine optimization, which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results, absent evidence of unexpected results. Where 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, 105 USPQ 233 (CCPA 1955).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Response to Arguments
Applicant's arguments filed December 26, 2025 have been fully considered. Applicant’s Affidavit under 37 C.F.R. 1.130(a) confirming the subject matter of U.S. Patent No. 9,999,227 was derived from joint inventors Annett Rozek and Karan Manhas is acknowledged and confirms that the patent is not prior art pursuant to 35 U.S.C. 102(b)(2)(A).
A new rejection citing a new combination of references is set forth above.
Conclusion
Claims 15-25 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONICA A SHIN/Primary Examiner, Art Unit 1616
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