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 .
Claims 25-29 and 32-44 are pending in this application.
Terminal Disclaimer
The terminal disclaimer filed on 12/5/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,185,077 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Withdrawn ground of rejection
As a result of entry of said terminal disclaimer, the outstanding double patenting ground of rejection over U. S. Patent No. 11,185,077 is withdrawn.
Double patenting rejections
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 25-29, 32-41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,207,642 (‘642 patent) in view of Pinder (US 2015/0128480). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claim 1 of ‘642 patent is directed to a composition for attracting a mouse comprising, long-range volatiles butyric acid, 2-methyl butyric acid, and 4-heptanone, and short-range volatiles progesterone and estrogen; and claim 14 of ‘642 patent is directed to a device for attracting a mouse, comprising a housing or a trap and said composition. The composition can further comprise a lethal agent such as an anticoagulant, e.g., warfarin, or toxicant, e.g., bromethalin, in a dose sufficient to kill or immobilize a mouse (‘642 patent claims 6-9). The composition can further comprise a food bait (‘642 patent claim 13).
Pinder discloses a self-resetting pest trap that uses a bait attractant to trap and kill multiple pests such as rodents. See paragraphs 10-14.
Claims of ‘642 patent do not specify the trap as an immobilizing trap but such a trap would have been obvious for controlling rodent population, as is a trap that self-resets and is capable of multiple killings; see Pinder.
Claims of ‘642 patent do not specify a 100:1 proportion of progesterone to estrogen and 0.0000001% to 10% of progesterone and/or estrogen. However, it would have been obvious for the ordinary skilled artisan to arrive at such proportions and concentrations from the teachings of ‘642 patent claims via routine optimization. Progesterone and estrogen are taught as short-range volatiles, so any proportions and sufficient concentration to exhibit attractancy would have obtained the claimed proportions and concentrations.
Therefore, the ordinary skilled artisan would have recognized the claimed invention of the instant application as an obvious variation of the invention set forth in claims 1-14 of the ‘642 patent.
Applicant’s claim amendments and arguments filed on 10/16/2025 have been given due consideration but they were deemed unpersuasive for the following reasons.
Applicant argues that the instant claims are patentably distinct from the claims of the ‘642 patent in view of Pinder because “independent claim 25 has been amended to include limitations of claim 30, which was not included” in this ground of rejection. The Examiner cannot agree. In the previously-pending claim 30 (now canceled), the composition comprised androstenone and testosterone (i.e., this mixture was required), but in the currently amended independent claim 25, the composition is open to different alternatives, for example, a composition comprising progesterone and estrogen as set forth in the claims of the ‘642 patent. Because the rejected claims are readable on a composition comprising progesterone and estrogen, as recited in the ‘642 patent, Applicant’s arguments are found unpersuasive.
Claims 25-28, 34-35, 37-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,279,613 (‘613 patent)1 in view of Pinder (US 2015/0128480). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claims 1, 2, 6, 18 and 19 of the ‘613 patent recite testosterone as a component in an attractant blend for female mice. Additional attractants are 3,4-dehydro-exo-7-ethyl-5-methyl-6.8-dioxabicyclo[3.2.1]octane (brevicomin) and 2-sec-butyl-4,5-dihydrothiazole (claims 1, 18-19). Claim 19 of the ‘613 patent is directed to a device for attracting a female mouse, comprising a housing or trap and the attractant blend. The attractant blend can comprise from about 100 ng to about 1500 ng of testosterone with about 0.02 to 10 mg of two other attractant chemicals (claim 6). The attractant blend can further comprise a lethal agent that can kill or immobilize a mouse, such as an anticoagulant (e.g., warfarin) or a toxicant (e.g., bromethalin). See claims 9-14 of the ‘613 patent. The attractant blend can also comprise a food bait (claims 16-17).
Pinder discloses a self-resetting pest trap that uses a bait attractant to trap and kill multiple pests such as rodents. See paragraphs 10-14.
Claims of the ‘613 patent do not specify the various traps recited in the instant application claims. However, claims 10-11 of the ‘613 patent recite killing or immobilization of the mouse, so the device of the ‘613 patent claim 19 would at least house an immobilized mouse. Additionally, the various aspects of the trap of the instant application would have been obvious for controlling rodent population, as is a trap that self-resets and is capable of multiple killings; see Pinder.
Therefore, the ordinary skilled artisan would have recognized the claimed invention of the instant application as an obvious variation of the invention set forth in the claims of the ‘613 patent.
Applicant’s claim amendments and arguments filed on 10/16/2025 have been given due consideration but they were deemed unpersuasive for the following reasons.
Applicant argues that the instant claims are patentably distinct from the claims of the ‘613 patent in view of Pinder because “independent claim 25 has been amended to include limitations of claims 30 and 31, which were not included” in this ground of rejection. The Examiner cannot agree. In the previously-pending claims 30-31 (now canceled), the composition comprised androstenone and testosterone or progesterone and estrogen (i.e., such mixture was required), but in the currently amended independent claim 25, the composition is open to different alternatives, for example, a composition comprising testosterone as set forth in the claims of the ‘642 patent. Because the rejected claims are readable on a composition comprising testosterone, as recited in the ‘613 patent, Applicant’s arguments are found unpersuasive.
Claim objections
Claims 43 and 44 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 This ground of rejection was previously made over Application No. 17/403,695, which has issued as U.S. Patent No. 12,279,613 on 4/22/2025, which is after the mail date of the previous Office action of 4/17/2025. Therefore, this is not a new ground of rejection and the double patenting issues remain the same.