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 .
Formal Matters
Receipt of Applicant’s response dated 04/21/2026 is acknowledged.
Claims 1-2, 9-12, and 14-22 are pending.
Claims 3-8 and 13 are canceled.
Claims 1 and 14-22 are amended.
Claim 2 remains withdrawn from consideration as being drawn to a nonelected species.
Claim 11 remains withdrawn from consideration as being drawn to a nonelected invention.
Claims 1, 9-10, 12, and 14-22 are under consideration in the instant Office action to the extent of the elected species, i.e., the fatty acids are propionic acid and butyric acid, the brachycera is Drosophila suzukii, and the acceptable support is paraffin oil.
Manner of Making Amendments, 37 C.F.R. 1.121
Lines 6-7 of claim 21 in the claim set dated 04/21/2026 are newly added relative to the immediate prior version of the claims dated 11/24/2025, however, the claim is missing the markings that indicate the changes that have been made, i.e., added subject matter shown by underlining the added text. Applicant is reminded to include markings to indicate the changes that have been made relative to the immediate prior version of the claims moving forward to avoid delays. See MPEP 714.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objections to the abstract set forth in the Office action dated 01/22/2026 have been withdrawn in light of Applicant’s amendments to the abstract.
Claim Objections
The objections to claims 1 and 14-20 set forth in the Office action dated 01/22/2026 have been withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(a)
The rejection of claim 21 set forth in the Office action dated 01/22/2026 has been withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejections of claims 1, 3-4, 9, 12, and 14-22 over Kleiber et al in view of Ghanim and Depetris-Chauvin et al and of claim 10 over Kleiber et al in view of Ghanim and Depetris-Chauvin et al and further in view of De Wolff set forth in the Office action dated 01/22/2026 have been withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments to the claims.
NEW GROUNDS OF OBJECTION/REJECTION
Claim Objections
Applicant is advised that should claim 14 be found allowable, claim 21 will be objected to
under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application
are duplicates or else are so close in content that they both cover the same thing, despite a
slight difference in wording, it is proper after allowing one claim to object to the other as being
a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1, 9, 12, and 14-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kleiber et al (Environ. Entomol., 2014, 43, 439-447, published 04/01/2014, cited in Notice of References Cited dated 03/07/2025) in view of Ghanim (Entomol. Ornithol. Herpetol., 2013, 2, 1-6, published 01/2013, cited in Notice of References Cited dated 03/07/2025) and Depetris-Chauvin et al (Sci. Rep., 2017, 7, 1-14, published 10/27/2017, cited in IDS dated 03/11/2022).
Kleiber et al teach that a common practice for controlling Drosophila suzukii (hereafter D. suzukii) in fruit crop fields includes monitoring traps that detect the presence of D. suzukii, and once detected and the fruit has begun to ripen, applying an insecticide spray to the fruit (See entire document, e.g., Par. 2 of Column 2 on Page 439). Because D. suzukii are known to be attracted to vinegar and fermenting yeast, a variety of short-chain acids, including propionic acid and butyric acid, were studied for attractiveness to D. suzukii (e.g., Par. 2 of Column 1 on Page 440 and Par. 2 of Column 2 on Page 441). Kleiber et al baited each of the traps with 2 mL of one of the acids and 98 mL of soap water, 2 mL of acid being chosen as the amount because of its use and attractiveness in previous trapping studies, and placed them in a greenhouse with adult D. suzukii (e.g. Par. 1 of Column 1 and Par. 2 of Column 2 on Page 441). Kleiber et al found that the traps baited with propionic acid and butyric acid caught fewer D. suzukii than the controls in the absence of any acid (e.g., Par. 2 of Column 2 on Page 443).
The results of this study by Kleiber et al that the trap baited with propionic acid and the trap baited with butyric acid each caught fewer D. suzukii than the controls in the absence of any acid teach that applying each of propionic acid and butyric acid to traps repels D. suzukii.
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Kleiber et al, to control D. suzukii in fruit crop fields in an insecticide-free manner by applying a repellant spray to fruit that has begun to ripen comprising both propionic acid and butyric acid, wherein the repellant spray has a total volume of 100 mL and comprises each of propionic acid and butyric acid in a volume of 2 mL (and the remaining 96 mL being soap water). One of ordinary skill in the art would have been motivated to combine propionic acid and butyric acid in a repellant spray for D. suzukii because Kleiber et al teach that each of propionic acid and butyric acid repel D. suzukii. One of ordinary skill in the art would have been motivated to use each of propionic acid and butyric acid in a volume of 2 mL in a 100 mL repellant spray because Kleiber et al teach the effectiveness of each of propionic acid and butyric acid at repelling D. suzukii in that amount. "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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). Because Kleiber et al teach that a common practice for controlling D. suzukii involves spraying fruit that has begun to ripen with an insecticide spray and teach that propionic acid and butyric acid repel D. suzukii, there would have been a reasonable expectation of success in controlling D. suzukii in fruit crop fields in an insecticide-free manner by applying a repellant spray comprising both propionic acid and butyric acid to fruit that has begun to ripen.
Kleiber et al do not teach the repellent spray further comprising paraffin oil.
This deficiency is made up for in the teachings of Ghanim and Depetris-Chauvin et al.
Ghanim teaches that paraffin oil has been used as a dilutant for odorous pure chemicals when studying behaviors, including ovipositional behavior, of fruit fly species (See entire document, e.g., Par. 2 of Column 2 on Page 1).
Depetris-Chauvin et al teach a study using paraffin oil as a dilutant for short-chain fatty acid odorants, including propionic acid and butyric acid, for baited traps for D. suzukii (See entire document, e.g., Par. 1 on Page 8, Par. 4 on Page 11, Par. 2 on Page 12).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to dilute the repellant spray comprising 2 mL propionic acid and 2 mL butyric acid using paraffin oil in the aforementioned method of controlling D. suzukii. One of ordinary skill in the art would have been motivated to do so because Ghanim teaches that paraffin oil is known to be used a dilutant for odorous chemicals and there would have been a reasonable expectation of success because Depetris-Chauvin et al have already taught dilution of specifically propionic acid and butyric acid in baited traps for studies on D. suzukii.
The modified method of controlling D. suzukii in fruit crop fields in an insecticide-free manner by applying a repellant spray to fruit that has begun to ripen, wherein the repellant spray comprises 2 mL of propionic acid, 2 mL of butyric acid, and 96 mL of soap water further diluted in paraffin oil, based on the teachings of Kleiber et al, Ghanim, and Depetris-Chauvin et al renders obvious instant claims 1, 9, 12, and 14-22.
The ranges of propionic acid and butyric acid required by instant claims 1 and 14-21 either overlap the amounts of propionic acid and butyric acid in the spray of Kleiber et al in view of Ghanim and Depetris-Chauvin et al comprising 2 mL of propionic acid, 2 mL of butyric acid, and 96 mL of soap water further diluted in paraffin oil or can be obtained by optimization of the amount of paraffin oil used in the dilution by routine experimentation. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). 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, 456, 105 USPQ 233, 235 (CCPA 1955)).
The volume ratio of propionic acid to butyric acid being 1:1 required by instant claim 22 is rendered obvious by the amounts of propionic acid and butyric acid in the spray of Kleiber et al in view of Ghanim and Depetris-Chauvin et al comprising 2 mL of propionic acid, 2 mL of butyric acid, and 96 mL of soap water further diluted in paraffin oil.
Because the method of Kleiber et al in view of Ghanim and Depetris-Chauvin et al applies the same or identical composition using the same or identical active method step as the method of instant claims 1 and 21-22, the method of Kleiber et al in view of Ghanim and Depetris-Chauvin et al necessarily reduces and/or inhibits the courtship and/or copulation of D. suzukii, wherein the reduction and/or inhibition of the courtship and/or copulation of D. suzukii necessarily occurs by olfactory perception of the propionic acid and the butyric acid by the D. suzukii as required by instant claims 1 and 21-22. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant 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).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kleiber et al (as cited above) in view of Ghanim (as cited above) and Depetris-Chauvin et al (as cited above) as applied to claims 1, 9, 12, and 14-22 above, and further in view of De Wolff (US 2008/0193387 A1, published 08/14/2008, cited in Notice of References Cited dated 03/07/2025).
The modified method of controlling D. suzukii in fruit crop fields in an insecticide-free manner by applying a repellant spray to fruit that has begun to ripen, wherein the repellant spray comprises 2 mL of propionic acid, 2 mL of butyric acid, and 96 mL of soap water further diluted in paraffin oil, based on the teachings of Kleiber et al, Ghanim, and Depetris-Chauvin et al has been discussed supra.
None of Kleiber et al, Ghanim, or Depetris-Chauvin et al teach the repellent spray being present in a case, the case further comprising a support comprising usage instructions.
This deficiency is made up for in the teaching of De Wolff.
De Wolff teaches a method for repelling pests and insects comprising the step of dispersing a pest/insect repellent composition into the atmosphere (e.g., [0026]). The composition may be dispersed using a diffuser, a pump spray, or an aerosol spray, and the atmosphere may be the outdoors (e.g., [0026]). De Wolff teaches a kit which includes the composition in a package or other enclosure, where the package is a box that contains the composition, instructions for use, and optionally an applicator (e.g., [0031]).
It would have been prima facie obvious to one of ordinary skill, before the effective filing date of the claimed invention, to provide the repellant spray of Kleiber et al in view of Ghanim and Depetris-Chauvin et al as a kit in a box containing the repellant spray and instructions for use. One of ordinary skill in the art would have been motivated to do so in order to provide the repellant spray in a user-friendly form. There would have been a reasonable expectation of success because the kit taught by De Wolff is compatible with repellants in the form of a spray.
The modified method of controlling D. suzukii in fruit crop fields in an insecticide-free manner by applying a repellant spray to fruit that has begun to ripen, wherein the repellant spray comprises 2 mL of propionic acid, 2 mL of butyric acid, and 96 mL of soap water further diluted in paraffin oil, and wherein the repellant spray is provided as a kit in a box containing the repellant spray and instructions for use, based on the teachings of Kleiber et al, Ghanim, Depetris-Chauvin, and De Wolff renders obvious instant claim 10.
Response to Applicant’s Arguments
Applicant’s arguments filed on 04/21/2026 have been considered.
Applicant argues that the combination of Kleiber, Ghanim, and Depetris-Chauvin cannot teach or suggest olfactory perception of the propionic acid and the butyric acid by the Drosophila suzukii (hereafter D. suzukii) and cannot said to be inherent to that combination, i.e., the claimed reduction and/or inhibition of the courtship and/or copulation of D. suzukii is not equivalent to simply repelling D. suzukii from a certain location because simply repelling D. suzukii would simply result in the flies moving elsewhere to copulate. Applicant argues that none of Kleiber, Ghanim, nor Depetris-Chauvin conducted any study or made any observation involving olfactory-mediated inhibition of courtship or copulation in D. suzukii, placed male and female D. suzukii in close proximity which is an essential prerequisite for courtship under conditions designed to study mating behavior, isolated olfactory from gustatory or contact perception by any physical means, or measured any endpoint related to courtship or copulation. Applicant argues that the experimental design of Kleiber afforded no opportunity to observe the mating behavior of individual flies, let alone to determine whether any behavioral change operated through olfactory perception, that Ghanim made no observations about olfactory mating signals, and that Depetris-Chauvin did not study courtship or copulation, and therefore, a result that was never studied, never observed, and was not even measurable from the experimental designs of these references cannot be said to “necessarily and inevitably” flow from those practices and the inherency doctrine cannot be used to fill this gap. Applicant argues that the experimental methodology that establishes the olfactory mechanism – physical isolation of the flies from the odor source by gauze, ensuring olfactory-only perception – is wholly foreign to any of the cited references as is any condition that would isolate olfactory perception from contact or gustatory exposure. Applicant argues that the assertion in the Office action that Kleiber teaches “repellency” of D. suzukii is incorrect. Applicant argues that the combination of Kleiber, Ghanim, and Depetris-Chauvin is “a textbook example of impermissible hindsight reconstruction”. Applicant argues significant and unexpected results described at pages 25-26 of the specification and shown in Figures 1-5 that olfactory exposure to propionic acid and butyric acid in paraffin oil in the concentrations claimed reduces and eliminates D. suzukii courtship and copulation and that these results are commensurate in scope with the amended claims. Applicant argues that nothing in the references is cited about a repellent composition, a suggestion to combine butyric acid and propionic acid, or a mention of any compound/composition that could reduce/inhibit the courtship and/or copulation of D. suzukii. Applicant argues that the problem to be solved/technical effect obtained with the claimed invention is clearly different from the effect disclosed in Kleiber, which regards attractiveness of compounds including propionic acid and butyric acid. Applicant argues that the use of soap water in Kleiber can modify the odor and thus can modify the attractiveness of the compounds and that the test acid compounds of Kleiber are taught as known attractive compounds and therefore it would not have been prima facie obvious to use propionic acid and butyric acid to reduce/inhibit the courtship and/or copulation of D. suzukii. Applicant argues that the cited art do not teach use of the compounds in field tests. Applicant argues that the composition comprising soap water and paraffin oil asserted in the Office action cannot achieve the technical effect of the claimed invention because the odor of the compound would be modified. Applicant argues that Depetris-Chauvin did not use paraffin oil as a trap and the synergistic effect was never described as a repellent in paraffin oil. Applicant argues that the optimization argument asserted in the Office action cannot be used because the technical effect is not the same and the purpose is not the same.
The above argument alleging “simply repelling D. suzukii would simply result in the flies moving elsewhere to copulate” has been fully considered by the Examiner but is not found persuasive because the instant invention teaches propionic acid and butyric acid as a “repellent active principle” as evidenced throughout the specification and appearing as early as Page 1 Lines 7-9. The above arguments regarding the cited references in combination and/or individually not teaching or suggesting olfactory perception of the propionic acid and the butyric acid by the D. suzukii, not conducting any study or making any observation involving olfactory-mediated inhibition of courtship or copulation in D. suzukii, not placing male and female D. suzukii in close proximity under conditions designed to study mating behavior, not isolating olfactory from gustatory or contact perception by any physical means, not measuring any endpoint related to courtship or copulation, not observing the mating behavior of individual flies, not determining whether any behavioral change operated through olfactory perception, not making observations about olfactory mating signals, not studying courtship or copulation, not physically isolating the flies from the odor source by gauze, not using propionic acid and/or butyric acid in field tests, not using paraffin oil as a trap, and not describing the synergistic effect of paraffin oil as a repellant have been fully considered by the Examiner but are not found persuasive because none of these are method steps required by the instant claims. Regarding the arguments about what each of Kleiber, Ghanim, and Depetris-Chauvin do not teach individually, Applicant is remined that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See 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 new grounds of rejection contained above over claims 1, 9, and 14-22 is based on the combined teachings of Kleiber, Ghanim, and Depetris-Chauvin, not each of their individual teachings, and the new grounds of rejection contained above over claim 10 is based on the combined teachings of Kleiber, Ghanim, Depetris-Chauvin, and De Wolff, not each of their individual teachings. The argument regarding a difference in the problem to be solved/technical effect has been fully considered by the Examiner but is not found persuasive because the art needs to provide a motivation and not the same motivation as Applicant or necessarily recognize the same problem/solution as Applicant. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'l Co. v. Teleflex lnc., 550 U.S. 398,419 (2007). Instead, "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420. Further, Applicant is reminded that 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. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). The arguments regarding that the cited references do not teach reducing and/or inhibiting the courtship and/or copulation of D. suzukii have been fully considered by the Examiner but are not found persuasive because it is not required that the prior art explicitly teach or recognize properties of that taught by the prior art and therefore the arguments that the results were never studied, never observed, and were not even measurable from the experimental designs of the cited art is not found persuasive. Applicant is reminded that "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). As is discussed in the new grounds of rejection over claims 1, 9, and 14-22 above, because the method of Kleiber et al in view of Ghanim and Depetris-Chauvin et al applies the same or identical composition using the same or identical active method step as the method of instant claims 1 and 21-22, the method of Kleiber et al in view of Ghanim and Depetris-Chauvin et al necessarily reduces and/or inhibits the courtship and/or copulation of D. suzukii, wherein the reduction and/or inhibition of the courtship and/or copulation of D. suzukii necessarily occurs by olfactory perception of the propionic acid and the butyric acid by the D. suzukii as required by instant claims 1 and 21-22. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant 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). The arguments regarding the composition comprising soap water and paraffin oil not being able to achieve the technical effect of the claimed invention because the odor of the compound would be modified have been fully considered by the Examiner but are not found persuasive because there is no basis in the cited art that the soap water would prevent achieving the technical effect and based on the teachings of Kleiber et al, Ghanim, and Depetris-Chauvin et al, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide a method of controlling D. suzukii in fruit crop fields in an insecticide-free manner by applying a repellant spray to fruit that has begun to ripen, wherein the repellant spray comprises 2 mL of propionic acid, 2 mL of butyric acid, and 96 mL of soap water further diluted in paraffin oil, which meets all of the required limitations of instant claims 1, 9, 12, and 14-22. The above argument alleging that the assertion made in the Office action that Kleiber teaches “repellency” of D. suzukii is incorrect has been fully considered by the Examiner but is not found persuasive because, as can be seen in the new grounds of rejection over claims 1, 9, and 14-22 above, the results of the study by Kleiber et al that the trap baited with propionic acid and the trap baited with butyric acid each caught fewer D. suzukii than the controls in the absence of any acid teach that applying each of propionic acid and butyric acid to traps repels D. suzukii. The above argument regarding the combination of Kleiber, Ghanim, and Depetris-Chauvin involving hindsight has been fully considered by the Examiner but is not found persuasive because, as can be seen in the new grounds of rejection over claims 1, 9, and 14-22 above, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Kleiber, Ghanim, and Depetris-Chauvin, firstly, to control D. suzukii in fruit crop fields in an insecticide-free manner by applying a repellant spray to fruit that has begun to ripen comprising both propionic acid and butyric acid, wherein the repellant spray has a total volume of 100 mL and comprises each of propionic acid and butyric acid in a volume of 2 mL (and the remaining 96 mL being soap water), and secondly, to dilute the repellant spray using paraffin oil. One of ordinary skill in the art would have been motivated to combine propionic acid and butyric acid in a repellant spray for D. suzukii because Kleiber et al teach that each of propionic acid and butyric acid repel D. suzukii, would have been motivated to use each of propionic acid and butyric acid in a volume of 2 mL in a 100 mL repellant spray because Kleiber et al teach the effectiveness of each of propionic acid and butyric acid at repelling D. suzukii in that amount, and would have been motivated to dilute the repellant spray using paraffin oil because Ghanim teaches that paraffin oil is known to be used a dilutant for odorous chemicals. Because Kleiber et al teach that a common practice for controlling D. suzukii involves spraying fruit that has begun to ripen with an insecticide spray and teach that propionic acid and butyric acid repel D. suzukii, there would have been a reasonable expectation of success in controlling D. suzukii in fruit crop fields in an insecticide-free manner by applying a repellant spray comprising both propionic acid and butyric acid to fruit that has begun to ripen. There would have been a reasonable expectation of success in diluting the repellant spray using paraffin oil because Depetris-Chauvin et al have already taught dilution of specifically propionic acid and butyric acid in baited traps for studies on D. suzukii. Having fully considered the arguments regarding the significant and unexpected results described at pages 25-26 of the specification and shown in Figures 1-5, Applicant’s evidence is not sufficient to outweigh the evidence of obviousness i.e., the obviousness rejections contained above in the instant Office action, as the results of proportion of copulation studies carry significant deviations that do not make statistically significant the compositions of propionic acid in paraffin oil, butyric acid in paraffin oil, or propionic acid and butyric acid in paraffin oil at all of the claimed percentage values of said compounds. Applicant is reminded that the submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself. In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987). Facts established by rebuttal evidence must be evaluated along with the facts on which the conclusion of a prima facie case was reached, not against the conclusion itself. In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). In other words, each piece of rebuttal evidence should not be evaluated for its ability to knockdown the prima facie case. All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988).
Conclusion
No claims are allowable.
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.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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