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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/24/2025 has been entered.
Formal Matters
Receipt of Applicant’s response, dated 11/24/2025, is acknowledged.
Claims 1-4, 9-12, and 14-22 are pending.
Claims 5-8 and 13 are canceled.
Claims 1 and 9-12 are amended.
Claims 14-22 are new.
Claim 2 remains withdrawn from consideration as being drawn to a nonelected species.
Claim 11 remains withdrawn from consideration as being drawn to a nonelected invention.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, 3-4, 9-10, 12, and 14-22 are under consideration in the instant Office action to the extent of the elected species, i.e., the at least one fatty acid is propionic acid and butyric acid, the brachycera is Drosophila suzukii, and the acceptable support is paraffin oil.
REJECTIONS WITHDRAWN
Claim Rejections - 35 USC § 103
The obviousness rejections of claims 1, 3-6, and 9 over Kleiber et al, of claims 7-8 and 12 over Kleiber et al, Ghanim, and Depetris-Chauvin et al, and of claims 10 and 13 over Kleiber et al, Ghanim, Depetris-Chauvin et al, and De Wolff set forth in the Office action dated 08/26/2025 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments.
NEW GROUNDS OF OBJECTION/REJECTION
Specification
The abstract of the disclosure is objected to because the phrase “selected from the group comprising” appearing in each of lines 4 and 8 should be amended to “selected from the group consisting of” in order to read as a proper Markush grouping being a closed group of alternatives. Additionally, “non-insecticidal” in line 10 should be amended to “non-insecticidally” for grammatical correctness.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1 and 14-20 are objected to because each recitation in claims 1 and 14-20 of “by v/v” should be amended to “v/v” in order to improve claim readability. As can be seen in line 5 of claim 1, “v/v” is used as an abbreviation for “by volume” and therefore the repeated “by” in each recitation of “by v/v” is unnecessary.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 21 is 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.
Claim 21 recites the limitation “wherein the propionic acid and the butyric acid are in a volume ratio of 2:1 to 1:2”. In the remarks dated 11/24/2025, it is stated that “Claims 14-22 are added herein. Applicants submit that no new matter has been introduced by this amendment. Support may be found throughout the specification as originally filed, including at least at lines 8-17, p. 9, lines 16-27, p. 10, and FIG. 3.” The Examiner has reviewed the specification for support, however, the specification does not contain support for any v/v ratio of propionic acid to butyric acid other than a 1:1 ratio, i.e., there is no written disclosure of volume ratio limitations in the specification but the limitation of a 1:1 v/v ratio of propionic acid to butyric acid is supported by the Examples wherein when the combination of propionic acid and butyric acid are used, they are done so in equal volumes. Therefore, claim 21 is rejected for containing subject matter, i.e., volume ratios of propionic acid to butyric acid in the range of 2:1 to 1:2 v/v other than 1:1 v/v, not described in the Specification.
Claim 21 recites a limitation, which was not clearly disclosed in the specification as filed, and now changes the scope of the instant disclosure as filed. Such limitation recited in claim 21, which did not appear in the specification, as filed, introduces new concepts and violates the description requirement of the first paragraph of 35 U.S.C 112. Applicant is required to provide sufficient written support for the limitation recited in instant claim 21 in the specification or claims, as-filed, or remove this limitation from the claim in response to this Office Action.
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, 3-4, 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, 3-4, 9, 12, and 14-22.
It can be understood by a person of ordinary skill in the art that the ranges of propionic acid and butyric acid required by instant claims 1 and 14-22 either overlap the amounts 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)).
Because the method of Kleiber et al in view of Ghanim and Depetris-Chauvin et al contains the same active method step as the method of instant claim 1, i.e., applying propionic acid and butyric acid (the elected species of the fatty acids), wherein the propionic acid is at a concentration of 0.1% to 4% by volume (v/v), wherein the butyric acid is at a concentration of 0.1% to 3% by v/v, and wherein the propionic acid and the butyric acid are in a composition further comprising paraffin oil (the elected species of the acceptable support), 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 (the elected species of the brachycera) as required by instant claim 1. 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, 3-4, 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 11/24/2025 have been considered.
Applicant argues that the combination of Kleiber, Ghanim, and Depetris-Chauvin fails to teach or suggest reducing and/or inhibiting the courtship and/or copulation of brachycera, wherein the propionic acid is at a concentration of 0.1% to 4% by v/v, wherein the butyric acid is at a concentration of 0.1% to 3% by v/v, and wherein the propionic acid and/or the butyric acid are in a composition further comprising an acceptable support comprising a paraffin oil. Applicant argues that Kleiber fails to teach or suggest an acceptable support comprising a paraffin oil. Applicant argues that the combination of references fails to teach or suggest reducing and/or inhibiting the courtship and/or copulation of brachycera with a propionic acid at a concentration of 0.1% to 4% by volume (v/v), AND a butyric acid is at a concentration of 0.1% to 3% by v/v, instead, Kleiber discloses that traps baited with propionic acid or butyric acid caught fewer flies than the controls, and thus, Kleiber, as well as all of the references, do not teach or suggest propionic acid or butyric acid. Applicant argues that there is nothing inherently wrong with defining some part of an invention in functional terms, that functional language does not, in and of itself, render a claim improper, and as such, all claim limitations must be given patentable weight.
The argument that Kleiber et al fail to teach or suggest an acceptable support comprising a paraffin oil has been fully considered by the Examiner but is not found persuasive because the instant rejection under 35 USC 103 of claims 1, 3-4, 9, 12, and 14-22 is based on the combined teachings of Kleiber et al, Ghanim, and Depetris-Chauvin et al and not the individual teaching of Kleiber et al. Applicant is reminded 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 argument that the combination of Kleiber et al, Ghanim, and Depetris-Chauvin et al do not teach or suggest amended claim 1 has been fully considered by the Examiner but is not found persuasive because the teachings of Kleiber et al, Ghanim, and Depetris-Chauvin et al have been applied in a new grounds of rejection under 35 USC 103 that address all of the limitations of amended claim 1 (See rejection of instant claims 1, 3-4, 9, 12, and 14-22 over Kleiber et al, Ghanim, and Depetris-Chauvin et al above for more details). The argument that there is nothing inherently wrong with defining some part of an invention in functional terms and therefore ‘reducing and/or inhibiting the courtship and/or copulation of brachycera’ must be given patentable weight has been fully considered by the Examiner but is not found persuasive because although the Examiner agrees that defining an invention in functional terms is not improper, in the instant case the functional limitations recited are inherent to the active method step of instant claim 1, i.e., applying propionic acid and butyric acid (the elected species of the fatty acids), wherein the propionic acid is at a concentration of 0.1% to 4% by volume (v/v), wherein the butyric acid is at a concentration of 0.1% to 3% by v/v, and wherein the propionic acid and the butyric acid are in a composition further comprising paraffin oil (the elected species of the acceptable support). Therefore, because Kleiber et al in view of Ghanim and Depetris-Chauvin et al render obvious the same active method step of instant claim 1, 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 (the elected species of the brachycera) as required by instant claim 1. 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).
Applicant argues that the compound that reduces and/or inhibits the courtship and/or copulation of brachycera as recited in claim 1 exhibits significant and unexpected results, i.e., the declaration dated 06/06/2025 contains results of field tests and a parade evaluation of compounds having propionic acid and butyric acid (relevant to claim 1) demonstrating efficacy similar to that of a conventional toxic chemical, without toxic effects on brachycerous flies and the environment, and the absence of brachycerous flies in the treated plots. Applicant argues that the declaration demonstrates at Par. 8-9 a significant and unexpected reduction in social interactions and courtships of Bactrocera olea in the presence of 1% propionic acid and 1% butyric acid in the solvent with a 59% decrease in observations as compared to the solvent alone.
Firstly, the above argument regarding the significant and unexpected results of Bactrocera olea has been fully considered by the Examiner but is not found persuasive because the brachycera of the instant claims is being examined to the extent of the elected species, i.e., Drosophila suzukii, and therefore results regarding Bactrocera olea, i.e., a different species of brachycera, is not applicable. The above argument regarding the results of tests on Drosophila suzukii has been fully considered by the Examiner but is not found persuasive because these argued unexpected results are not commensurate with the scope of instant claim 1 because the composition used in the experiments disclosed in the declaration regarding the field tests on Drosophila suzukii do not comprise paraffin oil, which is required by instant claim 1. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Having fully considered the declaration dated 06/06/2025 and Applicant’s remarks dated 11/24/2025, Applicant’s submitted evidence is not sufficient to outweigh the evidence of obviousness i.e., the obviousness rejection contained above in the instant Office action. 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.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619