DETAILED ACTION
Claims 1, 4-20, and 24 are pending. Of these, claims 10-14 and 16-20 are withdrawn as directed to a nonelected invention. Therefore, claims 1, 4-9, 15, and 24 are under consideration on the merits.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/21/26 has been entered.
Status of the Rejections
The rejections are withdrawn in view of the amendment, but new rejections are applied over a new reference as detailed below.
The 35 USC 112(b) rejection is withdrawn in view of the cancellation of claim 23.
Claim Rejections - 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
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, 4-9, 15, and 24 are rejected under 35 U.S.C. 103 as unpatentable over Pesaro et al. (US Pat. Pub. 2016/0015031).
As to claims 1, 4-9, 15, and 24, Pesaro discloses antimicrobial compositions comprising an antimicrobial agent such as ethylhexyl glycerin (“2-ethylhexyl glyceryl ether”) wherein the antimicrobial agent is present in the amount of most preferably 0.1 to 1 wt%, which overlaps or encompasses the ranges of claims 1, 5, and 24 (claims 1 and 13 of Pesaro and paragraph 46). Pesaro discloses a specific embodiment comprising ethylhexyl glycerin in the amount of 1.0 wt%, which reads on the ranges of claims 1, 5 and 24 (Example 2 at paragraph 359). Pesaro does not require the presence of an insecticide, thereby reading on the negative limitation of claims 1 and 5. Pesaro further teaches that the composition may be in the form of a spray such as a pump spray or a spray with propellant (paragraph 233).
Regarding claims 4, 8-9, and 15 Pesaro teaches that the composition may be in the form of an aqueous solution comprising water to balance, such as 99.1% water, which is within the recited ranges of claims 4 and 15 (Table II at page 28). Pesaro discloses amounts of the antimicrobial agent and water that can result in mass ratios of the wing wetting agent to water that are within the ranges of claims 8-9. For example, the use of 1 wt% ethylhexyl glycerin and 99.1% water would be within the amounts taught by Pesaro and would result in a mass ratio of 1:99.1, or 0.01.
The limitation of base claims 1 and 5-7 that the composition is a “flying pest exterminating composition” is merely an intended use of the claimed composition. The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use “can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim” as drafted without importing “‘extraneous’ limitations from the specification.” Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (holding that the preamble phrase “which provides improved playing and handling characteristics” in a claim drawn to a head for a lacrosse stick was not a claim limitation).
During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963) (The claims were directed to a core member for hair curlers and a process of making a core member for hair curlers. The court held that the intended use of hair curling was of no significance to the structure and process of making.); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962) (statement of intended use in an apparatus claim did not distinguish over the prior art apparatus). To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s factual finding that the reference dispenser (a spout disclosed as useful for purposes such as dispensing oil from an oil can) would be capable of dispensing popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for dispensing popcorn in a specified manner)) and cases cited therein. See also MPEP § 2112 - MPEP § 2112.02.
Here, the body of claims 1 and 5-7 fully set forth the ingredients in the composition and their amounts, along with their functional properties. The Pesaro composition comprises the same ingredients in the same amount recited by the claims and therefore is capable of performing the function of being a flying pest exterminating composition based upon the evidence of record. The preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, such that the preamble is not considered a limitation and is of no significance to claim construction.
As to claims 1, 4-9, 15, and 24, Pesaro does not further expressly disclose that a 3 mmol/kg aqueous solution of the wing wetting agent would have a surface tension within the ranges of claims 1 and 6, nor that the composition has a kinematic viscosity within the ranges of claim 1 and 5-7. Additionally, while Pesaro teaches that the composition may be a pump spray or spray with propellant as discussed above, Pesaro does not further expressly disclose a spray container comprising the composition as required by clams 6-7 and 15.
As to claims 1, 4-9, 15, and 24, although Pesaro does not expressly disclose the surface tension nor the kinematic viscosity of the composition as recited by claims 1 and 5-7, the Pesaro composition will possess these properties because it comprises the same ingredients in the same amounts recited by the claims as discussed above, and a composition cannot be separated from its properties such that the Friede composition will possess the claimed properties. See MPEP 2112.01. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01. Additionally, discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 6-7, it further would have been prima facie obvious to package the composition into a spray container, because Pesaro expressly teaches that the composition may be in the form of a pump spray or a spray with propellant, such that the skilled artisan would recognize that such a spray composition would need to be incorporated into a container with a spray pump, or into a spray container capable of holding propellant along with the composition, in order for the composition to be delivered as a spray as intended by Pesaro.
Response to Applicant’s Arguments
Applicant’s arguments have been considered carefully but are moot in light of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached M-F 9AM-6PM.
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/GAREN GOTFREDSON/ Examiner, Art Unit 1619
/ANNA R FALKOWITZ/ Primary Examiner, Art Unit 1600
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