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 .
The previous claim rejection made under 35 U.S.C. 112 (b) as indicated in the Office action dated May 8, 2025 has been withdrawn in view of applicant’s amendment made to claim 14.
The previous claim rejection made under 35 U.S.C. 112 (d) has been withdrawn in view of applicant’s amendment made to claim 17.
The previous claim rejection made under 35 U.S.C. 102(a)(1) or 103 over Neigel (US 20160338362 A1) has been withdrawn in view of further consideration. A new rejection is made under 35 U.S.C. 103.
Allowable Subject Matter
The indicated allowability of claims 1, 2 and 4 is withdrawn in view of further consideration. Rejections based on the new grounds of rejection is shown below.
Claim Rejections - 35 U.S.C.§ 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 18 depends on claim 14, which limits the active ingredient that can be present in the claimed formulation to 0.15-0.3 wt % of thyme oil only. Claim 18, however, recites “further consisting of an active ingredient that contributes to pest control” which improperly expands that scope of the limitation of the base claim.
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.
Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Neigel (US 20160338362 A1, published on June 27, 2017).
Neigel teaches crystal clear and stable botanical antimicrobial microemulsions comprising thyme oil which naturally contains thymol. Example 1 contains 11.8 g of thyme oil (50 % thymol) and surfactants (polyethoxylated castor oil and Tween) and a pH adjuster (citric acid monohydrate cyrstals) in 100 g of such emulsion; the final diluted formulation contains 0.1 % of thyme oil (1 g of the concentrate in 117g water). Regarding the concentration ranges, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.
In this case, the reference teaches and suggests that as low as 0.05 wt % of thymol in a germicidal emulsion. See [0040-0042]. The reference further teaches that thyme oil typically contains 20-54 wt % of thymol, and the amount of thyme oil to deliver 0.05 wt % of thymol in a final formulation. See [0043]. Thus, if thyme oil contained only 25 % of thymol, the same 1 g of Example, 22.6 g of thyme oil would be used to make a final ready-to-use formulation comprising 0.2 wt % of thyme oil and 0.05 wt % of thymol.
This claim has been rejected under 35 U.S.C. 102, or in alternative, under 35 U.S.C. 35, because it is unclear whether the reference teaches the range of the thyme oil concentration in the prior art formulation with sufficient specificity. See MPEP 2131, III, last paragraph.
Neigel does not specifically disclose the ingredients are limited to those listed in EPA Inert Ingredients Eligible for FIFRA 25(b) Pesticide Produces (2016) or EPA Active Ingredients Eligible for Minimum Risk Pesticide Products (2015). However, since the reference explicitly requires that food grade and excipient grade ingredients are used, no distinction is seen between the prior art and the presently claimed formulation. Alternatively, since the reference teaches that the disclosed microemulsion provides good safety and low toxicity, one of ordinary skill in the art would have been motivated to use well recognized safe and inert ingredients ensure making safe and non-toxic products.
Regarding claim 18, Neigel further teaches additional essential oils having antimicrobial properties. See [0030]. Combining art-recognized equivalents known for same purpose is prima facie obvious. See MPEP 2144.06. In this case, since Neigel establishes that thyme oil and the essential oils are well known antimicrobial agents, combining these to make another composition useful as an antimicrobial agent would have been prima facie obvious.
Claims 1, 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Daigle in view of Seventh Generation and Ochomogo et al. (WO 2007133934 A1, published on November 22, 2007) (“Ochomogo” hereunder).
Daigle teaches a disinfectant composition comprising from about 0.05-25 wt% of thymol, up to about 4 % of an essential oil such as thyme oil, up to about 1.5 wt % of a fragrance, from about 0.1- 15 wt % of an anionic surfactant, from about 0.1 to about 40 % of a solvent such as an alcohol; and from about 0.01 to about 10 wt % of a sequestering agent such as citric acid, and sufficient water to make 100 wt %. See reference claim 9. The reference further teaches that phenols (thymol, eugenol, menthol, etc) in essential oils have disinfecting and cleaning effects and serve as a fragrance agent. See col. 7, lines 9 – 23. Daigle further teaches that suitable essential oils having antimicrobial effects also include wintergreen oil. See col 5, line 14. As it is prima facie obvious to combine two art-recognized functional equivalents, combining the two essential oils thyme oil and wintergreen oil to make an essential oil blend suitable for formulating the disinfectant composition would have been prima facie obvious. See MPEP 2144.06. For example, Seventh Generation discloses a thymol disinfectant spray which contains a mixture of essential oils, such as eucalyptus, spearmint, etc.
Regarding the concentration ranges, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this case, Daigle teaches that essential oils can be used in an amount of up to about 4 wt %, and further discloses that the minimum concentration of thyme oil at which a total antimicrobial activity is observed is 0.3 wt% for thyme oil.,which is very close to or within the range of “about 0.276%”. 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) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). In this case, the presently claimed amount of thyme oil is prima facie obvious over the the disclosed required concentration of thyme oil.
Furthermore, Seventh Generation also contains thyme oil in an amount sufficient to provide 0.05 wt % of thymol. Given such teachings, finding an optimal concentration ranges of the essential oils useful as an antimicrobial agent as well as desired fragrance effects by routine experimentations would have been prima facie obvious before the time of the effective filing date of the present application.
Although Daigle teaches that the solvents for the essential oils can be methanol, ethanol or glycols, the reference fails to specifically disclose isopropanol. See col. 6, lines 32 – 47. Isopropanol, as well as ethanol, methanol and glycols, is commonly used as a solvent for essential oils including thyme and wintergreen. See Ochomogo, [0038]. [0025]. Finding the optimal amount of the solvent to solubilize the essential oils would have taken no more than ordinary skill in the art.
Daigle further teaches that sodium lauryl sulfate is used in the examples. See col. 8, line 61. Using the selected surfactant in prior art to make the present invention would have been prima facie obvious.
Regarding the concentration ranges of the surfactant and citric acid, finding the optimal concentration ranges of the cleaning surfactant and the chelating agent within the workable ranges as disclosed by Daigle would have taken no more than ordinary skill in the art.
Regarding the amount of the water used, since the reference generally teach the workable concentration ranges of the active and inactive ingredients in water, formulating such composition in any desired volume would have been obvious.
Since Daigle similarly requires essential oils, a solvent, a surfactant in aqueous sprayable formulation, it is viewed that prior art is also in microemulsion form, unless shown otherwise.
Regarding claim 2, Daigle teaches that the pH of the compositions comprising thymol crystal are in the range of 6.5-8.2. See col. 9-10.
Regarding claim 4, Ochomogo teaches that formulating a disinfectant spray with nontoxic, safe ingredient was a well-known practice and obvious to one of ordinary skill in the art before the effective filing date of the present application.
Response to Arguments
Applicant's arguments filed on September 5, 2025 have been fully considered but they are moot in view of the new grounds of rejections as indicated above.
Conclusion
No claims are allowed.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617