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 .
Applicant’s amendment and response filed on June 17, 2026 have been received and fully considered.
All claim rejections as indicated in the Office action dated December 18, 2025 have been withdrawn in view of applicant’s amendment made to claims 1 and 14 which require that all components of the claimed compositions are limited to those found on EPA Inert Ingredients Eligible for FIFRA 25 (b) Pesticide Products (Rev Nov 2016) and those found on the EPA Active Ingredients Eligible for Minimum Risk Pesticide Products (Updated Dec 2015).
New rejections have been made to address the amended claims.
Claim Objections
Claims 1, 14 and 19 are objected to because of the following informalities: The term “FIFR A” used throughout the claims should be written “FIFRA”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 19 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 19 is vague and indefinite as it is unclear what exactly is included in the claimed formulation: “the inactive ingredients selected from the group consisting of an excipient and at least one surfactant for emulsifying and pH adjuster, with the balance water, at least one surfactant for emulsifying and pH adjuster, with the balance water, the least one surfactant selected from the group consisting of a soap as listed in EPA Inert Ingredients Eligible for FIFR A 25(b) Pesticide Products (Revised November 2016) and sodium lauryl sulfate as listed in EPA Active Ingredients Eligible for Minimum Risk Pesticide Products (Updated December 2015)”.(underline inserted) For the sake of compact prosecution, the underlined limitation will not be considered for prior art consideration. In response to this Office Action, applicant must amend the claim appropriately to overcome this §112 (b) rejection.
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 14-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Neigel (US 20160338362 A1, published on June 27, 2017) in view of Lindner et al. (US 20100260873 A1, published October 1, 2010) (“Lindner” hereunder).
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.
Neigel teaches that thyme oil is one of the EPA Active Ingredients Eligible for Minimum Risk Pesticide Products (2015). See [0013].
Neigel does not specifically mention the ingredients listed in EPA Active Ingredients Eligible for Minimum Risk Pesticide Products (2015) should be used. 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 to ensure making safe and non-toxic products.
Lindner teaches pest control composition in the form of transparent microemulsion, the composition comprising only ingredients are described in numerous lists of permissible or exempt ingredients maintained by the U.S. Federal government, which “face much lower regulatory barriers and consequently are much easier to introduce into the marketplace.” See abstract; [0045-0049, 0069]; Example 1. Such lists include those described in the FIFRA sctn 25 (b).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of Neigel and make a clear microemulsion comprising thyme oil with only regulated inert ingredients such as those described in FIFRA 25 (b) as motivated by Lindner. The skilled artisan would have been motivated to do so since the latter teaches that such formulations face low federal regulation requirement and are easier to introduce into marketplace. As the reference suggests that making clear microemulsion using the permissible/exempted ingredients only have been well in practice and favored in the industry, the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and producing a stable, clear microemulsion comprising thyme oil that is safe for environment and easily brought to marketplace.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Daigle (US 9451763 B2, published on September 27, 2016) in view of Seventh Generation and Ochomogo et al. (WO 2007133934 A1, published on November 22, 2007) (“Ochomogo” hereunder) and Lindner.
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 such as 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 disclosed 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 water used, since Daigle generally teaches 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.
The amended claim 1 further requires that “all components of the microemulsion are limited to those found on EPA Inert Ingredients Eligible for FIFRA 25 (b) Pesticide Products (Rev Nov 2016) and those found on the EPA Active Ingredients Eligible for Minimum Risk Pesticide Products (Updated Dec 2015)”. Although Daigle does not mention using these specifically regulated lists in formulating the composition, the reference teaches that it has been conventional practice to use ingredients of natural origin instead of synthetic chemicals which “cause undesirable effects on both the environment and on human health.” See col. 2, lines 13 – 27. Furthermore, Ochomogo teaches formulating a disinfectant spray with nontoxic, food grade safe ingredient which does not leave harmful residues to address the hazards and inconveniences of traditional chemical cleaners. See [002. 0021]. As indicated above, Lindner further teaches pest control composition comprising only permissible or exempt ingredients by the federal government “face much lower regulatory barriers and consequently are much easier to introduce into the marketplace.” See abstract; [0045-0049, 0069]; Example 1. Such lists include those described in the FIFRA sctn 25 (b).
Given the teachings in Daigle to make a disinfectant that does not cause undesirable effects on environment and human health, one of ordinary skill in the art before the effective filing date of the present application would have been obviously motivated to look to prior art such as Ochomogo to limit the ingredients to those are safe and nontoxic to environment and human. As the latter teaches using food-grade ingredients for safe and non-toxic disinfectant spray leaves no harmful residues, one of ordinary skill in the art would have been obviously motivated to use regulated, safe ingredients to ensure safety to environment and human health. There would be no patentable distinction between disinfects made with such motivation and guidance from the presently claimed disinfectant.
Furthermore, formulating the disinfect with only regulated inert ingredients such as those described in FIFRA 25 (b) as motivated by Lindner would have been prima facie obvious as the latter teaches that such formulations face low federal regulation requirement and are easier to introduce into marketplace. As the reference suggests that making microemulsion using such permissible/exempted ingredients only have been well in practice and favored in the industry, the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and producing a stable microemulsion comprising thyme oil that is safe for environment and easily brought to marketplace.
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.
Response to Arguments
Applicant's arguments filed on June 17, 2026 have been fully considered but they are moot in view of the new grounds of rejections as indicated above.
Conclusion
No claims are allowed.
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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/GINA C JUSTICE/Primary Examiner, Art Unit 1617
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