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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/01/2026 has been entered.
Response to Amendment
Applicant's amendment and argument filed 04/01/2026, in response to the final rejection, are acknowledged and have been fully considered. Any previous rejection or objection not mentioned herein is withdrawn.
Claims 6, 10, 24, 26, 30, and 33-37 and 41-42 are pending of which claims 24, 26, 30 and 33 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/20/2024.
Claims 6, 10, 34-37 and 41-42 are being examined on the merits.
Claim Objections
Claims 34-37 are objected to because of the following informalities: The withdrawn status of claims 34-37 appear incorrect. Applicant is referred to 37 CFR 1.121(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 6, 34-37 and 41-42 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more. The claim(s) recite a biocide or biopesticide comprising a blend of essential oils and one or more carriers and isopropanol. The first step of the eligibility analysis evaluates whether the claim falls within a statutory category (see MPEP 2106.03). Since the claim is directed to a composition comprising plant components the claim is a composition of matter. Step 2A prong one of the analyses evaluates whether the claim is a judicial exception (see MPEP 2106.04). Because the claim states the nature-based products, a blend of one or more essential oils and carrier(s), the markedly different characteristics is performed by comparing the nature-based product limitation to its natural counterpart.
The claims recite the naturally occurring components found within plants (essential oils). Plant extracts, including essential oils, are made by partitioning the starting plant material into separate compositions based upon some property such as solubility in a solvent, with the soluble compounds being in one composition and the insoluble being in another composition, which compositions are then generally separated into the solvent extract of that plant versus the insoluble material composition that is generally discarded. Each composition has a different subset of the compounds originally present in the plant material. Plant extracts are purified by removing unwanted plant material from the remaining solvents. The closest naturally occurring counterparts of extracts are the same compounds found within the extract that are found in the plant in an unseparated form, even when purified, which is chemically identical to the extracted compounds. All of these are naturally occurring in nature and are not markedly different from its naturally occurring counterpart in its natural state. The properties of the nature-based product as claimed are not markedly different than the properties of these naturally occurring counterparts found in nature as these activities would inherently be found within the plants they come from. The components which would give the activities claimed in the instant invention would inherently do the same in nature as there has been nothing done in the instant invention that would make them act in any different way. The additional ingredients such as carriers, so broadly claimed can be natural components. For instance a carrier can simply be water. Additionally, isopropanol can be found naturally occurring through specific bacterial species fermentation byproducts and is considered a judicial exception.
The limitations wherein the composition is effective in controlling internal parasites and/or helminths in humans does not overcome the rejection as these activities appear to be inherent to the active natural judicial exceptions being claimed as there has been nothing done to the essential oil extracted components to warrant them any additional activities. Additionally, the limitations of claims 34-37 are intended uses of the composition which comprises of the judicial exceptions and does not structurally change those judicial exceptions in any way which would allow for any markedly different characteristics.
Step 2A prong two evaluates whether the claim as a whole integrates the recited judicial exception into a practical application (see MPEP 2106.04(d)). This evaluation is performed by (a) identifying whether there are any additional recited elements in the claim beyond the judicial exception and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. This judicial exception is not integrated into a practical application because the composition is only comprising of a mixture of natural components and the only other additional elements are limiting the amounts of those nature-based components or are intended uses for the composition.
The claims do not integrate the judicial exceptions into a practical application because in this context, such integration for a claimed product would be a physical form of the specific practical application instead of a more general composition that is not so limited.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because these components and their activity are already found naturally occurring in nature and the addition of an intended use does not impart any added benefit to the compounds or integrate the composition into a practical application.
Step 2 B evaluates whether the claim as a whole, amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim (see MPEP § 2106.05(b)).
The claims are only directed to the judicial exceptions and including them in different amounts or wherein the compositions are intended to be used in a specific manner.
Please also note, the mere modifying the concentration and proportions of the product/composition is not sufficient to remove the claimed composition from a judicial exception (see instant claims 5-6, 8-11, 13, 15, 17, 20 and 21)
Therefore, admixing the claimed naturally-occurring ingredients at such a high degree of generality merely involves applying the natural principal and appears to be no more than a drafting effort to claim the judicial exception itself; a mixture of naturally-occurring components that is not markedly different from its’ closest-occurring natural counterpart and which does not offer significantly more than the judicial exception.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 6 and 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Amy Junnila and Arlene Lathi (Efficacy of Geraniol for use in Biocidal products, Literature Review, September 07, 2019, Northwestern Scientific Consulting, Thunder Bay, ON, Canada) and the Larry Hodgson, The laidback gardener (https://laidbackgardener.blog/2016/03/03/k-o-bugs-with-alcohol/).
Junnila teaches that “Geraniol can be toxic to insects when directly applied in vitro, even at low concentrations as used by George and colleagues (2009). They applied pure geraniol to poultry red mites in concentrations which ranged from 0.5 to 2% and all concentrations were 100% toxic. Traina and colleagues (2005) use geraniol in only slightly higher concentrations, from 1 to 10%, in vitro against dog and cat ear mites and all concentrations were also 100% toxic, the 10% formulation being toxic within 1 h and the 1% being toxic within 14 h.” (see page 4, second to last para.).
Junnila does not teach wherein the biocide or pesticide has 0.5% to 20% soap, 2.0% to 8.0% isopropanol or 65.0% to 95.0% water.
Hodgson teaches “One homemade insecticide that can really do the job is 70% rubbing alcohol (isopropyl alcohol). Mix 1 part rubbing alcohol to 7 parts water and spray it on plants affected by aphids, mealybugs, thrips, whiteflies, etc. The alcohol will melt the protective wax that covers certain insects and dries the soft body parts of others, leading to their death. Furthermore, alcohol spray tends draw mobile insects out of their hiding places, making them easier to control. Simply spray the solution to saturation, covering all surfaces, including stems, both sides of leaves, and especially leaf axils where so many pests tend to hide.
You can also add a few tablespoons of rubbing alcohol to insecticidal soaps and to other homemade insecticides to increase their effectiveness” (see article).
Therefore it would have been obvious before the effective filing date to persons having ordinary skill in the art to combine the geraniol in amounts of 0.5% as taught by Junnila and water, isopropanol and water in the instantly claimed amounts because Hodgson teaches adding 1 part rubbing alcohol (isopropanol) with 7 parts water which would be a ratio of the two components within what is claimed. Hodgson also teaches adding isopropanol to insecticidal soaps. It would have been obvious to optimize the amount of soap to that what is being claimed as the amounts do not appear to be critical to the invention and optimizing the active ingredients to a pesticidal composition is well within the purview of any skilled artisan.
Regarding claims 34-37, pertaining to the limitations wherein the biocide or pesticide composition is administered to subjects, fed to animals, etc. are intended uses of the composition and does not structurally or functionally change the composition.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Amy Junnila and Arlene Lathi (Efficacy of Gernaiol for use in Biocidal products, Literature Review, September 07, 2019, Northwestern Scientific Consulting, Thunder Bay, ON, Canada) and Kaci Buhl, AGCI Oregon State University (https://agsci.oregonstate.edu/sites/agscid7/files/ag-ed-sci/minimumrisk-25b-010919.pdf).
Junnila teaches that “Geraniol can be toxic to insects when directly applied in vitro, even at low concentrations as used by George and colleagues (2009). They applied pure geraniol to poultry red mites in concentrations which ranged from 0.5 to 2% and all concentrations were 100% toxic. Traina and colleagues (2005) use geraniol in only slightly higher concentrations, from 1 to 10%, in vitro against dog and cat ear mites and all concentrations were also 100% toxic, the 10% formulation being toxic within 1 h and the 1% being toxic within 14 h.” (see page 4, second to last para.).
Junnila does not teach wherein the biocide or pesticide has 0.5% to 1% citronella oil, 0.5% to 1% cornmint oil, 0.5% to 3.0% isopropyl myristate and 90% to 98% white mineral oil.
Buhl teaches of minimum risk pesticides that don’t have to be registered with the EPA and teaches of both citronella oil, cornmint oil, cedarwood oil, lemongrass oil and thyme oil (known to contain thymol) (see page 4) and teaches of including synthetic substances which aren’t band such as mineral oil (see page 14) or organic substances such as mineral oil/petroleum distillates (aka. white mineral oil) (see page 32) and other ingredients, which are common to pesticide use such as isopropyl myristate (see page 34).
Therefore it would have been obvious to persons having ordinary skill in the art before the effective filing date to create a biocide/pesticide which includes 0.5% to 1% citronella oil, 0.5% to 1% cornmint oil, 0.5% to 3.0% isopropyl myristate and 90% to 98% white mineral oil, because as Buhl teaches these are common pesticide components which are not banned by the EPA and effective for killing insects. Junnila teaches that geraniol is also effective as an essential oil for killing insects and so optimizing each amount to be within the instantly claimed range is well within the purview of any skilled artisan and is prima facie obvious. Combining known equivalents into a single composition with the expectation of creating a composition with enhanced activity is prima facie obvious. Although Buhl teaches of other ingredients that could also be included in pesticide formulations, selecting white mineral oil, isopropyl myristate, conrmint oil and citronella oil out of the other ingredients from a finite list of ingredients is also prima facie obvious, especially given the knowledge of those skilled in the art as these specific ingredients are well known and common practice for use in pesticide formulations. Optimizing the range of ingredients to be in the instantly disclosed range is also prima facie obvious. Junnila teaches including the geraniol in amounts from 0.5 to 2% and so optimizing the other oils (ingredients) to be within the same range is also prima facie obvious. Optimizing the white mineral oil to be at 90%-98% is also well within the purview of any skilled artisan as this could act as the solvent, carrier and has effects known to kill insects. All of these agents are known to work by forming thin films over the bodies of the insects and blocking their breathing pores and suffocating them.
Claims 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Junnila and Arlene Lathi (Efficacy of Gernaiol for use in Biocidal products, Literature Review, September 07, 2019, Northwestern Scientific Consulting, Thunder Bay, ON, Canada) and the Larry Hodgson, The laidback gardener (https://laidbackgardener.blog/2016/03/03/k-o-bugs-with-alcohol/)as applied to claim 6 above, and further in view of Kaci Buhl, AGCI Oregon State University (https://agsci.oregonstate.edu/sites/agscid7/files/ag-ed-sci/minimumrisk-25b-010919.pdf).
Junnila and Hodgson’s combined art make obvious to the instant invention however are silent on the composition comprising cornmint oil, cedarwood oil, thymol, lemongrass and citronella.
Buhl teaches of minimum risk pesticides that don’t have to be registered with the EPA and teaches of both citronella oil, cornmint oil, cedarwood oil, lemongrass oil and thyme oil (known to contain thymol) (see page 4) and teaches of including synthetic substances which aren’t band such as mineral oil (see page 14) or organic substances such as mineral oil/petroleum distillates (aka. white mineral oil) (see page 32) and other ingredients, which are common to pesticide use such as isopropyl myristate (see page 34).
Therefore it would have been obvious to persons having ordinary skill in the art before the effective filing date to create a biocide/pesticide which includes 0.05% to 1% citronella oil, 0.05% to 1% cornmint oil, 0.05% to 1% cedarwood oil, 0.05% to 1% thymol and 0.05% to 1% lemongrass oil, because as Buhl teaches these are common pesticide components which are not banned by the EPA and effective for killing insects. Junnila teaches that geraniol is also effective as an essential oil for killing insects and so optimizing each amount to be within the instantly claimed range is well within the purview of any skilled artisan and is prima facie obvious. Combining known equivalents into a single composition with the expectation of creating a composition with enhanced activity is prima facie obvious. Although Buhl teaches of other ingredients that could also be included in pesticide formulations, selecting conrmint oil, lemongrass oil, cedarwood oil and citronella oil out of the other ingredients from a finite list of ingredients is also prima facie obvious, especially given the knowledge of those skilled in the art as these specific ingredients are well known and common practice for use in pesticide formulations. Optimizing the range of ingredients to be in the instantly disclosed range is also prima facie obvious. Junnila teaches including the geraniol in amounts from 0.5 to 2% and so optimizing the other oils (ingredients) to be within the same range is also prima facie obvious.
All of these agents are known to work by forming thin films over the bodies of the insects and blocking their breathing pores and suffocating them.
Response to Arguments
Applicant's arguments filed 04/01/2026 have been fully considered but they are not persuasive. The applicant argues that none of the art teaches compositions consisting only of 0.5% to 3.0% geraniol, 0.5% to 20.0% soap, 2.0% to 8.0% isopropanol and 65.0% to 95.0% water. The Office relies on new art which make obvious including these components within these ranges. Junnila and Hodgson’s combined teachings teach creating pesticide/biocide compositions including these instantly claimed ingredients and within the claimed ranges.
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Currently no claims are allowed.
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JACOB A BOECKELMANExaminer, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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