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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on August 20, 2025 and August 27, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Status
Claims 2 and 11 – 16 are cancelled and claims 21 – 32 are newly added.
Claims 1, 3 - 10, and 17 – 32 are pending.
Claims 1, 2, 4 – 9, and 22 – 26 are withdrawn.
Claims 10, 17 – 21, and 27 – 32 are examined here-in.
Election/Restrictions
Applicant cancelled claims 2 and 11 – 16 and added new claims 21 – 32. The groups set forth in the Restriction Requirement of February 20, 2025 are now Group 1 claims 1, 2, 4 – 6, 22, and 23, Group 2 claims 7 – 9 and 24 – 26, and Group 3 claims 10, 17 – 21, and 27 – 32.
Applicant's election with traverse of Group 3, claims 10, 17 – 21, and 27 – 32 in the reply filed on August 20, 2025 is acknowledged. The traversal is on the ground that the groups share a conserved core structure and are directed to compounds suitable for use as a repellant (Remarks page 7). This is not found persuasive because the groups are directed to a composition, an apparatus, and a method (i.e. multiple categories of invention), and as addressed in the previous Office Action, the composition of Group 1 can be used without the repellent apparatus of Group 2 and without the method of Group 3; the repellent apparatus of Group 2 can be used with a materially different repellent composition than that from Group 1 and according to a method that is not that which is instantly claimed in Group 3; the method of Group 3 can be used with a materially different composition to that which is claimed in Group 1 and without the apparatus as claimed in Group 2.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1, 2, 4 – 9, and 22 – 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups 2 and 3.
Applicant’s election with traverse of conserved core (shown below), (R)-cyano(3-phenoxyphenyl)methyl (1S,3R)-3-(2,2-dibromovinyl)-2,2-dimethylcyclopropane-1-carboxylate (shown below), a sprayer as applicator, and a mosquito as arthropod in the reply filed on August 20, 2025 is acknowledged. Elected claim 10 will be examined with the elected conserved core and elected claim 27 will have the elected compound. The elected compound is also known as deltamethrin.
[AltContent: textbox (Conserved core structure (left) and elected compound (R)-cyano(3-phenoxyphenyl)methyl (1S,3R)-3-(2,2-dibromovinyl)-2,2-dimethylcyclopropane-1-carboxylate (right) with core structure highlighted in yellow. )]
Claim Objections
Claims 10, 17 – 21, and 27 – 32 are objected to because of the following informalities:
Claims 10, 17 – 21, and 27 – 32 are incomplete insofar as they depend from withdrawn claims.
For claims 20 and 30, the article “an” is missing prior to “agricultural pest insect”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 10, 17, 20, 21, 27, and 30 – 32 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Reid (US 2010/0247684 A1).
Reid teaches a method for controlling or preventing pest infestations, by spraying a composition comprising deltamethrin, where the target pests are mosquitoes (claims 1, 12, 13, 18, 22, and 28).
In one example, Reid teaches a method for repelling mosquitoes where an aqueous solution with deltamethrin is applied to a fiberglass screen and mosquito knockdown is observed (paragraphs 0354, 0355, 0363). Reid’s example anticipates instant claims 10, 17, 20, 21, 27, and 30 – 32.
However, in the event that the previous does not have sufficient specificity to rise to anticipation, claims 10, 17, 20, 21, 27, and 30 – 32 are also rejected under 35 U.S.C. 103.
Claims 10, 17 – 21, and 27 – 32 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Vermeer (US 2021/0378237 A1).
Vermeer teaches insecticidal compositions for mosquitoes, cockroaches, and bedbugs (paragraph 0005). Vermeer teaches spray solutions for the insecticidal compositions (paragraphs 0072 – 0073).
Example 13 teaches spraying an insecticidal composition with deltamethrin to control mosquitoes (paragraphs 0088, 0181). Vermeer teaches the insecticidal composition is dispensed via controlled spraying in a designated area (paragraphs 0167, 0181).
Vermeer’s Example 13, a method of spraying an insecticidal composition with deltamethrin to control mosquitoes (paragraph 0181) anticipates instant claims 10, 18 – 21, and 27 - 31. Vermeer notes that the term “control” includes repelling (paragraph 0088).
In Vermeer’s Example 13, the insecticidal composition is sprayed on a tile surface (paragraphs 0167, 0181) anticipating claims 17 and 32.
However, in the event that the previous does not have sufficient specificity to rise to anticipation, claims 10, 17 – 21, and 27 – 32 are also rejected under 35 U.S.C. 103 below.
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 non-obviousness.
Claims 10, 17 – 21, and 27 – 32 are rejected under 35 U.S.C. 103 as being unpatentable over Reid (US 2010/0247684 A1).
For the purposes of this ground of rejection only, and purely arguendo, the examiner will take the position that Reid does not teach a specific embodiment (i.e., preferred embodiment, working example, etc.) having all of the claimed elements arranged as required by the claim without resorting to some “picking and choosing” within the prior art disclosure. That being said, although Reid thus would not be anticipatory by this interpretation of the facts, it nevertheless does fairly suggest the claimed invention, as shown below.
Reid’s teachings are presented above.
Reid also teaches insecticidal compositions can be applied by spraying (paragraphs 0019, 0235, 0241, 0244). Reid teaches a flat fan nozzle in a spray cabin can be used to spray the composition (paragraph 0280).
Claims 10, 17 – 21, and 27 – 32 are rendered prima facie obvious over the teachings of Reid, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., conserved core, elected compound deltamethrin, spray, mosquitoes) were known in the prior art (e.g., insecticidal methods and compositions) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP 2143(I)(a)).
Reid’s teachings for a method for repelling mosquitoes by dispensing a composition comprising deltamethrin where the mosquitoes are repelled (paragraphs 0354, 0355, 0363, claims 1, 12, 13, 18, 22, and 28) reads on instant claims 10 and 27. Deltamethrin contains the elected conserved core, therefore Reid’s teachings read on claim 10 and its dependents. Deltamethrin is the elected compound, therefore Reid’s teachings read on claim 27 and its dependents.
Reid’s teaching that an aqueous solution with deltamethrin is applied to a fiberglass screen (paragraphs 0244, 0354, 0355, 0363) reads on instant claims 17 and 32.
Reid’s teaching that insecticidal compositions can be applied by spraying (paragraphs 0019, 0235, 0241, 0244) reads on instant claims 18 and 28.
Reid’s teaching that a flat fan nozzle in a spray cabin (i.e. a sprayer) can be used to spray the composition (paragraph 0280) reads on instant claims 19 and 29.
Reid’s teaching that the target organism is a mosquito (paragraphs 0021, 0233, 0277, 0353, 0354, claim 22) read on instant claims 20, 21, 30, and 31.
Claims 10, 17 – 21, and 27 – 32 are rejected under 35 U.S.C. 103 as being unpatentable over Vermeer (US 2021/0378237 A1).
For the purposes of this ground of rejection only, and purely arguendo, the examiner will take the position that Vermeer does not teach a specific embodiment (i.e., preferred embodiment, working example, etc.) having all of the claimed elements arranged as required by the claim without resorting to some “picking and choosing” within the prior art disclosure. That being said, although Vermeer thus would not be anticipatory by this interpretation of the facts, it nevertheless does fairly suggest the claimed invention, as shown below.
Vermeer’s teachings are discussed above.
Claims 10, 17 – 21, and 27 – 32 are rendered prima facie obvious over the teachings of Vermeer, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., conserved core, elected compound deltamethrin, spray, mosquitoes) were known in the prior art (e.g., insecticidal methods and compositions) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP 2143(I)(a)).
Vermeer’s teaching for spraying an insecticidal composition with deltamethrin to control mosquitoes (paragraphs 0088, 0181, Example 13) reads on instant claims 10, 18, 20, 21, 27, 28, 30, and 31. Deltamethrin contains the elected conserved core, therefore Vermeer’s teachings read on claim 10 and its dependents. Deltamethrin is the elected compound, therefore Vermeer’s teachings read on claim 27 and its dependents.
Vermeer’s teaching that the insecticidal composition is sprayed on a tile surface (paragraphs 0167, 0181, example 13) reads on claims 17 and 32.
Vermeer’s teaching that the composition is sprayed with a spray robot (paragraphs 0167, 0168) or with a glass nozzle and compressed air (paragraph 0170) read on instant claims 19 and 29.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Double Patenting over U.S. Application No. 18/688,482
Claims 10, 17 – 21, and 27 – 32 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 19 of copending Application No. 18/688,482.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 10 is drawn to a method of repelling arthropods by dispensing a composition containing a compound with the conserved core.
Conflicting claim 1 is drawn to a pest control composition comprising an arthropod killing compound and an arthropod repellent compound. (Deltamethrin is listed as one possible ingredient.) Conflicting claim 12 recites a method for controlling arthropods by applying a pest control composition.
The instant and conflicting claims differ because conflicting claim 1 is directed to a composition which may contain deltamethrin, and does not specifically require the conserved core. However, as noted above, deltamethrin contains the conserved core of the instant application, therefore the instant and conflicting claims overlap. Furthermore, compounds CNP 0275392, NPA 004794, NPA 019908, CNP 0164761, CNP 0392167, and CNP 0252689 of the conflicting claims also appear to have the conserved core of the instant claims (compound structures on pages 35, 42, and 44 of 18/688,482 specification).
Conflicting claims 13, 14, and 19 read on instant claims 20, 21, 30, and 31.
Conflicting claim 15 recites compounds CNP 0164761, CNP 0392167, and CNP 0252689, which appear to have the conserved core of the instant claims. As such conflicting claim 12 reads on instant claims 10 and 17 -21.
Conflicting claims 17 and 18 read on instant claims 17 and 32.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/FREDERICK F KRASS/Supervisory Patent Examiner, Art Unit 1612