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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 15, 2025 has been entered.
Applicant’s amendment and response filed July 15, 2025 has been received and entered.
Claims 1, 4-9 and 11-23 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14 and the species elections: water, sodium dodecyl sulfate, spearmint oil, rosemary oil, isopropyl myristate, butyl lactate, ethyl lactate, glycerol monooleate, and sodium benzoate in the reply filed on October 24, 2024 is acknowledged. Claims 15-20 were previously withdrawn as drawn to a non-elected invention and claims 2, 3, and 10 remain cancelled by applicant in response filed on February 11, 2025, and claims 22-23 has been added by applicant in response filed on July 15, 2025.
Claims 1, 4-9, 11-14 and 21-23 are examined on the merits.
Withdrawn Rejections
Applicant’s arguments filed on July 15, 2025 have been fully considered.
In regards to the rejection under 35 U.S.C. 112(b) for indefinite language, Applicant has amended claim(s) 1 and 8, the claims that contained the indefinite language, and therefore the rejection of claim(s) 1, 4-9, 11-14 and 21 under 35 U.S.C. 112(b) has been withdrawn.
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 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.
Claim(s) 1, 4-9, 11-14 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Denton (U.S. Pub. No. US 2004/0253287 A1) in view of Bessette (U.S. Pub. No. US 20070098750 A1), Ortho Home Defense Crawling Bug Killer with Essential Oils (product by Ortho Home Defense – accessed November 12, 2024), Hagiwara (U.S. Pub. No. 20200000094 A1), Isman et al (Pharmaceutical Biology, (Year: 2008), vol. 46, Issue. 1-2, pp. 82-87), and Govindarajan et al (Parasitology Research, (Year: 2012), vol. 110, pp. 2023-2032).
Denton teaches an insecticide for "eradicat[ing] insects, spiders, mites, ticks, etc." ('Background Art', p. 1, para. [0003]). Denton teaches an insecticidal composition containing: water, fragrances, surfactants, disinfectants, detergents, or a combination thereof' ('Detailed Description', p. 2, para. [0033]). Denton teaches an insecticidal composition containing ethyl lactate and butyl lactate ('Detailed Description', p. 2, para. [0025-0026]).
Denton teaches a composition containing water in an unspecified amount ('Detailed Description', p. 2, para. [0033]; Claims 7-14, p. 3).) and an example of a composition containing 83.0% water in total weight ('Example', p. 2, para. [0028-0029]; Claims 7-14, p. 3).
Denton teaches a composition containing surfactants in an unspecified amount ('Detailed Description', p.2, para. [0033]; Claims 7-14, p. 3).
Denton teaches a pesticidal composition comprising about 2-50% of the total volume of butyl lactate or ethyl lactate ('Detailed Description', p.2, para. [0033]; Claims 1-6 and 12, p. 3).
Denton teaches a composition containing fragrances in an unspecified amount ('Detailed Description', p. 2, para. [0033]; Claims 7-14, p. 3).
Denton teaches a pesticidal composition in a lotion, spray, or shampoo ('Example', p. 2, para. [0032]).
Denton teaches a pesticidal composition containing no mineral oil ('Detailed Description', p.1-2, para. [0018-0027]).
Denton teaches a composition containing surfactants in an unspecified amount ('Detailed Description', p.2, para. [0033]; Claims 7-14, p. 3).
Denton teaches a pesticidal composition comprising about 2-50% of the total volume of butyl lactate or ethyl lactate (‘Detailed Description’, p.2, para. [0033]; Claims 1-6 and 12, p.3).
Denton teaches an insecticide composition that can comprise at least one alkyl ester of lactic acid (claim 1). Denton teaches butyl lactate (claim 4). Denton teaches ethyl lactate (claim 6).
Denton teaches examples of pesticidal compositions with less than 10 ingredients (p. 3, Table 1).
Denton does not teach a pesticidal composition containing a preservative. Denton does not specify the ratio of essential oils. Denton does not teach a pesticidal composition containing isopropyl myristate. Denton does not teach a pesticidal composition that contains sodium benzoate. Denton does not teach a pesticidal composition that has a pH in between 4.5 and 11.0. Denton does not teach a pesticidal composition that includes essential oils. Denton does not teach a pesticidal composition that contains the specified ratios of spearmint and rosemary (as discussed in claims 1 and 8 of the present invention). Denton does not teach the pesticidal composition within a clear container. Denton does not teach a pesticidal composition that contains potassium oleate.
Bessette teaches a pesticidal composition that can include one or more plant essential oils [such as] spearmint and rosemary in undefined amounts as active ingredients with a synergistic pesticidal effect (‘Detailed Description’, p. 6-7, paragraphs 0002 and 0051-0052).
Bessette teaches a pesticidal composition containing an unspecified amount of water ("Background", p. 1, para. [0008]), sodium lauryl sulfate (which is synonymous with sodium dodecyl sulfate) ('Detailed Description', p.8, para. [0056]), isopropyl myristate ('Example 1', Formulation examples, p.13; Claim 1, p. 16), and surfactant(s) ('Background', p. 1, para. [0008]; 'Detailed Description', p.8, para. [0056]) like glycerol monooleate.
Bessette teaches a pesticidal composition containing sodium lauryl sulfate ('Detailed Description', p.8, para. [0056]).
Bessette teaches a pesticidal composition containing 66-86.5% by weight of isopropyl myristate (see, e.g., US'750, 'Example 1', Formulation examples, p.13) and surfactants (see, e.g., US'750, 'Background', p. 1, para. [0008]; 'Detailed Description', p.8, para. [0056]).
Bessette teaches a pesticidal composition that is an emulsion ('Detailed Description', p.9, para. [0062]).
Bessette teaches the appropriate container for a pesticidal composition, whether it is made of "polymer, glass, metal, or the like" ('Detailed Description', p. 12, para. [0073]).
Bessette teaches a pesticidal composition containing surfactants ('Background', p. 1, para. [0008]; 'Detailed Description', p.8, para. [0056]).
'Ortho Bug Killer' teaches a pesticidal composition containing 0.95% by weight sodium lauryl sulfate and 98.193% by weight of water, sodium benzoate, vanillin, xanthan gum, and sodium sulfate ('Ortho Bug Killer', p. 1).
'Ortho Bug Killer' teaches a pesticidal composition containing 98.193% by weight of water, sodium benzoate (the preservative), vanillin, xanthan gum, and sodium sulfate ('Ortho Bug Killer', p. 1).
'Ortho Bug Killer' teaches a pesticidal composition containing 0.95% by weight sodium lauryl sulfate ('Ortho Bug Killer', p. 1).
Hagiwara teaches a composition for controlling plant diseases can be mixed with potassium oleate (paragraphs 0067-0068).
Isman et al teaches that rosemary oil has been shown to be an effective repellent, fumigant, and contact insecticide against a range of insect and mite species (page 85).
Govindarajan et al teaches that spearmint (e.g. M. spicata) essential oil has remarkable larvicidal properties (page 2030).
Regarding claim(s) 1, 8 and 22-23, it would have been obvious to one of ordinary skill in the art to use the combination of references in order to produce a pesticidal composition as taught by Denton to include water, butyl lactate and ethyl lactate as taught by Denton, sodium dodecyl sulfate, spearmint and rosemary essential oils, isopropyl myristate and glycerol monooleate as taught by Bessette, a preservative (e.g. sodium benzoate) as taught by ‘Ortho Bug Killer’ and potassium oleate as taught by Hagiwara. In addition, the pesticidal composition as taught by Denton can be modified to include the teachings of Isman et al and Govindarajan et al to further establish of why one of ordinary skill in the art would reasonably expect to use rosemary oil and spearmint oil within the pesticidal composition, due to their remarkable activities on pests.
However, as discussed in MPEP section 2144.05(II)(A), “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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” Therefore, an artisan of ordinary skill would have been motivated to quantify the specific amounts of the water, butyl lactate and ethyl lactate, sodium dodecyl sulfate, isopropyl myristate and glycerol monooleate, a preservative (e.g. sodium benzoate), potassium oleate and the ratios of spearmint and rosemary essential oils.
These references show that it was well known in the art prior to the effective filing date of the invention to use the claimed ingredients in compositions as a pesticide. It is well known that it is prima facie obvious to combine two or more ingredients each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is useful for the same purpose. The idea for combining them flows logically from them having been used individually in the prior art.
Based on the disclosure by these references that these substances are used in compositions to treat pesticides, an artisan of ordinary skill would have a reasonable expectation that a combination of the substances would also be useful in creating compositions to combat pesticides. Therefore, the artisan would have been motivated to combine the claimed ingredients into a single composition. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See MPEP section 2144.06, In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
Regarding claim 6, one of ordinary skill in the art would reasonably expect to use a polymer or a glass container as taught by Bessette to hold the pesticidal composition.
Regarding claim 14, one of ordinary skill in the art would reasonably expect that a pesticidal composition comprising water, sodium dodecyl sulfate, spearmint oil, rosemary oil, isopropyl myristate, butyl lactate, ethyl lactate, and glycerol monooleate, all of which have pH values between 4.0 and 9.5. While the total composition pH value is a combination of pH values from each component, an artisan of the pesticidal formulation arts would anticipate that the final composition pH value will be in the range of about 4.5-11.0.
Response to Arguments
Applicant’s arguments filed on July 15, 2025 have been fully considered, and the arguments regarding the rejection under 35 U.S.C. 103 are found to be non-persuasive.
Regarding applicant’s remarks wherein the combination of prior art Denton (U.S. Pub. No. US 2004/0253287 A1), Bessette (U.S. Pub. No. US 2007/0098750 A1) and Ortho Home Defense Crawling Bug Killer with Essential Oils (product by Ortho Home Defense – accessed November 12, 2024) fails to teach the motivation to combine spearmint oil and rosemary oil within a pesticidal composition along with the notion that the combined composition is not safe to use when applied directly to skin.
As the applicant remarks, Denton (U.S. Pub. No. US 2004/0253287 A1) teaches an insecticide composition that includes alkyl lactates, such as ethyl lactate and that Denton also teaches: Another object of the present invention is to provide an insecticide having the characteristic features described above which is completely biodegradable and completely safe for application directly to desired plants, humans and animals.
Bessette (U.S. Pub. No. US 2007/0098750 A1) teaches a pesticidal composition with the option to use over 225 plant essential oils within the composition.
“Ortho Home Defense Crawling Bug Killer with Essential Oils” discloses an insecticide that does not include spearmint oil or rosemary oil and that contact with skin should be avoided (page 4).
Regarding a summary of the applicant’s remarks overall, the combination of the references above does not teach a pesticidal composition that is safe for human skin. Based on the claims in the current invention, none of the claims are directed to a pesticidal composition for use on the skin. The pesticidal composition is directed for use on pests. In addition, Bessette teaches a pesticidal composition that can include one or more essential oils (paragraph 0051-0052). A person of ordinary skill in the art would reasonably expect that each essential oil listed is capable of acting as a good synergist in order to achieve the optimal pesticidal composition. In addition, the motivation to specifically use the two essential oils, such as rosemary oil and spearmint oil is because of the reasons stated above using the references from Isman et al and Govindarajan et al to further establish why those two essential oils would be the preferred choice.
Further, the combination of elements from all of the prior art cited is considered obvious with the motivation to combine ingredients for the express purpose of pest control. The purpose of pest control and the motivation for a more successful pest control method is the sufficient basis for concluding that the combination of claimed elements would have been obvious. Regarding applicant's remarks wherein the combination of prior art does not teach the specific ingredient concentration of each, the prior office action filed 12/10/2024 acknowledges this and states that the values of ingredient concentration(s) within a composition is not enough to demonstrate a patentably distinct product. Per MPEP 2144.05(II)(A), "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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)."
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nashara L Moreau whose telephone number is (571)272-5804. The examiner can normally be reached Monday - Thursday, 8 AM - 4 PM ET.
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NASHARA L MOREAUExaminer, Art Unit 1655
/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655