DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Receipt and consideration of Applicant’s amended claim set and arguments/remarks submitted on May 18, 2026 are acknowledged.
All rejections/objections not explicitly maintained in the instant office action have been withdrawn per Applicant’s claim amendments and/or persuasive arguments.
Status of the Claims
Claims 1-3, 5, 7, 9, 10, 12, 15, 18, 20, 23, 24, 28, 31, 34, 37, 38, and 40 are pending and under consideration in this action. Claims 4, 6, 8, 11, 13, 14, 16, 17, 19, 21, 22, 25-27, 29, 30, 32, 33, 35, 36, and 39 are cancelled.
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.
Claims 1-3, 5, 7, 9, 10, 12, 15, 18, 20, 23, 24, 28, 31, 34, 37, 38, and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Messina (US 2014/0352630 A1; of record), Baines et al. (Baines) (US 4,818,535; of record), and Oshima et al. (Oshima) (JP 2010222310A; of record; citations from English machine translation).
Messina discloses compositions and methods for the control and management of wildlife populations (including domesticated animals) and pests such as rodents, other herbivores such as rabbits, insects, carnivores, and other organisms such as predators. Specifically, Messina provides FIFRA exemption-based formulations which may be applied to natural or artificial surfaces (abstract). The compositions are for use as a single- or multi-species (broad spectrum) repellent that alters the movement of animals and/or insects (para.0007, 0021). Messina defines “alters the movement” to refer to the ability of a formulation to change the mobility or direction of a pest. Messina defines “repellent” to be a composition or formulation that makes unattractive to pests a habitat, food source ,or other site ordinarily sought or frequented. A repellent formulation applied to a surface may “alter the movement” of pests by making a region of application near the surface unattractive to the insects and prevent insects from approaching the surface (para.0022-0024), thus reading on reducing in interaction frequency or duration with the sprayed area/object (reading on Claim 15).
The formulations provide further advantages in that most comprise only natural ingredients or ingredients not requiring EPA approval making them useful for application by homeowners and non-licensed applicators as well as for professional use (para.0007).
Messina discloses methods of repelling an animal or insect from a surface, substrate, or area comprising applying the repellent composition to a surface, substrate, or area, which may be the surface of plants, trees, grass, water, walks, parking lots, buildings, skin, fur, or pelt of an animal or human, or an article of clothing (para.0019). Messina also discloses methods of deterring predators from an area and/or animal comprising applying the repellent composition to a surface, substrate, or area, which may be, for example, the skin, fur, or pelt of an animal, an article of clothing, farm structures, barns, pastures, grazing areas, stables, animal containment apparatus, grass, crops, dirt, soil, and other man-made apparatus and/or devices near livestock (reading on Claims 1-3, 5, 7, 9). The predator deterred may include, but is not limited to, lions, tigers, bears, bobcats, lynx, coyotes, wolves, wild and domestic dogs, foxes, hogs, mountain lions, weasels, mink, snakes, raccoons, skunks, opossums, domestic cats, and badgers (para.0020, 0025, 0196).
Messina discloses that it was discovered that the combination of one or more essential oils with one or more herb oils provide superior animal and/or insect repellent properties. As such, the components of the repellent compositions function in a synergistic manner to provide multiple layers of repulsion. The repulsive effect is broad spectrum with regard to the number of animal and/or insect species repelled thus avoiding the necessity of applying multiple compositions to repel various animal pests (para.0026).
Messina defines “essential oil” to be any hydrophobic liquid containing volatile aromatic compounds from plants. They are also known as volatile or ethereal oils, or simply as the “oil of” the plant material from which they were extracted. The term “essential” indicates that the oil carries distinctive scent (essence) of the plant. Essential oil oils may include sub-categories of oils such as “herb oils” and “mint oils”. Among the essential oils include lavender oil and rose oil (reading on lavender extract and floral extracts; Claims 37, 38, 40) (para.0027).
The repellent compositions comprises at least one FIFRA active ingredient, such as, but not limited to geraniol oil, rosemary oil, mint, mint oil, cinnamon oil, eugenol, and castor oil (para.0029). The formulations may be in the form of liquid solutions (para.0079) (reading on Claim 23 and 24).
In an embodiment, the repellent compositions and formulations may contain rosemary oil (reading on floral extract) (reading on Claims 37 and 40) (para.0048). Messina discloses that it has been discovered that rosemary oil in combination with castor oil and mint have bird, insect, and animal repellent properties (para.0049). In an embodiment, the repellent compositions and formulations may contain cinnamon oil (para.0054). Cinnamon oil has been found to have properties that repel household pets such as, but not limited to, cats and dogs. Cinnamon oil in combination with clove oil can eugenol has been found to have snake repellent properties (para.0054). In an embodiment, the repellent compositions and formulations may contain geraniol oil (para.0043). Geraniol oil in combination with castor oil and mint has both bird and non-insect repellent properties as well as the killing of organisms including scales (para.0046). Messina discloses that cinnamon oil, clove oil, and/or eugenol oil may be added to the composition to enhance the effectiveness of the composition as an animal repellent (para.0118).
Messina exemplifies a repellent formulation comprising geraniol oil, rosemary oil, mint oil, castor oil, cinnamon oil, and other ingredients (Table 5). Among the suitable “other ingredients” include predator urines (large cat and carnivores), chemically formulated predator urines, and vinegar (para.0089) (reading on Claims 37 and 40). The repellent formulations may be combined with the urine of one or more animals (para.0186). Messina also exemplifies a repellent formulation comprising rosemary oil, mint oil, cinnamon oil, and vinegar (Table 7, Formulation I) (reading on Claims 34, 37, and 40).
Messina discloses that various types of solid materials may be protected by the repellent compositions. Plant materials may be protected from browsing animals. Plant materials may be sprayed to prevent insects from alighting on the plant. Seed, including bird, vegetable, flower, plant, may be protected from wandering animals such as rodents, by mixing the repellent with the seeds to be protected (par.0190). Exterior surfaces of buildings, walls, concrete, and asphalt and other solid non-living surfaces may be sprayed to prevent animals from alighting on, approaching, or otherwise contacting the surfaces (para.0192). The repellent formulations may also be applied to clothing or other fabric or sheet goods to prevent insects for alighting on the material or biting through the material (para.0192). The formulation may be applied to the skin, fur, or pelt of pets and domestic or other animals such as, but not limited to, livestock in order to minimize insect problems (par.0195). In an embodiment, the formulation may be applied to the skin, fur, or pelt of pets and domestic or other animals such as, but not limited to, livestock in order to repel predators. The formulation may be applied directly to the animal’s coat or pelt by spraying, pouring, or massaging the liquid formulation into the coat or pelt (para.0196). The formulation may also be applied to the skin of humans (para.0197). Messina discloses that their repellent formulations are useful for outdoor use to repel large animals, such as dogs, cats, deer, bears, rodents, and the like, and may be applied to hard surfaces, either indoor or outdoor (para.0200-0201). The repellent compositions may be applied to a surface, substrate, or area to repel pests such as snakes, rodents, deer, and rabbits (Messina claim 70) (reading on Claims 2, 3, 5, 7, 9, 10, 12, 18, 20, 23, 24).
The repellent compositions may include additional components, including, but not limited to carriers, aromatics, deodorizers, antibacterial agents, antifungal accents, and other adjuvants. The repellent compositions may also be formulated in combination with commercially available pesticides or insecticides (natural or synthetic) (par.0032).
Typically, the repellent compositions are prepared as a concentrate and diluted to application strength or admixed with the appropriate particulate matter when used (para.0034).
Messina does not appear to explicitly disclose the inclusion of butanoic acid and 3-mercapto-3-methyl butanol (MMB). Baines and Oshima are relied upon for these disclosures. Their teachings are set forth herein below.
Baines discloses a repellent composition e.g., for repelling deer comprising (a) a synthetic blend of saturated alkanoic acids with carbon atoms in the range of 3-20; and (b) felinine (abstract; col.1, ln.51-55. An example of saturated alkanoic acid includes n-butanoic acid (col.2, ln.59-61). Baines also discloses a method of repelling animals e.g., deer where the composition is employed (col.2, ln.19-21). Baines discloses that the composition may be dispersed by spraying, spreading, diffusion, or other sustained release mechanism (col.3, ln.50-55).
Baines exemplifies compositions comprising 0.16 wt.% of synthetic blend, wherein 4.00 wt.% of the synthetic blend is n-butanoic acid (col.7, ln.50-60 and col.9, ln.29-38). Thus, Baines’s composition may have about 0.0064 wt.% (0.064 mg/ml) of n-butanoic acid.
Oshima discloses a repellent for bovine suborder, such as deer (abstract; p.1, para.1). The repellent contains 3-mercapto-3-methyl-1-butanol as the active ingredient (abstract; p.2, para.11). Oshima discloses that 3-mercapto-3-methyl-1-butanol was found to have a strong odor, stopping deer further away from the bait compared to comparative examples without 3-mercapto-3-methyl-1-butanol (p.7, para.1-2).
With regards to the inclusion of butanoic acid and MMB as recited in Claim 1, as discussed above, Messina, Baines, and Oshima are all directed to pest repellents, in particular those that work to repel animals, such as dogs, cats, deer, rodents, and the like. In light of Baines’s disclosure that their repellent composition, which comprises butanoic acid, is known for repelling deer, and Oshima’s disclosure that MMB is known to be used as a repellent for deer, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Messina with Baines and Oshima and combine Mesinna’s repellent composition with Baines’s repellent composition and Oshima’s MMB to arrive at a repellent composition used for repelling animals such as deer, dogs, cats, rodents, and the like. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
With regards to the amount of butanoic acid and MMB as recited in Claims 28 and 31, both are disclosed as being used as active ingredients in repellent compositions, in particular for repelling deer. In particular, Baines discloses known amounts of butanoic acid for incorporation into repellent compositions, and Oshima discloses that MMB is known to have a strong odor and effective and stopping deer from further away from comparative compositions without MMB. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results, adjusting the amount of each active ingredient based on art recognized factors such as the particular animals to be repelled, how prevalent they are in the area, the duration of repellent activity desired, the strength of the odor emitted, etc. Where 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, 105 USPQ 233 (CCPA 1955).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Response to Arguments
Applicant's arguments filed May 18, 2026 have been fully considered but they are not persuasive.
(1) Applicant argues that Messina focuses exclusively on the use of geraniol oil, rosemary oil, putrescent whole egg solids and/or other FIFRA active ingredient based combination compositions for use as animal and/or insect repellents, but Messina remains entirely silent on the use of butanoic acid and MMB in repelling Felidae species from an object. Applicant argues that MMB is not listed as an FIFRA active ingredient, and as such, any improper modification of Messina’s compositions to incorporate a combination of (1) butanoic acid and (2) MMB would have made the reference unsuitable for its intended purpose of exclusively utilizing FIFRA active ingredients to repel animals.
With regards to argument (1), the traversal argument is not found persuasive. As discussed above in detail, Messina discloses compositions and methods and management of wildlife populations (including domesticated animals) and pests, such as rodents, other herbivores such as rabbits, insects, carnivores, and other organisms such as predator. Messina discloses applying the composition to repel predators (e.g., lions, tigers, bobcats, lynx, mountain lions, mink, domestic cats), and pests (e.g., deer). Baines and Oshima were relied upon for the disclosure of the inclusion of butanoic acid and MMB for the same use of repelling animals. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
Furthermore, the inclusion of MMB and butanoic acid is not an improper modification of Messina’s composition because Messina does not require the exclusive use of FIFRA active ingredients. As discussed above, Messina discloses that their repellent compositions may also be formulated in combination with commercially available pesticides or insecticides (natural or synthetic) (par.0032).
(2) Applicant argues that any improper combination of Messina with Baines and Oshima would still fail to teach or suggest any methods of repelling a Felidae species from an object as Baines focuses on the use of deer-repelling compositions and Oshima focuses on the use of MMB alone in repelling bovine animals without any reference to its combined use with butanoic acid.
Applicant argues that a person skilled in the art would not expect MMB-based compositions used as bovine repellants as in Oshima to be combined with deer-repelling synthetic blends of acids and L-felinine as in Baines in view of the teachings of a reference that focuses exclusively on FIFRA active ingredients as in Messina to result in the claimed compositions for repelling Felidae species. Applicant argues that such an improper combination is further affirmed by the fact that odor-mediated animal behavior is species-dependent and requires rigorous experimentation, which Applicant carried out extensively, pointing to paragraphs 0066-0089 of the Specification.
Applicant argues that there is not any articulated reasonings with rational underpinnings for the claimed invention. In particular, Applicant argues that there is no explanation why a person skilled in the art would reasonably expect success of using the claimed compositions to repel animals across different species. Applicant argues there is not any teaching, suggestion, or motivation to select butanoic acid from Baines, select MMB from Oshima, and incorporate both into Messina’s specifically claimed FIFRA-based systems with a reasonable expectation of success for the claimed methods of repelling Felidae species from objects.
With regards to argument (2), the traversal argument is not found persuasive. As discussed above in detail, Messina discloses compositions and methods directed towards managing wildlife populations (including domestic animals) and pests. Among the methods include repelling predators (e.g., lions, tigers, bobcats, lynx, mountain lions, mink, domestic cats), and pests (e.g., deer). Baines and Oshima were relied upon for the disclosure of the inclusion of butanoic acid and MMB for the same use of repelling animals.
As noted above, the inclusion of MMB and butanoic acid is not precluded from Messina’s composition because Messina does not require the exclusive use of FIFRA active ingredients. As discussed above, Messina discloses that their repellent compositions may also be formulated in combination with commercially available pesticides or insecticides (natural or synthetic) (par.0032).
Furthermore, while experimentation may be needed, the standard for a rejection under 35 U.S.C. 103 is a reasonable expectation of success, not an absolute expectation of success. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. Each of the cited prior art references are directed to repelling wildlife populations and/or pests and being combined for the very same purpose. Furthermore, the specific compounds disclosed by Baines and Oshima are directed to repelling animals/pests contemplated for repelling by Messina.
Conclusion
Claims 1-3, 5, 7, 9, 10, 12, 15, 18, 20, 23, 24, 28, 31, 34, 37, 38, and 40 are rejected. No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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/MONICA A SHIN/Primary Examiner, Art Unit 1616
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