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 .
DETAILED ACTION
The office acknowledges Applicants filing of the claim amendments and arguments on 10/15/2025 in response to the office action dated 7/15/2015. Claims 1, 4, 7, 9, 10, 12, 13, 15, 17, and 18 have been amended. Claims 2, 16, and 21 have been canceled. Claims 14, 20, 23-27 have been previously cancelled. Applicants arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. Arguments, which are directed to withdrawn rejections, are thus rendered moot. The arguments in regards to the reiterated rejections/references from the previous office action are addressed below. The amendments necessitated the modified rejections. The action is made final. Claims 1, 3-13, 15, 17-19, and 22 are pending and are examined based on the merits herein.
Response to Applicants Arguments
102 rejections (Lallemann or Arbesman or Wu, or Gonclaves or Guerin or Kosi or Light or Nahab) and 103 rejections (Nahab or Guerin).
Applicants argue that the neither of the reference(s) teach or suggest, a "composition comprising 1-octanol, 1-nonanol, or a combination thereof, and at least one carrier, wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1-octanol and 1-nonanol," as recited in amended independent claim 1. Thus, the amended claims are novel over the cited reference(s).
In response, Applicants arguments have been fully considered. However the claims are to a composition comprising 1-octanol, 1-nonanol, or a combination thereof, and at least one carrier. The reference(s) Lallemann or Arbesman or Wu, or Gonclaves or Guerin or Kosi or Light or Nahab is explicit in teaching a composition comprising 1-octanol, 1-nonanol, or a combination thereof, and at least one carrier as in the instant claims. Regarding the recited limitations of ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1-octanol and 1-nonanol’, they are to intended use. It is noted that that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. As to Guerin, the reference teaches polyethylene dispenser comprising nonanol. It is noted that nonanol can function as an active agent and as well as a carrier. Hence the composition comprising nonanol is taught by Guerin.
103 rejections (Manhas (US 20140242199) and Sudel et al.)
Applicants argue that Manhas describes compositions comprising a pesticidal natural oil (e.g., neem oil) as an active and a polar aromatic solvent, such as 1-nonanol for the control of bed bugs. Manhas only describes 1- nonanol as a solvent, and not as an active component that modifies fruit fly behavior, as recited in the present claims. In addition, Manhas does not teach or suggest compositions comprising 1- octanol or a combination of 1-nonanol and 1-octanol or teach the recited limitations. Thus, the pending claims are non-obvious in view of Manhas. Sudel fails to cure any of the deficiencies stated above for Manhas.
In response, as stated in the rejection Manhas is explicit in teaching a composition comprising 1- nonanol and other carrier solvents (e.g. oil). Though 1-nonanol is taught as a solvent it will function as an active component that modifies fruit fly behavior as claimed because it is the inherent property of the compound. Further mere recognition of latent properties in the prior art does not render it nonobvious. In regards to the recited limitations, they are to intended use. The claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). Thus the claimed composition would have been obvious over the prior art. Sudel teaches pesticidal composition. Further it teaches that the carriers, solvents and additives can be added to the pesticidal composition. A person skilled in the art from such teachings would have found it obvious to add those carriers or additives (e.g. fragrances) to pesticidal composition of Manhas for example. The claimed invention would have been obvious over the combined teachings of the prior art for the reasons cited in the rejection.
Applicants argue that Guerin teaches away from the claimed invention and do not teach the composition and the recited limitations as in the instant claims.
In response, Applicant's arguments regarding Guerin have been fully considered. However, it is deemed that the reference does not reach the level of a teaching away from the instantly claimed composition as suggested by Applicant. Guerin explicitly teaches polyethylene dispenser comprising nonanol. It is noted that nonanol can function as an active agent and as well as a carrier. Hence the composition comprising nonanol and a carrier is taught by Guerin.
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.
Claim(s) 1, 3-4, 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lalleman et al. (FR 2949334).
Lalleman et al. teach dye composition comprising 1-octanol and comprises water and optionally one or more additional organic solvents (See claims 10, 13).
Lalleman teachings anticipate claims 1-3, 7 because the reference teach a composition comprising 1-octanol and a solvent, e.g. water. In regards to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). As to claim 4, wherein the carrier is adapted to provided sustained or control release, it is noted that it is the inherent property of the carrier and if the same carrier, herein e.g. water as taught in the instant claims is in the composition it will inherently have the property.
Claim(s) 1, 3-4, 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arbesman (US 20170182026).
Arbesman teach a formulation comprising 1-octanaol and pharmaceutically acceptable carrier material (claims 12-13), pharmaceutical vehicles can be liquids, such as water and oils [0019].
Arbesman teachings anticipate claims 1-3, 7 because the reference teach a composition comprising 1-octanol and a pharmaceutically acceptable carrier material, e.g. water. In regards to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). As to claim 4, wherein the carrier is adapted to provided sustained or control release, it is noted that it is the inherent property of the carrier and if the same carrier, herein e.g. water as taught in the instant claims is in the composition it will inherently have the property.
Claim(s) 1, 3-4, 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu (CN 109221291).
Wu teach a composite pesticide formulation comprising 1-octanol and polyoxyethylene (See claims 1-3).
Wu’s teachings anticipate claims 1, 3, 9 because the reference teach a composition comprising 1-octanol and a polymer, polyoxyethylene (polyox). In regards to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). As to claim 4, wherein the carrier is adapted to provided sustained or control release, it is noted that it is the inherent property of the carrier and if the same carrier, herein e.g. polyoxyethylene as taught in the instant claims is in the composition it will inherently have the property.
Claims 1, 3-4, 11, 12, 18, 19 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gonclaves (IDS: Florida Entomologist. 2013, Vol. 96, No. 4, pages 1365-1374).
Gonclaves discloses that virgin female of Anastrepha obliqua are attracted to the salivary-gland extract of calling males from Mango crop plantations (page 1371). Said salivary-gland extracts comprise 1-octanol and 1-nonanol (see table 1). The salivary gland extracts were diluted in n-hexane for storage and analysis (page 1367). The salivary-gland extract in n-hexane is added to filter paper discs within a bioassay arena, the filter paper was allowed to dry in order to release the odorous compounds (page 1368).
Gonclaves anticipates claims 1, 3-4, 11, 12, 18, 19 and 22 by teaching the composition comprising 1-octanol and 1-nonanol and other alcohols (e.g. heptanol, solvent), and the behavior modification of fruit fly, Anastrepha obliqua when exposed to release control device, filter paper discs, with salivary gland extract that comprises 1-octanol and 1-nanonol. In regards to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). As to claim 4, wherein the carrier is adapted to provided sustained or control release, it is noted that it is the inherent property of the carrier and if the same carrier, herein e.g. water as taught in the instant claims is in the composition it will inherently have the property.
Claims 1, 11, 12, 17-19, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by anticipated by Guerin (IDS: Proceedings of the CEC/IOBC International Symposium, Athens, Greece, 16-19 November 1982, edited by R. Cavalloro. Published 1983, pages 248-251).
Guerin discloses placing a polyethylene dispenser comprising nonanol in olive trees to attract tephritid fruit flies of the species Dacus oleae (i.e. olive flies, synonymous with Bactrocera oleae) (pages 249-250 ‘Field tests’). Guerin teach that rebell traps baited with hexanol, octanol, nonanol were attractive to olive fruit flies, D. oleae (Summary, p 250, para 2). It is taught that hexanol, nonanol captured 2.5 times as many olive flies compared to control (p 250, para 2).
Guerin anticipates claims 1, 11, 12, 17-19, 22 by teaching the composition comprising nonanol; modulating the behavior by attracting the fruit fly, Dacus oleae when exposed to release control device, rebell traps, polyethylene dispenser comprising nonanol. In regards to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). As to claim 4, wherein the carrier is adapted to provided sustained or control release, it is noted that it is the inherent property of the carrier and if the same carrier, herein e.g. water as taught in the instant claims is in the composition it will inherently have the property.
Claims 1, 3-4, 11, 12, 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kosi (IDS: Entomologia Experimentalis et Applicata. 2013, Vol. 149, No. 1, pages 44-56).
Kosi disclose , the responses of virgin sexually mature females and males (between 12 and 20 days after the final molt) to synthetic 1-nonanol were tested using a glass-topped sleeve cage as a bioassay chamber. Various types of lures and different doses of 1-nonanol (test odorant) in methylene chloride solvent were used in a series of bioassays. The species of tephritid fruit fly is trupanea vicina, the solvent carrier is methylene chloride, and the walking activity of female flies significantly decreased after exposure to 10 ug of 1-nonanol (pages 47 ‘Laboratory bioassays with synthetic I-nonanol’; and page 51 ‘Bioassays of synthetic 1-nonanol’).
Kosi anticipates claims 1, 3-4, 11, 12, 16, 18, 19, 21 by teaching the composition comprising nonanol and solvent, methylene chloride; modulating the behavior of the fruit fly, trupanea vicina when exposed to release control device comprising nonanol. In regards to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). As to claim 4, wherein the carrier is adapted to provided sustained or control release, it is noted that it is the inherent property of the carrier and if the same carrier, herein e.g. water as taught in the instant claims is in the composition it will inherently have the property.
Claims 1, 3-4, 11, 12, 18, 19, 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by anticipated by Light (IDS: Journal of Chemical Ecology. 1988, Vol. 14, No 1, pages 159-180).
Light disclose wherein the species of tephritid fruit fly is Ceratitis capitata and the antennal responsiveness of the flies increased when exposed to octan-1-ol and nonan-1-ol (see pages 164-166 and Fig. 1). Light teach a constant flow (1.0 liter/min) of charcoal-filtered and humidified compressed air was passed-over the antenna through a disposable nozzle positioned ca. 1 cm from the antenna. When activated by a timing circuit, a three-way solenoid valve diverted the purified air through the stimulus cartridge where evaporating volatiles were picked up and carried into the nozzle and then onto the antenna. Stimulation duration was 1.0 sec. (p 165, para 1). Light teach the compounds were dissolved in spectrometric grade hexane (that was additionally distilled and treated with an antioxidant) at a rate of one part test compound and nine parts hexane solvent, forming 10% volume per volume solutions. From these solutions, test cartridges were produced for each compound by pipetting 1-µl aliquots onto separate 1 x 2-cm pieces of fluted, glass fiber filter paper, which were then inserted into individual Pasteur pipets. Before or during each experiment, new cartridges were loaded with compound, individually sealed in zip-lock plastic bags, placed in a freezer and then transferred to a fume hood just prior to testing (p 164, para 3).
Light anticipates claims 1, 3-4, 11, 12, 18, 19 by teaching the composition comprising octanol or nonanol and solvent, hexane; modulating the behavior of the fruit fly, Ceratitis capitata when exposed to release control device comprising octanol or nonanol. In regards to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). As to claim 4, wherein the carrier is adapted to provided sustained or control release, it is noted that it is the inherent property of the carrier and if the same carrier, herein e.g. water as taught in the instant claims is in the composition it will inherently have the property.
Claim(s) 1, 3-4, 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by anticipated by Nahab et al. (WO 2007/044437).
Nahab et al. teach octanol formulations comprising 1-octanol in an enteric coated capsule, wherein the enteric coating comprises cellulose, polyvinyl polymers, polyacrylic polymers and the said octanol is present in an amount sufficient to treat involuntary tremors when administered to a subject (See claims 1, 4, 5). The composition comprises essential oils (See claims 8-10).
Nahab’s teachings anticipates claims 1, 3-4, 9 by teaching the composition comprising 1-octanol and essential oils, polymers. In regards to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). As to claim 4, wherein the carrier is adapted to provided sustained or control release, it is noted that it is the inherent property of the carrier and if the same carrier, herein e.g. water as taught in the instant claims is in the composition it will inherently have the property.
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, 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Nahab et al. (WO 2007/044437).
Nahab et al. teach octanol formulations comprising 1-octanol in an enteric coated capsule, wherein the enteric coating comprises cellulose, polyvinyl polymers, polyacrylic polymers and the said octanol is present in an amount sufficient to treat involuntary tremors when administered to a subject (See claims 1, 4, 5). The composition comprises essential oils (See claims 8-10). The composition can include waxes (e.g. white wax, cachalot wax), mannitol, the polymers for the controlled release include polyvinyl chloride (p 27, line 22, p 36, lines 15, 27). The controlled release comprises polymer matrix (p 33, p 34, para 1, 3, p 36, line 27). Aqueous carriers include water, alcoholic/aqueous solutions, emulsions or suspensions, including saline and buffered media (p 43, 16-18). The compositions can be presented in a pack or a dispenser device which can contain one or more unit dosage forms containing the active ingredient (p 24, para 3).
From the teachings of Nahab a skilled artisan would have arrived at a composition comprising 1-octanol and at least one carrier, e.g. polymers, oils, matrix. A skilled artisan would have been motivated to arrive at the claimed 1-octanol composition with a reasonable expectation of success. In regards to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). As to claim 4, wherein the carrier is adapted to provided sustained or control release, it is noted that it is the inherent property of the carrier and if the same carrier, herein e.g. matrix as taught in the instant claims is in the composition it will inherently have the property. Thus claims 1, 3-4 would have been obvious over Nahab. As to claims 5-6, the reference teaches mannitol can be used as a diluent in the composition. It is within the skill of an artisan to adjust the amount(s) of a component in a composition and it is routine. 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, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it would have been obvious to one of ordinary skill in the art to arrive at the claimed amounts by routine experimentation. As to claim 7, the reference teaches that water, alcohol(s) can be added to the composition. As to claims 8-10, the reference teaches white wax, polymers for the matrix release, including polyvinyl chloride. It is noted that in regards to claim 8, beeswax include white wax and further it is within the skill of an artisan to choose a required type of wax as necessary. Claim 11 is addressed by the reference teaching of the controlled release and dispenser device for delivery with an effective amount of the active ingredient.
Claim(s) 1, 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Manhas (US 20140242199) and Sudel et al. (JP 2004513220 A).
Manhas teaches compositions useful for controlling pests that comprises natural oils, pesticidal aromatic polar solvents and alkyl alcohol solvent, e.g. 1-nonanol (See claims 153, 161). Manhas further teach that materials that encapsulate, hold, transport, delay release or otherwise improve delivery may optionally be added [0078].
Sudel et al. teach a composition for delivering scent material comprising an outer matrix comprising a portion of the scent material component (Abstract, claim 1). The compositions can be used as repellents for insects, cockroaches and mites [0064]. The scent material include C8 alcohols [0013], fragrance materials include alcohols [0009]. The polymers that can be added to the composition include poly(meth)acrylamide [0020]. The carrier materials include waxes, diluents [0025]. Sudel teach external matrix emulsion composition includes mannitol [0077].
From the teachings of Manhas and Sudel a person skilled in the art would have found it obvious to formulate a composition comprising alcohol, 1-nonanol or 1-octanol with a carrier, e.g. alcohol solvents. A skilled artisan would have been motivated to arrive at a composition comprising 1-nonanol or 1-octanol in combination with a solvent, e.g. alcohol with a reasonable expectation of success and to use it to control insect behavior (e.g. repel). In regards to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). As to claim 4, wherein the carrier is adapted to provided sustained or control release, it is noted that it is the inherent property of the carrier and if the same carrier, herein e.g. matrix as taught in the instant claims is in the composition it will inherently have the property. Thus claims 1, 3-4 are addressed. As to claim 5, Sudel teach addition of mannitol to scent compositions. As to claim 6, it is within the skill of an artisan to adjust the amount(s) of a component in a composition and it is routine. 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, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it would have been obvious to one of ordinary skill in the art to arrive at the claimed amounts by routine experimentation. As to claim 7, the references teach alcohol(s) can be added to the composition. As to claims 8-10, the reference teaches wax, polymers for the matrix release, including poly(meth)acrylamide. It is noted that in regards to claims 8, 10 it is within the skill of an artisan to choose a required type of wax as necessary and beeswax is well known in the art. Claim 11 is addressed by the reference teaching of the controlled release for delivery and it is within the skill of an artisan to adjust the amount in the composition to arrive at an effective amount of the active ingredient and it is routinely optimized.
Claims 1, 11, 12, 13, 15, 17-19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Guerin (Proceedings of the CEC/IOBC International Symposium, Athens, Greece, 16-19 November 1982, edited by R. Cavalloro. Published 1983, pages 248-251).
Guerin discloses placing a polyethylene dispenser comprising nonanol in olive trees to attract tephritid fruit flies of the species Dacus oleae (i.e. olive flies, synonymous with Bactrocera oleae) (pages 249-250 ‘Field tests’). Guerin teach that rebell traps baited with hexanol, octanol, nonanol were attractive to olive fruit flies, D. oleae (Summary, p 250, para 2). It is taught that hexanol, nonanol captured 2.5 times as many olive flies compared to control (p 250, para 2).
From Guerin a person skilled in the art before the effective filing date of the invention would have found it obvious to arrive at the claimed composition comprising nonanol, a carrier (solvent) and a controlled device comprising the composition. A person skilled in the art would have been motivated to arrive at the composition and the controlled release device with a reasonable expectation of success from the prior art teachings. This addresses claims 1, 11. As to the recited limitation in claim 1, ‘wherein the composition modifies a behaviour of a tephritid fruit fly, wherein the behaviour modification is selected from deterring or reducing oviposition, deterring or reducing feeding, deterring or reducing mating, and movement away from the 1-octanol, 1-nonanol, or the combination of 1- octanol and 1-nonanol’, it is noted that claim language which merely recites a purpose or intended use of a claimed invention that is otherwise fully and intrinsically set forth by the remainder of the claim, such language is of no consequence to the construction of the invention claimed. MPEP 2111.02(II). The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. Statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F .2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477, F .2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F .2d 576, 580, 152 USPQ 235, 238 (CCPA 1967).
As to the method claim 12, Guerin teach the method of modulating the behavior of tephritid fruit flies of the species Dacus oleae, by identifying a target area, olive trees, using polyethylene dispenser comprising nonanol placed in olive trees. As to claims 13, 15, a person skilled in the art would have found it obvious to further apply an effective amount of the composition comprising 1-nonanol, for e.g. daily or every two or three days to trap the fruit flies and to eliminate them. Further it is within the skill of an artisan to further apply 1-nonaol composition and optimize the frequency and it is routine. As to claims 17-19 from Guerin it is obvious that the fruit flies behavior has been modified (attracted to nonanol composition) when exposed to release control device, rebel traps, polyethylene dispenser comprising nonanol. As to claim 22, the reference teach the modulating the behavior of tephritid fruit flies of the species Dacus oleae.
Conclusion
Applicant's amendment necessitated the modified 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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/Umamaheswari Ramachandran/Primary Examiner, Art Unit 1627