DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of t/e previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/4/2025 has been entered.
Status of Application
The Examiner acknowledges receipt of the amendments filed on 11/4/2025 wherein claims 1, 8, 11, 13 and 19-21 have been amended and claim 21 has been added.
Claims 1-21 are presented for examination on the merits. The following rejections are made.
Response to Applicants’ Arguments
Applicant’s arguments/amendments filed 11/4/2025 overcome the rejection of claims 1-21 made by the Examiner under double patenting over claims 1-4 and 6-20 of co-pending Application 17/989565. This rejection is withdrawn.
Applicant’s arguments filed 11/4/2025 regarding the rejection of claims 1-20 made by the Examiner under 35 USC 103 over Schneidmiller et al. (US 2012/0087871) have been fully considered but they are not found persuasive and is MAINTAINED for the reasons of record in the office action mailed on 8/4/2025.
In regards to the 103 rejection, Applicant asserts the following:
A) Scheidmiller’s teaching suggests 23 oils and there is no direct teaching which suggests a combination of spearmint oil and geranium oil. Moreover, the claimed invention exhibits exceptional performance.
In response to A, the narrow scope of the claimed invention is obviated by Scheidmiller. Scheidmiller teaches a generic composition that contains an essential oil, a surfactant (isopropyl myristate (‘a dehydrate’); see [0033]), a solvent (isopropyl alcohol; see [0033]) and a propellant (see [0032]). Essential oils include anise oil, castor oil, cedar oil, cinnamon oil, citronella oil, clove oil, corn oil, cottonseed oil, fennel seed oil, garlic oil, geranium oil, lavender oil, lemongrass oil, linseed oil, mint oil, patchouli oil, pennyroyal oil, peppermint oil, Roman chamomile oil, rosemary oil, sage oil, sesame oil, soybean oil, spearmint oil, thyme oil, wintergreen oil, and ylang ylang oil, or any combination thereof (see [0007] and claim 4). The selection from within the limited disclosure of essential oils to be those of geranium and spearmint oil would have been within the skill of an ordinary person. The selection of a known material (e.g. spearmint oil and geranium oil) based on its suitability for the intended purpose (e.g. controlling pests) s supportive of obviousness. See MPEP 2144.07. Regarding the concentrations of the oils in the end use composition, while the reference does not explicitly teach that claimed, the reference would reasonably suggest to one of ordinary skill in the art that such concentrations could be employed with a reasonable expectation for success as similar essential oil are used in overlapping concentrations (e.g. 1.5% lemongrass oil, 1.5% clove oil, etc.). See MPEP 2144.05(II)(A) regarding the optimization of ranges.
As to the claim of improved results, Formulations 1 comprised only geranium oil and Formulation 2 comprised only spearmint oil. Formulations 1 and 2 provide 100% mortality to a pest after 24 hours. Combinations of geranium oil and spearmint oil that individually provide 100% mortality to yield a combinatorial composition that also yields 100% inhibition is not unexpected. Schneidmiller teaches that their essential oil containing compositions provide 100% knockdown efficacy at 30 seconds and 100% mortality at 10 minutes (see Table 2). The compositions of the prior art perform similar to that claimed and because there is nothing that demonstrates the claimed invention as outperforming similarly formulated compositions, there is no reason to believe that the results pointed to are unexpected. Applicant’s arguments are not found persuasive.
Rejections
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.
Claims 1-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneidmiller et al. (US 2012/0087871; of record).
Schneidmiller describes a wasp and hornet spray repellant composition.
The composition is to comprise a solvent such as isopropyl alcohol in an amount of between 10-30% by weight (see [0033, 0034]) (see instant claims 1, 5, 8, 11, 13, 16, 20 and 21), a surfactant such as isopropyl myristate (‘a dehydrate’) which may be present in an amount of between 16-40% by weight (see [0033, 0034]) (see instant claims 1, 7, 8, 11, 13, 17, 20 and 21), an essential oil (see [0006]) such as spearmint oil, geranium oil, cinnamon oil and/or cedar oil (i.e. cedarwood oil) (see [0007]) and a carrier such as mineral oil which is present in an amount of between 31.5-91.5% by weight (see [0021, 0033]) (see instant claims 1, 6, 8, 11, 13, 15 and 20). The composition may further comprise a propellant such as carbon dioxide in an amount of 3.5% by weight (see [0015, 0034]) (see instant claims 1, 9, 19 and 20). Schneidmiller is sufficiently narrow to lead one of ordinary skill in the art to a composition ‘consisting of’ the components claimed.
Schneidmiller teaches that the essential oil may comprise 1.5% lemongrass oil, 1.5% clove oil and 1% geranium oil (see [0040]). While the reference does not teach a combination of essential oil comprising 0.001-5% spearmint and 0.01-5% geranium (and a third oil (e.g. cinnamon oil, cedarwood oil) from 0.0-5%), one of ordinary skill would be capable of working within the general framework provided by Schneidmiller so as to arrive at a composition such as that claimed (see instant claims 1-3, 10, 11-13, 18 and 20). The general ranges of Schneidmiller overlap with the ranges claimed. Regarding the selection of the claimed oils, see MPEP 2143(I)(E) which states that choosing from a finite number of identified, predictable solutions (e.g. combination of spearmint oil, geranium oil and a third oil) with a reasonable expectation for success is supportive of an obviousness conclusion. Moreover, it is considered obvious to select known materials based on their suitability for the intended purpose (e.g. repelling/killing wasps and hornets). See MPEP 2144.07.
Regarding instant claims 4, 14 and 20, the weight ratio of geranium oil to spearmint oil being from about 0.5:1 to about 20:1 is considered obvious given that the reference teaches the composition may comprise spearmint oil and geranium oil and that the oil components may be present individually in similar amounts, e.g. 1.5%, 1%, and applying these concentrations to geranium oil to spearmint oil would result in range within that claimed, e.g. 1:1. MPEP 2144.05(II)(A) states that 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.
The only difference between Schneidmiller and the instant claims is that Schneidmiller does not teach the specific combination of components as claimed in a single embodiment such as that claimed. The specific combination of features claimed is described by the teaching of Schneidmiller, but ‘such ‘picking and choosing’ within several variable does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP 2141(I). Consistent with this reasoning, it would have been obvious to have utilized the framework set forth by the reference to arrive at compositions such as that claimed.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611