DETAILED ACTION
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/18/2025 has been entered.
Previous Rejections
Applicants' arguments, filed 11/19/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 1-4, 6, 11-12, 21-22, and 24 are rejected under 35 U.S.C. 103 as being as being obvious over Mishima et al. (US 6,932,986 B2) in view of Zobitne et al. (US 6,548,085 B1).
Regarding claims 1, 11, and 24, Mishima discloses an essential oil mixture to be used as a pest repellent (abstract) which contains natural essential oils as the active ingredient (Col 1, lines 7-8). The essential oil solution contains only rosemary oil and a mint oil (Col 4, Table 1) with a disclosed desirable mint oil being spearmint oil (Col 2, lines 32-33). Mishima discloses that the essential oil mixture is dissolved in a solvent (such as isopropyl alcohol) and water (Col 2, lines 48-55). A mixing ratio of the rosemary oil with the mint oil is within a range of from 1:4 to 1:99 (Col 2, lines 19-23) and the content of the essential oil mixture is within a range of from 3 to 20 wt.% (Col 2, lines 56-58). Misha teaches that the mint oil has an excellent effect on pests (excellent miticide effect) and rosemary oil promotes this effect (Col 2, lines 14-18).
While Mishima does not disclose the ratio of mint oil to rosemary oil is from about 1.5:1 to 3:1, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 A. Furthermore, 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. See MPEP 2144.05(II)(A). In this case, the general condition of a pest repellant with rosemary and mint oil has been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum amounts and ratio via routine experimentation to achieved the optimal pest repellant effect (Mishima, Col 2, lines 11-18).
The applicant has not demonstrated that the particular range is critical (generally by showing that the claimed range achieves unexpected results relative to the prior art range). See MPEP 2144.05 III.A. For discussion, see “analysis of unexpected results” below.
Mishima does not teach that the composition consists of a surfactant comprising sodium lauryl sulfate or teach water in an amount of 45-75 wt.%.
Zobitne discloses a pest repellant composition with sodium lauryl sulfate and essential oils such as a mint oil and rosemary oil (abstract; Col 1, line 57 - Col 2, line 7; Col 3, line 4; Col 21, line 19). Zobitne teaches that all of the tested essential oils show a synergistic insecticidal improvement in combination with sodium lauryl sulfate and the addition of sodium lauryl sulfate to essential oils produces a high mortality rate in a relatively short time (Col 3, line 30-Col 4, line 61; Col 5, lines 25-35). Zobitne also discloses water in an amount of about 50-99.89% to dissolve the active ingredient (Col 5, lines 9-10; Col 8, line 33-41).
Since Mishima generally teaches a pest repellant composition with rosemary and mint essential oils as active ingredients, it would have been prima facie obvious to one of ordinary skill in the art to include sodium lauryl sulfate, within the teachings of Misha, because Zobitne teaches that essential oils show a synergistic insecticidal improvement in combination with sodium lauryl sulfate and the addition of sodium lauryl sulfate to essential oils produces a high mortality rate in a relatively short time (Col 3, line 30-Col 4, line 61; Col 5, lines 25-35). Since Mishima generally teaches the composition includes water the ordinarily skilled artisan would have been motivated to use water in an amount sufficient to dissolve the active ingredient as taught by Zobitne (Col 5, lines 9-10; Col 8, line 33-41).
Further regarding claim 24, Mishima in view of Zobitne meets the “composition consisting of” and “an active component consisting of” limitations as Mishima discloses the essential oil solution contains only rosemary oil and a mint oil (Col 4, Table 1) and the required components of Zobitne are an essential oil such as a mint/rosemary oil (abstract; Col 1, line 57 - Col 2, line 7; Col 3, line 4; Col 21, line 19) in combination with sodium lauryl sulfate.
Claims 2 and 22 are rendered prima facie obvious because Mishima discloses the content of the essential oil mixture is from 3 to 20 wt.% (Col 2, lines 56-58) and the essential oils are the active ingredient (Col 1, lines 7-8). A prima facie case of obviousness exists because of overlap, as previously discussed.
Regarding claim 3-4, Mishima discloses a mixing ratio of the rosemary oil with the mint oil is within a range of from 1:4 to 1:99 (Col 2, lines 19-23) and the content of the essential oil mixture is within a range of from 3 to 20 wt.% (Col 2, lines 56-58). A prima facie case of obviousness exists where the prior art overlaps or is merely close, and furthermore the claimed amounts would have been achieved by routine experimentation, as previously discussed.
Claim 6 is rendered prima facie obvious because Mishima discloses that the essential oil mixture is dissolved in a solvent such as isopropyl alcohol (Col 2, lines 48-55).
Claim 12 is rendered prima facie obvious because Mishima discloses spearmint oil (Col 2, lines 32-33).
Claim 21 is rendered prima facie obvious because Mishima discloses the essential oil solution contains only rosemary oil and a mint oil (Col 4, Table 1) with a disclosed desirable mint oil being spearmint oil (Col 2, lines 32-33).
Analysis of Unexpected Results
Applicant argues at pg. 14-15 that Example 1 of the present application [0077]-[0085] showcases the unexpected efficacy of the claimed formulations. Specifically, Formulation F showed exceptional performance with 90 or 100% efficacy in all species tests for both knockdown and mortality.
The Examiner has fully reviewed and considered the unexpected results alleged by the applicant. Formulation F does show significantly higher mortality and knockdown compared to the other tested formulations. Notably, Formulation F has 4.70 wt.% spearmint oil, 2.57 wt.% rosemary oil (ratio of spearmint to rosemary of 1.83:1) and 2.70 wt.% of sodium lauryl sulfate or sodium oleate or potassium oleate or sodium ricinolate. This formulation is more effective than Formulation D, which has the same amounts and ratio of spearmint and rosemary oil (4.70 wt.% spearmint oil, 2.57 wt.% rosemary oil, ratio of spearmint to rosemary of 1.83:1) but only 0.22 wt.% of sodium lauryl sulfate or sodium oleate or potassium oleate or sodium ricinolate. Therefore, it appears to be the inclusion of the increased amount of sodium lauryl sulfate (or sodium oleate or potassium oleate or sodium ricinolate – this variable is not adequately described as explained below) that is critical to the increased efficacy of the formulation and the increased efficacy of sodium lauryl sulfate with essential oils is known in the art (see further discussion below).
The applicant has not demonstrated that the claimed range of spearmint oil to rosemary is critical. In Example 2, of the specification [0086]-[0092] ratios ranging from 0.1:1 to 10:1 are tested for their knockdown and mortality percentage and each tested ratio of spearmint oil to rosemary oil exhibited nearly the same knockdown and mortality results [0091]-[0092]. Therefore, the applicant has not demonstrated the criticality of the claimed range of spearmint oil to rosemary oil of 1.5:1–3:1.
As restated from the non-final rejection dated 06/05/2025, it also does not appear that applicant has adequately explained the data presented as being evidence of non-obvious. See MPEP § 716.02(b)(II).
Formulations D-H are presented in Example 1 and “sodium lauryl sulfate or sodium oleate or potassium oleate or sodium ricinolate” is listed as an ingredient. This variable is not adequately described such that the examiner can assess the probative of same. (Applicant might consider listing the specific surfactant used).
It is also not clear that the results are actually “unexpected” over the prior art. As discussed above, it appears to be the inclusion of the increased amount of surfactant that is critical to the increased efficacy of the formulation. The increased efficacy of essential oils with sodium lauryl sulfate is taught by Zobitne. Zobitne discloses a pest repellant composition with sodium lauryl sulfate and essential oils such as a mint oil and rosemary oil (abstract; Col 1, line 57 - Col 2, line 7; Col 3, line 4; Col 21, line 19). Zobitne teaches that all of the tested essential oils show a synergistic insecticidal improvement in combination with sodium lauryl sulfate and the addition of sodium lauryl sulfate to essential oils produces a high mortality rate in a relatively short time (Col 3, line 30-Col 4, line 61; Col 5, lines 25-35).
Finally, assuming purely arguendo that unexpected results have been established, (the Examiner does not believe at this time that they have), the claims would still not be “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has allegedly demonstrated “improved” efficacy, but even if this is so then it would only have been shown with a specific amount of certain components. It is unclear that a composition containing these specific components and in these specific percentages would be reasonably representative of compositions containing other components or surfactants and in differing amounts (namely, the amount of sodium lauryl appears to be critical to the showing), falling within the broader scope currently claimed.
Response to Arguments
The rejection over Mishima in view of Zobitne is newly applied and has not been traversed.
Claims 7-9, 13, 16-20, and 23 are rejected under 35 U.S.C. 103 as being as being obvious over Mishima et al. (US 6,932,986 B2) in view of Zobitne et al. (US 6,548,085 B1) and further in view of Messina (US 2014/0352630 A1) and Bessette (US 2008/0269177 A1).
The 35 U.S.C. 103 rejection over Mishima in view of Zobitne was previously discussed.
Regarding claim 7-9, 13, 16-17, and 19 the combined teachings of the prior art do not disclose the composition comprises between about 0.1 wt.% and about 3.0 wt.% sodium lauryl sulfate, between about 0.1 and 4 wt.% of a surfactant, such as sodium oleate, between about 0.1 wt.% and about 0.5 wt.% by weight of a preservative, between about 1 wt.% and about 5 wt.% of a propellant, such as CO2, and between about 1 wt.% and about 44 wt.% of the solvent, such as isopropyl alcohol.
Messina discloses an insect repellent composition [0002] with sodium lauryl sulfate in an amount of 0.005 to about 6.5 wt.% [0069] and discloses that the addition of sodium lauryl sulfate improves the properties of the compositions or the ease of use of said compositions [0068]. Messina also teaches sodium oleate as a surfactant [0014] in an amount of 0.01 to 5 weight percent [0083] and teaches that surfactants wet and disperse the active ingredient, help achieve more effective coverage of the target, and are necessary for good coverage [0127]. Messina further discloses preservatives are present in the repellent compositions (in an amount of 0.01-5 wt.%, [0076] and [0077]) and teaches that adding a preservative protects against decay, decomposition, or spoilage [0115].
Since Mishima generally teaches a pest repellent composition, it would have been prima facie obvious to include sodium lauryl sulfate in an amount of 0.005 to about 6.5 wt.%, sodium oleate in an amount of 0.01 to 5 wt.%, and a preservative in an amount of 0.01-5 wt.% because Messina teaches these amounts in a repellent composition. The ordinarily skilled artisan would have been motivated to use this amount of sodium lauryl sulfate to improve the properties of the composition or the ease of use of the composition [0068], to use this amount of sodium oleate as a surfactant to wet and disperse the active ingredient, help achieve more effective coverage of the target, and obtain good coverage [0127], and to use this amount of preservative to protect against decay, decomposition, or spoilage [0115].
Bessette discloses a pest repellent with CO2 in an amount of 3.0 wt.%, and the solvent isopropyl alcohol in an amount of 15.0 wt.% [0052]. Bessette teaches carbon dioxide as a propellant [0063] and that propellants and solvents such as alcohols are inert ingredients that are used in pesticide products to formulate a pesticide [0022].
Since Mishima generally teaches a pest repellant, it would have been prima facie obvious to one of ordinary skill in the art to include the solvent, isopropyl alcohol, and the propellant, carbon dioxide, in the amount taught by Bessette, within the composition of Mishima, because Bessette teaches that these are appropriate inert ingredients for a pesticide. An ordinarily skilled artisan would be motivated to use isopropyl alcohol and carbon dioxide, in the amounts taught by Bessette, to formulate the pesticide product, as taught by Bessette [0022] [0052].
Furthermore, generally, it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., 15.0 wt.% isopropyl alcohol and 3.0 wt.% carbon dioxide) were known in the prior art (e.g., Bessette) 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 yielding nothing more than predictable results (e.g., a pesticide composition) to one of ordinary skill in the art. MPEP 2143.A.
Claim 18 is rendered prima facie obvious because Mishima discloses spearmint oil (Col 2, lines 32-33).
Regarding claim 20, the combined teachings of the prior art do not disclose between about 0 wt.% and 3 wt.% sodium lauryl sulfate, between about 3 wt.% and about 25 wt.% of at least one solvent; between about 0.1 wt.% and about 4 wt.% of at least one surfactant; and between about 0.1 wt.% to about 0.5 wt.% of at least one preservative.
Messina discloses an insect repellent composition [0002] with sodium lauryl sulfate in an amount of 0.005 to about 6.5 wt.% [0069] and discloses that the addition of sodium lauryl sulfate improves the properties of the compositions or the ease of use of said compositions [0068]. Messina also discloses sodium oleate as a surfactant [0014] in an amount of 0.01 to 5 weight percent [0083] and teaches that surfactants wet and disperse the active ingredient, help achieve more effective coverage of the target, and are necessary for good coverage [0127]. Messina further discloses preservatives are present in the repellent compositions (in an amount of 0.01-5 wt.%, [0076] and [0077]) and teaches that adding a preservative protects against decay, decomposition, or spoilage [0115].
Bessette discloses the solvent isopropyl alcohol in an amount of 15.0 wt.% [0052]. Bessette teaches that solvents such as alcohols are inert ingredients that are used in pesticide products to formulate a pesticide [0022].
It would have been prima facie obvious to include sodium lauryl sulfate in an amount of 0.005 to about 6.5 wt.%, isopropyl alcohol in an amount of 15 wt.%, sodium oleate in an amount of 0.01 to 5 wt.%, and a preservative in an amount of 0.01-5 wt.% within the teachings of Mishima, for the reasons discussed above.
Mishima meets the “an active component consisting of” limitation of claim 20 as Mishima discloses the essential oil active component contains only rosemary oil and a mint oil (Col 4, Table 1). None of the additionally cited references are used to teach the active component, only additional components falling within the “comprising” limitation of the composition as a whole.
Regarding claim 23, it would have been prima facie obvious to include sodium lauryl sulfate in an amount of 0.005 to about 6.5 wt.%, as taught by Messina, within the teachings of Mishima, as previously discussed.
Response to Arguments
The rejection over Mishima in view of Zobitne and further in view of Messina and Bessette is newly applied and has not been traversed.
Claims 1-4, 6-7, 11-12, 19, and 22 are rejected under 35 U.S.C. 103 as being as being obvious over Bessette (US 2008/0269177 A1) in view of Fried et al. (US 7,201,926 B2).
Regarding claims 1, 3-4, 6-7, and 11 Bessette discloses in embodiment DR-F-048 [0052] a pesticidal composition (abstract), with rosemary oil (2.5 wt.%), a mint oil (peppermint oil, 2.5 wt.%), a carrier (water, 46.3 wt.%), a solvent (isopropyl alcohol), and a surfactant (lecithin) wherein all weight percentages are percent by weight of the total composition. The pesticidal compositions include additional surfactants such as sodium lauryl sulfate [0058]. Bessette discloses a blend of essential oils is the pesticidal active ingredient (abstract) and is present in an amount of 0.1% to 50 wt.% of the total pesticidal composition [0029] [0070].
Bessette does not disclose that the mint oil is spearmint oil, as recited in claim 1 or that a weight ratio of the mint oil to rosemary oil is from about 1.5:1 to about 3:1, as recited in claims 1 and 11.
Fried discloses an insect repellent composition (abstract) with spearmint oil and rosemary oil (Col. 5, lines 10-25) and teaches that the best range of spearmint oil is 2.0-6.5 wt.% and the best range of rosemary oil is 0.4-9.0 wt.% (Col 4, lines 10-15). Fried teaches spearmint oil as a preferred essential oil (Col 3, lines 63-65) and that the use of the essential oils creates a synergistic effect to create an effective repellent that is environmentally safe and friendly (Col 2, lines 48-51; Col 3, lines 15-20).
Since Bessette generally teaches a pesticide composition with essential oils, it would have been prima facie obvious to one of ordinary skill in the art to include, within the teachings of Bessette, spearmint oil in an amount of 2.0-6.5 wt.% and rosemary oil in an amount of 0.4-9.0 wt.%, because Fried teaches these as best amounts of essential oils in an insect repellent. An ordinarily skilled artisan would be motivated to use spearmint oil and the amounts of the essential oils because Fried teaches spearmint oil as a preferred essential oil (Col 3, lines 63-65) and that the use of the essential oils in these amounts creates a synergistic effect to create an effective repellent that is environmentally safe and friendly (Col 2, lines 48-51; Col 3, lines 15-20).
Additionally, generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, since Bessette generally taught mint essential oils, it is prima facie obvious to select spearmint oil for incorporation into pesticide compositions based on its recognized suitability for the intended use as a mint oil in pesticide compositions, as taught by Fried.
Regarding the "consisting essentially of" language of claims 1 and 11, absent a clear disclosure in the specification regarding what would materially change the composition, "consisting essentially of" is interpreted to be "comprising" language.
In the instant case, there is not a clear disclosure in the specification regarding what would materially change the composition.
Regarding the amounts of the components, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A. Furthermore, the weight ratio of spearmint to rosemary oil as recited in claims 1, 4, and 11 would be achieved by one of ordinary skill in the art through routine optimization following the teachings of Fried. See MPEP 2144.05(II)(A).
Claims 2 and 22 are rendered prima facie obvious because Bessette discloses a blend of essential oils is the pesticidal active ingredient (abstract) and is present in an amount of 0.1% to 50 wt.% of the total pesticidal composition [0029] [0070]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 12 is rendered prima facie obvious because Bessette discloses the mint oil is peppermint oil [0052].
Claim 19 is rendered prima facie obvious because Bessette discloses embodiment DR-F-048 [0052] further includes the propellant carbon dioxide [0052].
Claims 8-9, 13, 16-18, and 23 are rejected under 35 U.S.C. 103 as being as being obvious over Bessette (US 2008/0269177 A1) in view of Fried et al. (US 7,201,926 B2) and further in view of Messina (US 2014/0352630 A1).
Regarding claims 8 and 13, Bessette further discloses embodiment DR-F-048 [0052] has lecithin in an amount of 0.2 wt.%, the propellant, CO2, in an amount of 3.0 wt.%, and the solvent isopropyl alcohol in an amount of 15.0 wt.%. Bessette discloses the compositions include additional surfactants such as sodium lauryl sulfate [0058].
Bessette does not disclose sodium lauryl sulfate in an amount of 0.1 wt.% to 3.0 wt.% or a preservative, as recited in claims 8 and 13.
Messina discloses an insect repellent composition [0002] with sodium lauryl sulfate and discloses that the addition of sodium lauryl sulfate improves the properties of the compositions or the ease of use of the composition [0068]. Messina discloses sodium lauryl sulfate is included in an amount of about 0.005 to about 6.5 wt.% [0069]. Messina also discloses preservatives are present in the repellent compositions in an amount 0.01-5 wt.% [0076] [0077] and teaches that adding a preservative protects against decay, decomposition, or spoilage [0115].
Since Bessette generally teaches pesticide compositions with sodium lauryl sulfate, it would have been prima facie obvious to one of ordinary skill in the art to include, within the teachings of Bessette, 0.005 to 6.5 wt.% sodium lauryl sulfate because Messina teaches this range of sodium lauryl sulfate in an insect repellant composition. An ordinarily skilled artisan would be motivated to use this amount of sodium lauryl sulfate to improves the properties of the composition or the ease of use of the composition [0068]. An ordinarily skilled artisan would be motivated to include a preservative, in the amount taught by Messina, to protect against decay, decomposition, or spoilage in the composition [0115]. A prima facie case of obviousness exists because of overlap, as discussed above.
Claim 9 is rendered prima facie obvious because Bessette discloses the propellant carbon dioxide (embodiment DR-F-048 [0052]).
Claim 16 is rendered prima facie obvious because Bessette discloses that the solvent is isopropyl alcohol (embodiment DR-F-048 [0052]).
Claim 17 is rendered prima facie obvious because Bessette discloses that the surfactant is lecithin (embodiment DR-F-048 [0052]).
Regarding claim 18, Bessette does not disclose that the mint oil is spearmint oil, however, it would have been prima facie obvious to include spearmint oil, as taught by Fried, within the teachings of Bessette, as previously discussed.
Regarding claim 23, while Bessette does not disclose sodium lauryl sulfate in an amount between about 1.25 wt.% and about 3.7 wt.%, it would have been prima facie obvious to include sodium lauryl sulfate in an amount of 0.005 to about 6.5 wt.%, as taught by Messina, within the teachings of Bessette, as previously discussed.
Response to Arguments
Applicant's arguments filed 11/19/2025 have been fully considered but they are not persuasive.
Applicant argues at pg. 9-10 that there is no logical reason to combine Bessette and Fried to arrive at the claimed composition with only two active ingredients because Bessette teaches at least three active ingredients and Fried teaches 3 or more essential oils and that a larger number of oils results in a stronger effect.
The Examiner disagrees. As discussed above, In the instant case, "consisting essentially of" is interpreted to be "comprising" language which does not exclude additional, unrecited elements such as additional essential oils.
The Applicant also argues that there is no indication or suggestion as to why spearmint oil alone should be selected to modify the teachings of Bessette.
The Examiner disagrees. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, since Bessette generally taught mint essential oils, it is prima facie obvious to select spearmint oil for incorporation into the pesticide composition based on its recognized suitability for the intended use as a mint oil in pesticide compositions, as taught by Fried.
Applicant argues at pg. 11 that broad ranges are not sufficient to establish a prima facie case of obviousness and that Fried’s teachings of a wide range of weight ratios of spearmint to rosemary oil do not support a proper showing of obviousness.
The Examiner disagrees. Fried discloses an insect repellent (abstract) with spearmint oil and rosemary oil (Col. 5, lines 10-25) and teaches that the best range of spearmint oil is 2.0–6.5 wt.% and the best range of rosemary oil is 0.4-9.0 wt.% (Col 4, lines 10-15). 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. See MPEP 2144.05(II)(A). In this case, the general weight percentages of spearmint oil and rosemary oil have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum weight ratio between spearmint oil and rosemary oil via routine experimentation. The applicant has not shown that the claimed ratio is critical, as discussed above.
Applicant argues at pg. 12-15 that independent claims 1 and 11 recite the transitional phrase “an active component consisting essentially of” and the cited references do not teach or suggest an active component that “consists essentially of” spearmint oil and rosemary oil. Applicant argues that the specification provides sufficiently clear indicia of the basic and novel characteristics of the claimed composition, namely, the smell, low linger quality, chemical scent masking, and pesticidal/repellent efficiency by combining oils of mint and rosemary alone. Applicant argues that additional essential oils would change these properties and therefore, the basic and novel properties of the claimed composition.
The Examiner disagrees and maintains that additional oils may be included in the claimed composition while still meeting the “consisting essentially of” limitation of claims 1 and 11. In the as-filed specification, paragraph [0024] states essential oil active ingredients and other ingredients, are present, paragraph [0044] states other plant based essential oils may be contained in the embodiments of compositions, and paragraph [0045] lists other suitable essential oils (other than rosemary and mint) for use in the insecticidal and repellent compositions [0045]. Therefore, other ingredients (including other essential oils) do not appear to materially affect the basic and novel characteristic(s)" of the claimed invention. See MPEP 211.03. III.
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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.
Claims 1-4, 6-9, 11-13, and 16-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent 11,793,205 in view of Bessette (US 2008/0269177 A1) and Messina (US 2014/0352630 A1).
Claims 1-4, 6-9, 11-13, and 16-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-22 of U.S. Patent 12,446,586 in view of Bessette (US 2008/0269177 A1) and Messina (US 2014/0352630 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the pest control composition except for water, a preservative, sodium lauryl sulfate and an additional surfactant.
Bessette discloses in embodiment DR-F-048 [0052] a pesticidal composition (abstract), with water (46.3 wt.%) and a surfactant (lecithin, 0.2 wt.%). Bessette teaches the pesticide being water based is a desirable characteristic for a pesticidal composition [0032] [0036]. The pesticidal compositions include additional surfactants such as sodium lauryl sulfate [0058].
Messina discloses an insect repellent composition [0002] with preservatives (0.01-5 wt.%, [0076] and [0077]) and teaches that adding a preservative protects against decay, decomposition, or spoilage [0115]. Messina discloses the addition of sodium lauryl sulfate improves the properties of the compositions or the ease of use of said compositions [0068].
It would have been prima facie obvious to include water, a preservative, sodium lauryl sulfate and an additional surfactant, within the claims because Bessette teaches a pesticidal composition with water, sodium lauryl sulfate and an additional surfactant and Messina teaches an insect repellent composition with a preservative. The ordinarily skilled artisan would be motivated to formulate the composition as taught by Bessette [0052][0058] and Messina [0076]-[0077][0115]. The ordinary skilled artisan would be motivated to include sodium lauryl sulfate to improve the properties of the composition or the ease of use of the composition as taught by Messina at [0068], to include a preservative to protects against decay, decomposition, or spoilage [0115], and would be motivated to include water because Bessette teaches the pesticide being water based is a desirable characteristic for a pesticidal composition [0032][0036].
The amounts of the components as recited in the instant claims would be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
Claims 1-4, 6-9, 11-13, and 16-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 21-40 of U.S. Patent Application No. 19/228,447 in view of Bessette (US 2008/0269177 A1) and Messina (US 2014/0352630 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the pest control composition except for water, a preservative, sodium lauryl sulfate and an additional surfactant.
Bessette discloses in embodiment DR-F-048 [0052] a pesticidal composition (abstract), with water (46.3 wt.%) and a surfactant (lecithin, 0.2 wt.%). Bessette teaches the pesticide being water based is a desirable characteristic for a pesticidal composition [0032] [0036]. The pesticidal compositions include additional surfactants such as sodium lauryl sulfate [0058].
Messina discloses an insect repellent composition [0002] with preservatives (0.01-5 wt.%, [0076] and [0077]) and teaches that adding a preservative protects against decay, decomposition, or spoilage [0115]. Messina discloses the addition of sodium lauryl sulfate improves the properties of the compositions or the ease of use of said compositions [0068].
It would have been prima facie obvious to include water, a preservative, sodium lauryl sulfate and an additional surfactant, within the copending claims because Bessette teaches a pesticidal composition with water, sodium lauryl sulfate and an additional surfactant and Messina teaches an insect repellent composition with a preservative. The ordinarily skilled artisan would be motivated to formulate the composition as taught by Bessette [0052][0058] and Messina [0076]-[0077][0115]. The ordinary skilled artisan would be motivated to include sodium lauryl sulfate to improve the properties of the composition or the ease of use of the composition as taught by Messina at [0068], to include a preservative to protects against decay, decomposition, or spoilage [0115], and would be motivated to include water because Bessette teaches the pesticide being water based is a desirable characteristic for a pesticidal composition [0032][0036].
The amounts of the components as recited in the instant claims would be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
Response to Double Patenting Arguments
Applicant's arguments filed 11/19/2025 have been fully considered but they are not persuasive.
Applicant argues at pg. 16-17 that the claims are not obvious over the cited references.
The Examiner disagrees. The claims of U.S. Patent No. 11,793,205 and 12,446,586 and U.S. Patent Application No. 19/228,447 are patentably indistinct from the instant claims.
Applicant argues that the prior art offers no teaching, suggestion, or guidance as to the specific combination of mint oil, rosemary oil, water, and sodium lauryl sulfate at the claimed weight percentages.
The Examiner disagrees. 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. See MPEP 2144.05(II)(A). In this case, pesticidal compositions with a mint oil, rosemary oil, water, and sodium lauryl sulfate are known in the art (see above); as such, it would not have been inventive for the skilled artisan to have discovered the optimum weight percentages via routine experimentation.
Applicant argues that the Office has failed to provide any reasoning as to why a skilled artisan would have selectively picked sodium lauryl sulfate out of the extensive list of surfactants provided by the references. (e.g., Bessette, para. [0058]).
The Examiner disagrees, the ordinarily skilled artisan would be motivated to formulate the composition to include sodium lauryl sulfate as taught by Bessette [0058] and would be motivated to include sodium lauryl sulfate to improve the properties of the composition or the ease of use of the composition as taught by Messina at [0068].
Applicant argues that a skilled artisan would not have been motivated to modify the compositions claimed to include water, when the conflicting claims specifically recite a "dehydrate" and the inclusion of a dehydrate teaches away from the claimed composition.
The Examiner disagrees, the ordinarily skilled artisan would be motivated to formulate the composition to include water as taught by Bessette [0052] and would be motivated to include water because Bessette teaches the pesticide being water based is a desirable characteristic for a pesticidal composition [0032] [0036]. Additionally, isopropyl myristate is the dehydrate in each set of copending or patented claims (11,793,205, claim 1; 12,446,586 claim 1; 19/228,447 claim 26) which is included in the composition with water in the instant claim set and, therefore, the inclusion of a dehydrate does not teach away from the claimed composition.
Conclusion
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612