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 .
Claim Status
Applicants’ amendments and 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claims 5 and 16 are canceled.
Claims 21 and 22 are newly added.
Claims 1-4, 6-15, and 17-22 are examined on the merits.
Claims 21-22 are found to be free of the art and are allowed.
New Rejections Necessitated by Amendments
Claim Rejections - 35 USC § 103
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.
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 1-4, 6-7, 10-12, 14-15, and 20 are further rejected under 35 U.S.C. 103 as being unpatentable over Bessette et al. (US 20070098750, Published May 3rd, 2007, and hereafter referred to as Bessette) and in further view of Nair et al. (US 20160309725. Published October 27, 2016, and hereafter referred to as Nair).
Bessette teaches a pest control composition comprising a carrier, a bioactive component with at least one plant essential oil, and a synergist chosen from a group to include isopropyl myristate (claim 1; according to the claim limitations of the instant claim 1). Bessette provides a list of essential oils to include spearmint, geranium, cinnamon, peppermint, and cedarwood oils (claim 2)Bessette describes a commercial application designed composition in which the active ingredient, the essential oil, is present in a concentration between 0.0001-10% (paragraph 0068). Furthermore, Bessette explains that for liquid pesticides the carrier is normally water or a petroleum-based product (paragraph 0008). The same paragraph (paragraph 0008) further outlines the use of solvents and surfactants with carriers in pesticide compositions. The specification of Bessette further makes mention of sodium lauryl sulfate as a surfactant (paragraph 0056). Not only does Bessette explain the importance of isopropyl myristate as a synergist, but it also describes the use of it as a solvent (0024 and 0030 and 0063-0064). Bessette provides for diluting further with solvent oils for field strength solution (0060), which motivates increasing solvent amount. Inert carrier is from 5-99.9% (0061). Furthermore, Bessette teaches the concentration of isopropyl myristate at a ratio to active ingredient (paragraph 0034). The ratios range from 1:100 up to 100:1 isopropyl myristate to active ingredient (paragraph 0034). Bessette provides an example formulation utilizing isopropyl alcohol (a solvent) at a 4% concentration(paragraph 0079). The specification describes the different pesticide uses of many different hydrocarbons, to include non-aromatic hydrocarbons (paragraph 0061). Bessette outlines the addition of propellants, providing examples to include liquid petroleum gas, propane, dimethyl ether, butane, carbon dioxide (paragraph 0061). Lastly, Bessette’s example 1 described in paragraph 0076 outlines a solution in which the percentage of propellant is 3.5%.
Bessette fails to teach the concentration of surfactant. Furthermore, Bessette fails to teach the ratios of geranium oil to mint oil.
Nair teaches a geranium oil pesticide composition with at least one additional essential oil (claim 1). Claim 2 further provides a list of additional oils to be selected from: peppermint, eucalyptus, clove, cinnamon, lavender, neem, orange, cedarwood, and lemon grass oil. Claim 5 also outlines the addition of a surface-active agent aka surfactant, and provides sodium lauryl sulfate as one of the 2 options for the agent. Formulation F of Nair, outlines a composition of geranium oil, mint oil (specifically peppermint oil), a surfactant, and water(paragraph 0053). The percentages of each are as follows: geranium = 2.1%; peppermint oil =2.9%; surfactant = 2%; water = rest = 93%. This formulation demonstrates a higher percentage of mint to geranium, specifically at a ratio of approximately 0.72:1 geranium to mint oil.
One of ordinary skill in the art at the time of filing would have combined a water carrier based insecticidal composition comprising a mixture of any variation of oils to include geranium, cinnamon, cedarwood, spearmint, and peppermint, as described in Bessette which is ready for improvement with the known technique of making the solution with the ratios of Nair which describes a ratio of geranium to mint oil that lies within or is merely near the claimed ratios to include a ratio in which the mint oil is higher than the geranium. The MPEP 2144.05 (1) states that not only does a prima facia case exist when ranges overlap or lie inside ranges of art, but 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. Thus, it would’ve been obviousness to make the concentration of essential oils between 0.001 and 10% which falls within the range of 0.0001 up to 10% provided by Bessette. Further in regards to claim 20 which provides the concentrations of water, solvent, surfactant, and propellent, Bessette and Nair teach concentrations of all these components that lie within the ranges of the claimed invention making it of obviousness to use those ranges. Thus, it would’ve been obvious to someone skilled in the art at the time of filing to create the composition outlined in the claims of the present application.
Claims 8-9, 13, and 17-19 are further rejected under 35 U.S.C. 103 as being unpatentable over Bessette et al. (US 20070098750, Published May 3rd, 2007, and hereafter referred to as Bessette) and in further view of Nair et al. (US 20160309725. Published October 27, 2016, and hereafter referred to as Nair) and in further view of Wenquan et al. (Wenquan Qin, Hongpeng Xiong, Yuzhen Wen, Xiujun Wen, Hui Wang, Yihan Fang, Tao Ma, Zhaohui Sun, Xiaoyang Chen, Cai Wang, Laboratory and field evaluation of the repellency of six preservatives to red imported fire ants (Hymenoptera: Formicidae), Journal of Asia-Pacific Entomology, Volume 20, Issue 2, 2017, Pages 535-540, ISSN 1226-8615, https://doi.org/10.1016/j.aspen.2017.03.011. And hereafter Wenquan).
As mentioned above, Bessette and Nair outline the use of spearmint oil, solvent (specifically isopropyl myristate), carrier, surfactant, and propellent in the percentages described within the current application, to include instant claims 8, 13, and 17-18.
Furthermore, Bessette outlines the addition of propellants, providing examples to include liquid petroleum gas, propane, dimethyl ether, butane, carbon dioxide (paragraph 0061; according to the claim limitations of the instant claims 9 and 19).
Both Bessette and Nair fail to teach the addition of a preservative as in instant claims 8 and 13.
Wenquan studies the effectiveness of the repellency of six preservatives on red imported fire ants (abstract). As Wenquan outlines many of these preservatives have been used in pesticides, specifically pesticidal bait, since the 1970s (introduction). Wanquan references a 1973 article stating that sodium benzoate at 2% could successfully attract ants and stop the growth of mold (introduction). Lastly, Wanquan’s study utilizes the 6 preservatives at concentrations of 2000, 5000, and 1000 ppm (four-choice test paragraph) which is equal to 0.2%, 0.5 % and 1% concentration. All concentrations of which showed to not decrease the effectiveness of the bait, expect in the instance of sodium dehydroacetate (Figure 2).
One skilled in the art before the effective filing date of the claimed invention would modify a pesticide composition comprising geranium oil, spearmint oil, a third oil, solvent (specifically isopropyl myristate), carrier, surfactant, and propellent as outlined by Bessette and Nair by the addition of a preservative such as sodium benzoate as outline by Wanquan under TSM, see MPEP 2143(G). As outlined by Wanquan, adding a preservative has shown to prevent the growth of unwanted organisms such as mold and also does not decrease the pest attraction to the composition. As mentioned previously, the MPEP The MPEP 2144.05 (1) states that when ranges lie within or overlap each other, a prima facia case of obviousness is present. Thus it would be of obviousness to add a preservative at a concentration of 0.1-0.5% as in the instant claims 8 and 13 as Wanquan describes the effectiveness of concentrations of 0.2 and 0.5%.
Non-Statutory Type 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.
Claim 1-4, 10-12, and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7-8, 10-12, and 14 of U.S. Patent Application No. 17/989,516 and in further view of Nair et al. (US 20160309725. Published October 27, 2016, and hereafter referred to as Nair). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
US 17989516 claims a pest control composition comprising an active component consisting essentially of between about 0.001-5% spearmint oil, between about 0.01-5% geranium oil, and between about 0-5% of a third oil selected from the group consisting of cinnamon oil, cedarwood oil, and mixtures thereof (claim 1; according to the claim limitations of the instant claims 1 and 11). Furthermore, US 17989516 claims the composition to comprise a carrier, a solvent, and a dehydrate (claim 1; according to the claim limitations of the instant claims 1 and 11). Claims 3 and 14 of US 17989516 claims a ration of geranium to spearmint oil from about 0.5:1 to about 20:1 (according to the claim limitations of the instant claims 2-4, 10, and 14). Claim 8 of US 17989516 claims the dehydrate concentrations to be between about 8-15% by weight and claim 7 of US 17989516 claims the dehydrate to be isopropyl myristate (according to the claim limitations of the instant claims 1 and 11). Claim 10 of US 17989516 claims the spearmint oil is in a higher weight percentage concentrations than the geranium oil (according to the claim limitations of the instant claim 10). Claim 11 of US 17989516 claims a pest control composition comprising an active component consisting essentially of between about 0.001-5% of at least one mint oil, between about 0.01-5% geranium oil, and between about 0-5% of a third oil selected from the group consisting of cinnamon oil, cedarwood oil, and mixtures thereof with the addition of a carrier, and a dehydrate (according to the claim limitations of the instant claim 11). Claim 12 of US 17989516 further limits claim 11 by claiming the mint oil is sectioned from the group consisting of spearmint oil, peppermint oil, cornmint oil, or mixtures thereof (according to the claim limitations of the instant claim 12).
US 17989516 fails to claim the addition of a surfactant at the desired concentration as in instant claim 1. Furthermore, US 17989516 fails to claim the exact ratios of instant claims 3 and 4. Lastly, US 17989516 fails to claim the exact concentrations of geranium oil, spearmint oil, third oil, and isopropyl myristate as the instant claims 1 and 11.
Nair teaches a geranium oil pesticide composition with at least one additional essential oil (claim 1). Claim 2 further provides a list of additional oils to be selected from: peppermint, eucalyptus, clove, cinnamon, lavender, neem, orange, cedarwood, and lemon grass oil. Claim 5 also outlines the addition of a surface-active agent aka surfactant, and provides sodium lauryl sulfate as one of the 2 options for the agent. Formulation F of Nair, outlines a composition of geranium oil, mint oil (specifically peppermint oil), a surfactant, and water(paragraph 0053). The percentages of each are as follows: geranium = 2.1%; peppermint oil =2.9%; surfactant = 2%; water = rest = 93%. This formulation demonstrates a higher percentage of mint to geranium, specifically at a ratio of approximately 0.72:1 geranium to mint oil.
One skilled in the art before the effective filing date of the claimed invention would claim a pest control composition comprising spearmint oil, geranium oil, a carrier, isopropyl myristate, and a third oil to be selected from a group considering of cinnamon oil, cedarwood oil, and mixtures thereof as claimed by US 17989516 with the ready for improvement with the known technique of adding a surfactant as outlined by Nair. Adding the forementioned component to pest control composition comprising spearmint oil, geranium oil, a carrier, isopropyl myristate, and a third oil as claimed by instant claims 1 and 11 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan. Furthermore, US 17989516 claims concentrations of geranium oil, spearmint oil, third oil, and isopropyl myristate the overlap and lie within the instant claims 1 and 11, thus making the concentrations obvious to claim. Lastly, US 17989516 claims a ratio of geranium oil to spearmint oil that overlaps and lies within the ratios claimed by instant claims 3 and 4, thus making them of obviousness to claim. Due to the nearly identical invention of the claims and the obviousness between the claims, the present application and US 17989516 are not distinct from one another, thus are rejected on the grounds of nonstatutory double patenting.
Claims 1-4, 6-15, and 17-20 are further provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6-9, 11-14, 16-20, and 23 of U.S. Patent Application No. 17/989,560 and in further view of Bessette et al. (US 20070098750, Published May 3rd, 2007, and hereafter referred to as Bessette). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
US 17989560 claims a pest composition of spearmint oil with other essential oils (specifically rosemary oil), a carrier, a solvent, and a surfactant (Claim 1; according to the claim limitations of the instant claim 1). Claim 1 of US 17989560 further claims the concentration of spearmint oil to be between about 0.1-15% and claim 3 of US 17989560 further narrows this range to claim a concentration between about 1.5-7.5% (according to the claim limitations of the instant claim 1). Claims 1, 11, and 20 of US 17989560 claim the composition to comprise water at a concentration of about 45-75% (according to the claim limitation of the instant claim 1, 6, 8, 11, 13, 15, and 20). Claim 1 of US 17989560 further claims the addition of a solvent and claims 6 and 16 of US 17989560 claims the solvent is selected from the group consisting of ethyl lactate, butyl lactate, isopropyl alcohol, isopropyl myristate (according to the claim limitations of the instant claims 1, 11 and 20). Claim 1 of US 17989560 further claims the composition to comprise a surfactant, specifically sodium lauryl sulfate (according to the claim limitations of the instant claims 1, 7, 11, 17, and 20). Claims 1 and 14 of US 17989560 claims the ratio of spearmint oil to rosemary oil to be from about 1.5:1 to about 3:1 and claim 4 of US 17989560 further narrows the range claiming the ratio to be from about 1.5:1 to about 2.2:1 (according to the claim limitations of the instant claims 2-4, 10, 14, and 20). Claim 1 of US 17989560 further claims the concentration of the second oil, specifically rosemary oil, to be between about 0.05-5% and claim 3 of US 17989560 further narrows this range to be between about 0.8-4.2% (according to the claim limitations of the instant claims 1, 11, and 20). Claims 7 and 17 of US 17989560 claims the surfactant to be selected from a group as follows: lecithin, sodium lauryl sulfate, sodium oleate, potassium oleate, sodium ricinolate, Quillaja saponin, polyglyceryl oleate, glyceryl monooleate (according to the claim limitations of the instant claims 7 and 17). Claims 8 and 13 of US 17989560 claims the concentration of sodium lauryl sulfate to be between about 0.1-3.0%, the concentration of the surfactant to be between about 0.1-4.0%, the concentration of solvent to be between about 1-44%, and the composition to further comprise a preservative at a concentration between about 0.1-0.5% and a propellant at a concentration between about 1-5% (according to the claim limitations of the instant claims 1, 8, 11, 13, and 20). Claim 23 of US 17989560 further narrows the concentration of sodium lauryl sulfate to be between about 1.25-3.7% (according to the claim limitations of the instant claims 1, 11, and 20). US 17989560 provides a list of propellants in claims 9 and 19 as follows: compressed gas propellants, liquified gas propellants, saturated hydrocarbons, mixtures of liquified gas and compressed gas, methane, ethane, propane, pentane, isobutene, n- butane, isobutane, dimethyl ether, 1, 1-difluoroethane, 1,1,1,2-tetrafluoroethane, carbon dioxide, nitrogen, air (according to the claim limitations of the instant claims 9 and 19). Claim 11 of US 17989560 claims the pesticide composition to comprise between about 0.05-5% of rosemary oil, between about 0.1-15% of a least one mint oil, between about 45-75% water, a solvent, and a surfactant (specifically sodium lauryl sulfate) (according to the claim limitations of the instant claim 11). Claim 12 of US 17989560 further claims the mint oil of claim 11 to be selected from a group consisting of spearmint oil, peppermint oil, cornmint oil, and combinations thereof while claim 18 of US 17989560 further narrows this to the mint oil being spearmint oil (according to the claim limitations of the instant claims 12 and 18). Claim 20 of US 17989560, claims the pest control composition to comprising between 0.05-5% of rosemary oil, between about 0-3% sodium lauryl sulfate, between about 45-75% water, between about 3-25 % of at least one solvent, between about 0.1-4% of at least one surfactant, between about 0.1-0.5% of at least one preservative, and between about 1.5-7.5% mint oil selected (according to the claim limitations of the instant claims 1, 11, and 20). Lastly, claim 20 of US 17989560 claims the ratio of the mint oil to rosemary oil is from about 1.5:1 to about 3:1 (according to the claim limitations of the instant claims 2-4, 10, 14, and 20).
US 17989560 fails to claim the exact weight percentages as claims 1, 8, 11, 13, and 20 of the instant application. Furthermore, US 17989560 fails to claim the exact ratio ranges of instant claims 1-4, 14, and 20. US 17989560 fails to explicitly claim the mint oil is in a higher weight percentage concentration than the second oil as in instant claim 10. US 17989560 fails to claim the addition of geranium, cinnamon, and cedarwood oil with spearmint oil, however, the specification, specifically paragraph 0045, of US 17989560 describes the use of other oils to include the geranium, cedarwood, and cinnamon.
Bessette provides a list of pesticidal effective essential oils to include spearmint, cinnamon, cedarwood, geranium, and rosemary oils (paragraphs 0051 and 0052). The same paragraphs state that one or more of the oils can be used in mixtures with each other without limitation.
One skilled in the art before the effective filing date of the claimed invention would claim a pest control composition comprising spearmint oil, a carrier, a solvent, and a surfactant as claimed by US 17989560 with the ready for improvement with the known technique of adding additional pesticidal essential oils as outlined by Bessette. Adding the forementioned components to a pest control composition comprising spearmint oil, a carrier, a solvent, and a surfactant as claimed by instant claims 1-4, 6-15, and 17-20 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan. The MPEP 2144.05 (1) states that not only does a prima facia case exist when ranges overlap or lie inside ranges of art, but similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but also when they are merely close. Thus it would be obvious for someone skilled in the arts at the time of filing to make the present application in the weight percentages disclosed in claims 1, 8, 11, 13, and 20 of the present application as US 17989560 claims percentages that are encompassing, overlapping, and are merely close to those disclosed. Furthermore, the present application provides weight ratios in claims 2-4 and 20 that are also encompassing, overlapping, and are merely close to those disclosed in US 17989560, thus making it of obviousness to use those ratios. Due to the nearly identical invention of the claims and the obviousness between the claims, the present application and US 17989560 are not distinct from one another, thus are rejected on the grounds of nonstatutory double patenting.
Claims 1-4, and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, and 7-12 of U.S. Patent No. US11793205B2 in view of Nair et al. (US 20160309725. Published October 27, 2016, and hereafter referred to as Nair). Although the claims at issue are not identical, they are not patentably distinct from each other.
US11793205B2 claims a pest control composition, the composition comprising an active component comprising a solvent, a carrier, between about 0.1-11% of a mint oil selected from the group consisting of spearmint oil, peppermint oil, and cornmint in addition to between about 0.05-5% rosemary oil (claim 1; according to the claim limitations of the instant claims 1 and 11). Claim 1 of US11793205B2 further claims the addition of a dehydrate, specifically isopropyl myristate (according to the claim limitations of the instant claims 1 and 11). Claim 1 of US11793205B2 further claims the ratio of mint to rosemary oil is from about 1.5:1 to about 2.2:1 (according to the claim limitations of the instant claims 2-4). Claim 4 of US11793205B2 claims the concentration of dehydrate to be about 1-15 wt % and further claims the addition of a propellant at a concentration of about 1-5 wt % (according to the claim limitations of the instant claim 1). Claim 7 of US11793205B2 claims the mint oil is spearmint oil, claim 8 of US11793205B2 claims the mint oil is peppermint oil, and claim 9 of US11793205B2 claims the mint oil is cornmint oil (according to the claim limitations of the instant claims 1, 11, and 12). Furthermore, US11793205B2 claims concentrations of mint oil between about 0.5-7 wt %, between about 1-2 wt %, and at about 1.5% (claims 10-12 respectively; according to the claim limitations of the instant claims 1 and 11).
US11793205B2 fails to claim the addition of geranium oil, a 3rd oil (specifically cinnamon oil, cedarwood oil, and mixtures of), and fails to claim the addition of a surfactant at the desired concentration. US11793205B2 further fails to claim the exact concentration ranges and ratio ranges of the instant claims 1-4, and 11.
Nair teaches a geranium oil pesticide composition with at least one additional essential oil (claim 1). Claim 2 further provides a list of additional oils to be selected from: peppermint, eucalyptus, clove, cinnamon, lavender, neem, orange, cedarwood, and lemon grass oil. Claim 5 also outlines the addition of a surface-active agent aka surfactant, and provides sodium lauryl sulfate as one of the 2 options for the agent. Formulation F of Nair, outlines a composition of geranium oil, mint oil (specifically peppermint oil), a surfactant, and water(paragraph 0053). The percentages of each are as follows: geranium = 2.1%; peppermint oil =2.9%; surfactant = 2%; water = rest = 93%. This formulation demonstrates a higher percentage of mint to geranium, specifically at a ratio of approximately 0.72:1 geranium to mint oil.
One skilled in the art before the effective filing date of the claimed invention would claim a pest control composition comprising a solvent, carrier, between about 0.1-11% of a mint oil selected from the group consisting of spearmint oil, peppermint oil, and cornmint as claimed by US11793205B2 with the ready for improvement with the known technique of adding additional extract oils, specifically geranium oil and cinnamon and/or cedarwood oil and adding a surfactant at a concentration of 2% as outlined by Nair. Adding the forementioned components to pest control composition comprising a solvent, carrier, between about 0.1-11% of a mint oil selected from the group consisting of spearmint oil, peppermint oil, and cornmint as claimed by instant claims 1-4 and 11-12 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan. Furthermore, US11793205B2 and Nair claim concentration and ratio ranges that overlap and lie within the ranges of the instant application, thus making it of obviousness to claim.
Claim 1, and 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8, 11, 17 and 21 of U.S. Patent No. 12446586B2 in view of Nair et al. (US 20160309725. Published October 27, 2016, and hereafter referred to as Nair).
US12446586B2 claims a pest control composition comprising an active ingredient, a carrier or solvent, and a dehydrate wherein the dehydrate is isopropyl myristate (claims 1, 11, and 21). Claims 1, 11, and 21 further claim the mint oil to be in a concentration of about 0.1-11%. Claim 6 of US12446586B2 further claims the concentration of the dehydrate, isopropyl myristate to be about 1-15 wt %. Claim 6 of US18/239,560 further claims the concentration of solvent to be about 1-20 wt % and claims 8 and 17 of US12446586B2 claims the solvent to be selected from a group consisting of ethyl lactate, butyl lactate, and isopropyl alcohol.
US12446586B2 fails to claim the addition of a surfactant, to include the concentration of surfactant. Furthermore, fails to claim the addition of geranium oil, a 3rd oil (specifically cinnamon oil, cedarwood oil, and mixtures of) to include the exact concentration ranges.
As mentioned above, Nair teaches a geranium oil pesticide composition with at least one additional essential oil (claim 1). Claim 2 further provides a list of additional oils to be selected from: peppermint, eucalyptus, clove, cinnamon, lavender, neem, orange, cedarwood, and lemon grass oil. Claim 5 also outlines the addition of a surface-active agent aka surfactant, and provides sodium lauryl sulfate as one of the 2 options for the agent. Formulation F of Nair, outlines a composition of geranium oil, mint oil (specifically peppermint oil), a surfactant, and water(paragraph 0053). The percentages of each are as follows: geranium = 2.1%; peppermint oil =2.9%; surfactant = 2%; water = rest = 93%. This formulation demonstrates a higher percentage of mint to geranium, specifically at a ratio of approximately 0.72:1 geranium to mint oil.
One skilled in the art before the effective filing date of the claimed invention would claim a pest control composition comprising a solvent, carrier, between about 0.1-11% of a mint oil selected from the group consisting of spearmint oil, peppermint oil, and cornmint as claimed by US12446586B2 with the ready for improvement with the known technique of adding additional extract oils, specifically geranium oil and cinnamon and/or cedarwood oil and adding a surfactant at a concentration of 2% as outlined by Nair. Adding the forementioned components to pest control composition comprising a solvent, carrier, between about 0.1-11% of a mint oil selected from the group consisting of spearmint oil, peppermint oil, and cornmint as claimed by instant claims 1 and 11-12 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan. Furthermore, US12446586B2 and Nair claim concentration and ratio ranges that overlap and lie within the ranges of the instant application, thus making it of obviousness to claim.
Claims 1, 6-7, 11-12, and 15, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 8, 18, of U.S. Patent No. 12310372B1 in further in view of Bessette et al. (US 20070098750, Published May 3rd, 2007, and hereafter referred to as Bessette). The following evidentiary reference is necessary as well: Cassiday (Cassiday, L. (2014, April). Emulsions: making oil and water mix. Emulsions: Making oil and water mix. https://www.aocs.org/stay-informed/inform-magazine/featured-articles/emulsions-making-oil-and-water-mix-april-2014?SSO=True#:~:text=Surfactants%20adsorb%20at%20the%20interface,from%20coming%20together%2C%20or%20coalescing.)
Evidenced by Cassiday, an emulsifier is a type of surfactant (paragraph Sidebar: What’s the difference).
The title 12310372B1 is “Water-Based Insect Repellent Composition” thus describing the main substance and carrier as water which is further outlined in claim 18. 12310372B1 outlines the use of mint, specifically peppermint oil and a 2nd oil with geranium oil.
12310372B1 fails to explicitly teach the addition of spearmint, cinnamon and cedarwood oil. Claim 3 of US 12310372B1 teaches the peppermint oil to be mentha arvenis which is a synonym of cornmint per the specification (paragraph 0024). The claims of 12310372B1 fail to list the use of a surfactant, but instead lists an emulsifier. The emulsifier list of claim 5 of 12310372B1 includes Quillaja saponin and a polyglycerol oleate. 12310372B1 fails to claim the addition of a solvents and propellants all together but does generally claim carriers. The concentrations of peppermint oil, geranium oil, and clove oil listed in 12310372B1 are not identical to the present application and are as follows: 3.0-6.0%, 1.0-5.0%, and 0.1-1.0% respectively. Claim 2 of 12310372B1 further describes a concentration of active component to be 5-12%. Claim 8 of 12310372B1 claims the concentration of emulsifier to be about 0.1-5 wt %.
Bessette provides a list of pesticidal effective essential oils to include spearmint, cinnamon, peppermint, cedarwood, clove, geranium, and rosemary oils (paragraphs 0051 and 0052). The same paragraphs states that one or more of the oils can be used in mixtures with each other without limitation. Solvents are commonly added to chemical compositions. Bessette teaches the use of a solvent, specifically and preferably isopropyl myristate, within a pesticide composition (paragraph 0025). Bessette provides an example formulation utilizing isopropyl alcohol (a solvent) at a 4% concentration(paragraph 0079).
One of ordinary skill in the arts at the time of filing would make various essential oil-based compositions comprising spearmint oil, geranium oil, peppermint oil, cedarwood oil, cinnamon oil, rosemary oil, or any combination thereof as outlined by Bessette. Furthermore, it would be of obviousness to make a composition of a mint oil and geranium oil with a 3rd oil demonstrated by 12310372B1. Furthermore, 12310372B1 teaches the use of peppermint and cornmint oil as described above, making it of obviousness to use them in a pesticidal composition. As seen in 12310372B1, it would be obviousness to make a water based pesticidal composition in which the carrier is water. As described above, “comprising of” is an opened ended term thus suggesting additional materials can be added to either application. Bessette teaches the addition of a solvent and isopropyl myristate thus it would be obviousness to one skilled in the art to add isopropyl myristate to a pesticidal composition such as the present application. As evidenced by Cassiday, an emulsifier is a type of surfactant, thus in light of 12310372B1 it would be obvious to add a surfactant, specifically Quillaja saponin and polyglyceryl oleate to the claimed pesticidal composition. As mentioned above, The MPEP 2144.05 (1) states that not only does a prima facia case exist when ranges overlap or lie inside ranges of art, but 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. Thus, it would be obviousness to make a composition of oils at a concentration from 0.001 up to 10% as 12310372B1 and Bessette teach percentages that are encompassing, lie within, and are merely close. Due to the nearly identical invention of the claims and the obviousness between the claims, the present application and 12310372B1 are not distinct from one another, thus are rejected on the grounds of nonstatutory double patenting.
Response to Applicant’s Arguments
Applicant’s arguments filed on 11/19/2025 have been considered by the examiner.
In regards to the Double Patenting rejection, Applicant argues that in the office has failed to articulate any reasoning as to why a skilled artisan would have replaced rosemary oil with geranium and add a third oil in copending patent applications 17/989,560 and 18/239,560 (now published as US12446586B2), and patent 11,793,205. Applicant then argues against the rejection over application 18/121,471 (now published as US12310372B1) claiming a similar argument that one would not have exchange one of the oils from 18/121,471 to create the composition of the instant application.
In regards to copending application 17/989,560 and patents US12446586B2 and 11,793,205, it is noted that these rejections include a secondary reference (Bessette or Nair). Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, both Nair and Bessette provide reasoning to add or exchange certain components, such as known pesticide actives in the art. Applicant has failed to provide reasoning as to why these patent applications and patents should not be combined with the listed second references.
In regards to 18/121,471 (now published as US12310372B1, it is noted that the rejection includes a secondary reference, Bessette. Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, Bessette teaches the motivation to add or exchange certain components, such as known pesticide actives in the art. Applicant has failed to provide reasoning as to why this patent should not be combined with Bessette.
Lastly, in regards to the remaining double patenting rejections, Applicant has failed to provide any reasoning as to why they should be withdrawn.
In summary, the examiner is not persuaded by Applicant’s argument and the rejections of record are updated for amendments and publications and maintained.
In regards to the 35 U.S.C. 103 rejection, Applicant first again argues that the transitional phrase “consisting essentially of” is closed terminology and not equivalent to “comprising”. Applicant supports this argument by referring to the instant specification claiming that the specification outlines basic and novel characteristics, specifically the insect killing/repelling efficacies and pleasant smell. Next Applicant argues that there is no reason to combine Bessette and Nair as Bessette is directed towards control of pests while Nair is directed towards control of bedbugs. Applicant’s third argument is the ranges of Bessette are too broad to establish primia facie obviousness. Additionally, Applicant argues the solvent range is not taught or suggested by Bessette, Nair, or Wenquan. Applicant supports this argument by referencing other example compositions within Bessette and that Nair does not teach any of the claimed solvents.
In regards to Applicant’s argument that the instant specification demonstrates basic and novel characteristics that are materially different from the composition of Bessette. Applicant is again reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, Applicant has provided no evidence that the additional elements of Bessette would not provide the same effectiveness or enjoyable smell. The MPEP 2111.03(III) states “applicant has the burden of showing that the introduction of additional steps or specific components which would materially change the characteristics of the claimed invention.” In summary, Applicants have failed to properly demonstrate how and which additional components materially affect the basic and novel characteristics of the claimed composition.
In regards to Applicant’s argument that there would be no motivation to combine Bessette and Nair, it is first noted that the composition of Bessette is used for households and pet bedding (paragraph 0058) and that Bessette is not limited to a specific pest, teaching the composition is useable on ornamentals, termites, mosquitoes, fire ants, head lice, dust mites, etc. (paragraph 0058). Further, it is noted that Nair teaches the composition may be applied in areas that are infested with pests (paragraph 0055) and is effective against a wide range of chewing and sucking insects (paragraph 0056). Therefore, Applicant’s claim that Nair is not directed towards pests or insects is deemed invalid.
In regards to Applicant’s argument that Bessette teaches too broad of a range, Applicant is again reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, Applicant is again reminded the MPEP 2111.03(III) states “applicant has the burden of showing that the introduction of additional steps or specific components which would materially change the characteristics of the claimed invention. In the instant case, Applicant has failed to demonstrate how the concentration ranges would not have the same characteristics. Further, the MPEP 2144.05 (1) states that a prima facia case exist when ranges overlap or lie inside ranges of art which is the case with Bessette. Further it is noted that the 35 U.S.C. 103 rejection is over Bessette in view of Nair and Nair teaches a sample formulation comprising geranium = 2.1%; peppermint oil =2.9%; surfactant = 2% (paragraph 0053) which lie within the claimed ranges. Lastly, it is noted that independent instant claim 1, does not require a specific amount of carrier.
In regards to Applicant’s argument that the solvent range is not taught or suggested, it is noted that Bessette not only teaches a concentration of isopropyl myristate at a ratio of 1:100 up to 100:1 to the active ingredient (paragraph 0034). Bessette then teaches the active ingredient, the essential oil, is present in a concentration between 0.0001-10% (paragraph 0068). Therefore, Bessette teaches a concentration of isopropyl myristate of 0.01 up to 100%, thus teaching the limitations of the instant claims. Applicant is reminded, A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[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”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
In summary, the examiner is not persuaded by Applicant’s arguments and the rejections are updated to account for claim amendments.
Conclusion
Applicant's amendment necessitated the new 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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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./ Examiner, Art Unit 1611