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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/27/2026 has been entered.
Claim Status
Applicants’ amendments and arguments filed 06/18/2026 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 1, 11, and 20 are amended.
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 § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, claim 7 fails to further limit claim 1 from which it depends. Claim 1 recites “at least two surfactants selected from the group consisting of lecithin, sodium lauryl sulfate, sodium oleate, potassium oleate, sodium ricinolate, Quillaja saponin, polyglyceryl oleate, glyceryl monooleate, and any combinations thereof” which encompasses the limitations of the instant claim 7. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, claim 17 fails to further limit claim 11 from which it depends. Claim 11 recites “at least two surfactants selected from the group consisting of lecithin, sodium lauryl sulfate, sodium oleate, potassium oleate, sodium ricinolate, Quillaja saponin, polyglyceryl oleate, glyceryl monooleate, and any combinations thereof” which encompasses the limitations of the instant claim 17. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Bessette et al. (US20080187607A1, published 08/07/2008, hereafter Bessette2).
Bessette2 claims systems, methods, apparatuses for epa exempt pesticidal compositions (title; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 claims the pesticidal composition comprising a pesticidally acceptable carrier and at least one pesticidally active ingredient (claim 1; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 claims the pesticidally active ingredient is selected from at least one member of the group to include: cedarwood, cinnamon, geraniol, geranium, mint, peppermint and spearmint (claims 2 and 4; according to the claim limitations of the instant claims 1, 11-12, 14, 18, and 20). Bessette2 further claims the pesticidally acceptable carrier is selected from at least one member of the group including sodium lauryl sulfate (SLS) and lecithin (claim 3; according to claim limitations of the instant claims 1, 7, 11, 17, and 20). Further, Bessette2 teaches multiple example formulation utilizing lecithin and sodium lauryl sulfate (SLS) together ([0077]-[0084], [0095]-[0127], [0137]-[0155], [0164]-[0185], [0253]-[0260]; according to the claim limitations of the instant claims 1, 7, 11, 17, and 20). Exemplary Formulation 29 of Bessette2 teaches a composition comprising: 5% wintergreen oil, 0.5% eugenol, 0.5% lecithin, 0.5% sodium laurel sulfate, and 20.0% butyl lactate ([0253]-[0260]; according to the claim limitations of the instant claims 1-4, 7, 10-11, 14, 17, and 20). Claim 25 of Bessette2 claims the pesticidal composition comprises cinnamon, geraniol, lecithin, peppermint, sodium lauryl sulfate (according to the claim limitations of the instant claims 1-4, 7, 11-12, 17, and 20). Bessette2 teaches the pesticide composition comprises an active ingredient present in an amount of about 0.1-50% ([0024]; according to the claim limitations of the instant claims 1-4, 11, 14, and 20). Further, Bessette2 teaches the composition may contain one of more of the following, without limitation: 0.1% to about 15% by weight/mass/volume of an active ingredient having pesticide properties, from about 0.2% to about 10% by weight/mass/volume of an agent for reducing the vapor pressure of the active ingredient (a “fixative”), from about 1% to about 15% by weight/mass/volume of an emulsifier (to prevent separation of solutions), from about 0.05% to about 0.2% by weight/mass/volume of suitable additives, such as an anti-microbial preservative and, as the carrier, water or another solvent liquid in which the active ingredient may be poorly soluble, have low solubility or be insoluble ([0044]; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 provides two formulation examples with concentrations of geraniol that are 0.5 to 5.0% ([0310-0324]; according to the instant claims 1-4, 10-11, 14, and 20). Bessette2 teaches multiple formulations with peppermint oil from 0.09% to 9% ([0242]-[0247], [0261]-[0269], [0281]-[0317], [0333]-[0337], [0347]-[0351]; according to the claim limitations of the instant claims 1-4, 10-11, 14, and 20). Bessette2 teaches multiple examples with a concentration of cinnamon oil from 1-7% ([0221]-[0226], [0234]-[0241], [0276]-[0280], [0393]-[0401]; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 teaches the solvent to be butyl lactate and/or isopropyl myristate ([0047], [0059], [0079], [0117], [0128]; according to the claim limitations of the instant claims 1, 11, and 20). Further, Bessette2 teaches one example utilizing butyl lactate at a concentration of 20% ([0253]-[0260]; according to the claim limitations of the instant claims 1, 11, and 20). Further, Bessette2 teaches multiple examples utilizing isopropyl alcohol, specifically at concentrations of 15% ([0047]-[0055], [0214]-[0220], [0227]-[0233]; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 teaches multiple examples comprising isopropyl myristate, specifically at a concentration of 25% ([0221]-[0226], [0234]-[0241], [0403]-[0413]; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 also claims isopropyl myristate is part of the pesticidal composition (claims 3, 8-11, and 14; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 teaches water as the carrier ([0044]) and has provides a sample formulation with 46.5% of water ([0302]-[0309]; according to the claim limitations of the instant claims 1, 6, 8, 11, 13, 15, and 20).
Bessette2 does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Bessette2 with a reasonable expectation of success to obtain the composition of the instant claims.
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. A person of ordinary skill in the art who is not an automaton is capable of producing the composition of the instant claims with predictable results.
Claims 8-9, 13, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bessette et al. (US20080187607A1, published 08/07/2008, hereafter Bessette2) in view of Bessette et al. (US 20070098750, Published May 3rd, 2007, and hereafter referred to as Bessette).
As outlined above, Bessette2 claims a pesticide composition comprising a mint oil to include spearmint oil, geraniol oil, cinnamon oil, cedarwood oil, a solvent to include isopropyl myristate, and a carrier. Bessette2 further claims the pesticide composition comprises: geraniol, peppermint, and a propellant (claim 29). Further, Bessette2 teaches the composition further comprises from about 0.05 to about 0.2% by weight of a suitable additive such as an anti-microbial preservative ([0044]).
Bessette2 fails to claim the concentration of propellant as in instant claims 8, 13, and 20. Further, Bessette2 fails to claim the propellant is selected from the group consisting of compressed gas propellants, liquified gas propellants, saturated hydrocarbons, mixtures of liquified 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, and any combinations thereof as in instant claims 9 and 19-20. Lastly, Bessette2 fails to claim the concentration of solvent as in instant claim 20.
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%.
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim a pest control composition comprising a mint oil, geranium oil, cinnamon and/or cedarwood oil, a solvent, a carrier, surfactants, preservatives, and propellants as outlined by Bessette2 with the ready for improvement with the known technique of adjusting the concentration of propellant to 3.5% and utilizing include liquid petroleum gas, propane, dimethyl ether, butane, or carbon dioxide the propellant as outlined by Bessette. Adding the forementioned concentration and components to pest control composition as claimed by instant claims 8-9, 13, and 19-20 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. Further, it would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a pest control composition comprising a mint oil, geranium oil, cinnamon and/or cedarwood oil, a solvent, a carrier, surfactants, preservatives, and propellants as outlined by Bessette2 with the ready for improvement with the known technique of adjusting the concentration of the solvent as outlined by Bessette. Adjusting the forementioned components of pest control composition comprising a mint oil, geranium oil, cinnamon and/or cedarwood oil, a solvent, a carrier, surfactants, preservatives, and propellants as outlined by Bessette2 as claimed by instant claim 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.
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, 6-15, and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7-14, 16-20 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 1-4, 10-12, 14, 18, and 20). Furthermore, US 17989516 claims the composition to comprise a carrier, a solvent, about 0-5% of a propellent, and about 8-15% of a dehydrate (claim 1; according to the claim limitations of the instant claims 1, 8, 11, 13, and 20). Claim 3 of US 17989516 claims the spearmint oil is between about 0.5-2%, the geranium oil is between about 0.5-2%, and the third oil is between about 0.05-2% (according to the claim limitations of the instant claims 1-4, 10-12, 14, 18, and 20). Claims 4 and 14 of US 17989516 claims a ratio 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). Claims 5 and 16 claims the solvent is selected from the group consisting of ethyl lactate, butyl lactate, isopropyl alcohol, and any combinations thereof (according to the claim limitations of the instant claims 1, 11, and 20). Claim 8 of US 17989516 claims the dehydrate concentrations to be between about 8-15% by weight and claims 7 and 17 of US 17989516 claims the dehydrate to be isopropyl myristate (according to the claim limitations of the instant claims 1, 11, and 20). Claims 9 and 19 claims the propellant is selected from the group consisting of compressed gas propellants, liquidized gas propellants, saturated hydrocarbons, mixtures of liquid 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, and any combinations thereof (according to the claim limitations of the instant claims 9 and 19). 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 claims 1, 11, and 20). 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 claims 12and 20). Claim 13 of US 17989516 claims the composition comprises between about 60 to about 90% of the carrier (according to the claim limitations of the instant claims 1, 11, and 20). Claim 18 of US 17989516 claims the mint oil is spearmint (according to the claim limitations of the instant claims 1, 11-12, 18, and 20). Claim 20 of US 17989516 claims a pest control composition consisting of between about 0.001 to about 5% mint oil selected from a group consisting of spearmint oil, cornmint oil, and mixtures thereof (according to the claim limitations of the instant claims 1, 11, and 20). Claim 20 of US 17989516 further claims the composition consisting of between about 0.01 to about 5% geranium oil, and between 0 to about 5% of a third oil selected from the group consisting of cinnamon oil, cedarwood oil, and mixtures thereof (according to the claim limitations of the instant claims 1, 11, and 20). Further, claim 20 of US 17989516 claims the composition consisting of about 8 to about 15% of at least one dehydrate and about 1 to about 5% of at least one propellant (according to the claim limitations of the instant claims 1, 8, 11, 13, and 20). Claim 20 of US 17989516 further claims the weight ratio of geranium oil to mint oil is from about 0.5:1 to about 20:1 (according to the claim limitations of the instant claims 1-4, 11, 14, and 20). Claim 21 of US 17989516 claims a pest control composition consisting of between about 0.001 to about 5% of a mint oil selected from the group consisting of spearmint oil, cornmint oil, and mixtures thereof (according to the claim limitations of the instant claims 1, 11, and 20). Claim 21 of US 17989516 claims the pest control composition consisting of between about 0.01 to about 5% geranium oil, and between about 0 to about 5% of a third oil selected from the group consisting of cinnamon oil, cedarwood oil, and mixtures thereof (according to the claim limitations of the instant claims 1, 11, and 20). Claim 21 of US 17989516 further claims a pest control composition consisting of about 8 to about 15% of at least one dehydrate and about 1 to about 5% of at least one propellant (according to the claim limitations of the instant claims 1, 8, 11, 13, and 20). Further Claim 21 of US 17989516 claims a weight ratio of geranium oil to mint oil is from about 0.5:1 to about 20:1 (according to the claim limitations of the instant claims 1-4, 11, 14, and 20).
US 17989516 fails to claim the addition of two surfactants at the desired concentration as in instant claims 1, 7, 11, 17, and 20. Further, US 17989516 fails to claim the carrier is water as in instant claims 6, 15, and 20. Lastly, US 17989516 fails to claim the composition comprises about 0.1 to about 0.5% of a preservative as in instant claims 8 and 13.
As outlined above and reiterated here, Bessette2 claims systems, methods, apparatuses for epa exempt pesticidal compositions (title; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 claims the pesticidal composition comprising a pesticidally acceptable carrier and at least one pesticidally active ingredient (claim 1; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 claims the pesticidally active ingredient is selected from at least one member of the group to include: cedarwood, cinnamon, geraniol, geranium, mint, peppermint and spearmint (claims 2 and 4; according to the claim limitations of the instant claims 1, 11-12, 14, 18, and 20). Bessette2 further claims the pesticidally acceptable carrier is selected from at least one member of the group including sodium lauryl sulfate (SLS) and lecithin (claim 3; according to claim limitations of the instant claims 1, 7, 11, 17, and 20). Further, Bessette2 teaches multiple example formulation utilizing lecithin and sodium lauryl sulfate (SLS) together ([0077]-[0084], [0095]-[0127], [0137]-[0155], [0164]-[0185], [0253]-[0260]; according to the claim limitations of the instant claims 1, 7, 11, 17, and 20). Exemplary Formulation 29 of Bessette2 teaches a composition comprising: 5% wintergreen oil, 0.5% eugenol, 0.5% lecithin, 0.5% sodium laurel sulfate, and 20.0% butyl lactate ([0253]-[0260]; according to the claim limitations of the instant claims 1-4, 7, 10-11, 14, 17, and 20). Claim 25 of Bessette2 claims the pesticidal composition comprises cinnamon, geraniol, lecithin, peppermint, sodium lauryl sulfate (according to the claim limitations of the instant claims 1-4, 7, 11-12, 17, and 20). Bessette2 teaches the pesticide composition comprises an active ingredient present in an amount of about 0.1-50% ([0024]; according to the claim limitations of the instant claims 1-4, 11, 14, and 20). Further, Bessette2 teaches the composition may contain one of more of the following, without limitation: 0.1% to about 15% by weight/mass/volume of an active ingredient having pesticide properties, from about 0.2% to about 10% by weight/mass/volume of an agent for reducing the vapor pressure of the active ingredient (a “fixative”), from about 1% to about 15% by weight/mass/volume of an emulsifier (to prevent separation of solutions), from about 0.05% to about 0.2% by weight/mass/volume of suitable additives, such as an anti-microbial preservative and, as the carrier, water or another solvent liquid in which the active ingredient may be poorly soluble, have low solubility or be insoluble ([0044]; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 provides two formulation examples with concentrations of geraniol that are 0.5 to 5.0% ([0310-0324]; according to the instant claims 1-4, 10-11, 14, and 20). Bessette2 teaches multiple formulations with peppermint oil from 0.09% to 9% ([0242]-[0247], [0261]-[0269], [0281]-[0317], [0333]-[0337], [0347]-[0351]; according to the claim limitations of the instant claims 1-4, 10-11, 14, and 20). Bessette2 teaches multiple examples with a concentration of cinnamon oil from 1-7% ([0221]-[0226], [0234]-[0241], [0276]-[0280], [0393]-[0401]; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 teaches the solvent to be butyl lactate and/or isopropyl myristate ([0047], [0059], [0079], [0117], [0128]; according to the claim limitations of the instant claims 1, 11, and 20). Further, Bessette2 teaches one example utilizing butyl lactate at a concentration of 20% ([0253]-[0260]; according to the claim limitations of the instant claims 1, 11, and 20). Further, Bessette2 teaches multiple examples utilizing isopropyl alcohol, specifically at concentrations of 15% ([0047]-[0055], [0214]-[0220], [0227]-[0233]; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 teaches multiple examples comprising isopropyl myristate, specifically at a concentration of 25% ([0221]-[0226], [0234]-[0241], [0403]-[0413]; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 also claims isopropyl myristate is part of the pesticidal composition (claims 3, 8-11, and 14; according to the claim limitations of the instant claims 1, 11, and 20). Bessette2 teaches water as the carrier ([0044]) and has provides a sample formulation with 46.5% of water ([0302]-[0309]; according to the claim limitations of the instant claims 1, 6, 8, 11, 13, 15, and 20).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim a pest control composition consisting of spearmint oil, geranium oil, a carrier, between about 0-5% of a propellant, about 8-15% of a dehydrate, and between about 0-5% of a third oil selected from the group consisting of cinnamon oil, cedarwood oil, and mixtures thereof as outlined by US 17989516 with the ready for improvement with the known technique of adding a surfactant combination of lecithin and sodium lauryl sulfate at a concentration of 1% and 0.05% to about 0.2% by weight/mass/volume of suitable additives, such as an anti-microbial preservative as outlined by Bessette2. Adding the forementioned components to pest control composition as claimed by instant claims 1, 7-8, 11, 13, 17, and 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. Further, it would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim a pest control composition consisting of spearmint oil, geranium oil, a carrier, between about 0-5% of a propellant, about 8-15% of a dehydrate, and between about 0-5% of a third oil selected from the group consisting of cinnamon oil, cedarwood oil, and mixtures thereof as outlined by US 17989516 with the simple substitution of water for the carrier in a pest control composition as outlined by Bessette2. Simple substitution of one pest control carrier for another is within the purview of the skilled artisan and would yield predictable results.
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 23-24 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). Claims 1 and 11 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, 11, and 24 of US 17989560 claims the between about 0.1 wt% and about 4wt% of a surfactant comprising (i) a first surfactant selected from the group consisting of sodium lauryl sulfate, sodium oleate, potassium oleate, and sodium ricinolate and (ii) a second surfactant that is glyceryl monooleate (according to the claim limitations of the instant claims 1, 11, 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). 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). Lastly, claim 24 of US 17989560 claims a pest control composition, the composition consisting of an active component consisting of: a) between about 0.05 wt% and about 5% rosemary oil, b) between about 0.1 wt% and about 15 wt% of a mint oil, between about 45 wt % and about 75wt% water; a solvent selected from the group consisting of ethyl lactate, butyl lactate, isopropyl alcohol, isopropyl myristate, and combinations thereof (according to the claim limitations of the instant claims 1, 11, 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 ratios0
Response to Applicant’s Arguments
Applicant’s arguments filed on 05/27/2026 are considered by the examiner.
In regards to the 35 USC § 103 rejections, Applicant’s amendments necessitated new grounds of rejection.
In regards to the Double Patenting rejections, Applicant argues that none of the conflicting claims of the copending applications 17/989,516 and 17/989,560, and the published patents US11793205B2, US12446586B2, and US12310372B1 teach or suggest at least two surfactants selected from the group consisting of lecithin, sodium lauryl sulfate, sodium oleate, potassium oleate, sodium ricinolate, Quillaia saponin, polyglyceryl oleate, polyglyceryl monooleate, and any combinations thereof as currently recited in claims 1, 11, and 20. Applicant further asks the remaining rejections to be held in abeyance pending identification of patentable subject matter in this application.
In regards to application 17/989,516, 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 encouraged to review the newly updated double patenting rejection in which Bessette2 provides motivation to add two surfactants at the desired concentration. Specifically, Bessette2 claims the pesticidal composition comprises cinnamon, geraniol, lecithin, peppermint, sodium lauryl sulfate (claim 25).
In regards to application 17/989,560, Applicant is encouraged to revisit the claims of the copending application. As outlined above and reiterated here, 17/989,560 claims a pest control composition comprising between about 0.1 wt% and about 4wt% of a surfactant comprising (i) a first surfactant selected from the group consisting of sodium lauryl sulfate, sodium oleate, potassium oleate, and sodium ricinolate and (ii) a second surfactant that is glyceryl monooleate (claim 1). Therefore, Application 17/989,560 teaches at least two surfactants selected from the group consisting of lecithin, sodium lauryl sulfate, sodium oleate, potassium oleate, sodium ricinolate, Quillaia saponin, polyglyceryl oleate, polyglyceryl monooleate, and any combinations thereof as in instant claims 1, 11, and 20.
Lastly, Applicant is reminded that a request to hold abeyance is an improper response to a double patenting rejection.
Applicant’s arguments are not found persuasive. Therefore, where applicable, the double patenting rejections are updated for claim amendments and maintained.
Conclusion
No claims allowed.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./ Examiner, Art Unit 1611
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