DETAILED ACTION
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 .
Claims 1-7 are pending in the application.
Election/Restrictions
Applicant’s election of the compound of formula (02)
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in the reply filed on June 24, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 3-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 24, 2025.
Claims 1-7 are pending in the application. Claims 3-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species. Claims 1, 2 and 7 will presently be examined to the extent they read on the elected subject matter of record.
Priority
This application is a National Stage Entry of PCT/BR2021/050176 filed April 27, 2021, which claims benefit to Brazil Foreign Application No. BR1020200084330 filed April 28, 2020.
Information Disclosure Statement
Receipt of Information Disclosure Statement filed November 16, 2022 is acknowledged.
Claim Objections
Claim 1 is objected to because of the following informalities: missing article. There is a missing article before “Arthropod repellents”. The article “An” should be inserted before “Arthropod repellents”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Applicant claims “Arthropod repellents compound comprising derivatives from lactic acid, lactates, wherein the hydroxyl functional group and the carboxylic acid functional group present in such substances are transformed into ester and amide, respectively.
As the claim is written it is unclear if the “derivatives from lactic acid, lactates” are derivatives of “lactic acid or lactates” or “lactic acid and lactates in combination”. The clause “wherein the hydroxyl functional group and the carboxylic acid functional group present in such substances are transformed into ester and amide, respectively”, is also unclear. It is unclear if the hydroxyl functional group is always transformed into an ester and the carboxylic acid functional group is always transformed into an amide. In addition, lactic acid contains two hydroxyl functional groups. It is unclear if this can be interpreted as both hydroxyl functional groups are transformed into an ester or an amide.
Applicant should clarify if the derivatives of lactic acid and lactates are in the alternative or in combination and the correlation between the transformation of the functional groups.
Claims 2 and 7 are dependent from claim 1 and are also rejected.
Claim 7 recites “An arthropod repellent composition comprising the compound according to claim 1 used as an active ingredient for the arthropod repellent composition wherein the composition is in the form of a lotion, spray, cream gel, combined with sunscreen, aerosol, environmental repellent capsule, liquid for electric sprinkler, microcapsules and/or capsules using the active ingredient as a repellent, repellent powder for indoor use, repellent wall pant, repellent coating putty, in addition to use in animals and/or agricultural environment”.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with idiomatic errors. For example, as the claim is written the limitation of “combined with sunscreen” is read as “in the form of combined with sunscreen”. The claim already recites arthropod repellent composition so “microcapsules and/or capsules using the active ingredient as a repellent” is redundant. Also, the use of the phrase “in addition to use in animals and/or agricultural environment”, is indefinite. It is unclear if “the use in animals and/or agricultural environment” is a part of the claim.
Clarification of the claim language is required.
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 7 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Kurz et al. (US 6,306,905).
Regarding claim 1, Kurz et al. disclose stable aqueous formulations of the insect repellent ethyl 3-(N-butyl-acetamino)propionate (Abstract). Ethyl 3-(N-butyl-acetamino)propionate is a compound that is a derivative of lactate wherein the hydroxyl functional group and the carboxylic acid functional group are transformed into ester and amide.
Regarding claim 7, Kurz et al. disclose the aqueous formulation in the form of a lotion, emulsion, cream, or gel (col. 6, claim 6).
Kurz et al. meet all the limitations of the claims and thereby anticipate the claims.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) 35 U.S.C. 102(a)(2) as being anticipated by the Ratchford Publication (1949, J. AM. Chem. Soc.). The Ratchford Publication cited by Applicant on the IDS dated 11/16/2025.
The Ratchford Publication discloses the compound Di-Et-lactamide in Table 1
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(page 648, Table 1).
Di-Et-lactamide is a compound wherein the hyroxyl functional group and the carboxylic acid functional group are transformed into ester and amide. Regarding the limitation of Arthropod repellents, this is the intended use of the compound. Therefore, the properties possessed by the composition of the instant application, arthropod repellent, would be possessed by the prior art. Where the claimed and prior art product(s) are identical or substantially identical, the burden of proof is on applicant to establish that the prior art product(s) do not necessarily or inherently possess the characteristics of the instantly claimed product(s), see In re Best, 195 USPQ 430.
Examiner’s Note
The examiner notes that the compound of formula (02) is found to be free of the prior art.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614 /ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614