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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/30/2026 has been entered.
Status of Application
Receipt of Applicant’s Remarks, Amendments and Declaration filed on 04/30/2026 is acknowledged.
Claims 1, 2, 5, 8-10,13,14,16 and 43-47 are pending.
Claims 2-8,11-12,15, 17-43, 45-46 are cancelled.
Claims 1, 14,16, 44, and 47 are amended.
Claims 48-49 are new.
Claims 1, 9-10,13,14,16 and 44, 47-49 are pending and under examination.
WITHDRAWAL OF PRIOR REJECTIONS
Claim Rejections - 35 USC § 101 – Withdrawn
The prior rejection under 35 U.S.C. § 101 is hereby withdrawn in light of the amended claims and the Cunningham Declaration. The Declaration demonstrates markedly different characteristics of the claimed composition compared to naturally occurring counterparts, including an almost 100% increase in attraction for SCE+alcohol over SCE alone (Declaration ¶12). The claimed composition is a synthetic blend with a defined, limited number of components not known to exist in that exact combination in any single fruit.
Claim Rejections - 35 USC § 102 - Withdrawn
The prior rejection under 35 U.S.C. § 102(a)(1) as anticipated by El Hadi is hereby withdrawn. Applicant has persuasively argued that El Hadi does not disclose a composition limited to between 1 to 3 short chain esters and between 1 to 3 alcohols selected from the narrow subsets now claimed.
New Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 49 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not provide adequate written description support for the negative limitation recited in claim 49 that the composition “excludes” hexanal, limonene, 3-phenyl-propylacetate, β-caryophyllene and cinnamyl acetate.
To satisfy the written description requirement for a negative limitation, the specification must convey to a person of ordinary skill in the art that the inventors regarded those specific compounds as excluded from the invention. See MPEP § 2173.05(i). The original specification as filed neither expressly recites a composition that affirmatively excludes hexanal, limonene, 3-phenyl-propylacetate, β-caryophyllene and cinnamyl acetate, nor does it identify any reason why a skilled artisan would understand that these particular five compounds were intentionally disclaimed. Example 7 and Figure 5 of the specification describe compositions comprising short chain esters and long chain esters, but do not compare compositions with versus without these five compounds in a manner that would signal their exclusion as a defining feature. Because the specification does not convey that the inventors conceived of or possessed the claimed composition defined by the absence of these specific volatile compounds, the claim fails the written description requirement under 35 U.S.C. 112(a).
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.
Claim 49 is further 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.
Claim 49 recites “wherein said composition excludes hexanal, limonene, 3-phenyl-propylacetate, β-caryophyllene and cinnamyl acetate.” The exclusion is stated as absolute, but neither the claim nor the specification provides any standard for what “excludes” means in the context of a volatile organic composition. The specification does not define whether trace amounts arising from impurities, degradation products, or background levels from formulation components would cause the composition to fall outside the claim scope. The claimed compounds — hexanal, limonene, β-caryophyllene and cinnamyl acetate — are widely distributed volatile compounds that may be present at background levels in carrier solvents or biological starting materials. A person of ordinary skill in the art would not be able to determine the metes and bounds of the exclusion with reasonable certainty (e.g., at what concentration threshold is a composition deemed to “exclude” a given compound?). The absolute exclusion language, in light of the silent specification, renders claim 49 indefinite under 35 U.S.C. 112(b).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 9-10,13,14,16 and 44, 47-49 are rejected under 35 U.S.C. 103 as being unpatentable over Do Fruit Ripening Volatiles Enable Resource Specialism in Polyphagous Fruit Flies? (hereinafter the article is referred as Cunningham) in view of Yeast, not fruit volatiles mediate Drosophila melanogaster attraction, oviposition and development (hereinafter the article is referred as Becher); Chen et al. (CN 108450465) (hereinafter the reference is referred as Chen) (all above references cited in IDS filed 05/16/2023) and further in view of Baker et al. (US 6,543,181,B1) hereinafter the patent is referred as Baker).
Cunningham teaches a series of behavioral experiments to investigate the role of fruit ripening volatiles as host cues in the Queensland fruit fly Bactrocera tryoni (Froggatt), a polyphagous pest in Australia, wherein odors of mature guava (Psidium guajava) attracted female and male flies more strongly than three other ripening stages and guava pulp, and the analyzed volatiles from guava odor and selected eleven compounds, all of which elicited an electrophysiological response in the antenna of female flies, of which ethyl acetate, ethyl butyrate, and ethyl propionate, were released at the highest rates from the most attractive ripening stage, and in behavioral trials, these three esters in combination was necessary and sufficient in attracting female files (abstract). Moreover, Cunningham further disclose the three component blend of esters was as attractive as the entire 11-component blend, which without these key volatiles was not attractive, and by injecting low ranking hosts (squash and cucumber) with the three volatiles, it increased attraction in ovipositing female flies (abstract). The entire 11-component synthetic blend comprises of ethyl acetate, ethyl propionate, and ethyl butyrate in the volume ratio of 4:1:1 and hexanal, ethyl hexanoate, (Z)-3-hexenyl acetate, hexyl acetate, limonene, 3-phenyl-propylacetate, β-caryophyllene, and cinnamyl acetate, in the volume ratio of 1:5:100:13:1:100:5:100 (page 934, Experiment 2 ¶). Furthermore, Cunningham disclose the blend of volatiles were formulated in vials wherein the top is sealed with Parafilm to slow evaporation rates, as these compounds have a high volatility, and thereby the release rates of the volatile attractants (page 933, right column, 1st ¶). Cunningham fails to specifically teach alcohols.
Becher teaches baker’s yeast Saccharomyces cerevisiae volatile compounds can obtain a strong response attraction from D. melanogaster, and further disclose a synthetic blend of five yeast-produced compounds elicited attraction similar to authentic yeast odor, which confirmed that flies use yeast volatiles for upwind attraction (page 5, right column, ¶ 5).
Chen teaches volatile attractant applied to citrus fruit flies comprising ethyl propionate, ethyl caprylate and (Z) 3-hexenyl acetate wherein the attractant is composed of a series of volatile substances included in fruits, is easily available in raw materials, simple in formula and convenient to prepare, and can achieve an excellent effect of attracting mature citrus fruit flies (abstract). Moreover, Chen disclose in an embodiment, a composition C1= ethyl acetate = ethyl propionate + ethyl butyrate in a mass ratio of 4:1:1 (page 5, Example 1, line 7) and although all the attractant combinations are effective, the effect of series B1-B5 (with hexenyl acetate added) is significantly better than that of C1 (page 6, lines 1-2). In an another embodiment, Chen disclose an alternate composition of ethyl propionate + ethyl octanoate + (Z) 3-hexenyl acetate + phenylethyl alcohol with a mass ratio of 1:1:1:1 (page 7, ¶ Example 5, lines 5-6), and further in an alternate embodiment ethyl propionate + ethyl octanoate + (Z) 3-hexenyl acetate + γ-decalactone with a mass ratio of 1:1:1:1 (page 7, ¶ Example 5, lines 9-10), and further disclose that phenylacetaldehyde and phenylethyl alcohol have no effect on the attracting ability of the basic mixture on Bactrocera dorsalis, wherein the base mixture is ethyl propionate + ethyl octanoate + (Z) 3-hexenyl acetate (mass ration 1:1:1), and with the addition of γ-octanolactone, γ-decalactone and benzaldehyde can improve the attracting ability of the basic mixture to Bactrocera dorsalis (page 7, Example 5, last ¶). Chen fails to specifically teach ratio of short chain esters to alcohol.
Baker teaches a synthetic Drosophila fruit fly attractant composition (column 3, line 25) can further comprise, in embodiments, at least one additional volatile ester compounds, for example volatile aromatic esters or acetic acid esters, which compounds can be added to the mixture in measured amounts or can be generated in-situ by, for example, controlled or spontaneous esterification (column 3, lines 49-54). Moreover, Baker disclose “fugitive components”, which refers to any formulated or in-situ generated component or components which can be volatile, evaporate, deteriorate, change, fade, disappear, or the like concentration diminutive processes and for certain “fugitive components”, for example, 2-phenyl acetate or ethyl acetate, the concentration at any time may vary over a wide range, for example, a concentration of about 0 to less than 10 ppm when the attractant or attractant-trapant composition is prepared and which concentrations can decrease or increase with time followed by a period of continuous decrease in concentration by, for example, continued evaporation (column 4, lines 22-34). The in-situ generated ethyl acetate and 2-phenyl ethyl acetate can arise, for example, form esterification of acetic acid and ethanol and 2-phenyl ethanol (phenethyl alcohol), respectively and the in-situ generated ethyl acetate and 2-phenyl ethyl acetate can be present in the volatiles emanating from the attractant composition, for example in trace amounts to minor amounts of, from less than about 0.1 percent to greater than 99 percent relative to the amounts of the precursor alcohols present int the airborne emissions, or alternatively, by weight based on the total weight of the initially formulated composition and when the ethyl acetate and 2-phenyl ethyl acetate are deliberately, initially added as formulation components they can be present in amounts of from 0.01 parts by weight to greater than 10 parts by weight based on the total weight of the composition (column 5 lines 59-67 to column 6 lines 1-8). Furthermore, Baker disclose the volatile short chain alcohol can be, for example, ethanol and can be in an amount of from about 1 to about 10 parts by weight, and other suitable alcohols, for example, methanol, isopropanol, propanol, butanol, pentanol, hexanol, and cis-3-hexanol (column 6 lines 40-45). Notably, Baker disclose the ability of “fugitive components” to enhance attractant-trapant activity is shown in Table 13 and 14 of Example IV, in which the proportion of the one of these reaction products, ethyl acetate, is augmented by the addition of more ethyl acetate to the blend, and the new blend has greater attractant-trapant activity than the blend lacking the additional ethyl acetate, and similarly, augmenting the proportion of 2-phenyl ethyl acetate in the blend increases trapant-attractancy, as shown in Table 15 of Example IV (Column 13, lines 12-27).
Regarding claims 1 and 44, as noted above, Cunningham teaches a composition for attracting fruit flies comprising synthetic blends of volatile compounds comprising ethyl acetate, ethyl propionate, and ethyl butyrate corresponding to short chain esters; and ethyl hexanoate, (Z)-3-hexenyl acetate, hexyl acetate corresponding to long chain esters. Furthermore, Cunningham also teaches the limitation of between 1 to 3 short chain esters selected from ethyl acetate, ethyl propionate, and ethyl butyrate (page 934, V3 blend). The recitation of “synthetic blend of volatile compounds” does not distinguish over natural volatile compounds. Becher teaches the limitation of between 1 to 3 alcohols selected from isoamyl alcohol, 2-methyl-1-butanol, and iso-butyl alcohol (page 4, Table 1 teaching 2-methyl-1-butanol; Baker, column 6, lines 40-45 teaching isoamyl alcohol and 2-methyl-1-butanol as suitable alternatives). Cunningham optionally teaches between 1 to 3 long chain esters selected from hexyl acetate, ethyl hexanoate, and (z)-3-hexenyl acetate (page 934, V8/V11 blends).
Regarding claims 9 and 10, Becher teaches volatiles form headspace samples produced by fermentation of synthetic minimal medium, 20 h after inoculation with baker’s yeast Saccharomyces cerevisiae comprising 2-Methyl-1-butanol in the 13 volatile compounds composition (page 4, Table 1). The recitation of wherein the alcohol is produced by a yeast species selected from the list in claim 10 does not distinguish from the alcohols as taught by Becher, because the recited 2-Methyl-1-butanol is the same end product, regardless if it was produced by the same yeast or not. Therefore the limitation is met.
Regarding claim 13, as noted above, Baker teaches a synthetic composition for attracting Drosophila fruit flies comprising augmenting the proportion of 2-phenyl ethyl acetate and/or ethyl acetate to alcohol in the attractant blend. The limitation of a ratio of short chain ester (ethyl acetate) to alcohol is taught. A person having ordinary skill in the art (PHOSITA) would have been able to optimize the ratio of short chain esters to alcohol to instant range of 50:1 to 70:1 in order to achieve the attraction desired. It would have been obvious to increase the amount of the short chain ester (ethyl acetate) to alcohol in order to increase the attractancy as disclosed by Baker. Moreover, a PHOSITA through mere routine optimization would have been able to select alternative alcohols, for example, isoamyl alcohol, 2-methy-1-butanol and iso-butyl alcohol or in a combination thereof to further achieve the desired strength of attraction.
Regarding claims 14, 16, 47 and 48, Chen teaches the volatile attractant component of the may also be added with benzaldehyde, γ-octanolactone, γ-decalactone, basilene, ethyl crotonate, ethyl acrylate, methyl benzoate, limonene, acetic acid, and one or more combinations of ethyl ester and ethyl butyrate (page 3, 2nd ¶). Moreover, Chen disclose the components of the attractant are selected from a series of volatile substances contained in the host fruit: ethyl propionate, ethyl acetate, ethyl butyrate are present in almost all fruits, especially guava, octanoic acid Ester is present in almost all kinds of fruits, (Z)3-hexenyl acetate is present in almost all kinds of fruits, γ-octanolactone, γ-decalactone, benzaldehyde are present in peach, basilene, ethyl acrylate, croton Ethyl acetate is present in mango, limonene is mainly from citrus fruits, and methyl benzoate is present in the virgin fruit (a fruit that is very popular with Bactrocera dorsalis) (page 3, 4th ¶). Furthermore, Chen disclose that adding γ-decalactone can improve the attracting ability of the basic mixture (page 7, Example 5, last ¶).
Regarding claim 49, Cunningham teaches a composition for attracting fruit flies (abstract, page 931), a blend of volatile compounds (page 934), between 1 to 3 short chain esters selected from ethyl acetate, ethyl propionate, and ethyl butyrate (page 934, V3 blend), and between 1 to 3 long chain esters selected from hexyl acetate, ethyl hexanoate, and (z)-3-hexenyl acetate (page 934, V8 and V11 blends). Cunningham further teaches that the composition can be a liquid and/or gas mixture, as the volatiles are formulated in vials and evaporate (page 933). Regarding the exclusion limitation, Cunningham expressly demonstrates that the V3 blend — comprising only ethyl acetate, ethyl propionate, and ethyl butyrate — is as attractive as the full 11-component V11 blend, and that V11 (which contains the five compounds at issue) offers no meaningful improvement over V3 (abstract; page 936). The five compounds hexanal, limonene, 3-phenyl-propylacetate, β-caryophyllene, and cinnamyl acetate are therefore identified by Cunningham’s own data as non-contributing components. A person of ordinary skill in the art, seeking to develop a simplified, effective attractant composition based on Cunningham’s V3 results, would have a specific, articulated reason to omit these five compounds: they are demonstrated to add complexity without adding efficacy. Accordingly, a composition that excludes these five compounds would have been obvious to a person of ordinary skill seeking to optimize the V3/V8-type blend by removing components that Cunningham establishes as non-essential.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate a composition for attracting fruit flies comprising the three short chain esters taught by Cunningham, add one or more alcohols selected from isoamyl alcohol, 2-methyl-1-butanol, or iso-butyl alcohol as taught by Becher, optionally include long chain esters as taught by Cunningham, further include γ-decalactone as taught by Chen, and optimize the ratio of short chain ester to alcohol within the range of 50:1 to 70:1 as a routine optimization taught by Baker.
One of ordinary skill would have been motivated to do so for the following specific reasons. First, Cunningham establishes that three short chain esters (ethyl acetate, ethyl propionate, ethyl butyrate) are necessary and sufficient to attract Queensland fruit flies, providing a validated foundational SCE blend. Second, Becher demonstrates through controlled experiments that a synthetic five-component yeast headspace fraction containing the aliphatic alcohol 3-methyl-1-butanol — a structural analog of the claimed isoamyl alcohol — elicits fly attraction not significantly different from authentic yeast odor (Table 1; pages 4-5). This is direct experimental evidence that aliphatic fermentation alcohols independently attract fruit flies. Because both Cunningham's SCE blend and Becher's aliphatic alcohol fraction independently attract the same target insects, a person of ordinary skill seeking to develop an improved or broadened-spectrum attractant would have had a specific, articulable reason to combine them with a reasonable expectation of success. Third, Chen provides express comparative data supporting the addition of γ-decalactone as an efficacy enhancer. Fourth, Baker provides guidance that ester-to-alcohol ratio optimization is a routine design choice, and the claimed 50:1 to 70:1 range falls within the scope of routine experimentation.
Response to Arguments
Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive.
Applicant argues that Cunningham teaches away from adding alcohols to the short chain ester composition because Cunningham notes that geosmin, an alcohol, reduces attractiveness in fruit flies. This argument is not persuasive for two independent reasons. First, geosmin is a structurally unusual 12-carbon bicyclic sesquiterpene alcohol produced by Penicillium mold — it is chemically and functionally distinct from the claimed aliphatic fermentation alcohols isoamyl alcohol, 2-methyl-1-butanol, and iso-butyl alcohol. Cunningham's single observation regarding geosmin does not constitute a general teaching that alcohols as a class reduce attractiveness; it is a compound-specific observation about a structurally atypical molecule. A prior art reference teaches away only when it criticizes, discredits, or otherwise discourages the claimed approach as a whole. See MPEP § 2143.01(VI). Cunningham contains no such general criticism directed at the claimed aliphatic fungal alcohols. Second, applicant's argument relies on Cunningham's V8 and V11 data to suggest that combining additional volatiles with V3 is discouraged. However, a careful reading of Cunningham Experiments 2 and 3 (pages 934-936) shows that V8 and V11 were not significantly better or worse than V3 in overall attractiveness — a result that, if anything, motivates simplification toward a minimal effective blend rather than avoidance of combining component classes altogether. Furthermore, Becher expressly discloses that aliphatic yeast-derived alcohols including 3-methyl-1-butanol (a structural analog of the claimed isoamyl alcohol) are independently attractive to fruit flies (Becher, Table 1; pages 4-5). A person of ordinary skill in the art, having Cunningham's effective 3-SCE blend and Becher's direct demonstration that these specific alcohols attract fruit flies, would have been motivated to combine them with a reasonable expectation of success. Applicant's teaching-away argument therefore fails on both grounds. Regarding claim 49 specifically, the obviousness rejection does not rely on V11 alone. Cunningham expressly shows that V3 — which already lacks the five excluded compounds — is as effective as V11. A person of ordinary skill would have had a specific, data-driven reason to omit those five compounds when constructing an optimized SCE/LCE attractant: Cunningham's own results establish they add no meaningful efficacy.
Applicant argues that Becher shows no improvement when combining fruit volatiles with yeast volatiles, citing Becher's statement that "fruit odour did not enhance the attraction of flies to yeast significantly." This statement is limited to the narrow experimental comparison in Becher Figure 3 and does not constitute a universal teaching that combining esters and alcohols yields no benefit. More fundamentally, what Becher affirmatively establishes — and what directly supports the motivation-to-combine analysis — is that a synthetic five-component yeast headspace fraction containing 3-methyl-1-butanol (a structural analog of the claimed isoamyl alcohol) elicited fly attraction not significantly different from authentic yeast odor (Becher, Table 1; pages 4-5). This is a direct, experimental demonstration that this class of aliphatic alcohol is an effective attractant in a synthetic blend. A person of ordinary skill in the art, having Cunningham's established 3-SCE blend and Becher's direct evidence that yeast-derived aliphatic alcohols are independently attractive, would have had a data-backed, specific reason to combine these two attractant classes with a reasonable expectation of success. That Becher did not test the exact claimed combination does not negate that motivation; the test for motivation to combine does not require that every element of the combination be disclosed in a single reference.
Applicant also argues that Baker teaches away from combining an alcohol with a short chain ester, pointing to Table 15 of Baker. In Table 15, a composition containing ethyl acetate alone shows higher attractiveness than a composition containing 2-phenyl ethanol with acetic acid. But Table 15 compares compositions that are not identical in all components — the presence of acetic acid complicates the comparison. Baker's overall teaching, particularly in column 13, is that augmenting the proportion of esters such as ethyl acetate or 2-phenyl ethyl acetate increases attractancy. A person of ordinary skill reading Baker would understand that optimizing the ratio of short chain ester to alcohol is a routine design choice, not a step away from the claimed invention. Thus, Baker does not teach away; at most, it suggests that ester-only blends can be effective, which does not foreclose the possibility that ester-alcohol blends are also effective and, as shown in applicant's own data, even more effective.
Finally, applicant cites the post-filing Henneken reference to argue that combining long chain esters with short chain esters decreases attraction. Henneken (was published 12 Oct 2022, after the effective filing date of the present application) and is not prior art. It cannot be used to show what was known at the time of the invention. Accordingly, it does not overcome the obviousness rejection.
Response to Amendment
The declaration under 37 CFR 1.132 filed 04/30/2026 is insufficient to overcome the rejection of claims 1, 9-10,13,14,16 and 44, 47-49 based upon prior art of record as set forth in the last Office action because:
Regarding the Declaration's statements on patentable subject matter (¶¶7-12): The Declaration asserts that the claimed composition is not naturally occurring, that the fungal alcohols are not generally present in ripening fruits, and that the synthetic composition exhibits a more than 2-fold increase in trap catches compared to naturally occurring compositions. These arguments were considered in the Examiner's withdrawal of the 35 U.S.C. § 101 rejection. The Examiner agrees that the claimed composition exhibits markedly different characteristics from naturally occurring counterparts, and the §101 rejection has been withdrawn. However, the Declaration's showing of superiority over nature does not overcome the separate obviousness rejections under 35 U.S.C. § 103, which are based on prior art references that teach synthetic compositions, not natural products.
Regarding the Declaration's statements on Cunningham teaching away (¶¶14-17): The Declaration argues that Cunningham teaches away from adding alcohols based on two grounds: (1) geosmin reduces attractiveness, and (2) increased numbers of volatiles may reduce attractiveness. Neither ground is persuasive. As to geosmin, the Examiner incorporates by reference the analysis in the Response to Arguments section above: geosmin is a 12-carbon bicyclic sesquiterpene alcohol produced by Penicillium mold, and is not structurally or functionally representative of the claimed short-chain aliphatic fermentation alcohols isoamyl alcohol, 2-methyl-1-butanol, and iso-butyl alcohol. Cunningham's geosmin observation does not generalize to these structurally distinct compounds. As to the V8/V11 data (¶¶14-17 of the Declaration), the Declaration argues that Cunningham's Experiments 2 and 3 show the more complex blend V8 is less efficacious than V3, and V11 elicits less response than V3 alone. The Examiner acknowledges this data but finds it insufficient to establish teaching away. The teaching-away doctrine applies where a reference criticizes, discredits, or specifically discourages the claimed combination. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Cunningham's data showing that certain expanded blends did not outperform V3 reflects a limited experimental result about those specific multi-component blends — it does not constitute a directive to a person of ordinary skill to avoid combining short chain esters with the specific aliphatic alcohols taught by Becher. The relevant combination at issue is SCE + the specific fungal alcohols of Becher, not SCE + the LCE volatiles and other compounds tested in V8/V11. Cunningham's results on V8 and V11 are therefore not directly on point as to the claimed SCE + aliphatic alcohol combination. Additionally, the Declaration's citation to the post-filing Henneken reference (¶16) is unavailing because Henneken was published after the effective filing date of the present application and is not prior art under 35 U.S.C. § 102.
Regarding the Declaration's statements on Becher (¶¶18-20): The Declaration argues that Becher teaches no observed improvement when combining alcohols with fermenting fruit and that fruit odor did not enhance attraction significantly. Again, these arguments are not persuasive. Becher's statement that "fruit odour did not enhance the attraction of flies to yeast significantly" is limited to the specific experimental conditions of Becher Figure 3 and does not constitute a universal teaching that combining esters and alcohols is futile. The Declaration itself acknowledges at ¶19 that Becher discloses a synthetic five-component fraction containing 3-methyl-1-butanol that elicited fruit fly attraction not significantly different from authentic yeast odor. This is an affirmative experimental demonstration that 3-methyl-1-butanol — a structural analog of the claimed isoamyl alcohol — is an effective fruit fly attractant in a synthetic blend. A person of ordinary skill in the art, having Cunningham's demonstrated 3-SCE blend and Becher's direct evidence that this class of aliphatic alcohol independently attracts fruit flies, would have had a specific, experimentally grounded reason to combine these two attractant classes. The fact that Becher did not test the exact claimed SCE + alcohol combination does not negate the motivation to combine: the test is whether, at the time of the invention, a skilled artisan would have had reason to make the combination with a reasonable expectation of success, and Becher's Table 1 data satisfies that standard.
Regarding the Declaration's statements on Baker (¶21): The Declaration argues that Baker teaches away from combining an alcohol with a short chain ester because Table 15 shows ethyl acetate alone having a significant increase in attractiveness over 2-phenyl ethanol and acetic acid. This argument is not persuasive. Applicant's reliance on Baker Table 15 is misplaced because the comparison in Table 15 is confounded: the alcohol-containing composition also includes acetic acid, which is not present in the ethyl acetate-only composition. The two compositions are therefore not matched controls, and no valid conclusion about the effect of the alcohol per se can be drawn from that comparison. Baker's column 13 teaching — that augmenting the proportion of ethyl acetate and 2-phenyl ethyl acetate increases attractancy — is directed specifically to the ratio optimization rationale underlying claim 13 of the present application, not to the presence or absence of alcohols as a class. Baker overall discloses fruit fly attractant compositions containing both esters and alcohols (e.g., 2-phenyl ethanol, column 6), and teaches optimization of their relative proportions as a routine design choice. Baker therefore does not teach away from ester-alcohol blends; at most it indicates that under certain conditions ester-enriched compositions perform well, which is entirely consistent with the claimed 50:1 to 70:1 SCE:alcohol ratio. Baker provides no general discrediting of ester-alcohol combinations.
Regarding the Declaration's conclusion (¶22): The Declaration concludes that the claimed composition is not disclosed or suggested by the cited prior art. However, as set forth in the §103 rejections above, the combination of Cunningham, Becher, Chen, and Baker renders the claimed compositions prima facie obvious. To rebut a prima facie case of obviousness based on unexpected results, the showing must be commensurate in scope with the claims, and the results must be shown to be unexpected compared to the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). The Declaration's data (Example 7, Figure 5c) shows an approximately 2-fold increase in catches comparing 3 SCE + 3 alcohols versus 3 SCE alone. However, this comparison is made against the SCE-only composition rather than the closest prior art combination under the §103 rejection, which would include a composition comprising SCE (Cunningham) and yeast-derived alcohols (Becher) — a combination that, based on both references, would already be expected to attract fruit flies. The Declaration does not compare the claimed composition against that closest prior art combination. Additionally, the claimed composition spans a broad range of SCE/alcohol/LCE combinations (claims 1, 9, 10, 13, 14, 16, 44, 47, 48, 49) and the data presented relates to a single embodiment (3 SCE + 3 alcohols). The showing is therefore not commensurate in scope with the full claim breadth. For these reasons, the Declaration does not overcome the prima facie case of obviousness under 35 U.S.C. § 103.
For all the foregoing reasons, the Cunningham Declaration under 37 C.F.R. § 1.132 fails to overcome the rejections under 35 U.S.C. § 103 and § 112.
Conclusion
No Claims are allowed.
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/ANDRE MACH/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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