Detailed Action
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. 1
Status of Claims
Claims 15-34 are pending. Claims 15-19 and 21-27 are examined; where claims 20 and 28-34 are withdrawn as directed to non-elected groups and species.
Election/Restrictions
Applicant's election with traverse of Group I, claims 15-28, in the reply filed on November 10 2025 is acknowledged. The traversal cites MPEP 821.04(a) and (b). This is not found persuasive because of the reasons cited in the Restriction Requirement of Oct 16 2025.
The requirement is still deemed proper and is therefore made FINAL.
Claims 29-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II and III, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 10 2025.
Applicant further provisionally elected
a) a branched or straight chain C5 to C 12 fatty acid (fatty acid);
b) alkali metal hydroxide (neutralizer);
c) citrate (buffer); and
d) water (carrier).
Claims 20 and 28 are withdrawn as directed to non-elected species of neutralizers (amines, alkanolamine and potassium hydroxide) and a non-elected species of fatty acid (decanoic acid).
Information Disclosure Statement
The receipt of the information disclosure statement (IDS) submitted on Feb 23 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 15-19 and 21-27 are rejected under 35 U.S.C. 103(a) as being unpatentable over the ‘734 patent (US Patent 6582734), and National Pesticide Information Center's General Fact Sheet Potassium Salts of Fatty Acids ( “NPIC reference” or “NPIC”) (created 2001, Oregon State website, web address: npic.orst.edu/factsheets/psfatech.pdf).
Claim 15 is directed to a method for eliminating insects comprising applying to the insects or an area inhabited by the insects an insecticidal composition comprising:
(a) a fatty acid;
(b) a neutralizer;
( c) a buffer; and
(d) a carrier,
wherein the composition has a pH of about 7.5 to about 9.0.
Regarding claims 15, the 734 patent teaches a number of compositions (Table I, columns 10-11) that reads upon claimed compositions comprising
a fatty acid (heptanoic acid is present at 1.0%, see Table I below),
a neutralizer (sodium hydroxide (described as a buffer/counter ion), see Table I below in an amount of 0.13%),
a buffer (lactic acid, i.e. a protic acid 0.60%, see Table I below) and
a carrier (water of at least 80%, see Table I below).
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Regarding claim 15, the 734 patent teaches a composition comprising a fatty acid from 6-12 carbons with a pH of about 5.0 to about 8.0, see claim 1. The 734 patent teaches heptanoic and octanoic acid as a fatty acid, see claim 13. In particular, the 734 patent teaches the use of a protic acid (which the examiner notes is equivalent to applicant’s buffer (c) in preferable amounts of about 0.1 to about 5% and preferably 0.1 to about 1% by weight, see col. 5, lines 1-6.
Regarding the pH range disclosed therein, the 734 patent teaches an overlapping pH range, where the 734 patent pH is preferably from about 5 to about 10, more preferably about 5.5-10. See column 9, lines 6-9.
While teaching the claimed composition of claim 15, the 734 patent does not teach claim 15’s use of a method of eliminating insects (preamble) and method step of applying to the insects or an area inhabited by the insects the claimed insecticidal composition.
To address this, the NPIC reference teaches fatty acid soaps to be used as pesticides and insecticides, see teachings of NPIC, for example page 2. NPIC notes changes in fatty acid toxicity can be adjusted with carbon chain length. See page 2, 1st bullet point. This teaching by NPIC suggests to a person having ordinary skill in the art (PHOSITA) that application of fatty acid compositions directly to insects, or in the area inhabited by insects, is toxic and eliminates them. Similar to the claimed composition and those of the 734 patent, NPIC teaches acids within the same range as those of the 734 patent, such as ten carbon decanoic acid, where NPIC elaborates on their toxicity to insects. See page 2, 1st bullet point. Note that examined claim 16 claims a fatty acid between 5 and 12 carbons, as per the 734 patent and NPIC.
A PHOSITA following the teachings of the 734 patent would have found it prima facie obvious to apply the composition to insects in order to eliminate the insects based on the teachings of NPIC that application of fatty acid compositions operate as insecticides.
The PHOSITA would have had a reasonable expectation of success because the 734 patent teaches fatty acid compositions as claimed, and NPIC teaches the toxicity to insects of these fatty acid compositions of similar and overlapping carbon lengths.
Regarding claim 16, the 734 patent teaches , the 734 patent teaches a composition comprising a fatty acid from 6-12 carbons with a pH of about 5.0 to about 8.0, see claim 1. The 734 patent teaches heptanoic and octanoic acid as a fatty acid, see claim 13. The 734 patent teaches the use of a protic acid (which the examiner notes is equivalent to applicant’s buffer (c) in preferable amounts of about 0.1 to about 5% and preferably 0.1 to about 1% by weight, see col. 5, lines 1-6.
Regarding claim 17 and the limitation of heptanoic acid, the 734 patent teaches heptanoic acid, see Table I.
Regarding claims 18-19, and the limitation of an alkali metal hydroxide, the 734 patent teaches a neutralizing agent, sodium hydroxide (described as a buffer/counter ion) on Table I (bridging columns 10-11).
Regarding claims 21-22 of a weak acid buffer, such as a protic acid or citric acid, the ‘734 patent teaches the use of a protic acid (which the examiner notes is equivalent to applicant’s buffer (c) in preferable amounts of about 0.1 to about 5% and preferably 0.1 to about 1% by weight, see col. 5, lines 1-6. The 734 patent teaches use of citric acid as a protic acid. See claim 12.
Regarding claim 23, the 734 patent teaches water as a carrier. See Table I.
Claim 24 depends from claim 15 and notes wherein the composition comprises:
(a) about 1.0 wt% to about 10 wt% of the fatty acid;
(b) about 1.0 wt% to about 10 wt% of the neutralizer;
( c) about 0.1 to about 1. 0% of the buffer; and
( d) at least about 80 wt% of the carrier.
The ‘734 patent teaches in Table I, (a) heptanoic acid at 1.0 %, (b) a neutralizer of sodium hydroxide, (c) a buffer, lactic acid, i.e. a protic acid 0.60% and (d) deionized water as a carrier 85.27 or 86.27%.
It is noted that Table I does not teach the neutralizer, such as sodium hydroxide, in the claimed range of about 1.0% to about 10% of neutralizer. However, it is noted that the 734 patent discloses pH ranges (see column 9, lines 6-9, pH of about 5.5 to about 10), that overlap with the instantly claimed pH range of about 7.5 to about 9.0. Accordingly, a person having ordinary skill in the art would routinely optimize amounts of neutralizer (such as an alkali metal hydroxide, NaOH) to within the claimed pH range and the claimed percentages of neutralizer per the claim 24. MPEP 2144.05(II).
Regarding claim 25 and a thicken agent such as xanthan gum, the ‘734 patent teaches a thickening agent of xanthan gum. See Table I.
Regarding claim 26 and additional ingredients (insecticide), the ‘734 patent teaches that its composition includes additional ingredients such as insect repellants (col. 9 lines 11-21).
Regarding claim 27 and the recited limitation of a pH of about 8.0 to about 8.5, a pH of 8.0 is taught by the ‘734 patent, see claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 15-19 and 21-27 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-12 of US 10,098,098 (conflict patent).
The examined claims are generally directed to method of using a fatty acid composition comprising a fatty acid, a neutralizer (such as NaOH); a buffer (citric acid) and water as a carrier, in percentages of about 1 to about 10 %, with about 80% carrier in a pH range of about 7.5 to about 9.0.
The conflict 098 patent generally claims an insecticidal composition comprising:
(a) about 1.0 wt. % to about 7.0 wt. % of a fatty acid including a branched or straight chain C5 to C11 fatty acid
(b) about 1.0 wt. % to about 7.0 wt. % of a neutralizer including an alkali metal hydroxide, amine, alkanolamine, and mixtures thereof;
(c) about 0.1 wt. % to about 1.0 wt. % of a buffer including citrate, citric acid and mixtures thereof;
(d) at least about 80 wt. % of a carrier,
wherein the composition has a pH of about 7.5 to about 9.0;
and wherein the fatty acid and neutralizer form a fatty acid soap in an amount between about 5 wt. % and about 8 wt. % and methods of use, see claim 1. See claims 2-12 further limiting the composition of claim 1.
The dependent claims limit the pH to about 7.5 to about 9.0; decanoic acid; neutralizer (sodium hydroxide or amine); a thickening agent; a buffer (citrate) and water as a carrier; that can further comprise an insecticide. See claims 2-12.
It is noted that examined claim 1 is directed to a composition with an intended use of an insecticide and not the claimed method.
However, a PHOSITA would have found it prima facie obvious to use the conflict patent composition for the claimed method as the conflict patent recites use as an insecticidal composition. The PHOSITA would have had a reasonable expectation of success to arrive at the claimed method by virtue of the taught use of the fatty acid composition of the conflict patent as an insecticide.
Although the conflicting claims are not identical, they are not patentably distinct from each other because both inventions are directed towards insecticidal compositions comprising fatty acids, with overlapping, if not identical scope.
Claims 15-19 and 21-27 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-12 of US 11,533,911 (conflict patent).
Examined claims are generally directed to method of using a fatty acid composition comprising a fatty acid, a neutralizer (such as NaOH); a buffer (citric acid) and water as a carrier, in percentages of about 1 to about 10 %, with about 80% carrier in a pH range of about 7.5 to about9.0.
The conflict patent discloses a method of using a cleansing, sanitizing insecticidal composition comprising: providing an effective amount of an insecticidal, cleansing and sanitizing composition comprising (a) a mixture of a branched or straight chain C5 to C12 fatty acid and a fatty acid soap, wherein the composition comprises no more than 10 wt. % of the fatty acid soap; (b) an alkali metal hydroxide, amine, and/or alkanolamine neutralizer; (c) a bicarbonate, citrate and/or citric acid buffer; (d) a carrier; and (e) 2-phenyl ethyl propionate; wherein the composition has a pH of between 7.5 and less than 9.0 and phase stability is achieved by the coupling of the fatty acid and the fatty acid soap of the mixture; and wherein the composition does not comprise an essential oil; contacting the composition with an insect and/or a surface; and wetting the insect and/or the surface surrounding the insect. See claim 1,
Dependent claims limit the pH to about 8.0 to about 8.5; decanoic acid; neutralizer (sodium hydroxide or amine); a thickening agent; a buffer (citrate) and water as a carrier; that can further comprise an insecticide. See claims 2-19.
The conflict patent does not necessarily claim the broad scope of the examined patent with regard to the fatty acid, neutralizer and buffer components.
However, a PHOSITA would have found it prima facie obvious to arrive at the claimed method via the conflict patent method as both are directed to methods of using a fatty acid composition of similar/overlapping scope as an insecticide. The PHOSITA would have had a reasonable expectation of success in arriving at the claimed method by virtue of the similarity between the instantly claimed method and the conflict patent method.
Conclusion and Correspondence
In summary, no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM LEE whose telephone number is (571)270-3876. The examiner can normally be reached M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam C. Milligan can be reached at (571) 270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM Y LEE/Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
1 CONTINUING DATA
This application is a CON of 15/926,853 03/20/2018 PAT 11533911
15/926,853 is a CON of 13/306,298 11/29/2011 ABN
13/306,298 has PRO 61/418,215 11/30/2010