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 1-18 are pending.
Claims 1-11 and 13-18 are currently pending.
Receipt of remarks and amendments filed on 03/20/2026 is acknowledged.
Applicant previously elected with traverse Group I, claims 6-9 and 11-16, drawn to an attractant or repellent composition comprising at least one compound of the formula (I). The claims were not allowable.
Accordingly, claims 1-5, 10 and 17-18 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 12/08/2025.
Once the examined claims directed to a product become allowable, the examiner will consider rejoinder of claims directed to the process of using the allowable product if the claims require all the limitations of the allowable product. Please note that withdrawn claims 1-5 recite a process without setting forth any steps involved. MPEP 2173.05(q) states that this raises an issue of indefiniteness. The examiner suggests correcting this issue to place those claims closer to be allowed.
The claim amendments have obviated the rejections and objections presented in the prior Office Action, and therefore, these were withdrawn. The scope of the compounds and compositions covered by the claims is now clear. The claim amendments have necessitated the new grounds of rejection presented in this Final Office Action.
Claims 6-9, 11 and 13-16 are the subject of this Office action.
Specification Objections
The disclosure is objected to because of the following informalities:
The amendment filed on July 17, 2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “the entire contents of each of which are hereby incorporated by reference”. See page 1.
MPEP 211.02(a) states that “When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a) ).”
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The instant application is a 371 application which has an International filing date of January 17, 2022. The incorporation by reference statement is being added by way of a Preliminary Amendment filed on July 17, 2023, which is after the instant application’s International filing date. Therefore, the “incorporation by reference” statement being added is deemed new matter.
Applicant is required to cancel the new matter in the reply to this Office Action. This objection can be overcome by removing “the entire contents of each of which are hereby incorporated by reference” at page 1 of the specification.
Applicant’s arguments have been carefully considered but were found unpersuasive. Applicant argues that the Office Action appears to confuse the benefit claim with the incorporation by reference statement. In response, these are two different things. The incorporation by reference statement at the first page of the instant specification was added in the amendments to the specification submitted on 07/17/2023:
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The instant application is a 371 application which has an International filing date of January 17, 2022. Thus, the incorporation by reference statement was added after the instant application’s International filing date.
MPEP 201.06(c)(IV) states that “An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a) ).” This is separate from the statement about incorporation by reference to add a benefit claim. Note that the MPEP also states “however, for applications filed on or after September 21, 2004, 37 CFR 1.57(b) provides that a claim for the benefit of a prior-filed application under 37 CFR 1.78 is considered an incorporation by reference as to inadvertently omitted material. See MPEP § 217.”
This objection can be overcome by removing “the entire contents of each of which are hereby incorporated by reference” at page 1 of the specification.
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.
Claims 8, 11 and 13-14 are 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.
MPEP 2173.05(p)(II) states:
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A single claim which claims both a product and the method steps of using the product is indefinite.
Claim 8 is drawn to a product but also recites method steps of using the product:
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Claim 13 is drawn to a product but also recites method steps of using the product:
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Claim 14 is drawn to a product but also recites method steps of using the product:
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Claim 11 depends of claim 8 and is rejected for the same issue.
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.
Claims 8 and 14 are 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. Claim 8 recites “the compound with the formula (I) being in the form of … a mixture of the enantiomers (R) and (S) in mass concentrations different from 50/50%”. This does not further limit the subject matter of the claim upon which claim 8 depends (cl. 6) because a mixture of the enantiomers (R) and (S) in mass concentrations different from 50/50% is not an option in claim 6. Claim 14 depends of claim 6 and recites the same as claim 8. 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.
This rejection can be overcome by adding to claim 6 at the appropriate place “or of a mixture of the enantiomers (R) and (S) in mass concentrations different from 50/50”.
Claim Objections
Claim 6 recites
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The word “or” may be missing between an enantiomer (R) and an enantiomer (S), unless something else may be intended. Claim 6 is thus objected to.
Claim 9 is objected to because it recites “consising of 2 to...”. Please correct.
Applicant is advised that should claim 7 be found allowable, claim 13 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant is advised that should claim 8 be found allowable, claim 14 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Conclusion
Claims 8, 11 and 13-14 are rejected. Claims 6-7, 9 and 15-16 are objected to. The subject matter of the claims could be allowable if all issues above are resolved.
Once the examined claims directed to a product become allowable, the examiner will consider rejoinder of claims directed to the process of using the allowable product if the claims require all the limitations of the allowable product.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621
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