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 .
Specification
The disclosure is objected to because of the following informalities: Figure 1 appearing on page 20. See MPEP 608.01(VI); 37 C.F.R. 1.25(a).
Appropriate correction is required.
Claim Objections
Claim 3 is objected to because of the following informalities: missing comma after metofluthrin.
Claims 5 and 9 are objected to because of the following informalities: lack of antecedent basis for “the insect …” and “the heating …”.
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.
Claims 1-9 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.
Claim 1 recites “a natural pyrethrin”, and the claim also recites “the active ingredient of the natural pyrethrin”. The claim(s) are considered indefinite because there is a question or doubt as to whether “the active ingredient of” introduces a new limitation or feature that is not indicated by “a natural pyrethrin”. Natural “pyrethrins” are the six ester compounds Pyrethrin I, Pyrethrin II, Cinerin I, Cinerin II, Jasmoline I, and Jasmoline II, i.e., they are the active ingredients. The written description states the following relevant to this issue.
“The natural pyrethrin to be used herein contains as an active ingredient, six kinds of the compounds such as Pyrethrin I, Pyrethrin II, Cinerin I, Cinerin II, Jasmoline I, and Jasmoline II.” (Para.[0008] (emphasis added).)
“The active ingredient of a natural pyrethrin to be described herein are referred to the pyrethrin I class and the pyrethrin II class,…” (para.[0013] (emphasis added)).
As indicated by the underlined phrases, neither statement (i) affirmatively limits the “active ingredient” to only the six natural pyrethrins, i.e., pyrethrin I, Pyrethrin II, Cinerin I, Cinerin II, Jasmoline I, and Jasmoline II, nor (ii) equates “a natural pyrethrin” to “the active ingredient of the natural pyrethrin”.
Furthermore because “a natural pyrethrin” could be one or more of the six compounds, “the active ingredient of the natural pyrethrin” potentially could be interpreted as one of the six compounds. None of the dependent claims resolves this issue and therefore are also rejected on this ground.
If “a natural pyrethrin” and “the active ingredient of the natural pyrethrin” are synonymous, the record should clearly reflect that, e.g., by an affirmative statement in an amendment to the Specification. Also the claims should use consistently just one of the two terms to avoid confusion and potential vagueness.
For the purposes of examination now “the active ingredient of the natural pyrethrin” is construed as the “natural pyrethrin” of preceding line in claim 1.
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 5, 7, and 9 recite “method for …using the composition according to claim…”. This is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
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.
Claim(s) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Katsuta (JP 2010-120903A; see 12/19/2023 IDS) in view of Puritch (CA 2414656C).
Katsuta teaches mosquito repellent incense or coil composition (title; abstract; claims 1-2). The composition comprises 0.6 to 1.5 mass% or 0.8 to 1.2 mass% of natural pyrethrin and an “effect-enhancing agent” (id.). Furthermore “[c]onventional pyrethroid insecticides such as transfluthrin,… and the like may be mixed to obtain a multipurpose composition having excellent efficacy” (para.0019). Transfluthrin would have a vapor pressure within the range in claim 2 at 25 °C.
Katsuta does not specifically teach a weight ratio of the natural pyrethrin relative to the pyrethroid.
Puritch is drawn to environmentally safe pesticides including a mixture of sulfur combined with pyrethrins and/or pyrethroids (title; abstract; p.4 line 23-p.5 line 13). Puritch teaches pyrethroid “are often more toxic and last longer in the environment than pyrethrins“ (p.2 lines 1-2). Suitable concentration range for natural pyrethrin in end-use or ready-to-use concentration is about 25 to 1000 ppm, and for pyrethroid the concentration is lower at 10 to 400 ppm (p.5 line 13-p.6 line 1). The ratio of 25-1000 : 10 to 400 overlaps that in claim 1.
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Katsuta and Puritch and include a natural pyrethrin and a pyrethroid in Katsuta’s composition at the concentrations that Puritch teaches as recited in the instant claim(s). The skilled person would have been suggested to do so because both are drawn to repellant compositions comprising a natural pyrethrin and a pyrethroid, and Puritch teaches that pyrethroids “are often more toxic and last longer in the environment than pyrethrins“ and therefore require less concentrations than natural pyrethrins, whose ratio that Puritch teaches are within a range that overlaps that in claim 1. For result-effective variables, in the case where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05 (citations omitted). Furthermore, optimization within prior art conditions or through routine experimentation does not support patentability absent comparative evidence of criticality of the claimed range. See MPEP § 2144.05 (II) (citations omitted).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614