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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/18/2026 has been entered.
Status of Claims
The amendments and arguments filed on 02/17/2026 are acknowledged and have been fully considered. Claims 1-20 are now pending. Claims 1, 10, and 19 are amended; claims 19-20 are withdrawn.
Claims 1-18 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied, and constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103
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.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20160165899 A1 (Bissinger, 2016).
In regards to claims 1-2, 5, 7-8, 10-11, 15-16, and 18, Bissinger teaches a composition for controlling arthropods, such as ticks, flees, flies, mosquitoes, among others (see abstract; paragraphs 0005-0009) comprising essential oils. The composition is taught to comprise geraniol, isopropyl myristate, triethyl citrate, mineral oil, and isopropyl alcohol (see paragraphs 0073-0074). It is taught that the isopropyl alcohol is used in an amount from 15-85% (see paragraph 0088). It is taught that the mineral oil is used in an amount from 0.1 to about 99% by weight of the composition (see paragraph 0073). Further in regards to claim 15, it is also taught that mineral oil and isopropanol (i.e., isopropyl alcohol) are both acceptable solvents that are used in the composition and can be used together, as well as equivalents of one another (see paragraph 0096). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Further in regards to claim 10, it is noted that while the solvent is limited to consisting of a mineral oil, isopropyl alcohol, and isopropyl myristate, there is no limitation on what else can be in the composition and as such the inclusion of other components that have different uses but may function as a solvent (e.g., water) are still understood to be included in the composition due to the initial “comprising” language.
In regards to claims 3 and 12, the composition is taught to be a concentrate that is provided in a pouch that is mixed with water (see paragraph 0110). Further it is taught that solvent concentration of the composition is about 80% (see paragraph 0097). The solvent is taught to be isopropyl alcohol, mineral oil, and mixtures thereof (see paragraph 0096). The specification as filed teaches that “substantially” is defined as at least about 80% (see specification as filed, paragraph 0030). As such, to be substantially free of water, would mean that there is less than about 20% water in the composition. As such, if the concentration of the solvent is about 80%, then the amount of water must be less than about 20% as well, especially considering that there are other compounds present in the composition.
In regards to claims 4 and 13, isopropyl myristate is taught as thickening agent (see paragraph 0049). It is also taught that the composition comprises a preservative, colorant, and compounds for adjusting the pH (see paragraphs 0116, 0120, 0057).
In regards to claims 6 and 17, the composition comprises isopropyl myristate in an amount of 10% or less (see paragraph 0079). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 9, the composition comprises triethyl citrate in a concentration of 9% or less (see paragraph 0080). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 14, the composition comprises geraniol in a concentration of 5% or less (see paragraph 0076). It is also taught that the composition comprises the oil in an amount of about 0.1% or less. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Further in regards to claim 18, the composition is taught to comprise a propellant (see paragraph 0099).
Bissinger does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Bissinger with a reasonable expectation of success to obtain the composition of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the composition of the instant claims with predictable results.
Further, in regards to claim 1, as the teachings of Bissinger would yield an identical composition as instantly claimed, the properties, such as the stability of the composition at about 4°C after about 72 hours of storage would be present since physical properties are not separable from the products themselves. As such, the prior art renders obvious the instant composition. A person of ordinary skill in the art would reasonably expect the same composition to have the same properties as instantly claimed.
Response to Arguments
Applicant's arguments filed 02/17/2026 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In regard to applicant’s argument that Bissinger does not teach the use of mineral oil in an amount that is larger than 50% and that Bissinger teaches that mineral oil is a fixed oil, not a plant essential oil, it is pointed out that Bissinger broadly teaches that the composition comprises “more than one oil, each oil can make up between 0.1%, or less to about 99%” (see Bissinger, paragraph 0073). This is followed up by the discussion of fixed oils but one with ordinary skill in the art would reasonably understand that a fixed oil is a type of oil, which is taught to comprise from 0.1% to 99% of the composition by weight. Applicant also pointed out that in paragraph 0117 of Bissinger, the oil is taught to be a plant essential oil, however it is noted again that the wording of the teaching is that the composition comprises “more than one oil” rather than plant essential oil. Further, paragraph 0117 is followed by paragraph 0118 that teaches that the composition comprises “any of the following oils, or mixtures thereof”, referring to Table 2 of Bissinger, which includes mineral oil. The language of the art does not limit the composition to having only 0.1% to 99% by weight of the composition to plant essential oils, rather to oils in general. Bissinger teaches that in composition including more than one oil, each oil is used in an amount from about 0.1% to about 99% by weight of the composition (see Bissinger, paragraph 0073). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). It would be within the purview of one with ordinary skill in the art to use the teachings of Bissinger to use an amount of mineral oil as taught by the art.
In regard to applicant’s argument of unexpected results and that Bissinger is silent with respect to the stability of the formulations it teaches, applicant is reminded that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, it is pointed out that it is taught in Bissinger that the use of fixed oils, such as mineral oil, stabilize the composition (see Bissinger, paragraph 0073). Also, as the teachings of Bissinger would yield an identical composition as instantly claimed, the properties, such as the stability of the composition at about 4°C after about 72 hours of storage would be present since physical properties are not separable from the products themselves. As such, the prior art renders obvious the instant composition. A person of ordinary skill in the art would reasonably expect the same composition to have the same properties as instantly claimed.
Further, applicant argues that there are unexpected benefits to using the amounts of components as claimed, particularly improving the stability of the composition. However, there is no data presented that has all of the components of the instant claims. As pointed out previously, Formulation 32 of example 5, which is pointed to by applicant to show unexpected results, does not show how much or what essential oil and/or vegetable oil are present as taught in claim 1. Applicant argues that the paragraph preceding Table 7, which includes formulation 32, teaches that the essential oils were added last, however it is noted that the other examples in the specification also say this and show the amount of essential oils added. As such, the data presented is not commensurate in scope with the claims. Further, the data presented is limited in the amounts of the mineral oil to 77.75% by weight and isopropyl alcohol to 17.50% by weight, however the claims teach much broader ranges. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Further still, the claim requires that the composition be substantially free of a lactate solvent, but the specification as filed teaches that “substantially” is understood as 80% as discussed in the rejection. As such, the composition can have up to 20% of a lactate solvent. However the data presented in Table 1 and Table 2 show that compositions with n-Butyl lactate in varying amounts had cases where there was phase separation at 4°C, which goes against what is being claimed. The amount of mineral oil and isopropyl alcohol are within the claimed ranges for these examples as well. It is not clear how the data is commensurate with the scope of the claims and cannot be used to establish unexpected results to overcome the art of record.
Double Patenting
Applicant’s filing of a terminal disclaimer on 02/17/2026 is enough to overcome the previous double patenting rejections and as such they are withdrawn.
Conclusion
No claims allowed.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./ Examiner, Art Unit 1611
