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
Status of Claims
The amendments and arguments filed on 11/06/2025 are acknowledged and have been fully considered. Claims 1-20 are now pending. Claims 1, 10, and 15 are amended; claims 19-20 are withdrawn.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Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 11/06/2025 has been considered here.
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 for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (see MPEP 2111.03). The instant specification provides no such teaching or guidance, thus supporting the interpretation of "consisting essentially of' as equivalent to "comprising."
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 11/06/2025 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
Applicant argues that there is no motivation from Bissinger to use an amount of mineral oil in excess of 50%, it is pointed out that 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. Formulation 32 of example 5, which is pointed to by applicant to show unexpected results, does not contain an essential oil and/or vegetable oil as taught in claim 1. 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).
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 3-10 of copending Application No. 18356947 (reference application) in view of US PGPUB 20160165899 A1 (Bissinger, 2016).
18356947 teaches an insecticidal composition comprising cottonseed oil (i.e. a vegetable oil), a mineral oil, isopropyl alcohol, and triethyl citrate in overlapping amounts (see reference application, claims 1 and 5-8). Claims 3-4 of the reference application teach the use of an essential oil, e.g., geraniol. Claims 9-10 of the reference application further teach the use of a preservative, a pH adjuster, and a thickener, as well as the composition being substantially free of water, which are limitations that are similar to the instant claims.
The reference application is silent on the use of isopropyl myristate.
The teachings of Bissinger have been described supra.
In regards to claims 1-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition as instantly claimed using the teachings of 18356947 and Bissinger as Bissinger teaches that isopropyl myristate is a known thickening agent and emollient used in insecticide compositions. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the isopropyl myristate and the composition of 18356947 according to the known method making insecticide compositions (see Bissinger, paragraph 0097) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 11/06/2025 have been fully considered but they are not persuasive.
Applicant’s argument to hold the double patenting rejection in abeyance, the examiner notes that a request to address the issue further upon an indication of allowance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). As set forth above, the double patenting rejections of claims 1-18 over are maintained.
Conclusion
No claims allowed.
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 AYAAN A ALAM whose telephone number is (571)270-1213. The examiner can normally be reached M-F 8-5 EST.
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, Bethany Barham can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A.A./ Examiner, Art Unit 1611
/CRAIG D RICCI/ Primary Examiner, Art Unit 1611
Prosecution Insights