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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/23/2026 has been entered.
Status of the Claims
Claims 1, 6-7, 9-16, and 18-20 are pending and under current examination. Claims 2-5, 8, and 17 are cancelled.
Withdrawn Claim Rejections
All rejections pertaining to claims 3-5 and 17 are moot because the claims are cancelled in the amendments to the claims filed 2/23/2026.
All rejections under 35 U.S.C. 102 are withdrawn in view of the amendments to the claims filed 2/23/2026.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 6-7, and 9-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
This is a new matter rejection. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1 and 13 recite the limitation “free of synthetic pesticidal active ingredients”. The instant specification at paragraph [0017] supports an embodiment that “omits harsh, toxic chemicals typically found in conventional pesticides” but does not contain support for an embodiment of the invention that is specifically free of synthetic pesticidal active ingredients. Therefore, the limitations recited in claims 1 and 13 constitute new matter.
Regarding claims 6-7, 9-12, and 14-16, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend but fail to resolve the written description concerns outlined above.
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, 6-7, 9-16, and 18-20 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.
Claims 1, 13, and 18 recite the phrase “naturally derived active ingredients”. This renders the claim indefinite because it is not clear what compounds may be encompassed by the term “naturally derived” and there is no definition or guidance provided in the specification to direct one of ordinary skill in the art to what may qualify an active ingredient as naturally derived.
Regarding claims 6-7, 9-12, 14-16, and 19-20, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6-7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor (WO2022096842, publication date: 5/12/2022) in view of Messina (U.S. Patent Application No. 2017/0118996, publication year: 2017) and EPA R.E.D. Facts (Capsaicin, available 6/1992).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Taylor teaches an effective bug spray for treatment on plants using natural ingredients (pg. 1, Field of the Invention). The spray may include capsaicin (pg. 4, second paragraph) and eucalyptus essential oil (pg. 2, second paragraph). The claims recite the limitation “Japanese beetle repellent composition”; the intended use of a claimed invention must result in a structural difference between the claimed invention and the prior art in or order to patentably distinguish the claimed invention form the prior art, therefore the insect repellent composition embraced by Taylor reads on the instant claims. See MPEP 2112.01 (II).
Regarding claims 6 and 7, Taylor teaches that the bug spray may include peppermint oil (pg. 2, first paragraph), cedarwood oil (pg. 4, fifth paragraph), and tea tree oil (pg. 5, fourth paragraph).
Regarding claim 9, Taylor teaches that the bug spray may include peppermint oil (pg. 2, first paragraph).
Regarding claim 11, Messina teaches that various types of solid materials may be protected by the disclosed repellent compositions. Plant material, included grasses, may be sprayed to prevent insects from alighting on the plant [0171]. The repellent concentrate compositions may be diluted with water at a ratio of one part concentrate to 1 to 34 parts water. Serial dilutions are also within the scope of the present invention and find usefulness when treating larger areas [0158].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 1, Taylor does not teach the inclusion of capsaicin oil, a concentration of capsaicin oil, a ratio of capsaicin oil and eucalyptus oil, a mixing agent, or a surfactant. However, this deficiency is cured by Messina and EPA R.E.D. Facts.
EPA R.E.D. Facts teaches that capsaicin and capsaicin oleoresin are used to repel insects. The capsaicin oleoresin is derived by distilling capsaicin powder. The resulting highly concentrated liquid has little odor but has an extremely pungent taste (pg. 1, Use Profile). Liquid formulations of capsaicin are diluted with water and sprayed by aircraft, ground boom, hand-held garden hose and airblast spray equipment (pg. 3, Occupational and Residential Exposure). Messina teaches a broad-spectrum insect repellent [0002] that comprising only natural ingredients or ingredients not requiring EPA approval [0007]. The composition may include capsaicin [0066] and eucalyptus oil [0026]. The composition may also contain alcohols as carrier vehicles [0076] and surfactants [0089]. The instant specification defines a mixing agent to be an alcohol [0023 of instant specification], therefore the Examiner considers alcohol carrier vehicles of Messina to read on the “mixing agent” limitation of the instant claims.
Regarding claim 9, Taylor does not teach the volume percentage of essential oils present in the composition.
Regarding claim 11, Taylor does not teach that the composition may be mixed with water to form a diluted solution. However, this deficiency is cured by Messina.
Messina teaches that various types of solid materials may be protected by the disclosed repellent compositions. Plant material, included grasses, may be sprayed to prevent insects from alighting on the plant [0171]. The repellent concentrate compositions may be diluted with water at a ratio of one part concentrate to 1 to 34 parts water. Serial dilutions are also within the scope of the present invention and find usefulness when treating larger areas [0158].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 1, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (capsaicin and capsaicin oleoresin for the purpose of repelling insects). See MPEP 2144.06 (II).
Regarding the mixing agent and surfactant of claim 1, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional mixing agents and surfactants used in naturally-derived insect repellent compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding claim 1, the ratio of essential oils present in the insect repellent composition embraced by Taylor is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal ratio of essential oils in order to best achieve the desired results as such would provide advantageous repellent effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Taylor teaches that capsaicin and eucalyptus oil may be used to repel insects in an insect repellent composition. The Examiner considers it prima facie obvious to optimize the amounts of any ingredient of an insect repellent composition in order to achieve their known repellent effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of capsaicin oil and eucalyptus oil would impact the repellent properties of the composition and therefore be an optimizable variable.
Regarding the volume percentage of essential oils as recited in claims 1 and 9, the amount of essential oils present in the insect repellent composition embraced by Taylor is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of essential oils in order to best achieve the desired results as such would provide advantageous repellent effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Taylor teaches that capsaicin, eucalyptus oil, and peppermint oil may be used to repel insects in an insect repellent composition. The Examiner considers it prima facie obvious to optimize the amounts of any ingredient of an insect repellent composition in order to achieve their known repellent effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of capsaicin oil and eucalyptus oil would impact the repellent properties of the composition and therefore be an optimizable variable.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Taylor (WO2022096842, publication date: 5/12/2022) in view of Messina (U.S. Patent Application No. 2017/0118996, publication year: 2017) and EPA R.E.D. Facts (Capsaicin, available 6/1992), as applied to claims 1, 6-7, and 9 above, and further in view of Youssef et. al. (Horticultural Entomology, pg. 1551-1558, publication year: 2009, of record) and Okamoto (JP2010120865, publication year: 2010, references refer to machine translation, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 10, Taylor teaches the relevant limitations of claims 1 and 6-7 above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 10, Taylor does not teach the inclusion of wormwood, wintergreen, or mugwort oil. However, this deficiency is cured by Youssef and Okamoto.
Youssef teaches that wormwood oil and wintergreen oil may be used to repel Japanese beetles (pg. 1553, Results, first paragraph). Okamoto teaches a composition for controlling pests that includes an organic sulfur compound and an essential oil [0006]. The composition is effective against Japanese beetles [0029] and may include mugwort oil as the essential oil [0006].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 10, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to combine compositions, each of which is taught by the prior art to be useful for the same purpose (the repellent composition of Taylor+ the wormwood and wintergreen oils of Youssef and the mugwort oil composition of Okamoto for the purpose of repelling insects), in order to form a composition to be used for the very same purpose. See MPEP 2144.06 (I).
Furthermore, the amount of essential oils present in the insect repellent composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal ratio of essential oils in order to best achieve the desired results as such would provide advantageous repellent effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Taylor teaches that capsaicin, eucalyptus oil, and peppermint oil may be used to repel insects in an insect repellent composition. Yousef teaches that wintergreen and wormwood oil may repel Japanese beetles and Okamoto teaches that mugwort oil may be used to repel Japanese beetles. The Examiner considers it prima facie obvious to optimize the amounts of any ingredient of an insect repellent composition in order to achieve their known repellent effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of essential oils present in the composition would impact the repellent properties of the composition and therefore be an optimizable variable.
Claims 11, 13-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor (WO2022096842, publication date: 5/12/2022) in view of Messina (U.S. Patent Application No. 2017/0118996, publication year: 2017) and EPA R.E.D. Facts (Capsaicin, available 6/1992), as applied to claims 1, 6-7, and 9 above, and further in view of Youssef et. al. (Horticultural Entomology, pg. 1551-1558, publication year: 2009, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 11 and 16, Taylor teaches the relevant limitations of claim 1 above.
Regarding claims 13, 14, and 18, the relevant limitations have been rendered obvious in the rejection of claim 1 above except for a method of treating vegetation to repel one or more Japanese beetles. Taylor also teaches that the bug spray may include peppermint oil (pg. 2, first paragraph), cedarwood oil (pg. 4, fifth paragraph), and tea tree oil (pg. 5, fourth paragraph). Taylor also teaches that bug sprays that utilize natural ingredients have a more natural approach for the environment and the safe use of the products following use (pg. 1, Background).
Regarding claims 15, 19, and 20, Taylor teaches an effective bug spray for treatment on plants using natural ingredients (pg. 1, Field of the Invention).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 11 and 16, Taylor does not teach that the composition may be mixed with water to form a diluted solution. However, this deficiency is cured by Messina and Youssef.
Messina teaches that various types of solid materials may be protected by the disclosed repellent compositions. Plant material, included grasses, may be sprayed to prevent insects from alighting on the plant [0171]. The repellent concentrate compositions may be diluted with water at a ratio of one part concentrate to 1 to 34 parts water. Serial dilutions are also within the scope of the present invention and find usefulness when treating larger areas [0158]. Youssef teaches that essential oils that are the most efficacious against insects often cause plant phytotoxicity and that undiluted essential oil formulations would probably be phytotoxic if applied directly to plant foliage (pg. 1556, Discussion).
Regarding claims 13 and 18, Taylor does not teach that the composition may be utilized to repel one or more Japanese beetles without killing the one or more Japanese beetles. However, this deficiency is cured by Youssef.
Youssef teaches that eucalyptus oil, wintergreen oil, peppermint oil, and wormwood oil may be used to repel Japanese beetles (pg. 1554, Table 2). Youssef also teaches that the undiluted essential oil formulations tested would probably be phytotoxic if applied directly to plant foliage (pg. 1556, Discussion) and that the effects of a given essential oil are highly variable among different insect species, thus blending oils can often result in an optimal spectrum of activity against a specific pest (pg. 1556, Discussion).
Regarding claims 15 and 19, Taylor does not teach that the insect repellent may be applied to a plant before or during a high activity period for Japanese beetles.
Regarding claim 20, Taylor does not teach that the appearance of the plants is unaffected by applying the composition. However, this deficiency is cured by However, this deficiency is cured by Messina and Youssef.
Messina teaches that various types of solid materials may be protected by the disclosed repellent compositions. Plant material, included grasses, may be sprayed to prevent insects from alighting on the plant [0171]. The repellent concentrate compositions may be diluted with water at a ratio of one part concentrate to 1 to 34 parts water. Serial dilutions are also within the scope of the present invention and find usefulness when treating larger areas [0158]. Youssef teaches that essential oils that are the most efficacious against insects often cause plant phytotoxicity and that undiluted essential oil formulations would probably be phytotoxic if applied directly to plant foliage (pg. 1556, Discussion).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 11, 16, and 20, it would have been prima facie obvious to one of ordinary skill in the art of filing to dilute the bug spray composition of Taylor with water to avoid phytotoxicity effects of the composition. One would have understood in view of Youssef that essential oils that repel insects often cause plant phytotoxicity when used in undiluted formulations. It would have been obvious to dilute the bug spray composition of Taylor. One of ordinary skill in the art would have been motivated to dilute the composition of Taylor in order to prevent phytotoxicity rendered by undiluted essential oils. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Messina teaches that an insect repellent comprising essential oils may be diluted with water to find usefulness when treating larger areas.
Regarding the dilution ratio of the repellent composition and water as specified in claim 11, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Messina teaches that serial dilutions are within the scope of the present invention and find usefulness when treating larger areas [0158]. The Applicants' specification provides no evidence that the selected dilution ratio in claim 11 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effect of dilution on the strength of the repellent composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the dilution ratio. One of ordinary skill in the art would have been motivated to change the dilution ratio as this could be expected to be advantageous for obtaining the desired repellent strength for treating a larger area.
Regarding claims 13 and 18, it would have been prima facie obvious to one of ordinary skill in the art of filing that the insect repellent composition of Taylor may be used in a method of repelling Japanese beetles. One would have understood in view of Youssef that eucalyptus oil and peppermint oil effectively repel Japanese beetles and that blending oils can often result in an optimal spectrum of activity against a specific pest. It would have been obvious that the insect repellent composition of Taylor that may contain eucalyptus oil and peppermint oil may also repel Japanese beetles. One of ordinary skill in the art of filing would have been motivated to utilize the insect repellent composition of Taylor to repel Japanese beetles in order to utilize a repellent composition with safe natural ingredients. The artisan of ordinary skill in the art would have had reasonable expectation of success because Youssef teaches that both eucalyptus and peppermint oil effectively repel Japanese beetles and that blending oils can often result in an optimal spectrum of activity against a specific pest.
Regarding the volume percentage of essential oils as recited in claims 13 and 14, the amount of essential oils present in the insect repellent composition embraced by Taylor is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of essential oils in order to best achieve the desired results as such would provide advantageous repellent effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Taylor teaches that capsaicin, eucalyptus oil, and peppermint oil may be used to repel insects in an insect repellent composition. The Examiner considers it prima facie obvious to optimize the amounts of any ingredient of an insect repellent composition in order to achieve their known repellent effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of capsaicin oil and eucalyptus oil would impact the repellent properties of the composition and therefore be an optimizable variable.
Regarding claim 13, the ratio of essential oils present in the insect repellent composition embraced by Taylor is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal ratio of essential oils in order to best achieve the desired results as such would provide advantageous repellent effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Taylor teaches that capsaicin and eucalyptus oil may be used to repel insects in an insect repellent composition. The Examiner considers it prima facie obvious to optimize the amounts of any ingredient of an insect repellent composition in order to achieve their known repellent effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of capsaicin oil and eucalyptus oil would impact the repellent properties of the composition and therefore be an optimizable variable.
Regarding claims 15 and 19, it would have been prima facie obvious to one of ordinary skill in the art of filing to apply the repellent composition embraced by Taylor before Japanese beetle activity is present. One would have understood in view of Taylor and Youssef that the composition embraced by Taylor may be used on plants as a repellent against Japanese beetles. It would have been obvious that the repellent composition may be applied to the plant of interest before Japanese beetle activity is present in order to repel Japanese beetle away from the unaffected plant. One of ordinary skill in the art of filing would have been motivated to apply the pest repellent composition before Japanese beetle activity is present on the plant in order to prevent any injury to the plant rendered by Japanese beetle activity. The artisan of ordinary skill would have had reasonable expectation of success because Taylor, in view of Youssef, teaches that the composition may be used to repel Japanese beetles.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Taylor (WO2022096842, publication date: 5/12/2022) in view of Messina (U.S. Patent Application No. 2017/0118996, publication year: 2017) and EPA R.E.D. Facts (Capsaicin, available 6/1992), as applied to claims 1, 6-7, and 9 above, and further in view of Manabu (JP2010126486A, publication year: 2010, citations refer to machine translation) and Okamoto (JP2010120865, publication year: 2010, references refer to machine translation, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 12, Taylor teaches the relevant limitations of claim 1 above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 12, Taylor does not teach the inclusion of isopropyl alcohol or glycerin. However, this deficiency is cured by Manabu and Okamoto.
Manabu teaches an insect repellent comprising amylis oil alone or in combination with other natural plant essential oils and/or essential oil components depending on the purpose, surfactants, retention agents, carrier agents, antibacterial agents, and fragrances as necessary. Insect repellents can be easily obtained by adding a specific gravity adjusting agent, viscosity adjusting agent, anti-settling agent, lower alcohol and the like [0009]. The composition may also contain a retention agent such ag glycerin. The retention agent is added as a transpiration retarding agent for retarding the transpiration rate of the repellent component and the perfume to main the durability of the repellent effect [0019]. Okamoto teaches a composition for controlling pests that includes an organic sulfur compound and an essential oil [0006]. The composition is effective against Japanese beetles [0029] and may include isopropyl alcohol as a liquid carrier [0039].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art of filing to include glycerin and isopropyl alcohol in the repellent composition of Taylor. One would have understood in view of Manabu that adding glycerin to an insect repellent composition comprising essential oils can retard the transpiration rate of the repellent composition and in view of Okamoto that isopropyl alcohol may serve as a liquid carrier for essential oil-based insect repellents. It would have been obvious to include such a compound and carrier in the repellent composition of Taylor. One of ordinary skill in the art of filing would have been motivated to include glycerin in order to retard the transpiration rate of the repellent composition and isopropyl alcohol in order to facilitate the dilution of the composition. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Manabu teaches that glycerin may be used to retard the transpiration rate of an essential oil-based insect repellent composition and Okamoto teaches that isopropyl alcohol may serve as a liquid carrier for essential oil-based insect repellents.
With regards to the “surfactant” limitations of instant claim 12, the prior art teaches the same glycerin as claimed and therefore, the surfactant properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Additionally, the instant specification teaches that the surfactant may be a surface-active agent that helps the pest repellent adhere to a surface [0023], therefore the Examiner considers the glycerin taught by Manabu to read on the “surfactant” limitation of the instant claims.
The amount of isopropyl alcohol and glycerin present in the composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount in order to best achieve the desired results as such would provide advantageous repellent. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Manabu teaches that glycerin can retard the transpiration of a repellent composition from a surface [0019] and Okamoto teaches that isopropyl alcohol may act as the alcohol carrier for an insect repellent composition comprising essential oils [0039]. The Examiner considers it prima facie obvious to optimize the amount of glycerin and isopropyl alcohol present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of glycerin would have a direct effect on the longevity of the composition on a surface and the amount of isopropyl alcohol would have a direct effect on the concentration, and therefore the potency, of the composition and therefore be an optimizable variable.
Response to Arguments
Applicant's arguments filed 2/23/2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the rejections under 35 U.S.C. 103 over Jones in view of Hainrihar have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
On page 12, Applicant argues that the claimed ratio of essential oils is not a result effective parameter subject to routine optimization because the prior art does not recognize capsaicin concentration or its ratio to eucalyptus oil as a variable affecting an all-natural composition or affecting non-lethal repellency of Japanese beetles, the claimed ranged cannot be dismissed as routine optimization. This is not found persuasive. In response, please refer to MPEP 2141.03(I) regarding the factors to consider when determining level of ordinary skill: “A person of ordinary skill in the art is also a person of ordinary creativity, not an automation.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. In the instant case, and as described in the obviousness rejection above, one of ordinary skill in the art would have recognized in view of Taylor that both capsaicin and eucalyptus oil are effective natural insect repellents. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal ratio of essential oils in order to best achieve the desired results as such would provide advantageous repellent effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). The Examiner considers it prima facie obvious to optimize the amounts of any ingredient of an insect repellent composition in order to achieve their known repellent effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of capsaicin oil and eucalyptus oil would impact the repellent properties of the composition and therefore be an optimizable variable.
On page 17, Applicant argues that Youssef provides no expectation of success in combining the particular claimed ingredients and that synergism was not detected among different tested blends of essential oils in the study for disrupting the olfactory response of Japanese beetles. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2143.02 (I), which states:
“Conclusive proof of efficacy is not required to show a reasonable expectation of success. OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375, 1385, 2019 USPQ2d 379681 (Fed. Cir. 2019) ("To be clear, we do not hold today that efficacy data is always required for a reasonable expectation of success. Nor are we requiring ‘absolute predictability of success.’"); Acorda Therapeutics, Inc. v. Roxane Lab., Inc., 903 F.3d 1310, 1333, 128 USPQ2d 1001, 1018 (Fed. Cir. 2018) ("This court has long rejected a requirement of ‘[c]onclusive proof of efficacy’ for obviousness." (citing to Hoffmann-La Roche Inc. v. Apotex Inc., 748 F.3d 1326, 1331 (Fed. Cir. 2014); PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364 (Fed. Cir. 2007); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364, 1367–68 (Fed. Cir. 2007) (reasoning that "the expectation of success need only be reasonable, not absolute")).”
And MPEP 2143.02 (II), which states:
“Obviousness does not require absolute predictability, but at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (Claims directed to a method for the commercial scale production of polyesters in the presence of a solvent at superatmospheric pressure were rejected as obvious over a reference which taught the claimed method at atmospheric pressure in view of a reference which taught the claimed process except for the presence of a solvent. The court reversed, finding there was no reasonable expectation that a process combining the prior art steps could be successfully scaled up in view of unchallenged evidence showing that the prior art processes individually could not be commercially scaled up successfully.). See also OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375, 1385, 2019 USPQ2d 379681 (Fed. Cir. 2019) ("These references provide no more than hope—and hope that a potentially promising drug will treat a particular cancer is not enough to create a reasonable expectation of success in a highly unpredictable art such as this. Indeed, given a 99.5% failure rate and no efficacy data or any other reliable indicator of success, the only reasonable expectation at the time of the invention was failure, not success."); Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1207-08, 18 USPQ2d 1016, 1022-23 (Fed. Cir. 1991), cert. denied, 502 U.S. 856 (1991) (In the context of a biotechnology case, testimony supported the conclusion that the references did not show that there was a reasonable expectation of success.); In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988) (The court held the claimed method would have been obvious over the prior art relied upon because one reference contained a detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful.).”
The Examiner also draws attention to MPEP 2141.03(I) regarding the factors to consider when determining level of ordinary skill: “A person of ordinary skill in the art is also a person of ordinary creativity, not an automation.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. In the instant case, Youssef teaches that the effects of a given essential oil are highly variable among different insect species, thus blending the oils can often result in an optimal spectrum of activity against a specific pest. As described in the obviousness rejection above, it would have been prima facie obvious to one of ordinary skill in the art of filing that the insect repellent composition of Taylor may be used in a method of repelling Japanese beetles. One would have understood in view of Youssef that eucalyptus oil and peppermint oil effectively repel Japanese beetles and that blending oils can often result in an optimal spectrum of activity against a specific pest. It would have been obvious that the insect repellent composition of Taylor that contains eucalyptus oil and peppermint oil may also repel Japanese beetles.
On page 17, Applicant argues that Youssef teaches away from increasing blend complexity and thus the claimed volumetric ranges of essential oils are not obvious as a matter of routine optimization. This is not found persuasive. In response, the Examiner draws attention to MPEP 2123 (I), which states: “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments”. In the instant case, Youssef teaches that the effects of a given essential oil are highly variable among different insect species, thus blending the oils can often result in an optimal spectrum of activity against a specific pest. Synergism was not detected among a few of the essential oils that were tested as blends in the current study for disrupting the olfactory response of Japanese beetles, particularly the combination of cumin and coffee and dill and grapefruit (pg. 1554, Table 2 and pg. 1556 Discussion). An additional study found as the number of components in a volatile blend increase, there is a greater chance the polyphagous Japanese beetle will be more attracted to the mixture. However, additional synergism studies are required after active individual components from promising oils are identified (pg. 1556 Discussion). Rather than teaching away, one of ordinary skill in the art would have recognized in view of the teachings of Youssef that blending oils can result in an optimal spectrum of activity against a specific pest and that the synergism of the oils may be optimized to a specific pest. Therefore, the argument is not persuasive and the rejection is maintained.
Conclusion
No claims are allowed.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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