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 .
Information Disclosure Statement
The IDS’s filed on 6/30/2026 and 8/27/2025 have been considered. See the attached PTO 1449 form.
Status of Action/Claims
Receipt of Remarks/Amendments/Declaration filed on 11/17/2025 is acknowledged. Claims 1-22 are currently pending in this application and are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Note: This is a second non-final office action that is prompted by further consideration of the instant claims and the prior art.
Claim Interpretation
The recitation “functional ingredient” recited in instant claims (e.g. claim 10) is interpreted as a material that provides a beneficial property in a particular use, as defined in paragraph 0148 of instant specification.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6, 8, 10-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is drawn to herbicidal composition comprising two or more of an extract from Mentha spicata, an extract from M arvensis, a non-Mentha organic herbicide, or a non-Mentha synthetic herbicide; and a carrier.
The broadest reasonable interpretation of the claimed composition would be that the composition requires at least two of the components mentioned above (e.g. can include Mentha spicata extract and M. arvensis extract only) and a carrier (e.g. water). Extract from Mentha spicata, extract from M arvensis, non-Mentha organic herbicide and water (carrier) are all naturally occurring products. Additional components recited in dependent claims are also naturally occurring products.
Thus, the composition claimed is not markedly different from how the individual components are foun in nature. It is not integrated into a practical application because nothing in the claims relies on or uses the exception. There is nothing significantly more than the judicial exception because there are no additional elements in the claim. With regard to dependent claims, the enumeration of the amounts or additional products of nature do not make the combination of the products of nature markedly different from how they occur in nature.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, because the formulation at the broadest interpretation of the claim language is a mixture of products of nature comprising two or more of an extract from Mentha spicata, an extract from M arvensis, a non-Mentha organic herbicide, or a non-Mentha synthetic herbicide, and a carrier, which does not appear to change the biological/pharmacological functions, chemical/physical properties, or the structure/form of said ingredients. Because the claimed formulation does not have markedly different characteristics, it is a product of nature.
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 5, 6, 8, 11 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 5 and 6 recite “the concentration”. There is insufficient antecedent basis for this limitation in the claims. Specifically, it is unclear which exact component’s concentration is being referred to in this limitation of claims 5 and 6.
In claim 8, it is unclear which extract is being referred to in the recitation “the extract is added”. Further, it is unclear whether the amount recited is added to the composition or whether the amount is referring to the amount added to the field where herbicidal effect is desired.
In claim 11, recitation “carrier/solubilizer” makes it unclear whether both a carrier and a solubilizer are required or whether either one can be included without the other.
Claims 17 and 19 recite “a concentration”. It is unclear which exact component’s concentration is being referred to in this limitation of claims 17 and 19.
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 1-2 and 4-22 are rejected under 35 U.S.C. 103 as being unpatentable over Bessette (WO2000051436A1) (previously cited) as evidence by Ibanez (Phytotoxicity of Essential Oils on Selected Weeds: Potential Hazard on Food Crops. Plants 2018, 7, 79).
Bessette teaches herbicidal compositions containing plant essential oils and method for controlling weeds and grasses by applying a herbicidally effective amount of the compositions to a locus where weed and grass control is desired. Bessette teaches a herbicidal composition comprising, in admixture with an acceptable carrier, a mixture of one or more plant essential oil compounds in combination with a conventional pesticide, including herbicides. Bessette teaches the plant essential oil can include d-limonene (non-Mentha organic herbicide) and the herbicide is glyphosate. Instant claim 1 recites “two or more of an extract from Mentha spicata, an extract from M arvensis, a non-Mentha organic herbicide, or a non-Mentha synthetic herbicide”, which suggests only two of these components are required from this limitation in claim 1. Bessette teaches the plant essential oil can also include menthol (which encompasses both R and S) and Mentha piperita (oil of Mentha piperita reads on extract of Mentha piperita). Bessette teaches the composition can also include emulsifying agents, surface active agents and carriers, which all read on the claimed functional ingredient. Emulsifying agent can be included in the amount of 0.01-95% by weight. Bessette teaches the composition can be formulated as solution, granules, powder or a concentrate. As mentioned above, Bessette teaches the invention is directed to a method for controlling weeds and grasses by applying a herbicidally effective amount of the herbicidal compositions to a locus where weed and grass control is desired. Bessette teaches plants (i.e. plurality of plant) treated were wild mustard, penny smartweed, ragweed, plantin, crabgrass, etc. As evidence by Ibanez, glyphosate resistance has been described in ragweed (e.g. Introduction), thus, Bessette teaches wherein the weed and/or the plant is herbicide resistant. Bessette teaches the present invention encompasses methods for killing, combating or controlling weeds and grasses, which comprises applying to at least one of correspondingly (a) such weeds and grasses and (b) the corresponding field, i.e. the locus to be protected, e.g. to a growing crop (post emergent treatment), to an area where a crop is to be grown (preemergent treatment).
Regarding claim 22, as discussed supra, Bessette teaches the composition comprises Mentha piperita (which comprises Mentha spicata), glyphosate and limonene. Bessette also teaches cineole essential oil (i.e. non-mentha extract) which can be included in the composition. Thus, Bessette teaches combining non-mentha extract with mentha sp. as recited in claim 22.
(see e.g. Abstract; Claims; Pages 5-9; Summary of Invention; Examples 1-8; Entire Document).
The teachings of Bessette have been set forth above.
While Bessette does not expressly exemplify limonene, Bessette discloses limonene plant essential oil among the other plant essential oils that can be used in the composition. Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
Regarding the concentrations in claims 5, 6, 8, 17 and 19, as discussed supra, it is unclear the concentrations of which components the claims refer to and as such the examiner is unable to clearly point to the teachings of the prior art due to this indefiniteness issues in the claims. Further, Bessette teaches the herbicidal composition for controlling weeds in plants and absence any evidence of criticality, a prima facie case of obviousness exists for optimization of the concentrations of the claimed ingredients. 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).
Regarding claim 9, as discussed supra, Bessette teaches plant essential oil such as limonene in combination with glyphosate. It would have been prima facie obvious to one skilled in the art to use lesser amount of the non-mentha synthetic herbicide (i.e. glyphosate) because Bessette teaches the objects of the invention are accomplished by the present invention which is directed to herbicidal compositions containing certain plant essential oils and herbicidal compositions containing synergistic mixtures or blends of certain plant essential oils (see e.g. summary of invention). Thus, synergistic mixture would allow for lesser amount of glyphosate to be used.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
Claim 1-2, 3 and 4-22 are rejected under 35 U.S.C. 103 as being unpatentable over Bessette (WO2000051436A1) as evidence by Ibanez (Phytotoxicity of Essential Oils on Selected Weeds: Potential Hazard on Food Crops. Plants 2018, 7, 79) as applied to claims 1-2 and 4-22 above and further in view of Azirak (Acta Agriculturae Scandinavica Section B - Soil and Plant Science, 2008; 58:1, 88-92).
The teachings of Bessette have been set forth above.
Bessette does not teach the herbicidal composition further comprises extract from the ingredients recited in claim 3. However, Azirak cures this deficiency.
Azirak throughout the reference teaches Allelopathic effect of some essential oils and components on germination of weed species. Azirak teaches essential oils of Carum carvi and Mentha spicata show high inhibitory activity on the germination of weed seeds (see e.g. abstract; discussion; conclusion; entire document).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Bessette and Azirak and further include essential oil of Carum Carvi and Mentha Spicata into the herbicidal composition of Bessette. One would have been motivated to do so because both Bessette and Azirak teach essential oils for controlling weed plants and Azirak specifically teaches essential oils of Carum carvi and Mentha spicata show high inhibitory activity on the germination of weed seeds. As a general principle 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, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
Response to Arguments/Declaration
Applicant in the remarks and declaration argued there being synergy between combination of Mentha sp. and non-Mentha organic herbicides.
In response, firstly the examiner argues that the data/results provided by the applicant is not commensurate in scope with the claims because, as discussed supra, the claims do not require that there has to be at least one extract of Mentha sp. and one extract of non-mentha organic herbicide. The claims are broad in that they recite “two or more of” which does not require there being at least one mentha sp. Further, as discussed supra, Bessette teaches the present invention relates to herbicidal compositions containing synergistic blends of certain plant essential oils. Bessette teaches the plant essential oils include limonene and mentha piperita (which include metha spicata as mentha piperita is a hybrid of mentha aquatica and mentha spicata). Thus, Bessette does suggest the claimed mentha spicata with limonene (non-mentha organic herbicide) having synergy. Therefore, applicant’s arguments of synergy are not found persuasive at this time.
Conclusion
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/ALI S SAEED/ Examiner, Art Unit 1616
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