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
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13) in the reply filed on 11/10/2025 is acknowledged. Therefore, claims 14-20 are withdrawn from further consideration by the Examiner as being drawn to non-elected subject matter.
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 1-13 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.
What is meant by “first retaining feature, “second retaining feature” and “third retaining feature”. What are they retaining ?
What is meant by “fluid inhibiting element”?
There is no art recognized meaning for these terms.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Mansfield (US 5,651,908) in view of O’Brien (US 2019/0127201), CN 111184004, Rettori et al. (US 20170112126), Hassan et al. (US 20100324308) and as evidenced by “WellCalm”.
Mansfield discloses a pesticide product comprising a pesticide composition contained within a bottle (col. 2, lines 49-51), wherein the bottle is configured to affix to a liquid dispensing fixture (7) adapted to spray the pesticide composition and comprises a neck (3) terminating in a rim (3’) circumscribing and defining a main opening through the neck to the interior volume, and a removable cap (col. 2, lines 54-59) disposed over the main opening. Note the presence of a handle. The housing is the container itself. Note the screw threads, col. 2, lines 10-16. Note that the container is made of polyethylene, see col. 2, lines 17-25. The pumping means will need power, i.e. an electric motor configured to drive a pump, see col. 1, lines 1-25. Nozzle is col. 2, lines 23-32. Note spraying features in col. 1, lines 10-20, col. 2, lines 20-32. Note screw cap, col. 2, lines 55-65.
Mansfield differs in that it does not disclose a fluid passage fitting configured to fit over the rim and/or within the main opening of the bottle and fluidly connected to a draw tube disposed inside the bottle and extending from proximity of the main opening down to proximity of a bottom extent of the interior volume, wherein the neck has an outer diameter of from about 35 mm to 50 mm, that the composition contains water, isopropyl alcohol, sodium lauryl sulfate, urea, an oil from claim 5, and that the bottle is made of polyethylene terephthalate.
Regarding the fluid passage fitting, attention is directed to the O’Brien reference, which discloses a fluid passage fitting (3) configured to fit over the rim and/or within the main opening of a bottle and fluidly connected to a draw tube (11) disposed inside the bottle and extending from proximity of the main opening down to proximity of a bottom extent of the interior volume (Fig. 2). O’Brien teaches that the claimed feature allows the entire contents of the container to be dispensed (par. 0030).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the Mansfield reference in view of the teachings of the O’Brien reference by employing a fluid passage fitting and draw tube as claimed for the purpose of dispensing the entire contents of the bottle.
Regarding an oil from claim 5, attention is directed to the Rettori reference, which discloses a pesticide composition comprising from about 45% to about 99% by weight of the composition of water (par. 0140), at least one active ingredient selected from the group consisting of peppermint oil, corn mint oil, spearmint oil, rosemary oil, thyme oil, citronella oil, clove oil, cinnamon oil, cedarwood oil, garlic oil, geranium oil, lemongrass oil, geraniol, eugenol, nerol, vanillin, 2-phenylethyl propionate, menthol, menthone, thymol, carvone, camphor, methyl salicylate, p-cymene, linalool, eucalyptol/1,8-cineole, alpha-pinene, bornyl acetate, gamma-terpinene, and mixtures thereof, preferably selected from the group consisting of peppermint oil, corn mint oil, spearmint oil, citronella oil, geraniol, and mixtures thereof (par. 0110), and an anionic surfactant (pars. 122, 126, 130), which is a soap.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify the Mansfield reference in view of the teachings of the Rettori reference by employing the claimed composition because Mansfield teaches that the bottle is useful for storing and dispensing such compositions (see abstract and col. 1, lines 58-61).
Mansfield discloses the claimed invention except for from about 0.1% to about 10% by weight of the composition of the at least one active ingredient and from about 1% to about 15% by weight of the composition of the anionic surfactant. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the amounts of the at least one active ingredient and the anionic surfactant as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Mansfield discloses the claimed invention except for the pesticide composition has a viscosity of from about 2 cps to about 500 cps. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the viscosity from about 2 cps to about 500 cps, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Mansfield discloses the claimed invention except for the pesticide composition has a service tension ranging from about 10 mN/m to about 60 mN/m. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the service tension from about 10 mN/m to about 60 mN/m, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Mansfield discloses the claimed invention except for the composition has a turbidity less than about 20 NTU and greater than about 0 NTU, preferably less than about 10 NTU and greater than about 0 NTU. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the turbidity less than about 20 NTU and greater than about 0 NTU, preferably less than about 10 NTU and greater than about 0 NTU, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Mansfield discloses the claimed invention except for the composition has a b* value of about 0 to about 5. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the b* value to about 0 to about 5, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
The composition comprises volatile organic compounds (par. 0110 of Rettori). Mansfield discloses the claimed invention except for about 3% by weight or less. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust amount of VOCs to about 3% by weight or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
The composition comprises a volatile organic compound (par. 0110 of Rettori). Mansfield discloses the claimed invention except for from about 3% to about 35% by weight. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust amount of VOC to from about 3% to about 35% by weight, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
The composition is substantially free of synthetic pesticides, mineral oil, colorants, or a combination thereof (par. 0058 of Rettori).
The composition comprises only food grade ingredients (par. 0117 of Rettori).
Mansfield discloses the claimed invention except for from about 0.5% to about 7%, preferably from about 1% to about 6%, by weight of the composition. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of geraniol to from about 0.5% to about 7%, preferably from about 1% to about 6%, by weight of the composition, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
The composition comprises peppermint oil, spearmint oil, rosemary oil, thyme oil, citronella oil, clove oil, cinnamon oil, cedarwood oil, garlic oil, geranium oil, lemongrass oil, eugenol, nerol, vanillin, 2-phenylethyl propionate, menthol, menthone, thymol, carvone, camphor, methyl salicylate, p-cymene, linalool, eucalyptol/1,8-cineole, alpha-pinene, bornyl acetate, gamma-terpinene, and mixtures thereof, preferably selected from the group consisting of peppermint oil, spearmint oil, corn mint, citronella, or a mixture thereof (par. 0110 of Rettori). Mansfield discloses the claimed invention except for from about 0.005% to about 7% by weight of the composition of. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the ingredient to from about 0.005% to about 7% by weight of the composition, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
MPEP 2144.05, subsection II.
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017 ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
To use a thickener is obvious in an effort to thicken up the composition as needed.
To use one or more outwardly projecting helical screw threads is obvious since the screw threads are taught as noted.
The spray amounts (claim 14) are clearly result effective variables and to use them is simply routine optimization in an effort to optimize the desired results.
It is also obvious to not pressurize the bottle as it is a spray device.
Using a spray actuator is obvious to use since spray actuators are essential components in aerosol dispensing systems, designed to control the release and spray pattern of the product.
The pumping means will need power, i.e. an electric motor configured to drive a pump, see col. 1, lines 1-25. Thus, it would have been obvious to use a motor to drive the pump.
It also would have been well within the purview of the ordinary artisan in an effort to optimize the desired results, to make the bottle’s measurements as specified in the claims since clearly the measurements on the bottle are result effective variables.
CN teaches that pesticidal compositions routinely have water, sodium lauryl sulfate, urea, isopropyl alcohol (isopropanol), see the entire document especially, the claims.
Therefore, it would have been obvious to one having ordinary skill in the art to use the claimed components in a pesticidal composition since the components are already known in the art to be used for this purpose.
Hassan teaches that PET (polyethylene terephthalate) is well known to be used in bottles for making pesticides, thus it would have been obvious to use PET since it was so notoriously well known in the art at the time the invention was made.
Handles are well known to be optional for carrying.
The pesticide product of claim 1, wherein the fluid passage fitting is configured to reside within the main opening of the bottle and the top of the fluid passage fitting is parallel to and in plane with the rim plane of the neck is obvious in view of the teachings of the reference. The pesticide product of claim 11, wherein the fluid passage fitting further comprises a fluid inhibiting element. What does this term even mean? The pesticide product of claim 1, wherein the cap comprises a third retaining feature that is geometrically identical to the second retaining feature which is obvious to simply duplicate the second retaining feature.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Application No. 18/360,785. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a bottle with similar components.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 11, 13-15 of U.S. Application No. 19/252,680. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a bottle with similar components.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL V MELLER whose telephone number is (571)272-0967. The examiner can normally be reached M-F 9 am-5:30 pm.
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MICHAEL V. MELLER
Primary Examiner
Art Unit 1655
/MICHAEL V MELLER/ Primary Examiner, Art Unit 1655