DETAILED ACTION
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 . 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 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.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-17) and the species of essential oil (mint oil) in the reply filed on 16 February 2026 is acknowledged. The traversal is on the ground(s) that the process cannot be practiced with a materially different product, a serious burden has not been established for either the invention or species requirements, and the product/process of use distinctness rationale does not apply. This is not found persuasive. The product /process of use rationale applies for the reasons put forth, as the product can be used in a materially different use. And as for the search burden, rationale was provided in the action (different classification and search terms). The requirement is still deemed proper and is therefore made FINAL. Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-17 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. Independent claim 1 (and dependent claims 2-17) are directed to a composition comprising a mixture of naturally occurring substances (water, butyl lactate, and an essential oil such as mint oil). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only components listed are the naturally occurring ingredients. There is nothing in the specification to indicate that, when combined, there is any additional functionality beyond that which each substance has individually.
The analysis set forth for evaluating subject matter eligibility under section 101 is discussed in MPEP 2106. Step 1 is to determine if the claim is to a process, machine, manufacture, or a composition of matter. For the instantly recited invention, this is true. The claims are directed to a composition of matter. Thus, the analysis continues to step 2A.
Step 2A consists of two prongs. The first prong of step 2A is if the claim recites an abstract idea, a law of nature, or a natural phenomenon. The claims are directed to a natural phenomenon. Thus, as the claims are drawn to products of nature, the analysis continues to the second prong of step 2A.
The second prong of step 2A is does the claim recite additional elements that integrate the judicial exception into a practical application. The claims are directed to a repellant composition comprising these three ingredients, and there is no elements recited as limitations which integrate the mixture of the ingredients into a practical application. Thus, as there is nothing else in the claim other than the judicial exception, the analysis continues to step 2B.
Step 2B is does the claim recite additional elements that amount to significantly more than the judicial exception. And the instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only components listed are the naturally occurring ingredients. The only additional limitations is the intended use of the ingredients as a repellant. But there is no limitation to the claimed invention requiring anything which is not drawn to a judicial exception. And there is nothing in the specification to indicate that the combination has any additional functionality beyond that which each substance has individually. Thus, the claims are considered to not be drawn to eligible subject matter under 35 USC 101.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 6, 8, and 11-17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Huckabee (US Patent Application Publication 2023/0148611).
Huckabee discloses pest control compositions with spearmint oil, sodium lauryl sulfate, a carrier, and a solvent (abstract). The carrier can be water (paragraph [52]) and the solvent can be butyl lactate or ethyl lactate (paragraph [53]). Specific examples include formulations A-C (table 1), which have spearmint oil, butyl lactate, and water. These compositions anticipate the composition recited by instant claim 1.
Instant claims 2 and 16 further limits the essential oil. Mint oil is the elected species, and the spearmint oil disclosed by Huckabee reads upon this limitation, and the amounts in the above cited examples read upon the amount instantly recited.
Instant claims 6 and 8 recite the further inclusion of a preservative, and sodium benzoate is present in the above cited examples.
Instant claims 11 and 12 recite the further inclusion of a surfactant, and the sodium lauryl sulfate disclosed by Huckabee reads upon these limitations.
Instant claims 13 and 14 recite the further inclusion of an agent such as neem oil, which is suggested by Huckabee (paragraph [43]).
Instant claims 15 and 17 further limit the amounts of the water and butyl lactate, and formulations A and B read upon these amounts.
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 1-12 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Huber et al. (US Patent Application Publication 2023/0137223).
Huber et al. discloses pest control compositions with a blend of essential oils, surfactants, solvents, additives, and inerts (abstract). Taught essential oils include mint oil (claim 6). Taught solvents include water, butyl lactate, and combinations thereof (claim 11).These ingredients read upon the ingredients recited by independent instant claim 1.
Thus, Huber et al. discloses compositions comprising the individual elements of the instantly claimed combination (essential oil, water, and butyl lactate) and together these would provide a composition as instantly claimed. However, Huber et al. is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been prima facie obvious, however, to make the combination since each component is taught as being useful in making the compositions of the prior art. Since this modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions a prima facie case of obviousness exists. See MPEP 2141.
Instant claims 2 and 16 further limit the essential oil. Mint oil is the elected species, and the mint oil disclosed by Huckabee reads upon this limitation. And Huber et al. discloses an amount (claim 7), but this range does not read upon the instantly recited range. But it does overlap. And in cases involving overlapping ranges, where the instantly claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claims 3-10 recite additional ingredients are present, and the inerts suggested by Huber et al. read upon these limitations (table 1).
Instant claims 11 and 12 recite the further inclusion of a surfactant, and Huber et al. suggests the inclusion of sodium lauryl sulfate (claim 8), which reads upon these limitations.
Instant claims 15 and 17 further limit the amounts of the water and butyl lactate, the amount of solvent suggested (claim 12) overlaps the ranges instantly recited.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
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/Brian Gulledge/Primary Examiner, Art Unit 1699