FINAL 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 .
Status of Claims
Receipt is acknowledged of claim amendments filed on 11 June 2026.
Claims 1-16 and 20-25 remains withdrawn from consideration.
Claims 17-19 and 26-27 have been amended.
Claim 28 has been added.
Claims 17-19 and 26-28 are presented for examination herein to the extent that the degreasing solvent is D-limonene, the surfactant is sodium lauryl sulfate, the base ammonium hydroxide, the monohydric alcohol is isopropyl alcohol, the application location is directly to flatworm, the method of applying is spraying and the flatworm being treated is New Guinea Flatworm (Platydemus manokwari), e.g., applicant's elected species in the reply filed on 19 December 2025.
Claim Interpretation
Claims 17 and 27, and dependent claims 17-19 and 26-28, contains the recitation “non-parasitic, free-living flatworms in Phylum Platyhelminthes, or other forms thereof” (emphasis added) and “non-parasitic, free-living flatworms, or other forms thereof, in Phylum Platyhelminthes”, respectively. The recitation of “other forms thereof” are interpreted to broaden the flatworms to include more than the non-parasitic, free-living flatworms in phylum Platyhelminthus.
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.
Claim 19 is 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.
Claim 19 recites the limitation "said non-parasitic, free-living flatworms" in lines 3 and 4-5; while claim 17, which claim 19 depends on recites “non-parasitic, free-living flatworms in Phylum Platyhelminthes, or other forms thereof”. Therefore, there is insufficient antecedent basis for the limitation “said non-parasitic, free-living flatworms” in the claim.
Rejections Maintained
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 17-19 and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over ENAN (WO 2009/038599 A1) in view of SORACE (“Texas woman discovers horde of black worms known to carry dangerous parasite in backyard”, an electronic article obtained from URL: https://www.foxnews.com/science/texas-woman-black-lungworm-parasite, published 03 July 2019, obtained on 07 March 2026) and LI (CN113229290A).
Enan is primarily directed towards pest control compositions, blends, and formulations (abstract).
Regarding claims 17-18 and 27-28, Enan discloses pest control blends, including, in a synergistic combination, at least two ingredients that includes D-limonene (paragraph [0005]). Enan discloses that the compositions can be used to control including platyhelminthes (flat worms) (paragraph [0007]). Enan discloses that the compositions can include a stabilizer (paragraph [00008]). Enan discloses contacting the pest with the composition (paragraph [000033]). Enan discloses amount range of d-limonene of including 0.4% to 12.09% (Table 2, on page 157). Enan discloses that d-limonene is the odour constituent of citrus and is found in including citrus oils (paragraph [0000242]). Enan discloses that a surfactant is provided to facilitate mixture of the composition with water and includes sodium lauryl sulfate (SLS)(paragraph [0000261]). Enan discloses that the amount of the surfactant is between about 1% to about 99%, by weight, of the composition mixture (paragraph [0000260]). Enan discloses that the blend can include isopropyl alcohol (paragraph [0000708]) and amount of isopropyl alcohol includes between 0.5 and 3% (e.g., monohydric alcohol)(paragraph [0000711]).
Regarding claim 19, Enan discloses contacting the pest with the composition (paragraph [000033]). Enan discloses that the composition can be in the form of a spray (paragraphs [0000240] and [0000268]).
Regarding claim 26, Enan discloses treating including larvae (paragraph [00001152]). Therefore, it would have been prima facie obvious to treat other life stages of the target pest.
Enan does not specifically teach that the pest is New Guinea Flatworm (Platydemus manokwari) and that composition comprises a base and that the base is ammonium hydroxide. The deficiencies are made up for by the teachings of Sorace and Li.
Sorace is primarily directed towards New Guinea flatworm that carry dangerous parasite (See entire copy of the electronic article).
Regarding claims 1 and 27, Sorace teaches New Guinea flatworm that host rat lungworm, a nematode parasite (first page of the copy). Sorace teaches that the parasite could cause eosinophilic meningitis and severe gastrointestinal or central nervous system disease in humans (second page of the copy).
Li is primarily directed towards a pesticidal composition (page 2, first paragraph of the English translation).
Regarding claims 17-18 and 27, Li teaches a pesticidal composition (page 3, third paragraph of the English translation). Li teaches stabilizing agent and pH regulator to inhibit degradation of a pesticide (page 3, last paragraph of the English translation). Li teaches that pH value regulator is including ammonium hydroxide (page 4, last paragraph of the English translation). Li teaches that the amount of the pH regulator is 0.01-2% (e.g., wt%) (page 5, third and fourth paragraphs of the English translation).
It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to control flatworms including New Guinea flatworm (Platydemus manokwari) by contacting the flatworms with a composition by including spraying the composition, wherein the composition comprises at least two ingredients that includes D-limonene (e.g., degreaser solvent), a stabilizer and a pH regulator, isopropyl alcohol (e.g., monohydric alcohol) between 0.5 and 3% by weight, a surfactant including sodium lauryl sulfate that is in an amount of between about 1% to about 99% by weight; wherein the pH regulator is including ammonium hydroxide and is present in an amount of 0.01-2 wt%. The person of ordinary skill in the art would have been motivated to make those modifications in order to: 1) control other flatworms including New Guinea flatworm which can be harmful to humans because they are host to rat lungworm, as taught by Sorace, by applying the composition to New Guinea flatworm; and 2) obtain a composition for application that contains actives that are inhibited from degradation by including pH regulator including ammonium hydroxide along with a stabilizer, as taught by Li. The person of ordinary skill in the art would have reasonably expected success because Enan discloses pest control blends, including, in a synergistic combination, at least two ingredients that includes D-limonene (paragraph [0005]). Enan discloses that the compositions can be used to control including platyhelminthes (flat worms) (paragraph [0006]). Enan discloses that the compositions can include a stabilizer (paragraph [00008]). Enan discloses contacting the pest with the composition (paragraph [000033]). Enan discloses amount range of d-limonene of including 0.4% to 12.09% (Table 2, on page 157). Enan discloses that d-limonene is the odour constituent of citrus and is found in including citrus oils (paragraph [0000242]). Enan discloses that a surfactant is provided to facilitate mixture of the composition with water and includes sodium lauryl sulfate (SLS)(paragraph [0000261]). Enan discloses that the amount of the surfactant is between about 1% to about 99%, by weight, of the composition mixture (paragraph [0000260]). Enan discloses that the blend can include isopropyl alcohol (paragraph [0000708]) and amount of isopropyl alcohol includes between 0.5 and 3% (e.g., monohydric alcohol)(paragraph [0000711]). Sorace teaches New Guinea flatworm that host rat lungworm, a nematode parasite (first page of the copy). Sorace teaches that the parasite could cause eosinophilic meningitis and severe gastrointestinal or central nervous system disease in humans (second page of the copy). Li teaches a pesticidal composition (page 3, third paragraph of the English translation). Li teaches stabilizing agent and pH regulator to inhibit degradation of a pesticide (page 3, last paragraph of the English translation). Li teaches that pH value regulator is including ammonium hydroxide (page 4, last paragraph of the English translation). Li teaches that the amount of the pH regulator is 0.01-2% (e.g., wt%) (page 5, third and fourth paragraphs of the English translation).
Thus, the claimed invention as a whole is clearly prima facie obvious over the teachings of the prior art.
Response to Arguments
Applicant argues that the degreasing agent is provided at a sufficient concentration to cause the flatworm mucus sheath/coat to dissolve. Applicant argues that the combination of the degreasing agent with the surfactant and moderate to strong acidic or basic solution, with or without the addition of a monohydric alcohol, work in combination to provide a high degree of selective effectiveness in the control and removal of invasive flatworm species. Applicant argues that in contrast, Enan is specifically directed towards a composition for killing pests and provides a large list of ingredients or combinations of ingredients. Applicant argues that Enan also teaches a broad list of categories of pests. Applicant argues that Enan teaches that the function of the surfactant is to facilitate mixing of the composition with water, in contrast, the surfactant used in the instant claims is of a type and at the concentration that acts as a mucus coat dissolving/striping agent in conjunction with moderate to strong acid or base that induces metabolic collapse and death within the worm. Applicant argues that while Enan references several flatworms, Enan does not teach killing of non-parasitic, free-living flatworms, like the New Guinea flatworm. Applicant points to Appendix A and B to show that there are no known effective chemical means that do not harm other organisms common in their environment, to kill non-parasitic, free-living flatworms like the New Guinea flatworm. Applicant argues that Sorace simple describes that the New Guinea flatworm is a host of a parasite, the Rat Lungworm, and fails to teach or provide any guidance towards a method of killing the New Guinea flatworm. Applicant argues that Li insecticidal composition directed towards controlling insects and not flatworms which are in a different animal phylum to insects. Applicant argues that Li teaches including ammonium hydroxide for preventing degradation of the pesticide which is different from the use of ammonium hydroxide in the composition in the instantly claimed method.
Applicant's arguments filed on 11 June 2026 have been fully considered but they are not persuasive. In response, Enan discloses that the compositions can be used to control including platyhelminthes (flat worms) (paragraph [0006]). Enan discloses that the compositions can include a stabilizer (paragraph [00008]). Enan discloses contacting the pest with the composition (paragraph [000033]). Enan discloses amount range of d-limonene of including 0.4% to 12.09% (Table 2, on page 157). Enan discloses that d-limonene is the odour constituent of citrus and is found in including citrus oils (paragraph [0000242]). Enan discloses that a surfactant is provided to facilitate mixture of the composition with water and includes sodium lauryl sulfate (SLS)(paragraph [0000261]). Enan discloses that the amount of the surfactant is between about 1% to about 99%, by weight, of the composition mixture (paragraph [0000260]). Enan discloses that the blend can include isopropyl alcohol (paragraph [0000708]) and amount of isopropyl alcohol includes between 0.5 and 3% (e.g., monohydric alcohol)(paragraph [0000711]). Sorace teaches New Guinea flatworm that host rat lungworm, a nematode parasite (first page of the copy). Sorace teaches that the parasite could cause eosinophilic meningitis and severe gastrointestinal or central nervous system disease in humans (second page of the copy). Li teaches a pesticidal composition (page 3, third paragraph of the English translation). Li teaches stabilizing agent and pH regulator to inhibit degradation of a pesticide (page 3, last paragraph of the English translation). Li teaches that pH value regulator is including ammonium hydroxide (page 4, last paragraph of the English translation). Li teaches that the amount of the pH regulator is 0.01-2% (e.g., wt%) (page 5, third and fourth paragraphs of the English translation). Therefore, it light of the disclosure of Enan and the teachings of Sorace and Li, it would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to control flatworms including New Guinea flatworm (Platydemus manokwari) by contacting the flatworms with a composition by including spraying the composition, wherein the composition comprises at least two ingredients that includes D-limonene (e.g., degreaser solvent), a stabilizer and a pH regulator, isopropyl alcohol (e.g., monohydric alcohol) between 0.5 and 3% by weight, a surfactant including sodium lauryl sulfate that is in an amount of between about 1% to about 99% by weight; wherein the pH regulator is including ammonium hydroxide and is present in an amount of 0.01-2 wt%. The person of ordinary skill in the art would have been motivated to make those modifications because: 1) it is obvious to select known compounds to meet known requirements (e.g., D-limonene as one of the active ingredients, isopropyl alcohol as one of the active ingredients and sodium lauryl sulfate as a surfactant) because the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (e.g., See MPEP 2144.07); 2) Enan teaches that the composition can be used for including platyhelminthes (flat worms) and Sorace teaches that New Guinea flatworm are a problem because they host rat lungworm, a nematode parasite that could cause eosinophilic meningitis and severe gastrointestinal or central nervous system disease in humans, which one would select as a specific platyhelminthes flatworm to control to avoid causes of eosinophilic meningitis and severe gastrointestinal or central nervous system disease in humans; and 3) to inhibit degradation of the pesticide by including stabilizing agent and pH regulator to inhibit degradation of a pesticide, as taught by Li.
Applicant is noted that the recitation “non-parasitic, free-living flatworms in Phylum Platyhelminthes, or other forms thereof” (emphasis added) and “non-parasitic, free-living flatworms, or other forms thereof, in Phylum Platyhelminthes”, respectively, are interpreted to not be limited to just non-parasitic, free-living flatworms in phylum Platyhelminthus due to the recitation of “or other forms thereof”.
Although the combination of Enan, Sorace and Li do not specifically teach the selectively controlling or killing flatworms in Phylum Platyhelminthes, the claimed method applying a composition comprising D-limonene (e.g., degreasing solvent), a surfactant including sodium lauryl sulfate, alcohol including isopropyl alcohol (e.g., monohydric alcohol), and ammonium hydroxide to New Guinea flatworm (e.g., non-parasitic, free-living flatworms in Phylum Platyhelminthes) (paragraphs [0005], [0007], [00008], [000033], [0000261] and [0000708] of Enan; first page and second page of the copy Sorace; page 3, third paragraph, last paragraph, and page 4, last paragraph of the English translation of Li) appears to be the same as the prior art, absent a showing of unobvious differences. The office does not have the facilities and resources to provide the factual evidence needed in order to establish that the composition of the prior art does not possess the same material, structural and steps-like characteristics of the claimed composition. In the absence of evidence to the contrary, the burden is on Applicant to prove that the claimed composition is different from that taught by the prior art and to establish patentable differences. See In re Best 562F .2d 1252, 195 USPQ 430 (CCPA 1977) and Ex parte Gray 10 USPQ 2nd 1992 (PTO Bd. Pat. App. & Int. 1989).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.). MPEP 2112.01 (I).
Further, in favor of compact prosecution, the instant claims recite “a degreasing solvent, a surfactant, an acid or a base, and a monohydric alcohol”, Applicant has not provided evidence that commensurate in scope with the claims (e.g., no amounts and broader species of ingredients in claim 17) that show that the composition in the instant method can selectively control flatworms in Phylum Platyhelminthes without killing other animal species.
Regarding the prior art teach different reasons to include specific ingredients, Applicant is reminded that “[t]he fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) “would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art.” 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991). In the instant case, Enan provides a reason to include surfactants including sodium lauryl sulfate for mixing with water and Li provides a reason to include pH regulator including ammonium hydroxide to inhibit degradation of a pesticide.
Thus, for the reasons of record and for the reasons presented above claims 17-19 and 26-28 are rejected under 35 U.S.C. 103(a).
Conclusion and Correspondence
No claims are allowed.
THIS ACTION IS MADE FINAL.
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN P NGUYEN whose telephone number is (571)270-5877. The examiner can normally be reached Monday-Friday 10am-6pm EST.
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/JOHN P NGUYEN/
Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
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