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 .
Claim Status
Claims 1-18 are currently pending.
Claims 15-18 are withdrawn.
Claims 1-14 are being examined on the merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
This application claims the benefit of PRO 63585574 (09/26/2023) as reflected in the filing receipt issued October 10, 2023.
Election/Restriction
Applicant's election with traverse Group I (claims 1-14) in the reply filed on April 02, 2026 is acknowledged. The traversal is on the ground(s) that there is no undue search or examination burden.
This is not found persuasive because each group is classified differently and requires a different search.
Claims 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 20, 2026.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
There is not an Information Disclosure Statement provided.
Claim Objection(s) / Rejection(s) Withdrawn
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 10/20/25) that are not repeated and/or maintained in the instant Office action are withdrawn.
New / Maintained Claim Rejection(s)
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 10 and 12 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
Claim 10 states “the pesticide formulation of claim 1, further comprising an environment in which the pesticide composition is used, wherein the environment is one of a field, lawn, wooded area, forest, jungle, swamp, and body of water”, it is unclear because how can the pesticide formulation comprise an environment.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation at least one of a filler, an extender, a wetting agent, a disintegrant, and a surfactant, and the claim also recites one of alcohol, water, dextrin, calcium carbonate, lactose, propylene glycol, liquid paraffin, and saline. which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
New / Maintained Claim Rejection(s)
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.
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.
Claims 1-14 are rejected under 35 U.S.C 103 as being unpatentable over Frank et al (WO2022140639A1; Published on June 30,2022; filed on December 22, 2021) in view of Hsinhung et al (US6231865B1; Published on May 15, 2001).
Claim 1, drawn to, A pesticide formulation used to control pests, the pesticide formulation comprising: a plurality of nanoparticles; and chitosan; wherein each nanoparticle in the plurality of nanoparticles comprises garlic oil, clove oil, and thyme oil, the garlic oil, clove oil, and thyme oil being at predetermined concentrations; wherein the each of the nanoparticles in the plurality of nanoparticles are wrapped in the chitosan.
Frank et al throughout teaches a chitosan coated minicell capable of encapsulating botanical oils.
For claim 1 and 14: Frank teaches a composition comprising a minicell (which reads on the nanoparticles of claim 1) and a bioactive agent having insecticidal activity, wherein the bioactive agent is selected from a botanical ingredient, an essential oil, a saponin, and combinations thereof (claim 1). Frank further discloses that the essential oils are selected from group consisting of … thyme oil…clove oil… garlic oil… rosemary oil…peppermint oil…cinnamon oil (page 18, paragraph 75, and claim 22). Reference also teaches that the minicell is coated with chitosan (page 5, paragraph 19).
For claims 2 and 3: Frank teaches that further embodiments, can be also selective other agricultural pesticides… fungicides (page 54, paragraph 251). References also discloses that pests included insects, nematodes, or any organism causing harm (page 8, paragraph 33).
For claims 4 and 9: Frank teaches that coating through ionic gelation reaction, where the chitosan solution was mixed with essential oil loaded minicells under continuous stirring… and purified by centrifugation (page 61, paragraph 286), which reads on the claims.
For claim 6: Frank teaches botanical oils non-limiting examples of essential oils including spearmint oil (page 18, paragraph 75).
For claim 7: Frank teaches the bioactive agent is selected from a botanical ingredient, an essential oil, a saponin, and combinations thereof (claim 1). The specification defines “absolute botanical” as less volatile, more pure essential oil (paragraph 0439).
For claim 8: Frank demonstrates in figure 2 particle diameter of various sizes for example 0.2 µm (conversion is 200nm) (page 79).
For claim 10: Frank teaches the composition can be used to treat crops (page 39, paragraph 171). Reference further discloses that examples include lawns and trees (page 39, paragraph 174).
For claims 11 and 12: Frank teaches that the insecticidal composition comprises a surfactant (claim 10). Reference also teaches various alcohols (page 31, paragraph 139), which reads on the claims.
For claim 13: Frank teaches the insecticidal composition… wherein said essential oil comprises … geraniol (claim 8).
Frank does not teach the oil combination and concentration as recited in claims 1 and 5.
However, Hsinhung through teaches the synergistic effect of garlic oil in combination with essential oils.
For claim 1: Hsinhung teaches that combining garlic extract and essential oils such as thyme oil, garlic oil, and clove oil ( abstract) have a synergistic effect which significantly increases the insecticide/fungicide effects (abstract).
For claim 5: Hsinhung teaches that the combination of oils has ratio of garlic to essential oil garlic extract to said oil is between 5%-98% garlic extract to 95%-2% oil (claim 1 step b), discloses that essential oil concentration can be up to 98% of the oil combination.
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate garlic oil, clove oil, and thyme oil in the composition taught by Hsinhung in the chitosan wrapped nanoparticle taught by Frank for the pesticide formulation because it is routine and known that garlic oil in combination with other essential oils, such as the listed above, produce synergistic effects. In addition, because both the Frank and Hsinhung references teach pesticide compositions with various botanical/essential oils at a range concentrations managing insects/pests, it would have been obvious to one skilled in the art to optimize the concentration of each of the botanical oils as desired in the chitosan wrapped nanoparticle to achieve effective agricultural and environmentally friendly pesticides/insecticides.
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since Frank reference has demonstrated a chitosan wrapped nanoparticle pesticide formulation with botanical oil for controlling various insects in multiple environments is routine and known in the art.
New / Maintained Claim Rejection(s)
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 1-14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-14 of copending Application No. 18/484,622 (‘622) (reference application) in view of Hsinhung et al. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim compositions for controlling pests comprising nanoparticles, botanical/essential oil(s), encapsulated in chitosan.
Instant claim 1, drawn to, a pesticide formulation used to control pests, the pesticide formulation comprising: a plurality of nanoparticles; and chitosan; wherein each nanoparticle in the plurality of nanoparticles comprises garlic oil, clove oil, and thyme oil, the garlic oil, clove oil, and thyme oil being at predetermined concentrations; wherein the each of the nanoparticles in the plurality of nanoparticles are wrapped in the chitosan.
Reference claim 1, drawn to, a pesticide formulation used to control pests, the pesticide formulation comprising: a plurality of nanoparticles; and chitosan; wherein each nanoparticle in the plurality of nanoparticles comprises garlic oil, castor oil, lemongrass oil, and cedarwood oil, the garlic oil, castor oil, lemongrass oil, and cedarwood oil being at predetermined concentrations; wherein the each of the nanoparticles in the plurality of nanoparticles are wrapped in the chitosan.
Both the reference application ‘622 (claim 9) and instant application (claim 8) also claim further comprising a chitosan solution, wherein the chitosan used to encapsulate the nanoparticles is in the chitosan solution.
Both the reference application ‘622 (claim 9) and instant application (claim 5) also claim “comprises nanoparticles with a diameter of 20-200 nm”.
Both the reference application ‘622 (claim 10) and instant application (claim 9) also claim “nanoparticles are created using a centrifuge”.
Application ‘622 does not claim nanoparticles comprising “clove oil, and thyme oil”.
However, Hsinhung through teaches the synergistic effect of garlic oil in combination with essential oils.
For claim 1: Hsinhung teaches that combining garlic extract and essential oils, such as lemongrass oil, cedarwood oil, garlic oil, and castor oil ( abstract) have a synergistic effect which significantly increases the insecticide/fungicide ( abstract).
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate garlic oil, lemongrass oil, cedarwood oil, and castor oil in the composition taught by Hsinhung in the chitosan wrapped nanoparticle taught by Frank for the pesticide formulation because it is routine and known that garlic oil in combination with other essential oils, such as the listed above produce synergistic effects. In addition, because both the Frank and Hsinhung references teach pesticide compositions with various botanical/essential oils at a range concentrations managing insects/pests, it would have been obvious to one skilled in the art to optimize the concentration of each of the botanical oils as desired in the chitosan wrapped nanoparticle of the claimed in Application 18/484,622.
This is a provisional nonstatutory double patenting rejection.
Answer to Argument
Since all previous rejections have been withdrawn, and all new rejections are added, applicants’ arguments are moot.
Conclusion
No claims are allowed.
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/J.A.E./ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616
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