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 .
Claims 1-21 are pending in this application.
Election
Applicant's election with traverse of the species, which is a botanical pesticide composition comprising cedarwood oil, clove oil, and sesame oil, in the reply filed on 11/4/2025 is acknowledged. The traversal is on the ground(s) that CN 1058628 is not analogous reference because CN 1058628 is allegedly a liquid medicinal composition, whereas the claimed invention is a pesticide. This argument is unpersuasive. First, the composition of CN 1058628 is for repelling mosquitoes and providing mosquito itch relief (see e.g., abstract). The claimed “pesticide” clearly reads on repelling insects (specification paragraphs 32, 65, 232, 235, 238, 239). Second, the composition of CN 1058628 has the killing effect of a pyrethroid insecticide (abstract ; last line before the claims; claim 3, which contains the pyrethroid tetramethrin). Third, IN 202041056347 discloses a pest repellent composition that contains 0.19% cedarwood oil, 0.29% clove (leaf and bud) oil, and 3.22% sesame oil (pages 5-8; claim 2; abstract). Thus, the technical feature of a botanical pesticide composition comprising a Juniperus extract and/or a Cedrus extract (e.g., cedarwood oil), a Syzygium extract (e.g., clove oil), and a horticultural oil (e.g., sesame oil) is not a special technical feature as it does not make a contribution over the prior art.
For these reasons, Applicant’s traversal of the election is unpersuasive. The requirement is still deemed proper and is therefore made FINAL.
Claims 1-21 will presently be examined to the extent that they read on the elected subject matter.
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.
35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for sesame seed oil comprising low, natural content of sesamolin, does not reasonably provide enablement for 5-25% sesamolin. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to obtain the invention commensurate in scope with these claims.
The breadth and nature of the invention: claims 3 and 10 recite or require sesame seed oil that comprises 5-25% sesamolin. The problem with such claim feature is that sesame seed oil does not contain that much sesamolin.
The following documents establish the state of the prior art regarding sesamolin content in sesame oil. Namiki et al. (US 4,774,343) disclose that sesame seeds contain about 0.15-0.3% sesamolin and sesame seed oil contains about 0.3-0.6% sesamolin (column 2, lines 25-28). Lee (US 2011/0004008) discloses that sesame oil contains 0.65% sesamolin (paragraph 37). Rangkadilok et al. disclose that various different sesame oils contained 0.3-0.74 mg or sesamolin per g of sesame oil (page 729, left column). In summary, prior art content of sesamolin in sesame seed oil is about 1% or less, whereas the claims recite or require at least 5 times or up to 25 times that amount.
The level of one of ordinary skill in this art is high, and the level of predictability is also high in that it is highly predictable that sesame oil would not contain the claimed concentration of sesamolin.
There is no guidance, direction, or working example provided by the inventor as to sesame oil that comprises 5-25% sesamolin, wherein sesame oil is not expected to contain such high concentration of sesamolin.
Therefore, the quantity of experimentation needed to obtain the invention of claims 3 and 10 based on the content of the disclosure would be undue.
For these reasons, claims 3 and 10 fail to find adequate enabling support from the disclosure for sesame seed oil comprising 5-25% sesamolin.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 16 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 16 recites “at least about every one week” (emphasis added) and other variations of “at least about [ ].” The concomitant recitation of “at least” and “about” is indefinite claim language under the facts of this application. The phrase “at least” sets the bar which the spraying frequency should not go below, but “about” makes that unclear. Therefore the claim is ambiguous and unclear.
35 USC 102/103
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 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.
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, 5, 6, 8, 13-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over IN 202041056347.
IN 202041056347 discloses a pest repellent composition that contains 0.19% cedarwood oil, 0.29% clove (leaf and bud) oil, and 3.22% sesame oil (pages 5-8; claim 2; abstract). Said composition also contains 0.19% lemon oil (page 7), which naturally possesses preservative and antimicrobial properties. Spraying to skin, hair (page 9), curtains, bed spreads, bed sheets, and napkins (page 10) is disclosed.
It is noted that scope of “pesticide” in Applicant’s disclosure includes insect repellents – see instant specification paragraph 65.
Cedarwood oil is an extract of Juniperus and/or Cedrus (see instant specification paragraph 119). Clove is Syzygium aromaticum, so clove oil is an extract of Syzygium. Sesame oil is oil from seeds of sesame (see instant specification paragraph 99). See also McBrayer (US 4,442,092)1, which is cited to establish sesame oil is sesame seed oil (column 2, lines 5-6).
The claims are thereby anticipated.
In the alternative, the claimed botanical pesticide composition would have been obvious because IN 202041056347 discloses a pest repellent composition that contains the claimed extracts and/or oils. The ordinary skilled artisan would have found it obvious that sesame oil is sesame seed oil. Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited reference.
35 USC 103
Claims 1-2, 4-9, and 11-21 are rejected under 35 U.S.C. 103 as being unpatentable over Calderas et al. (US 2023/0042086; hereinafter, Calderas) in view of Huber et al. (US 2023/0137223; hereinafter, Huber), Xavier Antony et al. (US 2004/0170729; hereinafter, Xavier Antony), Jack et al. (US 9,326,524; hereinafter, Jack), Eagleson (US 2,202,145), and Henrich et al. (US 2005/0049230; hereinafter, Henrich).
Calderas discloses a pesticidal composition comprising the following ingredients;
(a) about 40-95 wt% water;
(b) about 0.01-15 wt% potassium oleate;
(c) about 1-45 wt% isopropyl alcohol;
(d) optionally, about 0.01-15 wt% sodium bicarbonate;
(e) optionally, about 0.01-1 wt% citric acid;
(f) about 1-15 wt% of one or more active ingredients such as cedarwood oil, clove oil, thyme oil, sesame oil, cinnamon oil, peppermint oil, spearmint oil, pennyroyal, i.e., Mentha pulegium oil (paragraphs 11, 36-39).
(g) optionally, about 0.02-4% of a preservative that has antimicrobial preservative properties, which inhibit growth of bacteria, fungi, or mold, e.g., calcium propionate, potassium sorbate (paragraphs 61-62).
See paragraphs 5-11, 35-42, 61-62; claim 1. Such composition is a response to “consumers who are looking for effective and natural ways to control a variety of arthropods” (paragraph 13). Table 5 discloses formulation examples containing cedarwood oil, clove oil, and thyme oil (paragraph 107). For example, formulation 27 contains, inter alia, 1.6% cedarwood oil Texas, 0.51% clove oil, 0.47% thyme oil, and 0.1% potassium sorbate. Calderas teaches further incorporation of a surfactant such as sodium lauryl sulfate (paragraph 49). Method of controlling arthropod pests with Calderas’s composition is disclosed (paragraph 84). Mosquitoes and flies are disclosed as insect pests (paragraph 2). Direct application to food contact surfaces (paragraph 13) or pests by spraying is disclosed (paragraph 27).
Huber (US 2023/0137223) discloses a blend of essential oils for repelling, killing and/or resisting effect against one or more pests (claim 1), wherein the essential oils include, inter alia, cedarwood oil, clove oil, thyme oil, and peppermint oil (claim 15; paragraph 18), and concentrations of the essential oil blend can range from about 1-75 wt% (claim 7). Combination of clove oil, sesame oil, and geraniol is exemplified (page 16, Example 43). Suitable surfactants to use with the essential oils include 1-50 wt% of sodium lauryl sulfate, sodium laureth sulfate, or soaps, i.e., fatty acid metal salts (paragraph 13, 45). Spray application on, around, or near various locations such as homes, apartment buildings, hospitals, hotels, poultry facilities, food processing plants, kennels, kitchens, schools, golf courses, and lawns is disclosed for repelling, killing, and/or resisting effects of pests (paragraphs 22, 55). Pests to be controlled include Aedes species, Anopheles species, and Culex species (paragraphs 59, 60).
Xavier Antony (US 2004/0170729) discloses that propionic acid combined with at least one essential oil is a mold inhibitor (claim 1). Non-limiting examples of suitable essential oils include clove oil, thyme oil, and cinnamon oil (paragraph 5).
Jack (US 9,326,524) is cited to establish that thyme oil naturally contains 20-54% thymol (column 7, lines 1-2).
Eagleson (US 2,202,145) discloses that sesame oil acts as a synergist when combined with insect toxins (page 1, left column, lines 24-32), wherein “using sesame oil as a synergist may be varied in a number of ways” (page 1, right column, lines 29-30). Insecticides such as pyrethrin, rotenone, nicotine-bearing powders, inorganic insecticides, “and the like” are disclosed (page 1, left column, lines 24-26; page 1, right column, lines 40-44).
Henrich (US 2005/0049230) discloses that sesame oil is an insecticide synergist that has the property of increasing farnesoid X-activated receptor (FXR)-dependent transcription and/or increasing or potentiating EcR-mediated transcription (paragraph 145; claims 52-53). Cedarwood oil, clove oil, and sesame oil are also shown to elicit increased FXR activity (page 15, Table 5).
Calderas does not explicitly exemplify combining cedarwood oil, clove oil, and sesame oil. However, Calderas exemplifies pesticidal mixtures that contain cedarwood oil, clove oil, and thyme oil, and Calderas further teaches incorporation of sesame oil, cinnamon oil, and sodium lauryl sulfate (see above discussion). Incorporation of sesame oil is also suggested by its known function as a synergist of insecticides (Eagleson; Henrich). Henrich teaches broad applicability of sesame oil as an insecticidal synergist due to its property of increasing FXR-dependent transcription and/or increasing or potentiating EcR-mediated transcription (claims 52-53).
The ordinary skilled artisan would have been motivated to arrive at the claimed invention because of the advantage of providing an effective and natural pesticide that is synergized by sesame oil (Calderas, paragraph 13; Eagleson; Henrich).
Claims 4 and 11 recite thyme oil (i.e., Thymus extract) comprising 25-75% thymol. The ordinary skilled artisan would have known that the pesticidally active thyme oil, as disclosed by Calderas, naturally contains 20-54% thymol (Jack), so this claim feature would have been obvious. Regarding claim 4 and its recitation of 20-60% menthol in a Mentha extract, it is noted that selection of such extract is not required by the claim.
Claim 12 requires 0.1-25 v/v% propionic acid and 0.1-25 v/v% sodium lauryl sulfate. These features are discussed below.
0.1-25 v/v% sodium lauryl sulfate: Calderas teaches incorporation of additional anionic surfactant such as sodium lauryl sulfate (paragraph 49). The fatty acids/salts that are already in Calderas’s composition “are considered anionic surfactants” and they may comprise 0.01-15 wt% of the composition (paragraph 47). Thus, it would have been obvious to the ordinary skilled artisan to arrive at the claimed amounts of sodium lauryl sulfate for its additional anionic surfactant functionality.
0.1-25 v/v% propionic acid: Calderas teaches incorporation of about 0.02-4% of a preservative that has antimicrobial preservative properties, which inhibit growth of bacteria, fungi, or mold (paragraphs 61-62). Xavier Antony discloses that propionic acid combined with at least one essential oil is a mold inhibitor (claim 1). Thus, it would have been obvious to the ordinary skilled artisan to arrive at the claimed amounts of propionic acid for its mold inhibiting preservative functionality.
Claims 13-20 are directed to a method for controlling an insect population by spraying the composition of claim 4, which encompasses a composition comprising cedarwood oil + clove oil + sesame oil + thyme oil.2 As stated previously, Calderas suggests such combination of essential oils for pesticidal use, and Calderas teaches direct application to food contact surfaces (paragraph 13) or pests by spraying (paragraph 27). Huber is suggestive of applying essential oil blend pesticides to various surfaces that is in contact or available for contract by insects to repel or kill insects.
Claims 15-17 recite repeated spraying onto a surface, including at least about every one week to every six weeks, or every 7, 14, 21, 28, or 35 days. Such repeated applications would have been obvious to the ordinary skilled artisan, who would have been motivated to monitor applied surfaces such as buildings, industrial plants, and golf courses to determine persistence and duration of efficacy, which can be affected by environmental factors such as rain runoff.
Claims 18-20 are directed to controlling mosquitos, including Aedes species, Anopheles species, or Culex species such as Aedes aegypti, Anopheles freeborni, or Culex pipiens. Calderas and Huber are evidence that the essential oils used in the claimed invention would have been expected to possess insecticidal and/or insect repelling effect against such mosquitos. Calderas discloses broad pesticidal effect of claim-recited essential oils against arthropods, and Huber discloses insecticidal and/or insect repelling effect of essential oils against Aedes species, Anopheles species, or Culex species, although specific species are not expressly disclosed. Upon being taught efficacy against Aedes species, Anopheles species, or Culex species, the ordinary skilled artisan would have had reasonable expectation of efficacy against specific species such as those recited in claim 20.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Applicant’s specification results have been given due consideration in this regard, but they were deemed insufficient for the following reasons.
(1) Not tested against the closest prior art
The closest prior art is Calderas’s example 27 in Table 5, which contains
1.6 wt% cedarwood oil Texas;
0.51 wt% clove oil; and
0.47 wtr% thyme oil.
Applicant did not compare against the closest prior art composition. Moreover, the ordinary skilled artisan would have expected synergism by adding sesame oil. In other words, there is an expectation of synergized activity when sesame oil is added to essential oil blends, so asserted evidence of nonobviousness must be evaluated in light of such expected synergism.
(2) Evidence is not commensurate in scope with the claimed subject matter
Tested compositions in the specification that read on the elected species under examination here used the following percentages of cedarwood oil, clove oil, and sesame oil: 10 v/v% cedarwood oil + 5 v/v% clove oil + 5 v/v% sesame oil. Even if all specification data could be interpreted in Applicant’s favor as establishing unexpected results (this is not conceded), such data would not be sufficient for the entire scope of the claims. Rejected claims are far broader than the tested data – all rejected claims here are open to any percentage and any proportion of cedarwood oil, clove oil, and sesame oil. The ordinary skilled artisan would not accept one specific combination of 10 v/v% cedarwood oil + 5 v/v% clove oil + 5 v/v% sesame oil to be predictive of supposedly similar unexpected activity when concentrations and proportions are significantly different. For example, Figure 1C shows that 10 v/v% cedarwood oil (C) is greater than 40% effective against Aedes vexans at day 14. Because greater concentration strength is expected to increase efficacy (greater potency, less volatilization, more of the sample remains at day 14), 20% C, 30% C, 50% C, or even 70% C would be expected to show greater mosquito deaths at day 14. But no data is provided for such concentrations of C. At greater concentration strengths, a component such as C could be so effective that no synergism could be shown – for example, if 50% C were 100% effective, it would not be possible for A (clove oil) + B (sesame oil) + C (cedarwood oil) to be synergistic or unexpectedly insecticidal. This is the problem with testing only one concentration of a blend when the claims are open to all concentrations and all proportions of blend components. For these reasons, Applicant’s evidence of nonobviousness, if any, is not commensurate in scope with that of the claimed subject matter. In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Lindner, 173 USPQ 356, 358 (CCPA 1972).
For the foregoing reasons, all claims must be rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 This is permissible use of another reference in a 102 rejection to establish that the sesame oil disclosed in IN 202041056347 is sesame seed oil.
2 It is noted again that claim 4 does not actually require both Mentha extract and Thymus extract. Claim 4 is merely descriptive of a Mentha extract and/or Thymus extract, if present. Claim 4 depends on claim 2, which requires a Mentha extract, a Thymus extract, or both Mentha extract and Thymus extract.