DETAILED ACTION
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 (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.
Status of the Claims
Claims 1-34 are pending and under consideration in this action.
Claim Objections
Claims 1 and 11-17 are objected to because of the following informalities: each of the claims include a period at the end of each component (e.g., “i.”, “ii.”, “iii.”, etc.). Each claim must end with a period, and periods may not be used elsewhere in the claims except for abbreviations. See MPEP 608.01(m).
Claims 6, 7, 11-16, and 25 are objected to because of the following informalities: “gaur gum” should be “guar gum”.
Claims 7 and 25 are objected to because of the following informalities: “guar gum” is recited twice.
Claims 6, 7, 24, and 25 are objected to because of the following informalities: “bee wax” should be “beeswax”.
Claims 7 and 28 are objected to because of the following informalities: “poly sorbate” should be “polysorbate”.
Claim 17 is objected to because of the following informalities: on page 13 of the claim set, 4 lines from the bottom of the page, “%” is missing for the percentages of Acacia concinna”. “Ionic” in step (b) should be “ionic emulsifiers”. In step (d), “close mixing vessel” should be “closed mixing vessel”. In step (d), “homogenizing the mix” should be “homogenizing the mixture”.
Claim 21 is objected to because of the following informalities: the claim needs a period at the end.
Appropriate corrections are required.
Applicant is advised that should claim 1 be found allowable, claims 31 and 33 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claims 31 and 33 both depend from claim 1, which recites that the composition is a “bio-insecticidal, bio-stimulant composition for controlling pests”. As the preamble of claim 1 recites both the insecticidal to control pests and bio-stimulating effects, thus improving plant both and crop yield, despite a difference in wording, both claims 31 and 33 encompass the same scope as claim 1.
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 1-8 and 26-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a natural phenomenon) without significantly more. Claims 1, 26, and 27 recite combinations of botanical extracts, which are all naturally occurring (P.G. Pub., Spec., para.0010, 0272). The claims also include an organic emulsifier, an ionic emulsifier, a non-ionic emulsifier, and carrier oils, which as evidenced by claims 6-8, may also be selected from naturally occurring products (e.g., aloe vera extract (claim 6), aqueous extract of Indian soapberry, beeswax, guar gum, (claim 7), water (claim 8)). Claims 2-5 are directed to particular amounts of the organic emulsifier, an ionic emulsifier, a non-ionic emulsifier, and carrier oils. Furthermore, the preamble of claim 1 recites that the composition is a bio-insecticidal, biostimulant composition. The instant Specification discloses that “bio-insecticide” refers to compositions extracts from plants that have insecticidal activity, thus being naturally occurring products (P.G. Pub., Spec., para.0010, 0272).
With regards to the specific mixtures of the botanical extracts, there is no indication in the Specification that the claimed mixtures result in any characteristics (structural, functional, or otherwise) that are different from each naturally occurring counterpart. As discussed above, as evidenced by claims 6-8, the additional components (organic emulsifier, ionic emulsifier, non-ionic emulsifier, and carrier oils) may be selected from naturally occurring products. Furthermore, the claims as currently written do not recite that the additional components are in an effective amount to result in any characteristics (structural, functional, or otherwise) that are different from each naturally occurring counterpart.
Thus, the compositions as claimed do not have markedly different characteristics from what occurs in nature, and is a “product of nature” exception. Thus claims do not include any additional features that could add significantly more to the exception.
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 1-34 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.
With regards to Claim 1, the claim recites “such as” for each of the components (i)-(xxviii). The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Further regarding Claim 1, component (xii) includes β and ɣ in parentheses. The parentheses raises the question as to which term is required by the claim because the subject matter in the parentheses is not identical in scope. Essentially, the claims use both narrow and broad limitations. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
Further regarding Claim 1, each of components (ii)-(xxviii) recite “said botanical source”. Because there are multiple botanical sources preceding each of components (ii)-(xxviii), it is unclear which botanical source each recitation of “said botanical source” is referring to.
Further regarding Claim 1, as currently written, components (i)-(xxviii) are not required be the specific extract of each component, but also appear to encompass incorporating a single compound that would be found in such extracts. It is noted that there are overlapping compounds for components (i)-(xxviii). For example, 1,8-cineole is recited in both component (i) and component (x). Similarly, certain compounds may serve as both an organic emulsifier and nonionic emulsifier. It is unclear if the single compound can satisfy the requirement of multiple components (so long as it is in an amount within the range for the sum of both components), or if 32 distinct compounds are required for claim 1.
With regards to Claims 1-5 and 11-17, the claims recite concentrations for each component. However, the concentrations as currently written are indefinite because they are written as percentages without indication of whether the percentages are by weight, by volume, etc., and what the percentages are based off of (e.g., based on the composition).
Claims 2-34 are subsequently rejected as they incorporate the limitations of claim 1 and do not rectify the issues discussed above.
With regards to Claim 6, the claim appears to recite a Markush group for the organic emulsifier. However, the claim recites “said organic emulsifier is selected from the group comprising.” It is unclear what other organic emulsifiers are encompassed by the recited group. Proper Markush group language is “selected from the group consisting of…and….”
Further regarding Claim 6, the claim recites “and the like”. The phrase and "the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
With regards to Claim 7, the claim appears to recite a Markush group for the ionic and non-ionic emulsifier. However, the claim recites “said ionic and non-ionic emulsifier are selected from the group comprising.” It is unclear what other ionic and non-ionic emulsifiers are encompassed by the recited group. Proper Markush group language is “selected from the group consisting of…and….”
Further regarding Claims 7 and 25, the claim is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
Here, the claim recites a single grouping for both ionic and non-ionic emulsifiers, which are not alternatives, functionally equivalent, or share a single structural similarity.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Further regarding Claim 7, the claim recites “and the like”. The phrase and "the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
With regards to Claim 8, the claim appears to recite a Markush group for the carrier oils. However, the claim recites “said carrier oils are selected from the group comprising.” It is unclear what other carrier oils are encompassed by the recited group. Proper Markush group language is “selected from the group consisting of…and….”
Further regarding Claim 8, the claim is additionally rendered indefinite because the group further includes water, which is not an oil. Thus, it is unclear what is an is not encompassed by the term “carrier oil” is compound that are not oils are encompassed by the claim.
Claim 9 recites the limitation "said composition has a particle size" in line 1. There is insufficient antecedent basis for this limitation in the claim because there is no previous recitation that the composition is in the form of a particle or includes particles.
With regards to Claim 17, the phrases “such as” in step (a) and “preferably” in steps (b)-(e) render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Further regarding Claim 17, as currently written, step (a) recites “extracting 0.001-35% of….” It is unclear if the step is intended to recite that only a particular percentage of the botanical source is extracted, or if the percentage is intended to be the concentration that each extract/component is to be mixed in as it appears to say in step (b).
Further regarding Claim 17, step (a) recites “said botanical source” after each botanical. Because multiple botanical sources are recited, it is unclear which botanical source each recitation of “said botanical source” is referring to.
Further regarding Claim 17, on page 13 of the claim set, line 10 includes parentheses following “carotenoids.” The parentheses raises the question as to which term is required by the claim because the subject matter in the parentheses is not identical in scope. Essentially, the claims use both narrow and broad limitations. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
Further regarding Claim 17, as currently written, each component recited in step (a) is not required be the specific extract of each component, but also appear to encompass incorporating a single compound that would be found in such extracts. It is noted that there are overlapping compounds for each component. For example, 1,8-cineole is recited in both Thymus vulgrais and Cinnamomum camphora. It is unclear if the single compound can satisfy the requirement of multiple components (so long as it is in an amount within the range for the sum of both components), or if 28 distinct compounds are required for claim 17 step (a).
Further regarding Claim 17, step (d) recites “towards the bottom of vessel”. The phrase is subjective and does not clearly set forth the metes and bounds of the claim. It is unclear how close to the bottom of the vessel would and would not be encompassed by “towards the bottom” of vessel.
Further regarding Claim 17, step (d) recites “the particle size” at the end of the step. There is insufficient antecedent basis for this limitation in the claim because there is no previous recitation of forming a particle.
Further regarding Claim 17, step (f) recites “high-pressure homogenization”. The phrase is subjective and does not clearly set forth the metes and bounds of the claim. It is unclear what pressures are and are not encompassed by the term “high” pressure.
Further regarding Claim 17, step (g) recites “achieve desired filtration”. The term “desired” is subjective and does not clearly set forth the metes and bounds of the claim. What is “desired” to one person may not necessarily be “desired” to another.
Further regarding Claim 17, step (h) recites “the final product”. There is insufficient antecedent basis for this limitation in the claim. There is no previous indication of what the final product should be, and thus is unclear what “the final product” is referring to (e.g., whatever passes through the filter, just the particles, the particles dispersed in a carrier, etc.) and thus unclear as to what should be recovered.
With regards to Claim 18, the phrase “but not limited to” renders the claim indefinite because the claim does not set forth a clear boundary of what is and is not encompassed by the claim, as it explicitly notes that it is not limited. See MPEP § 2173.05(d).
With regards to Claim 20, the phrase “but not limited to” renders the claim indefinite because the claim does not set forth a clear boundary of what is and is not encompassed by the claim, as it explicitly notes that it is not limited. See MPEP § 2173.05(d).
With regards to Claim 22, the phrase “but not limited to” renders the claim indefinite because the claim does not set forth a clear boundary of what is and is not encompassed by the claim, as it explicitly notes that it is not limited. See MPEP § 2173.05(d).
Further regarding Claim 22, the claim recites “and the like. The phrase and "the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
With regards to Claim 24, the phrase “but not limited to” renders the claim indefinite because the claim does not set forth a clear boundary of what is and is not encompassed by the claim, as it explicitly notes that it is not limited. See MPEP § 2173.05(d).
Further regarding Claim 24, the claim recites “and the like. The phrase and "the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
With regards to Claim 25, the phrase “but not limited to” renders the claim indefinite because the claim does not set forth a clear boundary of what is and is not encompassed by the claim, as it explicitly notes that it is not limited. See MPEP § 2173.05(d).
With regards to Claim 26, as the claim depends from claim 1, which recites 28 botanical extracts, it is unclear if the “combination of standaridised enriched botanical extract and purified phyto ingredient” is intended to mean that each of the 28 botanical components of claim 1 are in the form of standardized enriched botanical extract and purified phyto ingredient, if at least one combination of standardized enriched botanical extract and purified phyto ingredient is required, or if the “combination” is referring to further inclusion from a botanical extract not necessarily from the listed 28 botanical extracts.
With regards to Claim 27, the claim recites “the Phyto ingredients”. As there are 28 components in claim 1 that recite botanical extracts and phyto ingredients thereof, it is unclear if the limitation is referring to the phyto ingredients of a particular botanical component recited in claim 1, or if the limitation is intended to mean that the phyto ingredients of each of the botanical components recited in claim 1 are limited to those listed in claim 27.
With regards to Claim 28, the claim recites “and the like. The phrase and "the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Further regarding Claim 28, the claim recites “may be”. It is unclear if the limitation is intended to mean that the limitation following the phrase are optional limitations, if the phrase is intended to convey an intended use of the composition (e.g., the composition has to be capable of being in the form(s) recited after the phrase), or if the phrase is intended to convey a structural property so that the composition is capable of being in the form(s) recited after the phrase.
With regards to Claim 29, the claim recites “may be”. It is unclear if the limitation is intended to mean that the limitation following the phrase are optional limitations, if the phrase is intended to convey an intended use of the composition(e.g., the composition has to be capable of being in the form of a liquid), or if the phrase is intended to convey a structural property so that the composition is capable of being in the form of a liquid.
With regards to Claim 30, the claim recites “may be”. It is unclear if the limitation is intended to mean that the limitation following the phrase are optional limitations, if the phrase is intended to convey an intended use of the composition (e.g., the composition has to be capable of being applied by the application methods), or if the phrase is intended to convey a structural property so that the composition is capable of being applied by the application methods.
Further regarding Claim 30, the claim recites “and the like. The phrase and "the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
With regards to Claim 32, the claim recites “such as”. The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Further regarding Claim 32, the claim recites “and the like. The phrase and "the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11-16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With regards to Claims 11-16, each claim recites the inclusion of ethoxylated castor oil, which is a non-ionic emulsifier, in an amount ranging from 0.001 to 20%. Each of claims 11-16 depend from claim 1, which recites that the non-ionic emulsifier is present in an amount ranging from 0.001-10%. Thus, Claims 11-16 each fail to further limit the subject matter of the claim upon which they depend, because they each broaden the amount of the non-ionic emulsifier present in the composition.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
Claims 1-34 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MONICA A SHIN/Primary Examiner, Art Unit 1616
Prosecution Insights