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 1-20 are pending.
Claims 1-20 have been examined.
Claims 1-20 are rejected.
Drawings
The drawings filed on 12/01/2023 are accepted.
Claim Objections
[1] Claim 17 is objected to because of the following informality:
In Claim 17, the phrase “about 4 wt. % abo to about 9 wt. %” contains a typographical error and should be amended to read “about 4 wt. % to about 9 wt. %.”
Appropriate correction is required.
Specification Objections
[2] The disclosure is objected to because of the following informalities:
In para. [0012], the phrase “grown” should be amended to read “growth.”
In para. [0015], the phrase "the volatile compounds to a liquid state" should be amended to read “the volatile compounds return to a liquid state.”
In para. [0036], “FIG. 5” is introduced before FIG. 3 (introduced at para. [0062]) and FIG. 4 (introduced at para. [0067)]. Figures must be introduced in numerical order.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 para.:
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.
[3] Claims 10-19 are rejected as being indefinite. The claims recite the term “about” with respect to claimed parameters, which is a relative term that lacks a clear, objective boundary.
The term “about” is not defined by the claims, and the specification fails to provide an objective standard or guidance for determining the permissible degree of variation encompassed by the term. As a result, a person of ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention.
Because the inventive concept concerns “[a] fungicidal composition that kills or inhibits growth of a fungus,” the precise composition and concentration of the active ingredients must be clearly and unambiguously stated to establish a definite boundary between a composition that is fungicidal and one that is not.
[4] Claim 20 is rejected as being indefinite. The term “plurality” is a relative term that is not defined in the claims, and the specification fails to provide an objective standard for ascertaining the requisite number of essential oils (EOs). As a result, a person of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 20 recites: “wherein the essential oil comprises a plurality of essential oils, and wherein the plurality of essential oils constitutes the active ingredient of the composition that kills or inhibits the growth of the fungus.” However, the claim does not specify how many EOs constitute the recited “plurality,” nor does it identify which EOs form the active ingredient.
The scope of Claim 20 is further rendered uncertain by related claim language. Claim 1 recites “an essential oil extracted from one or more of” a listed group, which does not clearly define the number or identity of the EOs required. Claim 9 recites an “oil blend comprising,” and under MPEP §2111.03, the transitional term “comprising” is open-ended.
Because the invention is directed to a fungicidal composition in which the active ingredients must be sufficiently defined to distinguish effective formulations from ineffective ones, the number and identity of the EOs forming the active ingredient must be stated with reasonable clarity. In the absence of such clarity, Claim 20 is indefinite.
Claim Rejections - 35 USC § 102
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 paragraph 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.
[5] Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Manhas & Rozek (Patent WO2013/050967Al, published 04/11/2013).
In regard to claims 1, 8, and 9, Manhas & Rozek teach a pesticidal composition suitable for controlling biological pests, comprising pesticidal natural oils (essential oils) and/or components and/or derivatives thereof (para. 0001, 0023; Table 1 - headings; claim 1), including lemongrass, cassia, eucalyptus, ajowan, clove leaf, and oregano (para. 0053; claims 27-28; inter alia). Manhas & Rozek further teach water (claims 32, 88, 97), and a surfactant (claims 40, 84-86, 96), which, according to paragraph 0038 of instant application, functions as solubilizer. The disclosed pesticidal compositions inherently kill or inhibit the growth of fungi (para. 0023, 0068). Accordingly, claims 1, 8, and 9 are anticipated.
In regard to claims 2-7, Manhas & Rozek teach pesticidal natural oils encompass essential oils and/or components and/or derivatives thereof, including constituents derived from any natural oil comprising the active constituents (claims 1-2, 9). The reference expressly discloses lemongrass, cassia, eucalyptus, ajowan, clove leaf, and oregano as pesticidal natural oils (claims 2-3, 5, 8, 27-28; paras. 0053-0055) and further discloses their respective naturally occurring constituents – geranial (anticipated by Manhas & Rozek as evidenced by Zheljazkov et al., 03/17/2011, p. 805), cinnamaldehyde (i.e., trans-cinnamaldehyde; trans-cinnamaldehyde is a natural occurring constituent, whereas its cis isomer is not naturally occurring; accordingly, the prefix “trans” is commonly omitted when referring to cinnamaldehyde; anticipated by Manhas & Rozek as evidenced by trans-Cinnamaldehyde - American Chemical Society, published 10/28/2019) (anticipated by Manhas & Rozek as evidenced by Nguyen et al., 07/14/2023, abstract, lns. 1-4), 1,8-cineole (anticipated by Manhas & Rozek as evidenced by Nguyen et al., 07/14/2023, abstract, lns. 1-4; anticipated by Manhas & Rozek as evidenced by Carocho et al., 2/22/2023, p. 128, lns. 2-3), p-cymene (anticipated by Manhas & Rozek as evidenced by Ajowan, published 01/31/2019), γ-terpinene (anticipated by Manhas & Rozek as evidenced by Ajowan, published 01/31/2019), thymol (anticipated by Manhas & Rozek as evidenced by Ajowan, published 01/31/2019), eugenol (anticipated by Manhas & Rozek as evidenced by Carocho et al., 2/22/2023, p. 727) and carvacrol (anticipated by Manhas & Rozek as evidenced by Oregano, published 06/07/2023) – as pesticidal natural oil components and/or derivatives (claims 7, 9-10, 13, 28). As Manhas & Rozek explicitly correlates essential oils with their constituent components, whether present as part of the essential oil or as derived components, the cited reference anticipates claims 2-7.
In regard to claim 10, Manhas & Rozek teach a pesticidal composition comprising pesticidal natural oil at a concentration of between 0.25 wt.% - 99.3 wt.% (para. 0062), which encompasses the claimed range. Accordingly, claim 10 is anticipated.
In regard to claims 11-18, Manhas & Rozek teach pesticide natural oils present at 0.1 wt.% - 99 wt.% (claim 35) and further disclose pesticidal natural oils and/or components and/or derivatives thereof present at 0.2 wt.% - 40 wt.% (claim 34). These ranges encompass the claimed concentrations for lemongrass, cassia, eucalyptus, ajowan, clove leaf, oregano, and their respective components, including geranial, cinnamaldehyde, 1,8-cineole, p-cymene, γ-terpinene, thymol, eugenol, and carvacrol. Accordingly, claims 11-18 are anticipated.
In regard to claim 19, Manhas & Rozek teach water at 75 wt.% - 98.45 wt.% (Table 14), which encompasses the claimed range. Accordingly, claim 19 is anticipated.
In regard to claim 20, Manhas & Rozek teach pesticidal compositions comprising pesticidal natural oil(s) and/or components and/or derivatives thereof (claim 1, inter alia), water (claim 32), surfactant (claim 22), and wherein combinations of essential oils are permitted by dependency (claim 31). Accordingly, claim 20 is anticipated.
[6] Claims 1, 2, 8, 10 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fernandez et al. (Patent US20090099022A1, published 04/16/2009).
Regarding claims 1 and 8, Fernandez et al. teach a pesticidal composition by disclosing a natural herbicide composition formulated to inhibit plant growth, including weeds (title; abstract, inter alia). Fernandez et al. teach essential oils from plant sources, including lemongrass and one or more additional essential oils, as active ingredients (paras. 0007 and 0031; claim 1, inter alia), wherein the essential oils are derived from plant materials and applied to foliage or other plant parts to achieve the desired pesticidal effects (para. [0011]). Fernandez et al. further teach that the composition comprises water (para. 0025, inter alia) and includes a surfactant (para. 0022, inter alia), wherein a surfactant functions as a solubilizer (instant application, para. 0038). Accordingly, claims 1 and 8 are anticipated.
In regard to claim 2, Fernandez et al. teach lemongrass (para. [0031], claim 1, inter alia) and further teach that the main chemical components of lemongrass oil are geranial and neral (para. 0004). Accordingly, claims 2 is anticipated.
In regard to claim 10, Fernandez et al. teach essential oil concentrations of about 0.3 wt.% to about 60 wt.% (para. 0018) and further disclose that an additional herbicidal component may be present in an amount ranging from 0 to 50 wt.% (para. 0021). These disclosures, taken together, encompass compositions in which the total amount of herbicidal components falls within the claimed range of 0.5 wt.% to about 2 wt.%. Accordingly, claim 10 is anticipated.
In regard to claim 13, Fernandez et al. teach lemongrass essential oil concentrations ranging from about 0.3 wt.% to about 60 wt.% (para. 0018). The disclosed ranges encompass the concentration recited in claim 13. Accordingly, claim 13 is anticipated.
Claim Rejections - 35 USC § 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 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.
[7] Claims 1-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jankie & Tramer (Patent AU2021201866A1, published 10/13/2022).
With regard to claims 1, 8, and 9, Jankie & Tramer teach an antipathogenic composition formulated to inhibit a pathogen (title; claim 1), comprising water (claim 4) and one or more excipients (claim 12), and further disclose essential oils extracted from lemongrass, cassia, eucalyptus, ajowan, clove leaf, or oregano (pp. 12-14, inter alia). Excipients are well known in the art to include solubilizers that enhance dispersion and stability of hydrophobic active agents in aqueous systems (see, Excipient, published 11/30/2023). It would have been obvious to a person having ordinary skill in the art to formulate the disclosed antipathogenic essential oil composition with water and a solubilizing excipient in order to improve homogeneity, stability, and bioavailability, as such formulation techniques represent routine optimization of known components for their intended use.
With regard to claims 2-7 and 10-18, Jankie & Tramer teach essential oils derived from lemongrass, cassia, eucalyptus, ajowan, clove leaf, and oregano (pp. 12-14, inter alia). Each of these disclosed essential oils is well known in the art to contain characteristic bioactive constituents: lemongrass contains neral and geranial (Zheljazkov et al., 03/17/2011, p. 805); cassia contains E-cinnamaldehyde (Nguyen et al., 07/14/2023, abstract, lns. 1-4); eucalyptus contains 1,8-cineole (Nguyen et al., 07/14/2023, abstract, lns. 1-4; Carocho et al., 2/22/2023, p. 128, lns. 2-3); ajowan contains p-cymene, γ-terpinene, and thymol (Ajowan, published 01/31/2019); clove leaf contains eugenol (Carocho et al., 2/22/2023, p. 727); and oregano contains carvacrol (Oregano, published 06/07/2023). Jankie & Tramer further teach that the essential oil component may be selected from any one or more of the disclosed essential oils (p. 12, para. 2; p. 23, para. 4), and may be present in any suitable amount provided it exhibits the desired properties (p. 23, para. 4, lns. 2-4), including representatives weight percentage ranges of about 1 wt.% to about 40 wt.% for eucalyptus and lemongrass within an essential oil blend (p. 15, paras. 1 and 3). It would have been obvious to a person of ordinary skill in the art that use of the disclosed essential oils in the antipathogenic composition would inherently include their known chemical constituents, that selecting among these oils and their naturally occurring constituents represents routine chemical understanding rather than an inventive step, and that adjusting essential oil concentrations within the claimed ranges (including about 0.5 wt.% to about 35 wt.%) constitute routine optimization of result effective variables to balance efficacy, safety, volatility, and formulation stability.
With regard to claim 20, Jankie & Tramer disclose compositions comprising essential oils as active agents and describe an embodiment in which such essential oils are incorporated into a substrate for biological efficacy (p. 29, claim 1). This disclosure demonstrates that the reference contemplates essential oils as versatile bioactive agents suitable for application in different delivery formats (p.1, para. 5). It would have been obvious to a person of ordinary skill in the art to adapt the disclosed essential oil compositions for use in alternative application systems, including liquid or sprayable formulations for environmental or surface treatment, as the selection of a particular delivery system represents a routine design choice that does not affect the composition itself or its intended biological function.
Accordingly, the combination of known essential oils, their well-established constituents, conventional excipients and a solubilizer, predictable concentration ranges, and known delivery formats, as taught by Jankie & Tramer and supported by general knowledge in the art, render claims 1-18 and 20 obvious under 35 U.S.C. 103.
[8] Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lamb & Lattimore (Patent US10512664B2, published 12/24/2019).
With regard to claims 1, 8, and 9, Lamb & Lattimore teach antipathogenic composition formulated to inhibit pathogens, including fungi (col. 1, title, summary; col. 6, para. 1; claims 1, 4, and 12, inter alia). The reference teaches an aqueous composition comprising water (claims 1 and 12; col. 15, para. 4, inter alia) and further discloses the use of surfactants (col. 12, ln. 42; col. 13, ln. 48), which function as solubilizers (instant application, para. [0038]). Lamb & Lattimore additionally teach essential oils extracted from plant sources, including lemongrass, cassia, eucalyptus, bishop's weed (ajowan) (see Ajowan, published 01/31/2019), clove, and oregano (col. 3, paras. 1-2, 6; col. 8, para. 4; col. 9, para. 2), and further teach that essential oils derived from different species or grown under varying conditions may be blended together (col. 7, lns. 55-59). It would have been obvious to a person of ordinary skill in the art to formulate the disclosed essential oils in an aqueous system using a surfactant solubilizer and to select one or more plant-derived essential oils as active agents in a fungicidal composition, as such formulation choices represent well-understood, predictable design options routinely employed to enable stable delivery of known compositions for their intended biological purposes.
With regard to claims 2-7 and 10-18, Lamb & Lattimore teach essential oils as plant-derived, aromatic, volatile liquids comprising terpenes, terpenoids, phenylpropanoids, and related compounds (col. 3, para. 1; col. 7, para. 1). The reference explicitly teaches both (i) individual chemical constituents and (ii) plant sources known to inherently contain those constituents, thereby providing multiple, overlapping disclosures for the claimed components. Specifically, Lamb & Lattimore explicitly teach 1,8-cineole, p-cymene, γ-terpinene, thymol, carvacrol, eugenol, and cinnamaldehyde (claims 1, 10, 12-14; Table 1; col. 3, para. 1; col. 12, para. 2; col. 21, Example 4), while also disclosing plant extracts that are independently known to contain those same constituents. For example, lemongrass inherently contains the monoterpenes neral and geranial (Zheljazkov et al., 03/17/2011, p. 805; Carocho et al., 02/22/2023, p. 129; Terpene, 12/05/2022); cassia inherently contains the phenylpropanoids E-cinnamaldehyde (Cinnamaldehyde, published 08/26/2021); eucalyptus inherently contains the monoterpene 1,8-cineole (Carocho et al., 2/22/2023, p. 128); bishop's weed (ajowan) inherently contains the terpenes p-cymene, γ-terpinene, and thymol (Carocho et al., 2/22/2023, p. 129; Ajowan, published 01/31/2019); clove leaf inherently contains the terpene eugenol (Carocho et al., 2/22/2023, p. 719, 727); and oregano inherently contains the terpene carvacrol (Carocho et al., 2/22/2023, p. 718-719; Oregano, published 06/07/2023). Lamb & Lattimore further teach that when two or more essential oils are present, any individual essential oil may comprise about 0.5 wt.% to about 99.5 wt.% of the essential oil fractions (col. 8; para. 1, lns. 1-3), and further provides representative ranges for specific oils including oregano about 0.5 wt.% to about 99.5 wt.% (col. 10, para. 3, lns. 1-2, inter alia), p-cymene up to about 45 wt.% (col. 12, para. 1), and thymol up to about 50 wt.% (col. 11, lns. 46-54). It would have been obvious to a person of ordinary skill in the art that selecting these disclosed essential oils, their explicitly listed constituents, or their inherently present chemical components, and adjusting their relative concentrations within the disclosed ranges, constitutes routine formulation optimization and predictable use of known bioactive compounds, rather than an inventive step.
With regard to claim 19, Lamb & Lattimore teach that the liquid carrier may comprise from about 40 wt.% to about 99 wt.% of the composition (col. 12 , para. 3). It would have been obvious to a person of ordinary skill in the art to select a carrier concentration within this range to achieve suitable dilution, sprayability, coverage, and stability of the essential-oil based composition, as adjustment of carrier content is a routine formulation consideration that does not require inventive skill.
With regard to claim 20, Lamb & Lattimore teach a method of inhibiting a pathogen by administering a treatment composition comprising essential oils combined with a carrier (Claim 12), including emulsions comprising water and essential oils applied to a subject or system. It would have been obvious to a person of ordinary skill in the art to apply the disclosed essential oil compositions using any conventional delivery modality appropriate for pathogen inhibition, including spraying, coating, wiping, or other surface application techniques, as the mode of application represents a predictable adaptation of the same composition to different treatment environments without altering its fundamental function.
Conclusion
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/ALI MUSTAFA ALAOUIE/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614