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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5 May 2025 has been entered.
Status of the Claims
Claims 1-3, 5-7 and 11-13 are pending in the present application.
It is recommended that Applicant amend claims 2 and 5 to delete “further”; and amend claim 11 to replace “can be” in steps 1)-5) with “is”.
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 1-3, 5-7 and 11-13 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.
Instant claim 1 recites percentages, but does not state whether they are based on the total weight of the formulation or with respect to another variable. It is recommended that Applicant amend claim 1 to recite “in weight percent, based on the total weight of the formulation”.
Dependent claims 2-3, 5-7 and 11-13 do not clarify the reference for the weight percentages. Therefore, these claims are indefinite as well.
Also, claim 1 recites the maximum percentage of plant-based glycerin is 69.00%, and the minimum percentages 7.9% surfactant, 6.63% 2-propanol, 1.30% lemon grass oil, 0.45% thyme oil, 1.09% cold pressed neem oil, and 16.63% water, which equals 103%. Thus, the composition cannot comprise 69.00% by weight glycerin and the minimum recited values for the surfactant, 2-propanol, lemon grass oil, thyme oil, cold pressed neem oil, and water. It is unclear whether Applicant intends for the formulation to comprise a maximum amount of glycerin of 69.00% and the minimum amount of another component(s) to decrease, or if Applicant intends for the maximum amount of glycerin to be 66.00%.
Claim 2 recites the maximum percentage of plant-based glycerin is 66.00%. However, when the other components are included in their minimum amounts, the total weight percent is 102%.
Dependent claims 3, 6-7 and 11-13 do not clarify the percentages of each component. Therefore, these claims are indefinite for the same reasons.
Regarding claim 11, the phrase “preferably” in step 3), line 9, 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).
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 1-3, 5-7 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Manhas et al. (US 9,999,218).
Regarding instant claims 1-3 and 5, Manhas et al. teach compositions that can be used to control a variety of pests, including mosquitoes and stink bugs (col. 1, ln. 19-29). The pesticidal compositions contain a pesticidal natural oil and/or a component thereof and/or a derivative thereof and a polar aromatic solvent (col. 3, ln. 8-20). The pesticidal natural oil includes cold pressed neem oil, and thyme oil (col. 3, ln. 21-24 and 45-46; col. 5, ln. 17-21; col. 9, ln. 24-50; col. 13, ln. 9-15; Tables 1, 4, 12, 20; Examples 1, 2, 11, 20; Claims 1, 7), and other oils that can be used as improving odor characteristics include lemongrass oil (col. 13, ln. 5-8; col. 15, ln. 7; Examples 1, 6, 7, 14, 16-18). The polar aromatic solvent is preferably acetophenone (Claim 7). Manhas et al. teach that in some embodiments, the polar aromatic solvent is replaced by an alkyl alcohol, such as 2-propanol (IPA) (col. 8, ln. 50-55).
Manhas et al. specifically teach compositions comprising a combination of cold pressed neem oil, additional natural oils such as thyme oil and lemongrass oil, a surfactant, solvents, carriers, diluents, etc. (col. 14, ln. 45 to col. 15, ln. 13). Suitable carriers include glycerol, isopropanol and water (col. 5, ln. 65-67; col. 6, ln. 6-7; col. 14, ln. 1-6, 13; Examples 1, 3, 4, 6-8, 12-14, 16-20). Suitable surfactants include sodium lauryl sulfate (col. 13, ln. 56; Example 2).
Regarding the concentrations, Manhas et al. teach that in some embodiments, a pesticidal composition comprises a pesticidal natural oil at a concentration of between 0.25% and 99.3% by weight, including any concentration therebetween e.g. 0.3%, 0.4%, 0.5%, 0.6%, 0.7%, 0.8%, 0.9%, 1%, 2%, 5%, 7.5%, 10%, 15%, 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, 70%, 75%, 80%, 85%, 90%, 95%, 98% or 99% by weight (col. 14, ln. 22-28; col. 14, ln. 51-58). In one exemplary embodiment, a pesticidal composition includes a combination of neem oil at a concentration of 5.5% by weight, acetophenone at a concentration of 15.5% by weight, natural oils (lemongrass oil, spearmint oil, clove oil, and wintergreen oil) at 8% or 3.4% by weight and a surfactant at a concentration of 5.0% by weight (col. 15, ln. 4-9).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare compositions according to Manhas et al. comprising natural oils, carriers, surfactants, etc., wherein the compositions comprise cold pressed neem oil combined with lemongrass oil and thyme oil. It would have been obvious to select glycerin, isopropanol and water as commonly used carriers, as well as sodium lauryl sulfate as a suitable surfactant according to Manhas et al. Regarding the concentrations, a person of ordinary skill in the art would have been motivated to determine through routine experimentation the effective concentrations of the components taught by Manhas et al. since they teach the compositions as being effective for controlling pests, such as mosquitoes and stink bugs.
Regarding instant claims 6-7 and 11-13, Manhas et al. teach compositions that can be used to control a variety of pests, including mosquitoes and stink bugs (col. 1, ln. 19-29; col. 6, ln. 12-19; Claims). The methods of use according to Manhas et al. include combination with natural oils for direct application, dilution with an appropriate carrier for delivery as a ready-to-use spray, or in a concentrated form to be diluted and applied (col. 17, ln. 31-35). Manhas et al. further teach applying the compositions, waiting 7-21 days and then reapplying the composition (Claim 16).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to apply the compositions according to Manhas et al. for the control of mosquitoes and stink bugs, as well as determining through routine experimentation the appropriate concentration of formulation after dilution to be effective for the control of said pests.
The examiner respectfully points out the following from MPEP 2144.05: “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969); Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed.Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Response to Arguments
Applicant's arguments filed 7 March 2025 have been fully considered but they are not persuasive. Applicant argues that it would be error for the Examiner to allege that the polar aromatic solvent could be replaced with 2-propanol, such a modification resulting in the claimed formulation. Applicant asserts that the use of the polar aromatic solvent in combination with the natural oils is critical to obtain pest control. This criticality is evidenced in the examples of Manhas, wherein a number of examples demonstrate the critical nature of combining the natural oils and the polar aromatic solvent.
The examiner respectfully argues that Manhas et al. teach that in some embodiments, the polar aromatic solvent is replaced by an alkyl alcohol. In some embodiments, the solvent is 2-ethyl-1-hexanol, 1-nonanol, 2-butyl-1-octanol, 2-hexyl-1-decanol, 1-dodecanol, 2-octanol, 1-decanol, 2-propanol (IPA), cyclohexanol, and/or a combination thereof (col. 8, ln. 50-55). Therefore, Manhas et al. teach that the polar aromatic solvent can be replaced by an alkyl alcohol, such as isopropanol.
Also, Manhas et al. teach examples comprising solvents other than acetophenone were effective when combined with neem oil (Examples 2-4, 12). Therefore, it would have been obvious to prepare compositions according to Manhas et al. wherein the polar aromatic solvent is replaced by an alkyl alcohol, such as isopropanol.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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/N.W.S/ Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616