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 .
DETAILED ACTION
This action is in response to Applicant’s amendment filed July 10, 2026 in reply to the First Office Action on the Merits mailed March 11, 2026. Claims 1, 2, 4, 6, and 15-17 have been amended; and claims 3, 5, 12, and 13 have been canceled. Claims 10, 11, 14, and 18-22 have been withdrawn. Claims 1, 2, 4, 6-9, and 15-17 are under examination in the application.
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 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, 2, 4, 6-9, and 15-17 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 1 first stipulates that the composition comprises, as one element therein, 2 wt% to 8 wt% geraniol extract, but then provides that the composition can also contain additional active elements, such as, for example, citronella oil (i.e. Applicant’s elected species of further active). Claim 1 has been amended from reciting “geraniol” to now reciting “geraniol extract”. Citronella oil contains a significant amount of geraniol, e.g. about 20 wt% of citronella oil is geraniol. Hence, about 0.5 wt% to about 15 wt% citronella oil can contain about 0.1 wt% to about 3 wt% geraniol. However, the original specification, however, provides that the term “geraniol” refers essentially to the pure compound, and is to be differentiated from e.g. citronella oil that contains geraniol as a constituent thereof. As the specification explains in paragraph [0048], “when referring to geraniol in a composition of the present invention it is meant geraniol that has been extracted from its natural source. For example, if a composition comprises geraniol and citronella oil, the %-age of geraniol only refers to the %-age that has been extracted and not to the %-age of geraniol that the citronella oil contains. However, claim 1, as now amended, no longer cites merely “geraniol”, but rather now cites “geraniol extract”, which could perhaps refer to the pure geraniol described in the specification, or alternatively could reasonably be interpreted more broadly in scope to mean any plant derived extract that contains geraniol. In this latter interpretation, “geraniol extract” would thus certainly include citronella oil, as well as other recited actives in the claim, such as e.g. basil oil, etc. One of ordinary skill in the art thus cannot makes heads or tails out of the claimed subject matter. For example, does the 2-8 wt% “geraniol extract” necessarily include the amount of any of the optional active agents recited that may be included in the composition and which contain geraniol, such as e.g. citronella oil, and e.g. basil oil? Moreover, if the recited 2-8 wt% value is for the “geraniol extract” as a whole, should the recited 2-8 wt% be interpreted as an upper limit of the amount of geraniol compound that is present, e.g. geraniol itself is present e.g. up to 8 wt%. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
***For examination at this time, the phrase “geraniol extract” is being interpreted as if the claim still read “geraniol”, and the term “geraniol” is interpreted in light of paragraph [0048] of the specification.
Claim 4, which depends from claim 1, stipulates in a wherein clause that “the composition comprises between 1 wt% and 10 wt% of geraniol extract, based on the total weight of the composition”. Claim 1, however, expressly limits the amount of geraniol extract to “between 2 wt% and 8 wt%”. Hence, one of ordinary skill in the art cannot definitively ascertain the metes and bounds of the claimed subject matter.
Claims 2, 4, 6-9, and 15-17 are (also) indefinite for depending from an indefinite claim.
Claim Rejections - 35 USC § 112(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 4 and 15 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.
Claim 4, which depends from claim 1, stipulates in a wherein clause that “the composition comprises between 1 wt% and 10 wt% of geraniol extract, based on the total weight of the composition”. Claim 1, however, expressly limits the amount of geraniol extract to “between 2 wt% and 8 wt%, based on the total weight of the composition”. Hence, claim 4 is broader in scope than claim 1 from which it depends.
Claim 15, which depends from claim 1, stipulates that the geraniol extract can be present in the amount “between 2 wt% and 8 wt%, based on the total weight of the composition”. Claim 15 provides that this is the only one of the recited limitations that need apply. Hence, claim 15 does not necessarily limit claim 1 from which it depends.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 6-9, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Saunders et al. (U.S. Patent Application Pub. No. 2013/0005688), in view of Anonymous (MotherEarth Exempt [online]; 2008).
Applicant Claims
Applicant’s elected subject matter is directed to a composition comprising 2-8 wt% geraniol, 0.25-1.5 wt% pyrethrum, 0.5-15 wt% citronella oil, and at least 80 wt% aliphatic hydrocarbon solvent; wherein the weight ratio between the geraniol to the pyrethrum and optionally the citronella oil is 0.75:1 to 30:1.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Saunders et al. disclose an insecticidal composition comprising 0.1-10 wt% pyrethrum; vegetable and/or plant-based oil, and 70-99 wt% mineral oil (i.e. an aliphatic hydrocarbon solvent that can have a flash point and a boiling point within the claimed ranges); wherein the vegetable and/or plant-based oil can be e.g. geraniol and e.g. citronella oil and can be present in the amount of e.g. 1-10 wt% (see e.g. abstract; paragraphs 0005, 0036, 0042, 0044, 0050, 0052, 0077, 0078; Tables 6 and 7).
Anonymous discloses an insecticidal composition comprising 6 wt% geraniol, 0.5 wt% lemongrass oil, and 93.5 wt% solvent comprising mineral oil.
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Saunders et al. do not explicitly disclose that geraniol is present in the amount of 2-8 wt%, based on the total weight of the composition. This deficiency is cured by the teachings of Anonymous.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Saunders et al. and Anonymous, outlined supra, to devise Applicant’s claimed composition.
Saunders et al. disclose a composition comprising 0.1-10 wt% pyrethrum; a vegetable and/or plant-based oil, and 70-99 wt% mineral oil (i.e. an aliphatic hydrocarbon solvent that can have a flash point and a boiling point within the claimed ranges), wherein the vegetable and/or plant-based oil can be e.g. geraniol, and can be present in the amount of e.g. about 1-10 wt%, and wherein the composition is useful for insect control. Since Anonymous discloses that a composition comprising 6 wt% geraniol in a solvent comprising mineral oil is highly effective at controlling a wide range of insects, one of ordinary skill in the art would thus be motivated to employ 6 wt% geraniol as the vegetable and/or plant-based oil in the Saunders et al. composition, with the reasonable expectation that the resulting composition will exhibit enhanced efficacy at insect control.
With geraniol present in the amount of 6 wt%, and pyrethrum present in the amount of 0.1-10 wt%, the geraniol to pyrethrum weight ratio is 0.6:1 to 60:1, which is not patentably distinct from the claimed geraniol to pyrethrum weight ratio of 0.75:1 to 30:1.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments in the reply filed July 10, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “Saunders et al. do not provide any motivation or reasonable expectation of success in adding geraniol extract to a composition as claimed, and certainly not at a concentration between 2 wt% and 8 wt%”; and that “Pyganic® MUP20…comprises highly refined pyrethrins – NOT a pyrethrum extract”, and that “the amount of pyrethrum extract required to provide the amount of pyrethrins present in 25.39% Pyganic® MUP20 would be far greater than the amount of pyrethrum extract”.
The Examiner, however, would like to point out the following:
1. It’s unclear where Applicant finds the basis for these arguments.
2. Saunders expressly discloses that geraniol may be included in their composition, as a vegetable and/or plant-based oil, which can be present in the amount of e.g. about 1-10 wt%. Saunders stipulates that “suitably, any included additional carrier or diluent will not reduce the insecticidal efficacy of the composition, relative to the efficacy of the composition in the absence of the additional component”, and recites geraniol as a suitable constituent to include as it meets this criterion.
3. The prior art rejection is not over Pyganic® MUP20 alone, but rather is over the Saunders reference as a whole, in view of Anonymous, and what these references expressly disclose and reasonably suggest to one of ordinary skill in the art, who is one of ordinary creativity and not an automaton. Saunders teaches that their composition can contain pyrethrum in the amount of e.g. about 0.1-10 wt%.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue 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.
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/DAVID BROWE/Primary Examiner, Art Unit 1617
