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 papers filed February 16, 2026. Applicant’s reply to the restriction/election requirement of December 18, 2025 has been entered. Claims 1, 15, and 16 have been amended; and claims 3, 5, 12, and 13 have been canceled. Claims 1, 2, 4, 6-11, and 14-22 are pending in the application.
Priority
Applicant’s claim for the benefit of prior-filed WIPO International Application No. PCT/GB2022/050991, filed April 20, 2022 under 35 U.S.C. 365(c), is acknowledged.
Acknowledgment is also made of Applicant’s claims for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copies of Indian Patent Application No. 202141018243, filed in the Republic of India on April 20, 2021, European Patent Application No. 21181085.8, filed at the European Patent Office on June 23, 2021, and British Patent Application No. 2108970.1, filed in the United Kingdom on June 23, 2021, have all been received as required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9 and 15-17, is hereby acknowledged. Applicant’s elections of i) “citronella oil” as the species of active, ii) “aliphatic hydrocarbon” as the species of solvent, iii) “electric heating device” as the species of emanation device, iv) “the geraniol to pyrethrum weight ratio is 0.75:1 to 30:1” as the species of optional composition feature of claim 15, v) “composition comprises between 0.5-15 wt% citronella oil” as the species of optional composition feature of claim 16, and vi) “composition comprises between 0.25-1.5 wt% of pyrethrum” as the species of optional composition feature of claim 17 are all also acknowledged. The Examiner has determined that claims 1, 2, 4, 6-9, and 15-17 read on the elected subject matter.
The traversal is on the following grounds:
1. “Groups I-III all recite the same or corresponding special technical feature”; that “the prior art as a whole does not disclose or otherwise render obvious an insect control composition…that includes between 0.5 wt% and 10 wt% of geraniol and between 0.1 wt% and 7.5 wt% of pyrethrum” and further includes “hydrocarbon solvents having a flash point between 60C and 140C and having a boiling point between 190C and 400C”; and
2. “consideration of groups I and II in the same application will not constitute an undue…burden”.
This is not found persuasive because:
1. The special technical feature at issue is specifically the one identified at the time the restriction requirement was issued, not on a different special technical feature that can perhaps now be identified from the claims as now amended. The special technical feature identified at the time of the restriction requirement has been determined to lack unity of invention a posteriori.
2. A search burden does exist at least because Groups I and II have acquired a separate status in the art in view of their different classification.
Accordingly, claims 10, 11, 14, and 18-22 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected subject matter, there being no allowable generic or linking claim. The restriction/election requirement is still deemed proper, maintained, and is therefore made FINAL.
Applicant timely traversed the restriction (election) requirement in the reply filed on February 16, 2026. Claims 1, 2, 4, 6-9, and 15-17 are under examination.
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, 0.5 wt% to 10 wt% geraniol, 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). 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. One of ordinary skill in the art thus cannot definitively ascertain if the claim thus provides for additional geraniol amounts, i.e. above the 0.5 wt% to 10 wt% disclosed, for additional agents, such as citronella oil, that can contain significant amounts of geraniol, or, rather, whether the 0.5 wt% to 10 wt% geraniol is the total amount of geraniol present from all sources, including any additional citronella oil. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
Claim 6, which depends from claim 1, stipulates in a wherein clause that the composition comprises at least 0.01 wt% of “the at least one active” selected from the recited group. However, the Markush group recited in claim 6 is not precisely the same Markush group recited in claim 1. Hence, one of ordinary skill in the art, from the language and presentation of claim 6, cannot definitively ascertain whether claim 6 intends to limit only the amount of “the at least one active” from claim 1, or rather intends to limit both the amount of “the at least one active” and also further limit “the at least one active” itself.
Claims 15-17, all of which depend from claim 1, are indefinite for the following reasons:
1. Claims 15-17 stipulate in a wherein clause that “the ratio between the geraniol to the pyrethrum” is as recited. Claim 1 already stipulates specifically a “weight ratio” between the geraniol to the pyrethrum. The “ratio” in claims 15-17 is not necessarily a weight ratio. Hence, one of ordinary skill in the art cannot definitively ascertain whether the specified “ratio” in claims 15-17 necessarily further limits the weight ratio of claim 1, or rather imposes an additional, unspecified ratio, such as a volume ratio or a molar ratio, between the geraniol and the pyrethrum, in addition to the weight ratio already imposed in claim 1, or what. In the latter case, one of ordinary skill in the art cannot definitively ascertain what parameter, e.g. volume, moles, etc., the specified ratio is based on. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
2. Claims 15-17, similar to claim 6, stipulate in a wherein clause that the composition comprises the specified amount of “the at least one active” selected from the recited group. However, the Markush group recited in each of claims 15-17 is not precisely the same Markush group recited in claim 1. Hence, one of ordinary skill in the art, from the language and presentation of claims 15-17, cannot definitively ascertain whether claims 15-17 intend to limit only the amount of “the at least one active” from claim 1, or rather intend to limit both the amount of “the at least one active” and also further limit “the at least one active” itself.
Claims 2, 4, 6-9, and 15-17 are (also) indefinite for depending from an indefinite claim.
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).
Applicant Claims
Applicant’s elected subject matter is directed to a composition comprising 1-10 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 a composition comprising e.g. 1 wt% geraniol; 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. 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).
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Saunders et al. do not explicitly anticipate the presently claimed subject matter with one specific example or preferred embodiment. However, the Sanders et al. disclosure is sufficient to render the claimed subject matter prima facie obvious within the meaning of 35 USC 103.
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 employ the teachings of Saunders et al., outlined supra, to devise Applicant’s presently claimed composition.
Saunders et al. disclose a composition comprising e.g. 1 wt% geraniol; 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 composition is useful for insect control. Since Saunders et al. disclose that the vegetable and/or plant-based oil can be e.g. citronella oil, and can be present in the amount of e.g. 1-10 wt%, one of ordinary skill in the art would thus be motivated to further include citronella oil in the amount of about 1-10 wt%, with the reasonable expectation that the resulting composition will be useful for controlling insects.
With geraniol present in the amount of 1 wt%, and pyrethrum present in the amount of 0.1-10 wt%, the geraniol to pyrethrum weight ratio is 0.1:1 to 10:1, 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.
Conclusion
No claims are allowed.
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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/DAVID BROWE/Primary Examiner, Art Unit 1617