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 .
Election/Restrictions
Applicant's election with traverse of invention group II, claims 41-44, in the reply filed on 12/30/2025 is acknowledged. The traversal is on the ground(s) that there is unity of invention after amendment on 12/30/2025. This is not found persuasive because the restriction requirement is based on the claim before restriction requirement. Furthermore, there is still no unity of invention according to the following 103 rejection since Li et al. (CN101720775, Google translation) teaches a composition comprising capsaicin and castor oil polyoxyethylene ether (ethoxylated castor oil).
The requirement is still deemed proper and is therefore made FINAL.
Claims 30-40 and 45-49 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/30/2025.
Applicants failed to elect species and argued that water-soluble oil is defined by amendment. However, the definition of water-soluble oil by amendment does not release applicants from obligation to make a proper election of species. This is non-compliant. For compact prosecution purpose, non-compliant letter is not issued for this time and the election of species requirement is also withdrawn.
Claims 30-49 are pending, 41-44 are under examination.
Claim Objection
Claim 42 is objected for reciting “0,1%” which is typo of “0.1%”. Proper correction is required.
Priority
Acknowledge is made that this application is national stage of international patent application PCT/EP2022/063931, filed on 05/23/2022; which claims priority from France Patent application FR2105357, filed on 05/21/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/21/2023 and 12/14/2023 is being considered by the examiner.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN101720775, Google translation).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Li et al. teaches a seed treatment composition comprising capsaicin at 1-5% and surfactant such as castor oil polyoxyethylene ether at 10-30% (abstract, claims 1-4). Capsaicin (Capsaicin) is a natural plant alkaloid, which is an active ingredient extracted from the ripe fruit of Solanaceae pepper. It is mainly used for analgesia and antipruritic. lasting. In the field of biopesticides, capsaicin, as a new type of green pesticide, has good contact and avoidance effects, and can achieve high efficacy, long-lasting effect and degradability for crop pest control. It is a new type of environmentally friendly pesticide in the 21st century. The capsaicin produced by Qingdao Haida Chemical Co., Ltd. has a content of ≥98% can be used (page 2). Because carbosulfan and capsaicin are organic compounds that are insoluble in water, the present invention selects a certain surfactant and a solvent that pollutes the environment less, and makes it into a liquid seed treatment agent that is dispersed in water as a medium. Provided is a chemical insecticide and plant-derived component capsaicin as an insecticide and a repellant to reduce the use of highly toxic insecticides. The compound seed treatment agent of carbosulfan and capsaicin of the present invention, on the one hand, can prevent and control insect pests, and at the same time has the effect of avoiding mice, which improves the control effect, and has fast absorption and strong target effect, greatly reduces the amount of use, and greatly. The cost of agricultural production is reduced, and the environmental pollution caused by the large amount of pesticide application is reduced at the same time. The present invention has a good effect on preventing and controlling pest damage at the seedling stage and increasing the seedling preservation rate through the soybean field drug efficacy plot test, and the following examples can describe the present invention in detail (page 3, 1st paragraph). In example 1, the preparation of the composition is by mixing all ingredients and emulsifying (page 3).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Li et al. is that Li et al. do not expressly teach all limitation in one embodiment.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Li et al. teaches a process for preparing a seed treatment composition comprising capsaicin 1-5% and surfactant castor oil polyoxyethylene ether by mixing capsaicin and castor oil polyoxyethylene ether (ethoxylated castor oil), and capsaicin is extracted compound form pepper and 98% purity of capsaicin, thus the extraction step from pepper (extraction of crude oil followed by additional extraction for pure compound) or directly used extracted 98% pure compound is obvious, and 98% pure capsaicin is solid. Furthermore, Li et al. teaches capsaicin is insecticide and a repellant, and composition comprising 1-5% (less than 20%) of capsaicin for seed treatment, the 1-5% of capsaicin is for defensive and or protective use.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
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 before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 41-44 are rejected under 35 U.S.C. 103 as being unpatentable over Albright et al. (US20200163334) in view of Numata et al. (US20120252900) and Li et al. (CN101720775, Google translation).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Albright et al. teaches pest repellent compositions comprising a fatty acid and an anthranilate ester. In another aspect, this invention relates to a method of repelling pests employing such composition. In another aspect, this invention relates to products formulated from such composition (abstract). An insect- or acarid-repellant composition comprising: (a) a first active ingredient selected from the group consisting of dimethyl anthranilate, menthyl anthranilate, ethyl anthranilate, phenylethyl anthranilate and methyl anthranilate; (b) a fatty acid and emulsifying agent such as ethoxylated castor oil (claims 1 and 6-7). The composition can be formulated as an Emulsifiable Concentrate (EC) with adjuvants, surfactants, stabilizers and preservatives, to be diluted with water for spray application or for application to surfaces such as mopping onto floors, wiping countertops and the like ([0062]). In one embodiment of the provided method for repelling bedbugs, the composition comprising an insect or acarid repellant provided herein contains from at or about 0.01% to at or about 10%, or greater than 10%, or greater than 15%, or greater than 20% ([0095]). In certain embodiments, the compositions provided herein can further contain a colorant that is selected from among, but not limited to, a dye or pigment. In one example, the colorant is present in an amount at or about 0.0001% to at or about 1% by weight of the composition. In another example, the colorant is present in an amount at or about 0.0005% to at or about 0.5% by weight of the composition ([0113]). The compositions for killing or repelling pests provided herein can be formulated as a household care composition. For example, pesticide compositions ([0115]). In at least one embodiment, the topical composition can contain a repellent component from 0.01% to about 99% by weight ([0116]). Formulation A: The following formulation was prepared to test insect repellency (% by weight): 30% oleic acid, 10% methyl anthranilate and 60% Sunspray 6E oil (Sunoco Oil Company) were blended until homogenous ([0129]).
Numata et al. teaches A method of repelling an insect, comprising:
applying a repelling composition to a surface, the repelling composition comprising 78.0 to 88.0 wt. % of a base oil selected from the group consisting of white oil, polyalphaolefins, glycols, polyalkylene glycols, alkylated naphthalenes, alkylated benzenes, esters and combinations thereof, 5.0 to 12.0 wt. % of a thickening agent, 5.0 to 10.0 wt. % of a tackifying polymer, 0.025 to 0.10 wt. % of a repellent agent selected from the group consisting of capsaicin, piperine, allyl isothiocyanate, allicin, and combinations thereof, and 1.0 to 2.0 wt. % of a solubility improving additive, whereby an insect is repelled from the surface (claim 1). A repellent composition based on a grease-like gel composition for use on exterior and interior surfaces of a structure, such as homes, restaurants, and office buildings is provided. The repellent composition is particularly preferred for use on insects (e.g., cockroaches, ants such as carpenter ants and moisture ants, clothes moths, silverfish, clover mites, bedbugs, termites, carpet beetles, crickets, fleas, dust mites, flies, golden buprestid, house centipede, mosquitoes, powder post beetles, psocids, booklice, spider beetles, granary and rice weevils, flour beetles, meal moths, firebrats, drug store beetles, saw-toothed grain beetles, and the like).
Li et al. teaching has already been discussed in the above 103 rejection and is incorporated herein by reference.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Albright et al. is that Albright et al. do not expressly teach capsaicin as repellent. This deficiency in capsaicin is cured by the teachings of Numata et al. and Li et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Albright et al., as suggested by Numata et al. and Li et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to replace capsaicin for anthranilate as insect repellent for insect such as bedbugs because this is simple substitution of one known insect repellent for another to obtain predictable results. MPEP 2143, it is prima facie obviousness for simple substitution of one known element for another to obtain predictable results. Under guidance from each of Numata et al. teaching capsaicin as insect repellent for bedbugs, it is obvious for one of ordinary skill in the art to replace capsaicin for anthranilate as insect repellent for bedbugs and produce instant claimed invention with reasonable expectation of success.
Regarding claim 41 and 44, prior art teaches a repellent composition comprising capsaicin 0.01% to 20% and emulsifying agent ethoxylated castor oil by mixing capsaicin and ethoxylated castor oil. As suggested by Li et al. that capsaicin as repellent is extracted compound from pepper and 98% purity of capsaicin, thus the extraction step from pepper (extraction of crude oil followed by additional extraction for pure compound) or directly used extracted 98% pure compound is obvious, and 98% pure capsaicin is solid. Since Albright et al. teaches the repellent composition as Emulsifiable Concentrate, this read on storage concentrated fluid composition.
Regarding claim 42, Albright et al. teaches Emulsifiable Concentrate diluted with water, and repellent concentration at 0.01% to 20% encompassing less than 0.1%, Furthermore, Numata et al. teaches 0.025 to 0.10 wt. % of a repellent agent capsaicin in repellent composition. Thus, it is obvious to have Emulsifiable Concentrate with about 20% of capsaicin diluted with water to have repellent composition comprising 0.01% to 0.1% of capsaicin, which is still effective.
Regarding claim 43, Albright et al. teaches composition comprising colorant such as a dye or pigment, read on dye markers, and the step to add dye is obvious; “being possible for the use of said storage and use composition also to be use for marking at least one sensitive area” is the inherency of repellent composition comprising dye.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
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 before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613