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 Group I, claims 1-11, in the reply filed on February 18, 2026 is acknowledged. The traversal is on the ground(s) that Groups I and II “share a technical relationship and a common special technical feature as required under MPEP § 806.05(c )”. This is not found persuasive because this application is not a counterpart to a PCT application. Also MPEP § 806.05(c ) relates to “Criteria of Distinctness Between Combination and Subcombination”, which Groups I and II are not.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 February 18, 2026.
Claim Objections
Claim 3 is objected to because of the following informalities: “the group comprising of…”.
Claims 3 and 4 are objected to because of the following informalities: the upper case ”A” in “(3-Aminopropyl)…”.
Claim 8 is objected to because of the following informalities: “the clay” should be clarified as that prior to silane modification recited in claim 1. Also a comma is necessary in “saponite halloysite”.
Appropriate corrections are required.
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.
(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.
Claim(s) 1, 3, 8, and 11 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Gan (CN 113439753A; citations are to the attached machine translation of the Description) as evidenced by Wang (Wang, L. et al., Molecular dynamics simulation on the thermodynamic properties of insulating paper cellulose modified by silane coupling agent grafted nano-SiO2, AIP Advances 9, 125134 (2019)).
Gan teaches a plant growth regulator comprising modified plant essential oils, specifically modified rose essential oil, which has been mixed with “modified bentonite liquid” at a weight ratio of 1:2 (p.1 4th and last paras. under “Summary of the invention”, p.2 1st through 4th paras.; see p.2 9th para., Examples 1-3). The “modified bentonite liquid” is bentonite modified with silane coupling agent KH560 (p.2 4th para., Examples 1-3). Wang evidences that KH560 is 3-glycidoxypropyltrimethoxy silane (p.3 rt. col. under “II. MODEL BUILDING AND DYNAMICS SIMULATION DETAILS”). The rose essential oil and the modified bentonite liquid are stirred and then mixed with cyclodextrin to obtain a modified essential oil (p.2 1st-3rd paras.). Therefore the rose essential oil is “homogenized with a silane modified clay” as in claim 1. Regarding claim 11, for product claims, “when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent”. MPEP §2112.01(I). Therefore Gan’s modified rose essential oil is presumed to comprise the particle size in claim 11.
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.
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.
Claim(s) 1-6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Abe (JP 2009242279 A) in view of Sujani (Sujani, B., et al., A facile method to modify bentonite nanoclay with silane, Int Nano Lett (2017) 7:237–24).
Abe teaches a “clay mineral-based composite material having a physiologically active function, more specifically, an organic compound having a physiologically active function such as an insect repellent / insect repellent function, an antimicrobial function, a freshness maintaining function, an aroma function” is introduced into the clay mineral (para.0001; see para.0016; see generally entire document). “[A] silyl group is bonded to the surface of a clay mineral as a host compound of a biologically active organic compound using a silane coupling agent such as trimethylchlorosilane, octadecyldimethylchlorosilane, tetraethoxysilane, etc.” and due “to the surface hydrophobicity brought about in the above, water vapor in the air is prevented from approaching the clay mineral layer, and as a result, the release of the organic compound from the clay mineral layer is delayed” (para.0028).
The “organic compound having a physiologically active function such as an insect repellent / insect repellent function, an antimicrobial function, a freshness maintaining function, an aroma function” include the essential oils in claim 6 (paras.0025-26, 0040-42). The ratio of the silanized clay to the essential oil is about 4g to 1.2 g (paras.0033, 0041) or 0.3 which is within the range in claim 2.
Abe teaches cation of the clay mineral is sodium, calcium, etc. (para.0016).
Abe does not specifically teach a silane coupling agent of formula (I) in claims 1, 3, and 4.
Sujani teaches efficiently functionalizing “surface of bentonite nanoclay (BNC) through the grafting of 3-aminotriethoxysilane (APTES)” (title; abstract).
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Abe and Sujani and use APTES as recited in instant claim(s) 1, 3, and 4. The skilled person would have been motivated to do so because Abe teaches “any silane that can react with the clay mineral and provide a hydrophobic group on its surface” can be used (para.0030), and Sujani teaches APTES allows “rapid one-pot reaction under mild conditions” (p.240 rt.col.).
Claim(s) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Abe (JP 2009242279 A) in view of Sujani (Sujani, B., et al., A facile method to modify bentonite nanoclay with silane, Int Nano Lett (2017) 7:237–241) and Castro (Castro, K., et al., Acaricidal activity of cashew nut shell liquid associated with essential oils from Cordia verbenacea and Psidium guajava on Rhipicephalus microplus, Journal of Essential Oil Research (2019) available at https://doi.org/10.1080/10412905.2019.1580225).
Abe and Sujani do not specifically teach beta-caryophyllene and cardanol acetate in claim 7.
Castro is drawn to acaricidal and larvicidal activity of essential oils including beta-caryophyllene and cardanol (title; abstract; p.3 rt. col., p.4 Table 1).
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Abe and Castro and include beta-caryophyllene and cardanol acetate as recited in the instant claim(s). The skilled person would have been motivated to do so because both are drawn to pest controlling essential oils and Castro teaches activities of beta-caryophyllene and cardanol acetate. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” MPEP §2144.06 (I) (citations omitted).
Regarding the weight concentration of each essential oil compounds, the skilled person could devise concentration of each based on the target pest or other factors such as relative cost, among others. Except for eugenol all compounds may comprise up to 20% which indicates an even of the components. Optimization within prior art conditions or through routine experimentation does not support patentability absent comparative evidence of criticality of the claimed range. See MPEP § 2144.05 (II) (citations omitted). Some showing of comparative advantage(s) of the combination of the recited concentrations would aid in determining non-obviousness of the ranges.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, i.e., claim 9 (and cancellation of claim 8 which is broader than claim 9).
Fukushi (Fukushi, K., et al., Desorption of Intrinsic Cesium from Smectite: Inhibitive Effects of Clay Particle Organization on Cesium Desorption, Environ. Sci. Technol. 2014, 48, 10743−10749 (2014)) evidences that Kunipia-F montmorillonite that Abe uses (Examples 1-3) has a median grain size of 1.7 µm, specific density of 2880 kg/m3 or 2.88 g/cm3, and CEC of 1.08 meq/g or 108 meq/100 g (Table 1, p. 10745 left col.). Tachi (Tachi, Y., et al., Diffusion and sorption of Cs+, Na+, I and HTO in compacted sodium montmorillonite as a function of porewater salinity: Integrated sorption and diffusion model, Geochimica et Cosmochimica Acta 132 (2014) 75–93) evidences that sodium modification of Kunipia-F results in lowering the density to 800 kg/m3 or 0.8 g/cm3 which is again outside the range in claim 10.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614