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 II, claims 22-36) in the reply filed on 4/30/26 is acknowledged. The traversal is on the ground(s) that the restriction requirement should be withdrawn. This is not found persuasive because as stated in the restriction a) The inventions have acquired a separate status in the art in view of their different classification; (b) The inventions have acquired a separate status in the art due to their recognized divergent subject matter…..
Secondly, the restriction requirement clearly states that the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product
claims and process claims may be maintained.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-21 and 37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/30/26.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 22-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a written description rejection.
The present claims are directed to arthropod repellent system, comprising: a composition comprising massoia essential oil, one or more massoia essential oil component, and/or one or more analog of the one or more massoia essential oil component.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by him. The courts have stated:
“To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that “the inventor invented the claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re Gostelli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (“[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.”). Thus, an applicant complies with the written description requirement “by describing the invention, with all its claimed limitations, not that which makes it obvious,” and by using “such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention.” Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.” Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the Application. These include “level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient.” MPEP § 2163.
Further, for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim. In Regents of the University of California v. Eli Lilly & Co. the court stated:
“A written description of an invention involving a chemical genus, like a description of a chemical species, ‘requires a precise definition, such as by structure, formula, [or] chemical name,' of the claimed subject matter sufficient to distinguish it from other materials.” Fiers, 984 F.2d at 1171, 25 USPQ2d 1601; In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 284985 (CCPA 1973) (“In other cases, particularly but not necessarily, chemical cases, where there is unpredictability in performance of certain species or subcombinations other than those specifically enumerated, one skilled in the art may be found not to have been placed in possession of a genus …”) Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
Here, applicant has not described a reasonable number of members of the genus now claimed massoia essential oil, one or more massoia essential oil component, and/or one or more analog of the one or more massoia essential oil component.
The instant claims are often referred to as “reach-through” claims, where an applicant attempts to obtain patent protection on an invention not yet discovered. The Court of Appeals for the Federal Circuit addressed claims of this sort in great detail in University of Rochester v. G.D. Searle and Co. (69 USPQ 2nd 1886, CAFC 2004). In Rochester, the Federal Circuit upheld the district court's ruling that patent claims which recited administration of compounds not disclosed, but rather to be identified in a screening assay, were invalid on their face. While the instant claims are drawn to compositions comprising compounds rather than methods of administering them, the situation is analogous to that in Rochester. Since the specification does not disclose to the public the structures claimed, it does not meet the written description requirement of 35 USC § 112, first paragraph.
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) 22-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (EP 4096406 same as WO 2021/150167 Cai et al) in view of McNally et al. (US 5,089298)
With regards to instant claim 22, Ji teaches an anthropod (i.e, not limited to insects) repellent comprising a blend of a massoia lactone compound, a massoia lactone-like compound or mixture thereof massoia lactone (see claim 24) and essential oil (see Fig. 8) and 5,6-dihydro-6-nonyl-2H-pyran-2-one a lactone (as required by instant claim 26 and 27-29, see claim 13) as a spray (i.e., in a device/applicator see claim 20) and an amyl-pyrone (see claim 13), further comprises DEET, citronella oil (see Fig. 6, as required by instant claim 30), with regards to instant claim 33, a glycerin, (see pg 9, lines 10+, as required by instant claims 33- 34) further comprises propellant (see pg 8, lines 25+, as required by instant claim 35).
However Ji fails to teach per-se the substrate (as required by instant claim 23-24. However Ji teaches an article that comprises the composition wherein the article is a fabric or solid substrate that said pest comes in contact with. It is within the purview of the skilled artisan that the fabric intrinsically comprises a cellulose as fabrics are made of cellulose, polymers or both and thus repels the insect and suggested in Example 2, candles do have wicks (as required (see claim 8) Absent factual evidence to the contrary (as required by instant claim 36) Ji also states that “After massoia lactone application, the majority of mosquitoes did not approach and stayed away from the fabric, suggesting that massoia lactone acts as a volatile repellent compound and therefore teaches instant claim 31 see pg 14, lines 20+)) With regards to applying heat will occur upon starting the candle which gives heat (as required by instant claim 25) as in order for a candle to work it must be lit.
Ji also fails to teach instant claim 32 wherein the composition comprises pyrethrin etc.
McNally teaches pyrethrin is known for its insect/arthropod repellent qualities.
Therefore one of ordinary skill in the art would have been motivated to include in the anthropod repellent composition taught by Ji with a reasonable expectation of success because the art recognizes that pyrethrin has an anthropod repellent quality. It would have been obvious to a person having ordinary skill in the art at the time of applicant's invention to add pyrethrin to the anthropod repellant for both additive or synergistic effect since the art recognizes that pyrethrin has an anthropod repellent quality.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIRLEY V GEMBEH whose telephone number is (571)272-8504. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIRLEY V GEMBEH/Primary Examiner, Art Unit 1615 5/6/26
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