DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The amendment filed April 8, 2026 has been received and entered.
3. Claims 1-29 are currently pending.
Election/Restrictions
4. Applicant's election with traverse of Group I, claims 1-19 and 21-29, the combination of cedarwood oil and sesame oil for the species in the reply filed on April 8, 2026 is acknowledged. The traversal is on the ground(s) that it would not be burdensome to examine both groups together. This is not found persuasive because each group raises distinct prior art and non prior art issues.
The requirement is still deemed proper and is therefore made FINAL.
5. Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
6. Claims 1-19 and 21-29 are examined on the merits.
Claim Rejections - 35 USC § 112
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 1-19 and 21-29 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.
7. Claims 1, 8, and 21 are indefinite because it is unclear what is encompassed by the designations of “primary” surfactant and “secondary” surfactant. It is unclear if these terms are meant to imply a specific limitation and what characteristics would make a surfactant a “primary” surfactant or a “secondary” surfactant.
8. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 7, 17, and 27 recites the broad recitation “mixed tocopherols”, and the claim also recites “Vitamin E” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
9. Claim 10 is indefinite because it is which items are being referred to by the use of “respectively” at the end of the 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.
10. Claim(s) 1-19 and 21-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huber (WO 2023/076685).
This reference teaches compositions for controlling pests. Claim 18 of the reference specifically teaches a composition which can comprise one or more essential oils such
as cedarwood oil and peppermint oil, a surfactant such as sodium lauryl sulfate, and polyglyceryl oleate (a surfactant as defined in the present application), and a solvent or combination of solvents comprising water and isopropyl alcohol. Claim 19 states that the composition of claim 18 can contain sodium chloride, vitamin E and glycerin. Thus, claims 18 and 19 of the reference encompass a pet control composition comprising the same ingredients as claimed by applicant.
The reference does not specifically teach adding the ingredients together in the amounts claimed by applicant. However, as discussed in MPEP section 2144.05(II)(A), “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” The reference teaches a range of amounts for each ingredient which overlap with those claimed by applicant (see claims 8, 10, 11, 13, and 20). Varying the concentration of ingredients within the ranges taught by the reference is not considered to be inventive unless the concentration is demonstrated as critical. In this particular case, there is no evidence that the claimed concentration of the ingredients produces an unexpected result. Thus, absent some demonstration of unexpected results from the claimed parameter, this optimization of ingredient concentration would have been obvious before the effective filing date of applicant’s claimed invention.
The reference does not specifically teach that the composition has all of the same effects claimed by applicant in claims 10 and 11. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
11. Claim(s) 1-19 and 21-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bissinger (US 10,149,481), Angone (US 2014/0050809), and Rosen (US 2012/0321587).
Bissinger teaches a pest control composition which comprises essential oils, sodium lauryl sulfate, isopropyl alcohol, water, glycerin, and vitamin E (see claims 1 and 13). The reference also teaches that the composition can comprise cedar oil and sesame oil (see column 13, line 40 and column 21). The reference teaches that each ingredient can be used in a range of amounts (see column 13, lines 28-40; column 15, lines 8-14; column 16, lines 8 and 43-45).
Angone teaches a pest control composition which comprises cedarwood oil, sesame oil, water, and polyglyceryl oleate (see Table 1).
Rosen teaches a pest control composition which comprises sodium chloride, water, and sodium lauryl sulfate (see claims 1-4 and 14).
These references show that it was well known in the art prior to the effective filing date of the invention to use the claimed ingredients in pest control compositions. It is well known that it is prima facie obvious to combine two or more ingredients each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is useful for the same purpose. The idea for combining them flows logically from their having been used individually in the prior art.
Based on the disclosure by these references that these substances are used in pest control compositions, an artisan of ordinary skill would have a reasonable expectation that a combination of the substances would also be useful in creating pest control compositions. Therefore, the artisan would have been motivated to combine the claimed ingredients into a single composition. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See MPEP section 2144.06, In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
The references do not specifically teach adding the ingredients together in the amounts claimed by applicant. However, as discussed in MPEP section 2144.05(II)(A), “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” Varying the concentration of ingredients within and around the ranges taught by the references is not considered to be inventive unless the concentration is demonstrated as critical. In this particular case, there is no evidence that the claimed concentration of the ingredients produces an unexpected result. Thus, absent some demonstration of unexpected results from the claimed parameter, this optimization of ingredient concentration would have been obvious before the effective filing date of applicant’s claimed invention.
The references do not specifically teach that the composition has all of the same effects claimed by applicant in claims 10 and 11. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
12. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Susan Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached at 571-272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
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