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 without traverse of Group I (claims 109-126) and the species of thymol in the reply filed on 03/26/26 is acknowledged.
The lack of unity is still deemed proper and is therefore made FINAL.
Claims 112, 115, 127, and 128 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claims 109-111, 113-114, and 116-126 are included in the prosecution.
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 110-111, 117, 119, and 120 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 pre-AIA the applicant regards as the invention.
Claim 110 recites “… wherein the pesticide agent is an insecticide, rodenticide, or a combination of two or more of the foregoing” (emphasis added). Since only two pesticide agents are recited, i.e., insecticide and rodenticide, it is unclear how more than two pesticide agents can be combined. Clarification and/or amendment are required.
Claim 111 recites “… wherein the pesticide agent is selected from Table 1” (emphasis added). Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted). In the instant case, there is a more practical way to define the invention without the use of a table.
Claim 117 recites that the pesticide agent is an herbicide. It is unclear how a pesticide can be an herbicide. Clarification and/or amendment are required.
Claim 117 also recites that the pesticide agent is a repellent. It is unclear what the repellent is repelling, i.e., a pest, an insect, a rodent, a worm, etc. Clarification and/or amendment are required.
Claim 119 recites that the pests comprise a plant. Although invasive plants or weeds may be considered pests, instant claim 119 includes plants that are not invasive and not considered pests. Clarification and/or amendment are required.
Claim 120 recites “… wherein the smoke is composed mainly of the pesticide agent …” (emphasis added). The term “mainly” is akin to the term “preferably” and renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Notice for all US Patent Applications filed on or after March 16, 2013
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 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claims 109-111, 113-114, 117-121, and 124-126 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyazaki (US 2010/0152289 A1).
Instant claim 109 is drawn to a method of controlling pests in an area, the method comprising: exposing the pests to a smoke comprising a reaction product of an initiator and a pesticide agent for a time sufficient to achieve a pesticidal effect.
Miyazaki teaches a method for controlling harmful arthropods comprising applying an effective amount of an organic sulfur compound to harmful arthropods or a place where harmful arthropods inhabit ([0014], [0307], claims 1 and 9). Miyazaki teaches a pesticidal composition comprising an organic sulfur compound ([0013]), the use of an oxidant including organic peroxides ([0194]), a smoking agent ([0276], [0306]), and mixed with insecticides ([0308]-[0333]). Liquid carriers including orange oil are disclosed ([0279]).
Regarding instant claim 109, the limitation of a method of controlling pests in an area is anticipated by the method for controlling harmful arthropods comprising applying an effective amount of an organic sulfur compound to harmful arthropods or a place where harmful arthropods inhabit ([0014], [0307], claims 1 and 9), as taught by Miyazaki.
Regarding instant claim 109, the limitation of exposing the pests to a smoke comprising a reaction product of an initiator and a pesticide agent for a time sufficient to achieve a pesticidal effect is anticipated by the use of the pesticidal composition comprising an organic sulfur compound ([0013]), the use of an initiator which is an oxidant including organic peroxides ([0194]), a smoking agent ([0276], [0306]), insecticides ([0308]-[0333], Formulation Example 18 – [0392]), as well as the pesticidal orange oil ([0279]), as taught by Miyazaki.
Regarding instant claims 110 and 117, the limitations of an insecticide is anticipated by the combination of insecticides ([0308]-[0333]), as taught by Miyazaki.
Regarding instant claims 111 and 113-114, the limitations of the pesticide agent selected from Table 1, which includes oil of orange, is anticipated by the orange oil ([0279]), as taught by Miyazaki.
Regarding instant claim 118, the limitation of the pesticide agent present in the smoke in an amount effective to produce a pesticide effect in the smoke to kill or inactivate at least 50% of the pests is anticipated by the insecticides ([0308]-[0333]) and the death rate of the pest of 70% or more ([0401]), 100% ([0404]), and 90% or more ([0407]), as taught by Miyazaki.
Regarding instant claim 119, the limitation of the pest is anticipated by the pests which may include without limitation a rodent, an invertebrate, an insect, an arachnid, a tick, a mite, a flatworm, a nematode, an annelid, and a protozoan; and specific insects including mosquitos, fleas, ants, termites, grasshoppers, cockroaches, wasps, lepidopterans, aphids, weevils, armyworms, beetles, and larvae ([0077]), as taught by Miyazaki.
Regarding instant claim 120, the limitation of the smoke which is composed mainly of pesticide agent and one or both of a thermal decomposition product of the initiator and an oligomerization product of the initiator is anticipated by the use of the initiator which is an oxidant including organic peroxides ([0194]), a smoking agent ([0276], [0306]), insecticides ([0308]-[0333]), as well as the pesticidal orange oil ([0279]), as taught by Miyazaki.
Regarding instant claim 121, the limitation of the smoke which is a product of the process comprising steps (a) and (b) is anticipated by the use of the initiator which is an oxidant including organic peroxides ([0194]), a smoking agent ([0276], [0306]), insecticides ([0308]-[0333], Formulation Example 18 – [0392]), as well as the pesticidal orange oil ([0279]), as taught by Miyazaki. The same components and the same method of controlling harmful arthropods (claim 9) by using the same components is taught by Miyazaki.
Regarding instant claim 124, the limitation of a filler agent is anticipated by the solid carrier including finely-divided powder or granules of clay (e.g., kaolin clay) or hydrated silica ([0278]), as taught by Miyazaki.
Regarding instant claim 125, the limitation of the composition that is not fluid is anticipated by the pesticidal composition in the form of a powder, a granule, a tablet, a poison bait, a mosquito coil, an electric mosquito mat, or a sheet ([0276]), as taught by Miyazaki.
Regarding instant claim 126, the limitation of the pest which is an insect is anticipated by the pests which include without limitation an insect, and specific insects including mosquitos, fleas, ants, termites, grasshoppers, cockroaches, wasps, lepidopterans, aphids, weevils, armyworms, beetles, and larvae ([0077]), as taught by Miyazaki.
Regarding instant claim 126, the limitation of the insecticide is anticipated by the insecticides ([0308]-[0333]), as taught by Miyazaki.
Regarding instant claim 126, the limitation of the pesticidal effect that achieves at least 90% knock-down of the insect is anticipated by the death rate of the pest of 100% ([0404]), and 90% or more ([0407]), as taught by Miyazaki.
Regarding instant claim 126, the limitation of the insecticide that is nontoxic to humans is anticipated by the orange oil ([0279]), as taught by Miyazaki.
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.
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 at the time any inventions covered therein were effectively filed 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 at the time a later invention was effectively filed 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 116 is rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki (US 2010/0152289 A1), as applied to claims 109-111, 113-114, 117-121, and 124-126 above, in view of Kaushik (US 2012/0128648 A1).
Instant claim 116 is drawn to the method of claim 109, wherein the pesticide agent is a thymol compound.
The elected species of the pesticide agent is thymol.
The teaching of Miyazaki is discussed above.
Miyazaki does not expressly teach that the pesticide agent is thymol.
Kaushik teaches a biopesticide formulation capable of serving as effective pest control management agents (Abstract and claims 1-51). The biopesticide composition has pesticidal attributes which are effective against insects (claims 1, 4-6, and 32-35). The active ingredient includes thymol (5-methyl-2-isopropyl-1-phenol) (claim 50).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method of controlling harmful arthropods and insects by applying an effective amount of an organic sulfur compound to harmful arthropods or a place where harmful arthropods inhabit, an oxidant including organic peroxides, a smoking agent, insecticides and orange oil, as taught by Miyazaki, substitute the orange oil with thymol, as taught by Kaushik, and arrive at the instant invention.
One of ordinary skill in the art would have been motivated to do this because both references teach the use of plant based insecticidal agents. The simple substitution of one known element for another to obtain predictable results is obvious. Please see MPEP 2141(III)(B). Both orange oil and thymol are effective in insecticidal formulations as taught by Miyazaki and Kaushik respectively. One of ordinary skill in the art would have had a reasonable expectation of success in substituting the orange oil of Miyazaki with the thymol taught by Kaushik and effectively control insects in an area.
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 would have been 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.
Regarding instant claim 116, the limitation of thymol would have been obvious over the thymol (5-methyl-2-isopropyl-1-phenol) (claim 50), as taught by Kaushik.
Claims 122-123 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki (US 2010/0152289 A1), as applied to claims 109-111, 113-114, 117-121, and 124-126 above, in view of Banish et al. (WO 2018/187809 A1 – “Banish”).
Instant claim 122 is drawn to the method of claim 121, wherein the composition comprises a monomer that exothermically polymerizes upon initiation with the initiator to generate the smoke wherein the initiator is present at a mass concentration that is at least a mass concentration of the monomer.
The teaching of Miyazaki is discussed above.
Miyazaki does not expressly teach a monomer that exothermically polymerizes upon initiation with the initiator to generate the smoke.
Banish teaches a smoke producing method which produces a non-incendiary organic-polymerization based, smoke-producing reaction (Abstract, claims 1-33). “The method of generating smoke comprises initiating a frontal polymerization reaction by heating a composition comprising a monomer compound that exothermically polymerizes upon initiation with an initiator compound and an initiator compound that initiates polymerization of the monomer compound. The polymerization of the monomer compound is exothermic, and in one embodiment the concentration of initiator compound is at least five percent of the concentration of monomer compound. The smoke mainly comprises thermal decomposition products of the initiator compound” (Abstract). The monomer compound is TMPTA (claims 21 and 32) which is a trifunctional monomer ([0044]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method of controlling harmful arthropods and insects by applying an effective amount of an organic sulfur compound to harmful arthropods or a place where harmful arthropods inhabit, an oxidant including organic peroxides, a smoking agent, insecticides and orange oil, as taught by Miyazaki, in view of the non-incendiary organic-polymerization based, smoke-producing reaction by initiating a frontal polymerization reaction by heating a composition comprising a monomer compound that exothermically polymerizes upon initiation with an initiator compound, as taught by Banish, and arrive at the instant invention.
One of ordinary skill in the art would have been motivated to do this because Banish teaches the advantages of generating smoke from a decomposition of the monomer-initiator pair including lower reaction temperatures; higher efficiency of smoke production ([0012]); low or no flame front (safe to use indoors, outdoors, and in training environments with flame hazards); low toxicity of the smoke and any non-smoke residues; environmentally friendly (little to no residue or hazardous byproducts); high packing density; high smoke yield/low agglomeration of smoke particles; easily aerosolized, rapid smoke generation (short time constant); good obscuration properties in the visible portion of the electromagnetic spectrum; long smoke durations with appropriate buoyancy; and good shelf life (i.e., after mixing components, the mixture does not self-initiate polymerization) ([0034]).
Regarding instant claims 122 and 123, the limitations of a monomer that exothermically polymerizes upon initiation with the initiator to generate the smoke wherein the initiator is present at a mass concentration that is at least a mass concentration of the monomer (instant claim 122) and the initiator having a mass concentration that is at least five times a mass concentration of the monomer (instant claim 123) would have been obvious over the method of generating smoke comprising initiating a frontal polymerization reaction by heating a composition comprising a monomer compound that exothermically polymerizes upon initiation with an initiator compound and an initiator compound that initiates polymerization of the monomer compound, and the concentration of initiator compound that is at least five percent of the concentration of monomer compound (Abstract), as taught by Banish.
Conclusion
No claims are allowed.
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/ARADHANA SASAN/Primary Examiner, Art Unit 1615
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