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 .
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.
Election/Restrictions
Applicant’s election without traverse of 3-(4-methoxyphenyl)-2-methylpropanal, a species of formula (I) wherein R¹ is methyl, R² is hydrogen, R³ is hydrogen, and R⁴ is para-methoxy, in the response dated 7/21/2026, is acknowledged. This election reads on claims 1-8 and 10-13; it is noted that claim 9 has been canceled by the applicant.
Claim Status
Claim 9 is cancelled.
Claims 1-8 and 10-13 are pending and are examined on the merits in this prosecution.
Claim Objection / Minor Informality
In claim 7, the term α-cyano-3-phenoxybenzyl is missing the dash between “3” and “phenoxybenzyl.”
Appropriate correction is required.
CLAIM REJECTIONS
Indefiniteness Rejection
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.
Claim 11 contains the trademark/trade name “MGK® Repellent 11”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/ trade name is used to identify/describe “MGK® Repellent 11” and, accordingly, the identification/description is indefinite.
Anticipation Rejection
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.
1) Claims 1-5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coulomb (US 2018/0201873 A1).
Coulomb teaches a perfuming composition comprising the following ingredients (pg 8, Example 3):
PNG
media_image1.png
419
455
media_image1.png
Greyscale
PNG
media_image2.png
162
321
media_image2.png
Greyscale
PNG
media_image3.png
324
449
media_image3.png
Greyscale
For claims 1-5, the composition of Example 1 contains 3-(4-methoxyphenyl)-2-methylpropanal, the elected species of claim 1.
It is noted that the claim preamble of claims 1-5 recites an “arthropod control composition.” This recitation is not considered to impose additional structural limitations on the claimed composition. As set forth in MPEP 2111(II), “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Since the preamble to claims 1-5 merely states the purpose or use of the claimed composition, the preamble statement “arthropod control composition” is not considered to have patentable weight in the context of the claims.
For claim 7, Coulomb teaches in Example 3 at least the co-ingredients linalool, geraniol, citronella oil, and coumarin.
2) Claims 1-5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kjeldmand (“Olfactory sensitivity of spider monkeys (Ateles geoffroyi) for six structurally related aromatic aldehydes,” Master Thesis, Linköpings Universitet, Linköping, Sweden, 2009).
Kjeldmand teaches a study wherein bourgeonal and five other aromatic aldehydes were used to test spider monkeys' sensitivity to change in molecular structures. The odorants are structurally related, with an aldehyde group, an aromatic ring and short carbon chain connecting the two. The aim of this study was therefore to determine olfactory detection threshold values of spider monkeys for six aromatic aldehydes, and to assess the impact of small changes in the molecular structure of the odorant on detectability (paragraph spanning pgs 1-2).
Kjeldmand teaches the following experiment:
PNG
media_image4.png
197
677
media_image4.png
Greyscale
PNG
media_image5.png
365
658
media_image5.png
Greyscale
For claim 7, Kjeldmand teaches diethyl phthalate was added to the test composition.
It is noted that the claim preamble of claims 1-5 recites an “arthropod control composition.” This recitation is not considered to impose additional structural limitations on the claimed composition. As set forth in MPEP 2111(II), “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Since the preamble to claims 1-5 merely states the purpose or use of the claimed composition, the preamble statement “arthropod control composition” is not considered to have patentable weight in the context of the claims.
Obviousness Rejections
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 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.
1) Claims 1-8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida (JPH 09157115 A; citations herein are from the English translation provided by Espacenet).
Ishida teaches a miticidal agent, benzyl isothiocyanate, suitable for indoor use and having a low toxicity to human body, that preferably adds a stimulating, odor- suppressing component to the agent (Abstract). Ishida teaches the amount of the stimulating, odor-suppressing compound to be added to the perfume is preferably 1-10,000 parts per part of benzyl isothiocyanate (pgs 1-2, Abstract). Ishida teaches the odor-suppressing compound may include aromatic, green-based fragrances such as 2-methyl-3-(p-methoxyphenyl)propanal (canthoxal from IFF Inc.), the elected species of Formula (I) (pg 6: 17-21). This teaching reads on claims 1-5.
For claim 6, Ishida teaches the arthropod is a mite (Abstract).
For claim 7, Ishida teaches co-ingredients including β-caryophyllene and cedar wood oil (pg 5: 18 to pg 6: 2).
For claims 8 and 10, Ishida teaches a spray, aerosol, oil, emulsion, powder, or fumigant (pg 7: 11-14), each of which has an operating principle wherein the miticidal composition comes into direct contact with the claimed composition.
For claims 11 and 12, Ishida teaches a spray and teaches the composition can be applied to fibers and powder carriers such as inorganic powders and organic powders used in commercial insecticidal compositions (pg 7: 16-27; pg 9: Example 4).
The examiner acknowledges that some picking and choosing was used to arrive at the instantly claimed composition in view of Ishida. However, the claimed composition, including the canthoxal, is taught as known and used for insect or arthropod control. Further, Ishida teaches compositions for administration with the elected aldehyde, as well as articles for administration of the miticide. It would have therefore been prima facie obvious to a person having ordinary skill in the art to administer the claimed ingredient for the purpose of arthropod control, with a reasonable expectation of success that the treatment would be efficacious, as taught by Ishida.
2) Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ishida (JPH 09157115 A; citations herein are from the English translation provided by Espacenet), In view of Becker (US 10,537,654).
The teachings of Ishida are discussed above.
As previously discussed, Ishida teaches a spray formulation of the claimed composition. See, for example, page 9, Example 2. However, Ishida does not teach an electric diffuser.
Becker teaches the missing element of Ishida.
Becker teaches an automated insect control system (col 1: 58-61) that comprises an insect repellent cartridge in a networked scent diffusion device that includes a reservoir that holds a liquid and contains an atomizer head assembly (col 2: 20-24). Becker teaches the diffusion device is powered by AC or DC power (col 20: 8-9).
The skilled artisan would have expected success in substituting Becker’s automated insect control system comprising an electric diffuser for the sprayer taught by Ishida since Becker teaches the automated insect control system that can be centrally controlled and managed utilizing a computerized network and customized application to different physical areas (col 15: 56 to col 16: 12).
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached on (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL P COHEN/Primary Examiner, Art Unit 1612
Prosecution Insights