Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Status
Applicants’ amendments and arguments filed 11/14/2025 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claims 2, 4, 6, 8, and 11-20 are canceled.
Claims 1, 21, and 27 are amended.
Claims 1, 3, 5, 7, 9-10, and 21-32 are examined on the merits.
Claim Interpretation
Claim 1 utilizes the relative term "about". The term “about” is defined by the instant specification as meaning an acceptable error range of +/- 20% (page 33, [00129]). Therefore, the term “about” in claim 1 will be broadly interpreted by the examiner to mean +/- 20%.
Maintained Rejections
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 5, 7, 9-10 and 21-32 are rejected under 35 USC 103(a) as being unpatentable over Messina et al. (WO 2011142918A1) in view of Manhas et al. (US 20140220164) and Bessette (US 20070190094) and as evidenced by Chaieb et al. (Chaieb, K., Hajlaoui, H., Zmantar, T., Kahla-Nakbi, A.B., Rouabhia, M., Mahdouani, K. and Bakhrouf, A. (2007), The chemical composition and biological activity of clove essential oil, Eugenia caryophyllata (Syzigium aromaticum L. Myrtaceae): a short review. Phytother. Res., 21: 501-506. https://doi.org/10.1002/ptr.2124).
A composition (as a pest control/spray composition) comprising geraniol, corn mint oil, eugenol, caryophyllene sodium lauryl sulfate and as water based formulation and/or menthone or isomenthone or menthyl acetate therein is claimed.
As evidenced by Chaieb, clove oil comprises both eugenol and caryophyllene (page 501, table 1)
Messina claims a repellent composition comprising from about 0.05 to about 30 weight percent of geraniol oil and further comprising a mint oil in an amount from about 0.05 to about 15 weight percent (claims 1-3). Messina teaches the mint oil to be corn mint oil (0050). Messina further defines the term “about” to be plus or minus 10% of the stated value (0033). Messina teaches the composition as a pest control spray composition (see 0067 and 0069) and further teaches the composition as a water based emulsion (0113-0114) for the intended purpose of pest control (see entire document including e.g.- title and abstract and claims). Messina further teaches the composition to comprise sodium lauryl sulfate (see 0005, 0008-0010 and claims) and further comprising clove oil (see 0005, 0026 and 0071). Messina, however, does not expressly teach the further inclusion of menthone or isomenthone or menthyl acetate therein.
Manhas beneficially teaches a composition (as a pest control spray composition see 0101, claims 11 and 21) comprises or may comprise (often within various preferred embodiments) eugenol (see 0053 and 0060, Tables 1 and 2 and claim 7), menthone (see 0053 and Table 1), isomenthone (see 0053 and Table 1) therein for the intended purpose of pest control (see entire document including e.g.- title and abstract and claims).
Bessette beneficially teaches a composition (as a pest control spray composition see 0020 and 0060) comprises or may comprise (often within various preferred embodiments) menthyl acetate (see 0050 and claims 1 and 6) (therapeutically contained within a pesticide composition) therein for the intended purpose of pest control (see entire document including e.g.- title and abstract and claims).
It would have been obvious to one of ordinary skill in the art to provide a composition (as a pest control/spray composition) comprising geraniol, corn mint oil, sodium lauryl sulfate and as water based formulation and/or menthone or isomenthone or menthyl acetate and further comprising clove oil therein-for their well-known individual activities/purposes therein, based upon the teachings provided by the cited references (as fully discussed above) - and for the following reasons. It would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to combine the instant ingredients for their known benefits since each is well known in the art for the same purpose (for the intended purpose of pest control)) and for the following reasons: In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court reaffirmed "the conclusion that when a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976)). The Supreme Court also emphasized a flexible approach to the obviousness question, stating that the analysis under 35 U.S.C. § 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418; see also id. at 421 ("A person of ordinary skill is... a person of ordinary creativity, not an automaton."). The Supreme Court thus implicitly endorsed the principle, stated in In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (citations omitted), that: 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 which is 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. The adjustment of particular conventional working conditions (e.g. determining effective amounts and/or forms and/or combining the same active ingredients would intrinsically obtain an emulsion) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
Moreover, the cited references are also relied upon for the reasons discussed above. If not expressly taught thereby, based upon the overall beneficial teaching provided therein with respect to the intended purpose use of pest control in the manner disclosed therein, the adjustment of a particular conventional working condition therein (e.g. determining one or more suitable ranges, including dosing, amounts, and proportions, in which to provide therapeutically effective amounts in the composition), is deemed merely a matter of judicious selection and routine optimization that are well within the purview of the skilled artisan. From the teachings of the reference, 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 was prima facie obvious to one of ordinary skill in the art at the time the invention effective filing date, as evidenced by the references, especially in the absence of evidence to the contrary.
With respect to instant claims, please note that the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic to the composition reasonably suggested by the cited references, as a whole. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting (see, e.g., MPEP 2112).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 5, 7, 9-10, and 21-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 7-8, 13-14 of U.S. Patent No. 10149481B2 in view of Messina et al. (WO 2011142918A1) in view of Manhas et al. (US 20140220164) and Bessette (US 20070190094) and as evidenced by Chaieb et al. (Chaieb, K., Hajlaoui, H., Zmantar, T., Kahla-Nakbi, A.B., Rouabhia, M., Mahdouani, K. and Bakhrouf, A. (2007), The chemical composition and biological activity of clove essential oil, Eugenia caryophyllata (Syzigium aromaticum L. Myrtaceae): a short review. Phytother. Res., 21: 501-506. https://doi.org/10.1002/ptr.2124). Although the claims at issue are not identical, they are not patentably distinct from each other.
10149481B2 claims a composition for controlling arthropods comprising effective amounts of geraniol, lauric acid, isopropyl myristate, mineral oil, and vitamin E (claim 1; according to the claim limitations of the instant claims 1, 21, and 27). Claim 7 of 10149481B2 claims the composition further comprises corn mint oil (according to the claim limitations of the instant claims 1, 3, 21-22, and 27-28). Claim 8 of 10149481B2 claims the composition is a formulation and claim 13 of 10149481B2 claims the formulation further comprising sodium lauryl sulfate (according to the claim limitations of the instant claims 1, 21, and 27). Claim 14 of 10149481B2 claims the formulation is formulated in the form of one of a water-based formulation, a dust formulation, a spray formulation, or a burning formulation (according to the claim limitations of the instant claims 9-10, 25-26, and 31-32).
10149481B2 fails to teach the addition of clove oil (eugenol and caryophyllene) and menthone, isomenthone, or methyl acetate, respectively as in instant claims 1, 5, 7, 21, 23-24, 27, and 29-30. Furthermore, 10149481B2 fails to teach the concentration of geraniol and corn mint oil as in instant claims 1, 3, 21-22, and 27-28.
As outline above, Messina et al. in view of Manhas et al and Bessette and as evidenced by Chaieb et al. teaches a pest control composition comprising geraniol, corn mint oil, clove oil (eugenol and caryophyllene), water, sodium lauryl sulfate, and menthone, isomenthone, or menthyl acetate respectively.
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim an arthropod composition comprising geraniol, corn mint oil, water, and sodium lauryl sulfate as outlined by 10149481B2 with the ready for improvement with the known technique of adding clove oil and menthone, isomenthone, or menthyl acetate respectively as outlined by Messina in view of Manhas and Bessette, and as evidenced by Chaieb. Adding the forementioned components to a pest control composition geraniol, corn mint oil, water, and sodium lauryl sulfate as claimed by instant claims 1, 5, 7, 21, 23-24, 27, and 29-30 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan. Furthermore, it would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim arthropod composition comprising geraniol, corn mint oil, water, and sodium lauryl sulfate as outlined by 10149481B2 with the ready for improvement with the known technique of adjusting the concentrations of geraniol and corn mint oil as outlined by Messina. Adjusting the forementioned components of pest control composition geraniol, corn mint oil, water, and sodium lauryl sulfate as claimed by instant claims 1, 3, 21-22, and 27-28 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Response to Applicant’s Arguments
Applicant’s arguments filed on 02/04/2025 have been fully considered.
In regards to Applicant’s arguments against the 35 USC § 103 rejection, Applicant argues that the newly amended independent claims 1, 21, and 27 now over come the prior art of record. Applicant outlines the instant claims now claim “about 33 up to 50 weight percent geraniol” while the prior art, specifically Messina teaches a pest control composition including 0.05 to 30% geraniol. Applicant continues by arguing one skilled in the art reviewing Messina would not have been motivated to claims the instant independent claims and further argues that Manhas, Bessette, and Chaieb do not cure this deficiency.
In response to Applicant’s argument, it is first noted that Applicant’s instant claims have been amended to incorporate the term “about” which as outlined in the claim interpretation above, Applicant’s instant specification defines “about” as +/- 20%. Therefore, in light of the instant specification, the examiner interprets the “about 33 up to 50 weight percent geraniol” in instant independent claims 1, 21, and 27 to include from 26.4 up to 60% geraniol. It is further noted that Messina teaches the pest control composition comprising about 0.05 to 30% geraniol (claims 1-3) and defines about as +/-10% (0033), thus teaching a range of up to 33% geraniol. Therefore, Messina teaches the concentration of geraniol as claimed by the instant claims 1, 21, and 27.
In summary, the examiner is not persuaded by Applicant’s arguments and the rejections of record are maintained.
In regards to Double Patenting rejection, Applicant has provided no objection to the rejection of record. Therefore, the double patenting rejection is maintained.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA NICOLE ISNOR whose telephone number is (703)756-5561. The examiner can normally be reached Monday-Friday 5:30am-3pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./Examiner, Art Unit 1611