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 .
Status of claims
Claims 1-10 as amended on 7/20/2026 are now pending.
Election/Restrictions
Newly amended claim 5 is now directed to a method of using a product, and, therefore, to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Invention I (claims 1-4 and 6-10) and Invention II (claim 5) are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, a method of controlling pest can be practiced with another materially different product or insecticide such as ethanol or isopropyl alcohol.
Since applicant has received an action on the merits for the originally presented invention, solely drawn to a product , this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 5 has been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 1-4 and 6-10 as amended on 7/20/2026 are under examination in the instant office action.
Claim Rejections - 35 USC § 112
Indefinite
Claim 4 is 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.
Claim 4 is rendered indefinite by the phrase “free of Eau de Cologne” on the lack of definitions or specific examples. Eau de Cologne is not a chemical compound but a category of parfums. Thus, it is unclear what is excluded from the claimed insecticide.
New Matter
Claims 1-4 and 6-10 as amended are now 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.
Insertion of the limitation “composition is free of Eau de Cologne and isopropyl alcohol” has no support in the as-filed specification. The insertion of this limitation is a new concept because it neither has literal support in the as-filed specification by way of generic disclosure, nor are there specific examples of the newly inserted limitation that would show possession of the concept of removing/avoiding/excluding “Eau de Cologne and isopropyl alcohol” from insecticide.
There is no generic disclosure of a concept of removing or excluding or avoiding “Eau de Cologne” and/or isopropyl alcohol from insecticide. The terms “Eau de Cologne” and “isopropyl alcohol” are not even mention in the as-filed specification by way of generic disclosure.
Although the exemplified compositions of specification tables 1-3 do not contain isopropyl alcohol, the concept of beneficial effect or any other effect of removing/avoiding isopropyl alcohol is not present or not exemplified.
This is not sufficient support for the newly inserted limitation. This is a matter of written description, not a question of what one of skill in the art would or would not have known. The material within the four corners of the as-filed specification must lead to the generic concept. If it does not, the material is new matter. Declarations and new references cannot demonstrate the possession of a concept after the fact. Thus, the insertion of limitation “composition is free of Eau de Cologne and isopropyl alcohol” is considered to be the insertion of new matter for the above reasons.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2009093079 (Jassim et al).
WO 2009093079 (Jassim et al) discloses a pesticide composition comprising plants Pimpinella anisum and Syzygium aromaticum (see abstract; see page 13, lines 11-15) which has activity against insects (page 13, line 26) including termites (example 13, pages 56-58). The pesticidal composition is provided as a dry powder (solid form), or as aqueous medium for hydroponic system (liquid form, semi-liquid) or as a spay (gaseous form); for example: see page 15, line 5, line 24 and line 28). The pesticide composition comprises generic excipients such as water or solvent, diluent or aqueous medium.
With regard to amounts the cited WO 2009093079 (Jassim et al) teaches that herbal preparations are effective against pests including insects in amounts of 1% or less (page 19, lines 9-10). In a particular embodiment, a pesticide composition against insects or termites comprises Pimpinella anisum in amount 0.3% and Syzygium aromaticum in amount 0.1% (example 13, page 57, lines 2-5).
Thus, the cited pesticide composition comprises less amounts of Pimpinella anisum and Syzygium aromaticum then the claimed composition.
However, it would have been obvious to one having ordinary skill in the art at the time the claimed invention was filed to increase amounts of herbal preparations of Pimpinella anisum and Syzygium aromaticum to at least 1% as taught/suggested by WO 2009093079 with a reasonable expectation of success in providing an effective product since both plants Pimpinella anisum and Syzygium aromaticum provide for pesticidal or insecticidal activities. It would be obvious to one of skill in the art able to optimize amounts of insecticidal plant preparations depending on particular applications. The amounts of plant materials would be obviously increased for concentrates as intended for storage, transportation and further dilutions as needed for applications.
Thus, the claimed invention as a whole was clearly prima facie obvious, especially in the absence of evidence to the contrary.
The claimed subject matter fails to patentably distinguish over the state art as represented be the cited references. Therefore, the claims are properly rejected under 35 USC § 103.
Response to Arguments
Applicant's arguments filed on 7/20/2026 have been fully considered but they are not all found persuasive.
The rejection of claims under 35 U.S.C. 102 (a) (1) as being anticipated by DE 3725374 (Schlitt) has been withdrawn because the cited composition contains isopropyl alcohol.
With regard to claims rejection under 35 U.S.C. 103 as being unpatentable over WO 2009093079 (Jassim et al) Applicants’ main argument is directed to unexpected synergistic results obtained with claimed composition which is exemplified by the Formulation F (see response page 7).
This argument is not found persuasive because it is well known and established that the scope of the showing must be commensurate with the scope of claims to consider evidence probative of unexpected results, for example. In re Dill, 202 USPQ 805 (CCPA, 1979), In re Lindner 173 USPQ 356 (CCPA 1972), In re Hyson, 172 USPQ 399 (CCPA 1972), In re Boesch, 205 USPQ 215, (CCPA 1980), In re Grasselli, 218 USPQ 769 (Fed. Cir. 1983), In re Clemens, 206 USPQ 289 (CCPA 1980). It should be clear that the probative value of the data is not commensurate in scope with the degree of protection sought by the claim.
In the instant case, the range of amounts of two main herbal ingredients as intended to provide acceptable insecticide efficacies are different as disclosed and as claimed. Moreover, the disclosed compositions contain a variety of additional components including non-inert components such as pest attractant or phagostimulants that are reasonably expected to contribute to insecticide efficacy.
It is well recognized that synergism is a highly unpredictable result that is very dependent on the ingredients used and the amounts of each. Thus, any combination for which synergism is not clearly established would be properly rejected because non-obviousness would not have been established.
No claims are allowed.
Conclusion
THIS ACTION IS MADE FINAL. 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 VERA AFREMOVA whose telephone number is (571)272-0914. The examiner can normally be reached Monday-Friday: 8.30am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached at (571) 272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Vera Afremova
September 2, 2026
/VERA AFREMOVA/ Primary Examiner, Art Unit 1653
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