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 the Claims
Claims 1-20 are pending. Claims 1-2 and 4-7 are rejected. Claims 3 and 8-20 are withdrawn.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I – Claims 1-2 and 4-71, drawn to a cotton seed bug (CSB) pheromone or attracting composition, classified in CPC A61P19/00 (pest attractants), A01N35/02 (keto- or CHO-containing composition) and A01N37/06 (ester-containing composition).
Group II – Claim 3, drawn to a CSB repelling composition, classified in CPC A61P17/00 (pest repellants) and A01N27/00 (containing hydrocarbons).
Group III – Claims 8-15, drawn to a method of using a CSB attractant, classified in CPC A01M1/10 (catching insects).
Group IV – Claims 16-20, drawn to a device comprising a CSB attractant, classified in CPC A01M1/02 (device for catching insects).
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In this case, the inventions as claimed have materially different chemical designs, due to their different chemical compositions. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions I and III, and II and III, 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 the products can be used in cosmetic fragrances or perfumes.
Inventions III and IV are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the process of monitoring CSBs can be practiced with a different device, such an infrared camera.
Inventions I and IV are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination (Group I) as claimed does not require the particulars of the subcombination as claimed, because the claims of Group I do not require a device or a trap, nor do they require the same Markush grouping of alternative compounds. The subcombination (Group II) has separate utility such as a device, whereas the Group I is a chemical composition that is not capable of functioning as a device.
Inventions II and IV are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed do not overlap and are not obvious variants.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Groups I through IV have different classifications, which shows that each
invention has attained recognition in the art as a separate subject for inventive effort, and which also shows a separate field of search is required. Groups I through IV require different search strategies and require analysis of non-prior art issues that are unique to each Group; therefore, constituting a search and examination burden.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these 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.
Election of Species
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I – claims 1-2 and 4-7 are generic to single or multi-component composition species
Group II – claim 3 is generic to single or multi-component composition species.
The composition species of Groups I and II are independent or distinct because the species each have a materially different design that gives rise to a unique chemical and biological activity, resulting in different attractive of repellent effects. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
The composition species require distinctly different chemical structures, which necessitate different search strategies, such that a structure search for one of the inventions is not likely to result in finding art pertinent to the other invention.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species 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 species 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 species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Rejoinder Notice
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Telephonic Election
During a telephone conversation with Maria Restrepo-Hartwig on 9/16/2026 a provisional election was made to prosecute the invention of Group I, claims 1-2 and 4-7, and the composition species comprising (E)-2-octenyl acetate. Affirmation of this election must be made by applicant in replying to this Office action.
Claims 1-2 and 4-7 read on Applicant’s species election. Examination of the elected invention was conducted in accordance with the MPEP 803.02. The elected species is not allowable in view of the prior art; therefore, examination of the Markush-type claim has not been extended.
Since art was found on the elected species, subject matter not embraced by the elected embodiment (i.e., compositions not comprising (E)-2-octenyl acetate) is therefore withdrawn from further consideration. Claims 3 and 8-20 are 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.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Priority
This application claims benefit of provisional application no. 63/610,109, filed on December 14, 2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 12, 2025 is in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. Accordingly, the IDS has been considered by the examiner and a signed copy is enclosed herewith.
Specification
The disclosure is objected to because of the following informalities:
Paragraphs 10 and 84 provide conflicting descriptions of Figure 1. Paragraph 84 states that the “top trace in FIG. 1 corresponds to the data from a virgin female”, whereas paragraph 10 correlates the “top” of FIG.1 with an “extract of virgin male.” Since cotton seed bugs are not hermaphrodites, the specification requires correction.
Paragraph 25 states “FIG. 16A show side preference”, which is grammatically incorrect, because the plural term “shows” should be used. Furthermore, FIG. 16A does not show “side preference”, but FIG. 16B does.
Appropriate correction is required.
Drawings
The drawings are objected to because Figures 11A, 13A, 14A, 15A, 16A and 17A contain the label “Percent Respons”, which misspells Response.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-2 and 4-7 are objected to because of the following informalities:
Claim 1 improperly capitalizes “Hexenal”, “Pinene”, “Oxo”, “Hexenyl”, “Octenal” and “Octenyl”, none of which are proper nouns.
Claim 1 recites “3.” in line 2 and “6.” in line 3, which should both be deleted.
Claim 1, line 2, is missing “or” after 4-oxo-(E)-2-octenal in line 3.
Claim 2 contains several recitations of “E2” throughout lines 2-4, which are grammatically incorrect and should be replaced with “(E)-2”.
Claim 2, line 3, recites “hexnal” which is a misspelling of hexenal.
Claim 2, line 4, is missing “or” after 4-oxo-(E)-2-decenal in line 4
Claim 4 improperly capitalizes “Octenal”, “Oxo”, “Octenyl” and “Decenal, none of which are proper nouns.
Claim 4 is missing “or” after (E)-2-octenyl acetate in line 2.
Claim 5 contains several recitations of “E2” throughout lines 2-3, which are grammatically incorrect and should be replaced with “(E)-2”.
Claim 6 contains several recitations of “E2” throughout lines 2-3, which are grammatically incorrect and should be replaced with “(E)-2”.
Claim 6, in line 3, recites “hexnal” which is a misspelling of hexenal.
Claim 6 is missing “or” after 4-oxo-E2-decenal in line 3.
Claim 7 contains several recitations of “E2” throughout lines 1-2, which are grammatically incorrect and should be replaced with “(E)-2”.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2 and 4-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a naturally occurring composition without significantly more.
The claims recite compositions comprising one or more chemical compounds, optionally further comprising an insecticide.
This judicial exception is not integrated into a practical application because the compositions do not require an insecticide, since the insecticide is optional, and the chemical compounds are naturally occurring.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the functional limitations, pertaining to attracting CSB, merely describe inherent properties of the composition.
MPEP 2106.03-2106.05 for a description of the two-step analysis required, which is applied below:
Step 1 – Whether a claim is to a statutory category
Claims 1-2 and 4-7 are directed to compositions of matter, which is a proper statutory category.
Step 2A – Whether a claim is directed to a judicial exception
Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Yes, the claims recite naturally occurring chemical compositions, which qualify as natural phenomenon. See, e.g., Olagbemiro et al. J. Chem. Ecol. 1983, 9, 1397-1412, discussed in detail herein.
Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No, the additional elements recited, namely, inherent properties and plant parts, do not give rise to markedly different characteristics compared to the naturally occurring composition, which also possesses the same properties and which is expected to come into contact with the claimed plant and plant parts.
Step 2B – Whether a claim amounts to significantly more
No, the claim does not amount to “significantly more”, because the inherent properties (e.g., attracting CSBs) and plant limitations recited do not contribute to an inventive concept.
Based on the analysis above, the claims are deemed to be drawn to subject matter that is ineligible under 35 USC 101.
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 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Olagbemiro et al. J. Chem. Ecol. 1983, 9, 1397-1412.
Olagbemiro analyzes the chemical composition of scent gland extracts from Oxycarenus hyalinipennis (cotton seed) bugs. Olagbemiro detected several compounds including (E)-4-oxo-oct-2-enal (peak 13), according to page 1401 for example.
This anticipates the claimed compositions comprising at least including (E)-4-oxo-oct-2-enal.
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.
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.
Claims 1-2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Olagbemiro et al. J. Chem. Ecol. 1983, 9, 1397-1412.
Olagbemiro analyzes the chemical composition of scent gland extracts from Oxycarenus hyalinipennis (cotton seed) bugs. Olagbemiro detected several compounds including oct-2-enal (peak 6), oct-2-enyl acetate (peak 8), and (E)-4-oxo-oct-2-enal (peak 13), according to page 1401 for example. Olagbemiro states “[i]t is probable that the other fatty aliphatic materials from the metathoracic scent gland of Oxycarenus are also in the E configuration” (p. 1403). Thereby suggesting a composition comprising the above components as their E-isomers. This renders obvious the claimed composition comprising the same three compounds in E-configuration, encompassed by claims 1, 4, 6 and 7.
The compositions of claims 2 and 5, in addition to the compound(s) above, require “at least one Malvaceae plant or plant part. Olagbemiro teaches that the cotton seed bugs secrete the above compounds, which can be transferred to their surrounding environment. (“When adult bugs are handled or otherwise disturbed, the stored secretion is expelled to accumulate in a temporary droplet… Transfer of the extruded oil to alien surfaces can be effected on the mesotarsus by defensive movements of the middle leg.” Olagbemiro p. 1400). Since the cotton seed bugs “are well known in Africa and elsewhere in the world as pests of cotton and other malvaceous crops,” a PHOSITA would have expected some of the extruded oil, comprising the claimed composition, to get transferred to the cotton and other crops inhabited by the cotton seed bugs. Olagbemiro p. 1398. Therefore, rendering the claimed composition comprising the E-isomers suggested by Olagbemiro ((E)-oct-2-enal, (E)-oct-2-enyl acetate, and (E)-4-oxo-oct-2-enal) and a Malvaceae plant or plant part.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA L AGUIRRE whose telephone number is (571)272-5592. The examiner can normally be reached 10 am-6 pm MST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY H MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA L. AGUIRRE/ Primary Examiner, Art Unit 1626
1 Claim 4 was initially grouped separately, but, upon further consideration, the claim was added to Group I.
Prosecution Insights