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 .
Claim Status
Claims 2-7 have been cancelled.
Claims 1 and 8-25 are currently pending.
Claims 1 and 8-25 are being examined in this application.
Priority
This application claims priority benefit as a CIP of U.S. Patent Application Nos. 18/908,215 (now PAT 12302898; filed 10/7/2024), which is a CON of 18/908215 (now PAT 12137686; filed on 1/22/2024), which is CIP of 18/419071 (now ABN; filed on 9/13/2023), which claims priority to PRO 63/442,639 (filed on 2/1/2023).
Claim Objection(s) / Rejection(s) Withdrawn
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 8/11/2025) that are not repeated and/or maintained in the instant Office action are withdrawn.
Claim Objections
Claim 15 is objected to because of the following informalities: the term “to” is missing after the recitation “station adjacent” in line 6 of the claim. Appropriate correction is required.
Claim Interpretation
The instant claim 1 recites a product or composition as below:
A termite trailing and recruitment system, comprising:
a plurality of termite stations, the termite stations selected from the group consisting of termite bait stations and termite monitoring stations, each of the termite stations contain termite toxicants, the termite bait/monitoring stations located up to approximately 10 to approximately 20 feet apart from each other, and surrounding a wood member, the wood member selected from the group consisting of a wood tree, a plurality of wood trees, stacked cut wood, a wood pallet and a wood boat; and
a solution of approximately 0.1 % to approximately 2% of 2 phenoxyethanol (2-PE), dissolved in water, applied to a soil surface to form a continuous trail connecting the termite bait/monitoring stations, wherein the plurality of the termite stations and the solution form a complete barrier about the wood member, wherein each trail prevents termites from tunnelling between the stations so the termites will be redirected away from the wood member and to an adjacent one of the termite stations due to elevated soil water concentrations that connect the termite toxicants arranged about a perimeter of the wood member.
The claim is interpreted to encompass a “system” comprising the following structural limitations:
A plurality (i.e. multiple or more than one) termite stations containing termite toxicants; and
A solution of 0.1-2% phenoxyethanol (2-PE) dissolved in water.
The recitation of “ the termite station located up to approximately 20 feet apart… surrounding a wood member…” that can be “a wood tree” is a recitation of intended use, which does not add any additional structural limitation to the claimed termite station itself.
The recitations of “applied to a soil surface to form a continuous trail… form a complete barrier about the wood member... prevents termites tunnelling…” and “redirected away from the wood member… due to elevated soil water concentration” are recitations of intended use, which do not add any additional structural limitation to the claimed 2-PE solution itself.
Thus the only structural limitations with patentable weight of the claimed product/composition are “plurality of termite stations containing termite toxicants” and “0.1-2% 2-PE” solution.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9-14 and 22-24 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The recitation of “a wood structure on which the termite station is mounted” and the types of “wood structure” of claims 9-14 are recitation of intended use since the “wood structure” can be “a house structure,” “wood tree,” “wood fence or post,” “wood boat,” which cannot be structural part of the claimed termite trailing/recruitment system itself since the recited wood structures are intended application sites of the claimed termite system. They do not add further limitation to the claimed “termite trailing and recruitment system.”
The recitation of “the continuous trail” and “the continuous trail is formed” in various configurations of claims 22-24 are also intended use language as the “continuous trail” formed is result of how user intend to apply the 2-PE solution to form the desired shape or configuration. Neither the formation of the “trail” nor the shape of the trail adds further structure to the claimed “termite trailing and recruitment system.”
Thus, these intended use recitations do not further limit the claim from which they depend on.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Prescott
Claim(s) 1, 8-15 and 21-25 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Prescott (Master’s Thesis Draft: Soil Tunneling/Tubing by Subterranean Termites in Response to 2-Phenoxyethanol. Department of Entomology and Nematology University of Florida, 25 pages, May 2021; Cited previously.)
Prescott, throughout the reference, teaches using termite toxicant/bait and 2-PE solution.
For Claim 1: Prescott teaches using thirty bait stations for termite (e.g. page 17, para 1) , which reads on the bait station of instant claim. The reference further teaches a sprayer that sprays 2-PE solution from the bait station (e.g. page 17, para 1, lines 9+), which the 2-PE reads on “termite toxicant” as taught by the reference (e.g. page 10, para 2, lines 2+). Thus, the reference teaches plurality of bait stations containing termite toxicant.
Prescott also teaches using 2-PE aqueous (water) solution with various concentrations including 0.08% and 0.164% (e.g. page 9, last para; page 12, first para), which reads on the claimed 2-PE solution.
Prescott also teaches the intended use of placing the bait station in tree lines, and spraying the 2-PE solutions to the soil (e.g. pp17; para 1). As discussed above in the claim interpretation section, the recitation of how the stations are placed (or used), and how the 2-PE solutions are applied are intended use.
In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962) (statement of intended use in an apparatus claim did not distinguish over the prior art apparatus). To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim.
In the instant case, the bait stations and the 2-PE solution have been shown to be capable of performing the intended use. That is the bait stations can be placed in a desired pattern surrounding wood members, and the 2-PE solution can be applied according to user preference. The instant recited intended use language do not add additional structural limitation to the claimed product itself.
For Claims 8-12, Similar to claim 1, the structural limitation of claim 8 only comprises of “a termite station containing a termite toxicant,” and “2-PE aqueous solution.” The recitation of “a wood structure on which the termite station is mounted” is interpreted as intended use since the “wood structure” can be “a house structure,” “wood tree,” “wood fence or post,” “wood boat,” which cannot be structural part of the claimed termite trailing/recruitment system since they are intended application sites of the claimed termite system. Thus, the reference’s teaching as discussed above reads on claim 8 as well claims 9-12.
For claims 13 and 14, the recitation of “trail is formed by a spray” and “formed by a syringe” are also intended use language as it is result of using the 2-PE solution to form the trail with the desired applicator. In addition, the Prescott reference teaches the intended use of spraying (e.g. pp.17).
For Claims 15 and 21, similar to claim 1, the structural limitations of claims 15 and 21 only comprise of “a termite station containing a termite toxicant,” and “a dispenser having a 2-PE aqueous solution.” The reference teaches both of the elements as discussed above.
For claims 22-24, the recitation of “the continuous trail is formed” in various configurations are also intended use language as it is result of how user intend to apply the 2-PE solution to form the desired shape or configuration.
For Claims 25, similar to claim 1, the structural limitation of claim 25 only comprises of “a termite station containing a termite toxicant,” and “a dispenser having a 2-PE aqueous solution with approximately 0.1-2% concentration.” The reference teaches both of the elements as discussed above.
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.
Prescott, Brode and Burns
Claim(s) 1, 8-15, 16-20 and 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Prescott (Master’s Thesis Draft: Soil Tunneling/Tubing by Subterranean Termites in Response to 2-Phenoxyethanol. Department of Entomology and Nematology University of Florida, 25 pages, May 2021; Cited previously), and in view of Brode, III et al., (US 7,030,156; Issued April 18, 2006) and Burns et al ( US 6,370,812; Issued April 16, 2002).
Prescott, throughout the reference, teaches using termite toxicant/bait and 2-PE solution as discussed supra.
Prescott do not explicitly teach a dispenser with a cylinder having vertical slits as recited in claims 16-17, a box in the dispenser of claims 18-20.
However, Brode et al., throughout the patent, teaches termite station that is of cylinder shape with side openings (reads on slits) (e.g. Figure 1; cols. 2, 24+), which the termite station can contain termite toxicant and 2-phenoxyethanol (e.g. col. 22, lines 30+).
Burns et al., throughout the patent, teaches termite station that is of cylinder and/or box shape with side openings (e.g. Figures 1 and 7; col.9, lines 10+; col. 18, lines 35+). The reference also teaches the device can be used to both monitor and bait termites (e.g. col. 9, lines 23+).
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to make a dispensing device or container that is in cylinder or box shape with side openings for termite station and/or bait/toxicant dispensing. It would have been obvious to one of ordinary skill in the art to include any known and routine device for termite bait/toxicant dispensing as taught by Prescott, Brode et al., and Burns et al to optimize termite bait/toxicant release for the predicable result of effectively release termite toxicant/bait.
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since the various termite stations with side openings are known and routinely made and used.
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.
12302898
Claims 1 and 8-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,302,898 (hereinafter referred to as ‘898 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed “termite trailing and recruitment system” of the ‘898 patent reads on the “termite trailing and recruitment system” of the instant application.
The ‘898 patent claims (for example, in claims 1-5):
A termite trailing and recruitment system, comprising: a plurality of termite bait stations, the termite bait stations located up to approximately 10 to approximately 20 feet apart from each other, and surrounding a wood-containing structure, each of the termite bait stations contain termite toxicants; and a solution of approximately 0.1% to approximately 2% of 2 phenoxyethanol (2-PE), dissolved in water, applied to a soil surface to form a continuous trail connecting the bait stations, the continuous trail forming a closed loop perimeter around the wood-containing structure, wherein the continuous trail prevents termites from tunneling between the stations, and directs the termites away from the wood-containing structure and into one of the individual termite bait stations containing the termite toxicants.
This anticipates or renders obvious the instant claimed termite trailing and recruitment system comprising the termite stations with toxicants and 0.1% to 2% 2-Phenoxyethanol.
The ‘898 patent also claims using the system by placing the station in a certain pattern (e.g. claims 1, 16), which anticipates or renders obvious the intended use language of the instant claims.
12137686
Claims 1 and 8-25 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12,137,686 (hereinafter referred to as ‘686 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed “termite trailing and recruitment system” of the ‘898 patent reads on the “termite trailing and recruitment system” of the instant application.
The ‘686 patent claims (for example, in claims 1-5):
A termite trailing and recruitment system, comprising: a plurality of individual termite bait stations, the individual termite bait stations spaced approximately 10 to approximately 20 feet apart from each other, and surrounding a wood-containing structure, each of the individual termite bait stations contain termite toxicants; and a solution consisting of approximately 0.1% to approximately 2% of 2 phenoxyethanol (2-PE), dissolved in water, applied to a soil surface to form a continuous trail connecting each of the individual termite bait stations to adjacent bait stations, forming a closed loop perimeter around the wood-containing structure, wherein each trail prevents termites from tunneling between the stations, and directs the termites away from the wood-containing structure and into one of the individual termite bait stations containing the termite toxicants.
This anticipates or renders obvious the instant claimed termite trailing and recruitment system comprising the termite stations with toxicants and 0.1% to 2% 2-Phenoxyethanol.
The ‘686 patent also claims using the system by placing the station in a certain pattern (e.g. claims 1, 6, 16, 21), which anticipates or renders obvious the intended use language of the instant claims.
Response to Arguments and Declaration
Applicants’ traversal over the art rejection is based on the ‘132 Declaration by Dr. Koehler.
Applicants argue the Statutory Double Patenting rejections should have been withdrawn since the reference patents are not drawn to the same invention as the instant claims.
In response, all previous art rejections have been withdrawn, and applicants are referred to the above new rejections under 102 and 103 in light of the claim interpretation stated supra. In addition, the Declaration by Dr. Koehler has been reviewed and it is not sufficient to overcome art rejections above. The Declaration stated that the Prescott reference does not teach “a continuous trial…” “soil treatment of 2-PE”, “a ring of 2-PE soil treatment”, “… diverting foraging termites from tunneling…” However, these recitations are intended use of the claimed production as discussed above in the Claim interpretation and art rejection sections. The instant claims are drawn to a product comprising “a plurality of termite stations” (i.e. more than one stations), and 2-PE aqueous solution (that can be contained in a dispenser), which are taught by Prescott as discussed above. How the product is used (such as the placement of the termite stations, and the pattern of dispensing the 2-PE solution) does not provide additional structural limitation to the product itself. That is the instant claimed invention is not drawn to the method of using the termite system. Thus, the argument related to the intended use does not provide patentable weight to the claimed system.
For the argument against statutory double patenting rejections, applicants are referred to the above new Non-statutory double patenting rejections.
Conclusion and Correspondence
No claims are allowed.
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/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616