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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/19/2025 has been entered.
Claim Status
Claims 1, 2, 5, 9-13, 16-18, 21, 23-25, and 27-29 are rejected.
No claims are allowable.
Maintained 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 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 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, 5, 9, 16, 17, 18, 21, 23-25, and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vogelzang (Minimizing the Continuous Maize Penalty Through Intense Management, Published 05/24/2013) in view of Smith et al. (US Patent Application Publication 2012/0322659 A1, Published 12/20/2012).
The claims are directed to a method comprising applying a composition comprising LCO to a population of corn seeds, growing or planting said population in a field immediately following at least two consecutive planting of corn plants and in need of reduction of corn-on- corn yield penalty. The claims are further directed to the method comprising treatment with a fertilizer and/or herbicide. The claims are further directed to the field not having been intercropped in the previous three, four, and/or five growing seasons.
Vogelzang teach “The continuous maize yield penalty is obvious when the stover management aspects are averaged; however when viewed separately, it is clear that stover removal effectively reduced the continuous maize yield penalty (Tables 2.5 and 2.6). The removal of stover in combination with conventional tillage in continuous maize presented a method of overcoming the continuous maize yield penalty by providing a 0.3 Mg/ha yield advantage over a soybean-maize rotation” (page 32, lines 8-16). The experiment was performed on sites that had at least one block of “9th year continuous maize” (page 27, lines 1-9). Addition of a nitrogen fertilizer also was found to increase crop yield in continuous maize system with stover removal (page 32, 13-15).
Vogelzang lacks a teaching wherein LCO is applied.
Smith et al. teach compositions for enhancing plant growth and crop yield in legumes and non-legumes; wherein the composition comprises LCO in combination with chitins/chitosans and/or flavonoids and/or herbicides; wherein the composition is applied to seeds or plants (abstract). In a preferred embodiment the composition is applied to corn seeds (paragraphs 0037-0041). LCO concentration can be from 10-6 to 10-10 M (paragraph 0015). LCO is applied at a rate of 1.5 fl oz/cwt to corn seed (paragraph 0039).
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to combine the methods of Vogelzang and Smith et al. and have a reasonable expectation of success. One would have been motivated to do so in order to provide the additive effect of improving corn crop yield. It would have been obvious to arrive at the instantly claimed rate of LCO on the seeds and/or per acre of field. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It should be noted that the combination of Vogelzang and Smith et al. do not teach application of phosphate solubilizing microorganism and/or Penicillium bilaii. For the foregoing reasons the instant claims are rendered obvious by the teachings of the prior art.
Claims 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vogelzang (Minimizing the Continuous Maize Penalty Through Intense Management, Published 05/24/2013) in view of Smith et al. (US Patent Application Publication 2012/0322659 A1, Published 12/20/2012) as applied to claims 1, 2, 5, 9, 16, 17, 18, 21, 23-25, and 28-29 above, and further in view of Smith2 et al. (US Patent Application Publication 2008/0248953 A1, Published 10/09/2008).
The claims are further directed to the method applying Bradyrhizobium japonicum.
The teachings of Vogelzang and Smith et al. are discussed above. Vogelzang and Smith et al. lack a teaching wherein Bradyrhizobium japonicum is applied to corn seeds/ crop field.
Smith2 et al. teach Bradyrhizobium japonicum promotes early growth of corn (paragraph 0355).
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to add Bradyrhizobium japonicum to the composition of Smith et al. and have a reasonable expectation of success. One would have been motivated to do so in order to promote early growth of corn. For the foregoing reasons the instant claims are rendered obvious by the teachings of the prior art.
Response to Applicant’s Arguments
Applicant argues that there is not sufficient reason to combine the teachings of
Vogelzang et al. with Smith et al. because improving plant growth is a general desire of one of ordinary skill in the art.
Applicant’s argument has been fully considered but found not to be persuasive. MPEP 2143(I) states that a rationale that supports a conclusion of obviousness is some teaching, suggestion, or motivation (TSM) in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. The MPEP does not state any restrictions on the type of teaching, suggestion, or motivation (TSM) the prior art must provide. Since improving plant growth is a type of teaching, suggestion, or motivation (TSM), it is a suitable rationale to support obviousness. This is further supported by MPEP 2143(I)(G) stating wherein TSM can be provided by the knowledge generally available to one of ordinary skill in the art. Thus, since improving plant quality is general knowledge, as stated by Applicant, it is a TSM and is sufficient to support obviousness.
Applicant argues that the Examiner has not established any predictability that Smith's LCO treatment would have an effect on reducing corn-on-corn yield penalty because Smith shows that applying an LCO composition can improve yield in fields previously planted to soybean, but the corn-on-corn penalty is only observed in fields that are not intercropped. Improving plant growth is therefore not equivalent to improving corn-on-corn yield penalty.
Applicant’s argument has been fully considered but found not to be persuasive. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See 2144 (IV). Therefore, it is not necessary for the prior art to suggest application of LCO to corn crops for reducing corn-on-corn yield. As discussed above, the motivation to combine Vogelzang et al. with Smith et al. is that Smith et al. teach application of LCO to corn crop improves plant growth. Therefore, one of ordinary skill in the art wanting to improve or further improve plant growth the methodology of Vogelzang et al. would apply the LCO composition of Smith et al. and have a reasonable expectation of success in improving plant growth. It should be further noted that the combination of Vogelzang et al. and Smith et al. already teaches a method of reducing corn-on-corn yield (Vogelzang et al.), even if the application of LCO is suggested by the prior art for a different purpose, the modified method as a whole includes a reducing in corn-on-corn yield and the improvement in plant growth is an additive effect. Applicant has not shown wherein adding LCO for improving plant growth would inhibit the corn-on-corn yield penalty disclosed by Vogelzang.
Applicant argues that a POSITA reading the disclosures of Vogelzang and Smith would not have arrived at the pending claims with a reasonable expectation of success because the use of a soybean-maize rotation with the application of LCO, as taught by Smith, eliminates the benefit of stover removal for reducing corn-on-corn yield penalty.
Applicant’s argument has been fully considered but found not to be persuasive. Applicant has not provided any objective evidence supporting Applicant’s assertion. Further, the application of LCO does not require the use of a soybean-maize rotation and thus, it would be obvious to one of ordinary skill in the art to have used LCO without also using soybean maize rotation in the method of Vogelzang. Therefore, since Applicant’s argument is merely speculative, Applicant’s argument is unpersuasive and the rejection is maintained.
Applicant also argues that Smith2 also lacks a teaching where Bradyrhizobium japonicum is applied to corn seeds/crop field. Instead, Smith2 teaches a method for promoting plant growth comprising applying a purified polypeptide, not Bradyrhizobium japonicum itself because the growth promotion is attributed to a Nod factor, as indicated by the title of the article listed in Smith2.
Applicant’s argument has been fully considered but found not to be persuasive. The office action asserts that it would have been obvious to one of ordinary skill in the art to add Bradyrhizobium japonicum to the composition of Smith et al. to promote early growth of corn. Because Smith et al. teaches the application of the composition is applied to corn seeds, the combined teachings of Smith et al. and Smith 2 teach where Bradyrhizobium japonicum is applied to corn seeds/crop field.
Further, a prior art reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP 2123. This includes references disclosed in the prior art. Because Smith2 specifically disclose that the major Nod factor of Bradyrhizobium japonicum promotes early growth of soybean and corn, such disclosure may be used as a teaching. .
Also, as evidenced by D’Haeze et al., (Nod factor structures, responses, and perception during initiation of nodule development, June 12, 2002) (hereinafter D’Haeze), Nod factors are produced by Bradyrhizobium (Introduction, page 79R). Therefore, because Bradyrhizobium japonica produces the Nod factor that promotes early growth of corn, the Bradyrhizobium japonica is directly responsible for early growth of corn and its addition to the composition of Smith et al. would promote early growth of corn.
For the foregoing reasons the rejection is maintained.
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.
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/S.J.K./ Examiner, Art Unit 1614
/TRACY LIU/Primary Examiner, Art Unit 1614