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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 13 April 2026 has been entered.
Claims 1-3, 5, 8, 11, 17, 19-20, 25, 30-32, 35, 39, 43, 49-51, 55, 122, 123 are pending in the instant application.
Claims 1-3, 5, 8, 11, 17, 19-20, 25, 30-32, 35, 39, 43, 49-51, 55, 122, 123 are examined herein.
On 11 February 2026, the Patent Trial and Appeal board has reversed the rejection of claims 1-3, 5, 8, 11, 17, 19-20, 25, 30-32, 35, 39, 43, 49-51, 55, 122, 123 under 35 U.S.C. 103 over Negri et al. (Patent of Argentina AR-09212-A1), in view of Yamashita et al. (US 2014/0271535), and, under the provisions of 37 C.F.R. § 41.50(b), has entered a new ground of rejection: claims 1-3, 5, 8, 11, 17, 19-20, 25, 30-32, 35, 39, 43, 49-51, 55, 122, 123 were rejected under 35 U.S.C. 103 as being unpatentable over Negri et al. (Patent of Argentina AR-09212-A1, published 25 March 2015, cited in IDS of 15 August 2022), Negri I, Yamashita et al. (US 2014/0271535, cited in IDS), and Van der Steen.
This new ground of rejection is reproduced below.
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 1-3, 5, 8, 11, 17, 19-20, 25, 30-32, 35, 39, 43, 49-51, 55, 122, 123 are rejected under 35 U.S.C. 103 as being unpatentable over Negri (Patent of Argentina AR-09212-A1, published 25 March 2015, cited in IDS of 15 August 2022), Negri I (Apidologie 2015, 46, 542-557, cited in IDS of 15 August 2022), Yamashita et al. (US 2014/0271535, cited in IDS) and Van der Steen (The British Bee Journal 2015, 43-46, cited in PTO-892 of 02/11/2026).
Claim 1 requires that a flower is exposed to an adult bee who has been "supplemented with a liquid solution at a frequency of about 0.4L per week to about 2.2L per week, said solution comprising abscisic acid (ABA) at a concentration of about 1 µM to 1500 µM and said solution comprising L-arginine at a concentration of about 0.1 mM to 10 mM."
The claim also requires that the adult bee "has an increased flower visitation frequency relative to a reference adult bee not supplemented with th[at] solution." That is not an active method step; it is simply a claimed passive activity of the bee. That passive requirement is interpreted as one that occurs simply by the fact that the bee was supplemented with the claimed solution because there is no other recitation in the claim of an active step that would result in the increased visitation. Moreover, the Specification supports that the increased visitation is simply the result of the bee having been supplemented with the composition as claimed. (See generally Spec.)
Negri teaches a field experiment of mini-hives, which comprise about 2000 bees. (Negri 13-14.) The bees in one group of the mini-hive colony were fed a composition that includes a sugar syrup containing 2.66 ug/g abscisic acid (ABA). (Id. at 14).) The control group mini-hive was given the same sugar syrup but it did not contain ABA. (Id.)
The feeding occurs by applying the composition to the hive at a concentration between 1 µg/g to 350 µg/g. (Negri 20).) Negri teaches that "the syrup dispensed in the mini-hives passed via adult bees (and is stored) before reaching the larvae as feed." (Negri 21.) Negri indicates that it was "the young worker bees [who] were responsible for feeding the larvae." (Id.)
Negri performed some analyses on the stage 5 larvae in the mini hives two months after the treatments were begun. (Negri 22.) One of the studies was to determine how much ABA was in the larvae. (Id.) It was found that there was 28 times more ABA in the larvae supplemented with the syrup containing ABA than in the control group. (Id.) The amount, 2 µg/g, was slightly less than the concentration that was in the syrup, 2.66 µg/g. (Id.) Negri determined from this that "ABA is stable in the syrup and can thus function as a systemic treatment based on supplementation with saccharose syrup." (Id.)
Another analysis evaluated in the larvae "cellular migration associated with an immune response in bees," the cells observed were plasmacytes, which are a class of hematocytes. (Negri 23-24.) It was determined from examining the behavior of these plasmacytes that "ABA plays a role in the cellular migration associated with an immune response in bees and that supplementation of the syrup with ABA functions as a systemic treatment for increas[ing] the immune response of [the bees]." (Id. at 24.)
Another analysis of the larvae examined "the beneficial effect of supplementation with ABA in the healing process" by examining "the healing of wounds in L5 larvae after parasitic infestation with V. destructor (V. destructor is a parasitic mite that feeds on the blood of larvae and adults of honeybees, and is the main biotic threat to honeybees. (Negri 23.) V. destructor produces a wound in the larvae in order to suck the bee's blood. The saliva of the mite contains anticoagulants that prevent the wounds in the bee from closing. (Id.)) for 24 h." (Negri 23, 25.) "The larvae of the group supplemented with ABA achieved total closure of the wounds, while the larvae of the control group showed clear symptoms of anticoagulation, with wounds still open and bleeding." (Id. at 24-25.)
Negri also examined "[t]he effects of supplementation with ABA on the cellular immune competence in newly emerged adult bees." (Id. at 25.) It was determined that "systemic treatment with ABA increases cellular response not only in L5 larvae, but also in newly emerged A. mellifera adult bees." (Id.)
In addition, Negri examined how ABA supplementation affected the survival rate over the winter season. (Negri 25-26.) Negri explains that the "population of the colony preparing to confront the winter is composed chiefly of adult bees." (Id. at 26.) Based on quantification of "the population of the adult bees of the mini-hives before and after winter," it was determined that "the hives supplemented with ABA maintained the entirety of their initial population after the winter, while the control colonies lose almost 70% of their population during the cold season. (Id. at 26.)
Negri also describes, in brief, that a group of mini colonies of honey bees had been supplemented with 5 mM L-arginine in a sugar syrup. (Negri 28.) It was determined that compared to hives that were not supplemented with L-arginine, the bees "showed an increased innate immune response, better wound healing, maintenance of the hive population at a maximum after the winter and an improved tolerance to poisoning by Carvacrol (Carvacrol is a pesticide "that inhibits the growth of bacteria such as Escherichia coli and Bacillus cereus." (Negri26.). Although the field experiments did not include a supplementation syrup that included both L-arginine and ABA, Negri teaches that L-arginine can be included in the syrup formulation that also includes ABA in a concentration of 1 to 5 mM. (Negri 21.)
In light of the foregoing teachings, it would have been obvious to one of ordinary skill in the art to combine both ABA and L- arginine in a syrup to supplement normal honey bee hives. Indeed, in Negri I it is stated that it is normal practice for beekeepers to supplement their hives with syrup in order to either "stimulate the colony before plant flowering in the spring or to help bees to confront the winter." (Negri I 542.) "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." In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
Moreover, Negri teaches that "another particular object of the present invention is a formulation for supplementing hives of honeybees that comprises abscisic acid, saccharose and water." (Negri 13, 21.) Again, Negri does not limit this to experimental mini hives and Negri I teaches that it is the normal practice of beekeepers to supplement their beehives with syrup. (Negri I 542).
Consequently, it would have been obvious to supplement a normal honey bee hive with a composition containing ABA and L-arginine in a syrup in light of the teachings of Negri. In such a supplemented hive, forager bees of the hive would be expected to gain the same benefits upon ingesting the composition as the larvae and the newly emerging worker bees as observed in Negri. This conclusion is reached because Negri teaches that the adult worker bees, just as the L5 larvae, have an improved cellular immune response with supplementation with ABA. There is no reason to believe that adult forager bees would not also have such an improved response. To the contrary, Negri teaches that "abscisic acid improves the immune competence of Apis mellifera workers." (Negri 17.) Negri does not limit this statement of improvement to newly emerged adult worker bees or L5 larvae.
Furthermore, Van Der Steen teaches that the honey bee in general has a temporal caste system; that is, bees change jobs as they age. The worker caste is divided into cleaning, brood nest, food storage, and foraging. (Van der Steen 43.) Generally, cleaning workers do so for about
the first three weeks of their life, then they move on to nursing. (Id.) They are foragers in the last one to two weeks of their life. (Id.) They can move between these castes though, depending on the needs of the colony. (Id.) Thus young worker bees are nurses, such as the young workers in the Negri mini-hive, and eventually become foragers in a regular hive. (Id.) Consequently, even though Negri does not examine forager bees, it would be reasonable to conclude that if the supplement were applied to a normal honey bee hive, the bees supplementing on the syrup in Negri, including the larvae, would continue supplementing on this syrup (see Negri I) as it became older and moved into the forager caste.
Regarding whether or not the forager would reasonably be expected to ingest the supplement, we note that Yamashita teaches that forager bees do supplement themselves with compositions that include carbon skeleton energy compounds. (See, e.g., Yamashita " 154, 157-158.)
It is concluded that this obvious supplementation of a normal honey bee hive would necessarily result in the claimed invention. That is a forager bee would carry out its normal activity, namely collecting nectar and pollen from nearby flowering plants. As van der Steen teaches, "[d]uring a foraging trip bees show flower constancy and location constancy," returning to the same plant species until the resources are dry. (Van der Steen 45.) In doing so, the plant would necessarily have an enhanced fruit set as claimed. We arrive at this conclusion because the claim indicates that the adult bee has increased flower visitation frequency just because it ingested the ABA and L-arginine supplemental solution. Moreover, the claim indicates that the enhanced fruit set results simply by the exposure of the plant to the bee who has ingested the ABA and L-arginine supplemental solution and will naturally have an increased flower visitation frequency. The fact that the prior art does not recognize this natural result does not render the claimed method non- obvious because the references need not recognize the problem solved by the Appellant. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).
"[I]t is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable." In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.") That a person of ordinary skill in the art would not have known of the effect also does not preclude a finding of obviousness. Par Pharm. v. TWi Pharms., Inc., 773 F.3d 1186, 1197 (Fed. Cir. 2014); see also Perricone V. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005) (stating in finding claims to a method for preventing sunburn damage to exposed skin surfaces by topically applying a composition to that skin unpatentable: "In some cases, [an] inherent property corresponds to a claimed new benefit or characteristic of an invention otherwise in the prior art. In those cases, the new realization alone does not render the old invention patentable."). As the reviewing court in Perricone stated
In some cases, [an] inherent property corresponds to a claimed new benefit or characteristic of an invention otherwise in the prior art. In those cases, the new realization alone does not render the old invention patentable. Thus, when considering a prior art method, the anticipation doctrine examines the natural and inherent results in that method without regard to the full recognition of those benefits or characteristics within the art field at the time of the prior art disclosure.
Id. at 1378. This is analogous to why "an obvious formulation cannot become nonobvious simply by administering it to a patient [by] claiming the resulting serum concentrations,' because '[t]o hold otherwise would allow any formulation-no matter how obvious-to become patentable merely by testing and claiming an inherent property.' Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012)." Persion Pharmaceuticals LLC. V. Alvogen Malta Operations Ltd., 945 F.3d 1184, 1190 (Fed. Cir. 2019).
Here, Applicant has merely observed the natural result of what would happen by supplementing a normal honey bee hive rather than the mini-hive taught by Negri, a method rendered obvious for the reasons discussed.
That one of ordinary skill in the art would have been motivated to provide the supplement to a normal hive for a different reason than Applicant's observed and claimed benefit does not establish non- obviousness. The skilled artisan need not be motivated to modify the prior art for the same reason contemplated by the inventor. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006)
Thus, for the foregoing reasons, claim 1 is unpatentable under 35 U.S.C. § 103 as being obvious over Negri, Negri I, Yamashita, and van der Steen.
Claim 30 is unpatentable under 35 U.S.C. § 103 as being obvious over Negri, Negri I, Yamashita, and van der Steen for the same reasons as claim 1 is found to be unpatentable. Claim 30 differs from claim 1 in stating that the adult bee is contacted with the solution that is recited in claim 1, rather than being "supplemented." However, that is a distinction without a difference because when the bees are in contact with the solution they are supplemented with it.
Dependent claims 2, 5, 8, 11, 17, 19, 20, 25, 31, 35, 39, 43, 49-51, 55, 122, and 123 are also unpatentable under 35 U.S.C. § 103 as being obvious over Negri, Negri I, Yamashita, and van der Steen. The limitations are either specifically taught by the prior art (Negri teaches the compositional elements, and Yamashita teaches using supplementation with flowering plants in fruit orchards) or are inherent results of supplementing the hives with the formulation suggested by Negri.
Regarding claims 3 and 32 and where hives are placed on the land that includes the flowering plants, we note that this is would be recognized by one of ordinary skill in the art as a result effective variable. Van der Steen teaches the number of foragers (the bees that are the pollinators) depends on the colony size and that "[t]he distance bees forage for nectar and pollen depends on the availability of the food sources and on the energy it costs to collect the food." (van der Steen 44-45.) As a general rule, "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art [and obvious. ]" In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Accordingly, "where 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 Applied Materials, Inc., 692 F.3d 1289, 1295-96 (Fed. Cir. 2012) (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955)). The motivation to optimize comes from the natural desire of those skilled in the art to experiment with, and improve upon, known conditions taught in the prior art. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
In conclusion, claims 1-3, 5, 8, 11, 17, 19, 20, 25, 30-32, 35, 39, 43, 49-51, 55, 122, and 123 are rejected under 35 U.S.C. § 103 as being unpatentable over Negri, Negri I, Yamashita, and van der Steen.
Conclusion
Claims 1-3, 5, 8, 11, 17, 19-20, 25, 30-32, 35, 39, 43, 49-51, 55, 122, 123 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA NEAGU whose telephone number is (571)270-5908. The examiner can normally be reached Mon-Fri 8-5.
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 S. LUNDGREN can be reached at (571)272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/IRINA NEAGU/Primary Examiner, Art Unit 1629
Prosecution Insights