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
1. The Office acknowledges the receipt of Applicant’s amendment filed December 15, 2025. Claims 1, 5, 8-10 and 25 are pending and are examined in the instant application.
All previous rejections not set forth below have been withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This action is made FINAL.
Claim Objections
2. Claims 1, 5, 8-10 and 25 are objected to because of the following:
In claim 1 and 25, “contained” should be amended to “containing” to indicate the present tense, i.e., the state of the growth medium during the cultivating step.
In claims 1 and 25, “including the CNTs and the salinity growth medium” should be deleted because it is redundant.
In claim 25, “cotton” should be amended to “a cotton plant” or “the cotton plant” as appropriate, as “cotton” can imply a product of the cotton plant.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
3. Claims 1, 5, 8-10 and 25 are 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.
Claims 1 and 25 lack a proper comparative basis. The plant grown in the salinity growth medium containing the added carbon nanotubes (CNTs) should be compared to the plant cultivated in the salinity growth medium without the CNTs. Both growth media contain saline.
In claims 1 and 25, it is unclear what constitutes “configured”. Does “configured” mean a particular concentration of CNTs? Does “configured” encompass other additives being added to the growth medium? Is Applicant referring to a particular growth condition? This term is not referenced in Applicant’s disclosure.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
4. Claims 1, 5, 8-10 and 25 are 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. This is a new matter rejection.
Applicant is invited to point to the page and line number in the originally-filed disclosure where support for the recitation of “configured” can be found. This term implies undisclosed additives or growth conditions which are not supported by Applicant’s disclosure.
Additionally, Applicant is invited to indicate in Applicant’s originally-filed disclosure where support for the combination of 55% increase in Catharanthus roseus flower production and 48.1% increase in total number of C. roseus leaves for the range of 50-1000 µg/ml of CNTs as set forth in claim 5. The 55% and 48.1% increases appear to be limited to only particular concentrations of CNTs, and not the entire range of 50-1000 µg/ml of CNTs.
Absent of support, Applicant is required to cancel the new matter in response to the instant Office action.
Claim Rejections - 35 USC § 103
5. Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Pandey et al. (PLoS One, https://doi.org/10.1371/journal.pone.0202274, August 28, 2018, pp. 1-17 (previously cited)) in view of Baisakh et al. (US Publication No. 20160145637 (previously cited)).
Pandey teaches a method for reducing at least one salinity stress symptom in a plant comprising adding carbon nanotubes (CNTs) into a growth medium containing NaCl salt (Abstract). The salt stress symptoms include lower germination rate, shorter shoot length and shorter root length compared to a plant cultivated in a non-NaCl salt growth medium (p. 7-8/17, “Effect of CNTs and graphene on salt stress response of exposed sorghum and switchgrass plants”). The salt stress symptoms also include decreased shoot length, number of leaf blades and biomass (S4 Figs. A-D), which are the same as Applicant’s “reduction in leaf number” and “reduction in fiber biomass”. The concentration of the CNTs ranges from 50-1000 µg/ml (S6, Fig. 5). The plant was cultivated in the salinity growth medium containing the added CNTs for 90 days (p. 4/17, last sentence of “Incubation of bioenergy crops in controlled environmental conditions (greenhouse)”). The NaCl salt is in MS growth medium in liquid phase (pp. 3-4/17, “Media preparation, seed germination, and seedling growth in vitro”). The CNTs increase the expression of genes encoding PIP 1;5 aquaporins (Fig. 7, A-D). Pandey further teaches that in addition to switchgrass and sorghum, CNTs have improved plant growth in Glycine max, Zea mays, Hordeum vulgare and tomato (p. 12/17). Particularly, the introduction of CNTs resulted in a significant increase of tomato flower number and tomato fruit production (p. 12/17, first incomplete paragraph). Pandey also states that carbon based nanomaterials (CBNs, same as CNTs) have the potential to be used as plant growth regulators for non-food crops and protect plants against salt stress by desalination of saline growth medium (Abstract).
Pandey does not teach a cotton plant or 15.93% increase in fiber biomass.
Baisakh teaches that a cotton plant is not salt tolerant, and there is a need to increase salt tolerance in cotton plants to improve yields ([0005], [0006], [0017]).
It would have been prima facie obvious for one skilled in the art at the time of filing to apply the method of Pandey to another non-food crop such as a cotton plant for the purpose of improving cotton yields, e.g., flower and fruit production, fiber biomass or total number of leaves, when the cotton plant is grown in a growth medium that would cause NaCl salt stress symptoms. Because CNTs have been shown to improve plant growth in many other plants as discussed above, one skilled in the art would have been motivated to reduce NaCl salt stress in a cotton plant by adding CNTs to its growth medium to improve its growth and yields. Excess salt in a growth medium adversely affects multiple aspects of plant growth, as evidenced by Pandey. With regard to the 15.93% increase in fiber biomass, this is an inherent property of the claimed method, because the claimed method only requires adding CNTs into a salinity growth medium and cultivating the plant in said salinity growth medium for at least four weeks, which is taught by Pandey. As the claimed steps are identical to those taught by Pandey, applying the steps of Pandey to a cotton plant would result in the claimed 15.93% increase in fiber biomass. Accordingly, one skilled in the art would have motivated to practice the claimed method in a cotton plant with a reasonable expectation of success.
Applicant’s Traversals
Applicant traverses primarily that neither Pandey nor Baisakh teaches or suggests that the CNT-contained salinity growth medium is configured such that said cultivating the cotton in the CNT-contained salinity growth medium for the at least four weeks increases the fiber biomass of the cotton by 15.93%, compared to the cotton cultivated in the salinity growth medium..
Response to Applicant’s Traversals
Applicant’s traversals have been considered but are deemed unpersuasive for the following reasons. The 15.93% increase in fiber biomass is an inherent property of the claimed method, because the claimed method only requires adding CNTs into a salinity growth medium and cultivating the plant in said salinity growth medium for at least four weeks, which is taught by Pandey. If additional “configuring” steps are required, they should be recited in the claims to distinguish the teachings of Pandey from the claimed invention.
See In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009), which stands for the principle that there is a scope of obviousness to the skilled artisan absent evidence that the particular embodiment chosen by Applicant is a critical or nonobvious embodiment.
Accordingly, the rejection is maintained.
6. Claims 1, 5 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Pandey et al. (PLoS One, https://doi.org/10.1371/journal.pone.0202274, August 28, 2018, pp. 1-17 (previously cited)) in view of Kumar, S. (US Pat. No. PP18315 (previously cited)).
The teachings of Pandey have been discussed above.
Pandey does not teach Catharanthus roseus (periwinkle), the 55% increase in flower production and the 48.1% increase in total number of leaves.
Kumar teaches that unmutated C. roseus is sensitive to salt stress (paragraph spanning cols. 3 and 4).
It would have been prima facie obvious for one skilled in the art at the time of filing to apply the method of Pandey to another non-food crop such as C. roseus for the purpose of improving plant yields, e.g., flower and leaf production, when the C. roseus plant is grown in a medium that would cause NaCl salt stress symptoms. Because CNTs have been shown to improve plant growth in many other plants as discussed above, one skilled in the art would have been motivated to reduce NaCl salt stress in C. roseus by adding CNTs to its growth media to improve its growth and yields. Moreover, as stated above, Pandey teaches the introduction of CNTs to soil resulted in a significant increase of tomato flower number and tomato fruit production. Excess salt in a growth medium adversely affects multiple aspects of plant growth, as evidenced by Pandey. One skilled in the art would reasonably expect that it would also reduce flower and leaf production in C. roseus. With regard to the 55% increase in flower production and 48.1% increase in total number of leaves, this is an inherent property of the claimed method, because the claimed method only requires adding CNTs into a salinity growth medium and cultivating the plant in said salinity growth medium for at least four weeks, which is taught by Pandey. As the claimed steps are identical to those taught by Pandey, applying the steps of Pandey to a C. roseus plant would result in the claimed 55% and 48.1% increases. Accordingly, one skilled in the art would have motivated to practice the claimed method in C. roseus with a reasonable expectation of success.
Applicant’s Traversals
Applicant traverses primarily that the CNT-contained salinity growth medium is configured such that said cultivating the Catharanthus roseus in the CNT-contained salinity growth medium for the at least four weeks increases the flower production of the Catharanthus roseus by 55% and the total number of leaves of the Catharanthus roseus by 48.1%, compared to the Catharanthus roseus cultivated in the salinity growth medium
Response to Applicant’s Traversals
Applicant’s traversals have been considered but are deemed unpersuasive for the following reasons. The 55% increase in flower production and 48.1% increase in total number of leaves are inherent properties of the claimed method, because the claimed method only requires adding CNTs into a salinity growth medium and cultivating the plant in said salinity growth medium for at least four weeks, which is taught by Pandey. If additional “configuring” steps are required, they should be recited in the claims to distinguish the teachings of Pandey from the claimed invention. Accordingly, the rejection is maintained.
Conclusion
7. No claim is allowed.
8. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUONG T BUI whose telephone number is (571)272-0793. The examiner can normally be reached on M-F 8am-5pm.
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/PHUONG T BUI/Primary Examiner, Art Unit 1663