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 .
Receipt is acknowledged of Amendments and Remarks filed on 03/13/26. No claim has been amended or cancelled, while new claim 284 has been added. Accordingly, claims 257-258, 267-269, 272-275 and 282-284 are now under examination on the merits. Claims 277-279 remain withdrawn.
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claim Interpretation
Claims are drawn to a composition comprising a macrocyclic tetrapyrrole compound, an oil and a chelating agent. The recitation of “for increasing resistance of a plant to one or more abiotic stress” is an intended use limitation and not given patentable weight. Additionally, the synergistic effect for increasing resistance or the application proportions are not given patentable weight as these limitations are irrelevant of the composition. That is, the claims are examined based on the components and their concentrations of the composition.
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.
Claims 257-258, 267-269, 272-275 and 282-284 are rejected under 35 U.S.C. 103 as being unpatentable over Fefer et al (WO 2015081441) in combination with CN 102273467 and El-Saida (Response of Valencia orange trees grown in sandy soil to treatments with biozem, amcotone, ca-edta and zn-edta and their effect on fruit quality, regreening and yield).
Fefer et al teach methods for the use of combinations including a paraffinic oil and a pigment for increasing resistance of plants to one or more abiotic stresses (See abstract).
Regarding claims 257-258, Fefer et al disclose a method for increasing resistance of a plant to one or more abiotic stresses, which method comprises applying an agriculturally effective amount of a combination to the plant, the combination comprising: a paraffinic oil; an emulsifier; a pigment; and water; wherein the abiotic stress is cold stress, heat stress, water stress, transplant shock stress, low light stress or salinity stress. The said combination is applied to the plant at or before onset of the abiotic stress. The combination can be additionally applied to the plant after onset of the abiotic stress (See page 1 and claim 1).
Regarding claim 274, Fefer et al disclose that the said combination may comprise a silicone surfactant (See pages 2, 4 and 9).
Regarding claim 275, it is stated that the stress is a salinity stress and the plant is a turfgrass or wheat plant (See page 5, lines 1-7), a non- woody crop plant, a woody plant, such as a tree, including a maple tree, a citrus tree, etc, (See page 8, 2nd para and page 85).
Regarding claims 257, 268-269 and 284, it is disclosed that the said pigment may be copper phthalocyanine, and that the weight ratio of the paraffinic oil to the pigment is from 1:5 to 100:1, such as about 30:1 (See page 9).
Fefer et al lack a specific disclosure on the pigment being copper chlorophyllin or on the presence of an aminopolycarboxylic acid compound. These are known in the art as taught by CN 102273467 and El-Saida.
CN ‘467 teach application of a metal derivative containing chlorophyll and hydrolyzate thereof as a plant growth regulator. The metal derivative containing chlorophyll and hydrolyzate thereof is selected from chlorophyll metal chelate, a chlorophyllin metal chelate and a monomeric metal chelate obtained by separating a chlorophyllin mixture. The chlorophyll is a green pigment extracted from a natural plant raw material and provided with a phaeophytin mother ring structure. The chlorophyllin is a mixture of multiple dihydroporphin components obtained by hydrolyzing the chlorophyll. The monomeric chlorophyllin component is selected from dihydroporphin-e4, dihydroporphin-e6 or phaeophorbide a monomethyl ester. Metal ions comprise copper or zinc ions in an oxidation state. The plant growth regulator provided by the invention has the advantages of safety, non-toxicity, low residue, strong activity, good effect, stable product property, controllable and reliable quality and easiness in promotion and application; the chlorophyll content of the plant can be increased, the root growth is promoted, the germination ratio is increased, the stress resistance is enhanced and the yield is also increased (See abstract).
Regarding claim 257, CN ‘467 teach that the commercially available sodium copper chlorophyllin salt contains copper sodium salt of chlorophyllin (chlorin-e4 copper sodium salt), copper sodium chlorophyllin triacid (chlorin-e6 copper sodium salt) and also contains nearly 10 other sodium salts of chelated copper with chlorin-like structures (See Page 2, 5th para).
CN ‘467 also state that “In the monomer type metal chelate of chlorophyllin in the present invention, the monomeric chlorophyllin components used include: chlorin-e4, chlorin-e6 and pheophorbide-a-monomethyl” (See Page 3, 8th para).
CN ‘467 further disclose that cultivation and field tests show that 0.001 ppm-10.0 ppm solution can be used for soaking seeds, cuttings or crop field irrigation; 0.1ppm-10.0ppm solution is used for spraying; 2.0 ppm-100 ppm solution is used for tree trunk injection to promote seed germination and increase germination rate , Increase the number of roots, promote the growth of adventitious roots, accelerate the growth of seedlings, enhance stress resistance, increase chlorophyll content, increase yield, delay the time of leaves and lawn yellowing and defoliation, and improve the ornamental effect of flowers and trees (See page 3, 13th para).
Regarding claim 267, CN ‘467 disclose in Example 1, that the concentration of chlorophyllin is 0.14 mmol/L and that in the in vitro test of the present invention unexpectedly found that the novel plant growth regulator used (concentration: 1.0ppm～100ppm) can significantly inhibit the degradation of chlorophyll by chlorophyllase (substrate concentration 324ppm, 0.36 mmol/L) (See Page 4, Example 1 and Page 3, 11th para).
El-Saida teach the effect of EDTA on plant growth, especially on Valencia oranges.
It is disclosed that the aim of the said study is the effect of foliar application with active ingredients, including Biozem and Amcotone and their combination with CaEDTA, Zn-EDTA on tree yield productivity, fruit set, fruitting percentage, regreening, leaf area, leaf chlorophyll’s and mineral content (See Abstract).
Regarding claims 257 and 282-283, El-Saida states that “Ferguson (1988) considered the association of Ca2+EDTA spraying with plant growth substance in the following facts, : (a) There is an extra cellular role for Ca2+EDTA spray in plant tissue , (b) There is an intracellular role for Ca2+EDTA spray in plant tissues , where Ca2+EDTA spray may act as a secondary messenger transfusing external stimuli into immediate and long-term metabolic events, which might involve both fundamental growth responses to specialized environmental stimuli,( c) There is tightly controlled regulation of Ca2+EDTA spray concentration and fluxes in the cell .This control is essential for normal cell function, and any malfunction of this regulation will lead to disruption of growth and cellular damage or death” (See Page 58, 1st col).
Additionally, El-Saida explain that “From the aforementioned results in this study, it was observed that foliar spray of Biozem plus Zn-EDTA plus Ca-EDTA increased of leaf area and chlorophylls of leaves. ….. It could be generally concluded that foliar spray with Biozem at 1.5 ml /L + Ca-EDTA 1.4 gm/L +Zn-EDTA 1.5 mg/L (on 20 March, first July and mid August) on Valencia orange trees, obtained the highest yield / tree and the best fruit quality (See page 69, 1st col).
Regarding claims 272-273, El-Saida disclose, in Table (1), that in treatment T6, 0.75 gm/L of Amcotone and 1.4 gm/L of Ca-EDTA were applied (a ratio of 1:1.86).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of CN ‘467 and El-Saida with that of Fefer et al to prepare the claimed composition with a reasonable expectation of success. It would have been obvious to do so because Fefer et al teach formulations for increasing abiotic stress in plants comprising paraffinic oil, an emulsifier, a surfactant and a pigment which may be copper phthalocyanine. The formulations improve abiotic stress in plants such as woody and no-woody plants, turfgrass, wheat plants and trees. CN 467 also teach a formulation for plant growth regulation and stress enhancement comprising a composition comprising sodium copper chlorophyllin and El-Saida teach that EDTA compounds including ca2edta is an effective compound in improving the plant growth and fruit setting, as well as its response to environmental stimuli of plants such as Valencia oranges.
Regarding the copper chlorophyllin of instant claimed formulation, it is noted that both Fefer et al’s copper phthalocyanine and CN ‘467’s copper chlorophyllin are pigments and effective in improving stress resistance of a plant. Thus, it would have been obvious to one of ordinary skill in the art to have substituted copper chlorophyllin of CN ‘467 for the copper phthalocyanine of Fefer et al with a reasonable expectation of success. That is, the claims would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Additionally, it would have been obvious to one of ordinary skill in the art to have combined the teachings of CN ‘467 and El-Saida with that of Fefer et al to arrive at the claimed invention and to prepare a composition comprising a copper chlorophyllin, an oil, EDTA and a surfactant to apply to plants to improve their resistance.
In other words, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
In other words, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
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.
Claims 257-258, 267-269, 272-275 and 282-284 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 142, 147-150, 152-157 of copending Application No. 17/431,306 (US 20220132856) (reference application) in view of Olson et al (US 20100266716). Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims would have been obvious over the reference claims in view of Olson et al.
Specifically, the examined claims are drawn to a composition comprising a macrocyclic tetrapyrrole which is copper chlorophyllin, an oil such as mineral oil and additionally a chelating agent which is an amino polycarboxylic acid. Depending claims recite that the chelating agent is EDTA or Ca2EDTA. The reference claims are also drawn to a composition comprising a porphyrin compound such as chlorin, a chelating agent which is an amino polycarboxylic acid and a carrier fluid which is an oil.
Olson et al teach the use of composition comprising photodynamic active agents, a chelating agent and excipients on plants. Olson et al teach that the active may be cu-chlorophyllin and EDTA may be its calcium disodium salt.
Other difference is in intended use limitations which are not materially distinguishing, and to the arrangement of the limitations. The differences are not patentably distinguishable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 257-258, 267-269, 272-275 and 282-284 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 169, 176-179, 186-191 of copending Application No. 16/639,398 (US 20200253211) (reference application) in view of Olson et al (US 20100266716). Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims would have been obvious over the reference claims in view of Olson et al.
Specifically, the examined claims are drawn to a composition comprising a macrocyclic tetrapyrrole which is copper chlorophyllin, an oil such as mineral oil and additionally a chelating agent which is an amino polycarboxylic acid. Depending claims recite that the chelating agent is EDTA. The reference claims are also drawn to a composition comprising a macrocyclic compound such as chlorophyllin, a chelating agent and a carrier fluid.
Olson et al teach the use of composition comprising photodynamic active agents, a chelating agent and excipients on plants. Olson et al teach that the active may be cu-chlorophyllin and EDTA may be its calcium disodium salt.
Other difference is in intended use limitations which are not materially distinguishing, and to the arrangement of the limitations. The differences are not patentably distinguishable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 257-258, 267-269, 272-275 and 282-284 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 169, 176-179, 186-191 of copending Application No. 17/800,776 (US 20230128730) (reference application) in view of Olson et al (US 20100266716). Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims would have been obvious over the reference claims in view of Olson et al.
Specifically, the examined claims are drawn to a composition comprising a macrocyclic tetrapyrrole which is copper chlorophyllin, an oil such as mineral oil and additionally a chelating agent which is an amino polycarboxylic acid. Depending claims recite that the chelating agent is EDTA. The reference claims are also drawn to a composition comprising a porphyrin such as chlorophyllin, an antioxidant, a chelating agent and a carrier fluid.
Olson et al teach the use of composition comprising photodynamic active agents, a chelating agent and excipients on plants. Olson et al teach that the active may be cu-chlorophyllin and EDTA may be its calcium disodium salt.
Other difference is in intended use limitations which are not materially distinguishing, and to the arrangement of the limitations. The differences are not patentably distinguishable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Miles (WO 03101197).
Miles teaches compositions useful in the field of agricultural chemistry and methods for making and using the compositions. The compositions include (i) a permeabilizing agent, and (ii) an active component, for example, a pesticide or plant growth regulator, and can include additional components as well, for example, flow agents. The permeabilizing agent, or a mixture of permeabilizing agents, acts as an adjuvant to the active component or chemicals to improve the degree of efficacy of the active component or speed of action of the active component. The permeabilizing agents are typically one or more chelating agents, cationic materials, etc. The active components can be pesticides, herbicides, insecticides, fungicides, virucides, bactericides, and acaricides. Examples of suitable active components include plant growth regulators, defoliators, dessicants, transfection agents, wood treatments (CCA or other chemicals that are effective against termites), traps, disinfectants, marine paints and the like (See abstract).
It is disclosed that one of the best examples of this sort of chelate is EDTA, which has two amine donor groups and four carboxyl donor groups. (See Pages 6-7). In particular, chelating agents or mixtures thereof are added to active components in cotton improve defoliation, regrowth, and the opening of unopened bolls. Generally, chelating compounds that are useful for improving the activity of cotton active components include, ethylenediaminetetraacetic acid (EDTA) (See page 8).
Miles further discloses that zwitterionic compounds can also be preferred chelating agents. Zwitterionic compounds are those that include both a positive and a negative charge on the same molecule. Examples include amino acids and polyamine polycarboxylic acids (See Page 12).
Miles also teach that additional optional components can be present in the composition including adjuvants currently used with agricultural chemicals, such as flow agents, buffering agents, antifoam agents, compatibility agents, crop oil concentrates. The compositions can be prepared in liquid form, by adding the components to a desired solvent or dispersant including a crop oil, water, etc, (See Page 22).
CN 102285992.
CN ‘992 teach dihydroporphin (III) chelates having plant growth regulating activity and use thereof as plant growth regulators. The dihydroporphin (III) chelates are formed by chelating pyropheophorbide, purpurin and dihydroporphin serving as main ligands and different acid radicals and hydroxy radicals as axial ligands (X) with trivalent ions of iron serving as a transitional metal. The dihydroporphin (III) chelates serving as plant growth regulators are safe, nontoxic and insusceptible to accumulation of residue; the activity of the dihydroporphin (III) chelates are high and the effect of the dihydroporphin (III) chelates are remarkable and include improving the chlorophyll content in plants, promote rooting, and increase germination rate, resistance and yield (See abstract and pages 5-6).
Disclosed is a chlorin iron chelate with plant regulation activity (See pages 3-4). Chlorin (chlorin) is the important chlorophyll degradation product of a class, and chlorophyll can make multiple γ and 6 different dihydro porphin products that replace through reactions such as hydrolysis, oxidation, eliminations (See page 4).
Cn ‘992 further disclose that “the dihydro porphin mix products of chlorophyll hydrolysis is commonly referred to CHLOROPHYLLINE, can obtain the chlorin of various monomer components through separation and purification. By forming metallo-chelate prepared by complicated CHLOROPHYLLINE, be also mixture, and composition is more complicated” (See page 5, 1st para).
CN ‘992 discloses that “Chlorin iron provided by the invention (III) inner complex is mixed with about 0.0015 μ mol/L～15 μ mol/L containing inner complex 0.001ppm～10ppm solution” (See page 11).
Chlorin iron (III) chelate solution seed soaking wheat, test sample all can improve Superoxide Dismutase of Wheat and Peroxidase activity, strengthens the removing ability of wheat to oxyradical, improves resistance (See page 15).
Bommer et al (4,656,186).
Bommer et al teach new fluorescent mono, di- or polyamide of an aminomonocarboxylic acid and a tetrapyrrole containing at least three carboxy groups (See abstract).
Bommer et al teach an amino acid or peptide derivatives of compounds which contain the chromophore of certain chlorins and bacteriochlorins, as well as related porphyrin compounds. The peptide linkage involves a carboxy group of the chromophore-bearing compound and the amino group of the specified amino acid. The new compounds embrace derivatives of the tetrapyrroles which contain three carboxy groups. These derivatives include porphyrins of the major classes of tetrapyrroles: chlorins and bacteriochlorins, which are well-known to those skilled in this art (See Col. 3, lines 29-60).
It is disclosed that the said amino acids are amino-monocarboxylic acids in which the amino group, of course, is located on a carbon atom of the carboxylic acid. Also, the exemplary compounds of tetrapyrrole compounds are listed including chlorin e6 (See Col. 3, line 62 to Col. 4, line 15 and Table 1).
The final amide products can also be converted to metal complexes for example by reaction with metal salts, including magnesium complexes, iron, zinc, nickel, cobalt and copper (See Col. 5, lines 25-34).
Bommer et al teach that the said compounds can be in compositions comprising surfactants, oils, such as vegetable oils, and other suitable carriers and additives (See Col. 9).
In Examples 1-3, from 130-400 mg of chlorin is added to a solvent. In Example 5, Bommer et al disclose that 50 mg (0.000087 moles) (=0.087 mM or 87 µM) of rhodin g7 is dissolved in 100 ml of tetrahydrofuran (THF). (That is, in one Example, chlorin is added at about 0.26 mM or 260 µM).
Olson et al (US 20100266716).
Olson et al teach the use of photoactive natural products that can be safely applied to hard surfaces, plant surfaces, etc, to prevent, treat, decontaminate or eliminate infections, contaminants, etc, (See [0003], [0006] and claims 4-5).
It is disclosed that upon irradiation with light, the agents of the present invention can generate active oxygen species, including singlet oxygen (1O2) superoxide anion radical (O2−), and hydroxyl radical (HO−), and possesses high photodynamic activity (See [0018]).
The said natural photoactive agents may be a porphyrin, selected from chlorophyll, chlorophyllin, copper chlorophyll, copper chlorophyllin, etc, (See [0014] and [0058]).
The said compositions further comprise carriers and excipients including chelating agents such as ethylenediaminetetraacetic acid (EDTA), calcium disodium salt, or other pharmaceutically acceptable chelating agents, as well as surfactants, preservatives, stabilizers, etc, (See [0048] and [0050]).
The said photoactive agents may be used on any food or plant, as an additive or as a sanitizer, disinfectant, or preservative. Exemplary uses include on living plants (vegetables, fruits, ornamentals, seeds, flowers, cereal crops, oil crops, trees, bushes, shrubs); as a foliar spray, as a seed treatment etc, (See [0030]).
The composition may be water based or oil based; and/or may be in the form of a liquid, oil, etc, (See [0047]). Oils may include almond oil, corn oil, olive oil, mineral oil, etc, (See [0053]).
Response to Arguments
Applicant's arguments filed 03/13/26 have been fully considered but they are not persuasive.
Applicant’s first argument is that Fefer’s “copper phthalocyanine is structurally and functionally distinct from copper chlorophyllin. Copper chlorophyllin is a macrocyclic tetrapyrrole compound derived from chlorophyllin, whereas copper phthalocyanine is a synthetic pigment with a different ring structure. The Examiner's assertion that copper phthalocyanine and copper chlorophyllin are "structurally related compounds" is incorrect. While both contain copper and have cyclic structures, they belong to different chemical classes with distinct molecular architectures. Phthalocyanines are synthetic macrocyclic compounds with a different core structure than the chlorin ring system found in chlorophyllins” (See Remarks, pages 5-6).
The argument is neither persuasive nor sufficient to overcome the rejection. The rejection is under obviousness and the motivation to combine the references is one of substitution. It is generally considered to be prima facie obvious to substitute components which are taught by the prior art to be well known and useful for the same purpose in order to form a composition that is to be used for an identical purpose. The motivation for substituting them flows from their having been used in the prior art, and from their being recognized in the prior art as useful for the same purpose. As shown by the recited teachings, instant claims are no more than the substituting conventional components of copper pigments in a composition for increasing resistance of a plant. Cf. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). As stated in the rejection, both Fefer et al’s copper phthalocyanine and CN ‘467’s copper chlorophyllin are pigments and effective in improving stress resistance of a plant. Thus, it would have been obvious to one of ordinary skill in the art to have substituted copper chlorophyllin of CN ‘467 for the copper phthalocyanine of Fefer et al with a reasonable expectation of success. That is, the claims would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Additionally, structural similarity is a degree of similarity between two compounds and could involve any similarity. For example, here the similarity is that the compounds are both copper derivatives (with cyclic structure). The argument that one of ordinary skill in the art would have no motivation to substitute one copper compound for another, especially when they are both disclosed and known for increasing resistance, is not convincing. Regarding an ordinary artisan MPEP 2141 states that ““A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396; and 2) MPEP 716.07: “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” In the instant case, the references teach two compositions that comprises a copper pigment and inactive agents effective in increasing resistance in plants.
Next argument is that “CN'467 discloses that the plant growth regulator containing metal derivatives of chlorophyll is prepared as a solution which can be directly prepared by adding water. CN '467 does not disclose or suggest combining copper chlorophyllin with an oil component. The CN'467 formulations are aqueous-based systems for plant growth regulation. Further, copper phthalocyanine is highly insoluble in water while copper chlorophyllin is water soluble. The Examiner has not established why one of ordinary skill in the art would be motivated to take the aqueous chlorophyllin formulations of CN'467 and combine them with the with oil-based formulations of Fefer. The combination proposed by the examiner lacks a reasonable expectation of success” (See Remarks, page 6).
This argument is also not found persuasive. Firstly, it is noted that the examined claims are written using the transitional phrase “comprising”, which is fully open-ended and does not exclude additional, unrecited elements. Therefore, water can be present in the instant composition and still form a construct within the scope of the claims. It is further noted that the claimed compositions indeed comprise water, as disclosed in the Specification and in claim 277.
Secondly, the rejection did not assert that the compositions of CN ‘467 are combined with the compositions of Fefer, rather that one of ordinary skill in the art would be motivated to substitute one copper pigment for another. That is, the copper chlorophyll of CN ‘467 would be incorporated into the oily compositions of Fefer. In this regard the courts have held that "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures.").
Applicant further argue that “New claim 184 recites that the copper chlorophyllin and the paraffinic oil are present in a weight ratio between about 1:5 and about 1:100. Neither Fefer nor CN '467 disclose or suggest this specific combination of copper chlorophyllin with paraffinic oil at the claimed weight ratios. Fefer discloses weight ratios of paraffinic oil to pigment (copper phthalocyanine) from about 1:5 to about 100:1, such as about 30:1. Fefer, pg. 9, 11. 5-8. These ratios relate to copper phthalocyanine, not copper chlorophyllin, and there is no basis to assume that the same ratios would be effective or appropriate for a different compound” (See Remarks, page 6).
The above argument is similarly unpersuasive. It has been established that it would have been obvious to one of ordinary skill in the art to substitute copper chlorophyllin for copper phthalocyanine. Fefer teach the combination is effective in a ratio of from 1:5 to 100:1, meeting the claimed ratio in new claim 284. That is, one of ordinary skill in the art in making the modified compositions according to Fefer and CN ‘467, would have been motivated to take guidance form the disclosed ratios.
Applicant made no arguments regarding the rejection of claims over the co-pending Application Nos. 17/431,306; 16/639,398 and 17/800,776 under obviousness type double patenting. The rejections are maintained.
Applicant Furter requested consideration of withdrawn claims 277-279 for rejoinder upon allowance of claim 257 (See Remarks, pages 7-8).
At the time of finding claim 257, withdrawn claims for rejoinder will be considered.
Conclusion
Claims 257-258, 267-269, 272-275 and 282-284 remain rejected. Claims 277-279 remain withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mina Haghighatian whose telephone number is (571)272-0615. The examiner can normally be reached M-F, 7-5 EST.
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/Mina Haghighatian/
Mina Haghighatian
Primary Examiner
Art Unit 1616
Prosecution Insights