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 .
Summary
Receipt of Applicants Remarks and Amendment filed on May 02, 2024 is acknowledged. Claims 1, 6-10 are pending in this application. Claims 2-5 and 11-22 have been previously cancelled. All pending claims are under examination in this application.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. EP 18176620.5, filed on 06/07/2018.
Power of Attorney
Of note, there is no power of attorney in the file in this case. While a customer number has been provided on the ADS submitted 12/04/2020, this is not the equivalent of a power of attorney or an authorization to act in a representative capacity. In order to expedite prosecution in the instant application, it is suggested that a power of attorney be filed as per MPEP §402 or MPEP §1807, or an Authorization to Act in a
Representative Capacity be filed as per MPEP §403 in order for the Office to freely and openly discuss the merits of the case with the applicant's representative(s). Please refer to the MPEP or http://www.uspto.gov/patents/law/poafaqs.jsp#a if you have questions regarding the proper filing of a power of attorney.
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.
Claim 6 is 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. Claim 6 is dependent on newly amended claim 1, wherein the weight ratio between prohexadione and ethephon is between 1:1 to 1:20 does not further limit from amended claim 1. 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 § 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 (i.e., changing from AIA to pre-AIA ) 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, 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Rademacher (US 2006/0229208 A1) in view of Miyazawa et al. (EP 344533 A2) reference is cited in IDS filed 05/11/2021, Phytohormonal changes in intact shoots of wheat and oilseed rape treated with the acylcyclohexanedione growth retardant prohexadione calcium, hereinafter article referred as Grossmann et al., and further in view of Willms et al. (US 2014/0100108 A1) hereinafter reference is referred as Willms.
Rademacher teaches a method of reducing excessive shoot growth in pome fruits (paragraphs 0001-0002) comprising concomitant use of acylcyclohexanedione derivatives and ethephon (paragraph 0014). The treatment application can be applied to plant parts, such as flowers, leaves or shoots, in effective amounts simultaneously or in succession as mixture or separately in an aqueous spray mixture (paragraphs 0047-0048). The prohexadione-calcium employed at an application rate from 100 to 500 g/ha and ethephon from 25 to 1500 g/ha, and particularly 100 to 500 g/ha per season (paragraph 0034), wherein the mixture were sprayed to an orchard in approximate amount of 1000 L/ha (paragraph 0054).
Regarding claim 7, Rademacher teaches auxiliaries formulation which are conventionally used in the art of crop protection to include inert adjuvants, surface-active substances, emulsifiers, dispersants, wetters, and the surface-active substances are the alkali metal salts for example ligninsulfonic acid, phenolsulfonic acid, naphthalenesulfonic acid and dibutyinapthalenesulfonic acid to name a few, and examples of suitable siloxanes are polyether/polymethylsiloxane copolymers, which are also referred to as spreaders or penetrants (0042).
Regarding claim 8, Rademacher teaches ammonium salt in the mixture in addition to ions of alkali metals and ammonium (NH4+) and substituted ammonium where one to four hydrogen atom are replaced by C1-C4- alkyl (0029) and .
Rademacher fails to teach plant growth regulators directed to rape seed, barley, oat, wheat rye, triticale, grain or corn.
Miyazawa teaches plant growth regulating composition and method for regulating growth of a plant comprising 3,5-dioxo-4-propionylcyclohexane carboxylic acid (prohexadione) and its esters and salts (p. 2, lines17-19) and (2-chloroethyl) phosphonic acid (ethephon) (p. 2, line 29-30), wherein the spray mixture is in aqueous solution (Page 3, lines 43-44) and application is to rice, wheat, barley, rye or corn to control the internode elongation, to shorten the stem without adversely affecting the yield or quality of the product (Page 5, lines 15-17). Additionally, Miyazawa teaches the mixture of prohexadione-calcium and ethephon used in a method to regulate the growth of barley in Test Examples 1 and 2 at a rate of 100g per 10 acres (Pages 5-6), and regulate the growth of wheat in Test examples 3 and 4 at a rate of 100g per 10 acres (Pages 7-8).
Regarding claim 6, Miyazawa teaches weight ratio of 3,5-dioxo-4-propionylcyclohexane carboxylic acid (prohexadione) and (2-chloroethyl) phosphonic acid (ethephon) is generally 1:0.5-50 (Page 3, lines 36-39). Therefore encompassing the instant weight ratio between prohexadione and ethephon of 1:1 to 1:20.
Regarding claim 7, Miyazawa teaches the plant growth regulating composition may be used in combination with fungicide, other plant growth regulating agents or fertilizer (Page 4, lines 8-9), and metal salts (Page 2, lines 38-39).
Regarding claim 9, Miyazawa teaches in formulation examples 7, the composition prohexadione-calcium and ethephon application spray treatment to rice, wheat, barley, rye or corn to control the internode elongation, to shorten the stem without adversely affecting the yield or quality of product (Page 5, lines 15-17).
With regards to the rape seed, Grossmann et al. disclose plant growth retardants of prohexadione calcium directed to oilseed rape and after treatment of seedlings with increasing retardant concentrations in hydroponics, plant height and fresh weight of shoots were reduced by up to 40%. Notably, Grossmann et al. disclose the amount of immunoreactive gibberellins decreased when compared with levels in the shoots of control plants and in contrast, the levels of abscisic acid and dihydrozeatin riboside and isopentenyladenosine-type cytokinins were considerably elevated by the growth retardant, wherein these results suggest that, in addition to its effect on gibberellin content, prohexadione calcium also influences the levels of endogenous abscisic acid and cytokinins (abstract).
Regarding claims 9 and 10, Grossmann et al. disclose use of prohexadione calcium in barley, wheat, oilseed rape (p. 140, left col., 1st para.).
Willms teaches inventive compounds, having excellent herbicidal efficacy against a broad spectrum of economically important monocotyledonous and dicotyledonous annual harmful plants, wherein the active ingredients also have good control over perennial weed plants (paragraph 0232). Furthermore, Willms disclose usable combination partners for the inventive compound mixture formulations in tank-mix, to include known active ingredients herbicides or plant growth regulators, for example, ethephon and prohexadione (paragraph 0276), with active compounds of insecticides, herbicides fungicides, fertilizers and/or growth regulators (paragraph 0263), and the application rate of the compounds varies with the external conditions, including temperature, humidity and the type of herbicides used, for example between 0.001 and 1.0 kg/ha or more active substance, or 0.005 and 750 g/ha (paragraph 0279), method used in the form of sprayable solutions (paragraph 0260) and granules can be prepared either by spraying the active compound (paragraph 0269).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the plant growth regulator composition containing the mixture of prohexadione-calcium and ethephon as taught by Rademacher and apply the mixture via a hand sprayer method to plants of rape seed, flax or cereal crops as taught by the combined teachings of Miyazawa et al. Grossmann et al. and Willms. One would have been motivated to do so because the combined teaching of Miyazawa et al., Grossmann et al., and Willms disclose use of prohexadione-calcium and ethephon to reduce plant heights and lodging. Miyazawa et al. disclose prohexadione-calcium and ethephon in a spray treatment to rice, wheat, barley, rye or corn to control the internode elongation, to shorten the stem without adversely affecting the yield or quality of product and Grossman et al. disclose prohexadione calcium reduces plant height and that prohexadione calcium increases abscisic acid levels in shoot tissues of wheat and oilseed rape. Dose response experiments revealed the reduction in shoot length caused by prohexadione calcium coincided with increasing concentrations of iPA- and DZR-type cytokines in the shoot and abscisic acid levels were elevated up to 6-fold relative to the control. Thus, the increase in abscisic acid levels were correlated to reduced plant height and reduction of shoot length of plants such as wheat and oilseed.
In regards to claims 1, 6-10, Miyazawa et al. differs from instant claims in the amount of ethephon of less than 400 g/ha and in the amount of prohexadione less than 200 g/ha, in the amounts of liter/ha sprayed and in that the further components aliphatic amino compounds, ammonium salts or carboxylic acids should be present. However, the results of the examples show the effect of treatment with the claimed mixture of prohexadione-calcium and ethephon for barley and wheat. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the method of application to improve treatment as described in claim 1 to regulate the growth of rape seed, flax or cereal crop because the same plant growth regulator mixture have been used on barley and wheat as exemplified in examples 1-4 of Miyazawa, although with a higher rate of prohexadione-calcium and ethephon. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to apply the same composition mixture of prohexadione-calcium and ethephon in a lower rate of chemicals to regulate the growth. 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).
One of ordinary skill in the art would have been motivated to do this because all
the references are drawn to plant growth regulator chemicals containing prohexadione-calcium and ethephon. One of ordinary skill in the art would have found it obvious to apply to different crops of barley plants, wheat, and oilseed rape as taught by the teachings of Miyazawa, Grossmann et al., and Willms to reasonably regulate the growth of plants. It is obvious to combine prior art elements according to the known methods to yield predictable results. Please see MPEP 2141 (III)(A).
Response to Remarks/Arguments
Rejection under 35 USC § 103
Applicant’s arguments filed 06/19/2025 have been fully considered and would be persuasive if the claims were commensurate in scope with the argued of unexpected results stemming from the concentration ranges of prohexadione and ethephon. Explanation is below.
The invention tested plants are rape seed, flax or cereal crops, however claim 1 recites “comprise” rape seed, flax or cereal crops and thus are not limited to these plants. Thus Pome fruit can be inclusive based on current claim language. The claim language would be more persuasive if amended to say “wherein the plants are selected from or chosen from rape seed, flax or cereal crops”. The newly amended concentration of prohexadione between 50 and 75 g/ha and ethephon between 202 and 325 g/ha is still consider optimization because the plants are not limited. Additionally, the weight ratio in claim 6 improperly broadens the weight ratios of prohexadione and ethephon which are permitted by the revised amounts present in claim 1.
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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDRE MACH whose telephone number is (571)272-2755. The examiner can normally be reached 0800 - 1700 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A Wax can be reached at 571-272-0323. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRE MACH/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615