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 .
Claim Interpretation
Applicants claim a method for increasing seed yield or a method of promoting plant growth or a method for increasing the number of flowers. The examiner is interpreting these increased seed yield, promoted plant growth or increasing the number of flowers broadly, e.g. wherein the seed yield, number of flowers or growth are increased or promoted to any degree as compared to the same plant that is untreated based on applicant’s comments in their response filed 12/22/25.
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.
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 12, 15-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mottram (US5952267) in view of Otsu et al. (JP2018130091, from IDS and previously cited) as evidenced by SigmaAldrich (https://www.sigmaaldrich.com/US/en/product/sigma/e7521?srsltid=AfmBOopF1sDMHAW1o4MHlbfBNeJMZ7cc93MnZxxcpbsyBDD-IUT1kDMI) and Barnhardt cotton (https://barnhardt.net/journey-of-cotton-harvesting/, dated 01/31/2018).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 12, 15-25, Mottram teaches that 2-mercaptohistidine betaine which is another name for ergothioneine (which as evidenced by Sigma Aldrich are both synonyms for the claimed L-ergothioneine and/or necessarily contains L-ergothioneine because 2-mercaptohistidine betaine can exist in only two stereoisomers and if racemic since Mottram does not teach it is the L-isomer will necessarily contain/have L-ergothioneine present) was known to be useful as an osmolyte regulator for plants and alleviates or combats the effects of stress in plants (See abstract; Col. 3, ln. 1-13; Col. 3, ln. 16; Col. 3, ln. 46-Col. 4, ln. 43; claims). Mottram teaches wherein their betaine osmolytes/osmoregulators are applied to plants alone or in combination with one or more other materials including wetting agents/surfactants, adjuvants, pesticides, nutrients, liquid carriers/oils, etc. which read on the claimed surfactant, liquid carrier, etc. (Col. 3, ln. 16; Col. 3, ln. 27-45; Col. 3, ln. 46-Col. 4, ln. 43; claims). Mottram further teaches wherein their betaines which can expressly be/include the claimed ergothioneine/2-mercaptohistidine betaine are applied before, during or after flowering and can be applied to the plants at any time from planting until harvesting but is typically applied early in the life of crops, and is typically applied to cotton plant at 77 or 98 days after planting (as evidenced by Barnhardt cotton, cotton is typically fully mature and reading for harvesting approximately 160 days after being planted) and as such Mottram teaches wherein their application/treatment of the plant preferably ends at least 10 days before harvesting the plant as is instantly claimed (see entire document; claims; Col. 3, ln. 16; Col. 3, ln. 46-Col. 4, ln. 43; abstract; Col. 3, ln. 1-13; Col. 3, ln. 16; claims; Barnhardt: see with cotton harvesting, timing is everything section).
Regarding claims 12, 15-16, Mottram teaches wherein the application of the 2-mercaptohistidine betaine/ergothioneine/L-ergothioneine is used to promote the growth of plants, specifically cotton, and that the application leads to increased yield of cotton bolls which means that Mottram teaches that they increase seed yield vs untreated plants and Mottram teaches that effective amounts of their betaines for improving plant growth and seed yield (see entire document; Col. 3, ln. 16; Col. 3, ln. 46-Col. 4, ln. 43; abstract; Col. 3, ln. 1-13; Col. 3, ln. 16; claims).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Mottram does not specifically teach wherein the effective amounts of the claimed 2-mercaptohistidine betaine/ergothioneine/L-ergothioneine is the newly claimed from 0.01 to 1 mM. However, this deficiency in Mottram is addressed by Otsu.
Otsu teaches ergothioneine containing growth mediums and/or fertilizer(s) compositions which are added to plants/plants or plants are planted in these mediums for fertilization and the plants grow in this medium which read on the instantly claimed plant growth promoter, agent for increasing seed yield, agent for increasing the number of flowers, as the only thing required in these claimed agents is the known ergothioneine and a solid or liquid carrier (e.g. water, soil, etc.) (see claims, examples; pg. 1, paragraph beginning The plant, food, culture fertilizer, and method for producing the plant according… (last paragraph pg. 1); pg. 2, Ergothionein (ergothioneine) is a kind of sulfur containing amino acid….through formula I structure; pg. 4, paragraphs beginning: The fertilizer of the embodiment… through pg. 5, paragraph beginning: The cultivation medium according to the embodiment may contain 1 µg/L or more…; pg. 5, cultivating a plant in a cultivation medium….through pg. 6, paragraph beginning: In a manufacturing method of the embodiment…; pg. 2,paragraph although the type of plant body…through pg. 3, paragraph beginning: the plant body of the embodiment may be the whole plant…). Otsu teaches that it was known to add ergothioneine to these mediums in order to fertilize plants, and Otsu teaches wherein the amounts of the ergothioneine in the soil or water or other carrier is/can be 0.1 mg/L or more, specifically 1 mg or more, and also that the cultivation culture medium can contain 10,000 mg/L or less of the ergothioneine and/or wherein the fertilizer carrier can contain from 0.01 mg to 250 g/L of ergothioneine of ergothioneine which reads on/encompasses the newly claimed range of from 0.01 to 1 mM, and as such Otsu teaches wherein the cultivation medium which carries the ergothioneine to the plants reads on the claimed effective amount of ergothioneine of from 0.01 to 1 mM, and wherein their fertilizers also comprise the claimed carriers (see claims, examples; pg. 1, paragraph beginning The plant, food, culture fertilizer, and method for producing the plant according… (last paragraph pg. 1); pg. 2, Ergothionein (ergothioneine) is a kind of sulfur containing amino acid….through formula I structure; pg. 4, paragraphs beginning: The fertilizer of the embodiment… through pg. 5, paragraph beginning: The cultivation medium according to the embodiment may contain 1 µg/L or more…; pg. 5, cultivating a plant in a cultivation medium….through pg. 6, paragraph beginning: In a manufacturing method of the embodiment…; pg. 2,paragraph although the type of plant body…through pg. 3, paragraph beginning: the plant body of the embodiment may be the whole plant…).
Mottram also does not teach wherein the number of flowers is increased. However, as Mottram teaches the claimed active steps comprising applying the same active to the same plants during the same time period of stopping application at least 10 days prior to harvest to improve plant growth and seed yield/cotton boll yield it would have been obvious to optimize the amounts of the ergothioneine applied to the plants, specifically the claimed 2-mercaptohistidine betaine/ergothioneine/L-ergothioneine as taught by Mottram in order to form the claimed methods since Mottram already teaches using the same active agents at the same application timings to provide the same effects which are instantly claimed and as such it would obvious optimize the amounts of active agents to form the most effective methods for improving plant growth, etc. as is instantly claimed because Otsu (as discussed above) already teaches that it was known to use the claimed and/or overlapping amounts of ergothioneine in fertilizers for improving plant growth as this is what fertilizers do. 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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art to optimize the amount of 2-mercaptohistidine betaine/ergothioneine/L-ergothioneine in the compositions of Mottram in order to form the claimed methods because Mottram teaches applying/treating plants, seeds, soil where crops are growing with 2-mercaptohistidine betaine/ergothioneine/L-ergothioneine to improve plant growth, and crop/seed yields, and Otsu teaches that it was known in the art to use overlapping amounts of ergothioneine to those instantly claimed as is discussed above in fertilizer compositions for improving plant growth, etc. Thus, it would be obvious to optimize the amounts of ergothioneine in the compositions/methods of Mottram based on the teachings of Otsu in order to develop the instantly claimed method in order to afford plants/crops with improved growth/increased seed/crop yields, because it is known, “[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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It also would have been obvious to one of ordinary skill in the art to select the claimed 2-mercaptohistidine betaine/ergothioneine, specifically the claimed L-ergothioneine, for application to the crop plants to form the claimed method because Mottram teaches wherein 2-mercaptohistidine betaine/ergothioneine is one of the preferred/known betaines which are effective as osmolytes, and protect plants from stress while increasing growth and seed/crop yields of the plants, e.g. cotton to which it is applied, and as such it would be obvious to determine which isomers are the most effective of the disclosed betaines of Mottram to afford the best effects to crops when applied in effective amounts as are taught by Otsu especially since Otsu already teaches that ergothioneine is effective in fertilizers in amounts which overlap those instantly claimed.
Additionally, it also would have been obvious for one of ordinary skill in the art that the application steps of Mottram when using the claimed amounts of ergothioneine as Otsu teaches using overlapping amounts of ergothioneine in fertilizers to the same plants, at the same timings, e.g. stopping application at least 10 days prior to harvest, will also be accomplishing the same increased flower number, etc. as are instantly claimed because Mottram and Otsu in view of evidentiary references together teach wherein the application of the same active agent in the same amounts are preferably done early in the plant growth cycle and as such it would be obvious to apply it prior to flowering, etc. to increase yields and plant growth and then also whether or not it is recognized by Mottram and the combined references would obviously be increasing the flower number, etc. as is instantly claimed because this would be result effective of the treating/applying steps which are taught by Mottram and the combined references.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 12, 15-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18260434 (reference application) in view of Mottram (US5952267).
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘434 claims a plant growth regulator composition comprising an extract of an ergothioneine producing microorganism which contains ergothioneine, wherein the extract comprising the ergothioneine reads on the claimed composition with the claimed solid or liquid carrier which is the same compound that is instantly claimed/preferred ergothioneine (i.e. (L)-(+)-ergothioneine), and ‘434 teaches wherein (L)-(+)-ergothioneine and the extract together are the active ingredient in the composition, e.g. the composition can comprise other components. ‘434 further teaches/claims wherein their extracts comprising ergothioneine are useful for increasing flower numbers, increasing plant height, increasing seed yield, and increasing above ground part weight, and increasing underground part weight all of which read on the claimed compositions. Regarding instant claims 12 and 15-16, which only require application to plants to promote plant growth, increase seed yield, etc. ‘434 specifically claims that their compositions are plant growth regulators and claims a method for promoting plant growth which comprises treating a plant with the plant growth regulator composition which comprises treating a plant with the plant growth regulator of their claim 1. ‘434 merely does not claim/teach the claimed amounts/concentrations and stopping application at least 10 days before harvesting the plant. ‘434 does teach applying ergothioneine in amounts of 0.1 ppm or greater which does broadly read on the newly claimed range of 0.01 to 1 mMol.
Thus, because ‘434’s ergothioneine containing compositions are being used to accomplish the same intended uses and/or methods instantly claimed it is obvious that the amounts in ‘434 would be the same/overlapping to the claimed amounts since ‘434 and the instant application are being used to accomplish the same promoting plant growth, increasing flower number, and increasing seed yield as are instantly claimed and ‘434 claims/teaches wherein the ergothioneine is used in amounts of 0.1 ppm or greater and as such it would be obvious to optimize the amounts of ‘434’s ergothioneine to read on the newly claimed range since this is something that one of ordinary skill in art routinely does in order to determine the most effective amounts of an active agent for a known purpose, e.g. improving plant growth. Further, it would be obvious to optimize the application steps to determine the most effective timing for application of the ergothioneine/L-ergothioneine to the crop plants. Especially since, the secondary reference Mottram teaches that it was known to apply ergothioneine, including L-ergothioneine to plants for the same purpose of improving plant growth and wherein the application typically occurs early in the life of the crops and more typically, the betaine is applied to cotton plants at 77 or 98 days after planting which is greater than 10 days before harvest (see sections cited above, e.g. Col. 3, ln. 57-Col. 4, ln. 39; Col. 3, ln. 16; etc.).
Thus, one of ordinary skill in the art would conclude that the plant growth promoter compositions and method of copending ‘434 in view of Mottram still render obvious the instantly claimed methods since the compositions and method of ‘434 are intended for application to plants/treating plants to improve plant growth, increase seed yield, etc. and ‘434 teaches wherein the ergothioneine is present in amounts which overlap those newly instantly claimed and Mottram teaches that it was known to improve plant growth, etc. with 2-mercaptohistidine betaine (ergothioneine/L-ergothioneine) being applied during the same timings that are instantly claimed.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments/Remarks
Applicant’s amendments to the claims have prompted the new/updated/revised grounds of rejection under 103 and double patenting which are presented herein. Applicants arguments were not persuasive at this time and are addressed insofar as they pertain to the revised/updated grounds of rejection.
Applicants argue first that a proper rationale was not used by the examiner in the 103 rejection of record because applicants have demonstrated evidence of non-obviousness with their method. Applicants argue that they have demonstrated that ergothioneine unexpectedly provides substantially superior plant growth effects (specifically the claimed effects) at concentrations where other osmotic regulators exhibit little to no effect. The examiner is not persuaded by these arguments because applicant’s amendments to the claims have prompted the updated/new grounds of rejection presented herein and Otsu teaches that it was already known that ergothioneine was useful for improving plants growth effects in amounts which encompass those instantly claimed, specifically Otsu teaches wherein their fertilizer can comprise from .01 mg/L-250g/L of ergothioneine which encompass applicant’s newly claimed range and as such it would have been obvious to one of ordinary skill in the art to optimize the known useful amounts of ergothioneine which are known to be useful for improving plant growth/plant growth effects as taught by Mottram and Otsu together in order to determine the lowest dosages which are effective for improving plant growth as this is something that one of ordinary skill in the art routinely does in order to make compositions which are effective and require as little active ingredients, e.g. ergothioneine, as possible as this is more cost effective for the manufacturer because active ingredients are routinely costly components in a composition, and as such the compositions can be made with less of the costly active agents and achieve good plant growth thereby costing the manufacturer less to make and allow the end-user to use less actives on their plants/crops while achieving improved plant growth effects over untreated plants/crops.
Applicants argue that the dosages taught by Mottram are much higher than those instantly claimed. The examiner agrees that the dosages are higher. However, as discussed above it would have been obvious to one of ordinary skill in the art to optimize the dosages of ergothioneine/L-ergothioneine taught by Mottram and Otsu (as applicant’s have completely amended their claimed concentration scope prompting the revised grounds of rejection herein), for improving plant growth in order to find the lowest effective dosages which still improve plant growth for the reasons immediately above especially since Otsu already teaches incorporating ergothioneine into fertilizers in concentrations/amounts which overlap the newly claimed ranges. This is something that one of ordinary skill in the art routinely does because by finding the lowest amounts/concentrations which are effective for improving plant growth is cost effective for example for the manufacturer of the ergothioneine plant growth formulations who can then include less of the costly ergothioneine active agent in their plant growth stimulating compositions they provide for sale thereby saving them money in making/formulating their ergothioneine compositions for sale.
Applicants then argue that Mottram does not exemplify using ergothioneine at the claimed concentrations and really only glycine betaine in their examples and that because of this it would indicate that the expected effect for the compounds disclosed in Mottram as osmotic regulators would be substantially equal to that of glycine betaine. Applicants then show that glycine betaine, glutamic acid and proline all do not work or do not work as effectively as ergothioneine at the low concentrations/amounts now claimed, and argue that their effects are unexpected. The examiner respectfully disagrees. Firstly, in some of the cases applicants results from their specification which appear to have been used in the instant response it actually has not been made clear that applicant’s results are of statistical significance from some of the other compounds tested., e.g. the examples in Table 1, ratio being 1.7 vs 1.5 and as such it is not clear that the differences in the ratios calculated between the two treatments are statistically significant. Secondly, the data presented does not appear to be commensurate in scope with the instant claims as applicant’s results are with L-(+)-ergothioneine whereas the instant claims are directed to ergothioneine which is not solely the L-(+)-ergothioneine enantiomer. Thirdly, applicant’s claims use comprising language and as such the R-(-)-ergothioneine and anything else including other actives, etc. are never excluded from the instant claims because of the comprising language which is open-ended and does not exclude anything from the instant claim scope. Fourthly, based on the teachings of Otsu which are discussed above, it actually appears that the argued unexpected results are not actually unexpected since Otsu teaches using overlapping amounts of ergothioneine in their fertilizers for improving plant growth, etc.
Thus, the arguments and data presented in applicant’s response of 12/22/25 are not persuasive at this time in light of the revised/new grounds of rejection (with the re-introduction of the previously used Otsu reference) presented herein which was prompted by applicant’s amendments to the effective amount range of the ergothioneine/compound of formula (I) which were significantly narrowed in scope. Applicants then argue the double patenting rejection over copending 18260434, and argue that reconsideration is requested in light of applicant’s claim amendments, and that if maintained they request abeyance. Applicant’s amended claim scope has prompted the revised/new grounds of rejection under double patenting presented above and applicants arguments are not persuasive for the same reasons already discussed above.
Applicant’s request for the double patenting rejection of record to be held in abeyance is acknowledged. However, this request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the rejection will be maintained until a terminal disclaimer is filed or the claims are amended to obviate the rejection.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at (571)-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616