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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 18 September 2025 has been entered.
Status
Applicant’s response dated 18 September 2025 to the previous Office action dated 19 March 2025 is acknowledged. Pursuant to amendments therein, claims 1-3, 5, and 7-23 are pending in the application.
The rejection under 35 U.S.C. 102 made in the previous Office action is/are withdrawn in view of applicant’s claim amendments, but a new (modified) rejection under 35 U.S.C. 102 is made herein in view of applicant’s claim amendments.
The rejection under 35 U.S.C. 103 made in the previous Office action is/are withdrawn in view of applicant’s claim amendments, but a new (modified) rejection under 35 U.S.C. 103 is made herein in view of applicant’s claim amendments.
The double patenting rejections made in the previous Office action is/are withdrawn in view of applicant’s claim amendments.
Election/Restrictions
Newly submitted claims 22-23 are directed to an invention that is independent or distinct or different from the invention originally claimed for the following reasons:
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), an international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an international application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Processes, Products, and/or Apparatuses:
Products, processes of manufacture, processes of use, and apparatuses are different categories of invention. When an application includes claims to more than one product, process, or apparatus, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the “main invention” in the claims. In the case of non-compliance with unity of invention and where no additional fees are timely paid, the international search and/or international preliminary examination, as appropriate, will be based on the main invention in the claims. See PCT Article 17(3)(a), 37 CFR 1.475(d), 37 CFR 1.476(c) and 37 CFR 1.488(b)(3).
As provided in 37 CFR 1.475(b), an international application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Group I, claim(s) 1-3, 5, and 7-21, drawn to a method of directly increasing plant growth, the method comprising the step of contacting the plant and/or its immediate environment with an effective amount of an ascaroside, wherein said method comprises: treating a seed with the ascaroside by contacting soil near the seed with the ascaroside; or spraying a composition comprising the ascaroside onto a plant or plant part.
Group II, claim(s) 22-23, drawn to a method of directly increasing plant germination, the method comprising the step of contacting the seed of the plant with an effective amount of an ascaroside.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a method comprising contacting a seed of a plant with an effective amount of an ascaroside, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Klessig et al. (US 2016/0037741 A1; published 11 February 2016; of record). Klessig et al. discloses a method comprising contacting a plant or plant part with an effective amount of at least one ascaroside (claim 1) wherein a plant part is a seed (claim 7).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 22-23 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 7-18, and 20-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klessig et al. (US 2016/0037741 A1; published 11 February 2016; of record).
Klessig et al. discloses a method comprising contacting a plant or plant part with an effective amount of at least one ascaroside (claim 1) wherein said ascaroside is ascr18 (claim 19) wherein a plant part is root, stem, leaf (i.e., foliage), seed, or flower (claim 7) wherein a plant is Arabidopsis, rice, tomato, corn, wheat, or potato (claim 8) wherein treatment of plants and soil can be by spraying or scattering (paragraph [0040]) wherein compositions may reach the plants through the root system via the soil by drenching the locus of the plant with a liquid preparation or incorporating the substances into the soil in solid form such as granules (paragraph [0050]) wherein compositions generally comprise 0.1-95% by weight of active compound, application rates are 0.1-2 kg of active substance per hectare, and dosages are 1 mg to 1 g active substance per kg of seed grain or tubers (paragraph [0051]) wherein treatment according to the invention results in better plant growth (paragraph [0041]) wherein treatment can be for a week (paragraph [0116]) wherein seeds (i.e., plant part) are sterilized (paragraph [0140]) wherein treated plants are compared to untreated control plants to determine whether treated plants have increased disease resistance (paragraphs [0115]-[0116]) wherein ascarosides may be formulated with an agronomically acceptable carrier (paragraph [0042]).
Regarding the recitation in claim 1 of “A method of directly increasing plant growth”, Klessig et al. discloses that treatment according to the invention results in better plant growth (paragraph [0041]) and doesn’t indicate that such better plant growth is due to pathogen resistance or other reason (i.e., the better plant growth is direct). Moreover, such property is presumed inherent in the method of Klessig et al. as discussed above, per MPEP 2112(V), given that the method of Klessig et al. as discussed above is at least substantially the same as the claimed method, and also given that compositions that are the same must have the same properties per MPEP 2112.01(II).
Regarding claims 9-12, such properties are presumed inherent in the method of Klessig et al. as discussed above, per MPEP 2112(V), given that the method of Klessig et al. as discussed above is at least substantially the same as the claimed method, and also given that compositions that are the same must have the same properties per MPEP 2112.01(II).
Regarding claim 20, Klessig et al. discloses that treatment according to the invention results in better plant growth (paragraph [0041]) and doesn’t indicate that such better plant growth is due to pathogen resistance. Moreover, such property is presumed inherent in the method of Klessig et al. as discussed above, per MPEP 2112(V), given that the method of Klessig et al. as discussed above is at least substantially the same as the claimed method, and also given that compositions that are the same must have the same properties per MPEP 2112.01(II).
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.
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.
Claim(s) 1-3, 5, and 7-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klessig et al.
Klessig et al. discloses a method comprising contacting a plant or plant part with an effective amount of at least one ascaroside (claim 1) wherein said ascaroside is ascr18 (claim 19) wherein a plant part is root, stem, leaf (i.e., foliage), seed, or flower (claim 7) wherein a plant is Arabidopsis, rice, tomato, corn, wheat, or potato (claim 8) wherein treatment of plants and soil can be by spraying or scattering (paragraph [0040]) wherein compositions may reach the plants through the root system via the soil by drenching the locus of the plant with a liquid preparation or incorporating the substances into the soil in solid form such as granules (paragraph [0050]) wherein compositions generally comprise 0.1-95% by weight of active compound, application rates are 0.1-2 kg of active substance per hectare, and dosages are 1 mg to 1 g active substance per kg of seed grain or tubers (paragraph [0051]) wherein treatment according to the invention results in better plant growth (paragraph [0041]) wherein treatment can be for a week (paragraph [0116]) wherein seeds (i.e., plant part) are sterilized (paragraph [0140]) wherein treated plants are compared to untreated control plants to determine whether treated plants have increased disease resistance (paragraphs [0115]-[0116]) wherein ascarosides may be formulated with an agronomically acceptable carrier (paragraph [0042]).
Regarding the recitation in claim 1 of “A method of directly increasing plant growth”, Klessig et al. discloses that treatment according to the invention results in better plant growth (paragraph [0041]) and doesn’t indicate that such better plant growth is due to pathogen resistance or other reason (i.e., the better plant growth is direct). Moreover, such property is presumed inherent in the method of Klessig et al. as discussed above, per MPEP 2112(V), given that the method of Klessig et al. as discussed above is at least substantially the same as the claimed method, and also given that compositions that are the same must have the same properties per MPEP 2112.01(II).
Further/alternatively regarding claim 1, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the teachings/suggestions of Klessig et al. as discussed above and to practice the method of Klessig et al. as discussed above wherein a seed is treated with the ascaroside by contacting soil near the seed with the ascaroside or wherein a composition comprising the ascaroside is sprayed onto a plant or plant part, with a reasonable expectation of success.
Regarding claims 9-12, such properties are presumed inherent in the method of Klessig et al. as discussed above, per MPEP 2112(V), given that the method of Klessig et al. as discussed above is at least substantially the same as the claimed method, and also given that compositions that are the same must have the same properties per MPEP 2112.01(II).
Regarding claim 20, Klessig et al. discloses that treatment according to the invention results in better plant growth (paragraph [0041]) and doesn’t indicate that such better plant growth is due to pathogen resistance. Moreover, such property is presumed inherent in the method of Klessig et al. as discussed above, per MPEP 2112(V), given that the method of Klessig et al. as discussed above is at least substantially the same as the claimed method, and also given that compositions that are the same must have the same properties per MPEP 2112.01(II).
Regarding claim 21, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the teachings/suggestions of Klessig et al. as discussed above and to practice the method of Klessig et al. as discussed above wherein a seed is treated with the ascaroside by contacting soil near the seed with solid granules comprising the ascaroside compounded with an agronomically acceptable carrier, with a reasonable expectation of success.
Response to Arguments
Applicant's arguments regarding anticipation and obviousness filed 18 September 2025 have been fully considered but they are not persuasive.
Applicant argues that the skilled artisan would understand that the speculative super-additive effects provided by Klessig et al. were effects that would result from the ability of ascarosides increasing disease resistance in plants and increasing the plant defense response, and Klessig et al. fails to provide any other basis by which the effects could occur, and thus Klessig et al. fails to specifically disclose contacting a plant with an ascaroside to directly increase plant growth (remarks pages 7-8). In response, Klessig et al. discloses that treatment according to the invention results in better plant growth (paragraph [0041]) and doesn’t teach that such better plant growth is due to pathogen resistance. Super-additive effects or synergistic effects does not imply that such effects are not direct effects, but rather that they are additional effects. Moreover, the directly increasing plant growth and other recited properties of the instant claims are inherent in the methods of the recited patent and application claims given the at least substantial similarity of the methods.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached on (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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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617