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 .
Status
Applicant’s response dated 21 April 2026 to the previous Office action dated 21 October 2025 is acknowledged. Pursuant to amendments therein, claims 1-3, 5, 7-19, and 21-29 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The rejection under 35 U.S.C. 102 made in the previous Office action is/are withdrawn in view of applicant’s claim amendments, but a new (modified) rejection under 35 U.S.C. 102 is made herein in view of applicant’s claim amendments.
The rejection under 35 U.S.C. 103 made in the previous Office action is/are withdrawn in view of applicant’s claim amendments, but a new (modified) rejection under 35 U.S.C. 103 is made herein in view of applicant’s claim amendments.
The double patenting rejections made in the previous Office action is/are withdrawn in view of applicant’s claim amendments.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
Claims 22-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse per original presentation.
Claims 1-3, 5, 7-19, 21, and 24-29 are under current consideration.
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, 21, and 24-29 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 (i.e., pre-germination), 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, increased flowering performance, accelerated maturation, and higher harvest yields that exceed the effects which were actually to be expected (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]) wherein seedlings may be treated/sprayed (paragraph [0139]).
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 the claimed recitation of the increased plant growth not being due to pathogen resistance, 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 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 claims 28-29, such claimed comparing of speed of germination/flowering/seed set/fruit set/tuber set is implicitly inherent in the method of Klessig et al. as discussed above given that Klessig et al. teaches that treatment according to the invention results in better plant growth, increased flowering performance, accelerated maturation, and higher harvest yields that exceed the effects which were actually to be expected, which requires comparing speed of germination/flowering/seed set/fruit set/tuber set in order to determine such better plant growth, increased flowering performance, accelerated maturation, and higher harvest yields that exceed the effects which were actually to be expected.
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, 7-19, 21, and 24-29 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 (i.e., pre-germination), 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, increased flowering performance, accelerated maturation, and higher harvest yields that exceed the effects which were actually to be expected (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]) wherein seedlings may be treated/sprayed (paragraph [0139]).
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 the claimed recitation of the increased plant growth not being due to pathogen resistance, 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).
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 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.
Regarding claims 28-29, such claimed comparing of speed of germination/flowering/seed set/fruit set/tuber set is implicitly inherent in the method of Klessig et al. as discussed above given that Klessig et al. teaches that treatment according to the invention results in better plant growth, increased flowering performance, accelerated maturation, and higher harvest yields that exceed the effects which were actually to be expected, which requires comparing speed of germination/flowering/seed set/fruit set/tuber set in order to determine such better plant growth, increased flowering performance, accelerated maturation, and higher harvest yields that exceed the effects which were actually to be expected.
Further/alternatively regarding claims 28-29, 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 comparing speed of germination/flowering/seed set/fruit set/tuber set is performed in order to determine such better plant growth, increased flowering performance, accelerated maturation, and higher harvest yields that exceed the effects which were actually to be expected, with a reasonable expectation of success.
Response to Arguments
Applicant's arguments regarding anticipation and obviousness filed 21 April 2026 have been fully considered but they are not persuasive.
Applicant argues that Klessig et al. does not disclose that contacting a plant with an ascaroside directly increases plant growth, which is an unexpected superior result (remarks pages 7-9). In response, 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). Moreover, Klessig et al. teaches contacting a plant with an ascaroside which results in better plant growth as discussed above, and merely additionally reciting an explanation for such better plant growth does not render the claims patentable. See, e.g., Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999) ("[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer."). Furthermore, allegations of unexpected results cannot overcome an anticipation rejection, per MPEP 2131.04.
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 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
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