Detailed Action
The present office action is in response to the amendments filed 21 Nov 2025.
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
Claims 1-4 and 6-15 of the pending application have been examined on the merits.
Priority
Applicants identify the instant application, Serial #: 17/625,415 filed 07 Jan 2022, as a National Stage Entry of International Patent Application #: PCT/US2020/041315, filed 09 Jul 2020, which claims priority from U.S. Provisional Application #: 62/872,009, filed 09 Jul 2019.
Response to Applicant Arguments
Examiner acknowledges the reply filed 21 Nov 2025.
Regarding the rejection of claims 1-4 and 6-15 under 35 U.S.C. § 103 over Mahajan et al. (Revue Nematol, 1985, 8:161-164; provided in Office Action dated 06 Nov 2024), hereinafter Mahajan, further in view of Paik et al. (J Ind Eng Chem, 2005, 11:475-477; provided in IDS 05/17/23), hereinafter Paik, Stock et al. (J Nematol, 2017, 49:373-383; provided in Office Action dated 13 May 2025), hereinafter Stock, Pavela (Ind Crop Prod, 2014, 60:247-258; provided in Office Action dated 13 May 2025), hereinafter Pavela, Hazir et al. (J Invertebr Pathol, 2017, 145:1-8; provided in Office Action dated 13 May 2025), hereinafter Hazir, Hu et al. (Nematology, 1999, 1:457-469; provided in Office Action dated 13 May 2025), hereinafter Hu, and Apt et al. (Ann Appl Nematol, 1988, 2:1-10; provided in Office Action dated 06 Nov 2024), hereinafter Apt, in light of Boguski (Environmental Science and Technology Briefs for Citizens, Kansas State University, 2006, Issue 2; cited for evidentiary purposes, provided in Office Action dated 13 May 2025), hereinafter Boguski, applicant's arguments filed 21 Nov 2025 have been fully considered but they are not persuasive.
In the reply filed 21 Nov 2025, applicant argues that Hazir specifically teaches that not all combinations of TCA and additional compounds result in synergy and that some compounds resulted in antagonistic activity (pg. 6). Applicant further argues that Pavela demonstrates that some compounds exhibited an antagonist effect when combined with TCA (pg. 6). Applicant argues that no teaching in any of the references cited by the examiner would lead the artisan to expect synergy between the components of the instant claims and that there is no suggestion how to predict which compounds would exhibit synergy.
This is not persuasive. See MPEP § 716.02(a)(I) which states:
"A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue." In re Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). In Corkhill, the claimed combination showed an additive result when a diminished result would have been expected. This result was persuasive of nonobviousness even though the result was equal to that of one component alone. Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately (i.e., demonstrating "synergism"). Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). However, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991)
While applicant points to evidence in the record that TCA does not always exhibit synergy, TCA exhibits a greater proportion of synergism with tested compounds in Pavela (pg. 254, Table 2) which leads to the reasonable expectation of success that the composition taught by Mahajan, Pai, Stock, Pavela, Hazir, Hu, Apt, and Boguski would exhibit synergy.
In light of the discussion above, the rejection of claims 1-4 and 6-15 under 35 U.S.C. § 103, as obvious over Mahajan, Pai, Stock, Pavela, Hazir, Hu, Apt, and Boguski is maintained for the reasons of record and restated below.
Claim Interpretation
The interpretation of claim 1 was previously stated in the Office Action dated 13 May 2025 and 16 Sep 2025 and is restated below.
Claim 1 recites “a composition consisting essentially of a combination of purified metabolites…” but there is not a clear indication in the specification and claims what the basic and novel characteristics actually are and why adding more metabolites would be deleterious to those characteristics. See MPEP 2111.03(III) which states:
if an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964).
Therefore, “consisting essentially of” will be construed as equivalent to “comprising.”
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-4 and 6-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mahajan, further in view of Paik, Stock, Pavela, Hazir, Hu, and Apt in light of Boguski.
Mahajan teaches the following ideas: the testing phenolic compounds for activity against second stage juveniles of Meloidogyne incognita and their effect on its egg hatch (pg. 161, column 1); trans-cinnamic acid (TCA) at 1,100 ppm was highly toxic with a mortality greater than 95% against M. incognita (pg. 161, column 2; pg. 162, column 2); and TCA was highly effective in suppressing egg at a concentration of 500 ppm (pg. 163 column 1; pg. 162, column 1). Boguski teaches that 1 ppm = approximately 1 mg/L in water (pg. 1, column 2).
Mahajan, in view of Boguski, teaches TCA was highly effective in suppressing egg hatching at 500 µg/mL. However, Mahajan does not teach a composition of TCA and (4E)-5-phenylpent-4-enoic acid (PPA).
Pavela teaches a method of testing binary mixtures of various aromatic compounds on Spodoptera littoralis larvae for new combinations that have synergy (pg. 248, column 2) including testing TCA (Table 1). Pavela teaches that TCA has synergistic effects with multiple aromatic compounds (Table 2). Further, Pavela teaches that substances not able to cause acute toxicity by themselves have been found to significantly increase the effectiveness of other substances and it is likely that relatively inactive substances may actually play a relatively important role in complex mixtures (pg. 258, column 1).
Paik teaches the isolation and characterization of a high concentration of TCA and its analogue from Photohabdus luminescence (pg. 475, columns 1-2). Paik also teaches the isolated TCA analogue, Compound 3, is PPA (pg. 476, column 2 and Figure 1).
PNG
media_image1.png
78
135
media_image1.png
Greyscale
Paik further teaches that TCA has been reported to possess a variety of biological properties and that P. luminescence used in the biological control of pest insects could be used as an industrially important, rich source of cinnamic acid analogues (pg. 477, column 1).
Hu teaches the chemical identification and nematocidal activity of substances produced by P. luminescence. Hu teaches testing nematocidal activity by purifying the chemical compounds by HPLC and creating different amounts of stock solution to test nematocidal activity at a range of concentrations from 6.25 µg/mL to 200 µg/mL. Hu teaches that indole had nematocidal effect against all nematode species tested, including M. incognita, at concentrations greater than 200 µg/mL and that indole almost completely inhibited M. incognita egg hatch at 100 µg/mL (pg. 462, column 1).
Stock teaches there is a great need for the discovery and use of pesticides that are not only highly effective but also have low toxicity and reduces impact in the environment (pg. 380, column 1). Stock also teaches that more bioassays should be carried out to test the bioactivity of specific Photohabdus secondary metabolites molecules with a focus on understanding the specificity, biosafety, and environmental impact to nontarget organisms (pg. 477, column 1). Stock further teaches that considerations should be made toward evaluation of Photohabdus secondary metabolite shelf life and compatibility with additives and/or adjuvants that could potentially improve their application and stability as a final product.
Hazir teaches that combined application of different anti-fungal compounds can result in synergism resulting in improved efficacy and reduced potential for development of resistance (pg. 2, column 1). Hazir also teaches that TCA has synergy with multiple commercial fungicides (pg. 5, column 2).
When Paik is combined with Hu, a person having ordinary skill in the art would test PPA, a known metabolite of P. luminescence taught by Paik, for nematocidal activity. It would further be obvious to the artisan to test this metabolite at a range of concentrations between 6.25 µg/mL and 200 µg/mL as taught by Hu. The artisan would be motivated to test PPA to find pesticides that exhibit low off-target toxicity and reduces the impact on the environment.
Based on the teachings of Mahajan and Pavela, it would be known by the artisan that TCA exhibits synergy with compounds that exhibit insecticidal and fungicidal activity. The artisan would further have a reasonable expectation of success that combining Photohabdus secondary metabolites together would result in the finding of synergistic nematocidal compositions.
Based on the teaching of Mahajan, Paik, and Hu, an artisan would combine the composition of TCA at 500 µg/mL with the composition of PPA ranging from 6.25 µg/mL to 200 µg/mL to create a third composition for the treatment of M. incognita nematode infections and have a reasonable expectation of success. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Based on the teaching of Mahajan, Paik, and Hu, an artisan would combine the composition of TCA, PPA, and ID to create a fourth composition for the treatment of nematode infections with a reasonable expectation of success. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Mahajan, Paik, and Hu teach TCA, PPA, and ID which have properties indistinct from the instant application’s TCA, PPA, and ID. MPEP § 2113 states:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 6695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
The limitations of the metabolite not killing or inhibiting the growth of beneficial soil nematodes (instant claim 10) are the outcomes of steps performed in the treatment of a nematode infection. Mahajan, Paik, and Hu teach the composition of TCA and PPA to treat a nematode infection and, therefore, must necessarily have the same outcome as instant claim 10.
Regarding claims 11-13, Apt teaches that low concentrations of carbosulfan, carbofuran, aldoxycarb, and oxamyl in the root zone of tomato through multiple applications via drip irrigation provided protection against M. incognita (pg. 3, column 2). Apt further teaches that four applications of oxamyl, aldoxycarb, and carbofuran at planting and then 3, 6, and 14 days later resulted in significant tomato yield increases (pg. 3, column 2).
Based on the teachings of Mahajan, Paik, Hu, and Apt, one having ordinary skill in the art would combine the treatment of M. incognita infections with a composition of TCA and PPA, as taught by Mahajan, Paik, and Hu, with the nematicide application schedule of Apt. A person having ordinary skill in the art would be motivated to combine these techniques to increase tomato yields.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the foregoing discussion, the examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103. 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 was 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 claim is allowed. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan D. Mahlum whose telephone number is (703)756-4691. The examiner can normally be reached 8:30 AM - 5:00 PM ET, M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.D.M./Examiner, Art Unit 1625
/Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625