DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/11/2025 has been entered.
Status of Action/Claims
Receipt of Remarks/Amendments filed on 9/11/2025 is acknowledged. Claim 16 is currently pending and presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following
rejections are either reiterated or newly applied. They constitute the complete set of rejections
presently being applied to the instant application.
Withdrawn Rejections/Objections
The rejection of claim 7 under 112(a) made in the previous office action is withdrawn due to cancelling of claim 7.
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Asrar et al. (US 2004/0023802 A1).
Asrar et al. teach a method of improving the yield and/or vigor of agronomic plants by treatment of a seed of the plant with a neonicotinoid compound, wherein the neonicotinoid compound includes flonicamid, which reads on flonicamid as the sole active ingredient recited in the instant claims. ([0003], [0018]-[0052], [0056], [0095]; Claims 1-6 and 9).
Regarding the seed which is treated in the method of instant claim, Asrar et al. teach that examples of such agronomic plants include, without limitation, corn, cotton, rice and soybean ([0065], [0127]-[0128]; Claims 42, 44). Neonicotinoid compound can be applied directly to seed before sowing of the seed. (see e.g. para 0131-0132; 0060).
Asrar et al. teach the seed is treated with an amount of the neonicotinoid compound from about 0.1 gm/100 kg of seed to about 1,000 gm/100 kg of seed (Claims 14-17). Asrar et al. further teach that the concentration of the neonicotinoid compound in the formulation is preferably about 0.5% to about 99% by weight (w/w), preferably 5-40% ([0200]). Plant seed can be combined for a period of time with a solution comprising from about 1% by weight to about 75% by weight of the neonicotinoid compound in a solvent such as water. Preferably the concentration of the solution is from about 5% by weight to about 50% by weight, more preferably from about 10% by weight to about 25% by weight ([0217]).
Asrar et al. teach the amount of neonicotinoid compound that is applied to a seed in the treatment will range from about 0.1 gm to about 1,000 gm of the compound per 100 kg of the weight of the seed. Preferably, the amount of neonicotinoid compound will be within the range of about 5 gm to about 600 gm active per 100 kg of seed, more preferably within the range of about 10 gm to about 400 gm active per 100 kg of seed, and even more preferably within the range of about 20 gm to about 300 gm of neonicotinoid compound per 100 kg of seed weight. Alternatively, it has been found to be preferred that the amount of the neonicotinoid compound be over about 20 gm of the compound per 100 kg of the seed, and more preferably over about 40 gm per 100 kg of seed. When the neonicotinoid compound is imidacloprid, a preferred range of use includes about 40 gm/ 100 kg of seed to about 100 gm/ 100 kg ([0211]). Asrar et al. teach treating corn kernels with 1.34 mg imidacloprid per kernel (about 487 grams imidacloprid per 100 kg of seed) ([0224]).
Therefore, a person of ordinary skill in the art would have been able to determine the effective total amount of flonicamid to apply to a kg of seed or per one seed, and the optimum concentration of flonicamid in a solution in order to apply said solution to the seed. A person of ordinary skill in the art would have been able to determine through routine experimentation the effective concentration of flonicamid to apply per seed in order to effectively improve the yield and/or vigor of agronomic plants, which would also increase the germination rate of the seed. 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). Also see MPEP 2144.05: “[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); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969); Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed.Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). Furthermore, the application according to Asrar et al. would also increase germination of the seed, as reasonably taught.
Asrar et al. teach treating seeds with a neonicotinoid for improving the yield and/or vigor of agronomic plants, wherein the neonicotinoid includes flonicamid. Such treatment would also necessarily increase the germination rate of the treated seed compared to non-treated seed, as instantly claimed. Asrar et al. teach application of flonicamid to seeds in amounts that overlap with the scope of the instant claims. Therefore, the application according to Asrar et al. would also increase germination of the seed.
Further, while Asrar does not expressly disclose an example where flonicamid is the active neonicotinoid, Asrar discloses flonicamid as a suitable neonicotinoid (see e.g. claim 9). Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
From the combined teaching of the cited reference, 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.
Response to Arguments
Applicant argued while Asrar lists flonicamid as one of several possible neonicotinoid compounds, it provides no specific guidance or preference for the use of flonicamid as the sole active ingredient in seed treatment. Asrar’s examples focus on imidacloprid as the active ingredient.
In response, as discussed supra, Asrar teaches treating the seed with a neonicotinoid compound and wherein the neonicotinoid compound is selected from the group consisting of acetamiprid, imidacloprid, thiamethoxam, clothianidin, dinotefuran, nitenpyram, flonicamid, nithiazine and thiacloprid. (claim 1 and 9). Asrar discloses a finite and small list of alternative neonicotinoid compound to choose from and it would have been obvious to one skilled in the art to choose flonicamid as the neonicotinoid compound from the small and finite list of alternatives. Further, the rejection is made under 103 and does not need to exemplify all embodiments, only suggest. “Disclosed examples and preferred embodiments do not constitute a teaching away from the broader disclosure or non-preferred embodiment.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 2123.
Applicant argued Asrar teaches that one should first determine that an insect pest infestation is not present before proceeding with the seed treatment. This prerequisite means that the teachings of Asrar are limited in scope and do not broadly apply to all seed treatment scenarios.
In response, the examiner respectfully argues that instant claims do not require planting the flonicamid treated seed in insect/pest infested soil. The instant claims merely require contacting a seed with an amount of flonicamid per seed to improve the germination of the seed. As discussed supra, Asrar teaches contacting a seed with flonicamid prior to planting said seed. Asrar further teach application of an amount of flonicamid to a seed such as rice, kernal, corn seeds. Therefore, the application of flonicamid to the seed would necessarily improve the germination rate of the seed.
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6 and 9 of copending Application No. 17/670,010 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to methods comprising applying flonicamid to a seed. The amount of flonicamid applied to the seed in the ‘010 Application is completely within the amount instantly claimed. The instant claims are drawn to increasing a germination rate of a seed, whereas the ‘010 Application claims improving growth of the plant. It is noted that increasing a germination rate of the seed is within the scope of improving growth of the plant. Also, the ‘010 Application applies flonicamid to a seed in an amount that is within the range instantly claimed. Therefore, the ‘010 Application will also necessarily increase the germination rate of the seed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant argued a terminal disclaimer has been submitted which overcomes the double patenting rejection over 17670010.
In response, there does not appear to be any terminal disclaimer which has been submitted. The examiner requests applicant to check and verify whether the terminal disclaimer has been submitted. Since there is no terminal disclaimer on the record, the double patenting rejection above is maintained.
Conclusion
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/ALI S SAEED/Examiner, Art Unit 1616