DETAILED ACTION
Claims 1-13, 15, 17-18, and 20-25 are pending and under consideration on the merits.
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 of the Rejections
The 103 rejections are revised in view of the amendment and expanded to include newly added claim 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 1-13, 15, 17-18, 20-21, and 23-25 are rejected under 35 U.S.C. 103 as unpatentable over Reuveni (US Pat. Pub. 2013/0064907; of record) in view of Meyer et al. (Plant Disease (January 2013) pp. 107-112; of record).
As to claims 1-13, 15, 17-18, 20-21, and 23-25, Reuveni discloses a method for treating a plant fungal infection (claim 10 and a “biotic stress” of claim 13) or to prophylactically treat a plant against a fungal infection (i.e., application to an asymptomatic plant as recited by claim 13), the method comprising applying tea tree oil to the plant (paragraphs 57, 72)(claims 1 and 17), and wherein the plant may be banana, pepper or tomato as recited by claims 21 and 23 (paragraphs 9, 22, and 72). Reuveni teaches application to banana plants with Black Sigatoka fungal infection (paragraph 64) which is a disease of the banana leaf, such that the root is not infected as recited by claims 1 and 17.
Regarding claims 18 and 20, Reuveni further discloses applying the tea tree oil in combination with an additional fungicide (paragraph 72 and 9).
Regarding claim 25, Reuveni also teaches applying the tea tree oil by itself (see, e.g., Example 1 which tested tea tree oil alone against a synthetic fungicide alone as well as a combination of the two).
As to claims 1-13, 15, 17-18, 20-21, and 23-25, Reuveni does not further expressly disclose that the tea tree oil is applied to the plant root by drip irrigating as recited by claims 1, 17, and 25, nor that the defense response includes induction of the resistance imparting genes of claims 5 and 7 or the plant defense hormones of claim 6, induced systemic or local resistance (claims 2-4), that the inducing comprises priming of the resistance mechanisms (claim 8) or is activated in the event of a pathogen or pest attack (claim 9) such as one of those listed by claim 10, or is activated in the event of abiotic stress (claim 11) such as one of those recited by claim 12, wherein the inducing of defense response results in a stronger and faster induction of expression of plant defense genes (claim 15), nor that the method will activate salicylic acid, jasmonic acid, and/or ethylene-mediated resistance as recited by claim 17.
Meyer et al. (Plant Disease (January 2013) pp. 107-112) teaches that applying fungicide via drip irrigation to the plant root results in superior control of crown and root rot caused by P. capsic relative to foliar application (see Abstract).
As to claims 1-13, 15, 17-18, 20-21, and 23-25, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the method of Reuveni by applying the tea tree oil antifungal composition via drip irrigation to the plant root, because Meyer teaches that applying fungicide via drip irrigation results in superior control of crown and root rot caused by P. capsic relative to foliar application, such that the skilled artisan reasonably would have expected that applying the fungicide via drip irrigation in the Reuveni method also would have resulted in the advantage of superior control of crown and root rot. The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983).
Regarding claims 2-12, 15, and 17, the recitations that the defense response includes induction of the resistance imparting genes of claims 5 and 7 or the plant defense hormones of claim 6, induced systemic or local resistance (claims 2-4), that the inducing comprises priming of the resistance mechanisms (claim 8) or is activated in the event of a pathogen or pest attack (claim 9) such as one of those listed by claim 10, or is activated in the event of abiotic stress (claim 11) such as one of those recited by claim 12, wherein the inducing of defense response results in a stronger and faster induction of expression of plant defense genes (claim 15), and activates salicylic acid, jasmonic acid, and/or ethylene-mediated resistance (claim 17) will be present in the method of Reuveni and Meyer as combined supra, because it comprises the same steps of administering the same active ingredient to a plant for the same purpose of inducing a defense response as recited by the claims. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
Claims 22 and 24 are rejected under 35 U.S.C. 103 as unpatentable over Reuveni (US Pat. Pub. 2013/0064907) in view of Meyer et al. (Plant Disease (January 2013) pp. 107-112 as applied to claims 1-13, 15, 17-18, 20-21, and 23-25 above, and further in view of Hoffman et al. (US Pat. Pub. 2020/0315176; published 10.8.2020; of record).
The teachings of Reuveni and Meyer are relied upon as discussed above, but they do not further expressly disclose that the plant is avocado as recited by claims 22 and 24.
Hoffman discloses fungicidal compositions comprising as an active a component of tea tree oil (paragraphs 2 and 19) for application to a plant such as an avocado plant (paragraph 138).
As to claims 22 and 24, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the method of Reuveni and Meyer as combined supra by applying the composition to an avocado plant, because Reuveni does not limit the identity of the plant to which its tea-tree oil containing fungicidal composition is applied, and Hoffman expressly discloses an avocado plant as a type of plant that benefits from application of a fungicidal composition comprising a tea tree oil extract, such that the skilled artisan reasonably would have expected that the Reuveni method would be applicable to an avocado plant. Such a modification is merely the simple substitution of one known prior art element for another according to known methods to achieve predictable results, which is prima facie obvious. MPEP 2143.
Response to Applicant’s Arguments
Applicant argues that the cited references do not disclose that the composition is applied to a plant root that is not infected with a pathogen as recited by the claims as amended.
In response, this argument is not persuasive because Reuveni expressly teaches at paragraph 57 that the treatment methods taught therein encompasses the prophylactic treatment of plants that are not infected:
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Regarding newly added claim 25, Applicant argues that the cited art does not teach that the tea tree oil is the sole active ingredient as recited by the claim.
In response, this argument is not persuasive because Reuveni does disclose in the working examples the application of tea tree oil by itself as the active ingredient as discussed in the rejection.
Conclusion
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.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600