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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/13/2025 has been entered.
Status of Action/Claims
Receipt of Remarks/Amendments filed on 6/13/2025 is acknowledged. Claim 1, 3-4, 6 and 9 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Rejection(s) not reiterated from the previous Office Action are hereby withdrawn.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Withdrawn Rejections/Objections
The rejection of claim 5 under 112(b) made in the previous office action is withdrawn due to
cancelling of claim 5.
New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-4 and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites wherein the method results in an increase in at least one plant growth parameter selected from the group consisting of plant height, shoot length, root length, and seedling weight, of at least 10% compared to untreated control plants. The instant specification in Table D disclose the plant height of seed treated with flonicamid increased at least 10% compared to untreated control plants. This provides support for wherein the method results in an increase in plant height of at least 10% compared to untreated control plants. However, the instant specification do not provide support for wherein the method results in an increase of shoot length, root length, or seedling weight, of at least 10% compared to untreated control plants. Therefore, these newly added recitation are new matter as neither the specification nor the claims as originally filed recite this newly added limitation.
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, 3-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Asrar et al. (US 2004/0023802 A1) in view of Bidhan (International Journal of Research & Review Vol. 2 Issue 2, February 2015).
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 ([0003], [0018]-[0052], [0056], [0095]; Claims 1-6 and 9). Asrar et al. teach that the method of increasing yield and/or vigor can be used with the seeds of non-transgenic plants, or with the seeds of plants that have at least one transgenic event (Abstract; [0108]; Tables 6 and 8).
Regarding the rate of application, 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]).
Regarding instant claims 3-4, Asrar et al. teach that examples of agronomic plants include, without limitation, corn, cereals, including wheat, barley, rye, and rice, vegetables, clovers, legumes, including beans, peas and alfalfa, sugar cane, sugar beets, tobacco, cotton, rapeseed (canola), sunflower, safflower, sorghum, etc. ([0065], [0127]-[0128]). Asrar et al. also teach treating corn kernels with a neonicotinoid compound (Examples 1-7).
Asrar teaches the neonicotinoid compound formulation that is used to treat the seed in the present invention can be in the form of a suspension; emulsion; slurry of particles in an aqueous medium (e.g., water); wettable powder; wettable granules (dry flowable); and dry granules. (see e.g. para 0200). Asrar also teaches the neonicotinoid compounds can be applied to a seed as a seed coating (see e.g. para 0133; 0135; 0203-0215). Asrar does not expressly teach flonicamid applied with a suspension concentrate or a flowable concentrate comprising flonicamid. However, Bidhan cures this deficiency.
Bidhan teaches that farmers generally prefer suspension concentrates to wettable powders because they are non-dusty and easy to measure and pour into the spray tank. Formulation type such as suspension concentrate not only replace toxic, non-degradable inert ingredients/adjuvants of the conventional formulations but also increase the activity of the products through incorporating latest technologies like size reduction (see: Abstract; Suspension Concentration section; Entire Document).
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Asrar and Bidhan and apply flonicamid as a suspension concentrate. As discussed supra, Asrar teaches the neonicotinoid compound formulation that is used to treat the seed in the present invention can be in the form of a suspension; emulsion; slurry of particles in an aqueous medium (e.g., water); wettable powder; wettable granules (dry flowable); and dry granules. Bidhan teaches that farmers generally prefer suspension concentrates to wettable powders because they are non-dusty and easy to measure and pour into the spray tank. Formulation type such as suspension concentrate not only replace toxic, non-degradable inert ingredients/adjuvants of the conventional formulations but also increase the activity of the products through incorporating latest technologies like size reduction. Therefore, one skilled in the art would have been motivated to use a suspension concentrate taught by Bidhan because of the benefits of using suspension concentrate taught by Bidhan.
It would have been prima facie obvious for a person having ordinary skill in the art prior to the effective filing date of the instant claims to apply flonicamid to non-transgenic seeds at a rate of from about 0.1 gm to about 1,000 gm of the compound per 100 kg of the weight of the seed, such as 1.34 mg per seed. Such would have been obvious because Asrar et al. teach that the active ingredient is applied at a rate of from about 0.1 gm to about 1,000 gm a.i. per 100 kg of the seed, and also teach imidacloprid and flonicamid are both suitable neonicotinoid compounds suitable for use in their invention and imidacloprid was applied at a rate of 1.34 mg per seed. A person having ordinary skill in the art would reasonably expect 1.34 mg flonicamid per seed would be effective for improving the yield and/or vigor of agronomic plants, as reasonably suggested by Asrar et al. 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). “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). See MPEP 2144.05.
Regarding claim 1 wherein the method results in an increase in at least one plant growth parameter selected from the group consisting of plant height, shoot length, root length, and seedling weight, of at least 10% compared to untreated control plants, in the absence of insect pest pressure, Asrar teaches when the subject method is described herein as “increasing the vigor” of an agronomic plant, what is meant is that the vigor rating, or the stand (the number of plants per unit of area), or the plant weight, or the plant height, or the plant canopy, or the visual appearance, or the root rating, or any combination of these factors, is increased or improved by a measurable or noticeable amount over the same factor of the plant produced under the same conditions, but without the application of the subject method. It is preferred that such factor(s) is increased or improved by a significant amount. (see e.g. para 0068). Asrar also teaches the increase in yield and/or vigor can be shown to take place even when the treated seed and plant are under no pest pressure at all/in the absence of pest pressure (see e.g. para 0056; 0071). While Asrar does not expressly disclose that improvement by a significant amount is at least 10% compared to control plants, the combination of Asrar and Bidhan render obvious the claimed method steps of applying flonicamid to plant propagation material as recited in instant claims. Therefore, the method taught by Asrar and Bidhan would necessarily result in an increase in the plant growth parameters recited in the claim by at least 10% compared to control plant.
Regarding instant claim 9, 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 protect the seed, as instantly claimed.
From the combined teaching of the cited references, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Asrar et al. (US 2004/0023802 A1) in view of Bidhan (International Journal of Research & Review Vol. 2 Issue 2, February 2015) as applied to claims 1, 3-4 and 9 above and further in view of Gewehr et al. (WO 2010/046463 A1).
Instant claim 6 is drawn to the method of claim 3, wherein the flonicamid is applied in a range from 0.1 g ai/ha to about 500 g ai/ha.
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]).
Asrar et al. do not explicitly disclose the rate of application of flonicamid being in a range from 0.1 to about 500 g ai/ha, as instantly claimed.
Gewehr et al. teach a method for controlling pests and/or increasing the plant health in a cultivated plant comprising application of an insecticide, such as flonicamid, to the plant, parts of such plants, plant propagation materials, or at their locus of growth (Abstract; Claims 1, 3, 13). Gewehr et al. teach that the amounts of active substances applied are, depending on the kind of effect desired, from 0.001 to 2 kg per ha, preferably from 0.005 to 2 kg per ha, more preferably from 0.05 to 0.9 kg per ha, in particular from 0.1 to 0.75 kg per ha. In treatment of plant propagation materials such as seeds, e. g. by dusting, coating or drenching seed, amounts of active substance of from 0.1 to 1000 g, preferably from 1 to 1000 g, more preferably from 1 to 100 g and most preferably from 5 to 100 g, per 100 kilogram of plant propagation material (preferably seed) are generally required (pg. 173).
Gewehr et al. further teach that the term "cultivated plant(s)" refers to "modified plant(s)" and "transgenic plant(s)". In one embodiment of the invention, the term "cultivated plants" refers to "modified plants". In one embodiment of the invention, the term "cultivated plants" refers to "transgenic plants". "Modified plants" are those which have been modified by conventional breeding techniques. The term "modification" means in relation to modified plants a change in the genome, epigenome, transcriptome or proteome of the modified plant, as compared to the control, wild type, mother or parent plant whereby the modification confers a trait (or more than one trait) or confers the increase of a trait (or more than one trait) as listed below. The modification may result in the modified plant to be a different, for example a new plant variety than the parental plant. "Transgenic plants" are those, which genetic material has been modified by the use of recombinant DNA techniques that under natural circumstances cannot readily be obtained by cross breeding, mutations or natural recombination, whereby the modification confers a trait (or more than one trait) or confers the increase of a trait (or more than one trait) as listed below as compared to the wild-type plant (pg. 10, ln. 22-39).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to apply the neonicotinoid compound, such as flonicamid, of Asrar et al. in a range of from 0.001 to 2 kg per ha, preferably from 0.005 to 2 kg per ha, more preferably from 0.05 to 0.9 kg per ha, in particular from 0.1 to 0.75 kg per ha, as reasonably suggested by Gewehr et al. Such would have been obvious because Gewehr et al. teach that insecticides, such as flonicamid, can be applied to transgenic and non-transgenic plants in an amount to increase plant health.
It is noted that the amount of active ingredient applied to seeds overlaps in Asrar et al. and Gewehr et al. Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to also apply overlapping amounts to a hectare in order to achieve the same concentrations applied to the seeds.
Response to Arguments
Applicant's arguments filed 6/13/2025 have been fully considered but they are not persuasive.
Applicant argued the amended claim now requires that the method results in an increase in at least one plant growth parameter selected from the group consisting of plant height, shoot length, root length, or seedling weight, of at least 10% compared to untreated control plants, in the absence of insect pest pressure. Asrar primarily focuses on improving yield and vigor of agronomic plants through seed treatment with neonicotinoid compounds but does not disclose or suggest a specific, measurable, and statistically significant increase in any individual plant growth parameter-such as plant height, shoot length, root length, or seedling weight resulting from flonicamid treatment. Asrar's disclosure of "vigor" is qualitative and encompasses a broad range of possible plant attributes, but it does not teach or enable a person of ordinary skill in the art to achieve or expect a defined, quantitative improvement (e.g., at least 10%) in any of these specific parameters. The Federal Circuit has repeatedly held that a claim reciting a new and unexpected property or result, even if the structure or process is similar to the prior art, can be patentable if the prior art does not provide a reasonable expectation of achieving that result (see, e.g., In re Chupp, 816 F.2d 643 (Fed. Cir. 1987); In re Papesch, 315 F.2d 381 (CCPA 1963)). Here, Asrar does not provide any teaching, motivation, or reasonable expectation that flonicamid would provide a statistically significant increase in the recited plant growth parameters, especially in the absence of insect pest pressure.
In response, as discussed supra, Asrar teaches when the subject method is described herein as “increasing the vigor” of an agronomic plant, what is meant is that the vigor rating, or the stand (the number of plants per unit of area), or the plant weight, or the plant height, or the plant canopy, or the visual appearance, or the root rating, or any combination of these factors, is increased or improved by a measurable or noticeable amount over the same factor of the plant produced under the same conditions, but without the application of the subject method. It is preferred that such factor(s) is increased or improved by a significant amount. (see e.g. para 0068). Asrar also teaches the increase in yield and/or vigor can be shown to take place even when the treated seed and plant are under no pest pressure at all/in the absence of pest pressure (see e.g. para 0056; 0071). While Asrar does not expressly disclose that improvement by a significant amount is at least 10% compared to control plants, the combination of Asrar and Bidhan render obvious the claimed method steps of applying flonicamid to plant propagation material as recited in instant claims. Therefore, the method taught by Asrar and Bidhan would necessarily result in an increase in the plant growth parameters recited in the claim by at least 10% compared to control plant. Further, while Asrar does not expressly disclose that improvement by a significant amount is at least 10% compared to control plants, Asrar teaches the growth parameter such as height is increased or improved by a measurable or noticeable amount over the same factor of the plant produced under the same conditions and it is preferred that such factor(s) is increased or improved by a significant amount. Thus, these teachings of Asrar in combination of Asrar teaching the claimed method steps utilizing flonicamid for increase in plant growth and vigor, there’s a reasonable expectation that the method and formulation taught by Asrar would necessarily result in an increase in the plant growth parameters recited in the claim by at least 10% compared to control plant.
Applicant also argued that the only specific examples in Asrar relate to imidacloprid and not flonicamid.
The examiner respectfully argues that Asrar et al. also teach flonicamid as a suitable active agent in claim 9. A person of ordinary skill in the art would reasonably expect flonicamid to be suitable for use in the methods according to Asrar et al. since it is specifically recited as a suitable active agent.
Applicant argued application provides experimental data (para 0027, 0131, 0134, example 2 and 4) demonstrating that flonicamid treatment results in a measurable and statistically significant increase in plant height, shoot length, root length, and/or seedling weight compared to untreated controls, even under conditions where insect pest pressure is absent. This is not only a new use for flonicamid, but also an unexpected result, as flonicamid is known primarily as an insecticide, not as a plant growth promoter. The data in the present application show that flonicamid provides a plant growth benefit that is not observed with other neonicotinoids (such as imidacloprid) or with untreated controls.
In response, as discussed supra, Asrar teaches when the subject method is described herein as “increasing the vigor” of an agronomic plant, what is meant is that the vigor rating, or the stand (the number of plants per unit of area), or the plant weight, or the plant height, or the plant canopy, or the visual appearance, or the root rating, or any combination of these factors, is increased or improved by a measurable or noticeable amount over the same factor of the plant produced under the same conditions, but without the application of the subject method. It is preferred that such factor(s) is increased or improved by a significant amount. (see e.g. para 0068). Asrar also teaches the increase in yield and/or vigor can be shown to take place even when the treated seed and plant are under no pest pressure at all/in the absence of pest pressure (see e.g. para 0056; 0071). Thus, Asrar already recognizes the claimed unexpected results of increased plant growth even in the absence of pest pressure. Further, the specification do not provide any data regarding comparison of flonicamid and imidacloprid wherein the results show flonicamid have unexpected results as compared to imidacloprid. Therefore, applicant’s arguments are not found persuasive at this time.
Applicant argued Gewehr also does not address the newly added recitations in the presently amended claims.
In response, applicant attention is respectfully drawn to the responses above which address these new limitations and are taught by Asrar.
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.
Claims 1, 3-4, 6 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of copending Application No. 17/634,040 (reference application) in view Asrar et al. (US 2004/0023802 A1), Bidhan (International Journal of Research & Review Vol. 2 Issue 2, February 2015) and Gewehr et al. (WO 2010/046463 A1). 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 instant claims is completely within the amount of the ‘040 Application. The instant claims are drawn to improving the growth of a plant, whereas the ‘040 Application claims increasing a germination rate of a seed. It is noted that increasing a germination rate of the seed is within the scope of improving growth of the plant. Therefore, the ‘040 Application will necessarily improve the growth of a plant, while the instant claims would also necessarily increase the rate of germination of the seed.
‘040 does not teach flonicamid is applied by coating seed with a suspension concentrate or flowable concentrate, wherein the method results in an increase in at least one plant growth parameter selected from the group consisting of plant height, shoot length, root length, and seedling weight, of at least 10% compared to untreated control plants, in the absence of insect pest pressure, and wherein the flonicamid is applied in a range from 0.1 g ai/ha to about 500 g ai/ha. However, these deficiencies are cured by Asrar, Bidhan and Gewhr.
The teachings of Asrar, Bidhan and Gewhr above are incorporated herein.
Bidhan teaches that farmers generally prefer suspension concentrates to wettable powders because they are non-dusty and easy to measure and pour into the spray tank. Formulation type such as suspension concentrate not only replace toxic, non-degradable inert ingredients/adjuvants of the conventional formulations but also increase the activity of the products through incorporating latest technologies like size reduction. Therefore, one skilled in the art would have been motivated to use a suspension concentrate taught by Bidhan because of the benefits of using suspension concentrate taught by Bidhan.
The teachings of ‘040 in combination of Asrar teaching the claimed method steps utilizing flonicamid for increase in plant growth and vigor, there’s a reasonable expectation that the method and formulation taught by Asrar would necessarily result in an increase in the plant growth parameters recited in the claim by at least 10% compared to control plant, in the absence of insect pest pressure.
The amount of active ingredient applied to seeds overlaps in ‘040, Asrar et al. and Gewehr et al. Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to also apply overlapping amounts to a hectare in order to achieve the same concentrations applied to the seeds.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant argued since neither the present claims nor the claims of the copending Application has been patented, there is no way that double patenting can be determined. The Applicants request that the Examiner withdraw these obviousness double patenting rejections until the claims are in final form and otherwise in condition for allowance.
In response, applicant’s attention is respectfully drawn to MPEP 804: If two (or more) pending applications are filed, in each of which a rejection of one claimed invention over the other on the ground of provisional nonstatutory double patenting (NSDP) is proper, the provisional NSDP rejection will be made in each application. Thus, the provisional nonstatutory double patenting rejection made above is proper.
Conclusion
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/ALI S SAEED/Examiner, Art Unit 1616