DETAILED ACTION
Applicant’s response filed 2/18/2026 has been fully considered. Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied.
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 Claims
Claims 1-10, 17-18, 22, 28-30, 32, and 35-37 are pending and under consideration in this action. Claims 11-16, 19-21, 23-27, 31, 33-34, and 38 were previously canceled.
Priority
The instant application is a 371 of PCT/1B2020/060331, filed 11/4/2020, which claims priority to Australian Application Number 2019904145, filed 11/4/2019, as reflected in the filing receipt mailed on 8/23/2022. Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The claims to the benefit of priority are acknowledged and the effective filing date of claims 1-10, 17-18, 22, 28-30, 32, and 35-37 is 11/4/2019.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/7/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the examiner.
Drawings
The objection to Figs. 5-8, 13, 15, and 18 are withdrawn in view of Applicant’s amendments to the drawings and Specification filed 2/18/2026 (Applicant’s Remarks, Pg. 9-10).
Specification
The objection to the Specification is withdrawn in view of Applicant’s amendments to the specification filed 2/18/2026 (Applicant’s Remarks, Pg. 10).
Claim Objections
Withdrawn Objections
The objections to claims 28-30 and 35 are withdrawn in view of Applicant’s amendments to the claims filed 2/18/2026.
Newly Recited Objections
Claim 1 is objected to because of the following informalities:
Claim 1 contains an “and” between limitations (i) and (ii), which should be removed for clarity.
Claim 1 is also missing an “and” between limitations (ii) and “determining, based on light-emission or fluorescence measurements…”.
Claim 1 also recites the limitation “determining, based on light-emission or fluorescence measurements…” which is missing a label of (iii) for consistency with the rest of the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
Withdrawn Rejections
The rejection of claims 1-10, 17-18, 22, 28-30, 32, and 35-37 under 35 U.S.C. 112(b) as being indefinite is withdrawn in view of Applicant’s amendments to the claims filed 2/18/2026 (Applicant’s Remarks, Pg. 10).
Maintained Rejections
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 28-30, 32, and 35-37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
This rejection is maintained from the previous Office Action.
Claim 28 recites the limitations "are from the same species of non-vascular plant", and "sequencing the genome", in lines 6 and 9 of the claim, respectively. There is insufficient antecedent basis for “the same species” and “the genome” in the claim, since there is no prior mention of these phrases in claim 1, to which this claim depends. This rejection can be overcome by amendment of claim 28 to recite "are from a same species of non-vascular plant" and "sequencing a genome". Claims 29-30, 32, and 35-37 are also rejected due to their dependency from claim 28.
Response to Arguments Under 35 U.S.C. 112(b):
Applicant argues that the amendments made to the claims are sufficient to overcome the rejections (Applicant’s Remarks, Pg. 10). It is respectfully submitted that this is not persuasive for the following reasons:
Applicant amended claim 28 to resolve the antecedent basis issue for “is of the same genus as the resistant mutagenized sample”. However, Applicant did not amend the claims to resolve the antecedent basis for “the same species” in line 6 and “the genome” in line 9 of the claim. Therefore, this rejection is maintained.
Claim Rejections - 35 USC § 101
Maintained Rejections
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10, 17-18, 22, 28-30, 32, and 35-37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite mental processes, i.e., concepts performed in the human mind (including observations, evaluations, judgements or opinions) (see MPEP § 2106.04(a)).
Step 1:
In the instant application, claims 1-10, 17-18, 22, 28-30, 32, and 35-37 are directed towards a method, which falls into one of the categories of statutory subject matter (Step 1: YES).
Step 2A, Prong One:
In accordance with MPEP § 2106, claims found to recite statutory subject matter (Step 1: YES) are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of nature or natural phenomenon (Step 2A, Prong One). The following instant claims recite limitations that equate to one or more categories of judicial exceptions:
Claim 1 recites a mental process (i.e., an evaluation/comparison of phenotypes with a control) in “determining whether the test samples provide a phenotypic response to said plurality of different candidate compounds by comparison to phenotypes of control samples from nonvascular plants not contacted with candidate compounds”; a mental process (i.e., an evaluation of measurement data to determine type/magnitude of phenotypic response) in “determining, based on light-emission or fluorescence measurements, the nature and/or magnitude of the phenotypic response, wherein the nature and/or magnitude of the phenotypic response are indicative of a mode of action and/or potency of herbicidal activity and/or herbicidal or plant growth regulating activity”; and a mental process (i.e., an observation of the types of test or control samples) in “wherein the test samples and the control samples comprise whole-plants, spores, sporelings, explants, protoplasts or vegetative propagules”.
Claim 2 recites a mental process (i.e., an evaluation of the candidate compounds) in “wherein the candidate compounds are candidate compounds for herbicidal activity”.
Claim 3 recites a mental process (i.e., an observation of the type of non-vascular plant) in “wherein the nonvascular plant is a moss, hornwort or liverwort”.
Claim 4 recites a mental process (i.e., an observation of the types of samples) in “wherein the test samples and control samples are sporelings”.
Claim 5 recites a mental process (i.e., an evaluation of the species of the sporeling samples) in “wherein the test samples and control samples originate from spores of a same species of non-vascular plant”.
Claim 6 recites a mental process (i.e., an observation of the type of sporeling) in “wherein the test samples comprise are moss sporelings, liverwort sporelings, hornwort sporelings, or any combination thereof”.
Claim 9 recites a mental process (i.e., an observation of the type of test/control samples) in “wherein the test samples and control samples are leafy liverwort sporelings, simple thalloid liverwort sporelings, complex thalloid liverwort sporelings, or any combination thereof”.
Claim 10 recites a mental process (i.e., an observation of the type of test/control samples) in “wherein the test samples and control samples are selected from the group consisting of: Marchantia alpestris sporelings … Marchantia nepalensis, and any combination thereof”.
Claim 17 recites a mental process (i.e., an evaluation/comparison of phenotypes with positive and negative controls) in “wherein step (ii) comprises comparing phenotypes of the test samples to phenotypes of positive control samples contacted with known herbicidal or plant growth regulator compounds and further comprises comparing phenotypes of the test samples to phenotypes of negative control samples not contacted with known herbicidal or plant growth regulator compounds”.
Claim 18 recites a mental process (i.e., an evaluation/comparison of phenotypes and comparison to compounds with a known mode of action) in “wherein the known herbicidal compounds have a known mode of action, and said comparing of test sample phenotypes to positive control sample phenotypes is used to predict the mode of action of a candidate compound identified to have herbicidal or plant growth regulating activity”.
Claim 28 recites a mental process (i.e., an evaluation of the differences in the two sets of mismatches) in “filtering the first set of mismatches with respect to the second set of mismatches to identify a first subset of mismatches that are unique to the first set of mismatches, wherein the first subset of mismatches are candidate mutations that may confer resistance to herbicides or to plant growth regulators”; and a mental process (i.e., an observation of the contact results of comparison sample, and an evaluation of the genus for the samples) in “wherein the first comparison sample is from an independent sample that does not survive contacting with the candidate compound or which exhibits growth abnormalities after contacting the candidate compound, and is of the same genus as the resistant mutagenized sample, and wherein the reference DNA sequence is a known reference sequence of a plant of said genus”.
Claim 29 recites a mental process (i.e., an evaluation of the differences in two sets of mismatches) in “filtering the first set of mismatches with respect to the third set of mismatches to facilitate identification of a second subset of mismatches that are unique to the first set of mismatches, and generating a third subset of mismatches by filtering the first subset of mismatches with respect to the second subset of mismatches, wherein the first and second subsets of mismatches are candidate mutations that may confer resistance to herbicides or resistance to plant growth regulators”; and a mental process (i.e., an observation of the contact results of comparison sample, and an evaluation of the genus for the samples) in “wherein the second comparison sample is from an independent sample that does not survive contacting with the candidate compound or which exhibits growth abnormalities after contacting the candidate compound, and is of the same genus as the mutagenized samples”.
Claim 30 recites a mental process (i.e., an observation of the mutagenized samples types) in “wherein the mutagenized samples are the same plant population (M1 samples)”.
Claim 32 recites a mental process (i.e., an observation/evaluation of the method steps) in “wherein the method does not comprise a step of segregation analysis, complex segregation analysis or bulk segregation analysis”.
Claim 35 recites a mental process (i.e., an evaluation of the samples) in “wherein the mutagenized samples are haploid”.
Claim 36 recites a mental process (i.e., an evaluation of the mutation and comparison to compounds with herbicidal or plant growth regulating activity) in “wherein the candidate mutations are in a gene encoding a protein that is targeted by the candidate compound identified to have herbicidal or plant growth regulating activity”.
These recitations are similar to the concepts of collecting information, and displaying certain results of the collection and analysis is Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)), comparing information regarding a sample or test to a control or target data in Univ. of Utah Research Found. v. Ambry Genetics Corp. (774 F.3d 755, 113 U.S.P.Q.2d 1241 (Fed. Cir. 2014)) and Association for Molecular Pathology v. USPTO (689 F.3d 1303, 103 U.S.P.Q.2d 1681 (Fed. Cir. 2012)), and organizing and manipulating information through mathematical correlations in Digitech Image Techs., LLC v Electronics for Imaging, Inc. (758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014)) that the courts have identified as concepts that can be practically performed in the human mind or mathematical relationships.
The abstract ideas recited in the claims are evaluated under the broadest reasonable interpretation (BRI) of the claim limitations when read in light of and consistent with the specification, and are determined to be directed to mental processes that in the simplest embodiments are not too complex to practically perform in the human mind. Additionally, the recited limitations that are identified as judicial exceptions from the mathematical concepts grouping of abstract ideas are abstract ideas irrespective of whether or not the limitations are practical to perform in the human mind.
Specifically, claim 1 involves nothing more than analyzing whether a sample provides a phenotypic response, and analyzing measurement data to determine the nature and/or magnitude of the phenotypic response. Since there are no specifics in the methodology, the steps reciting analyzing whether a sample provides a phenotypic response and determining the nature and/or magnitude of the phenotypic response are something that under BRI, one could perform mentally. Therefore, the claimed steps are not further defined beyond something that reads on merely looking at data and making a determination. As such, said steps are directed to judicial exceptions. The instant claims must therefore be examined further to determine whether they integrate the abstract idea into a practical application (Step 2A, Prong One: YES).
Step 2A, Prong Two:
In determining whether a claim is directed to a judicial exception, further examination is performed that analyzes if the claim recites additional elements that when examined as a whole integrates the judicial exception(s) into a practical application (MPEP § 2106.04(d)). A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. The claimed additional elements are analyzed to determine if the abstract idea is integrated into a practical application (MPEP § 2106.04(d)(I)). If the claim contains no additional elements beyond the abstract idea, the claim fails to integrate the abstract idea into a practical application (MPEP § 2106.04(d)(III)). The following independent claims recite limitations that equate to additional elements:
Claim 1 recites “contacting a plurality of different candidate compounds with a plurality of test samples from non-vascular plants”.
Regarding the above cited limitations in claim 1 of (i) contacting a plurality of different candidate compounds with a plurality of test samples from non-vascular plants. This limitation equates to insignificant, extra-solution activity of mere data gathering because these limitations gather data before or after the recited judicial exceptions of determining the nature and/or magnitude of the phenotypic response (see MPEP § 2106.04(d)).
Additionally, none of the recited dependent claims recite additional elements which would integrate the judicial exception into a practical application. Specifically, claims 7 and 8 further limit the contacting procedure for the candidate compounds; claim 22 further limits the determination of the phenotypic response by obtaining measurements; claims 28 and 29 further recite steps for extracting, sequencing, and aligning DNA for mutagenized samples, equating to data gathering steps; and claim 37 recites generic computer components that equate to mere instructions to implement an abstract idea on a generic computer. As such, claims 1-10, 17-18, 22, 28-30, 32, and 35-37 are directed to an abstract idea (Step 2A, Prong Two: NO).
Step 2B:
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims recite additional elements that equate to well-understood, routine and conventional (WURC) limitations (MPEP § 2106.05(d)). The instant independent claims recite same additional elements described in Step 2A, Prong Two above.
Regarding the above cited limitations in claim 1 of (i) contacting a plurality of different candidate compounds with a plurality of test samples from non-vascular plants. This limitation is considered to be insignificant extra-solution activity of mere data gathering. This step is incidental to the primary process of determining the nature and/or magnitude of the phenotypic response wherein the steps of contacting compounds with samples are merely data collecting steps for phenotypic comparison. This limitation is similar to the data gathering recited in In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989) of performing clinical tests on individuals to obtain input for an equation and in In re Meyers, 688 F.2d 789, 794; 215 USPQ 193, 196-97 (CCPA 1982) of testing a system for a response, the response being used to determine system malfunction (see MPEP § 2106.05(g)).
These additional elements do not comprise an inventive concept when considered individually or as an ordered combination that transforms the claimed judicial exception into a patent-eligible application of the judicial exception. Therefore, the instant claims do not amount to significantly more than the judicial exception itself (Step 2B: NO). As such, claims 1-10, 17-18, 22, 28-30, 32, and 35-37 are not patent eligible.
Response to Arguments under 35 U.S.C. 101
Applicant’s arguments filed 2/18/2026 have been fully considered but they are not persuasive.
1. Applicant argues that claim 1 as amended is not directed to an abstract idea at least because amended claim 1 recites features that integrate the claim into a practical application. Applicant's Specification identifies a particular problem in the technical field of agriculture and herbicide discovery. The Specification (see Pg. 3, Line 34 – Pg. 4, Line 18) recites “…For example, nonvascular plants typically only require 4 days of growth before they can be used for screening. This is compared to a typical value of 7 days for Arabidopsis thaliana. The present invention therefore provides a method with typically around at least 10 times higher throughput than an Arabidopsis-based method … This results in a higher-throughput, less expensive and more efficient screening system for candidate compounds, such as herbicides and plant growth regulators, compared to the currently existing more complex screening systems such as Arabidopsis thaliana.” As such, the Applicant's specification clearly identifies a particular problem in the technical field of agriculture and herbicide discovery. The method uses non-vascular plants, as a miniaturized screening platform, to develop a high-throughput screening method for the identifying candidate compounds for herbicidal activity or plant growth regulating activity. (Applicant’s Remarks, Pg. 10-12).
It is respectfully submitted that Applicant’s arguments are not persuasive for the following reasons:
As indicated in the Specification (see Pg. 4, Para. 2), “the throughput of screening is limited by the duration of time required to grow the plants, as well as the associated additional space, resources, and personnel required to cultivate the plants…the present invention therefore provides a method with typically around at least 10 times higher throughput than an Arabidopsis-method…this results in a higher-throughput, less expensive, and more efficient screening system for candidate compounds”.
MPEP 2106.05(a) recites:
After the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016) (patent owner argued that the claimed email filtering system improved technology by shrinking the protection gap and mooting the volume problem, but the court disagreed because the claims themselves did not have any limitations that addressed these issues). That is, the claim must include the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., thereby increasing the bandwidth of the channel"). The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification). In making this determination, it is critical that examiners look at the claim "as a whole," in other words, the claim should be evaluated "as an ordered combination, without ignoring the requirements of the individual steps." When performing this evaluation, examiners should be "careful to avoid oversimplifying the claims" by looking at them generally and failing to account for the specific requirements of the claims. McRO, 837 F.3d at 1313, 120 USPQ2d at 1100.
The alleged improvements indicated by Applicant are not commensurate in scope with the claimed invention. Applicant appears to assert that the claimed features provide an improved screening system because non-vascular plants require less growing time, space, and resources for cultivation. However, the claim does not provide any steps for growth prior to contacting the plants with candidate compounds and subsequent determination of phenotypic response. Therefore, it appears the alleged improvements are not commensurate in scope with the claimed invention.
MPEP 2106.04(d)(II) recites:
The analysis under Step 2A Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon (including products of nature). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations introduced in subsection I supra, and discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h).
Furthermore, the limitations of “determining whether the test samples provide a phenotypic response to said plurality of different candidate compounds by comparison to phenotypes of control samples from non-vascular plants not contacted with candidate compounds” and “determining, based on light-emission or fluorescence measurements, the nature and/or magnitude of the phenotypic response, wherein the nature and/or magnitude of the phenotypic response are indicative of a mode of action and/or potency of herbicidal activity and/or herbicidal or plant growth regulating activity” have been identified as judicial exceptions in Step 2A, Prong One above. The integration of a judicial exception into a practical application can only be achieved by additional elements, not by a limitation that recites a judicial exception. Thus, the recited limitations are not considered as an improvement in a high-throughput screening method for identifying candidate compounds for herbicidal activity or plant growth regulating activity. This argument is thus not persuasive.
2. Applicant also argues that the method involves using instrument-based light emission or fluorescence measurements; this is a practical, tangible, technological step. The specification describes using such measurements to evaluate a phenotypic response. The Specification describes acquiring data relating to multiple phenotypic variables (sample length, width, shape, pigmentation, chlorophyll concentration, cell count, etc.) and statistical/multivariate analysis (e.g., principal component analysis, clustering) to identify "hits." The method is explicitly described in the Specification as providing a "high-throughput method, which enables rapid, cost-effective, consistent and reproducible screening of a chemical substance under laboratory conditions." (Applicant’s Remarks, Pg. 12-13).
It is respectfully submitted that Applicant’s arguments are not persuasive for the following reasons:
MPEP 2106.04(d)(II) recites:
The analysis under Step 2A Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon (including products of nature). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations introduced in subsection I supra, and discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h).
The limitation indicated by Applicant, of “determining, based on light-emission or fluorescence measurements, the nature and/or magnitude of the phenotypic response, wherein the nature and/or magnitude of the phenotypic response are indicative of a mode of action and/or potency of herbicidal activity and/or herbicidal or plant growth regulating activity” has been identified as a judicial exception in Step 2A, Prong One above. Under the BRI, this limitation does not require light-emission or fluorescence measurements, and instead analyzes/determines a phenotypic response by evaluating the measurement data. The integration of a judicial exception into a practical application can only be achieved by additional elements, not by a limitation that recites a judicial exception. Thus, the recited limitation is not considered as an improvement in the screening method for non-vascular plants. This argument is thus not persuasive.
Claim Rejections - 35 USC § 102
The rejection of claims 1-3, 7, 17, and 22 under 35 U.S.C. 102(a)(1) as being anticipated by Hester et al. is withdrawn in view of Applicant’s amendments to the claims filed 2/18/2026 (Applicant’s Remarks, Pg. 13-14). Specifically, Hester et al. does not disclose the determination of the nature and/or magnitude of the phenotypic response based on light-emission or fluorescence measurements.
Claim Rejections - 35 USC § 103
Withdrawn Rejections
The rejection of claims 4-6 and 9-10 under 35 U.S.C. 103 as being unpatentable over Hester et al. in view of Ishizaki et al. is withdrawn in view of Applicant’s amendments to the claims filed 2/18/2026 (Applicant’s Remarks, Pg. 14-15). Specifically, Ishizaki et al. also does not disclose the determination of the nature and/or magnitude of the phenotypic response based on light-emission or fluorescence measurements.
The rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Hester et al. is withdrawn in view of Applicant’s amendments to the claims filed 2/18/2026 (Applicant’s Remarks, Pg. 14-15). Specifically, Hester et al. does not disclose the determination of the nature and/or magnitude of the phenotypic response based on light-emission or fluorescence measurements, as described for claims 1-3, 7, 17, and 22 above.
The rejection of claim 18 under 35 U.S.C. 103 as being unpatentable over Hester et al. in view of Case et al. is withdrawn in view of Applicant’s amendments to the claims filed 2/18/2026 (Applicant’s Remarks, Pg. 14-15). Specifically, Case et al. also does not disclose the determination of the nature and/or magnitude of the phenotypic response based on light-emission or fluorescence measurements.
The rejection of claims 28-30, 32, and 35-37 under 35 U.S.C. 103 as being unpatentable over Hester et al. in view of Ishizaki et al., Jiang et al., and Zuryn et al. is withdrawn in view of Applicant’s amendments to the claims filed 2/18/2026 (Applicant’s Remarks, Pg. 14-15). Specifically, neither Jiang et al. nor Zuryn et al. disclose the determination of the nature and/or magnitude of the phenotypic response based on light-emission or fluorescence measurements.
Newly Recited Rejections
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 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.
1. Claims 1-3, 7-8, 17, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Hester et al. (IR-4 Ornamental Horticulture Program Liverwort Efficacy Study. Rutgers University, New Brunswick, NJ, USA. Retrieved from: https://www.ir4project.org/ehc/liverwort-efficacy-summary-2012/; published 3/28/2012; previously cited) in view of Kaiser et al. (Chlorophyll fluorescence imaging: a new method for rapid detection of herbicide resistance in Alopecurus myosuroides. Weed Research. 53(6): 399-406 (2013); published 8/26/2013; newly cited).
This rejection is newly recited and necessitated by claim amendment.
Regarding claim 1, Hester et al. teaches a method to evaluate several treatments for post-emergent control of liverworts (i.e., a method of screening candidate compounds for herbicidal activity or plant growth regulating activity) (Abstract). Hester et al. further teaches that liverwort is the common name for a large group of non-vascular plants (Pg. 6, Para. 1). Hester et al. further teaches that a total of 28 products were evaluated, and that applications were made targeting dry foliage when liverwort infestations covered 50-75% of the pot surface (i.e., contacting a plurality of different candidate compounds with a plurality of test samples from non-vascular plants) (Pg. 7, Para. 1 and Pg. 7, Table 1). Hester et al. further teaches that efficacy evaluations were recorded at 1, 2, and 4 weeks after application (WAT) on a scale of 1 to 10 (0=no efficacy; 10=complete kill) (Pg. 7, Para. 2). Hester et al. further teaches an example of untreated plants (control samples) compared to those treated with 0.5, 1, or 2% Bryophyter. Analysis of the crop shape, size, width, height was observed to provide an efficacy evaluation (Pg. 21, Para. 1 and Pg. 21, Fig. 2). Similar comparisons are made with a variety of compounds and the control/untreated liverwort plants (i.e., determining whether the test samples provide a phenotypic response to said plurality of different candidate compounds by comparison to phenotypes of control samples from nonvascular plants not contacted with candidate compounds) (Pg. 29, Table 30). Hester et al. further teaches that the test and control samples are whole plants (i.e., wherein the test samples and the control samples comprise whole-plants) (for example, Pg. 21, Fig. 2).
Regarding claim 2, Hester et al. teaches the overall efficacy summary for the various herbicide applications on Marchantia sp. (i.e., wherein the candidate compounds are candidate compounds for herbicidal activity) (Pg. 10-11, Table 2).
Regarding claim 3, Hester et al. teaches that data in the report was generated to evaluate several products for post-emergent control of liverworts (Marchantia sp.) (i.e., wherein the non-vascular plant is a liverwort) (Abstract).
Regarding claim 7, Hester et al. teaches an example where different concentrations of Bryophyter (0.5, 1, and 2%) were evaluated for different test samples (e.g., the different pots in Fig. 2) (Pg. 21, Fig. 2). Hester et al. further teaches an example where eight post emergent herbicide treatments for the control over liverwort were evaluated. For certain treatments more than one experiment was conducted with varying application parameters (i.e., wherein each member of the plurality of different candidate compounds is contacted with a different test sample) (Pg. 22, Para. 1 and Pg. 24-25, Table 23-24).
Regarding claim 8, Hester et al. teaches the retreatment or 2nd application of the same compound for a given plant (see, for example Pg. 37, Table 36). The treatment of the whole plant occurs with the same compound as the first treatment. Though not explicitly stated by Hester et al., it would be obvious to one of ordinary skill in the art to perform the retreatment with a different compound (i.e., any of the other treatments listed in Pg. 37, Table 36, for example) to improve the control of liverworts in container grown ornamentals (i.e., wherein multiple members of the plurality of different candidate compounds are contacted with a single test sample) (Abstract).
Regarding claim 17, Hester et al. teaches the visual comparison of untreated liverwort, including height and width of the plants, to liverwort treated with 0.5, 1, and 2% Bryophyter (Pg. 21, Fig. 2). One application of Bryophyter applied at 1 or 2% provided excellent liverwort control for the duration of the study (28 days). The 0.5% rate provided moderate control but it was not enough to be commercially acceptable (i.e., the 0.5% was compared to the untreated/negative control and the 2% Bryophyter/positive control; wherein step (ii) comprises comparing phenotypes of the test samples to phenotypes of positive control samples contacted with known herbicidal or plant growth regulator compounds and further comprises comparing phenotypes of the test samples to phenotypes of negative control samples not contacted with known herbicidal or plant growth regulator compounds) (Pg. 21, Para. 1).
Regarding claim 22, Hester et al. teaches that the height and width were observed for treated plants (i.e., wherein step (ii) comprises obtaining measurements of any one or more of: sample length and sample width) (Pg. 26, Para. 4).
Hester et al. does not teach determining, based on light-emission or fluorescence measurements, the nature and/or magnitude of the phenotypic response, wherein the nature and/or magnitude of the phenotypic response are indicative of a mode of action and/or potency of herbicidal activity and/or herbicidal or plant growth regulating activity.
Regarding claim 1, Kaiser et al. teaches a new quantitative herbicide-resistance test system based on chlorophyll fluorescence imaging analysis of photosynthesis-related parameters. Susceptible and herbicide-resistant populations of Alopecurus myosuroides (black-grass) were cultivated in multi-well tissue culture plates containing nutrient agar and different dosages of fenoxaprop-P-ethyl and mesosulfuron+iodosulfuron. They calculated the resistance factors for ED90 (herbicide dosage causing 90% reduction in plant response) for all populations tested using the chlorophyll fluorescence imaging. It was possible to distinguish between resistant and susceptible populations. The chlorophyll fluorescence imaging provides reliable data on herbicide resistance for both modes of action tested in a shorter time and using less space (i.e., determining, based on light-emission or fluorescence measurements, the nature and/or magnitude of the phenotypic response, wherein the nature and/or magnitude of the phenotypic response are indicative of a mode of action and/or potency of herbicidal activity and/or herbicidal or plant growth regulating activity) (Abstract and see Pg. 401, Table 1 for modes of action).
Therefore, regarding claims 1-3, 7-8, 17, and 22, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of evaluating herbicides for control of liverwort of Hester et al. with the imaging method to determine phenotypic response of Kaiser et al. because the imaging technique disclosed by Kaiser et al. is a helpful tool to get reliable information on the response of weed populations to herbicides in a short time (i.e., improved screening time) (Kaiser et al., Pg. 405, Col. 1, Para. 3). One of ordinary skill in the art would be able to combine the teachings of Hester et al. with Kaiser et al. with reasonable expectation of success due to the same nature of the problem to be solved, since both incorporate a method for evaluating phenotypic response in plants. Therefore, regarding claims 1-3, 7-8, 17, and 22, the instant invention is prima facie obvious (MPEP § 2142).
2. Claims 4-6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hester et al. in view of Kaiser et al. as applied to claims 1-3, 7-8, 17, and 22 above, and further in view of Ishizaki et al. (Development of Gateway Binary Vector Series with Four Different Selection Markers for the Liverwort Marchantia polymorpha. PLoS One. 10(9): e0138876 (2015); published 9/25/2015; previously cited).
This rejection is newly recited and necessitated by claim amendment.
Hester et al. in view of Kaiser et al., as applied to claims 1-3, 7-8, 17, and 22 above, does not teach wherein the test samples and control samples are sporelings; wherein the test samples and control samples originate from spores of a same species of non-vascular plant; wherein the test samples comprise moss sporelings, liverwort sporelings, hornwort sporelings, or any combination thereof; wherein the test samples and control samples are leafy liverwort sporelings, simple thalloid liverwort sporelings, complex thalloid liverwort sporelings, or any combination thereof; and wherein the test samples and control samples are selected from the group consisting of: Marchantia alpestris sporelings … Marchantia nepalensis, and any combination thereof.
Regarding claim 4, Ishizaki et al. teaches the development of a system that will facilitate transgenic research on the model plant M. polymorpha (Pg. 2, Para. 3). Ishizaki et al. further teaches that sporelings co-cultured with Agrobacterium harboring the respective plasmids gave rise to antibiotic/herbicide-resistant plantlets, whereas the sporelings co-cultured with Agrobacterium carrying no binary plasmid did not (i.e., wherein the test samples and control samples are sporelings) (Pg. 4, Para. 7).
Regarding claims 5, 6, 9, and 10, Ishizaki et al. teaches that the system uses the sporelings of the liverwort Marchantia polymorpha (i.e., wherein the test samples and control samples originate from spores of a same species of non-vascular plant; wherein the test sporelings are liverwort sporelings; wherein the test samples and control samples are complex thalloid liverwort sporelings and wherein the test samples and control samples are selected from the group consisting of: Marchantia polymorpha sporelings) (Pg. 2, Para. 4 and Pg. 4, Para. 7).
Therefore, regarding claims 4-6 and 9-10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of evaluating herbicides for control of liverwort of Hester et al. in view of Kaiser et al. to incorporate the sporelings of Ishizaki et al. because it facilitates molecular genetic analyses of the emerging model plant M. polymorpha (Ishizaki et al., Abstract). One of ordinary skill in the art would be able to combine the teachings of Hester et al. in view of Kaiser et al. with Ishizaki et al. with reasonable expectation of success due to the same nature of the problem to be solved, since both are drawn towards the study of herbicides and herbicide resistance in liverworts. Therefore, regarding claims 4-6 and 9-10, the instant invention is prima facie obvious (MPEP § 2142).
3. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hester et al. in view of Kaiser et al. as applied to claims 1-3, 7-8, 17, and 22 above, and further in view of Case et al. (A review of weed control practices in container nurseries. HortTechnology. 15(3): 535-545 (2005); published 01/01/2005; previously cited).
This rejection is newly recited and necessitated by claim amendment.
Hester et al. in view of Kaiser et al., as applied to claims 1-3, 7-8, 17, and 22 above, does not teach wherein the known herbicidal compounds have a known mode of action, and said comparing of test sample phenotypes to positive control sample phenotypes is used to predict the mode of action of a candidate compound identified to have herbicidal or plant growth regulating activity.
Regarding claim 18, Case et al. teaches the modes of actions of several types of herbicides, including amino acid synthesis inhibitor, cell wall synthesis inhibitor, and cell membrane disrupters, among others. For example, Oxadiazole, containing oxadiazon, is a cell membrane disrupter (i.e., wherein the known herbicidal compounds have a known mode of action) (Pg. 540-542, Table 2). It would be obvious to one of ordinary skill in the art to compare the compounds and modes of action for the control compounds listed in Table 2 to those tested by Hester et al. because herbicides with the same mode-of-action tend to have the same translocation (movement) pattern, produce similar injury symptoms, exhibit similar toxicological profiles, and frequently require the same application method (i.e., said comparing of test sample phenotypes to positive control sample phenotypes is used to predict the mode of action of a candidate compound identified to have herbicidal or plant growth regulating activity) (Pg. 538, Col. 2, Para. 2).
Therefore, regarding claim 18, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of evaluating treatments for the control of liverworts of Hester et al. in view of Kaiser et al. with the comparison to known modes of action of Case et al. because using the correct herbicide at the right time while reducing herbicide loss, will be economical for the nursery, and will also be environmentally friendly (Case et al., Pg. 544, Col. 2, Para. 2). One of ordinary skill in the art would be able to combine the teachings of Hester et al. in view of Kaiser et al. with Case et al. with reasonable expectation of success due to the same nature of the problem to be solved, since both are drawn towards a method of controlling weeds, including liverwort. Therefore, regarding claim 18, the instant invention is prima facie obvious (MPEP § 2142).
4. Claims 28-30, 32, and 35-37 are rejected under 35 U.S.C. 103 as being unpatentable over Hester et al. in view of Kaiser et al. and Ishizaki et al. as applied to claims 4-6 and 9-10 above, and further in view of Jiang et al. (U.S. Patent Application Publication US 2007/0033671 A1; published 2/8/2007; previously cited) and Zuryn et al. (A strategy for direct mapping and identification of mutations by whole-genome sequencing. Genetics. 186(1): 427-30 (2010); published 9/1/2010; previously cited).
This rejection is newly recited and necessitated by claim amendment.
Regarding claim 28, Hester et al. teaches steps (i) and (ii) as described for claim 1 above (i.e., contacting a candidate compound identified to have herbicidal or plant growth regulating activity in steps (i) and (ii) with a plurality of samples). Hester et al. further teaches that an example comparison sample of 2.0% Bryophyter, wherein the plant did not survive after contact with the treatment (i.e., wherein the first comparison sample is from an independent sample that does not survive contact with the candidate compound or which exhibits growth abnormalities after contacting the candidate compound) (Pg. 21, Fig. 2).
Regarding claim 28, Ishizaki et al teaches that a Sulfonylurea herbicide resistance marker gene for use in M. polymorpha was generated by performing metagenesis of the Acetolactate synthase enzyme to contain the P207S / R208S / W582L mutations (i.e., a plurality of mutagenized samples and wherein the first subset of mismatches are candidate mutations that may confer resistance to herbicides or to plant growth regulators) (Pg. 2, Para. 6). Ishizaki et al. further teaches that the samples are sporelings as described for claim 4 above. Ishizaki et al. further teaches that system uses the sporelings of the liverwort Marchantia polymorpha (i.e., wherein the test and mutagenized samples are from the same species of non-vascular plant and wherein the first comparison sample is of the same genus as the resistant mutagenized sample) (Pg. 2, Para. 4 and Pg. 4, Para. 7).
Regarding claim 29, Hester et al. teaches multiple plants in Fig. 2 (Pg. 21), and therefore teaches the limitation of wherein the second comparison sample is from an independent sample that does not survive contacting with the candidate compound or which exhibits growth abnormalities after contacting the candidate compound, as described for claim 28 above.
Regarding claim 29, Ishizaki et al. teaches the herbicide resistant marker gene with multiple mutations as described for claim 28 above (i.e., wherein the first and second subsets of mismatches are candidate mutations that may confer resistance to herbicides or resistance to plant growth regulators). Ishizaki et al. further teaches the limitation of the same genus as the mutagenized samples as described for claim 28 above.
Regarding claim 30, the specification teaches that "M1" as used herein is a notation referring to the same plant population (Specification, Pg. 10, Lines 31-32). Ishizaki et al. teaches that male and female accessions of M. polymorpha, Takaragaike-1 and Takaragaike-2, respectively, were asexually maintained. For transformation, we used F1 spores generated by crossing Takaragaike-1 and Takaragaike-2 (i.e., wherein the mutagenized samples are the same plant population (M1 samples)) (Pg. 2, Para. 4).
Regarding claim 35, Ishizaki et al. teaches that the sporelings are from Marchantia polymorpha (Pg. 2, Para. 4 and Pg. 4, Para. 7). Haploid is an inherent property of sporelings from Marchantia polymorpha, as shown in the life cycle of Marchantia polymorpha (Pg. 264, Fig. 1 of Ishizaki et al. Molecular Genetic Tools and Techniques for Marchantia polymorpha Research. Plant Cell Physiol. 57(2): 262-70 (2016); published 6/26/2015; provided in the IDS dated 4/29/2024) (i.e., wherein the mutagenized samples are haploid).
Regarding claim 36, Ishizaki et al. teaches that acetolactate synthase (ALS) is a key enzyme in the biosynthesis of the branched-chain amino acids leucine, isoleucine, and valine. Sulfonylurea herbicides, e.g. CS, bind reversibly to the ALS-FAD-thiamine pyrophosphate-Mg2+-decarboxylated pyruvate complex and also compete for the second pyruvate binding site in ALS. Mutagenesis at these sites in ALS confers tolerance to sulfonylurea herbicides. To generate a CS-resistance marker gene for use in M. polymorpha, its ALS sequence was mutagenized to contain corresponding mutations (P207S/R208S/W582L) (i.e., wherein the candidate mutations are in a gene encoding a protein that is targeted by the candidate compound identified to have herbicidal or plant growth regulating activity) (Pg. 2, Para. 6).
Hester et al. in view of Kaiser et al. and Ishizaki et al., as applied to claims 4-6 and 9-10 above, does not teach extracting DNA from a resistant mutagenized sample which survives said contacting in (a), or which does not exhibit growth abnormalities after said contacting in (a); sequencing the genome or a genomic portion of the resistant mutagenized sample to thereby obtain a mutagenized sample DNA sequence; aligning the mutagenized DNA sequence obtained in (c) to a reference DNA sequence and identifying a first set of sequence mismatches between the mutagenized sample DNA sequence and the reference DNA sequence; aligning a DNA sequence from a first comparison sample to said reference DNA sequence and identifying a second set of mismatches between the first comparison DNA sequence and the reference DNA sequence; filtering the first set of mismatches with respect to the second set of mismatches to identify a first subset of mismatches that are unique to the first set of mismatches; wherein the reference DNA sequence is a known reference sequence of a plant of said genus; aligning a DNA sequence of a second comparison sample to the reference DNA sequence and identifying a third set of mismatches between the second comparison sample and reference DNA sequence; filtering the first set of mismatches with respect to the third set of mismatches to facilitate identification of a second subset of mismatches that are unique to the first set of mismatches, and generating a third subset of mismatches by filtering the first subset of mismatches with respect to the second subset of mismatches; wherein the method does not comprise a step of segregation analysis, complex segregation analysis or bulk segregation analysis; and wherein step (iii) is implemented using a computer.
Regarding claim 28, Jiang et al. teaches a method for producing transgenic plants, including steps of extraction, sequencing, and alignment to a reference sequence (Para. [0091], [0144], [0254], and [0426]). Jiang et al. further teaches that the polynucleotide from the transgenic plant is isolated using one or more enrichment or purification procedures, e.g., cell lysis, extraction, centrifugation, or precipitation (i.e., extracting DNA from a resistant mutagenized sample which survives contacting in (a)) (Para. [0144] and [0173]). Jiang et al. further teaches that DNA is confirmed by sequencing (i.e., sequencing the genome or a genomic portion of the resistant mutagenized sample to thereby obtain a mutagenized sample DNA sequence) (Para. [0254]). Jiang et al. further teaches that sequence alignment with a reference sequence is performed with a program that permits gaps in the sequence is used to align the sequences (i.e., mismatches in the sequences) (Para. [0226] and [0429]). After alignment, sequence comparisons between two (or more) polynucleotides are typically performed by comparing sequences of the two sequences over a comparison window to identify and compare local regions of sequence similarity (i.e., aligning the mutagenized DNA sequence obtained in (c) to a reference DNA sequence and identifying a first set of sequence mismatches between the mutagenized sample DNA sequence and the reference DNA sequence; and aligning a DNA sequence from a first comparison sample to said reference DNA sequence and identifying a second set of mismatches between the first comparison DNA sequence and the reference DNA sequence) (Para. [0426]). Jiang et al. further teaches that the reference sequence is for a particular plant species (i.e., wherein the reference DNA sequence is a known reference sequence of a plant of said genus) (Para. [0136] and [0429]).
Regarding claim 28, Zuryn et al. teaches a method that employs whole-genome sequencing to simultaneously map and identify mutations without the need for any prior genetic mapping (Pg. 427, Abstract). Zuryn et al. further teaches that after alignment to the reference genome, the sequencing data obtained for each mutant were compared, and we subtracted common nucleotide variants that were shared between at least two of our three mutants (Pg. 428, Col. 2, Para. 1). The method consistently allowed precise mapping in three different mutants to a region small enough to contain only a handful of candidate mutations and subsequent identification of the mutation (i.e., filtering the first set of mismatches with respect to the second set of mismatches to identify a first subset of mismatches that are unique to the first set of mismatches) (Pg. 429, Col. 2, Para. 1).
Regarding claim 29, Jiang et al. teaches the alignment of a sample to a reference and subsequent identification of mismatches as described for claim 28 above (i.e., aligning a DNA sequence of a second comparison sample to the reference DNA sequence and identifying a third set of mismatches between the second comparison sample and reference DNA sequence).
Regarding claim 29, Zuryn et al. teaches that the analysis is performed for two or three mutants (Pg. 428, Col. 2, Para. 1) and the limitations of filtering and identifying mismatches as described for claim 28 above (i.e., filtering the first set of mismatches with respect to the third set of mismatches to facilitate identification of a second subset of mismatches that are unique to the first set of mismatches, and generating a third subset of mismatches by filtering the first subset of mismatches with respect to the second subset of mismatches).
Regarding claim 32, Jiang et al. teaches the steps of extraction, sequencing, and alignment as described for claim 28 above, which do not include any segregation analysis (i.e., wherein the method does not comprise a step of segregation analysis, complex segregation analysis or bulk segregation analysis) (Para. [0091], [0144], [0254], and [0426]).
Regarding claim 37, Jiang et al. teaches that the alignments can be performed using a computer program (i.e., wherein step (iii) is implemented using a computer) (Para. [0153] and [0424]).
Therefore, regarding claims 28-30, 32, and 35-37, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of evaluating treatments for the control of liverworts of Hester et al. in view Kaiser et al. and Ishizaki et al. with the extraction, sequencing, alignment, and mismatch identification of Jiang et al. and Zuryn et al. because the methods disclosed by Jiang et al. allow the phenotypic characteristics of a plant to be controlled (Jiang et al., Para. [0002]-[0003]). Additionally, the method of Zuryn et al. provides a significant saving of time and labor as the time needed to map and identify a candidate mutation (Zuryn et al., Pg. 430, Col., 1, Para. 2).One of ordinary skill in the art would be able to combine the teachings of Hester et al. in view of Kaiser et al. and Ishizaki et al. with Jiang et al. and Zuryn et al. with reasonable expectation of success due to the same nature of the problem to be solved, since all discuss methods for phenotypic analysis of plants or mutations thereof. Therefore, regarding claims 28-30, 32, and 35-37, the instant invention is prima facie obvious (MPEP § 2142).
Response to Arguments under 35 U.S.C. 102/103
Applicant’s arguments filed 2/18/2026 have been fully considered but they are not persuasive.
1. Applicant argues that Hester is focused on whole-plant assays in a specific container/nursery context. Hester fails to discuss the systematic screening of a plurality of candidate compounds; in particular, Hester describes testing "registered products" as opposed to a library of novel candidate compounds as required by the claimed technology. Further, Hester is silent on the use of spores, sporelings, explants, protoplasts or vegetative propagules; the research in Hester solely utilizes liverwort thalli (Applicant’s Remarks, Pg. 14).
It is respectfully submitted that Applicant’s arguments are not persuasive for the following reasons:
Hester et al. provides a method for screening compounds for efficacy (see Table 1 for the list of compounds). Under the BRI, these screened compounds fall into the candidate compounds in claim 1, because claim 1 does not limit the candidate compounds to “novel” compounds, nor does claim 1 recite that the compounds cannot be commercially available weed products. Additionally, the claim requires that the test samples and the control samples comprise whole-plants, spores, sporelings, explants, protoplasts or vegetative propagules (emphasis added). Since the claim only requires one of the plant types, and Hester et al. teaches the use of whole-plants, Hester et al. discloses this limitation. This argument is thus not persuasive.
2. Applicant also argues that Hester evaluates the level of 'control' of the registered products. This appears to relate to death of the plant or visible suppression. These is no suggestion of determining the nature and/or magnitude of a phenotypic response based on light-emission of fluorescence measurements (Applicant’s Remarks, Pg. 14).
It is respectfully submitted that Applicant’s arguments are not persuasive for the following reasons:
Examiner agrees that Hester et al. does not teach the limitation of determining the nature and/or magnitude of a phenotypic response based on light-emission or fluorescence measurements. However, Kaiser et al. discloses this limitation, as discussed in the rejection above. This argument is thus not persuasive.
3. Applicant also argues that Hester also notes that "Further research should focus on products that can be safely applied as a conventional application or as a dormant treatment to container grown ornamentals which provide residual control of liverwort, as well as, other weeds." The PHOSITA is therefore directed away from the claimed subject-matter relating to the development of novel candidate compounds (Applicant’s Remarks, Pg. 14).
It is respectfully submitted that Applicant’s arguments are not persuasive for the following reasons:
As discussed in the arguments directly above, claim 1 is not limited to “novel” candidate compounds, and therefore, the commercially available compounds tested by Hester et al. fall under the BRI of candidate compounds. This argument is thus not persuasive.
4. Applicant also argues that as noted above, Hester fails to disclose each and every feature of the present claims. None of lshizaki, Case, Jiang, or Zuryn can cure the deficiencies of Hester. Accordingly, the present claims are not obvious over the cited references (Applicant’s Remarks, Pg. 14-15).
It is respectfully submitted that Applicant’s arguments are not persuasive for the following reasons:
Applicant’s arguments regarding the obviousness of the claims over Hester et al., Ishizaki et al., Case et al., Jiang et al. or Zuryn et al., as failing to teach determining the nature and/or magnitude of a phenotypic response based on light-emission or fluorescence measurements, as in amended claim 1, have been considered but they are not persuasive in view of the new grounds of rejection that relies on a new combination of references as necessitated by claim amendment.
Conclusion
No claims 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.
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/D.P.S./Examiner, Art Unit 1687
/Lori A. Clow/Primary Examiner, Art Unit 1687
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