DETAILED ACTION
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
Pursuant to the amendment dated 08/19/2025, claim 20 has been cancelled. Claims 1-16 were cancelled previously. Claims 19, 22, 24, 25 and 30-34 stand withdrawn without traverse.
Claims 17, 18, 20, 21, 23, and 26-29 are under current examination.
All rejections not reiterated have been withdrawn.
Information Disclosure Statement
The information disclosure statement filed 08/13/2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The 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 17, 18, 20, 21, 23, 27, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Kamal et al. (African Journal of Biotechnology Vol 8(15), pp. 3555-3559; publication year: 2009) as evidenced by Bogatek et al. (Biologica Plantaram Vol 50 (1) pp.156-158; publication year: 2008) in view of Alscher et al. (Journal of Experimental Botany Vol 53(372) pp 1331-1341) and further in view of Marechal et al. (Industrial Crops and Products Vol 10, pp. 185-200; publication year: 1999; cited in the IDS filed 08/19/2022).
The claims are examined in view of the elected species of resistance to biotic stress induced by Botrytis.
With regard to claim 17, Kamal discloses a method in which extracts from various parts of a Sunflower (helianthus annuus L., specifically cv. Hysun 38; page 3555, left col and right col, under Materials and Methods) are combined with water and added to the soil of wheat plants (paragraph bridging pages 3555 and 3556). Kamal’s extracts are derived from leaves, stems, and roots (page 3556, left col) and are prepared as described by Bogatek et al (disclosed on page 3559 to be published as “Allelopathic effects of sunflower extracts on mustard seed germination and seedling growth Biol Plant). The method referenced by Kamal generates an aqueous extract (Bogatek: page 156, leaves are harvested, air-dried, and ground then extracted in distilled water, followed by filtration). The each of the extracts derived from leaves, stems, and roots, respectively, increase various markers of wheat growth or health, including e.g. superoxide dismutase (SOD) expression (table 7). The skilled artisan would have been aware of the benefits of increased SOD expression as this was known to confer resistance to reactive oxygen species (ROS) in plants as of the instant effective filing date (see Alscher: abstract).
Thus, Kamal discloses a method in which an aqueous extract of the stems of Helianthus annuus L. is applied to the soil (i.e. the growth medium) of a plant, which in turn would provide benefits to the plant such as increased resistance to ROS.
Kamal does not disclose that the stems are depithed.
Marechal discloses an aqueous extract of sunflower stalk in which the pith has been removed from the stalk (page 189). Marechal discloses further that the substances making up the pith differ from those in the stalk.
It would have been prima facie obvious to separate the pith from the stalk prior to extraction in Kamal’s method of treating the soil of wheat plants. The skilled artisan would have been motivated to do so in order to identify the parts of the plant containing the relevant bioactive molecules, and would have had reasonable expectation of success because Marechal indicates the pith and stalk are quite different in composition, and provides a method for how to accomplish aqueous extraction of both parts separately.
With regard to the outcome of inducing and/or stimulating an immune response in plants, the examiner considers the outcome to be inherent in Kamal’s method because all active method steps are taught in the prior art. Any bioactive molecules found in the depithed stem/stalk of a sunflower would also be present in a stem/stalk that retains the pith.
The examiner also points out that while Kamal discloses the stem extract to have a less pronounced effect on the wheat plant than leaf and root extracts (page 3559, left col), one of ordinary skill in the art would have been motivated to employ extract from the stalk because the stalk has historically been considered waste, exists in very high volumes, and the skilled artisan would have been interested in finding other applications for the material (Marechal, page 185, left col).
With regard to claim 18, as noted above, Kamal uses Helianthus annuus L to form the extracts.
With regard to claims 20, 21, and 23, as noted above, the examiner considers the intended outcomes recited in the instant claims to have been inherent in Kamal’s method.
With regard to claim 27, as noted above, the extract is added to the soil in which the plant is growing.
With regard to claim 29, as noted above, the extract is combined with water (i.e. an agriculturally and horticulturally acceptable excipient).
Claims 26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kamal et al. (African Journal of Biotechnology Vol 8(15), pp. 3555-3559; publication year: 2009) in view of Alscher et al. (Journal of Experimental Botany Vol 53(372) pp 1331-1341; publication year: 2002) and Marechal et al. (Industrial Crops and Products Vol 10, pp. 185-200; publication year: 1999; cited in the IDS filed 08/19/2022) as applied to claims 17, 18, 20, 21, 23, 27, and 29 above, and further in view of Romero et al. (US 2016/0007615; publication date: 01/14/2016).
The relevant disclosures of Kamal, Alscher, and Marechal are set forth above.
None of these references disclose that the extract is dried or freeze-dried as required by instant claim 26 or the methods specified by instant claim 28 for application to leaves.
Romero discloses that plant extracts can be lyophilized (i.e. freeze dried ) in order to be more easily moved and the dried extract can be subsequently diluted in water at the moment of its use.
It would have been prima facie obvious to lyophilize the extract of Kamal/Marechal. The skilled artisan would have been motivated to do so for ease of transport and for control over the final concentration of active on dilution in water before use. The artisan of ordinary skill would have had a reasonable expectation of success because lyophilization of aqueous solutions was a well-established technique as of the instant filing date.
Romero also discloses spraying the extract onto the plant, including the leaves. It would have been prima facie obvious to spray the extract onto the plant/leaves because this was a conventional method for applying bioactive materials to crops as of the instant effective filing date. See MPEP 2143(I)(D).
Response to Arguments
Applicant's arguments filed 08/19/2025 have been fully considered but they are not persuasive.
On page 6, Applicant asserts that one of ordinary skill would not have been motivated to combine the references with a reasonable expectation of success as alleged in the Office action. On page 7, Applicant supports this assertion with the argument that unpredictability in general is contrary to a reasonable expectation of success and that the person of ordinary skill would not have had reasonable expectation of success in combining the references as outlined in the rejection because of the unpredictable nature of the field, as demonstrated by the references themselves as well as unexpected results contained in the application. On page 7, Applicant argues that Kamal identifies the unpredictability of using various plant parts by describing allelopathic effects of sunflower extracts of leaves, stems or roots on wheat physiology. Applicant points out that Kamal concludes allelochemical treatment with aqueous sunflower leaf extract increased content of protein, proline, sugar, chlorophyll, peroxidase, and SOD in wheat and that leaf extracts were more effective than roots, and that stems were least effective. Applicant concludes that Kamal demonstrates sunflower structures have different effects [on wheat].
With regard to the argument that one of ordinary skill would have lacked expectation of success, the examiner respectfully disagrees. As noted in the rejection, although stems are disclosed to have the lowest effect among the plant parts evaluated, they do have an effect and there was motivation to use the stem material to benefit crops rather than just discarding it as waste. See MPEP 2123(II): "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). With regard to the argument that the field is unpredictable, one would have predicted that stem extracts would promote wheat growth, albeit to a somewhat lesser degree than leaf or root extracts. With regard to predictability of isolating the stem structures responsible for this effect, if the whole stem produced the effect, then almost certainly one or both of the pith or cortex would also exhibit the beneficial effect on wheat growth.
With regard to Applicant’s statement that the instant invention results in an unexpected effect, please refer to MPEP 716.02(b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims. The examiner notes that Applicant does not discuss any evidence of unexpected properties in the remarks. In a review of the data contained in the specification, the effect of sunflower extract on adventitious roots and biocidal effect is evaluated in several plant species. No side-by-side comparison to the closest prior art has been made of record; however, therefore the examiner cannot evaluate the unexpected nature of the data.
On page 7, Applicant argues that Kamal does not disclose or suggest use of depithed stems, does not isolate or characterize the water extract from depithed stems, and focuses on allelopathic effects rather than promotion of root formation or immune stimulation against biotic stress.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that Kamal does not disclose an immune stimulation effect or promotion of root growth, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
On page 8, Applicant argues that Alscher does not provide data on wheat growth or health and teaches away from use of sunflower extract in that it suppresses weed growth.
This is not persuasive because Alscher was not relied upon to provide data on wheat growth. One would have understood from Kamal that the extract provided benefit to wheat. The disclosure that the extract can suppress weed growth is further motivation to apply it to desirable plants, that benefit from treatment, as noted by Kamal. The examiner does not consider the disclosure that sunflower extract decreases weed growth to be a teaching away from the instant invention, as claimed.
On page 8, Applicant asserts that the Office’s interpretation that one would have been motivated to separate pith from stalk to identify parts of the plant containing relevant bioactive molecules is inconsistent with the teachings of Kamal and Alscher because Kamal teaches sunflower leaves to be most effective and Alscher teaches sunflower water extract suppressed plant growth, and finally the skilled artisan would find no direction in Marechal on a relevant biomolecule.
As noted above, Kamal teaches effectiveness of each part of the sunflower plant. "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). One having ordinary skill would have been motivated to use all beneficial parts of the plant so as to reduce waste. The disclosure by Alscher that sunflower extract can decrease weed growth provides further motivation to the artisan of ordinary skill to use the sunflower extract to reduce weeds in a crop such as wheat, which itself benefits from the extract. With regard to the argument that Marechal does not provide direction on a relevant biomolecule, Marechal was not relied upon for this. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
On page 8, Applicant argues that at most Marechal discloses that the chemical composition of sunflower head, pit, and stalk differs and that the focus is on industrial applications not biological or agricultural applications. Applicant argues that there is no disclosure of water extracts from these parts for use in plant treatment or suggestion of any biological activity such as immune stimulation or root promotion.
Insomuch as Applicant may be arguing that Marechal is non-analogous art, the examiner considers the disclosure to be in the same field of endeavor as it addresses aqueous extracts of sunflower stalks. Marechal is cited to establish that one having ordinary skill would have recognized that different substances make up the pith and the stalk. The disclosure of biological effects of sunflower stalk extracts is derived from Kamal and Alscher. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617