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 .
Claims 7 and 8 are presented for examination.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/29/2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirooka et al. (JP 1786397) in view of Markosyan et al. (US 20180070533).
Hirooka teaches the use of stevia having >5/100 content of diterpene glycosides are preferred in a foliar spray agent capable of enhancing the yield in combination with oligosaccharide containing saccharides. See the abstract and claims.
Markosyan et al. teach Steviol glycosides are characterized structurally by a common aglycone, steviol, and differ by the number and type of carbohydrate residues at positions C13 and C19. In Stevia, they accumulate mainly in leaves, composing approximately 10% to 20% of the leaf total I dried weight. Typically, on a dried weight basis, the three major glycosides found in the leaves of Stevia include stevioside, rebaudioside A, and rebaudioside C. Other minor glycosides include steviolmonoside, steviolbioside, rubusoside, rebaudiosides B, D, E, F, G, H, I, J, K, L, M, O, dulcosides A, B and others. See Para [0004]. Markosyan teaches that the term "steviol glycoside(s)" will mean steviol glycosides naturally occurring in Stevia rebaudiana, including but not limited to steviolmonoside, steviolbioside, rubusoside, stevioside, stevioside A, stevioside B, stevioside D, stevioside E, stevioside E2, stevioside F, dulcoside A, dulcoside B, rebaudioside A, rebaudioside A2, rebaudioside A3, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside D2, rebaudioside E, rebaudioside F, rebaudioside G, rebaudioside H, rebaudioside I, rebaudioside 12, rebaudioside 13, rebaudioside J, rebaudioside K, rebaudioside L, rebaudioside M, rebaudioside M2, rebaudioside N, rebaudioside O, rebaudioside Q, rebaudioside Q2, rebaudioside Q3, and combinations thereof. See Para [0013]. Markosyan teaches that in Stevia rebaudiana, the percentage ratio of RebE content to TSG (Total Steviol Glycoside) content is at least about 1%, about 5%, about 10%, about 15%, about 20%, about 25%, about 30%, about 35%, about 40%, about 45%, about 50%, about 55%, about 60%, about 65%, about 70%, about 75%, about 80%, or about 85%, about 90%, or about 95% to about 100%. Markosyan makes clear that stevia containing 80% or more of steviol glycosides have been previously obtained from stevia plant. It would have been obvious toa person skilled in the art to use steviol glycosides for improving photosynthesis, considering that Hirooka et al. teach the use of steviol glycoside at the ratio of >5/100 for improving yield in the plants. Markosyan makes clear that the stevia derivatives have been produced in having 80% or more steviol glycosides. Therefore, it would have been obvious to a person skilled in the art to select any stevia extract having different glycoside concentrations as taught in Markosyan and use it for the purposes taught by Hirooka in the absence of evidence to the contrary. The determination of the type plant the stevia is applied to is considered to be within the skill of the artisan in the absence of evidence to the contrary.
Response to Arguments
Applicant’s arguments and remarks have been noted. Applicant in his remarks argues that “Markosyan describes producing novel Stevia rebaudiana plant cultivars and extracting those novel Stevia rebaudiana plant cultivars to obtain a steviol glycosides composition comprising steviol glycosides, and the like. Markosyan instructs that an extract containing more than 80% steviol glycosides can be obtained from the stevia plant.
According to the methods recited in the amended claims 7 and 8, applying the stevia composition to plants can improve the photosynthetic rate. Here, the "photosynthetic rate (µmol/m²/s)" described in the EXAMPLES of this application is the number of micromoles of CO2 passing through a unit leaf area per unit time.
Hirooka and Markosyan neither describe nor suggest that applying the stevia composition to plants improves the photosynthetic rate. Hirooka teaches that the use of stevia having >5/100 content of diterpene glycoside, combined with oligosaccharide-containing saccharides, as a foliar spray agent can improve yields. While an increase in yield due to the use of stevia may be expected to increase the natural phenomenon of photosynthesis, predicting the effect of improving the photosynthetic rate is difficult even for those skilled in the art.
The methods described in the amended claims 7 and 8 yield the unexpected effect of improving the photosynthetic rate, which is not taught by the combination of the cited references”. It is the examiner’s position that it would have been obvious to a person skilled in the art to use steviol glycosides for improving photosynthesis, considering that Hirooka et al. teach the use of steviol glycoside at the ratio of >5/100 for improving yield in the plants. Markosyan makes clear that the stevia derivatives have been produced in having 80% or more steviol glycosides. The substitution of Markosyan steviol glycosides having at least 80% steviol glycosides from stevia leaf for steviol glycosides taught by Hirooka and use it for improving photosynthesis would have been obvious to a person skilled in the art in the absence of evidence to the contrary. The use of steviol glycosides by having plant growth promoting activity by Hirooka and use it for increasing photosynthesis would have been obvious to a person skilled in the art, considering that Photosynthesis is natural phenomenon and the use of stevia and its derivative for improving plant growth is expected to increase photosynthesis. In this case, the present method uses an old product, stevia, on plants or the soil in which the plants are grown; the use is directed to the increasing the photosynthesis property of the same composition. The application of the stevia taught by the relied upon references to a plant is expected to increase the photosynthesis, considering that photosynthesis is a natural phenomenon. Applicant’s attention is drawn to In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the court states “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”. In this case applicant is basically applying a natural product the same as the prior art composition to a plant for improving a natural phenomenon, such as photosynthesis. The application of the prior art composition to the plant for any reason is expected to increase photosynthesis.
The combination of relied upon references make clear that that stevia and its derivatives have been previously used for improving plant growth. Hirooka teaches that stevia having a content of glycoside of more than 5/100 is preferred to be used in plants for improving the yield. Markosyan teaches the percentages of a glycoside being higher than 80% in a stevia extract. The determination of the type plant the stevia is applied to is considered to be within the skill of the artisan in the absence of evidence to the contrary.
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/ZOHREH A FAY/Primary Examiner, Art Unit 1617
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