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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 22, 2025 has been entered.
The previous claim rejections made under 35 U.S.C. 112 (a) or (b) as indicated in the Office action dated July 29, 2025 have been withdrawn in view of applicant’s amendment made to claims 10, 11 and 20 which specify that the concentration of steviol glycosides is based on the amount of the stevia extract.
Terminal Disclaimer
The terminal disclaimer filed on October 22, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent issued from U.S. Patent Application No. 17/783399 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Accordingly, the previous obviousness-type double patenting rejection made over the claims of the above patent has been withdrawn.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10-13, 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al. (JP 2003261398 A, published on September 16, 2003, previously cited) (“Tanaka” hereunder) as evidenced by Fowler et al. (US 20110038957 A1, published February 17, 2011, previously cited) (“Fowler” hereunder).
Present claim 10 is directed to a method of promoting stomatal opening in a plant, comprising applying stevia on a plant or in a soil or a culture medium in which the plant is grown, wherein the plant is a root vegetable or a fruit vegetable, and wherein the stevia composition comprises a stevia extract, and wherein the stevia extract comprises 80% or more of steviol glycosides.
Tanaka discloses a method of promoting plant growth comprising applying a composition comprising stevia extract to plants either as a foliar spray or through soil irrigation. See translation, paragraph [0011]. The application enhances the plants’ growth, nutrient absorption and resistance to environmental stressors, and results in increased crop yields, improving quality, etc. See instant claims 10 and 11.
The reference discloses experiments in which the stevia extract composition was applied to 1) an agar medium for germinated cucumber seeds and 2) leafy vegetables either foliar spraying or soil irrigation once every week on showed significant increase of nutrient absorption and growth. See translation, paragraphs [0011, 0030-0032].
The stevia extract used in the Tanaka method was obtained by an aqueous extraction method, which must yield rebaudioside. See Fowler, Table 1; [0036]. Fowler teaches in Example 1:
A typical Stevia aqueous extract disclosed by this invention contains:
Stevioside
ca. 70%
Rebaudiosides
ca. 20%
Steviol, Isosteviol
ca. 10%
The ground leaves of Stevia rebaudiana are mixed with hot water for 20-30 min. Subsequently, the aqueous extract is removed by draining, using pressure in order to achieve the maximum amount of extract. Several types of infusion/draining processes may be used. The extract is allowed to cool to room temperature. In order to remove particles, the extract may be allowed to rest while particulate matter settles out or may be centrifuged. The extract is subsequently dried, either by spray-drying or freeze-drying. This extract contains the sweetener principles, the plant pigments and other water-soluble components.
In the present case, since stevioside and Rebaudiosides are steviol glycosides and the stevia extract used in the Tanaka method was also obtained by an aqueous extraction method, the stevia extract of Tanaka inherently contains about 90 % of stevioside and Rebaudiosides, unless shown otherwise. See also present claim 20.
Regarding the presently claimed method of “promoting stomatal opening in a plant”, in claim 1, it is well settled in patent law that the discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using. See In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957). However, when the claim recites using an old composition or structure and the "use" is directed to a result or property of that composition or structure, then the claim is anticipated. In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978). In this case, the present method uses an old product, stevia extract comprising 80% or more of steviol glycosides, on plants or the soil in which the plants are grown; the use is directed to the plant growth promoting property of the same composition, the present claim is anticipated. See also MPEP 2112.02.
Regarding claim 12, “wherein application of the stevia inhibits abscisic acid induced stomatal closure” must occur each and every time the prior art method is practiced, since the disclosed method requires the same method step of applying stevia on a plant or in a soil or a culture medium in which the plant is grown.
Regarding claims 13 and 14, Tanaka teaches that the germinated seeds were left in the dark for 3 days. See translation, p. 2, [Search by Solvent Fractionation]. Since the reference teaches that the significant increase of growth of leafy vegetable were observed after the application of stevia extract as foliar spray or soil irrigation once every week after 6-7 weeks, the plants must have been left still during day and night times.
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.
Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka as evidenced by Fowler as applied to claims 10-14 and 20 as above, and further in view of Beck et al. (US 4931083, published on June 5, 1990) (“Beck” hereunder) or Nonomura (US 20170311598 A1, published April 20, 2017).
Tanaka fails to specifically disclose any additives in the stevia composition.
Beck teaches and suggests that plant protection compositions are conventionally formulated with additives to make emulsifiable concentrates, etc., See col. 53, lines 34 - 52; Nonomura teaches that blending one or more suitable agricultural surfactants/emulsifiers to achieve at least critical micelle concentration for foliar applicants. See [0098-0099].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of Tanaka and add emulsifiers to the composition of Beck to make emulsifiable concentrates, etc., or to achieve micelle concentration as motivated by Nonomura. The skilled artisan would have been motivated to do so with a reasonable expectation of successfully enhancing the stability of the composition, as Tanaka establishes that the stevia extract composition is suitable for a plant growth regulator and Beck and Nonomura suggest that agricultural formulations are conventionally formulated with additives such as surfactants and emulsifiers.
Conclusion
No claims are 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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/GINA C JUSTICE/Primary Examiner, Art Unit 161