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 .
The examiner acknowledges receipt of request for continued examination under 35 CFR 1.114, amendment and remarks filed 01/30/2026.
New claim 36 is added.
Claims 32-34 are canceled.
Claims 15-31 and 35-36 are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/30/2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 15-28, in the reply filed on 06/04/2025 is acknowledged. Applicant also elected dehydroascorbic acid (DHA) having formula I below:
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Claims 29-31 (32-34 haven been canceled on 01/30/2026) stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/04/2025.
Claims 15-28 and 35-36 are under consideration.
Priority
This application is a 371 of PCT/EP2020/086690 filed 12/17/2020 which claims benefit of European Patent Office Application No. 19218568.4 filed 12/20.2019.
Response to Arguments
On page 7 of 12 of the remarks filed 01/30/3036, applicant states that claim 15 has been amended to limit the X in -COX to unsubstituted or substituted methyl, ethyl or n-propyl, and traversing the rejection that the combined teachings of Kageyama and Zhang fail to provide the motivation to select the presently claimed compounds and that the rationale for the rejection is based in impermissible hindsight; that the examiner bears the initial burden of factually supporting prima facie, and that there must be reasonable expectation of success and that the mere fact that references can be combined does not make the resultant combination obvious unless the results would have been predictable to one of ordinary skill in the art citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 298, 417 (2007), MPEP 2143(III); and that a prior art reference must be considered in its entirety including portions that would lead away from the claimed invention citing W. L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, MPEP 2141.02(VI).
Response: Amending claim 15 to limit the X in -COX to unsubstituted or substituted methyl, ethyl or n-propyl does not exclude R1 and R2 to be -H as R1 and R2 are independently -H, -SO3H, -PO3, H2, glycosyl or -COX. The office action did not say that that the references are merely combined. Rather, KAGEYAMA teaches method of providing plant with stress resistance, the method comprises applying to the plant dehydroascorbic acid (DHA). Providing plant with resistance reads on controlling infection in a plant and in KAGEYAMA agricultural pests and plant parasites cause stress on the plants. KAGEYAMA teaches that agricultural pests and plant parasites cause stress on plants (paragraphs [0039], [0045]). Zhang (paragraph [0281]) teaches that root knot nematodes in the genus Meloidogyne are agricultural pests. Thus, it is predictable that root knot nematode, which is an agricultural pest would be controlled by applying DHA to the plant. Therefore, relying on Zhang to provide a teaching that root knot nematode is an agricultural pest is not a mere combination. KAGEYAMA does not teach away from the invention. Zhang does not teach away from the invention. Relying of Zhang is not employing impermissible hindsight. The argument for impermissible hindsight is not persuasive because as stated in In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971), “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In the instant case, Zhang teaches that root knot nematodes in the genus Meloidogyne are agricultural pests and KAGEYAMA teaches agricultural pests and plant parasites cause stress on the plants --- KAGEYAMA applies DHA to plant to control agricultural pests. The rejection does not violate the findings in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 298, 417 (2007), MPEP 2143(III); and W. L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, MPEP 2141.02(VI).
On pages 8 of 12 to 10 of 12 of the remarks filed 01/30/3036, applicant argues that examiner’s response that KAGEYAMA does not teach over 500 compounds is not supported by KAGEYAMA because the compounds meeting the structure of formula (II) are well over 500 compounds when the variables are taken into consideration and that KAGEYAMA does not provide guidance to select any particular compound from formula (II), specifically DHA for use in the method of controlling nematodes. KAGEYAMA teaches broad range of possible applications none of which includes nematodes; that the pests listed in KAGEYAMA (paragraph [0043]) do not include nematodes; that the office has not demonstrated why the ordinary skilled artisan would have considered applying any specific compound from KAGEYAMA to control nematodes with any expectation of success without improper hindsight and mere speculation or reliance on improper hindsight is insufficient to establish prima facie obviousness. That the office asserts that disclosed examples and preferred embodiments do not constitute a teaching away. That KAGEYAMA’s biological stress utilize ascorbyl palmitate/glucoside and not compound of formula (II) or DHA; and ascorbyl derivatives alone were shown to be ineffective for biotic stress shown in Tables 18 and 19. The laundry list of over 500 compounds undercuts any argument of reasonable expectation of success. The rejection does not meet the legal standard for obviousness which requires both motivation and reasonable expectation of success. That the office must demonstrate a reasoned motivation for why the ordinary skilled artisan would specifically select DHA for use against nematodes from the hundreds of compounds and hundreds of applications disclosed in the cited reference. In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017) requires that there be a motivation to make the combination and a reasonable expectation that such a combination would be successful.
Response: Regarding DHA and applicant’s projected over 500 compounds, a prior art reference must be considered for all that it teaches and the prior art reference is not limited to the examples or preferred embodiments, see Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547 (Fed. Cir. 1989). Table 2 specifically teaches compound 444 where R5 and R6 are H making compound of formula II a DHA. There is a specific teaching of DHA in KAGEYAMA. Applicant appears to advocate that compound 444 be ignored. But a prior art reference must be considered for all that it teaches. KAGEYAMA does not teach that compound 444 is ineffective or cannot be used to provide resistance to stress caused by agricultural pests, and applicant has not pointed to section of KAGEYAMA teaching against the claimed invention. Prior art is not limited to the examples or preferred embodiments. It has been settled in In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) that reference patents are not limited to what the patentees describe as their own inventions or to the problems with which that are concerned as the reference patent is part of the literature of the art and are relevant for all that they contain. A prior art reference is relied upon all that it would reasonably suggest to the ordinary skilled artisan including nonpreferred embodiments (see Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989), Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Kageyama specifically teaches applying compound of formula (II) to a plant to provide biological stress resistance to the plant; and biological stress is due to plant viruses, phytopathogenic bacteria, phytopathogenic filamentous fungi, pests or weeds (page 3, lines 48-49) and these are biological stresses. The secondary references are relied upon for teaching nematodes. The examiner thus disagrees that there will not be any expectation of success to apply DHA to plant and expect that the DHA would predictably provide resistance of the plant to agricultural pests that include nematode infection. The examiner agrees that one of the rational for holding a teaching of obviousness is “some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention” (MPEP 2143 I). The suggestion is that DHA provides resistance to agricultural pests and Zhang teaches that root knot nematodes in the genus Meloidogyne are agricultural pests and KAGEYAMA teaches agricultural pests and plant parasites cause stress on the plants. There is reasonable expectation that DHA would predictably provide resistance to agricultural pests or control infections caused by agricultural pests such as those caused by root knot nematodes.
On page 11 of 12 and 12 of 12, applicant argues that the office has relied upon impermissible hindsight, that no guidance is provided by KAGEYAMA and/or Zhang that would have led the ordinary skilled artisan to select a Formula II compound of the present disclosure, such as DHA for use in a method of controlling nematodes in a plant as presently claimed with any reasonable expectation of success. That KAGEYAMA tested only 3 compounds against any king of biotic stress, none of which falls under applicant’s Formula II and that the data from such experiments were mixed at best. Esvelt and Liu are only narrowly cited to teach features in the dependent claims and also fail to overcome the deficiencies of KAGEYAMA in view of Zhang.
Response: The examiner disagrees that KAGEYAMA in view of Zhang does not render obvious the claimed invention. The reasons provided above in response to applicant’s arguments affirm the examiner’s position that the claims are not patentable over KAGEYAMA in view of Zhang. KAGEYAMA teaches formula II.
KAGEYAMA discloses a method providing plant with stress resistance, the method comprising applying at least one substance (A) to the plant, substance (A) is selected from formula (I) and formula (II) shown below:
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where R5 and R6 each independently represents a hydrogen atom, -SO3H, -PO3H2, a glycosyl group, or -COR11, and where R11 represents an unsubstituted or substituted C1 to C30 alkyl group or substituted C2 to C30 alkenyl group (page 3, lines 4, 20-33). The biological stress is due to plant viruses, phytopathogenic bacteria, phytopathogenic filamentous fungi, pests or weeds (page 3, lines 48-49).
Compound of formula II in Kageyama is the same compound claimed in claim 15; Claim 15 is amended to limit X in -COX to unsubstituted or substituted methyl, ethyl or n-propyl, which does not say that R1 and R2 cannot be -H. Further also, Compound 444 in Table 2, paragraph [0065] at page 31 is DHA where R5 and R6 each is H.
The argument for impermissible hindsight is not persuasive because as stated in In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971), “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In the instant case, Zhang teaches that root knot nematodes in the genus Meloidogyne are agricultural pests and KAGEYAMA teaches agricultural pests and plant parasites cause stress on the plants --- KAGEYAMA applies DHA to plant to control agricultural pests. The rejection does not violate the findings in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 298, 417 (2007), MPEP 2143(III); and W. L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, MPEP 2141.02(VI).
Prior art is not limited to the examples or preferred embodiments. It has been settled in In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) that reference patents are not limited to what the patentees describe as their own inventions or to the problems with which that are concerned as the reference patent is part of the literature of the art and are relevant for all that they contain. A prior art reference is relied upon all that it would reasonably suggest to the ordinary skilled artisan including nonpreferred embodiments (see Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989), Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
KAGEYAMA teaches that agricultural pests and plant parasites cause stress on plants (paragraphs [0039], [0045]). The examiner agrees with applicant that Zhang is properly relied upon for teaching that root knot nematodes in the genus Meloidogyne is an agricultural pest (see Zhang at paragraph [0281]). Thus, Zhang makes up for the deficiency of Kageyama. Esvelt was relied upon for teaching that additional agricultural pests include Globodera pallida cyst nematode (see paragraph [0132] of Esvelt) for claim 19. Liu was relied upon for teaching that grass is a known monocot (see paragraph [0201] of Liu) for claim 20. Thus, Esvelt and Liu are properly relied upon to makeup deficiencies of Kageyama with regards to claims 19 and 20.
The rejections over Kageyama in view of Zhang does not apply hindsight reasoning of selectively culling components from Kageyama and Zhang because Kageyama teaches all the elements of claim 15 except that Kageyama does not name nematodes as agricultural pests and plant parasites causing stress on plants. Based on this, the secondary reference Zhang was properly relied upon for teaching that root knot nematodes in the genus Meloidogyne are agricultural pests such that before the effective date of the invention, the artisan would have expected that application of dehydroascorbic acid (DHA) to the root of a plant would predictably control knot nematodes agricultural pest or predictably provide resistance to root knot nematode agricultural pests. This combination does not violate the premise in the findings in Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., 725 F. 3d 1341, 1352 (Fed. Cir. 2013). The rejection does not include knowledge gleaned only from applicant’s disclosure. It has been settled in In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971) that “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”
Therefore, the claims under consideration are not patentable over the prior art and the rejections are made below.
The rejections are maintained below.
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.
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) 15-19, 21-28, 35 and new claim 36 are rejected under 35 U.S.C. 103 as being unpatentable over KAGEYAMA et al. (EP 2875730 A1) in view of Zhang et al. (US 20190161487 A1), and further in view of Esvelt et al. (US 20190175762 A1) for claim 19 for reasons of record and reiterated herein below. The amendment to claim 15 does not change the scope of claim 15 as it relates to DHA where R1 and R2 are independently -H. New claim 36 mirrors claim 15 except that new claim 36 is specific to DHA which is a species of the compound of formula (II) where R1 and R2 are independently -H. Claim 35 is directed to root knot nematodes is taught by Zhang where Zhang teaches that root knot nematodes belong to the genus Meloidogyne, lesion nematodes belong to the genus Pratylenchus, stubby root nematodes belong to the genus Trichodorus (paragraph [0281].
KAGEYAMA discloses method of providing a plant with stress resistance, the method comprises applying compound of formula (I), compounds of formula (II) and salts thereof
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where R1 to R4 is H, -SO3H, -PO3H2, glycosyl group or COR11, and R11 is substituted or unsubstituted C1 to C30 alkyl group or substituted or unsubstituted C2-C30 alkenyl group and
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where R5 and R6are each H, -SO3H, -PO3H2, glycosyl group or COR11 and R11 is substituted or unsubstituted C1 to C30 alkyl group or substituted or unsubstituted C2-C30 alkenyl group (abstract, paragraphs [0007], [0008], [0010]-[0014], [0034). When R5 and R6 are each H, formula (II) is the elected dehydroascorbic acid (DHA) and compound of formula (II) of claim 15; and application to the plant meets the method step of claim 15. The preferred mode of application includes foliage application, dipping treatment, soil irrigation, seed treatment, water culture medium treatment, smoking treatment, and ordinary temperature fogging treatment (paragraph [0037]).
Agricultural pests and plant parasites cause stress on plants (paragraphs [0039], [0045]).
For claims 15-17 and 36, KAGEYAMA teaches method of providing plant with stress resistance, the method comprises applying to the plant a substance such as substance of formula (II)
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is the elected dehydroascorbic acid (DHA) and compound of formula (II). Providing the plant with resistance reads on controlling infection in a plant and in KAGEYAMA agricultural pests and plant parasites cause stress on the plants.
The dehydroascorbic acid (DHA) meets the limitation of the compound of formula II in claim 15 and the dehydroascorbic acid (DHA) in claims 16 and 36.
For claims 15 and 36, KAGEYAMA does not name nematodes as the agricultural pests. However, it is known in the art that root knot nematodes in the genus Meloidogyne is an agricultural pest (see Zhang at paragraph [0281]. Therefore, before the effective date of the invention, the artisan would have expected that application of dehydroascorbic acid (DHA) to the root of a plant would predictably control knot nematodes agricultural pest or predictably provide resistance to root knot nematode agricultural pests.
For claim 17, the root knot nematode is a root parasitic nematode.
For claim 18, root knot nematodes in the genus Meloidogyne meet the claim.
For claim 19, teaches that additional agricultural pests include Globodera pallida cyst nematode (see paragraph [0132] of Esvelt et al. (US 20190175762 A1).
For claim 21, KAGEYAMA teaches treating grass (paragraph [0038]).
For claim 22, KAGEYAMA teaches Amaranthaceae.
For claim 23, KAGEYAMA, substance A in the compositions in paragraphs [0072] and [0074] is at 10% and the artisan is capable of converting the % to mM amount. It has been settled that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), that “the normal desire of scientists or artisans to improve upon what is already generally known provides a motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages to make the composition, see Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382, in the instant is in mM amount of substance A.
For claim 24, KAGEYAMA applies the compound in a composition that contains surfactant and water/glycerin diluent/carrier (at least paragraphs [0072], [0074]).
For claims 25-27, KAGEYAMA applies the compound by foliage application, dipping treatment, soil irrigation, seed treatment, water culture medium treatment, smoking treatment, and ordinary temperature fogging treatment (paragraph [0037]) and the composition is sprayed to the stem and leaves (paragraphs [0080], [0086], [0090]).
For claim 28, KAGEYAMA does not teach that the compound/substance A is applied before or after infection. KAGEYAMA however teaches that ascorbic acid demonstrates preventative and curative effect against plant virus. It would be reasonable to expect that the substance in KAGEYAMA can be applied before infection or before visible damage signs of infection, which is priming (see applicant’s original specification at line 6 of page 3).
For claim 35, Zhang teaches that root knot nematodes belong to the genus Meloidogyne, lesion nematodes belong to the genus Pratylenchus, stubby root nematodes belong to the genus Trichodorus (paragraph [0281]).
Therefore, KAGEYAMA in view of Zhang renders claims 15-18, 21-28, 35 and new claim 36 prima facie obvious and KAGEYAMA in view of Zhang and further in view of Esvelt renders claim 19 prima facie obvious.
Claim(s) 15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over KAGEYAMA et al. (EP 2875730 A1) in view of Zhang et al. (US 20190161487 A1) as applied to claim 15, and further in view of Liu et al. (US 20150299682 A1).
KAGEYAMA in view of Zhang has been described above to render claim 15 prima facie obvious.
Claim 20 depends on claim 15.
KAGEYAMA teaches that applying substance of formula (II) to grass. However, KAGEYAMA does not say that grass is a monocot as stated in claim 20. However, grass is a known monocot (see paragraph [0201] of Liu). Therefore, before the effective date of the invention, the artisan would look to what is known in the art that grasses are monocot to catalog the grass of KAGEYAMA as a monocot.
Thus, KAGEYAMA in view of Zhang as evidenced by Liu renders claim 20 prima facie obvious.
No claim is allowed.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613