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 .
Response to Arguments
Applicant’s arguments, see page 7, filed 4 November 2025, with respect to the 35USC§102 rejection of claims 1-15 have been fully considered and are persuasive. The rejection of claims 1-15 has been withdrawn.
Applicant’s arguments, see page 7, filed 4 November 2025, with respect to the 35USC§112 rejection of claims 1-5, 7-15 have been fully considered and are persuasive. The rejection of claims 1-5, 7-15 has been withdrawn. Claim 6 remains rejected.
(Old) Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/104392 (hereafter WO’392).
Applicant argues that WO’392 does not disclose denatonium benzoate and therefore does not render the claims obvious. However, WO’392 clearly teaches the general solution of chemically treating seeds prior to sowing to prevent insect feeding damage (Abstract; p. 9, l. 23–32; p. 11, l. 5–9; p. 12, l. 21–p. 13, l. 21). Once this solution is known, substitution of one chemical protectant for another to achieve the same purpose is a predictable variation within the level of ordinary skill, consistent with KSR. WO’392 need not expressly disclose denatonium benzoate to render claims directed to chemical seed treatment for insect protection obvious.
With respect to claims 1, 8, and 9, WO’392 discloses treating seeds with a chemical agent prior to sowing to prevent insect damage. The claimed adsorption and/or absorption into the seed is an inherent and predictable consequence of seed treatment and germination. The only difference is the identity of the chemical agent, which is an obvious substitution.
With respect to claim 4, WO’392 expressly teaches protection against wireworms and generally against insect feeding on seeds and seedlings. Limiting the claims to particular insect species does not confer patentable distinction. Extension of the same seed-treatment approach to other seed-feeding pests, including birds, is an obvious application of the known method.
With respect to claim 5, maintaining acceptable germination is an expected design constraint of any commercial seed treatment and does not impart patentable distinction.
With respect to claims 6 and 13, WO’392 teaches sowing treated seeds and growing plants therefrom. Presence of treatment agents in plants grown from treated seeds is an inherent and predictable result of seed treatment and germination.
With respect to claim 7, the recited ppm/ppb tissue concentrations represent result-effective variables dependent on application rate and uptake. Determining such concentrations is routine optimization and does not render the claims nonobvious absent evidence of criticality or unexpected results (In re Aller; In re Peterson).
With respect to claims 2, 3, and 11, WO’392 discloses formulated seed treatments applied prior to sowing. Inclusion of additional actives, additives, and sticking agents reflects routine formulation practice in seed treatment technology.
With respect to claims 10 and 12, the recited application rates and formulation concentrations constitute routine optimization of result-effective variables and do not confer patentable distinction absent a showing of criticality.
With respect to claim 15, improved stand count is the expected and intended outcome of effective seed protection against pest feeding and therefore does not constitute a patentably distinct technical feature over WO’392’s method.
Applicant’s arguments regarding environmental safety and reduced harm to beneficial insects are not persuasive because such features are not recited in the claims and are therefore not commensurate with the scope of the claimed subject matter. Alleged advantages that are not claimed cannot overcome a prima facie case of obviousness.
Applicant’s contention that prior art shows mixed results for denatonium benzoate does not constitute a teaching away from applying alternative chemical agents in the known seed-treatment framework taught by WO’392, nor does it negate the predictable nature of substituting one chemical protectant for another to address the same agricultural problem.
(OLD) Claim Rejections - 35 USC § 112
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.
Claim 6 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.
Claim 6 still contain the term “in particular.” The features that follow the said terms correspond to possible alternatives which do not restrict the scope of these claims.
Conclusion
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 DEBORAH D CARR whose telephone number is (571)272-0637. The examiner can normally be reached Monday-Friday (10:30 am -7:00 pm).
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/DEBORAH D CARR/ Primary Examiner, Art Unit 1691