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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/18/2026 has been entered.
Status of Claims; Original Presentation
Claims 1, 4-6, 9-10, and 28-41 are pending in this application.
Newly submitted claims 28-41 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
New claims 28-41 encompass applying (I). (I) consists of a first composition comprising 1-50 mM acetic acid, salt or solvate thereof, and a second composition comprising 1-50 mM malic acid, salt or solvate thereof1. If 1 liter of a 1 mM acetic acid and 1 liter of a 1 mM malic acid were combined and then applied, the applied composition would be a mixture that comprises 0.5 mM acetic acid and 0.5 mM malic acid. This is just one example of distinctness of the invention encompassed by the new claims, where concentrations of acetic acid and malic acid are critical to the invention. Thus, a new search and new review of prior art would be required to determine the patentability of the distinct invention. It would be necessary to search for one of the inventions in a manner that is not likely to result in finding prior art pertinent to the other inventions, because search for the new claims would require search for compositions containing only individual acid at different concentrations.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 28-41 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Amendment to the Specification
The amendment to the specification filed on 4/7//2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: all changes made to the specification in the amendment filed on 4/7/2026.
Applicant states in the response filed on 3/18/2026 that the specification was “amended to correct translation errors in preparing the English language text from the original Japanese text.”
Applicant is advised that 37 CFR 1.57(b) applies in this situation, and Applicant has not met the requirement of supplying an English language translation of the Japanese priority application and identifying the portions where the amended subject matter is found in said priority application. 37 CFR 1.57(b)(1)(ii)-(iii).
Applicant is required to cancel the new matter in the reply to this Office Action or comply with the requirements of 37 CFR 1.57(b).
IDS filed on 4/7/2026
The IDS filed on 4/7/2026 cited five foreign patent documents with machine translations, but no copies of such documents or machine translations have been received by the USPTO. All references from this IDS have been crossed out.
Withdrawn grounds of rejection
The outstanding ground of rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the amendment to the claims filed on 3/18/2026.
The outstanding ground of rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is withdrawn with respect to claims 1, 4, and 5 (but not claims 6, 9, and 10) in view of the 132 declaration filed on 3/18/2026, which shows greater salt tolerance effect with an aqueous solution containing 10 mM acetic acid and 10 mM malic acid in comparison to control (water only), 10 mM acetic acid, and 10 mM malic acid. The rejection with respect to claims 6, 9, and 10 is maintained because the declaration does not show that similar result would be obtained when the composition contains a growth regulating compound such as benzyladenine or gibberellin. See the full rationale below for maintaining this ground of rejection against claims 6, 9, and 10.
The outstanding ground of rejection under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ciaffa (US 2019/0045794) is withdrawn in view of Applicant’s arguments filed on 3/18/2026. Applicant’s argument that Ciaffa’s footnote 1 in Table 3 applies to both acetic acid and water is persuasive; consequently, the calculated concentrations do not obtain 1-50 mM of acetic acid.
The outstanding ground of rejection under 35 U.S.C. 103 as being unpatentable over Ciaffa in view of Kumar et al. (US 2021/0030004), Hacker et al. (US 2010/0234226), and Oda et al. (US 4,889,551) is also withdrawn in view of Applicant’s arguments filed on 3/18/2026. Applicant’s argument that Ciaffa’s footnote 1 in Table 3 applies to both acetic acid and water is persuasive; consequently, the calculated concentrations do not obtain 1-50 mM of acetic acid.
35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6, 9, and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for improving heat tolerance, drying tolerance, and growth of a plant, does not reasonably provide enablement for improving salt tolerance of a plant by applying a composition that further comprises a plant growth regulating agent such as those recited in base claim 6. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Breadth of the claims:
Claims are drawn to a composition that improves, inter alia, salt tolerance of a plant, wherein the compositions contains not only 1-50 mM acetic acid and 1-50 mM malic acid but also one or more additional agents recited in claim 6, all of which have plant growth promoting effects. Further, these plant growth promoting agents have no concentration limits in the claims, so the claims read on any concentration range.
Nature of the invention and state of the prior art
Most crops are destroyed or will not produce fruits or set seeds in 100 mM NaCl, which is approximately 25% of the NaCl concentration of seawater (Park et al., page 447). Plant salt tolerance is “genetically and physiologically complex” and includes synthesis of proline, soluble sugars, glycine, betaine, and other osmolytes to promote osmotic balance at the cellular level (Liang et al., pages 286-287). Even though plants employ a large number of physiological and biochemical strategies to cope with salt stress (Liang et al., pages 286-289), Park et al. state the following about the state of the art (page 454):
we have very little knowledge regarding how the many different constituent proteins are generated by only partially outlined transcriptional programs and where they are located in plant organs and cells and how they are expressed in a developmental context. Equally, we do not know the dynamics of subcellular trafficking that accompanies adaptations to a stressful environment.
Level of one of ordinary skill in the art and level of unpredictability in the art
The level of one of ordinary skill in the art is high to ensure that economically valuable crops are grown even under stressful conditions, but unpredictability in the art of improving plant salt tolerance is also high. Plants much orchestrate multiple signals and cascade reactions to ultimately obtain a tolerance response, and it would not be predictable that the claimed composition of 1-50 mM acetic acid and 1-50 mM malic acid would affect the plant response in such a way that the final effect would be improved salt tolerance.
JP H08151304 is evidence of unpredictability. JP H08151304 was published in the Japanese language, so two machine translations are provided herewith. Unless otherwise stated, the machine translation by Espacenet is referenced (e.g., paragraph numbers). Where additional clarity is needed, machine translation by PE2E Search and clarification by the Examiner are further set forth and discussed2.
JP H08151304 discloses a composition for improving salt resistance and enabling plant growth even in high salt soil comprising 5-aminolevulinic acid (5-ALA) and its derivatives and salts thereof and/or hemin (abstract; translation paragraphs 11-19; claims 1-4). Table 1 is reproduced in part and translated in part below, wherein the numbers 0 to 5 indicate salt damage as shown in translation paragraph 44, i.e., 0 = no damage; 1 = very mild salt damage; 2 = mild salt damage; 3 = clear signs of salt damage; 4 = severe salt damage; 5 = plant death due to salt damage.
PNG
media_image1.png
252
592
media_image1.png
Greyscale
NaCl treatment rate per unit of soil weight (weight %)
Test compound
(treatment concentration (ppm))
0
0.5
0.75
1
1.5
No treatment
0
1
2
3
5
Example 1
5-ALA HCl (10)
0
1
2
4
4/5
5-ALA HCl (30)
0
1
1
½
3
5-ALA HCl (100)
0
0
0/1
1
2
5-ALA HCl (300)
0
0
0
0/1
½
Compar-ative Example 1
Benzyladenine (0.1)
0
1
2
3
5
Benzyladenine (0.3)
0
1
2
3
5
Benzyladenine (1)
0
1
4
4
5
Benzyladenine (3)
0
1
4
5
5
Table 2 is also reproduced in part and translated in part below:
PNG
media_image2.png
186
632
media_image2.png
Greyscale
NaCl treatment rate per unit of soil weight (weight %)
Test compound
(treatment concentration (ppm))
0
0.5
0.75
1
1.5
No treatment
0
1
2
3
5
Compar-
ative
Example 8
Gibberellin (GA3) (0.03)
0
1
2
4
5
Gibberellin (GA3) (0.1)
0
1
2
4/5
5
Gibberellin (GA3) (0.3)
0
1
2
4/5
5
Gibberellin (GA3) (1)
0
1
2
4
5
Thus, JP H08151304 establishes that plant growth promoters benzyladenine and gibberellin actually decrease salt tolerance compared to control. Consequently, it would be unpredictable whether the composition comprising 1-50 mM acetic acid and
1-50 mM malic acid would improve salt tolerance when a plant growth promoting agent such as those recited in claim 6 is/are added (with no concentration limit), because plant growth promoting agents such as benzyladenine and gibberellin have been shown to deliver the opposite effect of decreasing salt tolerance.
Amount of direction provided by the inventor, existence of working examples
In the specification, there is only an assertion of improved salt tolerance. There is no working example and no objective evidence of improved salt tolerance in the specification.
The declaration filed on 3/18/2026 show that an aqueous solution containing 10 mM acetic acid and 10 mM malic acid improved salt tolerance. However, the declaration fails to show that adding an agent such as benzyladenine or gibberellin, which actually decreases salt tolerance, would still somehow increase salt tolerance.
As stated previously, plants much orchestrate multiple signals and cascade reactions to ultimately obtain a tolerance response, and it would be unpredictable how the plant would ultimately respond to simultaneous administration of agents that have diametrically opposite effects on salt tolerance, especially at open concentration amounts of the additional agents of claims 6, 9, and 10.
For these reasons, the quantity of experimentation needed to make or use the invention to improve salt tolerance, based on the content of the disclosure, would be undue. Therefore, claims 6, 9, and 10 are not enabled to the extent they read on improving salt tolerance.
Applicant’s 3/18/2026 arguments relative to claims 1, 4, and 5 are deemed sufficient, and this ground of rejection does not apply to those claims. However, claims 6, 9, and 10 are on a different footing because they add agents that would decrease salt tolerance.
For these reasons, this ground of rejection must be applied again to claims 6, 9, and 10.
Allowable Claims
Claims 1, 4, and 5 are deemed allowable. The declaration filed on 3/18/2026 establish that an aqueous solution containing 10 mM acetic acid and 10 mM malic acid (and no other plant growth promoter) improved plant salt tolerance at a rate that would not have been expected from the control or the individual effects of 10 mM acetic acid applied alone and 10 mM malic acid applied alone (see declaration Figure B).
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 When discussing Applicant’s claims, any mention “acetic acid” and “malic acid” is intended to encompass the salts and solvates thereof.
2 PE2E Search does not provide continuous paragraph numbers. However, translation that corresponds to the Espacenet paragraphs is readily apparent.
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