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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 25, 2026 has been entered.
Status of the claims
Claims 11-20 are pending and under examination.
Claims 1-10 have been canceled.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
(1) Claims 11-20 remain rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Silverman et al (U.S. Patent No. 8,435,929, May 7, 2013), in view of Byers et al (HortScience 17(3):377-378, 1982).
The invention reads on a method of reducing percentage fruit set of a plum tree comprising applying exogenous 1-amino-1-cyclopropanecarboxylic acid (ACC) or a hydrate thereof, a polymorph thereof or a salt thereof to the tree prior to bloom, wherein percentage fruit set is reduced as compared to a plum tree not receiving exogenous ACC.
With regard to claims 11 and 12, Silverman et al teach a method of reducing crop load of a stone fruit plant comprising applying ACC at bloom or following bloom (see, for example, column 2, lines 55-57; column 3, lines 13-15). Though Silverman et al do not teach application of ACC prior to bloom, this is remedied by the teachings of Byers et al. Byers et al teach the application of plant thinning surfactants prior to bloom to peach plants for crop load reduction (see, for example, page 377, first column, second paragraph and Table 1 where it teaches surfactants were applied at the first pink stage). Byers et al teach that the surfactant X-77 is shown to be a chemical thinner for pre-bloom application to reduce crop load in peaches. The fact that Byers et al teach a peach plant as opposed to the claimed plum plant is not relevant because both peach and plum are in the Prunus genus. In addition, the disclosure of the claim to cite the plum tree at the white bud stage as opposed to the first pink stage of the peach tree as taught by the Byers reference does not make the claim nonobvious because both stages occur prior to bloom. The Silverman reference also teaches applying ACC as method for thinning stone fruit (see, for example, column 2, lines 55-57) and one of ordinary skill in the art would understand that plums are considered stone fruit and how to use the teachings of the Byers reference to applying those teachings to using ACC for thinning prior to bloom. In addition, column 2, lines 35-37 of Silverman et al disclose that ACC can be applied during the growing season and it would have been obvious to one of ordinary skill in the art that prior to bloom is a part of the growing season of a plant.
Thus, one of ordinary skill in the art having the problem of reducing crop load of a plum tree by applying ACC to the tree prior to bloom would have been drawn to the combination of the Silverman reference and the Byers reference because the Silverman reference teaches the use of ACC for thinning of stone fruits during the growing season and the Byers reference teaches the use of thinning agents prior to bloom.
With regard to claim 13, Silverman et al teach a method of reducing crop load of a peach tree comprising applying ACC at bloom or following bloom (see, for example, column 4, lines 6-16; column 3, lines 13-15). Though Silverman et al do not teach application of ACC prior to bloom in plum at the white bud stage (claim 13), this is remedied by the teachings of Byers et al. Byers et al teach the application of plant thinning surfactants prior to bloom to peach plants for crop load reduction (see, for example, page 377, first column, second paragraph and Table 1 where it teaches surfactants were applied at the first pink stage (i.e., prior to bloom)). Byers et al teach that the surfactant X-77 is shown to be a chemical thinner for pre-bloom application to reduce crop load in peaches. The Silverman reference also teaches applying ACC as method for thinning stone fruit (see, for example, column 2, lines 55-57) and one of ordinary skill in the art would understand that plums are considered stone fruit and how to use the teachings of the Byers reference to applying those teachings to using ACC for thinning prior to bloom. Thus, one of ordinary skill in the art having the problem of reducing crop load of a plum tree by applying ACC to the tree prior to bloom would have been drawn to the combination of the Silverman reference and the Byers reference because the Silverman reference teaches the use of ACC for thinning of stone fruits and the Byers reference teaches the use of thinning agents prior to bloom.
With regard to claims 14-16, Silverman et al teach a rate of ACC from about 1 to about 5,000 ppm, 10 to about 2,000 ppm and 100 to about 1,000 ppm (see, for example, Tables 1-3 where it teaches application of ACC to peach trees at 0 ppm (control) to 1,000 ppm).
With regard to claims 17, 18 and 20, Silverman et al teach applying ACC to plants as a spray or foliar spray (see, for example, column 2, lines 55-57).
With regard to claim 19, Silverman et al teach a method of reducing crop load of a peach tree comprising applying ACC at a rate of 100 to 1,000 ppm at bloom or following bloom (see, for example, column 4, lines 6-16 and Tables 1-3). Though Silverman et al do not teach application of ACC in plum at the white bud stage, this is remedied by the teachings of Byers et al. Byers et al teach the application of plant thinning surfactants for crop load reduction at the pink bud stage (see, for example, page 377, first column, second paragraph and Table 1 where it teaches surfactants were applied at the first pink stage). The fact that Byers et al teach a peach plant as opposed to the claimed plum plant is not relevant because both peach and plum are in the Prunus genus. The limitation of the claim to cite the plum tree at the white bud stage as opposed to the first pink stage of the peach tree as taught by the Byers reference does not make the claim nonobvious because both stages occur prior to bloom.
It would have been obvious to one of ordinary skill in the art to combine or modify the teachings of the cited references because each of the claimed elements are found within the scope and content of the prior art and one of ordinary skill in the art could have combined and modified the elements as claimed by methods known at the time the invention was made. It would have been obvious to one of ordinary skill in the art to use ACC in a method to reduce crop load in woody perennials, including plums, because Silverman et al teach that ACC can be used in such a method, as discussed above with regard to stone fruit. Byers et al teach that thinning crops pre-bloom, including the bud stage, can be done using chemical thinners, as discussed above. Thus, one of ordinary skill in the art would have recognized at the time the invention was made that that capabilities or functions of the combination were predictable. In addition, one of ordinary skill in the art would have had a reasonable expectation of success based on the success of Silverman at reducing crop load using ACC at bloom or following bloom at a rate of 100 to 1,000 ppm.
Response to Arguments
Applicant argues that they have demonstrated unexpected results commensurate in scope with the claims and specifically points to Table 4 of the specification as evidence that the application of ACC at the white bud stage to plum trees resulted in more effective fruit set than application of ACC at full bloom or petal fall (i.e., after bloom) (see page 3, third paragraph of ‘Remarks’ filed February 25, 2026).
This is not persuasive. The results are not unexpected because it is known in the art that applying ACC to stone fruit will cause thinning of fruit (i.e., reducing crop load) as evidenced by both the Silverman and Byers references that teach application of thinning surfactants after bloom as well as prior to bloom, as discussed above. Therefore, the results disclosed in Table 4 would have been obvious and expected.
The combination of the Silverman reference and the Byers reference teach the application of ACC as a thinning agent and the early application of thinning agents, respectively. The use of ACC in reducing crop load in plants is known in the art as demonstrated by both the cited references, as stated above. Though the Silverman reference teaches applying ACC at or following bloom, the Byers reference, as stated above, teaches the application of plant thinning chemicals on plants prior to bloom; thus, the use of plant thinning chemicals prior to bloom is also known in the art. Since ACC is a known chemical plant thinner and has been shown to reduce crop load in plants, it would have been obvious to the skilled artisan to modify the teachings of the Byers reference to replace the chemical thinner with ACC as taught by the Silverman reference.
Applicant argues that the question is not whether application of ACC prior to bloom is taught, but whether Applicant’s results are unexpected in light of the prior art and that Applicant’s demonstration of unexpected results is not a comparison of ACC applied prior to bloom versus a control as taught by the references disclosed in the rejection but rather Applicant’s demonstration of unexpected results is a comparison of ACC applied prior to bloom versus ACC applied at or after bloom (see page 3, fourth to sixth paragraphs of ‘Remarks’ filed February 25, 2026).
This is not persuasive. The claim is drawn to a method of applying ACC to a tree prior to bloom compared to a tree not receiving exogenous ACC, i.e., a control. Thus, the references cited in combination teach the claimed invention and the results would have been expected by one of ordinary skill in the art. In addition, Table 1 of the Byers reference shows that in some instances plants treated prior to bloom had a lower number of fruit per limb when compared to plants treated after bloom. See, for example, the comparison of plants treated with X-77 at the first pink stage with that of plants treated with X-77 at the 30% bloom. Therefore, Applicant’s results are not unexpected over the cited prior art.
(2) Claims 11-20 remain rejected under 35 U.S.C. 103 as being unpatentable over Fallahi et al (Plant Growth Regulation 11: 435-439, 1992), in view of Silverman et al (U.S. Patent No. 8,435,929, May 7, 2013).
The invention reads on a method of reducing percentage fruit set of a plum tree comprising applying exogenous 1-amino-1-cyclopropanecarboxylic acid (ACC) or a hydrate thereof, a polymorph thereof or a salt thereof to the tree prior to bloom, wherein percentage fruit set is reduced as compared to a plum tree not receiving exogenous ACC.
With regard to claims 11-13 and 19, Fallahi et al teach fruit thinning (i.e., reducing percentage fruit set) of a plum tree comprising applying hydrogen cyanamide to the tree prior to bloom. See, for example, the abstract which teaches that prebloom application of hydrogen cyanamide was applied to ‘Friar’ plum. Also see page 437, first column, second paragraph and Table 2. Fallahi et al do not teach applying ACC for reducing crop load; however, Silverman et al teach applying ACC for reducing crop load of a stone fruit plant (see, for example, column 2, lines 55-57; column 3, lines 13-15). Regarding claims 12 and 13, it would be obvious to one of ordinary skill in the art that prebloom application would include bud stage or white bud stage. With regard to claim 19, Fallahi et al teach applying a plant thinner at prebloom, which indicates the white bud stage and Silverman et al teach a method of reducing crop load comprising applying ACC at a rate of 100 to 1,000 ppm at bloom or following bloom (see, for example, column 4, lines 6-16 and Tables 1-3).
With regard to claims 14-16, Silverman et al teach a rate of ACC from about 1 to about 5,000 ppm, 10 to about 2,000 ppm and 100 to about 1,000 ppm (see, for example, Tables 1-3 where it teaches application of ACC to peach trees at 0 ppm (control) to 1,000 ppm).
With regard to claims 17, 18 and 20, Silverman et al teach applying ACC to plants as a spray or foliar spray (see, for example, column 2, lines 55-57).
It would have been obvious to one of ordinary skill in the art to combine or modify the teachings of the cited references because each of the claimed elements are found within the scope and content of the prior art and one of ordinary skill in the art could have combined and modified the elements as claimed by methods known at the time the invention was made. It would have been obvious to one of ordinary skill in the art to use a plant thinning agent at prebloom for plum trees based on the teaching of Fallahi et al and replace the hydrogen cyanamide with the ACC as taught by Silverman et al. One of ordinary skill in the art would have had a reasonable expectation of success because Silverman et al teach that ACC can be used as a plant thinning agent in stone fruit and Fallahi et al teach that thinning agents can be used at the prebloom stage. Thus, one of ordinary skill in the art would have recognized at the time the invention was made that that capabilities or functions of the combination were predictable.
Response to arguments
Applicant argues that they have demonstrated unexpected results commensurate in scope with the claims and specifically points to Table 4 of the specification as evidence that the application of ACC at the white bud stage to plum trees resulted in more effective fruit set than application of ACC at full bloom or petal fall (i.e., after bloom) (see page 3, last paragraph of ‘Remarks’ filed February 25, 2026).
This is not persuasive. The results are not unexpected because it is known in the art that applying ACC to stone fruit will cause thinning of fruit (i.e., reducing crop load) as evidenced by the Silverman reference discussed above. Therefore, the results disclosed in Table 4 would have been obvious and expected.
Applicant argues that the question is not whether application of ACC prior to bloom is taught, but whether Applicant’s results are unexpected in light of the prior art and that Applicant’s demonstration of unexpected results is not a demonstration that ACC thins when applied prior to bloom but that the unexpected result is a comparison of ACC applied prior to bloom versus ACC applied at or after bloom (see page 4, second to fourth paragraphs of ‘Remarks’ filed February 25, 2026).
This is not persuasive. Table 2 of Fallahi et al teach the influence of prebloom application of Dormex on plum fruit and Table 3 of Fallahi et al teach the influence of full bloom application on plum fruit. The results show that the percent of fruit set of the prebloom application is lower than that of the full bloom application when comparing 0.50%, 0.75% and 1.5% surfactant. Therefore, it would have expected and obvious to one of ordinary skill in the art to apply fruit thinning applications prior to bloom for reducing percentage of fruit set. Thus, Applicant has not in fact demonstrated any unexpected results.
Conclusion
The claims are not allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH O. ROBINSON whose telephone number is (571)272-2918. The examiner can normally be reached Monday - Friday, 9:00 a.m. - 5:30 p.m. EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic, can be reached at (571) 270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEITH O. ROBINSON/Primary Examiner, Art Unit 1661
Prosecution Insights