DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Status of Claims
The amendment, filed on 8 September 2025, is acknowledged.
Claims 59, 61-63, 65, 67-71, 73, 75, and 77 have been amended.
Claims 59-78 are pending and under consideration in the instant Office Action.
Objections Withdrawn
Objections to Specification
Applicant’s amendment to the specification to remove the browser-executable code and to amend the language of para. 3 of pg. 19, submitted on 8 September 2025, has overcome the objections to the Specification set forth in the Office Action mailed on 7 March 2025. Accordingly, the relevant objections are withdrawn.
Objections to Claims
Applicant’s amendment to claims 59, 63, 68, and 77, submitted on 8 September 2025, have overcome the objections to the claims set forth in the Office Action mailed on 7 March 2025. Accordingly, the relevant objections are withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejections of claims 65, 67, 69, and 71 under 35 U.S.C. § 112 are withdrawn in view of Applicant’s amendments to the relevant claims in the response filed on 8 September 2025.
Rejections pursuant to 35 U.S.C. § 102
The rejection of claims 59-64, 67-68, and 71-78 under 35 U.S.C. § 102 is withdrawn in view of Applicant’s amendment to claims 59, 73, and 75 to recite the inclusion of at least one polysaccharide, at least one oligosaccharide, and at least one monosaccharide.
Rejections pursuant to 35 U.S.C. § 103
The rejection of claims 59-78 under 35 U.S.C. § 103 is withdrawn in view of Applicant’s amendments to claims 59, 73, and 75 and in favor of the new grounds of rejection below.
New Grounds of Rejection
Claim Rejections - 35 USC § 112
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 59-78 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In the 8 September 2025, response to the non-final Office Action, mailed on 7 March 2025, Applicant amended claims 59, 73, and 75 to recite the carrier matrix “comprises at least one polysaccharide, at least one oligosaccharide, and at least one monosaccharide”. The Applicant stated in the remarks that support can be found in the previously presented claim 63, which recites various species alongside the genus “polysaccharides”. However, the various species presented do not provide support for the newly presented subgenera “oligosaccharide” and “monosaccharide”, nor the combination of “at least one polysaccharide, at least one oligosaccharide, and at least one monosaccharide”. The disclosure of the genus “polysaccharides” and the numerous species in the previously presented claim 63 does not provide adequate support the two new subgenera above because both encompass species that are not disclosed or supported by the original disclosure as originally filed. See MPEP § 2163.I.B. “ New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement.” See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971). Further, “it cannot be said that such a subgenus is necessarily described by a genus encompassing it and a species upon which it reads.” In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) and MPEP § 2163.05.B.II.
Claims 60-72, 74, and 76-78 depend from the amended claims 59, 73, and 75 and necessarily incorporate the limitations of those claims. As a result, claims 59-78 now recite limitations which were not clearly disclosed in the specification as-filed, and now change the scope of the instant disclosure as-filed. Such limitations recited in the amended claims, which did not appear in the specification, as filed, introduce new concepts and violate the description requirement of the first paragraph of 35 U.S.C 112. Applicant is required to provide sufficient written support for the limitations recited in claims 59-78 in the specification or claims, as-filed, or remove these limitations from the claims in response to this Office Action.
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 63 is 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 63 was amended to delete the recitation of Roman numerals (i) and (ii) and now recites “(iii) is cellulose…(iv) is chitosan…(v) is alginate”. The amendment to claim 63 to remove numerals (i) and (ii) renders the subsequent numbering sequence unclear and therefore is indefinite.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 59-78 are rejected under 35 U.S.C. 103 as being unpatentable over Schwindt (Canadian Patent Application Publication No. CA 2709191 A1, published on June 18, 2009, provided by Applicant in the IDS filed on 29 August 2023) in view of Zhao et al. (WIPO International Publication No. WO 2014/153210 A1, published on September 25, 2014, provided by Applicant in the IDS filed on 29 August 2023, hereafter referred to as Zhao), Ryan (Biochem. 1988, 27 (25), 8879.), and Büttner et al. (Biochim. Biophys. Acta. 2000, 1465, 263., hereafter referred to as Büttner).
Schwindt teaches a method of “producing a protective layer on a surface of a plant” as well as a composition for said protective layer (Abstract). The protective layer “is permeable without restriction for…photosynthetically usable radiation” and “the necessary gas exchange of the plant leaf through the stomata is not impaired” (pg. 7, line 34 – pg. 8, line 5). In addition, the protective layer is elastic and capable of undergoing “longitudinal growth as an intact protective layer, so as not to impair plant leaf growth” (pg. 11, lines 14-17). Plants that can be protected by the invention include those in “all development stages and manifestations of a plant, including the seeds, seedlings, buds, leaves, blossoms, fruit and bark” (pg. 7, lines 10-13). Specific genera of plants to which the invention can be applied are also taught, including the fruit plant family Vitaceae (grape-vine plants), the cereal plants wheat (Triticum), rye (Secale), and barley (Hordeum), and hemp seedlings (claim 28 and Example 4).
In the protection of the hemp seedlings described in Example 4, the plants were housed in a greenhouse. Multiple plants were sprayed in Example 4 and claim 32 teaches the use of the composition to protect plants in the plural, stating “use of the composition….for the strengthening of plants or seeds and/or seedings of these plants”. The instant specification does not provide a clear definition of a “nursery”, but describes it as containing a “plurality of plants” (pg. 20, para. 4) and provides a greenhouse as an example of a nursery (pg. 24, para. 7). Accordingly, the teachings of Schwindt are considered equivalent to the nursery recited in instant claims 73-74.
The composition taught by Schwindt comprises a sol-gel, which is formed by hydrolysis of one or more polymeric precursors in water (claims 1 and 3, pg. 7, line 20 – pg. 14, line 13). In some embodiments, the composition comprises ~4.5% to ~6% SiO2 (Example 1). The composition further comprises chitosan, a chitosan salt, or a derivative of chitosan, which is a polysaccharide (claim 15). Schwindt also teaches the composition to contain “at least one antimicrobial active substance” that is added to the solution prior to polymerization (claim 2) . Examples of the active substance include antibacterial, antifungal, and antiviral substances (pg. 9, line 13 - pg. 10, line 23).
The method of producing the protective layer on the surface of a plant taught by Schwindt includes application by “spraying, dipping, spreading, painting, watering, film watering, and/or spray bar” (claim 6). In Example 1, the sol-gel protective layer was applied to leaves of the species “Noble Vine” via spraying and “[c]are was taken to produce a uniform film of moisture on the top surfaces and undersurfaces of the leaves”. The application methods taught and uniform film on both the top and bottom of the “Noble Vine” leaves is considered equivalent to the homogenously dispersed, 60% coverage of instant claims 71-72 and 75-77.
Schwindt does not teach a composition comprising an active agent that is a biostimulant or essential oil nor at least one oligosaccharide or at least one monosaccharide. These deficiencies are offset by the teachings of Zhao, Ryan, and Büttner.
Zhao teaches a composition “formulated for preventing or mitigating pre- and/or post-harvest damage in a plant, fruit, vegetable, or part thereof” (claim 11). Protection is provided by the composition “against biotic and/or abiotic stresses”, such as biotic stresses of insect, nematode, and/or microbial infestation and/or abiotic stress originating from the environment (page 28, second paragraph). The composition can be applied via dipping, dripping, or spraying (page 30, B. Application of Compositions).
The composition comprises cellulosic material, in some embodiments being carboxymethyl cellulose or alginate salts, and other polysaccharides such as starch or chitosan (page 19, fourth paragraph and page 20, third paragraph). Claim 9 teaches that the composition comprises an agricultural agent, which can be “nutrients, growth stimulants, plant growth regulators, herbicides, fungicides, pesticides, or a combination of two or more thereof”. “Nutrients” are defined to include trace minerals (spec. page 15, second paragraph). In addition to an agricultural agent, the composition comprises a stabilizing agent, one example of which is salicylic acid, a known phytohormone (spec. page 19, line 10). The term “biostimulant” is defined in the instant application as a substance “that is capable to stimulate natural processes of plants to benefit their nutrient use efficiency and/or their tolerance to abiotic stress”, and combination of the examples above and stated purpose of protection against biotic and/or abiotic stresses renders obvious instant claims 65-66 (instant spec. page 16, third paragraph). Claim 9 of Zhao further teaches that the composition comprises an additive agent and provides essential oils as an example of such an additive agent (spec. page 21, line 2). Examples of suitable essential oils are “thyme oil, clove oil, oregano, lemongrass, marjoram, cinnamon, coriander, or combinations thereof”, rendering instant claims 69-70 obvious.
Ryan teaches the role of oligosaccharides in plants, particularly in relation to the expression of defensive genes (Abstract). Oligosaccharides are taught to be important signaling molecules for inducing the synthesis of defensive chemicals in plants (pg. 8879, left column, para. 1). Two of the primary oligosaccharides, b-glucans and chitin/chitosan fragments, are taught to “induce the expression of genes that are involved in defense responses” following application to plants (pg. 8880, left column, para. 2). Agricultural crops, such as soybeans (pg. 8880, left column, final para.), parsley, and beans (pg. 8882, left column, penultimate para.) are taught to also benefit from the defense mechanisms elicited by oligosaccharides.
Büttner teaches the role of monosaccharides and their transporters in plants (Abstract). Monosaccharides, the principle source of carbon and energy in plants, are taught to primarily reach plant cells via dedicated transporters in the plant cell wall (pg. 263, left column, para. 1 - pg. 264, left column, para. 2). The transport of monosaccharides is vital for plant development, and issues in their transport can lead to “reduced sink growth causing a phenotype similar to that described for plants impaired in phloem loading” (pg. 264, left column, para. 2). Büttner additionally teaches that, in addition to serving as carbon and energy sources, hexose monosaccharides are “important signaling molecules that can alter gene expression levels in lower and higher plants” (pg. 271, right column, final para.).
It would have been obvious to a person having ordinary skill in the art, prior to the filing date of the instant application, to combine the teachings of Schwindt, Zhao, Ryan and Büttner to arrive at the claimed invention because simple combination of elements known in the prior art to impart known benefits produces predictable results. In the instant case, Schwindt teaches a composition comprising at least one antimicrobial agent and the polysaccharide chitosan which can be used to protect a plant in any stage of growth from bacteria, fungi, algae, and viruses. The protection is imparted by dipping, spraying, or painting, is taught to allow the passage of gases, and is applied in a continuous layer covering the entirety of the plant part. It would be obvious to one of ordinary skill to substitute an essential oil for one of the antifungal agents disclosed by Schwindt in view of the teachings of Zhao, motivated by Example 15, which demonstrates cinnamon leaf essential oil inhibiting the growth of mold on grapes.
Further, Schwindt taught their composition to be useful as a fertilizer to plants after the plant on which the protective layer was applied had “died and rotted” (Schwindt pg. 8, lines 16-18). It would have been obvious to a person of ordinary skill in the art to try to use an active agent in the protective composition to aid plant growth prior to the death of the plant because applying a known technique to a known product yields predictable results. One would be motivated to use an agent to improve plant growth in the composition of Schwindt because Zhao teaches the use of plant growth aiding agents, including nutrients and growth stimulants, in a protective composition to protect plants during growth stages. Incorporation of these plant growth aiding agents is taught to improve the shelf-life of fruit, prevent degradation caused by sunburn, and prolong the growing season (Zhao Table 1).
One of ordinary skill would be motivated to include one or more oligosaccharides in view of the teachings of Ryan because Ryan teaches that oligosaccharides are important to signaling the production of defensive chemicals in plants and the ordinary artisan would desire the plants to which their composition was applied to use biological defense mechanisms in addition to the applied composition to achieve a higher level of protection. Finally, an ordinary artisan would be motivated to include one or more monosaccharides in the composition above by the teachings of Büttner because Büttner teaches that monosaccharides are important carbon and energy sources to plants, which a person of ordinary skill would recognize as necessary in growing plants. Further, Büttner teaches that monosaccharides are important to plant signaling and can impact gene expression, which an ordinary artisan would not want to deprive from a plant they are protecting. As such, there is a reasonable expectation of success in arriving at the claimed invention in view of the teachings of Schwindt, Zhao, Ryan, and Büttner.
Response to Arguments
The Applicant’s arguments, filed on 8 September 2025, have been fully considered but are not persuasive.
Applicant argues in the penultimate para. of pg. 10 that Schwindt does not teach a composition comprising at least one polysaccharide, at least one oligosaccharide, and at least one monosaccharide and that the composition taught by Schwindt does not provide “elasticity, flexibility, and gas exchange” properties. The Examiner does not dispute that Schwindt does not teach their composition to comprise at least one oligosaccharide and at least one monosaccharide, but this inclusion is obvious in view of the teachings of Ryan and Büttner above (see new grounds of rejection under 35 U.S.C. § 103 above). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the elasticity, flexibility, and gas exchange of the coating) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Additionally, Schwindt explicitly teaches that their composition allows the passage of necessary gases and is elastic and capable of undergoing “longitudinal growth as an intact protective layer, so as not to impair plant leaf growth” (pg. 7, line 34 – pg. 8, line 5 and pg. 11, lines 14-17).
In response to applicant's arguments against the references individually, specifically the argument in the final para. of pg. 10 that the invention of Zhao limits the passage of gases to or from coated plants or plant parts and the argument in para. 1 of pg. 11 that Zhao does not teach the coating of a plant capable of undergoing vegetative reproduction, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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