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 .
Claims 1 and 4-20 are pending in this application.
Applicant’s election of Group I (Musa field), claims 1 and 7-20, in the reply filed on 7/10/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Accordingly, claims 4-6 are withdrawn from further consideration as being directed to non-elected inventions. Claims 1 and 7-20 will presently be examined to the extent that they read on the claimed Musa field invention.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 7-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because of the following reasons.
All claims are directed to a Musa field comprising at least one Musa plant growing in the soil. The Musa plant recited in the claims has been previously treated to a depth of more than 40 cm below the soil surface with MITC or a compound that produces MITC as a degradate or a functional equivalent or alternative thereof in an amount effective for treating Fusarium oxysporum f. sp. cubense Tropical Race 4 (Foc TR4).
The broadest reasonable interpretation of the claimed invention as a whole is that it is directed to a Musa field comprising at least one Musa plant growing in soil. A Musa field would by definition comprise a Musa plant growing in its soil because otherwise it would not be a Musa field. The previous treatment of at least one Musa plant does not limit the broadest reasonable scope of the claims. MITC would degrade rapidly (half-life in the soil is about 7 days)1 and its effect would be transitory when considered over a duration of several month, several years, or longer, during which time the Musa field would continue to be at risk of contamination by phytopathogens, which spread by, inter alia, contaminated soil on machinery and tools, contaminated shoes, contaminated water, infected planting material, and/or infected weeds.
A Musa field, such as a banana field, is not a process, machine, manufacture, or composition of matter. A Musa field is real estate, albeit one with an agricultural product, but the claims are still directed to real estate, i.e., land, soil, and all Musa plants within its boundaries. Real estate is not eligible subject matter, and therefore, the claimed Musa field is not eligible subject matter.
The Examiner recognizes that there are additional non-nature based features recited in the claims, i.e., the at least one Musa plant has been previously treated with MITC as specified in the claims, but that does not change the fact that claims are still drawn to real estate or land, which is not eligible subject matter.
Please note that the claims under this ground of rejection are not directed to the Musa plant but the Musa field itself. The treated Musa plant is the subject of non-elected claims 4-6.
In the alternative and in the unlikely event that real estate such as the Musa field claimed herein falls within at least one of the four categories of patent eligible subject matter, this Office action presents additional analysis as to why the claimed invention is not eligible subject matter.
Claims 1 and 7-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon, including a product of nature, without significantly more. The claims recite A Musa field comprising at least one Musa plant growing in the soil. Separate analysis is presented below for claims 1, 7-17, 19-20 (all considered together but separate from claim 18) and claim 18.
Claims 1, 7-17, and 19-20
The broadest reasonable interpretation of the claimed invention was presented previously in this Office action and the discussion there is incorporated herein by reference.
Natural phenomenon, naturally occurring product, products of nature
The claims recite A Musa field comprising at least one Musa plant growing in the soil. The Musa field and the Musa plant such as those claimed here are both natural phenomenon, i.e., it is land and plant(s) that grows in its soil (specific Musa plants grow in nature after introduction of cultivars or hybrids). The claims encompass a Musa field and plant many months or many years after treatment with MITC or compounds that produce MITC or equivalents. The closest natural counterpart is another Musa field with a Musa plant growing in its soil, for example a Musa field with minimal or no infestation by Foc TR4.
There is no indication in the record that at least one Musa plant that has been previously treated to a depth of more than 40 cm below the soil surface with a formulation comprising MITC or its equivalent would have resulted in a marked difference in structure, function, or other properties of the Musa field and said Musa plant compared to its closest natural counterpart. MITC would degrade rapidly (half-life in the soil is about 7 days) and its effect would be transitory when considered over a duration of several months, several years, or longer. After the claim-recited “previous[ ]” treatment, a Musa field would continue to be at risk of contamination by phytopathogens, which spread by, inter alia, contaminated soil on machinery, shoes, infected planting material, and/or infected weeds. There is no evidence that said previous treatment with MITC or equivalents would prevent such contamination and/or exhibit marked difference in characteristics of the field and previously treated Musa plant over several months, several years, or longer.
Therefore, assuming arguendo that the claims fall within at least one of the four categories of patent eligible subject matter, the claimed Musa field comprising at least one Musa plant is a product of nature or natural phenomenon judicial exception.
Claims do not Integrate the judicial exception into a practical application
This judicial exception is not integrated into a practical application because of the following reasons.
Additional elements beyond the judicial exception recited in the claims are:
(i) Musa plant has been treated to a depth of more than 40 cm below the soil surface with a formulation comprising MITC or a compound that produces MITC as a degradate or a functional equivalent or alternative thereof, in an amount effective for treating Foc TR4;
(ii) soil was treated at least three days before the Musa plant began growing in the soil;
(iii) soil after it was treated contains a lower fungus and/or lower nematode count than before the soil was treated;
(iv) formulation was applied as a solution, concentration, or granules;
(v) compound that produces MITC as a degradate comprises metam sodium, metam potassium, metam ammonium, or dazomet;
(vi) effective amount is 300-700 g of MITC equivalents/liter
(vii) formulation further comprises, inter alia, a preservative, solvent, colorant, fragrance;
(viii) the formulation further comprises water as an agriculturally acceptable carrier; and
(ix) agriculturally acceptable carrier is present in 0.5-99.5%.
The claims as a whole, considering the additional elements individually and in combination, do not integrate the judicial exception into a practical application, because the Musa field comprising previously treated Musa plant as recited in the claims is still a field with a Musa plant.
There are no meaningful limitations on the judicial exception because over several months, years, or longer, the additional elements do not result in a Musa field that is different from another Musa field that did not have Foc TR4 infestation. The two fields are the same in comprising land, soil, and at least one Musa plant. The claims do not effect a transformation of a natural Musa field, because both the claimed Musa field and natural Musa field would continue to be at risk of contamination by phytopathogens, which spread by, inter alia, contaminated soil on machinery and tools, contaminated shoes, contaminated water, infected planting material, and/or infected weeds. Therefore, the judicial exception has not been integrated into a practical application.
Claims do not recite additional elements that amount to significantly more than
the judicial exception
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following reasons.
The additional elements (i) to (ix) were set forth above. However, MITC has a short half-life about 7 days in the soil, and the claimed Musa field and previously treated Musa plant would be indistinguishable from a Musa field comprising a Musa plant wherein the field has minimal or no infestation by Foc TR4. Over several months, years, or longer, the additional elements do not result in a Musa field that is different from another Musa field that did not have Foc TR4 infestation or had minimal infestation. The two fields are the same in comprising land, soil, and at least one Musa plant. The claims do not effect a transformation of a natural Musa field, because both the claimed Musa field and natural Musa field would continue to be at risk of contamination by phytopathogens, which spread by, inter alia, contaminated soil on machinery and tools, contaminated shoes, contaminated water, infected planting material, and/or infected weeds.
Therefore, the claims as a whole do not amount to significantly more than the judicial exception itself because the claimed Musa field, several months or years from the claim-recited treatment of at least one Musa plant, directly encompasses the judicial exception.
For these reasons, claims 1, 7-17, and 19-20 are rejected under 35 USC 101.
Claim 18
Natural phenomenon, naturally occurring product, products of nature
The broadest reasonable interpretation of the claimed invention as a whole is that it is directed to a Musa field comprising at least one Musa plant growing in soil, wherein the soil may contain a known agricultural adjuvant such as Soprophor line of surfactants, N-octyl pyrrolidone, Xiameter surfactant, and/or ethyl formate.
A Musa field would by definition comprise a Musa plant growing in its soil because otherwise it would not be a Musa field. The previous treatment of at least one Musa plant with MITC or a compound that product MITC such as metam salts or dazomet does not limit the broadest reasonable scope of the claims. MITC would degrade rapidly (half-life in the soil is about 7 days) and the effect of MITC would be transitory when considered over a duration of several month, several years, or longer, during which time the Musa field would continue to be at risk of contamination by phytopathogens, which spread by, inter alia, contaminated soil on machinery and tools, contaminated shoes, contaminated water, infected planting material, and/or infected weeds.
The closest natural counterpart is another Musa field with a Musa plant growing in its soil, for example a Musa field with minimal or no infestation by Foc TR4.
There is no indication in the record that at least one Musa plant that has been previously treated to a depth of more than 40 cm below the soil surface with a formulation comprising adjuvants of claim 18 with MITC or its equivalent would have resulted in a marked difference in structure, function, or other properties of the Musa field and said Musa plant compared to its closest natural counterpart. MITC would degrade rapidly and its effect would be transitory when considered over a duration of several months, several years, or longer. After the claim-recited “previous[ ]” treatment, a Musa field would continue to be at risk of contamination by phytopathogens. There is no evidence that said previous treatment with MITC or equivalents would prevent such contamination and/or exhibit marked difference in characteristics of the field and previously treated Musa plant over several months, several years, or longer.
Therefore, assuming arguendo that the claims fall within at least one of the four categories of patent eligible subject matter, the claimed Musa field comprising at least one Musa plant is a product of nature or natural phenomenon judicial exception.
Claims do not Integrate the judicial exception into a practical application
This judicial exception is not integrated into a practical application because of the following reasons.
Additional elements beyond the judicial exception recited in the claims are:
(i) Musa plant has been treated to a depth of more than 40 cm below the soil surface with a formulation comprising MITC or a compound that produces MITC as a degradate (e.g., metam compounds, dazomet) or a functional equivalent or alternative thereof, in an amount effective for treating Foc TR4; and
(x) MITC or aforementioned related compounds are formulated with a known agricultural adjuvant such as Soprophor line of surfactants, N-octyl pyrrolidone, Xiameter surfactant, and/or ethyl formate.
The claims as a whole, considering the additional elements individually and in combination, do not integrate the judicial exception into a practical application, because the Musa field comprising previously treated Musa plant as recited in the claims is still a field with a Musa plant.
There are no meaningful limitations on the judicial exception because over several months, years, or longer, the additional elements do not result in a Musa field that is different from another Musa field that did not have Foc TR4 infestation. The two fields are the same in comprising land, soil, and at least one Musa plant. The claims do not effect a transformation of a natural Musa field, because both the claimed Musa field and natural Musa field would continue to be at risk of contamination by phytopathogens, which spread by, inter alia, contaminated soil on machinery and tools, contaminated shoes, contaminated water, infected planting material, and/or infected weeds.
Additionally, an agricultural adjuvant such as, for example, Soprophor line of surfactants are no more than insignificant extra-solution activity to the judicial exception. Such adjuvants, if they were detectable at all in the soil months or years after application, are incidental or tangential addition to an agricultural field, which must be treated for pests and phytopathogens by applying agricultural formulations. For example, Egger et al. (US 2019/0133118) disclose the use of dazomet, MITC (paragraph 70), or metam sodium (paragraph 75) formulated with Soprophor line of surface active agents (paragraph 120, Table 3), which can be used to treat banana trees and banana plantations (paragraph 168). Similarly, Rosslenbroich et al. (US 2011/0003689) discloses the use of dazomet and another pesticide (paragraphs 20 (see G-75), 21-28) with N-octylpyrrolidone (paragraph 60), tristyrylphenol ethoxylates2 (paragraph 62) to treat banana trees and banana plantations (paragraph 83).
For these reasons, the judicial exception has not been integrated into a practical application.
Claims do not recite additional elements that amount to significantly more than
the judicial exception
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following reasons.
The additional elements (i) and (x) were set forth above.
Soprophor dispersants are well-understood, routine, conventional additives to agricultural formulations (see above discussion of evidence by Egger et al. and Rosslenbroich et al.), and MITC has a short half-life about 7 days in the soil, wherein the claimed Musa field and previously treated Musa plant would be indistinguishable from a Musa field comprising a Musa plant wherein the field has minimal or no infestation by Foc TR4. Over several months, years, or longer, the additional elements do not result in a Musa field that is different from another Musa field that did not have Foc TR4 infestation or had minimal infestation. The two fields are the same in comprising land, soil, at least one Musa plant, and residue from prior agricultural formulations. The claims do not effect a transformation of a natural Musa field, because both the claimed Musa field and natural Musa field would continue to be at risk of contamination by phytopathogens, which spread by, inter alia, contaminated soil on machinery and tools, contaminated shoes, contaminated water, infected planting material, and/or infected weeds.
Therefore, the claims as a whole do not amount to significantly more than the judicial exception itself because the claimed Musa field, several months or years from the claim-recited treatment of at least one Musa plant, directly encompasses the judicial exception.
For the foregoing reasons, all claims under examination are rejected under 35 USC 101.
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.
Claims 1 and 7-20 are 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.
(1) Claim 1 recites parenthetical information, “(or a functional equivalent or alternative thereof).” There are two issues of indefiniteness here. First, parenthetical information itself renders the claims indefinite because it is unclear whether the information is optional. Second, the metes and bounds of “a functional equivalent or alternative thereof” are unclear. One skilled in the art would not be able to determine what is covered and not covered by such language. For example, would a compound totally unrelated to MITC be covered if it has an alternative activity to treat Foc TR4?
(2) In claim 18, trademarks XIAMETER and SOPROPHOR are recited. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe surfactants and dispersants and, accordingly, the identification/description is indefinite.
(3) Claim 20 depends on itself, claim 20. This is confusing.
Dependent claims are included in this ground of rejection because they do not cure the deficiency of the base claim(s).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
(1) In claim 14, metam sodium is recited as comprising sodium N-methyldithiocarbamate or methyldithiocarbamic acid sodium salt. However, all three are alternative names for the same substance. This is analogous to a claim that recites
“methyl comprises -CH3 or
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media_image1.png
101
78
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Greyscale
.” The claim language is therefore redundant and fails to further limit the base claim 13.
(2) Similarly in claim 15, metam potassium is recited as comprising potassium N-methyldithiocarbamate or methyldithiocarbamic acid potassium salt. The claim language is redundant and fails to further limit the base claim 13.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 7-10, 12-17, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Montiflor et al. (hereinafter, Montiflor).
Montiflor discloses that the island of Mindano in southern Philippines has emerged since the 1960s as the country’s main producer of bananas, contributing to 82.8% of the country’s total volume in 2015 (page 3). In 2015, Mindano produced almost all of the country’s Cavendish AAA, Musa acuminata (page 3). Philippines has over 440,000 acres of banana fields, wherein Cavendish fields in specific regions affected by Fusarium oxysporum f. sp. cubense Tropical Race 4 (Foc TR4) ranged from 9.07% to 47.44% of hectares (Table 1).
It is recognized that Montiflor does not disclose soil treatment with MITC or a similar chemical as recited in the instant claims, let alone applying MITC or equivalents/alternatives to soil depth of more than 40 cm below the soil surface as claimed herein.
However, the elected claims under examination in this application are directed to the Musa field itself, not to a method of treating the soil, and it is the Examiner’s position that the claimed Musa field reads on prior art Musa fields disclosed by Montiflor, which have been in existence for over six decades. Over time, the applied MITC or equivalent chemicals that produce MITC would degrade and any effect MITC delivers would be transitory because the half-life of MITC in the soil is about 7 days and that does not even take into account loss via volatilization. Over time, the Musa field encompassed by the instant claims would read on the Musa fields disclosed by Montiflor, for example the 93.73% (100 – 6.27) of hectares of Musa fields with Cavendish bananas not infested with Foc TR4 in Davao City or the 88.03% (100 – 11.97) of hectares of Musa fields with Cavendish bananas not infested with Foc TR4 in Davao del Sur (Montiflor, Table 1). Both the claimed Musa field and prior art Musa field would continue to be at risk of contamination by phytopathogens, which spread by, inter alia, contaminated soil on machinery and tools, contaminated shoes, contaminated water, infected planting material, and/or infected weeds. Thus, over time, e.g., over several months, years, or even decades, the claimed Musa field would read on prior art Musa fields that are in the Philippines. Instant claims further recite a solvent or carrier such as water, but the Musa fields disclosed by Montiflor would have water or moisture in the soil due to rain.
For these reasons, the claims are anticipated.
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.
Claims 1 and 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over the combined teachings of Montiflor and Pereira et al. (hereinafter, Pereira)3 in view of Ringera et al.4 (hereinafter, Ringera), Stewardship Manual Metam Sodium & Metam Potassium (hereinafter, Stewardship Manual), Egger et al. (US 2019/0133118,) and Rosslenbroich et al. (US 2011/0003689).
Montiflor disclose that the island of Mindano in southern Philippines has emerged since the 1960s as the country’s main producer of bananas, contributing to 82.8% of the country’s total volume in 2015 (page 3). In 2015, Mindano produced almost all of the country’s Cavendish AAA, Musa acuminata (page 3). Philippines has over 440,000 acres of banana fields, wherein Cavendish fields in specific regions affected by Fusarium oxysporum f. sp. cubense Tropical Race 4 (Foc TR4) ranged from 9.07% to 47.44% of hectares (Table 1). Foc TR4 causes Fusarium wilt (page 2, left column).
Pereira discloses that the term “banana” includes a number of hybrids in the genus Musa, including bananas and plantains (page 150, left column). Plantains are generally the larger, more starchy fruits of hybrid triploid cultivars in the banana family (id.). Triploid hybrids between Musa acuminata Colla and Musa balbisiana Colla, which have genomic combinations of, inter alia, AAA or AAB, are known (pages 150-152, including Tables 1 and 2). AAA Cavendish subgroup is known (Table 2). “A” represents chromosomes from M. acuminata Colla and “B” represents chromosomes from M. balbisiana Colla (page 151, left column). Bananas are cultivated “widely throughout the tropics as a source of food and income” (abstract).
Ringera discloses Fusarium wilt is caused by Fusarium oxysporum. Ringera discloses, “Apply direct control when Fusarium wilt is first detected,” including treating infected soil with metam sodium as soil fumigation.
Stewardship Manual discloses the following:
Depth distribution of soil-borne pathogens and pest organisms, wherein Fusarium oxysporum is at >60 cm soil depth, Sclerotinia sclerotiorum is at 40-60 cm soil depth, root-knot nematodes are at 20-40 cm soil depth, and Pythium species and free living nematodes are at 0-20 cm soil depth (table on page 6). However, the Manual also discloses that there is no sharp boundary of pest or disease occurrence at the different soil depths (page 7).
Metam sodium and metam potassium are both salts of N-methyldithiocarbamate, commercially available in aqueous solutions, and decompose into methyl isothiocyanate (MITC), carbon disulfide and other compounds. MITC is the major gaseous active metam decomposition product and is known to act as a broad spectrum soil disinfectant (page 12). Metam products are broad spectrum soil disinfectants, with activities covering a large group of nematodes, fungi, including Fusarium species, and weeds (pages 13-14).
Egger et al. (US 2019/0133118) disclose the use of dazomet, MITC (paragraph 70), or metam sodium (paragraph 75) formulated with Soprophor line of surface active agents (paragraph 120, Table 3), which can be used to treat banana trees and banana plantations (paragraph 168).
Rosslenbroich et al. (US 2011/0003689) discloses the use of dazomet and another pesticide (paragraphs 20 (see G-75), 21-28) with N-octylpyrrolidone (paragraph 60), tristyrylphenol ethoxylates5 (paragraph 62) to treat banana trees and banana plantations (paragraph 83).
Montiflor and Pereira do not explicitly disclose a Musa field that has had its soil treated with an effective amount of MITC or a compound that produces MITC as a degradate or its functional equivalent or alternatives thereof to a depth or more than 40 cm below the soil surface to treat Foc TR4.
However, the elected claims under examination in this application are directed to the Musa field itself, not to a method of treating the soil, and it is the Examiner’s position that the claimed Musa field reads on prior art Musa fields disclosed by Montiflor and suggested by Pereira, which have existed as Musa fields for a long time, e.g., over six decades. Over time, the applied MITC or equivalent chemicals that produce MITC would degrade and any effect MITC delivers would be transitory because the half-life of MITC in the soil is about 7 days and that does not even take into account loss via volatilization. Over time, the Musa field encompassed by the instant claims would read on the Musa fields around the world, for example the 93.73% (100 – 6.27) of hectares of Musa fields with Cavendish bananas not infested with Foc TR4 in Davao City or the 88.03% (100 – 11.97) of hectares of Musa fields with Cavendish bananas were not infested with Foc TR4 in Davao del Sur (Montiflor, Table 1). The claimed Musa field would be obvious over the prior art Musa fields because both fields comprise land, soil, at least one Musa plant, and residue from prior agricultural treatments. Both the claimed Musa field and prior art Musa field would continue to be at risk of contamination by phytopathogens, which spread by, inter alia, contaminated soil on machinery and tools, contaminated shoes, contaminated water, infected planting material, and/or infected weeds. Thus, over time, e.g., over several months, years, or even decades, the claimed Musa field would read on prior art Musa fields.
Additionally, Metam sodium is known to be used to treat Fusarium wilt of bananas, which is caused by Fusarium oxysporum, by treating the soil, and F. oxysporum is known to be distributed at soil depths greater than 60 cm, though there is no sharp boundary of pest or disease occurrence at the different soil depths. Consequently, the ordinary skilled artisan would have been motivated to apply metam sodium to soil in a Musa field to a depth where the causative pathogen of Fusarium wilt is distributed, including the claim-recited soil depth of more than 40 cm below the soil surface.
Claim 7 recites treating the soil at least 3 days before a Musa plant begins growing in the soil. Such wait time would have been obvious to allow for metam sodium to produce MITC and contact soil pathogens and soil pests, including F. oxysporum, Sclerotinia Sclerotiorum, and various nematode pests.
The specific Musa species and cultivars recited in claims 9-11 are known species and cultivars, and fields that have such Musa plants would have been obvious.
Regarding the formulation features of claims 17-20, Egger et al. and Rosslenbroich et al. disclose the formulation of the active ingredients of the instant claimed invention with the emulsifier, surfactant, or dispersant of the instant claimed invention.
Regarding carrier such as water, the Musa fields disclosed and suggested by the prior art would have water or moisture in the soil due to rain. Additionally, use of water to deliver agrochemical agents is obvious because water is a common carrier in agriculture.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1 and 7-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9-22, 24-25 and 27 of copending Application No. 17/907,504 (reference application) in view of Pereira. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claims of the reference application are directed to a method of treating soil with a composition comprising 300-700 g of MITC equivalents per liter of the composition from MITC or a compound that produces MITC as a degrade or a functional equivalent, or alternative thereof, to a first soil depth of at least 40 cm below the soil surface and a second depth of <40 cm at application rate of 750-3000 liters per hectare (claims 1, 18-21), wherein the soil is in a field (claim 24). At least one Musa tree is planted in the treated soil after applying the composition (claim 25). Soil depth of up to 60 cm is claimed (claim 9). The composition comprises metam sodium, metam potassium, metam ammonium, or dazomet (claim 15). Formulation additives are included (claim 16), including N-octyl pyrrolidone or ethyl formate (claim 17). The composition is effective for treating Foc TR4 (claim 2). See also remaining claims of the reference application for additional details.
Pereira is cited to establish well-known facts about Musa plants. The term “banana” includes a number of hybrids in the genus Musa, including bananas and plantains (page 150, left column). Triploid hybrids between Musa acuminata Colla and Musa balbisiana Colla, which have genomic combinations of, inter alia, AAA or AAB, are known (pages 150-152, including Tables 1 and 2). AAA Cavendish subgroup is known (Table 2). “A” represents chromosomes from M. acuminata Colla and “B” represents chromosomes from M. balbisiana Colla (page 151, left column).
The claims of the reference application do not explicitly disclose the species, cultivars or hybrids specified in claims 9-11. However, these are well-known Musa species, cultivars or hybrids, as evidenced by Pereira. The claims of the reference application do not explicitly disclose water as a carrier, but water is an obvious and common agricultural carrier for applying agrochemicals.
The claims of the reference application also do not explicitly disclose treating soil at least three days before the Musa plant began growing in the soil. However, it would have been obvious to the ordinary skilled artisan that treating the soil to control Foc TR4 prior to planting a young and more susceptible Musa plant would have been beneficial for growing new Musa plants. At least 3 days would have been obvious for allowing sufficient time for MITC to contact and control Foc TR4 and various pests in the soil.
The claims of the reference application would obtain a Musa field comprising at least one Musa plant growing in soil that has previously been treated to a depth of more than 40 cm below the soil surface with a formulation comprising MITC or a compound that produces MITC as a degradate, as claimed. For these reasons, the ordinary skilled artisan would have recognized the claimed invention as an obvious variation of the invention set forth in the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 7-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-12, 14 and 17-20 of copending Application No. 17/907,496 (reference application) in view of Pereira and Stewardship Manual. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claims of the reference application are directed to a method of reducing Foc TR4 propagules in soil of a Musa field, comprising applying a composition comprising MITC or a compound that produces MITC as a degradate at a rate of 500-5,000 liters per hectare, and planting at least one Musa tree in the treated soil at least 3 days after applying the composition (claim 1). Reduction of Foc TR4 propagule count by at least 15% (claim 1) or at least 70% (claim 2) in the soil is recited. The composition can comprise metam sodium, metam potassium, metam ammonium, or dazomet (claim 5). The composition can further comprise N-octyl pyrrolidone, Xiameter, Soprophor, ethyl formate (claim 9). The composition can comprise 300-700 g of MITC equivalents per liter (claim 11). Further disclosed are Musa acuminata banana plant or plantain plant (claim 17), M. acuminata banana plant that is a Cavendish triploid (AAA) cultivar (claim 18), and plantain triploid (AAB) that is a M. acuminata and M. balbisiana hybrid (claim 19). See also remaining claims of the reference application for additional details.
The disclosure by Pereira was presented previously in this Office action and the discussion there is incorporated herein by reference.
Stewardship Manual discloses depth distribution of soil-borne pathogens and pest organisms, wherein Fusarium oxysporum is at >60 cm soil depth, Sclerotinia sclerotiorum is at 40-60 cm soil depth, root-knot nematodes are at 20-40 cm soil depth, and Pythium species and free living nematodes are at 0-20 cm soil depth (table on page 6). However, the Manual also discloses that there is no sharp boundary of pest or disease occurrence at the different soil depths (page 7).
The claims of the reference application do not explicitly disclose treating the soil to a depth of more than 40 cm below the soil surface with MITC or compound that produces MITC or equivalents/alternatives. However, Fusarium oxysporum is known to be distributed in the soil at a depth of greater than 60 cm, so it would have been obvious to apply MITC that controls F. oxysporum strains, e.g., Foc TR4, to a depth where the pathogens are present.
The claims of the reference application do not explicitly disclose water as a carrier, but water is an obvious and common agricultural carrier for applying agrochemicals.
The claims of the reference application would obtain a Musa field comprising at least one Musa plant growing in soil that has previously been treated to a depth of more than 40 cm below the soil surface with a formulation comprising MITC or a compound that produces MITC as a degradate, as claimed, because applying to such soil depth where the Foc TR4 pathogens are distributed would reduce Foc TR4 propagule count as taught by the claims of the reference application. For these reasons, the ordinary skilled artisan would have recognized the claimed invention as an obvious variation of the invention set forth in the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 7-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-18 of copending Application No. 17/907,501 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The claims of the reference application are directed to a method of delaying infection onset by Foc TR4 in Musa plants grown in soil, method comprising applying to the soil in which the Musa plants are to be grown a composition comprising MITC or a compound that produces MITC as a degrade or functional equivalent/alternative thereof, waiting sufficient period of time to reduce viable Foc TR4 propagule count in the soil by at least 15%, and planting one or more Musa plants in the treated soil (claim 1). The composition is applied at a rate and in a manner which is effective for treating Foc TR4 to at least 60 cm below the soil surface (claim 1). In reference application claims 3 and 5, the MITC is introduced at least 40 cm below the surface of the soil. A method of growing plants of the genus Musa in a field known or believed to be contaminated with Foc TR4 comprising at least two repetitions of a treatment and planting cycle comprising introducing at least 40 cm below the surface of the soil in the field an Foc TR4 inhibiting effective amount of MITC, allowing MITC to reduce viable Foc TR4 propagules in the soil, plating a Musa plant, growing the plant, harvesting fruit, and removing the plants from the field is also disclosed (claim 5). Introducing the composition to soil dept up to 60 cm below the soil surface is claimed (claim 7). 300-700 g of MITC equivalents per liter of solution (claim 11) and 500-5,000 liters per hectare application rate (claim 13) are disclosed. Plating a Musa plant at least 3 days after treatment is disclosed (claim 14). Further disclosed are Musa acuminata banana plant or plantain plant (claim 15), M. acuminata banana plant that is a Cavendish triploid (AAA) cultivar (claim 16), and plantain triploid (AAB) that is a M. acuminata and M. balbisiana hybrid (claim 17). See also remaining claims of the reference application for additional details.
The claimed Musa field would have been obvious because the method of copending claims would obtain the same Musa field. For these reasons, the ordinary skilled artisan would have recognized the claimed invention as an obvious variation of the invention set forth in the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 Triky-Dotan et al. at page 497. See the attached PTO-892, Non-patent document U.
2 Soprophor surfactants include tristyryl phenol ethoxylates. See for example Egger et al., Table 3.
3 See attached PTO-892, Non-patent document V.
4 Submitted by Applicant in the IDS of 3/27/2025, the second non-patent literature document titled “Fusarium wilt or Panama disease on bananas.”
5 Soprophor surfactants include tristyryl phenol ethoxylates. See for example Egger et al., Table 3.