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 30 December 2025, is acknowledged.
Claims 1, 4, 10-13, and 15-20 have been amended.
Claims 5-6 and 8-9 been cancelled.
New claim 21 has been added.
Claim 19 was previously withdrawn from consideration in the non-final Office Action, mailed on 1 July 2025, pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species. The amendment to claim 19 to recite only the surfactants sucrose stearate and sucrose palmitate results in the claim reading on the elected surfactants and the claim is now under consideration.
Claims 1-4, 7 and 10-21 are pending and under consideration in the instant Office Action, to the extent of the following previously elected species:
the combination of surfactants is sucrose stearate and sucrose palmitate;
the mixture of phytosterols is b-sitosterol, campesterol, stigmasterol, and brassicasterol;
the specific plant is soybean;
the specific active ingredient is b-sitosterol; and
the additional components 2,2’-bipyridine and benzoic acid.
Objections Withdrawn
Objections to Drawings
The replacement drawings submitted by the Applicant on 30 December 2025, have overcome the objection to the drawings set forth in the Office Action mailed on 1 July 2025. Accordingly, the relevant objections are withdrawn.
Objections to Claims
Applicant’s amendment to claim 10 has overcome the objection to the claim set forth in the Office Action mailed on 1 July 2025. Accordingly, the relevant objection is withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejections of claims 4, 11-13, and 15-18 under 35 U.S.C. § 112 are withdrawn in view of Applicant’s amendments to the claims. The rejection of claim 20 under 35 U.S.C. § 112(b) for containing improper Markush grouping of alternatives is withdrawn in view of Applicant’s amendments to the claims. The rejection of claims 5 and 8 under 35 U.S.C. § 112 has been rendered moot in view of Applicant’s cancellation of the claims.
Rejections pursuant to 35 U.S.C. § 103
The rejection of claims 5-6 and 8-9 under 35 U.S.C. § 103 is withdrawn in view of Applicant’s cancellation of the claims.
Maintained Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 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.
The word “advantageously” appears in lines 5 and 9 of the claim. This word makes unclear which limitations are part of the claimed invention, and therefore render the claim indefinite, because there is a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Applicant may overcome this rejection by amending the claim to remove the word “advantageously”.
Response to Amendments
Applicant’s amendments to claim 20, filed on 30 December 2025, have not corrected all issues identified in the non-final Office Action mailed on 1 July 2025. Specifically, claim 20 was amended to remove the word “advantageously” from lines 4, 6, 8, 10, 12-13, 16-17, 20, and 23, but it is still present in lines 5 and 9 and the claim remains rejected under 35 U.S.C. § 112(b) as being 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.
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 1-4, 7, 10-18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Denjean (WIPO International Publication No. WO 2019/030442 A1, published on 14 February 2019, provided by Applicant in IDS, references to English translation) in view of Bellandi et al. (WIPO Internation Publication No. 2018/229710 A1, published on 20 December 2018, provided by Applicant in IDS, hereafter referred to as Bellandi), Shirakawa et al. (European Patent Application No. EP 0289636 A1, published on 9 November 1988, provided by Applicant in IDS, hereafter referred to as Shirakawa), and Xu et al. (Plant Cell Rep. 2018, 37, 1611., hereafter referred to as Xu).
Denjean teaches the use of a composition comprising at least one non-ionic surfactant, derived from polyols, and a sterol to promote plant growth and improve its resistance to both biotic and abiotic stress (Abstract). Biotic stress is taught to result from living organisms, such as fungi, bacteria, and viruses, and abiotic stress is taught to result from water, salt, and heat, be it cold, frost, or heat shock (pg. 2, para. 4 and 7). Denjean teaches that the goal of their invention is to stimulate natural mechanisms within plants that enhance growth, such as boosting nutrient absorption and efficiency, as well as enhancing tolerance to stresses both biotic and abiotic in nature (pg. 2, para. 14). These goals are achieved by “combining a nonionic surfactant derived from polyols and a sterol” to create a composition which can be applied to plants (pg. 2, para. 16-24). The composition is taught to be capable of broad spectrum use on a large number of crops (pg. 2, final para.) and subsequently improves the economy of use for farmers as it requires fewer applications, does not impact the environment, and does not induce resistance in plants (pg. 3, para. 4-8).
The at least one non-ionic surfactant in the composition of Denjean is taught to be a fatty acid ester of a sugar, in one embodiment being sucrose stearate (pg. 3, para. 13-15). The sterol of the composition is taught to optionally be a species of “plant sterols such as campesterol, beta-sitosterol, stigmasterol, brassicasterol, campestanol, [or] sitostanol”, and in a preferred embodiment beta-sitosterol (pg. 3, para. 16-17). The composition is taught to be “in solution, advantageously in the form of an aqueous solution”, and the surfactant/sterol mixture is taught to be 0.01-80% by weight of the composition, indicating water comprises 20-99.9% by weight, significantly overlapping with the ranges recited in instant claims 15-18 (pg. 3, para. 18). In one embodiment, the composition is taught to comprise beta-sitosterol in an amount of 1-40% by weight of the surfactant/sterol mixture and sucrose stearate is the complement to 100%, that is 60-99% by weight (pg. 3, para. 19-21). In the examples (pg. 4-7), the compositions applied to plants comprise 1-10% by weight of the beta-sitosterol and sucrose stearate mixture and 90-99% by weight of water.
The composition is taught to be applied to plants before or after emergence, at any point in the plant’s growth cycle, to any part of the plant, or to the soil (pg. 3, para. 9). Application methods are taught to include spraying, watering, which is interpreted as irrigation, and immersion/coating of the seed prior to planting (pg. 3, para. 10). The plants to which the composition may be applied include vegetable crops, fruit trees, and industrial crop plants, among others (pg. 3, para. 12).
Denjean does not teach their composition to comprise phytosterols in addition to b-sitosterol or to comprise the surfactant sucrose palmitate, the rate of spraying the composition, the particle size in the composition, nor the application of the composition to soybeans. These deficiencies are offset by the teachings of Bellandi, Shirakawa, and Xu.
Bellandi teaches concentrated suspensions containing phytosterols, a process for manufacturing them, and their use to stimulate plant growth (Abstract). Phytosterols are taught to play a “fundamental role in the physiology of animals and plants”, and the most important sterols in plants, termed “phytosterols” when produced by plants, are taught to be campesterol, sitosterol, stigmasterol, and brassicasterol (pg. 1, lines 8-13). The preferred embodiment of the suspension taught by Bellandi includes b-sitosterol, stigmasterol, campesterol, and brassicasterol (pg. 5, line 22 - pg. 6, line 2). The amounts of each sterol in the phytosterol mixture, by weight, are taught to be 40-45% b-sitosterol, 20-30% stigmasterol, 20-25% campesterol, and 1-5% brassicasterol, significantly overlapping with the ranges recited in instant claims 1 and 4 (pg. 6, lines 3-8).
The non-ionic surfactants of the composition, described as “wetting agents”, are taught by Bellandi to preferably be esters of sorbitan and ethoxylated fatty alcohols (pg. 6, lines 21-22). The preferred concentration of the non-ionic surfactants is taught to be 1-5% of the concentrated suspension (pg. 5, lines 18-19). Bellandi teaches that concentrated suspensions with phytosterols in an amount >25% by weight are preferred, but their process can also be used for suspensions with phytosterols present in an amount <25% (pg. 4, lines 12-14 and pg. 5, lines 10-14). The first step in the process of Bellandi is taught to be grinding the components of their composition until the average particle size is less than 10 mm, with the goal of achieving suspensions that are stable over time, with no thickening observed, and are easy to pour and suitable for use in the agricultural sector (pg. 4, lines 10-16). In addition to the surfactant(s) and phytosterols, the composition is taught to optionally include additional compounds for improving biological activity, such as mineral salts, biocides, and preservatives (pg. 7, line 22 - pg. 8, line 3). After addition of the surfactant(s), phytosterols, and additional compounds, the “completement to 100 consists of the solvent, i.e. water” (pg. 8, line 4). In Examples 1-3, compositions comprise 31.6% by weight of the phytosterol mixture and 32.3% water.
The suspensions of Bellandi are taught to show high biostimulating activity, stimulating the growth of plants without imparting phytotoxicity (pg. 8, lines 5-10). One aspect of the biostimulation is “stimulating the metabolism of plants also in the presence of stress (cold, salinity of the soil), determining the development and enlargement of the fruit and also preventing senescence of the plant” (pg. 8, lines 12-14). The suspensions are taught to be applied via the leaves, fertigation, or seed tanning as a “method for stimulating plant growth in cultivated areas” (pg. 8, lines 15-23). The preferred dosage to obtain sufficient activity is taught to be 0.05-4.0 L/ha, which significantly overlaps with the range recited in instant claim 13 (pg. 9, lines 1-2).
Shirakawa teaches an emulsified or solubilized sterol composition in an aqueous solution that contains sucrose fatty acid esters (Abstract). The sterols of the composition are taught to possibly include, among others, campesterol, b-sitosterol, stigmasterol, and brassicasterol (pg. 2, line 50 - pg. 3, line 2). In the examples, composition No. 1 is taught to include a sterol mixture with the following concentrations: 50% b-sitosterol, 15% stigmasterol, 28% campesterol, and 7% brassicasterol (pg. 4, Table 1). Preferred examples of sucrose fatty acid esters are taught to be monoesters with sucrose and C10-24 fatty acids, including palmitic and stearic acid (pg. 3, lines 3-6). In a preferred embodiment, the sucrose fatty acid esters are sucrose monopalmitate and sucrose monostearate (pg. 3, lines 6-8 and Examples 1-2). The sucrose fatty acid ester(s) are taught to be present in an amount of 0.5-10 parts by weight per part by weight of the sterol(s), which significantly overlaps with the ratios recited in instant claims 4-5 and 16 (pg. 3, lines 19-22).
Xu teaches that soybean (Glycine max) has become one of the most important crops globally (pg. 1611, right column, para. 1). However, water deficit “dramatically limits growth and yield for soybean” and while irrigation can be a remedy for soybean crops under drought stress, only 9% of soybean acreage is taught to be irrigated in the U.S. (pg. 1612, left column, para. 1). In 2012, drought stress is taught to have led to the loss of 4.63 million tons of soybean crops in the U.S. and “[i]t is predicted that the future drought events will occur more frequently due to climate change” (pg. 1612, left column, para. 1). Soybean consumption is predicted to continue rising due to the ongoing rise in human population worldwide, so there is a clear need for drought resistance in soybean crops (pg. 1612, left column, para. 1).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). These guidelines apply to the percentage of b-sitosterol in the phytosterol mixture, mass ratio of sterols to surfactants, spraying rate, mass composition of water and the sterol/surfactant mixture, and particle size.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Denjean, Bellandi, Shirakawa, and Xu to arrive at the method of instant claims 1-18 because combining prior art elements according to known methods yields predictable results. Denjean teaches a method of protecting plants from biotic stress, induced by sources including fungi, bacteria, and viruses, and abiotic stress, induced by water and heat, involving the application of a composition comprising sucrose stearate and b-sitosterol. The composition is aqueous, with water comprising 20-99.9% of the weight, and may be applied before or after emergence via spraying, irrigation, and immersion/coating of the seed. An artisan would have been motivated to include the phytosterols campesterol, stigmasterol, and brassicasterol in view of the teachings of Bellandi because the reference teaches that those three phytosterols, in addition to b-sitosterol, are the most important to plants. Bellandi also teaches an appropriate ratio of sterols in the phytosterol mixture, with b-sitosterol accounting for 40-45% by weight. An artisan would further be motivated to grind the components of their composition to be <10 mm average particle size because Denjean does not teach a required particle size, but Bellandi teaches this size limitation to be important to achieving a stable aqueous suspension which comprises surfactants and phytosterols. Finally, an artisan would be motivated to use the spraying rate of 0.05-4.0 L/ha taught by Bellandi because Denjean does not teach a spraying rate and Bellandi teaches the dosing to provide “sufficient activity”.
In view of the teachings of Shirakawa, an artisan would be motivated to use sucrose palmitate in addition to sucrose stearate because the reference teaches both surfactants to be compatible with the phytosterol mixture of b-sitosterol, campesterol, stigmasterol, and brassicasterol. Denjean uses sucrose stearate with b-sitosterol, but does not teach its utility or stability when additional phytosterols are present. An artisan would be motivated to use surfactants that produce a stable, useful composition, and sucrose stearate and palmitate are both taught to provide a stable composition when b-sitosterol, campesterol, stigmasterol, and brassicasterol are present. Finally, an artisan would be motivated to apply the surfactant and sterol composition to soybeans because Xu teaches that the crop is globally important and susceptible to water-related stress, which Denjean teaches can be ameliorated by application of a surfactant and sterol composition. As a result, there is reasonable expectation of success in arriving at the method of instant claims 1-4, 7, 10-18 and 21 in view of the teachings of Denjean, Bellandi, Shirakawa, and Xu.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Denjean (WIPO International Publication No. WO 2019/030442 A1, published on 14 February 2019, provided by Applicant in IDS, references to English translation) in view of Bellandi (WIPO Internation Publication No. 2018/229710 A1, published on 20 December 2018, provided by Applicant in IDS), Shirakawa (European Patent Application No. EP 0289636 A1, published on 9 November 1988, provided by Applicant in IDS), and Xu (Plant Cell Rep. 2018, 37, 1611.) as applied to claims 1-4, 7, 10-18 and 21 above, and further in view of Fang et al. (Plant Growth Regul. 2001, 33, 87., hereafter referred to as Fang) and Lück et al. (Ch. 21, Benzoic Acid. Antimicrobial Food Additives. pp. 174, Springer-Verlag Berlin Heidelberg New York, 1997., hereafter referred to as Lück).
Denjean, Bellandi, Shirakawa, and Xu teach the above, and particularly relevant to claim 20, Denjean and Bellandi teach their compositions to include additional adjuvants, or active products, to protect plants and “prevent the action of plant pests” (Denjean, pg. 3, para. 3-4) or improve biological activity (Bellandi, pg. 7, lines 23-26).
Denjean, Bellandi, Shirakawa, and Xu do not teach the adjuvants in their composition to include 2,2’-bipyridine or benzoic acid nor the quantity of either. This deficiency is offset by the teachings of Fang and Lück.
Fang teaches the role of jasmonates, naturally occurring growth regulators that can promote leaf senescence, in inducing senescence in plants (Abstract and pg. 87, Introduction). Methyl jasmonate (MJ) was taught to promote senescence “as a consequence of free radical-induced lipid peroxidation” and superoxide was taught to serve as a source for further active hydroxyl radicals, catalyzed by the presence of transition metals such as iron and copper (pg. 87, Introduction). In attempt to inhibit peroxidation of lipids by free radicals, which are in turn the result of transition metal-catalyzed reactions, Fang studied the ability of three metal chelating agents to sequester said transition metals (pg. 88, Results and discussion).
Increasing the concentration of methyl jasmonate in rice leaves progressively promoted senescence as early as one day post MJ treatment (pg. 88, Results and discussion, para. 1). Fang concludes that methyl jasmonate brought about lipid peroxidation alongside an increase in the level of H2O2 and teaches that free radical scavengers, including glutathione and sodium benzoate, have been shown to be effective in preventing MJ-promoted senescence of plant leaves (pg. 88, Results and discussion, para. 2). The metal chelators 2,2’-bipyridine (bpy), 8-hydroxylquinoline (HQ), and 1,10-phenanthroline (phen) were investigated and all were taught to reduce MJ-promoted senescence of rice leaves (pg. 88-89, Results and discussion, para. 3). The most effective chelator was taught to be bpy and is taught to have an optimum concentration of 1 mM (pg. 89, left column, para. 1). In 1L of an aqueous solution, assuming the density is roughly 1 g/mL and given the molar mass of bpy is 156.2 g/mol, 1 mM of bpy is roughly equivalent to 0.016% w/w, which falls within the range recited in instant claim 20.
Lück teaches the use of benzoic acid as a preservative, which dates back to 1875, and has utility in many fields due to its low price and easy synthesis (pg. 174, 21.2 History). Benzoic acid is taught to be particularly useful against yeast and molds, with lesser effectiveness toward bacteria, but has been used to prevent food spoilage in the presence of all three (pg. 178, 21.9.2 Spectrum of Action). In the context of acidic fruits, benzoic acid is taught to be useful as a preservative, and in the context of vegetables, it was previously used as a preservative before “changes in eating habits” (pg. 179, 21.10.2 Fruit and Vegetable Products). In each case, the concentration used is taught to be ~0.1-0.2% w/w (pg. 179, 21.10.2 Fruit and Vegetable Products).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, to modify the invention rendered obvious by the teachings of Denjean, Bellandi, Shirakawa, and Xu with the teachings of Fang and Lück because the combination of compounds known in the art to have particular characteristics with an agricultural composition yields predictable results. Denjean taught the composition of their method to include additional adjuvants, or active products, as plant growth regulators or to “prevent the action of plant pests” (Denjean, pg. 3, para. 4). Bellandi also taught their composition to optionally include additional compounds for improving biological activity, such as mineral salts, biocides, and preservatives (pg. 7, line 22 - pg. 8, line 3). However, neither reference taught specific growth regulators beyond sterols, specific preservatives, nor the quantity of these additional compounds. An artisan would be motivated to include bpy at a concentration of ~0.016% w/w as a plant growth regulator because Fang taught it to inhibit leaf senescence, which is undesirable in a growing crop. An artisan would be further motivated to add benzoic acid to their composition because Lück teaches it to be a food-safe preservative, when used in small quantities, that has been known to be effective at inhibiting yeast and mold growth since the 19th century. Lück teaches that the compound is often used in plant products at a concentration of ~0.1-0.2% w/w, therefore an artisan would be motivated to try using benzoic acid at that concentration. As a result, there is a reasonable expectation of success in arriving at the invention of instant claim 20 in view of the teachings of Denjean, Bellandi, Shirakawa, and Xu and further in view of the teachings of Fang and Lück.
Response to Arguments
The Applicant’s arguments, filed on 30 December 2025, have been fully considered but are not persuasive.
In para. 1 of pg. 11, Applicant argues that the instant application is drawn to a preventative treatment and that it is distinct from the “curative” treatments taught by the prior art. Applicant cites a publication from the journal Can. Fam. Physician and an article from the French Ministry of Public Action and Accounts to define preventative treatments – the Examiner notes that both pieces of non-patent literature are drawn to treating humans, not plants.
In response to Applicant's arguments against the references individually, 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).
Applicant argues in the para. that spans the bottom of pg. 11 and top of pg. 12 that the Denjean reference is not a preventative treatment because it teaches application of a composition that is diluted with water, which Applicant states is an example of an abiotic stressor. This is not found to be persuasive, because the mere presence of water does not mean that stress is induced – as an ordinary artisan would recognize, plants require water to survive. Further, instant claim 1 requires the presence of water and, following Applicant’s argument, would also be inducing stress following application and would not be considered a preventative treatment.
In para. 2 of pg. 12, Applicant argues that the Bellandi reference “does not mention any sequence of treatment application in relation to stress, let alone preventative use”. On pg. 4 of the instant specification, Applicant has defined “before the onset of abiotic stress” to include both the occurrence of the stress and the appearance of the stress (see, e.g., lines 21-23 of pg. 4 of the instant specification). Therefore, the teachings of Denjean that their composition may be applied to plants before or after emergence, at any point in the plant’s growth cycle, and that the composition improves plant resistance to both biotic and abiotic stress via stimulation of natural plant mechanisms, clearly suggest to one of ordinary skill in the art that the composition may be applied before the onset of abiotic stress and at the onset of the stress before the appearance of the stress on the plant, which is necessarily preventative treatment and Applicant’s argument is found unpersuasive.
In the para. that spans the bottom of pg. 12 and top of pg. 13, Applicant argues that the Bellandi reference does not teach a phytosterol: surfactant ratio that is within the range recited in amended instant claim 1. In addition, Applicant argues in para. 2 of pg. 13 that the Bellandi reference teaches phytosterols to comprise ≥25% of their composition, which falls outside of the range of 0.5-10% w/w recited in amended instant claim 1. These arguments are not found persuasive because the rejection above rendered the referenced ranges obvious over the teachings of Denjean in view of Bellandi, Shirakawa, and Xu, not the teachings of the Bellandi reference alone.
Applicant further argues in the para. that spans the bottom of pg. 13 and top of pg. 14 that a composition that treats a condition “does not predictably extend to using the composition to prevent a condition” (bold added for emphasis). As stated above, the Denjean reference suggests that the composition may be applied to plants before or after emergence, at any point in the plant’s growth cycle, and that the composition improves plant resistance to both biotic and abiotic stress via stimulation of natural plant mechanisms, which encompasses application of their composition prior to the onset of abiotic stress as well as during the abiotic stress before the appearance of abiotic stress on the plant, which is necessarily a preventative treatment, and Applicant’s argument is not found to be persuasive.
Applicant argues in para. 2 of pg. 14 that the Shirakawa and Xu references do not teach compositions comprising phytosterols to prevent abiotic stress. These assertions were not made in the non-final Office Action mailed on 1 July 2025, and the argument is not found to be persuasive.
From the final para. of pg. 14 to para. 1 of pg. 15, Applicant argues that they have unexpectedly found “that the application of the [claimed] composition before stress…increases yield compared to application of the composition after stress”. Guidelines on determining whether results are expected or unexpected are provided in MPEP § 716.02. To demonstrate that results are unexpected and significant, the Applicant has the responsibility of presenting evidence that establishes “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). “Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims” (bold added for emphasis). See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e).
Applicant has compared the application of a composition taught in U.S. Patent Application Publication US 2024/0023545 (U.S. Patent No. 12,070,032 B2) as Example 1 in Table 1 before and after “a drought stress”. The exact composition of Example 1 is unclear – Table 1 of Patent ‘032 comprises 3.5% w/w polyethylene glycol (PEG)-200, 2.5% w/w of a phytosterol mixture with CAS No. 949109-75-5, 8% w/w sucrose stearate, 0.4% w/w methyl tetradecanoate, 84.9% w/w water, and 0.7% w/w benzyl alcohol. The exact composition of the phytosterol mixture with CAS No. 949109-75-5 is also unclear - the specification of Patent ‘032 (col. 9, line 64 - col. 10, line 3) states that the compositions of their invention comprise “0.2% to 10% of the composition by weight of a mixture of phytosterols containing β-sitosterol, with the β-sitosterol advantageously representing at least 30% of the mixture by weight, and the balance comprising a mixture of campesterol, stigmasterol and brassicasterol, with the overall mixture corresponding even more advantageously to CAS number [949109-75-5]” (bold added for emphasis). The greatest detail that can be surmised is that Example 1 contains 2.5% w/w of a phytosterol mixture that comprises β-sitosterol, campesterol, stigmasterol, and brassicasterol, with β-sitosterol comprising ≥30% w/w of the mixture.
The comparison of Example 1 being applied before and after a “drought stress” is not a persuasive demonstration of unexpected and surprising results. The only comparison allowed by the information provided is the impact of one composition being applied before or after an applied stressor, as compared to a control which is not described. Further, the observation that yield of a crop improves after the application of a known composition prior to stress is not unexpected and surprising. As discussed above, the Denjean reference also teaches that application of a composition comprising phytosterols, water, and surfactants before or after emergence, at any point in the plant’s growth cycle, and that the composition improves plant resistance to both biotic and abiotic stress via stimulation of natural plant mechanisms, which encompasses application of the composition prior to the onset of abiotic stress as well as during the abiotic stress before the appearance of abiotic stress on the plant.
The Applicant has not demonstrated unexpected results commensurate in scope with the claimed invention. “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d). Only one example outside the claimed “range” (that is, prior to inducing abiotic stress) has been provided and no other compositions are compared to the claimed composition.
Finally, the Applicant also has not compared their invention with the closest prior art. See MPEP § 716.02(e). The comparison provided in the remarks is the application of a composition from another patent, which shares common ownership with the instant application and does not qualify as prior art under 35 U.S.C. § 102(b), before and after an undetailed “drought stress”. A comparison with the closest prior art should include a comparison to another composition comprising phytosterols, at least one surfactant, and water, such as the composition taught by Denjean, rather than the same composition. As a result, Applicant’s claim of unexpected results is not found to be persuasive.
In the para. that spans the bottom of pg. 15 and top of pg. 16, Applicant argues that the Fang and Lück references do not teach the “components of claim 20”, which is interpreted as the mixture of surfactant, phytosterols, and aqueous and oily phases recited in instant claim 16. This is not found persuasive because the Office Action mailed on 1 July 2025, did not state that the Fang and Lück references taught those components. As stated above, the rejection of claim 20 was based upon the combination of references and 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).
Double Patenting
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7, 10-18 and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 30 of prior U.S. Patent No. 12,070,032 B2 in view of Xu (Plant Cell Rep. 2018, 37, 1611.), Denjean (WIPO International Publication No. WO 2019/030442 A1, published on 14 February 2019, provided by Applicant in IDS, references to English translation), Bellandi (WIPO Internation Publication No. 2018/229710 A1, published on 20 December 2018, provided by Applicant in IDS), Fang (Plant Growth Regul. 2001, 33, 87.) and Lück (Ch. 21, Benzoic Acid. Antimicrobial Food Additives. pp. 174, Springer-Verlag Berlin Heidelberg New York, 1997.).
Patent ‘032 recites in claim 30 a method of limiting dry matter loss due to abiotic stress that comprises applying a composition, diluted in water, to a plant. The composition, described as a slurry, comprises an emulsion of phytosterols and surfactants. The phytosterols are b-sitosterol, present in at least 30% by weight of the phytosterol mixture, and campesterol, stigmasterol, and brassicasterol, the latter three the complement to 100% of the phytosterol mixture. The phytosterol mixture is recited as being “between 0.2% and 10% of the composition by weight”. Two surfactants are recited in the composition, the first being sucrose stearate, which is present in an amount of 0.2-10% of the composition by weight, and the second being sucrose palmitate, which is present in an amount of 0.01-5% of the composition by weight.
Patent ‘032 does not recite the application of their method to the specific plant soybean, specific abiotic stressors, their method to protect against biotic stress, the application method, particle sizes, nor the composition to comprise the additional components bpy and benzoic acid. These deficiencies are offset by the teachings of Xu, Denjean, Bellandi, Fang, and Lück.
Xu, Denjean, Bellandi, Fang, and Lück have been described above.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to modify the method of claim 30 of Patent ‘032 to apply to soybean crops in view of Xu because the latter reference teaches that the crop is globally important and susceptible to water-related stress, from which the above method protects plants. An artisan would be motivated to apply the above method to soybean crops because there would be a clear demand for the method from farmers growing soybean crops. Denjean teaches that a method comprising application of a phytosterol/surfactant composition can protect plants from biotic stress, induced by sources including fungi, bacteria, and viruses, and abiotic stress, induced by water and heat. An artisan would be motivated to use the composition of claim 30 of Patent ‘032 to protect plants in this manner because it is an expanded utility of a composition with overlapping components.
An artisan would further be motivated to grind the components of their composition to be <10 mm average particle size because Patent ‘032 does not recite a required particle size, but Bellandi teaches this size limitation to be important to achieving a stable aqueous suspension which comprises surfactants and phytosterols. Additionally, an artisan would be motivated to use the spraying rate of 0.05-4.0 L/ha taught by Bellandi because ‘032 does not recite an application or a spraying rate and Bellandi teaches the dosing to provide “sufficient activity” to plants.
Finally, Denjean taught the composition of their method to include additional adjuvants, or active products, as plant growth regulators or to “prevent the action of plant pests” (Denjean, pg. 3, para. 4). Bellandi also taught their composition to optionally include additional compounds for improving biological activity, such as mineral salts, biocides, and preservatives (pg. 7, line 22 - pg. 8, line 3). However, neither reference taught specific growth regulators beyond sterols, specific preservatives, nor the quantity of these additional compounds. An artisan would be motivated to include bpy at a concentration of ~0.016% w/w as a plant growth regulator because Fang taught it to inhibit leaf senescence, which is undesirable in a growing crop. An artisan would be further motivated to add benzoic acid to their composition because Lück teaches it to be a food-safe preservative, when used in small quantities, that has been known to be effective at inhibiting yeast and mold growth since the 19th century. Lück teaches that the compound is often used in plant products at a concentration of ~0.1-0.2% w/w, therefore an artisan would be motivated to try using benzoic acid at that concentration. As a result, the invention of instant claims 1-4, 7, 10-18 and 20-21 is patentably indistinct from the method recited in claim 30 of patent ‘032 in view of Xu, Denjean, Bellandi, Fang, and Lück.
Claims 1-4, 7, 10-18 and 20-21 are directed to an invention not patentably distinct from claim 30 of commonly assigned U.S. Patent No. 12,070,032 B2 in view of Xu, Denjean, Bellandi, Fang, and Lück. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned U.S. Patent No. 12,070,032 B2, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-4, 7, 10-18 and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 8, and 10-12 of U.S. Patent No. 11,779,019 B2 in view of Denjean (WIPO International Publication No. WO 2019/030442 A1, published on 14 February 2019, provided by Applicant in IDS, references to English translation), Bellandi (WIPO Internation Publication No. 2018/229710 A1, published on 20 December 2018, provided by Applicant in IDS), Fang (Plant Growth Regul. 2001, 33, 87.) and Lück (Ch. 21, Benzoic Acid. Antimicrobial Food Additives. pp. 174, Springer-Verlag Berlin Heidelberg New York, 1997.).
Both instant claims 1-4, 7, and 10-18 and Patent No. ‘019 recite a method for biostimulating a plant via application of a composition comprising an aqueous solution of b-sitosterol and sucrose stearate in a ratio of 0.25 (Claim 1). The biostimulation of the method is recited as combating abiotic stress in a plant, either before or after emergence, which is interpreted as being preventative (claims 2 and 8). The plants to which the method can be applied include cereals, vegetable plants, fruit trees, and plants for industrial cultivation, among others (claim 10). Claim 11 of ‘019 recites the aqueous composition to comprise 0.01-80% by weight of the phytosterol/surfactant mixture, resulting in water comprising 20-99.9% by weight of the solution. Finally, claim 12 of ‘019 recites the method to include application via spraying, watering, immersion of seeds, and coating of seeds.
Claims 1-2, 8, and 10-12 of U.S. Patent No. 11,799,019 B2 do not recite specific abiotic stresses, additional phytosterols beyond b-sitosterol, treating against biotic stress, the rate of spraying, nor the particle size. These deficiencies are offset by the teachings of Denjean, Bellandi, Fang and Lück.
Denjean, Bellandi, Fang and Lück have been described above.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to use the method recited by Patent No. ’019 to protect plants against the specific abiotic stresses of heat and water, as well as against biotic stresses such as fungi, bacteria, and viruses, in view of the teachings of Denjean because the latter teaches that the application of a composition comprising b-sitosterol and sucrose stearate provides such protective effects. An artisan would be motivated to include additional phytosterols beyond b-sitosterol, specifically campesterol, stigmasterol, and brassicasterol, in view of the teachings of Bellandi because both Denjean and Bellandi teach those phytosterols to be the most important to plants, and Bellandi provides a mixture with exact ratios of each phytosterol to use in a composition alongside a sugar-fatty acid ester surfactant.
Further, Bellandi teaches the particle size required to obtain a stable, easily pourable emulsion. An artisan would be motivated to require this particle size limitation in the method of Patent No. ‘019 because the patent does not teach the information and a stable emulsion is desirable. An artisan would be motivated to use the rate of spraying taught by Bellandi because ‘019 teaches that their method may be delivered via spraying, but does not teach a rate at which to spray the composition - information that is required for practice of the method. Finally, Denjean and Bellandi both taught their compositions to optionally include additional compounds for improving biological activity, but neither reference taught specific compounds nor their quantities. An artisan would be motivated to include bpy at a concentration of ~0.016% w/w as a plant growth regulator because Fang taught it to inhibit leaf senescence, which is undesirable in a growing crop. An artisan would be further motivated to add benzoic acid to their composition because Lück teaches it to be a food-safe preservative, when used in small quantities, that has been known to be effective at inhibiting yeast and mold growth since the 19th century. Lück teaches that the compound is often used in plant products at a concentration of ~0.1-0.2% w/w, therefore an artisan would be motivated to try using benzoic acid at that concentration. As a result, the invention of instant claims 1-4, 7, 10-18 and 20-21 is patentably indistinct from the invention recited in claims 1-2, 8, and 10-12 of U.S. Patent No. 11,779,019 B2 in view of Denjean, Bellandi, Fang, and Lück.
Claims 1-4, 7, 10-18 and 20-21 are directed to an invention not patentably distinct from claims 1-2, 8, and 10-12 of commonly assigned U.S. Patent No. 11,779,019 B2 in view of Denjean, Bellandi, Fang, and Lück. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned U.S. Patent No. 11,779,019 B2, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Arguments
A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by the Applicant showing that the claims subject to the restriction are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
From the final para. of pg. 16 to para. 1 of pg. 17, Applicant argues that the instant claims are not obvious in view of Patent ‘032 because the patent teaches their composition in the form of a “suspo-emulsion”, rather than a slurry. As noted by the Applicant, Patent ‘032 also recites application of their composition in the form of a slurry in claim 30. In addition, Applicant recites in instant claim 16 that their slurry comprises water and a base containing an oil-in-water emulsion, para. [0087] of the instant specification defines a slurry as a “base according to the invention diluted in water or in a solution comprising water and one or more active ingredients”, and the distinction between a “slurry” and a composition containing water and an emulsion is unclear. As a result, the argument is found unpersuasive.
In the penultimate para. of pg. 17, Applicant argues that copending U.S. Patent Application No. 18/731,135 recites their composition in the form of a suspo-emulsion rather than a slurry and therefore does not render the instant claims obvious. This rejection has been withdrawn and the argument is therefore moot.
Finally, in the penultimate para. of pg. 18, Applicant argues that because the claims of U.S. Patent No. 11,799,019 are directed to “biostimulating a plant”, they do not render obvious the preventative methods of the instant claims. This is not found to be persuasive because Patent ‘019 recites in claim 2 that “biostimulating” includes “combating an abiotic stress” and “stimulating one or more natural defense mechanisms against abiotic stress”.
New Grounds of Objection
Claim Objections
Claim 10 is objected to because it recites “the complement to 100% being” in line 2. Clarity would be improved if the word “being” was replaced with the word “is”, resulting in the phrase “the complement to 100% is”.
Appropriate correction is required.
New Grounds of Rejection
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 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 10 recites “the completement to 100% being campesterol, stigmasterol and brassicasterol”. It is unclear whether this limitation refers to the three recited phytosterols, when combined with b-sitosterol, summing to 100% the slurry of phytosterols, or the three recited phytosterols combined with the water and base sum to 100%, rendering the claim indefinite. Applicant may overcome this rejection by amending the claim to clarify which quantity is complemented by campesterol, stigmasterol, and brassicasterol.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean J. Steinke, Ph.D., whose telephone number is (571) 272-3396. The examiner can normally be reached Mon. - Fri., 09:00 - 17:00 ET.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619