DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1-7, 9-10, 14-15 are objected to because of the following informalities: cancelled claims should contain no text but these claims contain a period which is text. Deleting the period would overcome this objection.
Claim 8 is objected to because of the following informalities: the claim is missing a comma after Iaccarino, and the claim should read as follows: …wherein the pest is selected from the list consisting of: whiteflies: Tialeurodes…Iaccarino; thrips: Frankliniella…Lindeman; red spiders:…Baker & Pritchard; Phyllocnistis…; Spodoptera…; Helicoverpa…; and psyllids: …erytrae; …
Appropriate correction is required.
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.
Claims 8, 11-13, and 16-19 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.
Claims 8 and 19 have been amended to recite the dispenser. However, there is no dispenser disclosed or required by the applying step in claims 8 or 19 which makes it unclear where “the dispenser” these claims now refer to in the amended claims came from and as such there is insufficient antecedent basis for this limitation in the claims.
Claims 11-13 and 16-18 are also rejected because they depend either directly or indirectly from claim 8 and do not resolve the above ambiguities.
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.
Claim(s) 8, 11, 16-17, and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lopez-Gresa et al. (Front. Plant. Sci., 2018, 9, article 1855, pg. 1-12) as evidenced by Perez-Hedo et al. (BioControl, 2018, 63, 203-213).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 8, 17-19, Lopez-Gresa teaches a method of/for protecting plants against pests comprising stimulating natural defense mechanisms of said plants, specifically tomato plants which are horticultural plants and/or citrus genus as per claim 17, wherein the method comprises the claimed active step of contacting/treating the plants with a compound of applicant’s formula I or a composition comprising a compound of applicant’s formula I, specifically wherein the compound is the instantly claimed (Z)-3-hexenyl propanoate and the claimed (Z)-3-hexenyl acetate (abstract; materials and methods section; Figure 1; Results section specifically treatment with (Z)-3-hexenyl butyrate induces… which states that treatments with HP significantly reduced bacterial growth; discussion section pg. 10, left col. 1st full paragraph), and Lopez-Gresa teaches wherein this application is in the absence of pests selected from those listed in claim 19 (see entire document; abstract; materials and methods section; Figure 1; Results section specifically treatment with (Z)-3-hexenyl butyrate induces… which states that treatments with HP significantly reduced bacterial growth; discussion section pg. 10, left col. 1st full paragraph).
Regarding applicant’s limitation wherein the application of the at least one compound induces a natural defense mechanism of the plant against the claimed arthropod pests and the application is prior to the arthropod inducing the natural defense mechanism, this is result effective of the applying step/would be properties which occur with the application of the claimed active to the claimed plants which is taught by Lopez-Gresa. Thus, because Lopez-Gresa teaches applying/contacting the plants with the claimed compounds of formula I prior to the arthropod pests inducing the natural defense mechanism, e.g. prior to presence of the claimed pests. Thus, Lopez-Gresa’s application in the absence of the claimed pests reads on the claimed application prior to the arthropod pests inducing the natural defense mechanism by damaging the plants. Thus, application of this compound prior to the presence of any arthropod pests still obviously reads on the instantly claimed method as Lopez-Gresa is accomplishing the only active step, the applying step of the claimed active to the claimed plants.
Regarding claims 8 and 11, Lopez-Gresa teaches wherein dispensers, specifically different cotton buds containing 5 µM of the claimed (Z)-3-hexenyl propanoate or the claimed Z-3-hexenyl acetate are used to release/diffuse the (Z)-3-hexenyl propanoate or the claimed (Z)-3-hexenyl acetate onto the plants and wherein the dispenser is a passive emitter, specifically a hydrophilic cotton bud which allows for the diffusion of the compound of formula into the environment surrounding the plant (abstract; materials and methods section; Figure 1; Results section specifically treatment with Z-3-hexenyl butyrate induces… which states that treatments with HP significantly reduced bacterial growth; discussion section pg. 10, left col. 1st full paragraph).
Regarding claims 16, 18-19, as evidenced by Perez-Hedo the claimed plant volatile (Z)-3-hexenyl-propanoate is a known natural defense repellent agent for B. tabaci, and the claimed (Z)-3-hexenyl-propanoate is known to attract the claimed Encarsia sp. specifically E. formosa as is instantly claimed in claim 16 (abstract; Materials and Methods; Headspace collection of volatiles section; olfactory response to HIPV section; Results section entire section; Discussion section (2nd – 3rd paragraphs)). Further, these claims are directed to properties of the claimed compound when applied as claimed which is taught by Perez-Hedo, and because these are properties of (Z)-3-hexenyl-propanoate, it is known, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Especially since the induction of the natural plant defenses can be any plant defense to any degree as the claim does not specify the specific natural defense for instance in claim 8.
Regarding claim 18, the induction/activation of a natural defense mechanism of the plant to which the compound of formula I is applied would be result effective of the applying step which is taught by Lopez-Gresa as discussed above. Thus, because Lopez-Gresa teaches the only active step of the claimed method to the same plants with the same compounds it would also obviously be inducing/activating an overexpression of a salicyclic acid pathway or a jasmonic acid pathway as is now claimed whether or not it was previously recognized by the prior art because Lopez-Gresa teaches the same active steps of applying the same compound to the same plants, prior to the presence of the claimed arthropods inducing the natural defense mechanism as is instantly claimed and as such it would induce the same effects and pathways on the plants.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)/ Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Lopez-Gresa does not teach wherein the dosage of the (Z)-3-hexenyl propanoate applied to the environment surrounding the plants by the dispenser is between 25 mg/ha/day and 25 g/ha/day. However, as Lopez-Gresa teaches the claimed method of/for protecting plants against pests comprising stimulating natural defense mechanisms of said plants, specifically tomato plants which are horticultural plants and/or citrus genus as per claim 17, wherein the method comprises the claimed active step of contacting/treating the plants with a compound of applicant’s formula I, specifically (Z)-3-hexenyl propanoate and the instantly disclosed (Z)-3-hexenyl acetate (abstract; materials and methods section; Figure 1; Results section specifically treatment with (Z)-3-hexenyl butyrate induces… which states that treatments with HP significantly reduced bacterial growth; discussion section pg. 10, left col. 1st full paragraph), and Lopez-Gresa teaches wherein this application is in the absence of pests selected from those listed in claim 19 (see entire document; abstract; materials and methods section; Figure 1; Results section specifically treatment with (Z)-3-hexenyl butyrate induces… which states that treatments with HP significantly reduced bacterial growth; discussion section pg. 10, left col. 1st full paragraph). Thus, Lopez-Gresa already teaches accomplishing the claimed method(s) and because it was already known in the art to perform the claimed method(s) with the claimed compound(s) it would be obvious to optimize the amounts of Lopez-Gresa to read on the newly claimed range of 25 mg/ha/day to 25 g/ha/day because it is known, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lopez-Gresa et al. (Front. Plant. Sci., 2018, 9, article 1855, pg. 1-12) as evidenced by Perez-Hedo et al. (BioControl, 2018, 63, 203-213) as applied to claims 8, 11, 16-17, and 18-19 above and further in view of Fouquet (MU5301717-9).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Lopez-Gresa as evidenced by Perez-Hedo teaches the method of claims 8, 11, 16-17, and 18-19 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not teach wherein the dispenser consists of a nebulizer that produces an aerosol. However, this deficiency in the combined references is addressed by Fouquet.
Fouquet teaches that nebulizers for effectively covering crops in aerosols are known in the art for delivering dense homogenous mist/aerosol of active agents to crops and are able to uniformly cover all parts of the crop plants (see 9th paragraph of description in machine English translation that is attached).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have used the claimed nebulizer as the dispenser for treating the plants with the claimed active agents as taught by the combined references when growing in fields because Fouquet teaches that nebulizers are effective for covering crops in aerosols and are known in the art for delivering dense homogenous mist/aerosol of active agents to crops and are able to uniformly cover all parts of the crop plants. Thus, the nebulizer would be an obvious choice for developing the most effective method of treating/coating plants with the claimed active compounds for stimulating the natural defense mechanisms of the treated plants because of its effectiveness in homogenously covering all parts of the treated crop plants with the aerosol.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lopez-Gresa et al. (Front. Plant. Sci., 2018, 9, article 1855, pg. 1-12) as evidenced by Perez-Hedo et al. (BioControl, 2018, 63, 203-213) as applied to claims 8, 11, 16-17, 18-19 above and further in view of Zhu et al. (WO00/62608).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Lopez-Gresa as evidenced by Perez-Hedo teaches the method of claims 8, 11, 16-17, and 18-19 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not teach wherein the dispenser is a liquid or gel composition that contains the compound of formula 1 and is formulated to allow diffusion of said compound into the environment. This deficiency in the combined references is addressed by Zhu.
Zhu teaches that it was known to treat plants with volatile agents in liquids which are allowed to emit/diffuse the volatile agent to the plant(s)/area around plants as the liquid/water evaporates, etc. e.g. is formulated to allow diffusion of said compound into the environment (pg. 6, ln. 17-24; Claims 17-18; pg. 2, ln. 23-24).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formulated the compounds diffused by Lopez-Gresa, specifically the instantly claimed (Z)-3-hexenyl propanoate as liquid formulations which are allowed to evaporate and diffuse the volatiles around plants, etc. e.g. via chemigation, etc. as taught by Zhu because these are known methods of applying/emitting/diffusing volatile active agents to plants and the areas where plants are growing, e.g. soil/locus of plants. One of ordinary skill in the art would be motivated to use this means of applying the active for diffusion because it can be mixed with irrigation water and as the water evaporates the compound will diffuse into the environment and it is a cost effective way to deliver the compound as plants need water to survive and will save time as the compound can merely be added to the irrigation water which many farmers already use to water crops.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
Applicant’s amendments to the drawings and applicant’s amendments to the claims have overcome the previous objections and 102 rejections.
Applicant’s amendments have prompted the revised grounds of rejection under 103 presented herein. Applicant’s arguments have been fully considered, and insofar as they pertain to the revised grounds of rejection are addressed herein.
Applicants first argue that the discovery of a new use of an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using. The examiner agrees with this statement/case law from the MPEP. However, the instantly claimed active steps were being taught by Lopez-Gresa, specifically the application of the claimed (Z)-3-hexenyl propanoate or compositions comprising this compound to plants wherein the application is prior to the presence of the claimed arthropod pests, e.g. the claimed method(s) does not/do not require the presence of any of the disclosed/argued arthropod pests. The claimed method is result effective of the applying step which is taught by the prior art and was result effective of this step whether or not it was recognized by the prior art. As discussed above this is result effective of the applying step, specifically the claimed method is a property of the claimed compound when it is applied to the claimed plants which are taught by Lopez-Gresa and further it would be obvious to apply the composition via the dispensers in the claimed rates because it is known in the art to optimize the amounts of active agents in a composition in order to form the most effective composition and method(s) wherein the composition is being used because, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Especially since as evidenced by Santamaria et al. (Plants, 2020, 9(4), 464) that the claimed Tetranychus urticae pests use open stomata on plants to attack the plants/feed on the plants and as such the closing of the stomata which occurs by application/diffusion of the instantly claimed compound as taught by Lopez-Gresa does protect plants against the claimed pests because it closes the stomata through which the Tetranychus urticae readily feed thereby invoking natural defenses of the plants from Tetranychus urticae (See entire document; 3rd paragraph introduction section; spider mite counter defenses section) contrary to applicant’s arguments that the stomata closure of Lopez-Gresa is not defensive to the claimed pests and would be largely ineffective. Thus, the examiner disagrees with these arguments based on the teachings of Lopez-Gresa and the added evidence of Santamaria which has been added to address applicant’s arguments.
Further, as claimed the application occurs prior to the pest inducing the natural defense mechanism which is result effective of the applying step because as is evidenced by Santamaria the closing of the stomata which is reported by Lopez-Gresa is a natural defense to the claimed pests, Tetranychus urticae, and this applying step is the only active step in the claimed method because the application of the claimed active in Lopez-Gresa is/can be/reads on application before the presence of any of the claimed pests in the area. Thus, the application of the claimed compound as taught by Lopez-Gresa would obviously induce a natural defense mechanism in the plants/crops because this result, is an effect of the applying step because this applying step was already known in the art the method of the prior art was already accomplishing the claimed method whether or not it was recognized by the prior art. Further, as discussed above Lopez-Gresa still reads on the instant claims because Lopez-Gresa is performing the only active step of the instantly claimed methods prior to pest presence which reads on/ the active steps of the claimed method(s) especially since it is routine for one of ordinary skill in the art to optimize the amounts of the known (Z)-3-hexenyl propanoate or compositions comprising this compound in order to develop the most effective plant defense compositions and method as taught by Lopez-Gresa.
Thus, the examiner maintains that it would be obvious to one of ordinary skill in the art to optimize the amounts of the claimed (Z)-3-hexenyl-propanoate to afford the most effective stomata closure which the same defense effects taught by Lopez-Gresa for the reasons discussed above because as evidenced by Santamaria this stomata closure is a natural defense mechanism against the claimed Tetranychus urticae pests because they use the stomata to easily insert their retractable stylet through/into the plant without damaging the plant to inject their saliva to predigest the mesophyll cell content and then suck this content to feed from the plant without detection (i.e. damaging cells on the plant surface) and as such by pre-closing this easy route for the pests to feed on the plants without damaging the surface plant cells, the plants themselves are invoking natural defenses to these claimed pests by making it harder for the pests to feed from the plant without inferring cell damage which would further trigger the plant’s natural defenses.
Thus, whether or not applicants have found yet another benefit of application of the claimed (Z)-3-hexenyl-propanoate to the same plants already disclosed by Lopez-Gresa prior to any pest presence in the area/on the plants which reads on the claimed prior to the pest inducing the natural defense mechanism does not render the claimed method patentable at this time because the claimed method is already obviously occurring in Lopez-Gresa because Lopez-Gresa is performing the exact same active steps with the same (Z)-3-hexenyl-propanoate in/on the same plants prior to pest presence and as such is obviously achieving the claimed methods whether or not they were recognized by the prior art as is discussed above. Especially since applicants have not provided data showing any criticality of the claimed amounts now required by all of applicant’s claims.
Thus, contrary to applicants arguments that Lopez-Gresa does not teach the claimed pests, the instant method does not actually require the presence of the claimed pests as the only active step is the applying step to the claimed plants prior to presence of the pests/prior to any induction of the natural defense system by the claimed pests, which reads on prior to the presence of the claimed pests. Because Lopez-Gresa teaches the claimed applying step of the claimed active agent prior to the presence of claimed insect pests Lopez-Gresa still reads on the instant claims as written. Applicants then further argue on their pg. 9 that Lopez-Gresa does not acknowledge resistance of the plants to the claimed arthropod pests and as such cannot read on the claimed knowledge. The examiner disagrees for the reasons discussed above and herein.
Applicants then argue Perez-Hedo and that the combination of the references is inappropriate. The examiner respectfully points out that Perez-Hedo is used as evidence that the claimed compound when applied to the claimed plants is a known natural defense repellent agent for the disclosed pest B. tabaci, and the claimed (Z)-3-hexenyl-propanoate is known to attract the claimed Encarsia sp. specifically E. formosa as is instantly claimed in claim 16. Thus, the application step(s) of Lopez-Gresa would obviously be accomplishing the claimed method especially since the only active step of the method(s) occur when the pests are not present as they are currently written. Thus, the evidence provided by Perez-Hedo does further support that Lopez-Gresa’s application step does render obvious the instant claims especially since it is known, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Applicants then argue that nothing in the disclosure of Perez-Hedo would conclude that the claimed compound “vaccinates” plants to induce long-term systemic defenses. The examiner again respectfully points out that Perez-Hedo is not the primary or only reference used in the rejection. The rejection is Lopez-Gresa in view of Perez-Hedo. Thus, Perez-Hedo does not have to teach all of the argued features. Additionally the only active step of the claimed method is the applying step which is taught by Lopez-Gresa and the instant claims do not require any of these long-term systemic defenses as argued as this is not present in applicants claims as written and as such it appears applicant’s are arguing features which are not actually required by applicant’s claims. Applicant’s argue that the combined references only teach the known compound not the known property. The examiner respectfully points out that applicant’s newly found property is result effective of the claimed applying step on the claimed plants which is taught by Lopez-Gresa as discussed above. Thus, the induction of a natural defense as claimed is something which happens due to the active applying step on the claimed plants which is taught by Lopez-Gresa. If these natural defenses of applicant’s are not being accomplished by the method of applying the claimed compound (as taught by Lopez-Gresa) to the claimed plants (as taught by Lopez-Gresa) since Lopez-Gresa teaches applying the same compound to the same plants then the examiner invites applicants to provide such evidence which would help to distinguish the instant claims from the prior art. Especially in light of the additional evidence provided in response to applicant’s arguments from Santamaria which teaches that the closing of the stomata as taught by Lopez-Gresa is a natural defense of the plants to at least some of the claimed pests as discussed above which is contrary to applicant’s arguments about the closing of the stomata not being defensive.
Applicants further argue that the newly claimed concentrations are not mere optimization. The examiner respectfully disagrees because as discussed above the claimed compound and/or compositions thereof were already known in the art to function as were attractive to the claimed parasitoid species as is evidenced by Perez-Hedo and that the claimed compounds are repellent to the disclosed pests (as this is a property of the claimed compound). It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have optimized the amounts of compounds of formula I, specifically (Z)-3-hexenyl-propanoate because it was already known in the art to apply this compound to the claimed to plants to stimulate natural defense mechanisms of said plants and attract the claimed parasitoids which also help to control the claimed. As such, it would have been obvious to one of ordinary skill in the art to optimize the amount of (Z)-3-hexenyl-propanoate used to treat the claimed plants in order to form the most effective method of stimulating the natural defense mechanisms of the claimed plants especially since the claimed compound was already known in the art to exert these effects when applied prior to the presence of the argued arthropod pests. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, it does not appear that applicants have established any criticality of their claimed range or that the claimed amounts lead to unexpected effects as explained above and herein especially since the claimed natural defenses include any natural defense to any degree. Thus, at this time the examiner respectfully maintains that it would be obvious to optimize the amounts of the method in Lopez-Gresa in order to provide effective amounts of (Z)-3-hexenyl propanoate or compositions thereof to the claimed plant species and which also provide the known insect repellent effects as taught by Perez-Hedo. Further, applicants argue that their newly claimed range is critical to their invention but have demonstrated no criticality of the range as argued, e.g. that other concentrations outside of the claimed range do not work to induce any natural defenses of the plants to any of the claimed pests to any degree which is all that is required by applicants claimed method as it is currently written. The examiner also notes that as instantly claimed any plant defense which would defend the plants in any way to any degree from the claimed pests reads on the instantly claimed “induces a natural defense mechanism of the plant…” as stated in applicant’s claims as they are currently written. Thus, for these reasons because no specific natural plant defense and no specific level/degree of defense is required by applicant’s claims the examiner respectfully maintains that it would be obvious to optimize the concentration of the claimed (Z)-3-hexenyl propanoate in order to apply the most effective dosages for keeping the stomata of the plant closed to defend from the claimed pests, e.g. Tetranychus urticae, more effectively and that it would be obvious to optimize the dosage in order to provide the most effective stomatal closure for a crop area/plants in order to effectively induce natural defense mechanisms to protect the plants from the claimed pests especially in the absence of evidence to the contrary. Applicant’s further argue that they have evidence of criticality of their claimed range, but the examiner respectfully points out that these results are not commensurate in scope with the claimed method which allows for any natural defense to be induced to any degree. Further, it does not appear that applicants have provided comparison of their method to the closest prior art Lopez-Gresa which does teach that their method does induce natural defenses to claimed pests by closing the stomata (as evidenced by Santamaria which was provided as evidence in response to applicant’s arguments with respect to the stomata closure above) and as such at this time the examiner respectfully maintains that it would be obvious to optimize the method of Lopez-Gresa to apply the claimed concentrations of the claimed (Z)-3-hexenyl propanoate to plants in order to form the most effective method of inducing the natural defenses of the plants to the claimed pests, e.g. inducing more effective/longer-term stomata closure due to application of the claimed (Z)-3-hexenyl propanoate as this is obvious based on the teachings of Lopez-Gresa and combined reference(s) as discussed above and because “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the other arguments with respect to the 103 rejection, applicants then argue that the combination of the prior art does not teach each and every limitation in applicant’s amended claims because it no longer teaches the newly claimed dosage. The examiner disagrees for the reasons discussed above.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
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 Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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