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 .
THIS ACTION IS MADE FINAL.
Status of the Claims
The status of the claims filed 14 August 2025 is as follows:
Claims 1-20 are pending.
Claims 2-5 and 15-20 have been withdrawn.
Claims 6 and 7 have been cancelled.
Claims 1 and 8-14 have been hereby examined.
Claim Rejections - 35 USC § 103
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 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 and 8-14 remain rejected under 35 U.S.C. 103 as being unpatentable over Larkindale et al. (2004. Thermotolerance and antioxidant systems in Agrostis stolonifera: Involvement of salicylic acid, abscisic acid, calcium, hydrogen peroxide, and ethylene. Journal of plant Physiology. 405-412) and Polko et al (2019. 1-Aminocyclopropane 1-Carboxylic Acid and its Emerging Role as an Ethylene-Independent Growth Regulator. Frontiers in Plant Science. https://www.frontiersin.org/journals/plant-science/articles/10.3389/fpls.2019.01602/full#B55. Pages 1-9). The rejection has been modified for the reasons of record as set forth in the Office action Mailed 27 November 2024, as applied to claims 1 and 6-14. Applicant’s arguments filed 14 February 2025 have been fully considered but they are not persuasive.
The claims are broadly draw to a method of improving heat stress tolerance in corn plants comprising applying an effective amount of 1-amino-1-cyclopropanecarboxylic acid (ACC) to the corn plant wherein the effective amount is from about 10 to about 300 parts per million and wherein the application is a foliar spray.
Larkindale et al teach inducing thermotolerance (i.e. increase heat stress tolerance) by foliar application of 1-aminocyclopropant-1-carboxylic acid (ACC, a precursor of ethylene) [entire document; abstract; page 406, col. 2, Table]. Larkindale et al further teach that previous work has shown that pre-treating plants in certain endogenous signaling compounds, or pre-exposing plants to mild heat stress, can induce thermotolerance including ethylene (the end product of the ACC pathway) [page 406, left col., para. 3]. Larkindale et al study another monocotyledon plant, Agrostis stolonigera [entire document].
Larkindale et al teach that plants were allowed to grow for one month in a greenhouse and sprayed with ACC (which reads on wherein the ACC is applied to the plant) [page 406, rt. col. paras. 3-4]. Larkindale et al teach plants were given chemical pre-treatments by spraying the foliage prior to exposure to high temperature [page 406, rt. col., para. 4]. Larkindale et al found that pre-treatment with ACC improved heat stress [page 410, rt. col., para. 2; Figs 1(c)-6(c)]. Larkindale et al teach that the enhanced thermotolerance may be associated, at least in part, with the control and/or prevention of oxidative damage [page 412, lf. col., para. 4]. Larkindale et al teach that oxidative protection is an important component in determining the survival of a plant during heat stress. Larkindale et al found that the leaves of treated plants remained greener and the shoot density was higher than untreated control plants during heat stress [page 411, left col., para. 1]. Larkindale et al also found that heat-induced oxidative damage was reduced in plants pre-treated with ACC [page 411, rt. col., para 1].
Although Larkindale et al do not specifically teach wherein the plant is a corn plant, Larkindale et al’s methodologies were applied successfully to another monocotyledon plant, Agrostis stolonigera. Larkindale et al teach that what had been known in the art regarding heat stress is that heat induced injury to plants is associated with increases in oxidative damage in plants including perennial grasses and “other plant species.” Even though the primary reference doesn’t explicitly state what those other plant species are, it does refer to other references including studies including at least Nicotiana tabacum and Arabidopsis [page 406, left col., para. 1]. Thus, based on the literature, as taught by the primary ref, it is reasonable to conclude that the association of oxidative damage to plant with heat stress is not just seen in one single plant, not even just one type of plants, but rather both monocots (e.g. perennial grasses), and dicots (e.g. Arabidopsis and tobacco plants).
Larkindale et al do not specifically teach wherein the effective amount is from about 10 to about 30 parts per million.
Polko et al teach the 1-aminocyclopropane 1-carboxylic acid (ACC) is the direct precursor of the plant hormone ethylene and that exogenous ACC application has been used as a proxy for ethylene in numerous studies as it is readily converted by nearly all plant tissues to ethylene [Abstract]. Polko et al teach that ethylene regulates a wide range of developmental processes and responses to biotic and abiotic stress [page 1, para. 1]. Polko et al teach ethylene is involved in various stress-related responses such as wounding, pathogen infection, neighbor proximity, elevated temperatures, drought, soil waterlogging and submergence [page 4, left col., para. 1]. Polko et al teach ACC is compartmentalized within the tonoplast of Zea mays (maize) leaf mesophyll cells via a mechanism dependent on an electrochemical gradient and that the translocation of ACC conjugates into the vacuole likely plays a role in regulating ACC availability and/or ethylene levels [page 4, left col., para. 1]. Polko et al also teach that recent studies suggest that the signaling role of ACC could extend beyond the plant kingdom since many plant growth-promoting rhizobacteria (PGPR) possess ACC deaminase genes and utilize ACC as a source of nitrogen [page 6, left col., para. 2]. Polko et al teach that an increasing number of studies have established that ACC acts as a signaling molecule beyond it function in ethylene biosynthesis and appear to be involved in regulating multiple processes, including stress responses, cell expansion, cell wall function, stomal development, pathogen interactions and fertilization-related events [page 6, right col., para. 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the methodologies of Larkindale et al with another plant such as the corn plants as Polko et al. Larkindale et al’s methodologies were applied successfully to another monocotyledon, graminoid plant, Agrostis stolonigera. Polko et al teach that exogenous ACC application has been using in numerous studies using a myriad of plant and non-plant species and found that it regulates (via ethylene) a wide range of responses including elevated temperatures stresses. One would have been motivated to include corn with the methodologies of Larkindale et al because corn is another graminoid plant that is an agriculturally and economically important crop plant. One would have had a reasonable expectation of success given that success of Larkindale with another, similar monocotyledon plant. Furthermore, Polko et al showed that utility of ACC and ethylene in a wide range of plant species and non-plant species.
Although the reference does not specifically teach wherein the effective amount is from about 10 to about 30 parts per million, one skilled in the art at the time the filing was made would have been motivated to use such a concentration as a matter of routine optimization and experimentation. The adjustment of particular conventional working parameters such as concentration is deemed to be merely a matter of selection and routine optimization that is well within the purview of the skilled artisan. Accordingly, this type of modification would have been no more than an effort to optimize results. In the absence of any showing of criticality or unexpected results, the particular concentration is an obvious variation of what was taught in the prior art and could be arrived at during routine experimentation/optimization.
Furthermore, 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 (see MPEP 2144.05).
Applicant’s arguments dated 14 August 2025
Applicants urge that a skilled artisan could not have reasonable expectation that application of ACC to corn would have the same effect as applying ACC top creeping ben grass because of their differing abilities to react to heat stress. Applicants further urge that the skilled artisan would not have a reasonable expectation that applying ACC to corn would have any effect on thermoregulation over what corn already achieves endogenously via its superior photosynthetic pathway. [Response page 4].
These arguments have been carefully considered but are not deemed persuasive. The method steps of applying ACC to plants to increase stress tolerance in plants is well known in the art and taught by both Polko et al and Larkindale et al. Polko et al teaches that exogenous ACC application has been used as a proxy for ethylene in numerous studies as it is readily converted by nearly all plant tissues to ethylene. This statement alone suggests that nearly all plants and plant tissues have the ability to convert exogenously applied ACC to ethylene. Polko et al also teaches that ethylene is involved in various stress-related responses such as wounding, pathogen infection, neighbor proximity, elevated temperatures, drought, soil waterlogging and submergence. Given this teaching alone, one of skill in the art would have a reasonable expectation that ACC applied exogenously to a plant would be readily converted to ethylene and that ethylene is involved in stress-related responses including stresses involved with elevated temperatures. Larkindale et al reduces to practice the foliar application of ACC to a monocot plant, Bentgrass, that resulted in heat stress tolerance as measured by turf quality, photosynthesis and lipid peroxidation. Larkindale et al found that heat-induced oxidative damage was reduced in plants pre-treated with ACC. Based on the literature, as taught by the primary references, it is reasonable to conclude that the association of oxidative damage to plant with heat stress is not just seen in one single plant, not even just one type of plants, but rather both monocots (e.g. perennial grasses), and dicots (e.g. Arabidopsis and tobacco plants). Larkindale et al found that the leaves of treated plants remained greener and the shoot density was higher than untreated control plants during heat stress.
Obviousness does not require absolute predictability, however, at least some degree of predictability is required. MPEP 2143.02.). Larkindale et al teach inducing thermotolerance (i.e. increase heat stress tolerance) by foliar application of 1-aminocyclopropant-1-carboxylic acid (ACC, a precursor of ethylene) in bentgrass, another member of the Poaceae family. Larkindale et al further references a previous study in which pre-treating Arabidopsis plants with endogenous signaling compounds, including 1-aminocyclopropane-1-carboxylic acid (precursor to ethylene), protects the plant from heat-induced-induced oxidative damage and induces thermotolerance (page 406, left col. [003]: Larkindale and Knight 2002)). Polko et al teach that the 1-aminocyclopropane 1-carboxylic acid (ACC) is the direct precursor of the plant hormone ethylene and that exogenous ACC application has been used as a proxy for ethylene in numerous studies as it is readily converted by nearly all plant tissues to ethylene [Abstract]. Polko et al teach ethylene is involved in various stress-related responses such as wounding, pathogen infection, neighbor proximity, elevated temperatures, drought, soil waterlogging and submergence [page 4, left col., para. 1]. Given the combination of Larkindale and Polko, it would have been obvious to apply ACC to corn to induce heat stress tolerance given that “exogenous ACC application has been used as a proxy for ethylene in numerous studies as it is readily converted by nearly all plant tissues to ethylene” and that ethylene is involved in various stress-related responses such as wounding, pathogen infection, neighbor proximity, elevated temperatures, drought, soil waterlogging and submergence. One would have had a reasonable expectation of success given that given that success of Larkindale with another, similar monocotyledon plant, and the successes numerous other studies with different plants ranging from monocotyledons to dicotyledons and non-plant species. Polko et al showed the utility of ACC and ethylene in a wide range of plant species and non-plant species.
Furthermore, as well known in the industry and taught by the prior art, plants that are exogenously sprayed with ACC will have an increased tolerance to heat stress as compared to plants not sprayed with ACC. Applicants have shown this to be true in corn plants but have failed to show how these results are unexpected as Larkindale et al reduces to practice the invention in another monocot, Bentgrass. Furthermore, Applicants claim a number of other plants, wheat, lettuce, soybean and Brassica napus, in withdrawn claims 2-5 which confirms that the application of ACC is successful in a wide variety of mocot and dicot plants and thus, not unexpected.
Applicants have failed to provide evidence that applying ACC to another plant does not result in increase heat stress tolerance. Applicant urge that the resulting heat stress tolerance is unexpected and novel, however, has failed to show any data supporting this argument.
Conclusion
No claim is allowable.
THIS ACTION IS MADE FINAL. 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.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN M REDDEN whose telephone number is (571)270-0298. The examiner can normally be reached 730-6 Monday-Thursday.
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/KAREN M REDDEN/Primary Examiner, Art Unit 1661