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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/01/2026 has been entered.
Applicants’ arguments, filed 04/01/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 – Indefiniteness
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 24 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 24 recites the limitation "the method" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
1) Claims 12, 19, 20, 22, 24 and 26 are rejected under 35 U.S.C. 103 as being obvious over Matahira et al. (JPH09143013A, publication date 06/03/1997; citing English Machine translation) in view of Jiu-xing et al. (Chinese Journal of Agrometeorology, December 2019, v. 41, no. 12, p. 783-792; cited in IDS 4/17/26).
The applied reference Jiu-xing et al. (Chinese Journal of Agrometeorology, December 2019, v. 41, no. 12, p. 783-792) has a common joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Matahira discloses a “plant vitalizing agent is made to contain chitin oligosaccharide and at least one selected from chitosan, chitosan oligosaccharide and salts thereof” [abstract]. “[T]he chitin oligosaccharide, one or more selected from N-acetylchitobiose, N-acetylchitotriose, N-acetylchitotetraose, N-acetylchitopentaose and N-acetylchitohexaose” [p. 6, para. 2]. “When diluted in water, it is preferable to dilute the chitin oligosaccharide to 0.0001 to 0.1%, chitosan, chitosan oligosaccharide and its salt to 0.01 to 1% before use” [ p. 7, first full para., lines 4-5].
Matahira does not disclose xylo-oligosaccharide and cello-oligosaccharide.
Jiu-xing studied the effect of single component and mixtures of oligosaccharides on growth, yield and performance of lettuce [abstract]. According to Jiu-Xing a mixtures (ZH-M) of cello-oligosaccharides (ZH-A), xylo-oligosaccharides (ZH-B), and
chitosan oligosaccharides (ZH-C) at a 1:1:1 mass ratio “showed the best effects on lettuce growth, such as the above and underground biomass and the quality characters” [abstract].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the cello-oligosaccharides and xylo-oligosaccharides of Jiu-xing with the plant vitalizing composition of Matahira, which comprises chitosan oligosaccharides, at a 1:1:1 ratio. One would have been motivated to make this combination because Jiu-xing discloses that the combination of cello-oligosaccharides, xylo-oligosaccharides and chitosan oligosaccharides at a 1:1:1 ratio provides the best plant vitalizing effect, as desired by Matahira. One would have had a reasonable expectation of success because Jiu-xing specifically discloses cello-oligosaccharides and xylo-oligosaccharides works with chitosan oligosaccharides which are present in the composition of Matahira.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed mass ratio of cello-oligosaccharides to xylo-oligosaccharides (0.2 to 2 or 1:5 to 2:1; instant claim 19 | 0.5 to 1 or 1:2 to 1:1; instant claim 24) and the mass ratio of the exogenous elicitor to endogenous elicitor (0.3-5 or 1:3 to 5:1; instant claim 26) overlap with the mass ratio of the prior art (1:1 ratio of cello-oligosaccharides to xylo-oligosaccharides; 1:2 ratio of exogenous to endogenous elicitor) and so a prima facie case of obviousness exists.
Additionally, given the 1:1:1 ratio cello-:xylo-:chitosan oligosaccharides the prior art teach a composition comprising 0.0001 to 0.1% chitin, 0.0001 to 0.1% chitosan oligosaccharides (0.0002-0.2% exogenous elicitor) and 0.0001 to 0.1% cello- oligosaccharides and 0.0001-0.1% xylo- oligosaccharides (i.e., 0.0002-0.2% endogenous elicitor). Therefore, the claimed range of 0.1-500ppm (i.e., 0.00001-0.05% w/w; instant claim 20) of exogenous and endogenous elicitor overlaps with the range of the prior art (0.0004-0.4%) and so a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a plant vitalizing composition comprising at least one N-acetylchitobiose, N-acetylchitotriose, N-acetylchitotetraose, N-acetylchitopentaose or N-acetylchitohexaose, cello-oligosaccharides and xylo-oligosaccharides. Wherein the exogenous and endogenous elicitors are present within the instantly claimed range. Wherein the xylo and cello oligosaccharides are present within the instantly claimed mass ranges and the exogenous and endogenous elicitors are present within the instantly claimed mass ranges. Because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e. cultivating cotton wherein the cotton species is hirsutum (i.e., instant claim 22).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
2) Claims 12, 19, 20, 22, 24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Matahira et al. (JPH09143013A, publication date 06/03/1997; citing English Machine translation) in view of Souza et al. (Plant Physiology, 2017, vol. 173, p. 2383-2398) and Adachi et al. (CA 1,332,880, publication date 11/08/1994; previously cited).
Matahira discloses a “plant vitalizing agent is made to contain chitin oligosaccharide and at least one selected from chitosan, chitosan oligosaccharide and salts thereof” [abstract]. According to Matahira the composition elicits a response that has “have an antibacterial activity against a pathogenic bacterium of a plant having synergistically, and [as compared to] when they are used alone, a significantly superior disease resistance imparting effect and a growth promoting effect is obtained” [abstract & p. 5, para. 3]. “[T]he chitin oligosaccharide, one or more selected from N-acetylchitobiose, N-acetylchitotriose, N-acetylchitotetraose, N-acetylchitopentaose and N-acetylchitohexaose” [p. 6, para. 2]. “When diluted in water, it is preferable to dilute the chitin oligosaccharide to 0.0001 to 0.1%, chitosan, chitosan oligosaccharide and its salt to 0.01 to 1% before use” [ p. 7, first full para., lines 4-5].
Matahira does not disclose xylo-oligosaccharide and cello-oligosaccharide.
Souza discloses oligomers derived from cellulose are perceived as signal molecules [abstract]. Souza found that cotreatments of cellobiose (i.e., cello-oligosaccharide) with chitooligomers led to synergistic increases in gene expression “suggesting that plant cells may be able to respond defensively earlier and at lower doses of mixtures of elicitors likely to be found in the infection court” [abstract & p. 2, col. 1, last para.]. According to Souza the chitooligomers are chitin oligomers hydrolyzed from shrimp shells [p. 2394, col. 2, last para.]. Souza disclosed that “typical treatments consisted of eliciting molecules at saturating concentrations: 100 ug mL-1 chitin, … and 100 uM cellobiose” (i.e., 0.01% w/w chitin) [p. 2395, col. 1, para. 1].
Adachi discloses a "method for cultivating plants comprises using a plant growth accelerating oligosaccharide" [abstract]. The methods comprise applying to the plant at least one growth accelerating oligosaccharide selected from a group comprising xylooligosaccharide and cellooligosaccharide [p. 116, claims 1-2]. Adachi discloses xylo-oligosaccharide demonstrates plant growth-accelerating action in amounts from 0.00025% to 0.25% [p. 55, line 13 – p. 56, line 18).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the cellobiose of Souza with the composition comprising chitin oligomers disclosed by Matahira. A skilled artisan would have been motivated to combine these elements because Souza discloses the combination of chitin oligomers and cellobiose (cello-oligosaccharide) has a synergistic effect in eliciting a defensive response in plants, as desired by Matahira. A skilled artisan would have had an expectation of success because Matahira and Souza both relate to eliciting a plant response to promote growth and disclose composition comprising similar concentrations of chitin oligomers. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art."” MPEP 2144.06 (I).
In the present case, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the xylo-oligosaccharide composition of Adachi with the cellobiose and chitin oligomer composition taught by Matahira and Souza because both compositions were disclosed for the very same purpose, promoting plant growth. A skilled artisan would have had a reasonable expectation of success because Adachi teaches cello- and xylo-oligosaccharides may be used together and Souza discloses chitin and cello-oligosaccharides may be used together.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a composition comprising chitin oligosaccharide, a cello-oligosaccharide and a xylo-oligosaccharide. Wherein the chitin oligosaccharide is N-acetylchitobiose, N-acetylchitotriose, N-acetylchitotetraose, N-acetylchitopentaose or N-acetylchitohexaose. Because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e. cultivating cotton wherein the cotton is hirsutum (i.e., claim 22).
Regarding instant claims 19, 20, 24 and 26, According to Matahira “[w]hen diluted in water, it is preferable to dilute the chitin oligosaccharide to 0.0001 to 0.1%, chitosan, chitosan oligosaccharide and its salt to 0.01 to 1% before use” [ p. 7, first full para., lines 4-5].
Souza disclosed that “typical treatments consisted of eliciting molecules at saturating concentrations: 100 ug mL-1 chitin, … and 100 uM cellobiose” (i.e., 0.01% w/w chitin and 342.3g/mol1 cellobiose*(0.0001mol/L)*(1L water/ 1000g water) or 0.00342% w/w cellobiose) [p. 2395, col. 1, para. 1].
Souza does not disclose an amount of xylo-oligosaccharide.
Adachi discloses xylo-oligosaccharide demonstrates plant growth-accelerating action in amounts from 0.00025% to 0.25% [p. 55, line 13 – p. 56, line 18).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed weight ratio ranges of cello- to xylo-oligosaccharide (0.2 to 2 and 0.5 to 1; instant claims 19 and 24) overlaps with the range taught by the prior art (e.g., 0.00342% w/w cellobiose to 0.0025-0.025% xylo-oligosaccharide; ratio from 0.14 to 1.4). Additionally the instantly claimed range of for the concentration of exogenous and endogenous elicitors of 0.1 to 500ppm by mass (i.e., 0.00001-0.05% w/w; instant claim 20) overlaps with the range taught by the prior art (e.g., 0.01% w/w chitin, 0.00342% w/w cellobiose and 0.025% xylo-oligosaccharide; 0.03742% w/w exogenous and endogenous elicitor). Finally, the instantly claimed mass ratio of exogenous elicitor to endogenous elicitor of 0.3 to 5 (i.e., 1:3 -5:1; instant claim 26) overlaps with the range taught by the prior art (e.g., 0.01% w/w chitin to 0.00342% w/w cellobiose and 0.025% xylo-oligosaccharide; 0.35 or 1:2.8). Therefore, a prima facie case exists for each range disclosed in instant claims 19, 20, 24 and 26.
3) Claims 1, 2, 8-10, 23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Matahira et al. (JPH09143013A, publication date 06/03/1997; citing English Machine translation) in view of Souza et al. (Plant Physiology, 2017, vol. 173, p. 2383-2398) and Adachi et al. (CA 1,332,880, publication date 11/08/1994; previously cited) as applied to claims 12, 19, 20, 22, 24 and 26 above, and further in view of Linden et al. (US 2013/0260993 A1, publication date 10/03/2013).
Matahira, Souza and Adachi, which are taught above, differ from the instant claims insofar as they do not teach a method of cultivating cotton.
Linden discloses a composition comprising chitin and chitosan to induce systemic resistance and immunity in plants for the benefit of plant growth [abstract]. According to Linden “[t]he invention works to bioactivate non-food crops, such as cotton lint harvest yields” [0111].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
In the present case it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have applied the plant vitalizing composition taught by Matahira, Souza and Adachi to cotton because Linden discloses composition comprising chitin and chitosan elicit a response in cotton to promote plant growth. One would have been motivated to and had an expectation of success because Linden disclose it is suitable to apply elicitor composition comprising chitin and chitosan to cotton in order to impart disease resistance and promote plant growth.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have cultivated cotton by applying to the plant the composition taught by Matahira, Souza and Adachi, as discussed above, which comprises chitin oligosaccharide, a cello-oligosaccharide and a xylo-oligosaccharide. Wherein the chitin oligosaccharide is N-acetylchitobiose, N-acetylchitotriose, N-acetylchitotetraose, N-acetylchitopentaose or N-acetylchitohexaose. Wherein the weight ratios of cello- to xylo- oligosaccharides are within the instantly claimed ranges, as discussed above (i.e., instant claims 8 and 23). Wherein the endogenous and exogenous elicitors are present within the instantly claimed ranges, as discussed above (i.e., instant claim 9). Wherein the weight ratio of exogenous to endogenous elicitor is within the instantly claimed range, as discussed above (i.e., instant claim 25).
Regarding instant claim 2, Linden discloses the composition is applied to propagules [abstract] which includes seedlings [0019]. Linden teaches applying the composition to a seedling ten days after germination [0058].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed range of 2-15 days after germination overlaps with the prior art and so a prima facie case of obviousness exists.
Regarding instant claim 10, Linden discloses that “[u]se of the chitin and chitosan and micronutrient trace elements of the present invention as an irrigation or foliar treatment provides contact of the chitin and chitosan and micronutrient trace elements with receptors on the plant cell surface, which initiates signal transduction path ways that result in defense responses and enhanced vigor of seedlings” [0076].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have applied the composition taught Matahira, Souza and Adachi by the foliar treatment of Linden. One would have been motivated to combine these prior art elements because Linden discloses foliar application provides contact with the receptors of the plant cell surface and so the composition can enhance the vigor of seedling. A skilled artisan would have had an expectation of success because Linden discloses it is suitable to applying a composition comprising chitin by foliar application. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have cultivated cotton by applying the composition taught by Matahira, Souza and Adachi by foliar application.
4) Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Matahira et al. (JPH09143013A, publication date 06/03/1997; citing English Machine translation) in view of Souza et al. (Plant Physiology, 2017, vol. 173, p. 2383-2398), Adachi et al. (CA 1,332,880, publication date 11/08/1994; previously cited) and Linden et al. (US 2013/0260993 A1, publication date 10/03/2013) as applied to claims 1, 2, 8-10, 12, 19, 21 and 22-26 above, and further in view of Shanghai Institute for Biological Sciences (CN 1316882C, publication date 08/18/2004; citing English machine translation; previously cited).
Matahira, Souza, Adachi and Linden, which are taught above, differ from the instant claims insofar as they do not teach applying the composition at least once after the seedling stage. Matahira discloses the composition imparts a disease resistance effect [abstract].
Shanghai Institute for Biological Sciences discloses a composition comprising chitosan oligosaccharides and discloses “[t]he invention also discloses the preparation method of the composition and its application in providing plant disease resistance. The composition of the invention can strongly activate the defense response of plants such as rice, thereby enhancing disease resistance” [abstract]. Furthermore, the composition is preferably applied from the seedling stage to the adult plant stage (i.e., applied at least once to the seedling of the plant and at least once thereafter) [p. 10, para. 3] of plants such as cotton [p. 9, para. 5].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the treatment regimen of Shanghai Institute for Biological Sciences with the composition taught by Matahira, Souza, Adachi and Linden. One would have been motivated because Shanghai Institute for Biological Sciences discloses it is preferred to apply chitosan oligosaccharide plant elicitors from the seedling stage to the adult stage. One would have had an expectation of success because the compositions of the prior art serve the same purpose, i.e., plant elicitors to promote growth and disease resistance, and use similar components, i.e., chitosan oligosaccharides. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have cultivated cotton by applying the composition taught by Matahira, Souza, Adachi and Linden to cotton after the seedling stage.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Matahira et al. (JPH09143013A, publication date 06/03/1997; citing English Machine translation) in view of Souza et al. (Plant Physiology, 2017, vol. 173, p. 2383-2398), Adachi et al. (CA 1,332,880, publication date 11/08/1994; previously cited) and Linden et al. (US 2013/0260993 A1, publication date 10/03/2013) as applied to claims 1, 2, 8-10, 12, 19, 21 and 22-26 above, and further in view of Nix et al. (Nix et al., Plants, 2017, 6, 43; previously cited).
Matahira, Souza, Adachi and Linden, which are taught above, differ from the instant claims insofar as they do not teach hirsutum as the species of cotton.
Nix discloses that G. hirsutum is of great economic importance and makes up 97% of the worlds cotton production [Introduction, para. 1].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have cultivated cotton, specifically G. hirsutum, by applying the composition taught by Matahira, Souza, Adachi and Linden because Nix discloses G. hirsutum is economically important. Additionally, one would have been motivated to cultivate G. hirsutum according to Matahira, Souza, Adachi and Linden because Nix discloses it makes up 97% if the worlds production. One would have had an expectation of success because Linden discloses the composition may be applied to cotton.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have cultivated cotton by applying a composition comprising chitin oligosaccharides, cellooligosaccharides and xylooligosaccharides. Wherein the chitin oligosaccharides are N-acetylchitobiose, N-acetylchitotriose, N-acetylchitotetraose, N-acetylchitopentaose or N-acetylchitohexaose, and the cotton is G. hirsutum.
Response to Arguments
1) On page 7 of their remarks, Applicant argues the combination of exogenous and endogenous elicitors has a synergistic effect. Applicant cites examples 4 and 7 and comparative examples 4 and 5 of Table 1 (reproduced below).
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This argument is not persuasive. the results must fairly compare with the prior art, (ii) the results must truly be unexpected and (iii) the claims must be commensurate in scope. MPEP §716.02. The burden rests with Applicant to establish results are unexpected and significant. MPEP §716.02(b). Applicant's showing of allegedly unexpected results does not satisfy any of these requirements.
i. In the present case applicant has not compared the inventive examples to the closest prior art. The closest prior art is Souza at the first paragraph of page 2395: “typical treatments consisted of eliciting molecules at saturating concentrations: 100 ug mL-1 chitin, … and 100 uM cellobiose” (i.e., 0.01% w/w chitin and 342.3g/mol1 cellobiose*(0.0001mol/L)*(1L water/ 1000g water) or 0.00342% w/w cellobiose).
ii. It appears applicant has demonstrated synergy between chitin oligosaccharide and the combination of cello- xylo-oligosaccharide when the mass ratios are 1:1:1 and 1:1:2 (chitin:cello:xylo) as compared to chitin oligosaccharide applied alone and cello- and xylo-oligosaccharides applied together at a 1:2 cello:xylo mass ratio.
However, "A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue." In re Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). In Corkhill, the claimed combination showed an additive result when a diminished result would have been expected. This result was persuasive of nonobviousness even though the result was equal to that of one component alone. Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately (i.e., demonstrating "synergism"). Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). However, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (Evidence showing greater than additive sweetness resulting from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was not sufficient to outweigh the evidence of obviousness because the teachings of the prior art lead to a general expectation of greater than additive sweetening effects when using mixtures of synthetic sweeteners.) (see MPEP 716.02(a).I.).
In the present case the prior art teaches that cellobiose (i.e., cello-oligosaccharides) in combination with chitooligomers causes “synergistic increases in gene expression, suggesting that plant cells may be able to respond defensively earlier and at lower doses of mixtures of elicitors likely to be found in the infection court” (see Souza at [p. 2384, col. 1, last sentence]. Therefore, a skilled artisan would have expected the greater than additive results demonstrated by applicant. Specifically, a skilled artisan would have expected that combining the endogenous elicitors comprising cello oligosaccharides with the chitin oligosaccharides would have resulting in a greater than additive effect.
iii. The "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support" (see MPEP 716.02(d) quoting In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)). In the present case the objective evidence is not commensurate in scope the claims because the independent claim does not recite mass ratios. Furthermore, it is not clear how the mass ratios disclosed in the inventive examples would reasonably represent the mass ratios of the dependent claims. Finally, it is not clear from the specification as originally filed what specific chitin oligosaccharides are used in the examples and there is no explanation as to why the exemplary chitin oligosaccharides reasonably represent the claimed chitin oligosaccharides. Therefore, the examiner cannot determine if the claims are commensurate in scope with the objective evidence in regard to the chitin oligosaccharides.
2) On page 7 of their Remarks, Applicant argues the claimed ratio is critical to the unexpected results.
This argument is not persuasive. In addition to the reasons discussed above, this argument is not persuasive because 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). (MPEP 716.02(d)). In the present case applicant has not provided any examples outside the claimed ranges.
Accordingly, the Examiner is not able to determine if the claimed ranges are truly critical to the function of the invention.
Technological Background
The prior art made of record is considered pertinent to applicant's disclosure. National Center for Biotechnology Information (2026). PubChem Compound Summary for CID 439178, Cellobiose. Retrieved May 1, 2026 from https://pubchem.ncbi.nlm.nih.gov/compound/Cellobiose. PubChem is pertinent for teaching the molecular weight of cellobiose.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612
1 NCBI PubChem Compound Summary for CID 439178, Cellobiose. Retrieved May 1, 2026.
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