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 3 October 2025, is acknowledged.
Claim 1 has been amended.
Claim 2 has been cancelled.
Claims 5-6, 9-13, 16-17, and 20 were previously withdrawn from consideration in the Office Action mailed on 25 July 2025.
Claims 1, 3-4, 7-8, 14-15, and 18-19 are pending and under consideration in the instant Office Action, to the extent of the following previously elected species:
the exogenous elicitor is a chitin oligosaccharide;
the endogenous elicitor is a xylooligosaccharide; and
the plant cultivated is rice.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejection of claim 2 under 35 U.S.C. § 112 is withdrawn in view of Applicant’s cancellation of the claim. The rejection of claims 3-4, 7-8, 14-15, and 18-19 under 35 U.S.C. § 112 is withdrawn in view of Applicant’s amendment to claim 1.
Double Patenting rejections
The terminal disclaimer filed on 3 October 2025, disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Numbers 17/619,627 (U.S. Patent 12,639,580), 17/619,821, 17/619,801, and 18/006,998 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The provisional nonstatutory double patenting rejections of claims 1, 3-4, 7-8, 14-15, and 18-19 over copending Application Nos. 17/619,627 (U.S. Patent 12,639,580), 17/619,821, 17/619,801, and 18/006,998 are withdrawn in view of the approved Terminal Disclaimer.
Maintained Rejections
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, 3-4, 7-8, 14-15, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yaizu Suisan Kagaku Kogyo Co. LTD (Japanese Patent Application Publication No. JPH09143013 A, published on 3 June 1997, provided by Applicant in IDS, references to English translation, hereafter referred to as Yaizu) in view of Konica Minolta Inc. (WIPO International Patent Publication No. WO 2015/059864 A1, published on 9 March 2017, references to English translation, hereafter referred to as Konica) and Katapodis et al. (J. Biosci. Bioeng. 2003, 95 (6), 630., hereafter referred to as Katapodis).
Yaizu teaches a plant-vitalizing agent containing chitin oligosaccharide that protects plants against pathogenic fungi and stimulates growth (Abstract and para. [0011]). Oligosaccharides, which are taught to be “polysaccharide fragments derived from the cell surface of the plant itself”, are recognized by plants as infection signals or “elicitors” which cause the plants to produce chemicals as a defense mechanism against pathogens (para. [0005]). Chitin oligosaccharides specifically are taught to have an elicitor effect on rice plants (para. [0006]). In addition to chitin oligosaccharide, the plant-vitalizing agent contains chitosan, a polysaccharide derived from chitin, chitosan oligosaccharide, and/or salts thereof (para. [0011]). The chitin oligosaccharide and other component(s) are present in a 1:1 to 1:50 ratio by weight (para. [0019]). When applied to plants, Yaizu teaches spraying the solution directly onto plants or diluting with water prior to spraying, with a preferable concentration of 0.0001-0.1% chitin oligosaccharide and 0.01-1.0% of the other component(s), equivalent to 1-1,000 ppm and 100-10,000 ppm, respectively (para. [0020]). Further, Yaizu teaches that the solution may be formulated as a powder, in granules, or as a liquid, and when in the form of a liquid may be sprayed directly onto plant leaves or stems or sprayed on soil (para. [0020]).
In one embodiment, Yaizu teaches radish seeds treated with the plant-activator composition in petri dishes, with another treatment administered 3 days after cultivation, which is interpreted to be 3 days post-germination because the initial treatment was applied to seeds and is therefore also considered application to a seedling (para. [0031-0032]). In another embodiment, Yaizu teaches in Test Example 4 the application of the plant-vitalizing agent via spraying every 20 days to the fruits of pear trees in 3 orchards (para. [0044]).
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the mass ratio of elicitor components in instant claim 3, the time elapsed post-germination for application of the plant-vitalizing agent in instant claim 7, and the total concentration in instant claim 18. In each case, the prior art teaches a value or range of values that fall within the recited ranges, rendering them prima facie obvious.
Yaizu does not teach the plant-vitalizing agent to contain an oligosaccharide that is not derived from chitin or chitosan nor provide motivation to select a xylooligosaccharide. These deficiencies are offset by the teachings of Konica and Katapodis.
Konica teaches a fertilizer in the form of a shell encapsulating water-soluble fertilizer components to enable sustained release of said fertilizer components, which avoids rapid absorption by plants (Abstract and pg. 2, para. 1). The fertilizer component inside the shell is taught to be organic or inorganic, and in the embodiments in which the fertilizer is an organic substance, the fertilizer is an anti-stress component such as a saccharide or amino acid (pg. 2, Core particles, para. 2-4). Examples of saccharides which act as anti-stress components to plants are taught by Konica to include chitosan, chitosan oligosaccharides, chitin, chitin oligosaccharides, cellooligosaccharides, and xylooligosaccharides, among others (pg. 2, Core particles, para. 5).
Katapodis teaches the natural production of neutral and acidic oligosaccharides by birchwood, as well as the isolation of the xylooligosaccharide aldopentauronic acid and its impact on the growth of various plants (Abstract). The xylanase XYL A was purified from the thermophilic fungus S. thermophile and used in a hydrolysis of birchwood in water, producing numerous sugars which were subsequently purified (pg. 630, left column, para. 1 - right column, para. 1). The acidic oligosaccharide aldopentauronic acid was isolated from the purified solution and used to treat two varieties of cucumber seeds – Stella and Gilda – which had been germinated, inoculated onto basal media, and incubated for a month before culturing (pg. 630, right column, final para. - pg. 631, left column, para. 2). Katapodis teaches an experiment completed in triplet wherein plants were treated with 1, 5, 10, or 20 mg/L of the xylooligosaccharide aldopentauronic acid, incubated for 20 days alongside a control, and analyzed to assess the impact of the oligosaccharide on plant growth (pg. 631, left column, para. 2-3). Katapodis found that the addition of aldopentauronic acid caused “a considerable reduction in the height of the regenerated plants of the [variety] Gilda” and an increase in plant fresh weight for both varieties, which are desirable traits because they are closely associated with the success of cucumber acclimatization (pg. 631, left column, final para. - pg. 632, left column, para. 1). Katapodis concludes that aldopentauronic acid has new applications as a growth regulator due to its relatively low cost, ability to increase the number of viable seeds and their fresh weight, and ability to “improve stress resistance in a number of micropropagated plant species” (pg. 632, left column, para. 2).
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 Yaizu, Konica, and Katapodis to arrive at the method of claims 1-4, 7-8, 14-15, and 18-19 because simple substitution of one known element for another produces predictable results. Yaizu teaches a plant-vitalizing agent comprising chitin oligosaccharide and the saccharides chitosan or chitosan oligosaccharide that can be applied to rice plants, either to a seedling or a post-seedling stage plant, via foliar spraying or application to the soil. In view of the teachings of Konica, an ordinary artisan would be motivated to utilize additional saccharides in the plant-vitalizing agent taught by Yaizu because Konica teaches that many other saccharides have anti-stress effects on plants that are desirable. However, Konica does not provide motivation for selecting a particular saccharide to use in an agricultural composition. In view of the teachings of Katapodis, one of ordinary skill in the art would be motivated to select aldopentauronic acid, a xylooligosaccharide, to use as an anti-stress saccharide because Katapodis teaches the molecule to act as a growth regulator and to impart increased stress resistance and the artisan would expect the xylooligosaccharide to impart that benefit in the plant-vitalizing agent taught by Yaizu. While Yaizu teaches a product and does not explicitly teach a method of application, the reference does teach details of application in their examples, including application 3 days post-germination to a plant seedling, concentrations of elicitors that overlap with the ranges recited in the instant application, and application via spraying the leaves of a plant or the soil, and a person of ordinary skill would be capable of using these examples and the composition taught by Yaizu in a method for cultivating a plant. As a result, there is a reasonable expectation of success in arriving at the method of claims 1-4, 7-8, 14-15, and 18-19 in view of the teachings of Yaizu, Konica, and Katapodis.
Response to Arguments
The Applicant’s arguments, filed on 3 October 2025, have been fully considered but are not persuasive.
In para. 1 of pg. 7 of the remarks, Applicant argues that the combination of a xylooligosaccharide with chitin oligosaccharide would provide a “synergistic and unexpected improvement in crop yield” and that the references cited in the rejection under 35 U.S.C. § 103 (vide supra) provide no teaching or suggestion that the two elicitors would “result in enhanced plant performance beyond the effects of each component alone”. Applicant directs the reader to Examples and Tables 3-1, 3-2, 4-1, and 4-2 of the specification in para. 2 of pg. 7 of the remarks and the para. spanning the end of pg. 7 and beginning of pg. 8.
The teachings of Yaizu, Konica, and Katapodis inform a person of ordinary skill in the art that chitin oligosaccharides and xylooligosaccharides, respectively, positively impact the growth and yield of plants. Given the strong motivation to combine the components in a plant-vitalizing agent presented above, to gain the known benefits of various components in a single composition, which are known to aid plant growth and impart resistance, alongside chitin oligosaccharides, which are also known to impart an elicitor effect, in a plant-vitalizing agent, the rejection is maintained. Applicant is reminded that “Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988)”. Further, “The submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself. In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987)”. See MPEP § 716.01(d).
In para. 2-3 of pg. 8, Applicant argues that the ratio of exogenous: endogenous elicitors of 0.1-5 is required for the synergistic effect to be observed, preferably in a range of 0.3-0.6, and that the “narrow and unexpected ratio dependence further supports nonobviousness”. It is noted that the feature upon which applicant relies (i.e., the narrower range of 0.3-0.6) is not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, Applicant has not demonstrated unexpected results commensurate in scope with the claimed invention because claim 1 does not recite any ratio or amounts. Objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) “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). As stated in para. 2-3 of pg. 7 of the remarks, Applicant compared their claimed ratio with compositions that only contained one component, which is not a defined ratio of exogenous: endogenous elicitors and does not contain a sufficient number of tests in the ratio ranges of 0-0.1 or >5. Therefore, Applicant has not demonstrated the criticality of the claimed range of ratios.
In addition, Yaizu teaches a range of ratios that encompasses the claimed ratio (vide supra) and specifically teaches the explicit ratios of 1 in Example 1, 0.1 in Example 2, and 0.1 in Example 3, which fall within the range of ratios recited in claim 3. An ordinary artisan would be motivated to use these ratios in the rejection above.
Applicant further argues that that none of the references teach that chitin oligosaccharide in combination with a xylooligosaccharide would avoid growth suppression of plants and increase crop yield. The Examiner disagrees, as Yaizu teaches in Example 1 that their composition, containing an elicitor, increases crop growth and Katapodis teaches that the xylooligosaccharide aldopentauronic acid increased “both the number of regenerants [of cucumber plants] and their fresh weight” (Abstract), which is considered equivalent to avoiding growth suppression and increasing yield.
Finally, Applicant is advised that Yaizu also teaches in para. [0012] that elicitor activity from chitin oligosaccharides and antibacterial activity from another component “synergistically act to provide excellent disease resistance conferring effect and growth promoting effect” (bold added for emphasis). While Yaizu teaches the synergistic activity to be conferred by chitosan, chitosan oligosaccharides, and/or salts thereof alongside chitin oligosaccharides, a teaching of synergy in plant-vitalizing agents still exists and a comparison to the closest prior art would preferably include a comparison to the synergistic effect taught in Yaizu.
Conclusion
No claims are allowed.
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.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619