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 .
Claims 3-5, 9-15, and 26-39 are pending in this application. Applicant’s election of Group I in the reply filed on 10/3/2025 is noted again. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims have been amended to correspond to the elected invention. Claims 3-5, 9-15, and 26-39 will presently be examined.
Withdrawn objection or rejection
Objection to claim 20 under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim is withdrawn in view of cancellation of said claim.
Rejection of claim 23 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, is withdrawn in view of cancellation of said claim.
Rejection of claims 1, 11, 13, 19, and 23 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 104030772, is withdrawn in view of cancellation of independent claim 1, 19, and 23, and change in claim dependency of claims 11 and 13 from claim 1 to claim 3.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 13-14, 26-28, 30-32, and 38-39 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 13-14, 26-28, 30-32, and 38-39: For R1 and R2, the definition terms “a residue of cysteine, a residue of methionine, a residue of N-acetyl cysteine, a residue or N-acetyl methionine, a residue of homocysteine, a residue of lipoic acid, a residue of coenzyme, a residue of glutathione, or a residue of any other naturally occurring thiol” are indefinite. First, it is unclear what constitutes or does not constitute a “residue,” and even if a residue were clearly delineated, it is unclear where in the residue it is bonded to the structure of formula (I).
Applicant argues in the response filed on 3/16/2026 that the term “residue” is defined in the specification at page 6, lines 9-18. Applicant states, R1 and R2 can represent cysteine, methionine … coenzyme or glutathione, that has been cleaved at the sulfur atom, leaving a compound ‘residue’ (R1 or R2) that is attached to the -S-S-S- in a trisulfide of formula (I).” The Examiner cannot agree that this is a sufficient explanation for the confusing and indefinite nature of the claims for the following reasons.
Definition of “residue” from specification page 6, lines 9-18 (emphases added) as shown below is so broadly and vaguely set forth as to encompass virtually any modification of the parent compound
Residue of a compound refers to a compound that has been “modified in any manner which results in the creation of an open valence …”
“The open valence can be created by the removal of 1 or more atoms from the compound (e.g., removal of a single atom such as hydrogen or removal or more than one atom such as a group of atoms including but not limited to an amine, hydroxyl, methyl, amide (e.g., -C(=O)NH2) or acetyl group).”
“The open valence can also be created by the chemical conversion of a first function group of the compound to a second functional group of the compound (e.g., reduction of carbonyl group, replacement of a carbonyl group with an amine,) followed by removal of 1 or more atoms from the second functional group to create an open valence.”
As can be seen from these definitions, a “residue” encompasses compounds that can be modified in any manner. The possibilities are almost endless, taking into account all the chemical modifications that a compound or coenzyme can be subject to. Applicant’s example of cleaving at the sulfur atom to provide a “residue” is an extremely narrow slice of a much broader and indefinite scope. And for a compound such as lipoic acid, the explanation of cleaving at the sulfur atom is ambiguous because lipoic acid has the following structure:
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The upshot is that the claims fail to particularly point out and distinctly claim the compounds of formula (I). One skilled in the art would not be able to determine what is within the scope of formula (I) and what is outside the scope of formula (I).
Claims 30-37: These method claims lack an active step. An active step of a method claim must be a concrete, active step. Currently, “by providing H2S to a plant or seed through degradation of a trisulfide” is a prepositional phrase that functions as a modifier, not as an action-taking step. Please note the difference in independent claim 3 (not included here), which recites a concrete, action-taking step, “comprising contacting the seed with a trisulfide.” Claims 30-37 are therefore incomplete for failing to recite a method step.
35 U.S.C. 102 or 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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 3-4, 13, 30, 38 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Goodhue et al. (US 3,103,465; hereinafter, Goodhue).
Goodhue discloses bird repellent compounds of formula (I): R1 –(S)x –R1, wherein each R1 is a C1-C12 alkyl, and x is 2 to 8 (column 1, lines 9-58). Dimethyl trisulfide is disclosed as an example compound (column 1, line 63). A method of protecting a seed against birds which comprises impregnating the seed with a compound of formula (I) is claimed (claim 10).
Goodhue does not explicitly disclose increased growth of a plant or increased harvest yield of a plant that grows from a seed that has been contacted with a trisulfide such as dimethyl trisulfide. However, bird repellence would obtain such results because of reduced damage or loss from consumption by bird pests.
Goodhue does not explicitly disclose increased growth or increased harvest yield by providing H2S to a plant or seed through degradation of a sulfide such as dimethyl trisulfide. However, dimethyl trisulfide is encompassed by the trisulfides of the instant claims, so application of dimethyl trisulfide to plant seed as taught by Goodhue would necessarily obtain the same H2S through degradation.
The claims are thereby anticipated.
In the alternative, the claimed invention would have been obvious because Goodhue teaches the application of the same compound (dimethyl trisulfide and other dialkyl trisulfides) to the same plant seed. Consequently, the same result of providing H2S through degradation of a trisulfide and increased growth and harvest yield would have been necessarily obtained. Increased growth and harvest yield would have been obvious also from reduced consumption by bird pests. Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited reference.
Claims 26, 30, and 35-36 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Scott et al. (US 2,917,429; hereinafter, Scott)
Scott (US 2,917,429) discloses control of fungi, bacteria, and nematodes by applying a dimethyl polysulfide such as dimethyl trisulfide (column 1, lines 1-66; column 3, Example III). At 100 ppm, dimethyl trisulfide provided 86% control of root knot nematodes on tomato plants with “general increase in plant growth of 19%” (column 5, lines 41-45). Dimethyl trisulfide is exemplified in a composition with carriers and powdered blood albumen, which is an organic fertilizer (column 3, Example III).
Scott does not explicitly disclose increased growth or increased harvest yield by providing H2S to a plant through degradation of a sulfide such as dimethyl trisulfide. However, dimethyl trisulfide is encompassed by the trisulfides of the instant claims, so application of dimethyl trisulfide to a tomato plant as taught by Scott would necessarily obtain the same H2S through degradation.
The claims are thereby anticipated.
In the alternative, the claimed invention would have been obvious because Scott teaches the application of the same compound (dimethyl trisulfide) to the same plant. Consequently, the same result of providing H2S through degradation of a trisulfide and increased growth and harvest yield would have been necessarily obtained. Increased growth and harvest yield would have been obvious also from control of, and reduced loss from, fungi, bacteria, and nematodes. Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited reference.
35 USC 103
Claims 3-5, 9-13, 26, 30, and 34-38 are rejected under 35 U.S.C. 103 as being unpatentable over the combined teachings of Goodhue (US 3,103,465) and Scott (US 2,917,429) in view of Baldwin and Kretzschmar (US 2003/0224936).
Goodhue discloses bird repellent compounds of formula (I): R1 –(S)x –R1, wherein each R1 is a C1-C12 alkyl, and x is 2 to 8 (column 1, lines 9-58). Dimethyl trisulfide is disclosed as an example compound (column 1, line 63). A method of protecting a seed against birds which comprises impregnating the seed with a compound of formula (I) is claimed (claim 10). Crop protection is disclosed (column 1, lines 14-17), i.e., protection from consumption by birds (column 1, lines 42-45). Formulation with emulsifying agent, wetting agent, and carriers is disclosed (column 2, lines 22-26). “[P]lanted seeds of flowers, vegetables, and the like” are disclosed (column 2, lines 55-66). Spraying grain sorghum in the field is disclosed (claim 1). Seed impregnated with Goodhue’s compound is disclosed (claim 8).
Scott (US 2,917,429) discloses control of fungi, bacteria, and nematodes by applying a dimethyl polysulfide such as dimethyl trisulfide (column 1, lines 1-66; column 3, Example III). At 100 ppm, dimethyl trisulfide provided 86% control of root knot nematodes on tomato plants with “general increase in plant growth of 19%” (column 5, lines 41-45). Dimethyl trisulfide is exemplified in a composition with carriers and powdered blood albumen, which is an organic fertilizer (column 3, Example III).
Baldwin is cited to establish that birds eat plant seeds and seedlings, including lettuce seeds and seedlings (second page, the section under “Damage”).
Kretzschmar (US 2003/0224936) is cited to establish that pesticides, fertilizers, bioregulators, and adjuvants are commonly used ingredients in seed treatment to protect the seed and seedlings during their most susceptible development stages (paragraphs 5-10; claims 1-14).
Claims 3-5, 13
Goodhue does not explicitly disclose increased growth of a plant or increased harvest yield of a plant that grows from a seed that has been contacted with a trisulfide such as dimethyl trisulfide. However, bird repellence would obtain such results because of reduced damage or loss from consumption by bird pests. Additionally, Scott teaches increased plant growth and control of fungal, bacterial, and nematode pests, which would improve harvest yield by reducing damage and loss from pests. Contact with seed prior to planting is specifically taught by Goodhue (claims 8 and 10). Contact with seed after planting would have been obvious because the treated seed would still be in contact with dimethyl trisulfide.
Claims 9-12
Because birds consume plant seeds of all types, including lettuce seeds, it would have been obvious to contract seeds of plants such as those recited in claims 9-12, including lettuce seeds, with a trisulfide such as dimethyl trisulfide to control consumption of seeds and seedlings by birds. Additionally, Scott teaches increased plant growth and control of fungal, bacterial, and nematode pests, which would improve harvest yield by reducing damage and loss from pests.
Claim 26
Fertilizers are commonly used in combination with pest control ingredients in seed treatment, so it would have been obvious to add a fertilizer to treat seeds with Goodhue’s bird repellent dimethyl trisulfide. Scott’s combination of dimethyl trisulfide with a fertilizer is further suggestive of adding a fertilizer to Goodhue’s seed treatment. Alternatively, Scott’s teaching of the specific composition of Example III at column 3 is sufficient to render obvious a composition comprising a fertilizer, carrier, and dimethyl trisulfide.
Claim 30
Goodhue or Scott does not explicitly disclose increased growth or increased harvest yield by providing H2S to a plant or seed through degradation of a sulfide such as dimethyl trisulfide. However, dimethyl trisulfide is encompassed by the trisulfides of the instant claims, so application of dimethyl trisulfide to plant seed as taught by Goodhue or application of dimethyl trisulfide to plants as taught by Scott would necessarily obtain the same H2S through degradation. Increased growth and harvest yield would have been obvious also from reduced consumption by bird pests and reduced damage and loss from fungal, bacterial, and nematode pests.
Claims 34-37
Because birds consume plant seeds of all types, including lettuce seeds, it would have been obvious to contract seeds of plants such as those recited in claims 34-37, including lettuce seeds, with a trisulfide such as dimethyl trisulfide to control consumption of seeds and seedlings by birds.
Additionally, Scott teaches increased plant growth and control of fungal, bacterial, and nematode pests, which would improve harvest yield by reducing damage by such pests. Plants recited in claims 34-37 are susceptible to damage and loss from fungal, bacterial, and nematode pests, so it would have been obvious to apply a dimethyl trisulfide to such plants.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Claims 3-5, and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over McGee et al. (US 2008/0249186) in view of Matheron and Ortega et al.
McGee et al. (US 2008/0249186; hereinafter, McGee) disclose diallyl trisulfide + alkyl or alkenyl benzene (e.g., eugenol, thymol) has synergistic fungicidal activity against seed-borne, air-borne, and soil-borne fungi (paragraphs 16-18, 27). The diallyl trisulfide can be in the form of garlic oil (paragraphs 19, 27). Activity against Fusarium oxysporum and Rhizoctonia solani is exemplified (Examples 1 and 2). Formulation with emulsifier, solvent, and other adjuvants is disclosed (paragraphs 21-24). Fungicidal compositions and methods of preventing or inhibiting fungal growth on plants are claimed (claims 1-20).
Matheron discloses that lettuce is susceptible to infections by soil-borne pathogens Fusarium oxysporum and Rhizoctonia solani. Matheron teaches that successful management of R. solani requires early application of fungicides.
Ortega et al. disclose Fusarium oxysporum as a soil- and seed-borne pathogen in lettuce (abstract; page 1462, left column).
McGee does not explicitly disclose several of the claim-recited features of Applicant’s invention. They are discussed below in detail.
Increasing growth or harvest yield
McGee discloses prevention or inhibition of fungal growth on plants. It would have been obvious to the ordinary skilled artisan that plants with reduced infection by fungi would have increased growth and harvest yield.
Plant is a leaf vegetable such as lettuce
McGee teaches control of Fusarium oxysporum and Rhizoctonia solani. Matheron and Ortega et al. establish that F. oxysporum and R. solani are pathogens of lettuce. Thus, it would have been obvious to the ordinary skilled artisan to control these pathogens in lettuce and obtain increased growth and harvest yield.
Contacting seed with a trisulfide
McGee teaches control of seed-borne, air-borne, and soil-borne fungi. Ortega et al. disclose that F. oxysporum is a soil- and seed-borne fungus; and Matheron discloses that successful management of R. solani requires early application of fungicides. Therefore, it would have been obvious to the ordinary skilled artisan to contact seeds of plants with McGee’s trisulfide-containing fungicidal composition with an expectation that seed-borne as well as soil-borne fungi would be controlled, which would consequently increase growth and harvest yield.
For these reasons, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Applicant’s arguments filed on 3/16/2026 have been given due consideration but they were deemed unpersuasive for the following reasons.
Applicant argues that “one skilled in the art would not be motivated to contact seed” with McGee’s diallyl trisulfide-containing mixture, because “McGee does not provide any data where seeds, plants or soil are contacted with a trisulfide.” Applicant adds, “one skilled in the art would not have a reasonable expectation that contacting a seed with one of the mixtures would provide any beneficial effect.” The Examiner cannot agree. Although Applicant criticizes McGee for lack of data or working example where seeds are contacted with trisulfides, the same is also true in Applicant’s disclosure – there is no data or working example where seeds are contacted with trisulfides. There is only one example in the instant specification, Example 1, and in this example a trisulfide was added 42 days after lettuce seeds were planted. That is to say, Applicant’s example did not contact a seed with a trisulfide – Applicant’s example contacted a seedling with a trisulfide.
Further, McGee clearly teaches, “The invention relates to the field of pesticide control, and in particular to compositions and methods useful for controlling pests and fungi, especially on seeds and plants” (paragraph 1) (emphases added). Thus, the ordinary skilled artisan would have had reasonable expectation that McGee’s diallyl trisulfide-containing mixture would control seed-borne fungi when seeds are contacted with said mixture. There is no requirement under 35 USC 103 that a prior art reference exemplify the claimed subject matter. Obviousness under 35 USC 103 asks “not merely what the references expressly teach, but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” In re Lamberti, 192 USPQ 278, 280 (CCPA 1976). “All the disclosures in a reference must be evaluated … and a reference is not limited to the disclosure of working examples.” In re Mills, 176 USPQ 196, 198 (CCPA 1972).
For these reasons, Applicant’s arguments are found unpersuasive, and this ground of rejection is maintained with respect to claims 3-5, and 9-13.
Claims 15 and 29 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
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