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 4, 7, and 10-15 are pending in this application.
The outstanding ground of rejection under 35 USC 112(b) or 35 USC 112 (pre-AIA ), second paragraph, is withdrawn in view of the claim amendment filed on 8/28/2025.
The outstanding ground of rejection under 35 USC 102(a)(1), or in the alternative, under 35 USC 103 over Seneviratne et al. is withdrawn in view of the claim amendment filed on 8/28/2025, wherein the claims are now directed to methods that require one or more compounds selected from the group consisting of cinnamic acid, sinapinic acid, and caffeic acid.
The outstanding ground of rejection under 35 USC 102(a)(1), or in the alternative, under 35 USC 103 over Napoles et al. is withdrawn in view of the claim amendment filed on 8/28/2025, wherein the claims are now directed to methods that require one or more compounds selected from the group consisting of cinnamic acid, sinapinic acid, and caffeic acid.
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.
Claims 4, 7, and 10-15 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 Feldman et al. (hereinafter, Feldman).
Feldman explicitly discloses applying caffeic acid alone, sinapic acid (i.e., sinapinic acid) alone, and cinnamic acid alone to root system of grapefruit seedlings infected with the soil-borne, endoparasitic burrowing nematode Randopholus similis See Table 1 and discussion of protocol and data related to Table 1 on pages 702-703; see also page 701. Total phenolics in infected roots were increased compared to infected controls and non-infected controls (Table 1). Small increase in fresh weight of the plant were also observed compared to infected controls (see “Total plant” column for fresh weight in Table 1).
It is recognized that Feldman does not explicitly state that his method promotes symbiosis between the plant and other organisms, e.g., beneficial fungi and bacteria. However, Feldman exemplifies the application of the same exact cinnamic acid, sinapinic acid, and caffeic acid to plant roots. Because the same compound is allowed to act on the same plant roots, the same effect as claimed would have been necessarily obtained.
Alternatively, it is well established that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). In Baxter, the court held that even when the prior art did not expressly disclose hemolysis-suppression feature or property of a blood bag plasticizer, such unrecognized feature or property is insufficient for rebutting a prima facie case of obviousness over a prior art blood bag that utilized the same plasticizer. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). Under the present fact situation, the ordinary skilled artisan would have found it obvious to allow cinnamic acid, sinapinic acid, or caffeic acid to act on plant roots and obtain increased phenolics in the roots of plants to respond to parasitic nematodes. Any additional effect would have been necessarily obtained because the same cinnamic acid, sinapinic acid, or caffeic acid is applied to the same plant roots.
Claims 4, 10, 7, and 13 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 Nonomura et al. (US 5,958,104; hereinafter, Nonomura).
Nonomura explicitly discloses root application of cinnamic acid to grow pepper plants (see protocol: column 12, line 47 to column 13, line 56; see data for “Cinnamic + αMN” in Table 1 for pepper). “Cinnamic acid proved to be an effective synergist, enhancing growth to beyond that stimulated by methyl glucoside alone.” (sentence bridging columns 15-16).
Regarding claims 4 and 10, it is recognized that Nonomura does not explicitly state that his method promotes symbiosis between the plant and other organisms, e.g., beneficial fungi and bacteria. However, Nonomura exemplifies the application of the same exact cinnamic acid to plant roots. Because the same compound is allowed to act on the same plant roots, the same effect as claimed would have been necessarily obtained.
The claims are thereby anticipated.
Alternatively, it is well established that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). In Baxter, the court held that even when the prior art did not expressly disclose hemolysis-suppression feature or property of a blood bag plasticizer, such unrecognized feature or property is insufficient for rebutting a prima facie case of obviousness over a prior art blood bag that utilized the same plasticizer. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). Under the present fact situation, the ordinary skilled artisan would have found it obvious to allow cinnamic acid to act on plant roots and obtain enhanced plant growth because Nonomura explicitly teaches the same. Any additional effect would have been necessarily obtained because the same cinnamic acid is applied to the same plant roots.
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 4, 12, 7, 15 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kolodkin-Gal et al. (US 2021/0144999; hereinafter, Kolodkin-Gal).
Kolodkin-Gal explicitly discloses that caffeic acid protects wheat, potato, and corn plant roots from infection with a broad range of bacterial and fungal species, including Xanthomonas species, Fusarium species (Example 12 on page 26). Kolodkin-Gal also shows experimental evidence that caffeic acid alone improves beneficial bacterial biofilm stability (Example 7 on page 25) and caffeic acid in combination with the beneficial Bacillus subtilis improves tomato plant survival after infection from Pseudomonas syringae (Example 9 on page 26).
In Kolodkin-Gals’ Example 12, caffeic acid is explicitly disclosed to protect plant roots, so “allowing” caffeic acid to act on plant roots is encompassed. Protecting plants from infections is a plant production method. Although Kolodkin-Gals’ Example 12 does not explicitly disclose that symbiosis is promoted, increased symbiotic effect is taught in Examples 7 and 9. Also, the same caffeic is allowed to act on plant roots, so the same result would have been necessarily obtained.
The claims are thereby anticipated.
Alternatively, it is well established that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). In Baxter, the court held that even when the prior art did not expressly disclose hemolysis-suppression feature or property of a blood bag plasticizer, such unrecognized feature or property is insufficient for rebutting a prima facie case of obviousness over a prior art blood bag that utilized the same plasticizer. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). Under the present fact situation, the ordinary skilled artisan would have found it obvious to allow caffeic acid to act on plant roots and obtain symbiosis promotion and plant growth benefits because caffeic acid has been taught to improve the stability of beneficial bacterial biofilm, improve Bacillus subtilis mediated resistance of plants to plant pathogens, and protect plant roots from infection.
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 4, 11, 7, and 14 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 CN 1063594791.
CN 106359479 explicitly discloses digging a planting hole in a plot of land (paragraphs 42, 89-90), applying a rooting agent that contains sinapinic acid (paragraphs 43-45, 69, 93), and planting a Albizia tree seedling in the hole (paragraphs 48-49, 72-73, 96-97). See also claims 1-4. Resistance of Albizia plants to diseases and insect pests is improved and control rate against common rust and beetle pests is obtained (paragraphs 120, 122, 124).
CN 106359479 explicitly discloses root application of a composition comprising sinapinic acid to grow a tree that exhibits improved resistance to disease and insect pests. CN 106359479 does not explicitly disclose promoting symbiosis. However, CN 106359479 teaches applying the same sinapinic acid to the same plant roots, so the same result would be necessarily obtained. Growing a tree is also a production method for said tree.
The claims are thereby anticipated.
Alternatively, it is well established that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). In Baxter, the court held that even when the prior art did not expressly disclose hemolysis-suppression feature or property of a blood bag plasticizer, such unrecognized feature or property is insufficient for rebutting a prima facie case of obviousness over a prior art blood bag that utilized the same plasticizer. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). Under the present fact situation, the ordinary skilled artisan would have found it obvious to allow sinapinic acid to act on plant roots to provide resistance to disease and insect pest. Any additional effect would have been necessarily obtained because the same cinnamic acid is applied to the same plant roots.
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.
For the foregoing reasons, all claims must be rejected again. No claim is 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 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
1 Machine translation provided herewith. Paragraph numbers referenced in this Office action are paragraph numbers designated in the machine translation.