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 1-7, 10-19, and 22-23 are pending in this application.
Priority
The present application is a national stage entry of PCT/CA2021/051710, filed 03 November 2021, which claims domestic priority to U.S. Provisional Application 63/119,299, filed 30 November 2020.
Election of record & Status of claims
Applicant’s election (treated as without traverse) of the invention of Group I and the species 6 as set forth in the Office action of 6/25/2025 in the reply filed on 7/21/2025 are of record. Elected species 6 is drawn to a liquid Brassica juncea glucosinolate hydrolysate comprising isothiocyanate or thiocyanate and a Sinapis alba myrosinase complex, the Brassica juncea glucosinolate hydrolysate having been formed by hydrolysis of Brassica juncea glucosinolate upon catalysis by the Sinapis alba myrosinase complex.
Claims have been amended to delete “isothiocyanate or thiocyanates” from claims 1, 3-5, 13, and 15. However, claim 1 still recites “a glucosinolate hydrolysate” and original dependent claim 15 makes clear that Sinapis alba myrosinase complex catalyzes the glucosinolate to form the hydrolysate and generate isothiocyanate or thiocyanate. Also, claim 14 still recites Brassica glucosinolate hydrolysate comprising isothiocyanate or thiocyanate. As a result, isothiocyanate and thiocyanate are not excluded from the currently claimed invention.
Claims 6, 10-12, and 19 are withdrawn from further consideration as being directed non-elected subject matter. Claims 1-5, 8, 13-18, and 22-23 will presently be examined to the extent that they read on the elected invention Group I and elected species.
Withdrawn ground of rejection
The outstanding ground of rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the amendment filed on 1/9/2026, which recited sinigrin in claims 13, 17, and 18, and corrected the punctuation in claim 23.
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.
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 1-5, 8, 13-18, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Hetherington et al. (US 2015/0037310; hereinafter, Hetherington)1 in view of Yang et al. (hereinafter, Yang), Allyl isothiocyanate Technical Evaluation Report, Ploetz, and Molina et al. (hereinafter, Molina).
Hetherington discloses a liquid composition comprising:
(a) a glucosinolate concentrate, which includes sinigrin (paragraphs 40, 42)
(b) active myrosinase complex in a concentration sufficient to release an effective amount of glucosinolate breakdown products upon addition of water,
(c) water soluble polyol such as glycerol (paragraphs 64, 68), and
optionally, ascorbic acid.
See claims 1-6, 8-11; Example 2 (paragraph 106). Pesticidal activity against various pests, including Fusarium fungal pests and nematodes is disclosed (paragraph 103); see also claims 18-20 for pesticidal method and application. Example 2 discloses a mixture of 0.025 g of milled Sinapis alba meal, which contains active myrosinase, and 0.075 g of sinigrin concentrate, which contains 25% sinigrin.
Upon addition of water to Hetherington’s composition, the myrosinase complex becomes substantially enzymatically active (claim 9), which is capable of converting glucosinolates, including sinigrin, into pesticidally active glucosinolate breakdown products such as thiocyanates, isothiocyanates, including allyl thiocyanate and allyl isothiocyanate (paragraphs 45, 49-50, 53-54). Ascorbic acid is disclosed as a catalyst of myrosinase enzyme (paragraph 70). Hetherington’s glucosinolate concentrate can be in pure form up to 100% purity (paragraph 55). The glucosinolate concentrate can be obtained from a mustard plant such as Brassica juncea (paragraphs 55-56).
Yang discloses that soil disinfectants such as allyl isothiocyanate inhibit the growth of Fusarium oxysporum f. sp. cubense race 4, which causes banana fusarium wilt (abstract; Table 1 on page 252).
Allyl isothiocyanate Technical Evaluation Report discloses ally isothiocyanate as a volatile compound (page 1, lines 31-41) with insecticidal, bactericidal, nematicidal, and soil-borne pathogen control properties (page 3, lines 63-67, 96-100), which is contained or releasable in mustard plants in concentrations of 400-15,000 mg/kg (page 2, Table 1). Mustard plants contain elevated amounts of glucosinolates and the hydrolase enzyme myrosinase (page 6, lines 228-233). Myrosinase liberates allyl isothiocyanate from the glucosinolate sinigrin through enzymatic hydrolysis (pages 6-7, lines 233-254). Application rate of allyl isothiocyanate as a soil fumigant can be from 85-340 pounds/acre (page 8, lines 304-309).
Ploetz discloses that race designation facilitate comparisons among different populations of Fusarium oxysporum f. sp. cubense (page 1514). Race 4 has been further categorized into subtropical race 4 (SR4) and tropical race 4 (TR4); and some older race 4 designation could actually be TR4. See page 1514. Table 2 of Ploetz shows GCTCV Cavendish variants, which are less susceptible than Grand Nain, Williams, and Ambon hijau Cavendish cultivars (page 1517). Use of resistant cultivars in fields where Fusarium oxysporum f. sp. cubense has established is disclosed (abstract).
Molina is cited to establish that several Cavendish banana somaclonal variants exhibit field resistance to Foc TR4, whereas commercial Cavendish banana cultivars “Grand Naine” and “Lakatan” exhibit susceptibility to Foc TR4 (abstract; see also the entire article).
Hetherington does not explicitly disclose all the claim-recited features of the instant invention. However, for the reasons set forth below, the ordinary skilled artisan would have found the differences and the claimed invention as a whole obvious.
Method for controlling Fusarium wilt caused by Fusarium oxysporum f. sp. cubense (Foc) Tropical race 4 (TR4)
Hetherington discloses efficacy against Fusarium fungal pests and nematodes. Hetherington further discloses that upon addition of water, myrosinase complex converts glucosinolates into pesticidally active glucosinolate breakdown products such as allyl isothiocyanate; and Yang is evidence that allyl isothiocyanate inhibits the growth of F. oxysporum f. sp. cubense (Foc) race 4, which is inclusive of Tropical race 4 (TR4). Taken with Molina’s and Ploetz’s disclosures that certain banana plants belonging to the Cavendish cultivar group are less susceptible to Foc TR4, it would have been obvious for the ordinary skilled artisan to control the Fusarium wilt caused by Foc TR4 by utilizing less susceptible cultivars and also applying Hetherington’s composition to such banana plant cultivars or growth medium of such banana plant cultivars.
Claim 14: the Brassica glucosinolate hydrolysate comprises thiocyanate or isothiocyanate
Hetherington’s Example 2 shows mixture of 0.025 g of milled Sinapis alba meal, which contains active myrosinase, and 0.075 g of sinigrin concentrate, which contains 25% sinigrin. Hetherington teaches 5-100% pure glucosinolates, which can be obtained from Brassica juncea. Hetherington also teaches 100-250 units of enzyme activity per 1 gram of sinigrin (MW: 359.36), which means sufficient enzymatic activity to convert 100-250 micromoles of sinigrin to allyl isothiocyanate per minute. Thus, for example, 100 micromole of sinigrin is approximately 0.036 g sinigrin, which would produce 100 micromole of allyl isothiocyanate (MW 99.16) per minute, which is approximately 0.01 g allyl isothiocyanate per minute. See Allyl isothiocyanate Technical Evaluation Report, page 6, Scheme 1. Allyl isothiocyanate Technical Evaluation Report also discloses that application rate of allyl isothiocyanate as a soil fumigant can be from 85-340 pounds/acre, which is equivalent to approximately 95 kg/ha to 381 kg/ha; and mustard plants can contain or release 400-15,000 mg/kg of alkyl isothiocyanate.
Therefore, the ordinary skilled artisan would have found it obvious to adjust the amount of Hetherington’s Brassica (i.e., mustard) glucosinolate hydrolysate and myrosinase to provide the claim-recited amount range of allyl isothiocyanate, because example composition, allyl content, enzymatic activity, rate of the enzymatic reaction, and application rate would render obvious concentration of the active ingredient isothiocyanate.
Claims 17-18: the Brassica glucosinolate hydrolysate comprises 1-10,000 or
10-10,000 Sinapis alba myrosinase activity units per gram of sinigrin, and the composition is applied at a rate of about 10-800 liters per hectare
As previously discussed above, Hetherington teaches all the necessary amounts and rates for the ordinary skilled artisan to arrive at the effective application amount of Hetherington’s composition of Brassica glucosinolate hydrolysate and Sinapis alba myrosinase. 10-800 liters per hectare is a volume of applied amount, and it would have been obvious to the ordinary skilled artisan to adjust the concentration and/or dilution of Hetherington’s composition to deliver an effective amount to control Fusarium wilt to banana plant, as claimed herein.
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.
Applicant’s arguments filed on 1/9/2026 have been given due consideration but they were deemed unpersuasive for the following reasons.
Applicant states that prior to Applicant’s invention, there were no effective fungicidal means available to control TR4 caused Fusarium infections and refers to a 2020 brochure by the Food and Agriculture Organization of the United Nations (not cited in an IDS), which states on page 7, “currently there are no effective cures for TR4 … only prevention.” However, this brochure fails to acknowledge Yang (2019), who show reduction of Fusarium oxysporum f. sp. cubense race 4, which is inclusive of tropical
race 4 (TR4), by allyl isothiocyanate. Yang’s Table 1 shows a trend of increased
inhibitory rate with increased concentration of allyl isothiocyanate:
at 12.5 µg/ml, inhibitory rate is 14.86%;
at 50 µg/ml, inhibitory rate is 22.84%; and
at 200 µg/ml, inhibitory rate is 33.87%.
Hetherington teaches producing approximately 0.01 g allyl isothiocyanate per minute, and Allyl isothiocyanate Technical Evaluation Report teaches 95-381 kg/ha soil fumigant application rate of allyl isothiocyanate, as discussed above. Therefore, the ordinary skilled artisan would have been motivated to not only obtain 33.87% reduction in Fusarium oxysporum f. sp. cubense race 4 with 200 µg/ml of allyl isothiocyanate, but to increase concentration of glucosinolate to produce increased concentration of allyl isothiocyanate to obtain even greater reduction of Fusarium oxysporum f. sp. cubense race 4, including TR4.
Applicant “declares” that specification Example 3 was conducted using TR4 contaminated soil even though said specification Example 3 does not actually mention TR4. Applicant is reminded that using the word “declares” is not the same thing as a declaration filed under 37 CFR 1.132, which requires, “any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.” Consequently, specification Example 3 cannot be accepted as evidence relevant to TR4.
Applicant further criticizes each of the cited references individually but fails to consider their combined teachings as a whole. The following condensed summary is presented first to provide an outline of the Examiner’s positions, which are further discussed hereinbelow.
Condensed summary of Applicant’s argument against the cited prior art references
Condensed summary Examiner’s response
- Long felt need, as evidenced by UN FAO brochure published in 2020. Note, it appears that this brochure was published in March 2020.
- Yang was published in 2019 and it is not clear that the March 2020 FAO brochure (not cited in an IDS) considered Yang’s 2019 article.
- Yang demonstrates reduction of Fusarium oxysporum f. sp. cubense race 4, which is inclusive of tropical race 4 (TR4), by allyl isothiocyanate.
- Hetherington does not mention banana plants; Hetherington is not concerned with controlling Panama disease caused by TR4.
- Hetherington is relevant because
(1) his composition releases thiocyanates and isothiocyanates, including allyl isothiocyanates (e.g., paragraph 45)
(2) his composition can be used to control Fusarium pests (paragraph 103)
(3) Yang teaches reduction of Fusarium oxysporum f. sp. cubense race 4, which is inclusive of tropical race 4 (TR4), by allyl isothiocyanate. F. oxysporum f. sp. cubense race 4 causes banana fusarium wilt (Yang’s abstract).
(4) Therefore, it would have been obvious that Hetherington’s composition can be used to control Fusarium wilt of a banana plant caused by TR4.
- Specification Example 2 shows 100% inhibitory rate, whereas Yang shows 33.87% inhibitory rate
- The experiments are different and cannot be compared.
(1) The concentration of allyl isothiocyanate in Applicant’s Example 2 cannot be precisely calculated from the information provided.
(2) Spore concentration of fungal inoculum of Example 2 cannot be determined. Is it 1 x 102 spores/ml, for example? This goes to efficacy. Yang used 1 x 107 spores/ml (page 251, section 1.2.1).
Condensed summary of Applicant’s argument against the cited prior art references
Condensed summary Examiner’s response
- Ploetz and Molina do not disclose glucosinolate or glucosinolate hydrolysate.
- Ploetz and Molina teach less susceptible Cavendish variants.
- They combine with other cited prior art to suggest how to produce Cavendish bananas in soil that has TR4: use resistant variants or cultivars, and also apply allyl isothiocyanate, which is released by Hetherington’s composition upon addition of water.
Applicant argues long felt need, but this argument is unpersuasive. There is no evidence that the UN FAO brochure considered Yang’s article. Yang demonstrates reduction of F. oxysporum f. sp. cubense race 4, which is inclusive of tropical race 4 (TR4), by allyl isothiocyanate. Thus, the prior art teaches control of the genus of Fusarium as well as clear demonstration of reduction of F. oxysporum f. sp. cubense race 4, which includes both SR4 and TR4. The ordinary skilled artisan would have found it obvious that Yang’s allyl isothiocyanate, which is released by Hetherington’s composition, would control TR4.
Applicant argues that Hetherington is “concerned with solving formulation problems,” but this is a failure to consider the prior art taken as a whole. This is like arguing that a patent focused on an aspirin formulation doesn’t make it obvious to treat headaches. The Examiner maintains the relevance of Hetherington’s teachings for the reasons detailed above, which include release of allyl isothiocyanate by Hetherington’s composition, taken with Yang’s teaching of inhibition of F. oxysporum f. sp. cubense race 4 by allyl isothiocyanate, which causes banana Fusarium wilt.
Applicant argues that there is a sharp contrast between Yang and amended claim 1, because amended claim 1 recites glucosinolate or glucosinolate hydrolysate. However, as currently pending claim 14 and now-canceled claim 15 establish, glucosinolate hydrolysates contain isothiocyanate and/or thiocyanate.
Applicant argues the disparity in Yang’s 33.87% colony inhibitory rate vs. Applicant’s Example 2 100% colony inhibitory rate. This argument is without merit because comparison is not possible because of the following reasons:
(1) Concentrations of the active agents in Example 2 are disclosed in terms of grams of a “Brassica juncea meal product and a Sinapis alba meal product” per volume (“diluted in water”), which are blended to correspond to 13-15 kg/ha of “Brassica juncea meal product and a Sinapis alba meal product” (emphases added). The problem with this is that the “product” can contain different amounts of glucosinolates and myrosinase, which obviously affect allyl isothiocyanate concentration. Consequently, Yang’s results obtained with 200 µg/ml of allyl isothiocyanate cannot be compared with Applicant’s Example 2 results.
(2) Spore concentration of the fungal inoculum of Example 2 cannot be determined. Example 2 discloses only that potato dextrose agar (PDA) plates were centrally inoculated with TR4 “isolated from a soil sample serving as a growth substrate of a diseased banana plant.” Such disclosure provides no information as to spore concentration, so Yang’s 1 x 107 spores/ml (page 251, section 1.2.1) cannot be compared with Applicant’s Example 2.
For these reasons, results disclosed by Yang and Applicant’s Example 2 cannot be compared.
Applicant argues also that Ploetz and Molina do not disclose glucosinolate or glucosinolate hydrolysate, and they do not disclose the “existent inventive gap between Hetherington … and the claimed invention.” The Examiner cannot agree. Currently pending claims are open to different types of banana plants belonging to the Cavendish cultivar group, susceptible and resistant cultivars and variants. The prior art suggests a combined approach to the problem of TR4 in banana plants belonging to the Cavendish cultivar group: chemical inhibition combined with use of resistant variants or cultivars; and Ploetz and Molina are evidence thereof.
For these reasons, all claims are rejected again. No claim is 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.
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 Patent family member of WO 2015/013808, cited in the IDS of 2/7/2024.