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 .
New Examiner
The new examiner of record is Erin Hirt.
Status of Action
This is a second non-final office action.
Election/Restrictions
Applicants previously elected species of II-2 has been searched with respect to plants, etc. and was not found. Thus, the examiner has moved onto a new species from applicant’s compound (B) amino acids, specifically L-amino acids, most specifically L-lysine and/or L-glutamine. Thus, the claims under examination at this time are 18, 23-28, 36-40. All other claims are withdrawn as being directed to a non-elected invention as they were previously.
Claim Rejections - 35 USC § 112
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 36 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.
Firstly, the claim is indefinite because it is unclear if the “part or the whole of the abscisic acid-like substance forms a condensate…nitrogen containing molecules” is meant to be an additional step of the method e.g. first you are forming the condensate and then you are applying to plants or if applicants are merely defining that when applying applicants (A) and (B) at least one molecule of A and B have been condensed and applicants are actually trying to further limit the scope of compounds being applied in the applying step of claim 36? For compact prosecution purposes the examiner is interpreting this claim as the condensate is something that inherently and/or obviously forms upon application of the two compounds together.
Claim Rejections - 35 USC § 102
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.
Claim(s) 18, 23-28, and 36-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US20130303373 (‘373, from IDS).
Regarding claims 18, 23-28, ‘373 expressly teaches the only required active step of the claimed method specifically applying abscisic acid, more specifically S-abscisic acid and L-amino acids, more specifically the instantly claimed and/or preferred L-lysine and/or L-glutamine to plants as is instantly claimed and as such would obviously be accomplishing the claimed method/intended use of the claimed method of inducing environmental stress tolerance in the plants to which the combination is being applied especially since this is the only active step of the claimed method and this active step is taught by ‘373 and because the instantly claimed method does not actually require the plants to be under environmental stresses, etc. (See entire document; e.g. [0018-0027]; [0035-0047]; [0050-0054]; [0057-0058]; Example 1 (S-abscisic acid and glutamine applied to apples); claims; etc.). For instance, in example 1 they teach applying S-abscisic acid (ABA) with glutamine (which the examiner believes from the disclosure of ‘373 to be L-glutamine because of for instance the teachings at [0039-0052, which all discuss L-amino acids being used in the invention] (see also all sections cited above)) which for instance anticipates claims 18, 23-25, and 28. However, if applicant’s disagree that the glutamine is L-glutamine in example 1 for instance then the examiner still believes that the instant claims 18, and 23-28 are readily envisioned by one of ordinary skill in the art because ‘373 expressly teaches the combination of applicant’s preferred S-abscisic acid (ABA) with glutamine to apple trees (plants) and they also expressly teach at [0044] that the more/most preferred L-amino acids to be used in combination with ABA include the claimed L-lysine as one of 7 amino acids and combinations thereof to be used/applied in combination with ABA on plants as claimed. Thus, one of ordinary skill in the art when looking to example 1 in ‘373 for instance can readily envision replacing the glutamine for the preferred L-lysine based on the teachings of ‘373 as discussed above.
Regarding claim 36, based on the interpretation the examiner has given above in light of the 112(b) rejection of this claim because ‘373 clearly expressly teaches application of a combination of liquid glutamine and liquid ABA being applied in the same concentrations/amounts to the same plants as are claimed, and because one can readily envision substituting the claimed preferred L-lysine in the same amounts/concentration which is a specifically preferred L-amino acid in ‘373 with the claimed ABA (S-abscisic acid) to the same plants then inherently it would also be forming the claimed condensate upon application to at least some degree as is instantly claimed, especially in the absence of evidence to the contrary (See example 1; entire document; e.g. [0018-0027]; [0035-0047]; [0050-0054]; [0057-0058]; Example 1 (S-abscisic acid and glutamine applied to apples); claims; etc. Treatments April 24 and May 7 involved both ABA and glutamine for instance so both were applied as liquids together and/or sequentially and would be forming a condensate as claimed when in combination with each other, e.g. in composition and applied at once or when in contact on the plant in combination with each other).
Regarding claims 37-38, ‘373 teaches in example 1 for instance applying a liquid composition comprising 3.3 ppm wt of S-abscisic acid which is a dosing of 1g/ha which would be a molarity of ~1.135 x10^-5 M which reads on the claimed concentration range of claim 37, and glutamine (MW 146.15) was applied with a concentration of 50 ppm, which is a dosing of 15 g/ha and is ~3.42*10^-4M (0.342 mM) which reads on/anticipate the amounts claimed (See example 1).
Regarding claims 39-40, ‘373 does not expressly recognize the intended effect of inducing environmental stress tolerance via an increase in expression of a gene, specifically those claimed by applicant’s, involved in environmental stress tolerance. However, because ‘373 clearly teaches the claimed active steps of the claimed method and wherein the abscisic acid like substance and the nitrogen containing compound are applied in the claimed amounts/concentrations to the claimed plants then they would inherently be accomplishing the claimed effects since all of the active steps of the claimed method are being accomplished in the prior art ‘373 as discussed above.
Thus, ‘373 teaches all limitations of the claims and thereby anticipates the instantly claimed method because ‘373 is clearly performing the only active step of applicants claimed method and in performing that active step to the same plants in the same concentrations instantly claimed would inherently lead to applicants desired/intended result of inducing environmental stress tolerance.
If perchance the court does not agree that the instant method is anticipated by ‘373 above, then the instant claims are rendered obvious by ‘373 for the reasons below.
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.
Claim(s) 18, 23-28, and 36-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20130303373 (‘373).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 18, 23-28, ‘373 teaches the only required active step of the claimed method specifically applying abscisic acid, more specifically S-abscisic acid and L-amino acids, more specifically the instantly claimed and/or preferred L-lysine and/or l-glutamine to plants as is instantly claimed and as such would obviously be accomplishing the claimed method/intended use of the claimed method of inducing environmental stress tolerance in the plants to which the combination is being applied especially since this is the only active step of the claimed method and this active step is taught by ‘373 and because the instantly claimed method does not actually require the plants to be under environmental stresses, etc. (See entire document; e.g. [0018-0027]; [0035-0047]; [0050-0054]; [0057-0058]; Example 1 (S-abscisic acid and glutamine applied to apples); claims; etc.).
Regarding claim 36, based on the interpretation the examiner has given above in light of the 112(b) rejection of this claim because ‘373 clearly expressly teaches application of a combination of liquid glutamine and liquid ABA being applied in the same concentrations/amounts to the same plants as are claimed, and because one can readily envision substituting the claimed preferred L-lysine in the same amounts/concentration which is a specifically preferred L-amino acid in ‘373 with the claimed ABA (S-abscisic acid) to the same plants then obviously it would also obviously be forming the claimed condensate upon application to at least some degree as is instantly claimed, especially in the absence of evidence to the contrary (See example 1; entire document; e.g. [0018-0027]; [0035-0047]; [0050-0054]; [0057-0058]; Example 1 (S-abscisic acid and glutamine applied to apples); claims; etc. Treatments April 24 and May 7 involved both ABA and glutamine for instance so both were applied as liquids together and/or sequentially and would obviously be forming a condensate as claimed when in combination with each other, e.g. in composition and applied at once or when in contact on the plant in combination with each other).
Regarding claims 37-38, ‘373 teaches in example 1 for instance applying 3.3 ppm wt of S-abscisic acid which is a dosing of 1g/ha which would be a molarity of ~1.135 x10^-5 M which reads on the claimed concentration range of claim 37, and glutamine (MW 146.15) was applied with a concentration of 50 ppm, which is a dosing of 15 g/ha and is ~3.42*10^-4M (0.342 mM) which reads on the claimed (See example 1). These amounts correspond to the claimed concentrations of claims 37-38.
Regarding claims 39-40, ‘373 does not recognize the intended effect of inducing environmental stress tolerance via an increase in expression of a gene, specifically those claimed by applicant’s, involved in environmental stress tolerance. However, because ‘373 clearly teaches the claimed active steps of the claimed method and wherein the abscisic acid like substance and the nitrogen containing compound are applied in the claimed amounts then they would obviously be accomplishing the claimed effects since all of the active steps of the claimed method are being accomplished in the prior art ‘373 as discussed above.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)/ Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
‘373 does not specifically exemplify the claimed result/applicant’s intended use/purpose of their method. However, as discussed above ‘373 clearly teaches applying the same actives claimed in claim 18 to the same plants in the same concentrations as are instantly claimed and as such would obviously be achieving the claimed environmental stress tolerance as claimed.
‘373 does not specifically teach wherein the ABA forms a condensate with the nitrogen containing compound. However, as discussed above the examiner believes this is a result which naturally flows from the application of the two compounds together as would occur in Example 1 for instance when both the ABA and the glutamine were applied on April 24 and May 7 in ‘373 as is discussed above.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
Applicant’s amendments to the claims have prompted the new grounds of rejection presented herein. Applicant’s persuasive arguments with respect to the 112 rejection during the interview and the examiner’s agreement to withdraw the 112 were based on applicant’s proposed amendments to claim 36 as noted in the interview summary by the examiner. However, none of the proposed amendments were made and/or filed in/with applicant’s response in claim 36 as discussed in the interview. Thus, the examiner is maintaining and/or further explaining the 112(b) rejection in this second non-final office action. The examiner apologizes for the confusion, but as written without the discussed amendments the claim remains indefinite for the above reasons upon reconsideration by the new examiner of record.
Applicants then argue the previous prior art of record. As none of the prior art of record is currently being used in this new second non-final office action, these arguments are moot in light of applicant’s amendments to their claims and the examiner withdrawing all previous grounds of rejection under 103.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIN E HIRT/Primary Examiner, Art Unit 1616
Prosecution Insights