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 .
Claim Status
Claims 18 and 33-36 have been amended.
Claims 1-17, 19-22, 25-33, and 41-43 are withdrawn.
Claims 18, 23, 24, and 34-40 are being examined herein.
Election/Restrictions
Applicant’s election without traverse of Group II, i.e., claims 18 and 23-40 in the reply filed on 10/31/2025 is acknowledged.
For the requirement of species elections, applicant elected (1) for the abscisic acid-like substance: abscisic acid (claim 23), (2) for the nitrogen-containing compound: compound of formula II-2, and (3) for the specific gene: MAPKKK 18 gene (claim 40).
Claims 25-33 are not drawn to the elected species and are withdrawn from further examination. Claims 18, 23, 24, and 34-40 are readable on elected species and will be further examined on the merits.
Priority
The instant application, filed 12/13/2022, is a continuation of PCT/JP2021/023114, filed 06/17/2020, which claims priority to JP2020-104749, filed on 06/17/2020. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. The certified copy has been filed in the application No. 18/065,167 filed on 12/13/2022.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 12/13/2022 and submitted on 12/13/2022, 01/22/2025, and 04/16/2025 have been fully considered with all references. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 34 and 35 are objected to because of the following informalities: claims 34 and 35 recites ellipses which by definition indicates pause or omission of words. If it is omission, it is unclear what is missing and the rejection can be overcome by including missing language. If the ellipsis mean pause, it is unnecessary and should be deleted. Appropriate correction is required.
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 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: steps of forming condensate of abscisic acid-like substance and nitrogen-containing compound. It is not clear if additional reaction is occurring between abscisic acid-like compound and nitrogen-containing compound as part of the claimed method of “applying” the two compounds or if the condensation reaction is limiting the compound(s) being applied in the claimed method.
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.
Zhang
Claims 18, 23, and 36-40 are rejected under 35 U.S.C. 102 (a)(1) as being unpatentable by Zhang et.al. (WO2007008580A1 published 01/18/2007; cited in IDS filed 01/22/2025)
For claims 18, 23, 37, and 38
Zhang teaches method of increasing stress (freezing, drought) tolerance by applying abscisic acid and triazole (reads on nitrogen containing compound) ([0002], [0005], and [0006]) to plants as claimed in instant claims 18 and 23.
Zhang also teaches that abscisic acid and triazole can be in liquid form ([0033], lines 1-3; [0040], lines 1-3) at concentrations of 0.04-1000 µM (which reads as 0.04 µM to 1 mM) of abscisic acid ([0039], lines 6-9) and 1-1000 µM (reads as 10-3 to 1 mM) of uniconazole ([0039], lines 12-14). The higher end (1 mM) of the concentration range of abscisic acid taught by Zhang anticipates the genus of claimed concentration range 0.004 μM to 10 mM in the instant claim 37 (See MPEP § 2131.03 I). Similarly, the higher end (1 mM) of the concentration range of uniconazole (nitrogen-containing compound) taught by Zhang anticipates the genus of claimed concentration range of 0.25 mM to 100 mM in the instant claim 38. (See MPEP § 2131.03 I)
For claim 36
In the light of 112(b) rejection, it is not clear whether abscisic acid and nitrogen-containing compound are applied in form of condensate or they form condensate when applied to plants. It is interpreted by examiner as abscisic acid and nitrogen-containing compound may form condensate when combined together. Zhang teaches combined application of abscisic acid and nitrogen-containing compound ([0033], lines1-2) which reads on instant claim.
For claims 39 and 40
Gene expression is the inherent property of the compounds in the claimed concentration to induce the gene expression. As evidenced by the instant specification, applying abscisic acid and nitrogen-containing compounds to the plants, induces the gene expression of genes such as MAPKKK18. Zhang teaches applying abscisic acid and nitrogen-containing compound to the plants which would necessarily induce the gene expression of MAPKKK18 gene.
Todorov
Claims 18, 23, 34, 36, 37, and 39-40 are rejected under 35 U.S.C. 102 (a)(1) as being unpatentable by Todorov et.al. (Effect of Putrescine, 4-PU-30, and Abscisic Acid on Maize Plants Grown under Normal, Drought, and Rewatering Conditions. J Plant Growth Regul 17, 197–203; 1998).
Todorov teaches treating maize plants with abscisic acid (reads on abscisic acid-like substance of instant claim 18 and 23) and putrescine (reads on nitrogen-containing compound of instant claim 18 and compound of formula II of instant claim 34) and subjecting to drought stress conditions to study effect of stress tolerance (Abstract, lines 1-18; method/materials section, lines 1-9). Todorov also teaches abscisic acid and putrescine are applied at concentration of 10-5 M (calculated as 0.01 mM), to plants by foliar application (Abstract, lines 3-6; Materials and Methods section, lines 4-6). Todorov also teaches putrescine at concentration of 10-3 M (calculated as 1 mM) is effective for stress tolerance (Materials and Methods section, line 8). Todorov teaches concentration of abscisic acid and putrescine as M which is moles per liter. Thus, Todorov inherently teaches that abscisic acid and putrescine are in the form of liquid as recited in instant claims 37 and 38. The concentration of 0.01 mM of abscisic acid taught by Todorov anticipates the genus of concentration range 0.004 μM to 10 mM recited in instant claim 37 (See MPEP § 2131.03 I). the concentration of 1 mM putrescine as taught by Todorov anticipates genus of claimed concentration range 0.25 mM to 100 mM in the instant claim 38. (See MPEP § 2131.03 I)
For claim 36
In the light of 112(b) rejection, it is not clear whether abscisic acid and nitrogen-containing compound are applied in form of condensate or they form condensate when applied to plants. It is interpreted by examiner as abscisic acid and nitrogen-containing compound may form condensate when combined together. Todorov teaches combined application of abscisic acid and nitrogen-containing compound (Abstract, lines 1-18; method/materials section, lines 1-9) which reads on instant claim.
For claims 39 and 40
Gene expression is the inherent property of the compounds in the claimed concentration to induce the gene expression, or the induced gene expression is the necessary results of the method of applying the two compounds in those concentration, as evidenced by the instant specification ([0020]).
Claim Rejections - 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.
Zhang and Silverman
Claims 18, 23, 24, and 36-40 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et.al. (WO2007008580A1 published 01/18/2007; cited in IDS filed 01/22/2025) in view of Silverman et.al. (WO2017192645A1 published 11/09/2017).
Zhang teaches method of increasing stress (freezing, drought) tolerance by applying abscisic acid and triazole (reads on nitrogen containing compound) as discussed supra.
Zhang fails to teach the abscisic acid is (S)-abscisic acid as recited in instant claim 24.
Silverman teaches method of improving stress tolerance comprising applying effective amount of (S)-abscisic acid and glycine betaine (nitrogen-containing compound) to plants ([0001]).
It would have been prima facie obvious for a person of ordinary skills in the art before the effective filing date of the instant application to substitute abscisic acid with (S)-abscisic acid because (S)-abscisic acid is known to promote stress tolerance and maintain growth under stress conditions ([0003], lines 3-4+).
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since Silverman have demonstrated that use of (S)-abscisic acid is routine and known in the art for promoting stress tolerance and maintaining growth and development under stress conditions ([0003], lines 1-4+).
Zhang and Mitsuyoushi
Claims 18, 23, 24, 34, 35, and 36-40 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et.al. (WO2007008580A1 published 01/18/2007; cited in IDS filed 01/22/2025) in view of Mitsuyoushi et.al. (USA4231789 published 11/04/1980).
Zhang teaches a method for inducing environmental stress tolerance in a plant by applying abscisic acid and a nitrogen-containing compound throughout the reference.
Zhang fails to teach nitrogen-containing compound of formula II recited in the instant claim 34. Zhang fails to further teach the nitrogen-containing compound of formula II-1 and II-2 as recited in claim 35.
Mitsuyoushi teaches alkylenediamines represented by general formula NH2-(Ch2)n-NH2 where n=4 to 12, and R1 and R2 represent hydrogen atoms (claim 1), for protecting crops from damages such as cold weather, frost, wilting of leaves, phytochemical oxidants etc. (abstract; summary of invention; and claim 1) which reads on nitrogen-containing compounds of formula II and II-1 recited in instant claims 34 and 35. The nitrogen-containing compound pentamethylenediamine (Pg.2, Column 2, line 40) represented by formula NH2-(Ch2)n-NH2 where n=5, anticipates compound of formula II-1 recited in instant claim 35.
It would have been prima facie obvious for a person of ordinary skills in the art before the effective filing date of the instant application to substitute triazole pesticide with alkylenediamine compounds taught by Mitsuyoushi in the method of increasing stress tolerance taught by Zhang and arrive at the claimed invention. It would have been obvious for a skilled artisan to try alkylenediamine compounds from finite number of diamines taught by Mitsuyoushi in combination with abscisic acid according to Zhang because both Zhang and Mitsuyoushi teaches method of increasing stress tolerance in crops. Also, both teaches method applicable to freezing and drought tolerance.
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since Zhang has demonstrated use of abscisic acid and nitrogen-containing compound for increasing stress tolerance in crops is routine and known in the art and Mitsuyoushi teaches nitrogen-containing compounds such as alkylenediamines are useful for stress tolerance.
Todorov and Silverman
Claims 18, 23, 24, 34, 36, 37, 38, and 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Todorov et.al. (Effect of Putrescine, 4-PU-30, and Abscisic Acid on Maize Plants Grown under Normal, Drought, and Rewatering Conditions. J Plant Growth Regul 17, 197–203 (1998)) in view of Silverman et.al. (WO2017192645A1 published 11/09/2017).
Todorov teaches use of abscisic acid and putrescine (nitrogen-containing compound) to increase drought stress tolerance throughout the reference as discussed supra.
For claim 24
Todorov does not explicitly teach abscisic acid is (S)-abscisic acid.
Silverman teaches method of improving stress tolerance comprising applying effective amount of (S)-abscisic acid and glycine betaine (nitrogen-containing compound) to plants ([0001]).
It would have been prima facie obvious for a person of ordinary skills in the art before the effective filing date of the instant application to substitute abscisic acid with (S)-abscisic acid because (S)-abscisic acid is known to promote stress tolerance and maintain growth under stress conditions ([0003], lines 3-4+).
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since Silverman have demonstrated that use of (S)-abscisic acid is routine and known in the art for promoting stress tolerance and maintaining growth and development under stress conditions ([0003], lines 1-4+).
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
US’324, Zhang, Silverman, and Mitsuyoushi
Claims 18, 23, 24, 34, 35, and 37-38 rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 10,568,324 B2 in view of Zhang, Silverman, and Mitsuyoushi.
US’324-B2 claims applying abscisic acid and an amino acid (reads as nitrogen-containing compound) selected from group consisting of leucine, isoleucine, phenylalanine, and combinations thereof to a fruit plant (claim 1) as recited in the instant claim 18. US’324-B2 further claims applying a solution comprising the amino acid(s) and abscisic acid, or applying an amino acid solution and an abscisic acid solution, wherein the concentration of the amino acid(s) is 0.2 mM to 100 mM, and wherein the concentration of abscisic acid is 0.1 μM to 10 mM (claim 2). The end point concentration of 100 mM of amino acid taught by US 10,568,324 B2, anticipates genus of the claimed concentration range of 0.25 mM to 100 mM of nitrogen-containing compound in instant claim 38. Similarly, the end point concentration of 10 mM of abscisic acid taught by US’324-B2, anticipates the genus of claimed concentration range of 0.004 μM to 10 mM abscisic acid in the instant claim 37.
US’324-B2 differs from the instantly claimed invention in that the method does not induce stress tolerance in a plant as recited in the instant claim 18. US’324-B2 does not claim abscisic acid is (S)-abscisic acid as recited in instant claim 24; furthermore amino acid does not represent the nitrogen-containing compound of formula II as recited in instant claim 34 and compound of formula II-1 and II-2 as recited in the instant claim 35.
Zhang teaches method of increasing stress tolerance by applying abscisic acid and triazole (reads on nitrogen containing compound) ([0002], [0005], and [0006]) to plants as claimed in instant claims 18 and 23.
Silverman teaches method of improving stress tolerance comprising applying effective amount of (S)-abscisic acid and glycine betaine (nitrogen-containing compound) to plants ([0001]).
Mitsuyoushi teaches alkylenediamines represented by general formula NH2-(Ch2)n-NH2 where n=4 to 12, and R1 and R2 represent hydrogen atoms (claim 1), for protecting crops from damages such as cold weather, frost, wilting of leaves, phytochemical oxidants etc. (abstract; summary of invention; and claim 1) which reads on nitrogen-containing compounds of formula II and II-1 recited in instant claims 34 and 35. The nitrogen-containing compound pentamethylenediamine (Pg.2, Column 2, line 40) represented by formula NH2-(Ch2)n-NH2 where n=5, anticipates compound of formula II-1 recited in instant claim 35.
For claim 18
It would have been prima facie obvious for a person of ordinary skills in the art to apply abscisic acid and an amino acid (nitrogen-containing compound) to plants as claimed in claim 1 of US’324-B2, for the purpose of inducing environmental stress tolerance as claimed in the instant claim 18.
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications because Zhang has demonstrated the use of abscisic acid and nitrogen-containing compound for inducing the environmental stress tolerance in plants.
For claim 24
It would have been prima facie obvious for a person of ordinary skills in the art to substitute abscisic acid with (S)-abscisic acid in the claim 1 of US’324-B2 as taught by Silverman and arrive at the claimed invention in the instant claim 24 because (S)-abscisic acid is known to promote stress tolerance and maintain growth under stress conditions ([0003], lines 3-4+).
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since Silverman have demonstrated that use of (S)-abscisic acid is routine and known in the art for promoting stress tolerance and maintaining growth and development under stress conditions ([0003], lines 1-4+).
For claims 34 and 35
It would have been prima facie obvious for a skilled artisan to substitute amino acid in the claim 1 of the US’324-B2 with pentamethylenediamine compounds from finite number of diamines taught by Mitsuyoushi and arrive at the claimed invention of the instant claims 34 and 35 because Mitsuyoushi teaches that diamines are useful for inducing stress tolerance in the plants.
A person of ordinary skill in the art would have reasonable expectation of success of achieving stress tolerance by use of abscisic acid and amino acid taught in US10,568,324 B2 since Zhang has demonstrated use of abscisic acid and nitrogen-containing compound for increasing stress tolerance in crops is routine and known in the art and Mitsuyoushi teaches nitrogen-containing compounds such as alkylenediamines are useful for stress tolerance.
US’410, Zhang, Silverman, and Mitsuyoushi
Claims 18, 23, 24, 34, 35, and 37-38 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 13 of co-pending Application No. 19/443,410 in view of Zhang, Silverman, and Mitsuyoushi.
This is a provisional non-statutory double patenting rejection.
US’410 claims method for inducing disease resistance (reads on stress tolerance) in a plant by applying one kind of copper compound and one kind of amino acid to a plant (claim 1). US’410 further claims amino acid (reads on nitrogen-containing compound) is a liquid containing amino acid at concentration of 0.02 mM to 10 mM (claim 13). The end point concentration of 10 mM amino acid anticipates the genus of claimed concentration range of 0.25 mM to 100 mM nitrogen-containing compound in the instant claim 38.
US’410 differs from the instantly claimed invention in that it does not claim applying abscisic acid as recited in the instant claim 18 and further does not claim abscisic acid is (S)-abscisic acid as recited in claim 24. US’410 also does not claim abscisic acid is a liquid containing abscisic acid at the concentration of 0.004 μM to 10 mM as recited in the instant claim 37. Furthermore amino acid does not represent the nitrogen-containing compound of formula II as recited in instant claim 34 and compound of formula II-1 and II-2 as recited in the instant claim 35.
Zhang teaches method of increasing stress tolerance by applying abscisic acid and triazole (reads on nitrogen containing compound) ([0002], [0005], and [0006]) to plants as claimed in instant claims 18 and 23. Zhang also teaches that abscisic acid can be in liquid form ([0033], lines 1-3; [0040], lines 1-3) at concentrations of 0.04-1000 µM (which reads as 0.04 µM to 1 mM) of abscisic acid ([0039], lines 6-9). The higher end (1 mM) of the concentration range of abscisic acid taught by Zhang anticipates the genus of claimed concentration range 0.004 μM to 10 mM in the instant claim 37.
Silverman teaches applying (S)-abscisic acid and glycine betaine (nitrogen-containing compound) to plants for improving stress tolerance comprising ([0001]) as recited in the instant claim 24.
Mitsuyoushi teaches alkylenediamines represented by general formula NH2-(Ch2)n-NH2 where n=4 to 12, and R1 and R2 represent hydrogen atoms (claim 1), for protecting crops from damages such as cold weather, frost, wilting of leaves, phytochemical oxidants etc. (abstract; summary of invention; and claim 1) which reads on nitrogen-containing compounds of formula II and II-1 recited in instant claims 34 and 35. The nitrogen-containing compound pentamethylenediamine (Pg.2, Column 2, line 40) represented by formula NH2-(Ch2)n-NH2 where n=5, anticipates compound of formula II-1 recited in instant claim 35.
For claim 18
It would have been obvious for a person of ordinary skills in the art to modify the method of inducing disease resistance (reads as stress tolerance) as claimed in claim 1 of US’410 according to Zhang and substitute copper compound with abscisic acid and arrive at the claimed invention of the instant claim 18.
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications because Zhang has demonstrated the use of abscisic acid and nitrogen-containing compound for inducing the environmental stress tolerance in plants.
For claim 24
It would have been prima facie obvious for a person of ordinary skills in the art to substitute abscisic acid with (S)-abscisic acid as taught by Silverman, in the claim 1 of US’410 modified according to Zhang and arrive at the claimed invention in the instant claim 24 because (S)-abscisic acid is known to promote stress tolerance and maintain growth under stress conditions ([0003], lines 3-4+).
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since Silverman have demonstrated that use of (S)-abscisic acid is routine and known in the art for promoting stress tolerance and maintaining growth and development under stress conditions ([0003], lines 1-4+).
For claims 34 and 35
It would have been obvious for a skilled artisan to substitute amino acid in the claim 1 of the US’410 with pentamethylenediamine compounds from finite number of diamines taught by Mitsuyoushi and arrive at the claimed invention of the instant claims 34 and 35 because Mitsuyoushi teaches that diamines are useful for inducing stress tolerance in the plants.
A person of ordinary skill in the art would have reasonable expectation of success of achieving stress tolerance by use of abscisic acid and amino acid collectively taught by US’410 and Zhang because collectively, Zhang has demonstrated use of abscisic acid and nitrogen-containing compound for increasing stress tolerance in crops is routine and known in the art and Mitsuyoushi teaches nitrogen-containing compounds such as alkylenediamines are useful for stress tolerance.
For claim 37
It would have been obvious for a person of ordinary skills in the art to use concentration of abscisic acid taught by Zhang in the claim 1 of US’410 modified according to Zhang and arrive at the claimed invention in the instant claim 37.
A person of ordinary skill in the art would have reasonable expectation of success of using abscisic acid at the concentration taught by Zhang in the method disclosed in US’410 because Zhang has demonstrated use of abscisic acid and nitrogen-containing compound for increasing stress tolerance in crops is routine and known in the art and US’410 teaches use of nitrogen-containing compound for disease resistance.
US’991, Zhang, Silverman, and Mitsuyoushi
Claims 18, 23, 24, 34, 35, and 37-38 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 8 of co-pending Application No. 19/009,991 in view of Zhang, Silverman, and Mitsuyoushi.
This is a provisional non-statutory double patenting rejection.
US’991 claims method for inducing pest damage resistance (reads on stress tolerance) in a plant by applying nitrogen-containing compound represented by general formula I (claim 1). US’991 further claims nitrogen-containing compound is in form of a liquid containing compound at concentration of 0.1 mM to 1000 mM (claim 8).
US’991 differs from the instantly claimed invention in that it does not claim applying abscisic acid as recited in the instant claim 18 and further does not claim abscisic acid is (S)-abscisic acid as recited in claim 24. US’991 also does not claim abscisic acid is a liquid containing abscisic acid at the concentration of 0.004 μM to 10 mM as recited in the instant claim 37. Furthermore amino acid does not represent the nitrogen-containing compound of formula II as recited in instant claim 34 and compound of formula II-1 and II-2 as recited in the instant claim 35. US’991 further does not claim concentration of nitrogen-containing compound at 0.25 mM to 100 mM as recited in the instant claim 38.
Zhang teaches method of increasing stress tolerance by applying abscisic acid and triazole (reads on nitrogen containing compound) ([0002], [0005], and [0006]) to plants as claimed in instant claims 18 and 23. Zhang also teaches that abscisic acid can be in liquid form ([0033], lines 1-3; [0040], lines 1-3) at concentrations of 0.04-1000 µM (which reads as 0.04 µM to 1 mM) of abscisic acid ([0039], lines 6-9). The higher end (1 mM) of the concentration range of abscisic acid taught by Zhang anticipates the genus of claimed concentration range 0.004 μM to 10 mM in the instant claim 37.
Silverman teaches applying (S)-abscisic acid and glycine betaine (nitrogen-containing compound) to plants for improving stress tolerance comprising ([0001]).
For claims 18 and 37
It would have been prima facie obvious for a person of ordinary skills in the art to use abscisic acid as taught by Zhang in the method of inducing pest damage resistance (reads as stress tolerance) as claimed in claim 1 of US’991 and arrive at the claimed invention of the instant claim 18. Furthermore, it would have been obvious for a skilled artisan to use abscisic acid at the concentration taught by Zhang and arrive at claimed invention of instant claim 37.
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications because Zhang has demonstrated the use of abscisic acid and nitrogen-containing compound for inducing the environmental stress tolerance in plants.
For claim 24
It would have been prima facie obvious for a person of ordinary skills in the art to substitute abscisic acid with (S)-abscisic acid as taught by Silverman, in the claim 1 of US’991 modified according to Zhang and arrive at the claimed invention in the instant claim 24 because (S)-abscisic acid is known to promote stress tolerance and maintain growth under stress conditions ([0003], lines 3-4+).
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since Silverman have demonstrated that use of (S)-abscisic acid is routine and known in the art for promoting stress tolerance and maintaining growth and development under stress conditions ([0003], lines 1-4+).
For claims 34 and 35
It would have been prima facie obvious for a skilled artisan to substitute nitrogen-containing compound in the method of claim 1 of the US’991 modified according to Zhang, with pentamethylenediamine compounds from finite number of diamines taught by Mitsuyoushi and arrive at the claimed invention of the instant claims 34 and 35 because Mitsuyoushi teaches that diamines are useful for inducing stress tolerance in the plants.
A person of ordinary skill in the art would have reasonable expectation of success of achieving stress tolerance by use of abscisic acid and nitrogen-containing compound collectively taught by US’991 and Zhang and modified according to Mitsuyoushi because US’991 has demonstrated nitrogen-containing compound for inducing pest damage resistance (reads on stress tolerance) in crops is routine and known in the art and Mitsuyoushi teaches nitrogen-containing compounds such as alkylenediamines are useful for stress tolerance.
For claim 38
It would have been prima facie obvious for a person of ordinary skills in the art to use concentration range of nitrogen-containing compound claimed in the claim 8 of US’991 and optimize through routine experimentation and arrive at the claimed concentration in the instant claim 38.
A person of ordinary skill in the art would have reasonable expectation of success of arriving at the claimed invention because the concentration of the nitrogen-containing compound is a result effective variable.
Allowable Subject Matter
Compound of formula II-2 in the instant claim 35 is free of prior art searched.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIJAY DINESHBHAI PATEL whose telephone number is (571)272-5188. The examiner can normally be reached M - F 8-5 EST.
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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.
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/VIJAY D PATEL/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616