DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 26 May 2026 has been entered.
Applicant’s arguments, filed 26 May 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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Claims 1-7, 9, 12-22, and 24-26 are pending; claims 1-7, 9, and 25-26 are examined, claims 12-22 and 24 have been withdrawn.
Claim Interpretation
The term “early season” is believed to refers to a period of less than 60 days after emergence in view of Pg. 2 Ln. 25-26 of the instant specification. Indicators of early season vigor is believed to be increased “leaf area, groundcover, aboveground biomass, belowground biomass, total biomass, or any combination thereof” in view of instant application specification on Pg. 7 Ln. 5-10.
The term “canopy formation” is believed to refer to the formation of the aboveground portion of the plant in view of Pg. 2 Ln. 29-30 of the instant specification. Indicators of canopy formation is believed to be increased “leaf area, groundcover, aboveground biomass, belowground biomass, total biomass, or any combination thereof” in view of instant application specification on Pg. 7 Ln. 5-10.
Response to Arguments
Applicant’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made.
Claim Rejections - 35 USC § 103 (New)
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 106818762 A, 06/13/2017) (hereinafter Zhang) in view of Li et al. (CN 105010347 A, 11/04/2015, IDS reference of 09/17/2024) (hereinafter Li).
Regarding claims 1 and 7, Zhang discloses applying fenclorim to rice seeds as a treating agent promotes root system development, plant strain growth, and improve seedling resistance (p.2, § Content, ¶1). The amount of fenclorim is 0.1-95 wt.%, varying depending on the formulation (claim 4). The rice seeds treating compositions may also include a metalaxyl seed coat agent (i.e. fungicide) (p.5, last ¶) and diatomite (i.e. diatomaceous earth, an insecticide) (p. 4, ¶ 1). In an embodiment, the formulation has a seed dressing to rice seed ratio is 1: (200-600) (i.e. about 1.6 g/kg seed to about 5 g/kg seed) (p.4, ¶9). The above ground plant weight on average increases by 13.3% - 20.4%, plant height increases by an average of 10.1-16.3%, and the plant root fresh weight on average increases by 16.0-23.8% (p.6, ¶ 3) when compared to the control group receiving the treatment minus the treating agent (p.7, § Embodiment 12, ¶ 1).
Accordingly, Zhang discloses planting fenclorim-treated rice seeds that were treated with about 1.6-5 g/kg seed of fenclorim, which results in plants with increased plant height, above ground plant, and plant root compared with control plants when both were treated with an insecticide and fungicide.
Zhang differs from the instant claims insofar as not explicitly disclosing wherein the results were obtained by 45 days after emergence.
Li discloses a fenclorim-contained seed-coating suspension that reinforces moisture absorption ability and water retention property of seeds, and significantly improves germination rate and seedling rate of the seeds (abs). The fenclorim may be contained in 10-30% by mass (p.2, § Summary, ¶ 3). The seed coating agent and seed ratio may be 1-2 : 1000 (i.e. 1-2 g/kg seed) ((p.2, § Summary, ¶ 13). Observations of effects on rice may start second day after fenclorim treatment, and observations may be made every 3 days thereafter regarding rice seedling situation and status of growth (p.3, § 1.4.1, ¶ 1). Presence of seedling are observed at 15 and 30 days after sowing (p.4, ¶ 3 & 6).
Zhang discloses wherein treatment with fenclorim improves seedling resistance. Accordingly, it would have been obvious to one of ordinary skill in the art to have made observations 15 or 30 days after sowing, since each is a known and effective timing for emergence of rice seedlings as taught by Li. Accordingly, it would have been obvious to one of ordinary skill in the art that the results of Zhang were obtained during the seedling period, including 15 or 30 days after sowing. As such, results obtained by 45 days after emergence, or alternatively, 30 days after emergence (instant claims 3-6), would have been obvious.
Regarding claim 1 reciting early season vigor or canopy formation, as discussed above, early season vigor and canopy formation are interpreted to include increased aboveground biomass, underground biomass, and/or total biomass. Accordingly, Zhang discloses stimulating early season vigor or canopy formation as instantly claimed.
Regarding claim 1 reciting increase in groundcover, as noted by p.3, line 30 to p.4, line 1 of the instant Specification, “groundcover” refers to the area occupied by aboveground foliage of a plant when viewed from above. Zhang discloses increase in plant height and above ground plant amount. As such, it reasonably appears that an increase in ground cover would have been obvious.
Regarding claim 2, as discussed above, Zhang discloses an increase in aboveground and underground biomass.
Regarding claims 3-6, Zhang further discloses wherein the data points are each obtained from an average value of 10 randomized experimental and control plants, and final results obtained by repeating such data points three times and obtaining an average (p. 7, § Embodiment 12).
As noted by p.3, lines 19-21, the term “statistically significant” refers to an experimentally verifiable result that is not likely to occur randomly but is instead likely to be attributable to specific cause such as the fenclorim seed treatment.
Thus, the results of Zhang, demonstrating experimentally verifiable result not likely to occur randomly, but attributable to fenclorim seed treatment (evident from control plants, data from multiple plants, and repeated data points), meet the limitation of being statistically significant as instantly claimed.
Regarding claim 3 reciting an increase in leaf area, as noted by p. 3, lines 24-25 of the instant Specification, leaf area refers to the sum of the surface area of all living aboveground foliage of a plant per unit of ground area. Zhang discloses increases in plant height and above ground plant amount. As such, it reasonably appears that an increase in leaf area would have been obvious.
Regarding claim 26, Zhang does not disclose wherein the seeds are required to be treated with an herbicide. Thus the claimed limitations would have been obvious.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 106818762 A, 06/13/2017) (hereinafter Zhang) in view of Li et al. (CN 105010347 A, 11/04/2015, IDS reference of 09/17/2024) (hereinafter Li), as applied to claims 1-7 and 26 above, further in view of Yerkes et al. (US 2014/0031224 A1, 01/30/2014) (hereinafter Yerkes).
Regarding claim 9, Zhang and Li differ from the instant claim insofar as not explicitly disclosing an instantly claimed herbicide.
However, Yerkes discloses a composition comprising an herbicide and fenclorim that can be applied separately to rice that reduces the growth inhibition and injury to the plants when compared to control plants ([0035], [0077] & [Table 13]). The composition may be applied in conjunction with other herbicides including clomazone ([0044]). The rice seeds may be treated with an herbicide [Table 13] including clomazone, pendimethalin, and thiobencarb [0044]. The compositions may also contain other compatible components including herbicides, plant growth regulators, fungicides, and insecticides [0059]. The composition may be applied to seeds and emerging seedlings, for transplanted rice, water-seeded rice, direct-seeded rice, and rice crops tolerant to various classes of herbicides ([0027], [0037]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have included an herbicide such as clomazone in the treatment of Zhang, since it is a known and effective herbicide suitable to use on rice seeds as taught by Yerkes. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP § 2144.07.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 106818762 A, 06/13/2017) (hereinafter Zhang) in view of Li et al. (CN 105010347 A, 11/04/2015, IDS reference of 09/17/2024) (hereinafter Li), as applied to claims 1-7 and 26 above, further in view of Linscombe et al. (US 2021/0235648 A1, 08/05/2021) (hereinafter Linscombe).
Regarding claim 25, Zhang and Li differ from the instant claim insofar as not explicitly disclosing wherein the herbicide-tolerant rice includes a long grain inbred rice cultivar.
However, Linscombe discloses an herbicide-tolerant long-grain aromatic rice cultivar designated “CLJ01” (abs) that has higher yield and higher quality than conventional aromatic rice lines ([0032]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have applied the rice seed treatment of Zhang to an herbicide-tolerant rice cultivar such as “CLJ01,” since it is a desirable rice providing higher yield and quality as taught by Linscombe.
As noted by p. 11, lines 23-26 of the instant Specification, “CLJ01” is an instantly claimed rice cultivar.
Claims 1-7 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 106818762 A, 06/13/2017) (hereinafter Zhang) in view of Chen et al. (“Fenclorim effects on rice germination and yield”. 2013. Canadian Journal of Plant Science. 93(2): 237-241. https://doi.org/10.4141/cjps2012-243) (hereinafter Chen).
Regarding claims 1 and 7, Zhang discloses applying fenclorim to rice seeds as a treating agent promotes root system development, plant strain growth, and improve seedling resistance (p.2, § Content, ¶1). The amount of fenclorim is 0.1-95 wt.%, varying depending on the formulation (claim 4). The rice seeds treating compositions may also include a metalaxyl seed coat agent (i.e. fungicide) (p.5, last ¶) and diatomite (i.e. diatomaceous earth, an insecticide) (p. 4, ¶ 1). In an embodiment, the formulation has a seed dressing to rice seed ratio is 1: (200-600) (i.e. about 1.6 g/kg seed to about 5 g/kg seed) (p.4, ¶9). The above ground plant weight on average increases by 13.3% - 20.4%, plant height increases by an average of 10.1-16.3%, and the plant root fresh weight on average increases by 16.0-23.8% (p.6, ¶ 3) when compared to the control group receiving the treatment minus the treating agent (p.7, § Embodiment 12, ¶ 1).
Accordingly, Zhang discloses planting fenclorim-treated rice seeds that were treated with about 1.6-5 g/kg seed of fenclorim, which results in plants with increased plant height, above ground plant, and plant root compared with control plants when both were treated with an insecticide and fungicide.
Zhang differs from the instant claims insofar as not explicitly disclosing wherein the results were obtained by 45 days after emergence.
Chen teaches that the safeners have been shown to reduce herbicide toxicity in maize, sorghum, wheat, rice, and barley (p. 238, Col. 1, ¶ 1). It was found that rice seeds treated with fenclorim, a safener, accelerates the germination of rice and increased the rice yield (p. 240, Col. 2, ¶¶ 1-2). Chen also found that fenclorim increases the rice shoots and roots dry weight [Table 3 and 4] after 21 days of growth.
Zhang discloses wherein treatment with fenclorim improves seedling resistance. Accordingly, it would have been obvious to one of ordinary skill in the art to have made observations after 21 days of growth, since it is a known and effective timing for emergence of rice seedlings as taught by Chen. Accordingly, it would have been obvious to one of ordinary skill in the art that the results of Zhang were obtained during the seedling period, including after 21 days of growth. As such, results obtained by 45 days after emergence, or alternatively, 30 days after emergence (instant claims 3-6), would have been obvious.
Regarding claim 1 reciting early season vigor or canopy formation, as discussed above, early season vigor and canopy formation are interpreted to include increased aboveground biomass, underground biomass, and/or total biomass. Accordingly, Zhang discloses stimulating early season vigor or canopy formation as instantly claimed.
Regarding claim 1 reciting increase in groundcover, as noted by p. 3, line 30 to p. 4, line 1 of the instant Specification, “groundcover” refers to the area occupied by aboveground foliage of a plant when viewed from above. Zhang discloses increase in plant height and above ground plant amount. As such, it reasonably appears that an increase in ground cover would have been obvious.
Regarding claim 2, as discussed above, Zhang discloses an increase in aboveground and underground biomass.
Regarding claims 3-6, Zhang further discloses wherein the data points are each obtained from an average value of 10 randomized experimental and control plants, and final results obtained by repeating such data points three times and obtaining an average (p. 7, § Embodiment 12).
As noted by p.3, lines 19-21, the term “statistically significant” refers to an experimentally verifiable result that is not likely to occur randomly but is instead likely to be attributable to specific cause such as the fenclorim seed treatment.
Thus, the results of Zhang, demonstrating experimentally verifiable result not likely to occur randomly, but attributable to fenclorim seed treatment (evident from control plants, data from multiple plants, and repeated data points), meet the limitation of being statistically significant as instantly claimed.
Regarding claim 3 reciting an increase in leaf area, as noted by p. 3, lines 24-25 of the instant Specification, leaf area refers to the sum of the surface area of all living aboveground foliage of a plant per unit of ground area. Zhang discloses increases in plant height and above ground plant amount. As such, it reasonably appears that an increase in leaf area would have been obvious.
Regarding claim 26, Zhang does not disclose wherein the seeds are required to be treated with an herbicide. Thus the claimed limitations would have been obvious.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 106818762 A, 06/13/2017) (hereinafter Zhang) in view of Chen et al. (“Fenclorim effects on rice germination and yield”. 2013. Canadian Journal of Plant Science. 93(2): 237-241. https://doi.org/10.4141/cjps2012-243) (hereinafter Chen), as applied to claims 1-7 and 26 above, further in view of Yerkes (US 20140031224 A1).
Regarding claim 9, Zhang and Chen differ from the instant claim insofar as not explicitly disclosing a claimed herbicide.
However, as discussed above, Yerkes teaches that the rice seed is treated with an herbicide [Table 13] including clomazone, pendimethalin, and thiobencarb [0044]. Yerkes teaches the use of herbicides, plant growth regulates, fungicides, insecticides [0059].
Accordingly, it would have been obvious to one of ordinary skill in the art to have included an herbicide such as clomazone in the treatment of Zhang, since it is a known and effective herbicide suitable to use on rice seeds as taught by Yerkes. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP § 2144.07.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 106818762 A, 06/13/2017) (hereinafter Zhang) in view of Chen et al. (“Fenclorim effects on rice germination and yield”. 2013. Canadian Journal of Plant Science. 93(2): 237-241. https://doi.org/10.4141/cjps2012-243) (hereinafter Chen), as applied to claims 1-7 and 26 above, further in view of Linscombe et al. (US 2021/0235648 A1, 08/05/2021) (hereinafter Linscombe).
Regarding claim 25, Zhang and Chen differ from the instant claim insofar as not explicitly disclosing wherein the herbicide-tolerant rice includes a long grain inbred rice cultivar.
However, Linscombe discloses an herbicide-tolerant long-grain aromatic rice cultivar designated “CLJ01” (abs) that has higher yield and higher quality than conventional aromatic rice lines ([0032]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have applied the rice seed treatment of Zhang to an herbicide-tolerant rice cultivar such as “CLJ01,” since it is a desirable rice providing higher yield and quality as taught by Linscombe.
As noted by p. 11, lines 23-26 of the instant Specification, “CLJ01” is an instantly claimed rice cultivar.
Double Patenting (New)
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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.
Claims 1-7, 9, 25 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, 8-10, 14-15, 17-21, and 24 of copending Application No. 17/034,430 in view of Zhang et al. (CN 106818762 A, 06/13/2017) (hereinafter Zhang), Li et al. (CN 105010347 A, 11/04/2015, IDS reference of 09/17/2024) (hereinafter Li), Yerkes et al. (US 2014/0031224 A1, 01/30/2014) (hereinafter Yerkes), Chen et al. (“Fenclorim effects on rice germination and yield”. 2013. Canadian Journal of Plant Science. 93(2): 237-241. https://doi.org/10.4141/cjps2012-243) (hereinafter Chen), and Linscombe et al. (US 2021/0235648 A1, 08/05/2021) (hereinafter Linscombe).
The copending claims differ from the pending claims insofar as not explicitly teaching all the features of the claimed invention, such as instantly claimed increase in groundcover by 45 days after emergence.
However, these features are known in the art. As noted in the current rejections, the combined teachings of Zhang and Li and Zhang and Chen render obvious claims 1-7 and 26; the combined teachings of Zhang, Li, and Yerkes and Zhang, Chen, and Yerkes render obvious claims 1-7, 9, and 26; and the combined teachings of Zhang, Li, and Linscombe and Zhang, Chen, and Linscombe render obvious claims 1-7, 25 and 26.
Therefore, as claims 1, 5-6, 8-10, 14-15, 17-21, and 24 of copending Application No. 17/034,430, Zhang, Li, Yerkes, Chen, and Linscombe all disclose compositions comprising fenclorim for treating rice, it would have been prima facie obvious to one of ordinary skill in the art to have modified the copending application and to include the teachings of Zhang, Li, Yerkes, Chen, and Linscombe as discussed in the rejections above, because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as instantly claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." See MPEP 2144.06(I).
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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