DETAILED ACTION
Applicant’s arguments, filed 11/03/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Claims 1-7, 9, and 12-25 are pending; claims 1-7, 9 and 25 are examined, claims 12-24 have been withdrawn.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.
Claim Rejections - 35 USC § 103 (Maintained)
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 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yerkes (US 20140031224 A1).
Yerkes teaches 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 concentration of active ingredients is generally from 0.0005 to 98% by wt., depending on dilution ([0060]), and the herbicide can be applied in an amount between 1 g ae/ha to 250 g ae/ha and the safener in an amount 50 g ai/ha to 150 g ai/ha ([0042]). Yerkes teaches that the composition can 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]).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have treated rice seeds with fenclorim since it is a known and effective safener to reduce the growth inhibition and injury to plants.
Moreover, it would have been obvious to one of ordinary skill in the art to have selected an amount of fenclorim from the disclosed range of 0.0005 to 98% by wt., and application range of 50 g ai/ha to 150 g ai/ha, such that the amounts selected appear to overlap the instantly claimed amounts of fenclorim in g/kg seed. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I). Moreover, in any case, the selection of appropriate weight amounts would appear to require no more than routine testing on the part of the skilled artisan, and so alternatively it would have been obvious to determine workable ranges to arrive at the claimed amounts in g/kg seed. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A).
Regarding claim 1, Yerkes does not explicitly disclose wherein groundcover increases at least 4% 45 days after emergence average over at least four different cultivars of the cereal relative to control plants. However, since the safener of Yerkes is applied to the seeds and comprises substantially the same fenclorim in substantially the same amount, one of ordinary skill in the art would reasonably conclude that the groundcover would increase at least 4% 45 days after emergence average over at least four different cultivars of the cereal relative to control plants like the claimed invention. “Something which is old does not become patentable upon the discovery of a new property, and this need not have been discovered at the time of filing.” See MPEP 2112(I & II).
Regarding claim 2, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Given fenclorim is known to allow rice to grow normally, reduce injury, growth inhibition, and death relative to the control at 3 days and 21 days, one would have expected that there would have been increased leaf area, ground cover, aboveground biomass, and belowground biomass. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
Regarding claim 3, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Given fenclorim is known to allow rice to grow normally, reduce injury, growth inhibition, to the control 21 days, one would have expected that there would have been increased leaf area, ground cover, aboveground biomass, and belowground biomass. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
Regarding claim 4, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Given fenclorim is known to allow rice to grow normally, reduce injury, growth inhibition, to the control 21 days, one would have expected that there would have been increased leaf area, ground cover, aboveground biomass, and belowground biomass. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
Regarding claim 5, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Given fenclorim is known to allow rice to grow normally, reduce injury, growth inhibition, to the control 21 days, one would have expected that there would have been increased leaf area, ground cover, aboveground biomass, and belowground biomass. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
Regarding claim 6, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Given fenclorim is known to allow rice to grow normally, reduce injury, growth inhibition, to the control 21 days, one would have expected that there would have been increased leaf area, ground cover, aboveground biomass, and belowground biomass. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
Regarding claim 7, Yerkes teaches that the seed is rice [Table 13].
Regarding claim 9, 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].
Response to Arguments
Applicant asserts Yerkes does not disclose or suggest its use as a seed treatment. The safening effect described in Yerkes is based on reducing visual injury scores in rice plants exposed to herbicides, not on stimulating early season vigor or canopy formation. Furthermore, the application method in Yerkes involves foliar or soil application of mixtures, not seed treatment. The dosage of fenclorim is expressed in terms of active ingredient per hectare, not per kilogram of seed, and is calculated based on herbicide ratios, not independent biostimulant efficacy. Therefore, Yerkes does not teach or suggest the seed treatment dosage and the quantifiable increase in groundcover across multiple cultivars currently recited in claim 1.
The Examiner disagrees. As discussed above in the obviousness rejection, since Yerkes teaches applying a safener including fenclorim, to the seeds of plants including rice, in substantially the same amount as those instantly claimed, one of ordinary skill in the art would reasonably conclude that the treated seeds would display substantially the same effect, e.g., increases in groundcover or leaf area across multiple cultivars, like the claimed invention. “Something which is old does not become patentable upon the discovery of a new property, and this need not have been discovered at the time of filing.” See MPEP 2112(I & II). Moreover, in any case, regarding the instantly claimed quantifiable results, such limitations appear to be a direct result of the application of fenclorim. Thus one of ordinary skill in the art would reasonably expect an application of fenclorim as seed treatment would produce the same quantifiable result as the claimed invention.
Applicant asserts that the claimed invention demonstrates unexpected results that are both statistically significant and technically meaningful, distinguishing it from the teachings of the cited references, and that these results were achieved without the co-application of herbicides. Applicant also asserts the prior art all evaluate fenclorim in the context of herbicide detoxification or safening, and none of them disclose or suggest that fenclorim alone could produce such growth-promoting effects.
The Examiner does not find the argument persuasive. Applicants’ assertion is broader than those instantly claimed. The instant claims use the open-ended transitional phrase “comprising,” and therefore do not require treatment in the absence of herbicides or exclude the inclusion of other components. As such, it is not required for the prior art references to teach or suggest the same benefit as asserted by the Applicant, and the absence of such teachings in the prior art also does not render the instant claims nonobvious. Additionally, as discussed in the obviousness rejections above, Yerkes discloses wherein fenclorim may be applied separately, and Chen is directed to effects when seeds are treated with fenclorim, thus each teaching or at least suggesting the use of fenclorim alone.
Moreover, Applicants’ asserted unexpected results does not appear to be consistent with the examples in the instant Specification. For example, bottom section of page 8 of the instant Specification states wherein application of fenclorim may occur at the same time as the application of another agrochemical, and further states where an effective amount of fenclorim may be an amount that, when used with an effective amount of an agrochemical (e.g. herbicide) allows for or improves the efficacy of the agrochemical as compared to the same amount of the agrochemical alone. Bottom section of page 9 of the Specification further states fenclorim is a safener known to reduce the injury to rice caused by chloroacetanilide herbicides. Thus, treating seeds with fenclorim allows for expanded use of herbicides. Thus it does not appear the Specification limits the application of fenclorim to in the absence of an herbicide.
Lastly, even if the results were truly unexpected, the claims would not be commensurate in scope. As noted above, the instant claims do not exclude a herbicide, therefore the assertion of results in the absence of an herbicide are far narrower that what is instantly claimed.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (Chen Yong, Shen Xuefeng, and Fang Yue. 2013. Fenclorim effects on rice germination and yield. Canadian Journal of Plant Science. 93(2): 237-241. https://doi.org/10.4141/cjps2012-243)
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.
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have treated rice seeds with fenclorim since it is a known and effective safener to accelerate germination of rice and increase rice yield with increased shoots and roots dry weight.
Moreover, the selection of appropriate weight amounts of fenclorim would appear to require no more than routine testing on the part of the skilled artisan, and so it would have been obvious to determine workable ranges to arrive at the claimed amounts in g/kg seed. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A).
Regarding claim 1, Chen does not explicitly disclose wherein groundcover increases at least 4% 45 days after emergence average over at least four different cultivars of the cereal relative to control plants. However, since Chen discloses wherein safeners are known to be applied to various cereal plants (e.g., maize, sorghum, wheat, rice, and barley), and the safener of Chen is applied to the seeds and comprises substantially the same fenclorim in substantially the same amount, one of ordinary skill in the art would reasonably conclude that the groundcover would increase at least 4% 45 days after emergence average over at least four different cultivars of the cereal relative to control plants like the claimed invention. “Something which is old does not become patentable upon the discovery of a new property, and this need not have been discovered at the time of filing.” See MPEP 2112(I & II).
Regarding claim 2, Chen teaches that the rice seeds that is treated with fenclorim that accelerates the germination of rice and increased the rice yield [Pg. 4, Col. 2, Para. 2]. Chen also found that Fenclorim increases the rice shoots and roots dry weight [Table 3 and 4] after 21 days of growth. Something which is old (e.g. the method of Chen) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II). This is assumed to read on the required effective amount of fenclorim. See claim interpretation above.
Regarding claim 3, Chen teaches that that fenclorim increases the rice shoots dry weight [Table 3] after 21 days of growth. Something which is old (e.g. the method of Chen) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II). This is assumed to read on the required effective amount of fenclorim. See claim interpretation above.
Regarding claim 4, Something which is old (e.g. the method of Chen) does not become patentable upon the discovery of a new property (increased ground cover), and this need not have been discovered at the time of filing. See MPEP 2112(I & II). This is assumed to read on the required effective amount of fenclorim. See claim interpretation above.
Regarding claim 5, Chen teaches that that fenclorim increases the rice shoots dry weight [Table 3] after 21 days of growth. Something which is old (e.g. the method of Chen) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II). This is assumed to read on the required effective amount of fenclorim. See claim interpretation above.
Regarding claim 6, Chen teaches that that fenclorim increases the rice roots dry weight [Table 3] after 21 days of growth. Something which is old (e.g. the method of Chen) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II). This is assumed to read on the required effective amount of fenclorim. See claim interpretation above.
Regarding claim 7, Chen teaches that the plant is rice [Abstract].
Response to Arguments
Applicant asserts Chen does not disclose fenclorim as a biostimulant, nor does it involve seed treatment. The fenclorim application is not quantified in terms of g/kg seed, and the observed effects are not linked to early season vigor or canopy formation. Moreover, Chen does not report statistically significant increases in groundcover or leaf area across multiple cultivars. Therefore, Chen does not teach or suggest the claimed method.
The Examiner disagrees. As discussed above in the obviousness rejection, since Chen teaches applying a safener including fenclorim, to the seeds of plants including rice, in substantially the same amount as those instantly claimed, one of ordinary skill in the art would reasonably conclude that the treated seeds would display substantially the same effect, e.g., increases in groundcover or leaf area across multiple cultivars, like the claimed invention. “Something which is old does not become patentable upon the discovery of a new property, and this need not have been discovered at the time of filing.” See MPEP 2112(I & II). Moreover, in any case, regarding the instantly claimed statistically significant results, such limitations appear to be a direct result of the application of fenclorim. Thus one of ordinary skill in the art would reasonably expect an application of fenclorim as seed treatment would produce the same statistically significant results as the claimed invention.
Claims 1-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (Chen Yong, Shen Xuefeng, and Fang Yue. 2013. Fenclorim effects on rice germination and yield. Canadian Journal of Plant Science. 93(2): 237-241. https://doi.org/10.4141/cjps2012-243) in view of Yerkes (US 20140031224 A1).
The disclosures of Chen and Yerkes have been discussed in detail in the rejections supra.
Regarding claim 9, Chen differs 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 Chen, 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.
Response to Arguments
Applicant does not present specific arguments with regards to Chen and Yerkes.
Since the Examiner has discussed Chen above, this rejection is maintained.
Claims 1-7 and 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yerkes (US 20140031224 A1) in view Ricetec (Ricetec, “Planting 2016 - Ricetec.” Ricetec, 2016, www.ricetec.com/wp-content/uploads/2016/04/Planting-2016.pdf.).
The disclosure of Yerkes has been discussed in detail in the rejections supra. While Yerkes is believed to support a finding of obviousness, purely arguendo, for the purposes of complete prosecution, and for the purposes of this ground of rejection only, Yerkes will be interpreted as though it does not explicitly disclose the amount of rice to the safener.
Ricetec is drawn to seed planting and teaches that the most popular seeding rate of rice is around 22 lbs. per acre and is around 10.3 per ft2 [Pg. 1, Para. 1, Ln. 6-8].
Ricetec is not understood to be anticipatory as it fails to teach the use of fenclorim.
However, it would have been obvious to achieve the desired range of the amount of safener relative to the rice. A prima facie case of obviousness exists where the claimed ranges or amounts do overlap with the prior art. See MPEP 2144.05(I). In this case, the general conditions of a rice, fenclorim overlap the prior art ranges. As such, it would not have been inventive for the skilled artisan to have discovered the optimum or workable ranges of the rice and fenclorim.
Regarding claim 1, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. This is assumed to read on the required stimulated early season vigor and canopy formation and effective amount of fenclorim. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II). See claim interpretation above. Yerkes teaches the use of fenclorim, with herbicides, for the treatment of rice seeds to act as a safener. Yerkes teaches the safener in an amount 140 g ai/ha [Table 13] and that the safener is in an amount of 50 g ai/ha to 150 g ai/ha [0042]. Ricetec teaches that the most popular seeding rate of rice is around 22 lbs./acre which is 10 kg/acre (
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Regarding claim 2, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Given fenclorim is known to allow rice to grow normally, reduce injury, growth inhibition, and death relative to the control at 3 days and 21 days, one would have expected that there would have been increased leaf area, ground cover, aboveground biomass, and belowground biomass. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
Regarding claim 3, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Given fenclorim is known to allow rice to grow normally, reduce injury, growth inhibition, to the control 21 days, one would have expected that there would have been increased leaf area, ground cover, aboveground biomass, and belowground biomass. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
Regarding claim 4, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Given fenclorim is known to allow rice to grow normally, reduce injury, growth inhibition, to the control 21 days, one would have expected that there would have been increased leaf area, ground cover, aboveground biomass, and belowground biomass. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
Regarding claim 5, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Given fenclorim is known to allow rice to grow normally, reduce injury, growth inhibition, to the control 21 days, one would have expected that there would have been increased leaf area, ground cover, aboveground biomass, and belowground biomass. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
Regarding claim 6, Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Given fenclorim is known to allow rice to grow normally, reduce injury, growth inhibition, to the control 21 days, one would have expected that there would have been increased leaf area, ground cover, aboveground biomass, and belowground biomass. Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
Regarding claim 7, Yerkes teaches that the seed is rice [Table 13].
Regarding claim 9, 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].
Response to Arguments
Applicant asserts Ricetec is a planting guide that provides general recommendations for rice seeding rates and agronomic practices and does not mention fenclorim or any safener, nor does it discuss biostimulant effects, seed treatment protocols, or performance metrics such as groundcover. Ricetec is cited in combination with Yerkes to suggest that fenclorim dosage could be optimized based on seed density. However, Ricetec does not provide any motivation or expectation of success for using fenclorim as a biostimulant, and its teachings are entirely unrelated to the claimed invention.
The Examiner does not find the argument persuasive. As this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. As discussed in the rejections above, Yerkes teaches or at least suggests using fenclorim and provides general guidance on the amounts of fenclorim. Therefore, it is not necessary for Ricetec to teach each and every limitation of the instant claims. "Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations." See MPEP 2141 (III).
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, 9 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Yerkes (US 20140031224 A1) in view of Linscombe (US 2021/0235648 A1).
The disclosure of Yerkes has been discussed in detail above, and differs from the instant 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 fenclorim of Yerkes to an herbicide-tolerant rice cultivar such as “CLJ01,” since it is a known and effective herbicide-tolerant rice providing higher yield and quality as taught by Linscombe.
As noted by p. 11, lines 23-26 of the instant Specification, “CLJ01” is a instantly claimed rice cultivar.
Double Patenting (Maintained)
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 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 5-21 of U.S. Application No. 17/034,430 in view of Yerkes (US 20140031224 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The incident application is drawn a method of growing rice with fenclorim and an herbicide.
The conflicting claim is drawn to a method of growing cereal plant with 0.1 to 3 g/kg seed of fenclorim and an herbicide.
The conflicting claims fail to teach the use of clomazone, pendimethalin, or thiobencarb.
Yerkes teaches a composition consisting of fenclorim that is applied to rice that reduces the growth inhibition and injury to the plants when compared to control plants [0077] & [Table 13]. Yerkes teaches the use of herbicides, plant growth regulates, fungicides, insecticides [0059] and herbicides including clomazone and pendimethalin [0044]. Yerkes teaches that the herbicide can be applied in an amount between 1 g ae/ha to 250 g ae/ha [0042] and the safener in an amount 50 g ai/ha to 150 g ai/ha [0042].
Something which is old (e.g. the method of Yerkes) does not become patentable upon the discovery of a new property (that reduces the growth inhibition when compared to control plants), and this need not have been discovered at the time of filing. See MPEP 2112(I & II).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have modified the teachings of the conflicting claims with Yerkes, to have treated rice with an herbicide and fenclorim (a safener). One would have been motivated to add an herbicide to remove weeds [Abstract] and a safener to reduce the impact of the herbicide on the rice [Table 13].
Response to Arguments
Applicant asserts claim 1 in the '430 Application requires the use of a Group 15 herbicide, which is not recited in the pending claims. The pending claims are directed to a method involving fenclorim seed treatment that stimulates early season vigor and canopy formation, with no requirement for herbicide use. The amended claims now include specific performance metrics and cultivar details that are not taught or suggested by the reference claims. Accordingly, the pending claims are patentably distinct from the conflicting claims in the '430 Application.
The Examiner does not find the argument persuasive. As discussed above, the absence of an herbicide is not positively recited in the instant claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See MPEP 2111.01. Moreover, the copending claims disclose wherein fenclorim is applied from 0.1 to 3 g/kg seed. Accordingly, since the method of the copending claims disclose applying fenclorim in substantially the same amount as claimed instantly, one of ordinary skill in the art would reasonably conclude that the fenclorim of the patented claims would stimulate early season vigor and canopy formation with the specific performance metric and cultivars like the claimed invention. See MPEP 2112(I & II).
Conclusion
Applicant's amendments (due to claim 1, introducing limitations not previously considered, and due to addition of claim 25) necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/LUCY M TIEN/Examiner, Art Unit 1612
/FREDERICK F KRASS/Supervisory Patent Examiner, Art Unit 1612