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 .
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.
Priority
The instant application, filed 03/10/2023, claims no priority.
Status of Claims and Application
Receipt of Remarks/Amendments/Declaration filed on 9/19/2025 is acknowledged. Claims 1-2, 6-7, 9-10, 13-18, 21-23 are currently pending and are examined on the merits herein.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/19/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 13 is objected to because of the following informalities:
In claim 13, the recitation “witha” in third to last line should recite “with a”.
Appropriate correction is required.
Claim Interpretation
Any recitation of the word “about” in regards to a numerical value or range recited in the claims will be interpreted as including values within ±20% of the recited numerical value or range. This interpretation is supported by the following disclosure in the instant specification (see instant specification p. 27 lines 16-19):
“As used herein, ‘around’, ‘about’ or ‘approximately’ shall generally mean within 20 percent, preferably within 10 percent, and more preferably within 5 percent of a given value or range. Numerical quantities given herein are approximate, meaning that the term ‘around’, ‘about’ or ‘approximately’ can be inferred if not expressly stated.”
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 6-7, 13-14, 17-18 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over TW I609631 B (Huang, Y. W. et al) published 01/01/2018 (previously cited) in view of CN 109042665 A (Cao, N. et al) published 12/21/2018 (previously cited), as evidenced by National Institute of Standards and Technology. (2025). Melatonin. https://webbook.nist.gov/cgi/cbook.cgi?ID=C73314&Mask=20 (previously cited).
TW’631 teaches a composition for promoting vegetative growth and reproductive growth of tomato and for promoting activities of nitrogen assimilation enzymes nitrate reductase (NR), glutamine synthetase (GS) and glutamate synthetase (GOGAT) in tomatoes, comprising 10-100 mg/L salicylic acid, 10-100 mg/L auxin, and 0.01-1 mg/L cytokinin (claim 4; [0009]). TW’631 also teaches a method of using this composition, comprising applying the composition to planted tomato seedlings and monitoring the activities of nitrogen assimilation enzymes in the newly grown leaves after 2 weeks (claim 7; [0030]; [0045]-[0049]). TW’631’s taught amounts for both salicylic acid and auxin lie completely within the amounts recited for the ready to use composition and the use solution composition of instant claims 6 and 13, rendering the claimed concentrations obvious. Furthermore, the amount of auxin reads on 0.01-0.1 g/L, and the amount of salicylic acid also reads on 0.01-0.1 g/L; both of these ranges overlap the concentration ranges for the auxin and salicylic acid in instant claim 1, which recites “between about 0.05 g/L to about 20 g/L auxin” and “between about 0.1 g/L to about 40 g/L salicylic acid” in lines 3-4. Therefore, TW’631 also renders the amounts of salicylic acid and auxin within the concentrate composition of instant claim 1 obvious, as per MPEP 2144.05 (I).
TW’631 teaches the auxin of its composition is indole-3-butyric acid, indoleacetic acid, or naphthylacetic acid ([0010]), which reads on the auxin limitations recited in instant claims 2, 7, and 14. TW’631 also teaches that the composition is applied by root irrigation and/or foliar spraying ([0016]; claim 8; [0030] lines 246-247). This reads on the instantly claimed method wherein the use solution composition is applied to foliage of the plant, or applied to roots of the plant, as recited in instant claims 17 and 18 respectively.
TW’631 teaches that the most important element involved in photosynthesis of a plant is chlorophyll, and the increase in content of chlorophyll can greatly improve the utilization of light energy by plants ([0040]). TW’631 teaches its composition is a growth regulating composition which, in addition to increasing the activity of nitrogen assimilation enzymes, also increases chlorophyll content of the tomato leaves after treatment with the composition ([0021]).
TW’631also teaches applying the composition in combination with a nitrogen fertilizer. In particular, TW’631 in example 1 discloses applying the growth regulating composition of the invention along with Huabao No. 2 (nitrogen-phosphorous-potassium ratio of 20-20-20) as well as Taiwan Fertilizer No. 43 (see e.g. Example 1; Para 0030).
TW’631 differs from the instantly claimed invention in that it fails to teach its compositions also include melatonin in a range between about 0.5 mg/L to about 200 mg/L, as recited in instant claims 6 and 13, or between 0.05 g/L to about 20 g/L, as recited in instant claim 1. TW’631 also does not expressly teach the composition comprises water.
CN’665 teaches a method for promoting silicon absorption in tomatoes by using melatonin, comprising preparing a melatonin reagent with a concentration of 100-150 µmol/L using an additional solvent, and either spraying the melatonin solution onto the leaves of tomato seedlings experiencing nutrient deficiency or adding to the solution in which the seedlings are grown (claim 1; [0008]-[0013]). Using the molecular weight of melatonin (232.2783 g/mol) as evidenced by NIST, the examiner has calculated this concentration to be the equivalent of 23.23-34.84 mg/L of melatonin. CN’665 teaches that, by spraying exogenous melatonin onto tomato plants, the chlorophyll content in tomato leaves is increased, the net photosynthetic rate of tomatoes is accelerated, the assimilation capacity is improved, and the growth cycle is shortened ([0016]). Furthermore, CN’665 teaches the toxicity of melatonin to tomato seedlings is reduced by adding solvent to the preparation of melatonin reagent and making up to volume with distilled water ([0018]).
It would have been prima facie obvious before the effective filing date for the ordinarily skilled artisan to arrive at the instant invention by incorporating melatonin, at CN’665’s taught concentration of 23.23-34.84 mg/L, into the composition and subsequent method of using said composition taught by TW’631, in order to increase the chlorophyll content in tomato leaves of tomato plants and thus improve the growth of tomato plant seedlings treated with the composition. The ordinarily skilled artisan would have been motivated to add melatonin to the composition taught by TW’631 because the composition is used for the purpose of improving plant growth via improving chlorophyll content in tomato plant leaves, and CN’665 teaches melatonin improves chlorophyll content in tomato plant leaves. Furthermore, CN’665 teaches added benefits of applying melatonin to tomatoes, such as increased silicon absorption, accelerated photosynthetic rate, improved assimilation capacity, and shortened growth cycle, which would be inherent benefits of a composition that combined the ingredients of TW’631 with melatonin. Per MPEP 2143 I(G), it is prima facie obvious for the ordinarily skilled artisan to use some motivation in the prior art that would lead one of ordinary skill to modify the prior art reference or combine reference teachings to arrive at the claimed invention. The ordinarily skilled artisan would have a reasonable expectation of success adding melatonin to the composition taught by TW’631 for subsequent application to plants, via either foliar spraying or root irrigation, because CN’665 teaches that melatonin can be used by either spraying exogenously, or adding to the solution in which tomato seedlings are growing, and that melatonin successfully promotes tomato plant growth when applied this way.
It is furthermore 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 – see In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In this case, both the compositions of TW’631 and CN’665 are used to improve chlorophyll content in tomato leaves; therefore it would have been obvious to combine the compositions with the concentrations of ingredients as taught, in order to form a third composition that is applied to tomato plants to achieve the same purpose of improving chlorophyll content in the plant.
Further, it would have been prima facie obvious to one of ordinary skill in the art to further include water in the composition because, as discussed supra, CN’665 teaches the toxicity of melatonin to tomato seedlings is reduced by adding solvent to the preparation of melatonin reagent and diluting with distilled water.
Regarding the range of melatonin taught by CN’665, 23.23-34.84 mg/L of melatonin falls within the claimed range of melatonin in both the ready to use and use solution compositions of instant claims 6 and 13, thus rendering the instantly claimed ranges obvious. Instant claim 1’s range of melatonin (between about 0.05 g/L to about 20 g/L), when taking into account the “about” claim interpretation as discussed supra, reads on a range with a lower end of approximately 0.04 g/L of melatonin. Because CN’665 teaches 34.84 mg/L melatonin, which is 0.03484 g/L of melatonin, the instantly claimed value of melatonin for the concentrate composition is rendered obvious; a prima facie case for obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). 0.03484 g/L of melatonin is so close to the instantly claimed value of 0.04 g/L of melatonin that the ordinarily skilled person would expect no difference in properties of the melatonin when applied to tomato plants at either concentration.
Regarding claims 21-23, the claims are included in this rejection under 103 because these claims depend from independent claims 1, 6 and 13 and these independent claims recite “wherein, when applied to a plant in combination with a nitrogen fertilizer”. This recitation suggests that the application of the composition in combination with a nitrogen fertilizer is an intended use of the composition and not required to be part of the composition or a required method step.
Further, regarding the claimed limitation wherein, when applied to a plant in combination with a nitrogen fertilizer, the composition increases or maintains a yield of the plant relative to a plant treated with a same amount of the nitrogen fertilizer alone, the combination of the cited prior art teaches the same composition and method steps as claimed and therefore would necessarily be capable to increase or maintain a yield of the plant relative to a plant treated with a same amount of the nitrogen fertilizer alone. Furthermore, TW’631 discloses that the invention relates to a growth regulating composition for promoting vegetative growth and reproductive growth of tomatoes, in particular to an enzyme activity for increasing nitrogen assimilation in leaves during vegetative growth, and shortening flowering and fruiting stages and increasing fruit number and quality in reproductive growth (para 0001). This teaching in TW’631 suggests that the composition of TW’631 increases nitrogen assimilation and thus increases growth. As such, one skilled in the art would have expected that the composition taught by the cited prior art would enhance nitrogen assimilation and thus increase growth when applied in combination with a nitrogen fertilizer.
Claims 9-10, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over TW I609631 B (Huang, Y. W. et al) published 01/01/2018 (previously cited) and CN 109042665 A (Cao, N. et al) published 12/21/2018 (previously cited), with evidence from National Institute of Standards and Technology. (2025). Melatonin. https://webbook.nist.gov/cgi/cbook.cgi?ID=C73314&Mask=20 (previously cited) as applied to claims 1-2, 6-7, 13-14, 17-18 and 21-23 above, and further in view of US 2021/0298307 A1 (Wang, C.M. et al) published 09/30/2021 (previously cited).
The teachings of TW’631 and CN’665, with evidence from NIST, are addressed supra.
The combined references differ from the instantly claimed invention in that they fail to teach the composition further comprises 0.01-1% (v/v) adjuvant; thus, they don’t teach said adjuvant is a surfactant or a drift control agent, as recited in instant claims 9 and 10 respectively. Also, the combined references fail to teach that the method of application of the use solution composition further comprises the step of mixing the solution composition with an adjuvant before the step of applying the use solution composition to the plant, and that the adjuvant is a surfactant or drift control agent, as recited in instant claims 15 and 16 respectively.
US’307 teaches a concentrate composition (claim 1), a ready to use composition (claim 7), and a method for controlling bacterial wilt in a plant, comprising the step of applying the ready to use composition to a plant susceptible to bacterial wilt, wherein the ready to use composition comprises between about 1 mg/L to about 50 mg/L auxin and between about 5 mg/L to about 50 mg/L cytokinin (claim 13). US’307 teaches that the compositions are applied via root or foliar spray onto tomato plants, which are susceptible to bacterial wilt ([0028]; Examples 1-3). US’307 teaches that the composition further comprises 0.01-1% (v/v) adjuvant selected from a surfactant and a drift control agent (claims 9-10 and 16-17). US’307 teaches these surfactants are molecules containing both lipophilic groups and hydrophilic groups, which allow oily substances to be dispersed or dissolved in water ([0031]). US’307 exemplifies its plant treatment solution as being 5 mg/L indolebutyric acid (IBA) and 15 mg/L cytokinin (kinetin) mixed with 0.1% (v/v) Tween 80® solution, and applies this solution to tomato plant foliage (Example 1 [0043]; Table 3); US’307 teaches that Tween 80® is a surfactant ([0017]), and thus reads on “mixing the use solution composition with an adjuvant before the step of applying the use solution to the plant,” as recited in instant claim 15.
It would have been prima facie obvious before the effective filing date for the ordinarily skilled artisan to arrive at the instant invention by mixing 0.01-1% (v/v) of either a surfactant or drift control agent with the composition made obvious by the combined teachings of TW’631 and CN’665, prior to the method of using the resulting ready to use composition, because US’307 teaches a similarly mixed composition for use on tomato plants that contains these adjuvants at the suggested concentration range, and demonstrates the success of application of this composition onto tomato plants. Per MPEP 2143 I(C), it is prima facie obvious to use a known technique to improve similar methods or products in the same way. The ordinarily skilled artisan would have been motivated to incorporate either a surfactant or a drift control agent into the composition made obvious by TW’631 and CN’665 because surfactants are known to assist oily substances with their dispersion in water, and drift control agents control drift, which would assist foliar application of the resulting composition onto tomato plants. The composition of US’307 contains similar amounts of auxin and cytokinin to those in the composition made obvious by TW’631 and CN’665. One would view US’307’s taught success applying this similar composition to the foliage and roots of tomato plants, and attribute this success to the inclusion of either of the adjuvants as taught by US’307. The ordinarily skilled artisan would have a reasonable expectation of success incorporating either of these adjuvants into the composition made obvious by TW’631 and CN’665 because this composition is applied to tomato plants via foliar application or root irrigation, and US’307 teaches a similar composition for application onto tomato plants via either foliar application or root irrigation that includes these adjuvants to assist in application; therefore, one would expect no deleterious effects when mixing the obvious composition with an adjuvant taught by US’307.
In the interest of compact prosecution, claims 21-23 are further rejected under the 103 rejection below.
Claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over TW I609631 B (Huang, Y. W. et al) published 01/01/2018 (previously cited) and CN 109042665 A (Cao, N. et al) published 12/21/2018 (previously cited), with evidence from National Institute of Standards and Technology. (2025). Melatonin. https://webbook.nist.gov/cgi/cbook.cgi?ID=C73314&Mask=20 (previously cited) as applied to claims 1-2, 6-7, 13-14, 17-18 and 21-23 above, and further in view of Farmsquare (https://farmsquare.ng/boost-your-tomato-yields/?srsltid=AU7gw4U-YnJKyP3FahI1R4lFgTWwwnYhT7-fYYSkX9o3J1Lm7mNe9gKe) (December 19, 2022).
The teachings of TW’631 and CN’665, with evidence from NIST, are addressed supra.
The combined references differ from the instantly claimed invention in that they fail to teach wherein the nitrogen fertilizer is urea.
Farmsquare discloses boosting tomato farming with fertilizers. Farmsquare teaches urea is a common type of nitrogen-rich fertilizer that is easy to apply and can quickly provide the necessary nutrients for healthy tomato plants. (see entire document).
It would have been prima facie obvious before the effective filing date for the ordinarily skilled artisan to have combined the teachings of TW’631 and Farmsquare and utilize urea as the fertilizer. As discussed supra, TW’631 teaches applying the composition in combination with a nitrogen fertilizer. In particular, TW’631 in example 1 discloses applying the growth regulating composition of the invention along with Huabao No. 2 (nitrogen-phosphorous-potassium ratio of 20-20-20) as well as Taiwan Fertilizer No. 43. Further, TW’631 teaches a composition for promoting vegetative growth and reproductive growth of tomato and for promoting activities of nitrogen assimilation enzymes nitrate reductase (NR), glutamine synthetase (GS) and glutamate synthetase (GOGAT) in tomatoes. Farmsquare discloses boosting tomato farming with fertilizers. Farmsquare teaches urea is a common type of nitrogen-rich fertilizer that is easy to apply and can quickly provide the necessary nutrients for healthy tomato plants. As such, one skilled in the art would have found it obvious to utilize urea as the fertilizer providing nitrogen in combination with the composition and method taught by TW’631. 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 – see In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Double Patenting
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 1-2, 6-7, 9-10, 13-18, 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, 8-13, and 15-18 of copending Application No. 19/056,278 in view of TW I609631 B (Huang, Y. W. et al) published 01/01/2018 and CN 109042665 A (Cao, N. et al) published 12/21/2018, as evidenced by National Institute of Standards and Technology. (2025). Melatonin. https://webbook.nist.gov/cgi/cbook.cgi?ID=C73314&Mask=20 and Farmsquare (https://farmsquare.ng/boost-your-tomato-yields/?srsltid=AU7gw4U-YnJKyP3FahI1R4lFgTWwwnYhT7-fYYSkX9o3J1Lm7mNe9gKe) (December 19, 2022).
App’278 claims a concentrate composition for enhancing plant growth, consisting essentially of between about 0.8 g/L to about 80 g/L auxin; between about 0.18 g/L to about 18 g/L cytokinin; between about 0.5 g/L to about 50 g/L Aminobutyric acid (GABA); between about 2.5 g/L to about 250 g/L choline chloride; and 0 or 0.01-1% (v/v) adjuvant; and water (claim 1). The auxin is selected from indole-3-butyric acid (IBA), indole-3 -acetic acid (IAA), 2-phenylacetic acid (PAA), indole-3-propionic acid (TPA), and 1-naphthaleneacetic acid (NAA) (claim 2). The concentrate composition enhances plant growth by at least one of the methods including increasing nutrient uptake and assimilation (claim 4). App’278 also claims a ready to use composition for enhancing plant growth, consisting essentially of between about 0.8 mg/L to about 80 mg/L auxin; between about 0.18 mg/L to about 18 mg/L cytokinin; between about 0.5 mg/L to about 50 mg/L Aminobutyric acid (GABA); between about 2.5 mg/L to about 250 mg/L choline chloride; and 0% or 0.01-1% (v/v) adjuvant and water (claim 5; claim 11), with the same aforementioned auxin selection (claim 6). App’278 claims the adjuvant of the ready to use composition is a surfactant (claim 8) or a drift control agent (claim 9). The ready to use composition enhances plant growth via the aforementioned method of increasing nutrient uptake and assimilation (claim 10). Finally, App’278 claims a method for enhancing plant growth, comprising a step of applying the use solution composition with the same ingredients and concentrations as defined in the claimed ready to use composition (claim 12), and with the same auxin selection (claim 13). App’278 claims the method further comprises the step of mixing the use solution composition with an adjuvant before the step of applying the use solution composition to the plant (claim 15). The use solution composition is either applied to foliage of the plant, or to roots (claims 16 and 17). The use solution composition also enhances plant growth by the same manner as the concentrate composition and ready to use composition (claim 18).
App’278 differs from the instantly claimed invention only in that it fails to claim its concentrate, ready to use, and use solution compositions specifically enhance nitrogen assimilation in the plant. Furthermore, App’278 doesn’t include salicylic acid or melatonin in its compositions for enhancing plant growth, at the concentration ranges set forth in instant claims. ’278 doesn’t teach the composition applied to a plant in combination with a nitrogen fertilizer.
The teachings of TW’631, CN’665, Farmsqure with evidence from NIST, are addressed in the obviousness rejections supra.
It would have been prima facie obvious for the ordinarily skilled artisan to combine the compositions of App’278 with those of TW’631 and CN’665 (all compositions used for enhancing plant growth via enhancing nutrient assimilation) to generate a composition for use in enhancing plant growth that includes the claimed concentration ranges for salicylic acid and melatonin as taught by TW’631 and CN’665, because it is obvious to combine compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a new composition to be used for the very same purpose – see In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In this case, all three compositions from App’278, TW’631 and CN’665 are used to enhance plant growth via enhancing nutrient assimilation, therefore it would have been obvious to combine the compositions with the concentrations of ingredients as taught, in order to form a composition that is applied to plants such as tomato plants to achieve the same purpose of enhancing nutrient assimilation in the plants. Upon inclusion of the composition taught by TW’631, nitrogen assimilation enhancement via enhancement of the activities of the taught nitrogen assimilation enzymes will be achieved, because this is an inherent property of the composition taught by TW’631. Further, it would have been obvious to apply the composition in combination with a nitrogen fertilizer such as urea because Farmsquare discloses boosting tomato farming with fertilizers. Farmsquare teaches urea is a common type of nitrogen-rich fertilizer that is easy to apply and can quickly provide the necessary nutrients for healthy tomato plants. It is obvious to combine compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a new composition to be used for the very same purpose – see In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Further, regarding the claimed limitation wherein, when applied to a plant in combination with a nitrogen fertilizer, the composition increases or maintains a yield of the plant relative to a plant treated with a same amount of the nitrogen fertilizer alone, the combination of the cited prior art teaches the same composition and method steps as claimed and therefore would necessarily increase or maintain a yield of the plant relative to a plant treated with a same amount of the nitrogen fertilizer alone.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments/Declaration
Applicant argued that CN’665 merely discloses that melatonin promotes silicon absorption in tomatoes. It is entirely silent on any role of melatonin in enhancing nitrogen assimilation or improving crop yield, particularly in combination with a nitrogen fertilizer.
In response, as discussed supra, the ordinarily skilled artisan would have been motivated to add melatonin to the composition taught by TW’631 because the composition is used for the purpose of improving plant growth via improving chlorophyll content in tomato plant leaves, and CN’665 teaches melatonin improves chlorophyll content in tomato plant leaves. Furthermore, CN’665 teaches added benefits of applying melatonin to tomatoes, such as increased silicon absorption, accelerated photosynthetic rate, improved assimilation capacity, and shortened growth cycle, which would be inherent benefits of a composition that combined the ingredients of TW’631 with melatonin. Per MPEP 2143 I(G), it is prima facie obvious for the ordinarily skilled artisan to use some motivation in the prior art that would lead one of ordinary skill to modify the prior art reference or combine reference teachings to arrive at the claimed invention. The ordinarily skilled artisan would have a reasonable expectation of success adding melatonin to the composition taught by TW’631 for subsequent application to plants, via either foliar spraying or root irrigation, because CN’665 teaches that melatonin can be used by either spraying exogenously, or adding to the solution in which tomato seedlings are growing, and that melatonin successfully promotes tomato plant growth when applied this way. Further, regarding the claimed limitation wherein, when applied to a plant in combination with a nitrogen fertilizer, the composition increases or maintains a yield of the plant relative to a plant treated with a same amount of the nitrogen fertilizer alone, the combination of the cited prior art teaches the same composition and method steps as claimed and therefore would necessarily be capable to increase or maintain a yield of the plant relative to a plant treated with a same amount of the nitrogen fertilizer alone.
Applicant argued that Xiao et al. (2022) demonstrated that melatonin exerts strong antagonistic effect on urea induced soybean yields. These data teach away from combining melatonin with a nitrogen fertilizer for yield improvement.
In response, firstly the examiner argues that Xiao teaches melatonin attenuates the urea-induces yield improvement in soybean. Neither the claims nor the cited prior art teaches or requires application of the composition to soybean. Xiao points to Qiao et al. (2019) which reported that melatonin promotes winter wheat growth and yield by increasing the activities of nitrogen uptake (see Introduction of Xiao). Xiao in the discussion section states that nitrogen is an essential nutrient for plant growth and crop yield. Melatonin has been reported to promote nitrogen uptake and assimilation and increase plant growth. Thus, while Xiao may teach against using melatonin in combination with urea in soybeans, the art does not teach that this effect would be expected in all types of plants/crops, especially because Xiao points to Qiao et al. (2019) which reported that melatonin promotes winter wheat growth and yield by increasing the activities of nitrogen uptake.
Applicant argued that in contrast to negative results reported by Xiao, the present application shows the claimed composition comprising auxin, salicylic acid and melatonin unexpectedly increases or at least maintains crop yield when applied together with a nitrogen fertilizer. Applicant in the remarks and declaration pointed to examples and specifically example 1 of specification to argue unexpected effect.
In response, the examiner reiterates that while Xiao may teach against using melatonin in combination with urea in soybeans, the art does not teach that this effect would be expected in all types of plants/crops, especially because Xiao points to Qiao et al. (2019) which reported that melatonin promotes winter wheat growth and yield by increasing the activities of nitrogen uptake. Further, as discussed supra, TW’631 teaches applying the composition in combination with a nitrogen fertilizer. In particular, TW’631 in example 1 discloses applying the growth regulating composition of the invention along with Huabao No. 2 (nitrogen-phosphorous-potassium ratio of 20-20-20) as well as Taiwan Fertilizer No. 43. TW’631 discloses that the invention relates to a growth regulating composition for promoting vegetative growth and reproductive growth of tomatoes, in particular to an enzyme activity for increasing nitrogen assimilation in leaves during vegetative growth, and shortening flowering and fruiting stages and increasing fruit number and quality in reproductive growth (para 0001). This teaching in TW’631 suggests that the composition of TW’631 increases nitrogen assimilation and thus increases growth. As such, one skilled in the art would have expected that the composition taught by the cited prior art would enhance nitrogen assimilation and thus increase growth when applied in combination with a nitrogen fertilizer. Further, as discussed supra, the combination of the cited prior art teaches the same composition and method steps as claimed and therefore would necessarily be capable to increase or maintain a yield of the plant relative to a plant treated with a same amount of the nitrogen fertilizer alone.
Regarding the double patenting rejections, applicant argued that the combination of the references do not render obvious the pending claims.
In response, the examiner respectfully draws applicant’s attention to the modified rejections above which render obvious all the claimed limitations as amended.
Regarding the rejection over 17/470,167, the rejection has been withdrawn due to abandonment of the reference application.
Regarding the rejection over 17973639, the rejection has been withdrawn to the amended claims reciting consisting of language which excludes components required in the instant claims.
Conclusion
Applicant's amendment 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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/ALI S SAEED/Examiner, Art Unit 1616
