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
The preliminary amendment to the specification filed on 07/05/2023 is acknowledged. Claims 1-20 are currently pending and are examined on the merits herein.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/20/2024 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 5 is objected to because of the following informalities: lines 1-2 recite the limitation “the nitrogen assimilation enzyme” in singular form. However, the antecedent basis for this enzyme, as recited in the final line of claim 4, recites “nitrogen assimilation enzymes” in the plural form. Consistency of form, whether singular or plural, should be used at all times when referring to the same entity. 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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites the limitation “the adjuvant” in line 1. There is insufficient antecedent basis for this limitation in the claim, or the claim upon which claim 16 depends – claim 13 does not recite any adjuvant. For the purposes of compact prosecution, claim 16 will be interpreted as dependent upon claim 15, which recites the method of claim 13 further comprising a step of mixing the use solution composition with an adjuvant.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3-5, 11-12, and 19-20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites an intended use for the concentrate composition of claim 1, wherein the composition is diluted before use. This recitation of use for the concentrate composition fails to further limit the scope of the claim upon which it depends, as the intended use of “diluting” does not further limit the product itself.
Claims 4-5, 11-12 and 19-20 all recite inherent properties of the instantly claimed compositions in the claims upon which they depend; specifically, the claims recite that the compositions enhance nitrogen assimilation in plants by enhancing activities of enzymes. These claims are only specifying the inherent effect that the claimed compositions have on plant enzymatic pathways. The limitations recited do not appear to add any additional structural limitations to the claimed compositions or method. Therefore, these recitations of inherent properties of the compositions fail to further limit the scope of the claims upon which claims 4-5, 11-12, and 19-20 depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 4-7, 11-14 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over TW I609631 B (Huang, Y. W. et al) published 01/01/2018 (cited, with machine translation, in the PTO-892 accompanying this action) in view of CN 109042665 A (Cao, N. et al) published 12/21/2018 (cited, with machine translation, in the PTO-892 accompanying this action), as evidenced by National Institute of Standards and Technology. (2025). Melatonin. https://webbook.nist.gov/cgi/cbook.cgi?ID=C73314&Mask=20 (cited in the PTO-892 accompanying this action; hereinafter “NIST”).
TW’631 teaches a composition 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]). A composition and method of use directed towards promotion of activity of the aforementioned nitrogen assimilation enzymes in a plant reads on the limitations of instant claims 1, 4-6, 11-13, and 19-20. 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’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.
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.
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.
Claims 3, 8-10, 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 (cited, with machine translation, in the PTO-892 accompanying this action) and CN 109042665 A (Cao, N. et al) published 12/21/2018 (cited, with machine translation, in the PTO-892 accompanying this action), with evidence from National Institute of Standards and Technology. (2025). Melatonin. https://webbook.nist.gov/cgi/cbook.cgi?ID=C73314&Mask=20 (cited in the PTO-892 accompanying this action; hereinafter “NIST”) as applied to claims 1-2, 4-7, 11-14 and 17-20 above, and further in view of US 2021/0298307 A1 (Wang, C.M. et al) published 09/30/2021 (cited in the PTO-892 accompanying this action).
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 diluting the composition about 50 folds to 200 folds before use, as recited in instant claim 3. Furthermore, they fail to teach the composition further comprises 0.01-1% (v/v) adjuvant, as recited in instant claim 8; thus, they don’t teach said adjuvant is a surfactant or a drift control agent, as recited in instant claims 9 and 10 respectively. Finally, 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.
US’307 teaches dilution of its concentrate composition 1000 folds prior to use (claim 4).
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.
Regarding the dilution of the composition, it would have been prima facie obvious to use the suggestion of CN’665 that melatonin toxicity towards tomato plants is reduced when diluting with distilled water, combined with US’307’s taught dilution of 1000 folds, to establish a finite range (dilution between 0-1000 folds) with which to perform routine experimentation upon the composition made obvious by TW’631 and CN’665 in order to determine a dilution factor that minimizes toxicity of melatonin towards tomato plants. Per MPEP 2143 I(E), an “obvious to try” prima facie case for obviousness exists when choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. The teaching of CN’665 establishes that dilution of melatonin with water is a results-effective variable, wherein the observed result is decreased melatonin toxicity towards plants with increased dilution factor. Because CN’665 suggests diluting melatonin without providing a specific dilution factor, it is interpreted that dilution is routine experimentation, and any concentrated amount of melatonin is reasonably diluted down to the appropriate concentration as taught by CN’665. Furthermore, because US’307 teaches dilution of its similar composition 1000 times for application onto tomato plants, one would have a reasonable expectation of success experimenting with dilution factors between 0-1000. As a result of this experimentation, one would happen naturally upon the instantly claimed dilution range because, as evidenced by the instant claims, this is an appropriate range with which to dilute a composition comprising melatonin for application on plants (see instant claims 1 and 3).
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 and 4-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-8, 10-11, 13-15 and 17-21 of copending Application No. 17/470,167 in view of TW I609631 B (Huang, Y. W. et al) published 01/01/2018 (cited, with machine translation, in the PTO-892 accompanying this action) and CN 109042665 A (Cao, N. et al) published 12/21/2018 (cited, with machine translation, in the PTO-892 accompanying this action), as evidenced by National Institute of Standards and Technology. (2025). Melatonin. https://webbook.nist.gov/cgi/cbook.cgi?ID=C73314&Mask=20 (cited in the PTO-892 accompanying this action; hereinafter “NIST”).
App’167 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 a method that includes increasing nutrient uptake and assimilation (claim 5). App’167 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 6; claim 21), with the same aforementioned auxin selection (claim 7). Regarding the concentrations of auxin in the compositions, App’167’s claimed ranges overlap those of the instant invention recited in instant claims 1, 6 and 13, thus rendering them obvious. App’167 claims the adjuvant of the ready to use composition is a surfactant (claim 10) or a drift control agent (claim 11). The ready to use composition enhances plant growth via the aforementioned method of increasing nutrient uptake and assimilation (claim 13). Finally, App’167 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 14), and with the same auxin selection (claim 15). App’167 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 17). The use solution composition is either applied to foliage of the plant, or to roots (claims 18 and 19). The use solution composition also enhances plant growth by the same manner as the concentrate composition and ready to use composition (claim 20). Thus, App’167 reads on most of the limitations of all of instant claims 1-2 and 4-20.
App’167 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, as recited by the limitations set forth in instant claims 1, 4-6, 11-13, and 19-20. Furthermore, App’167 doesn’t include salicylic acid or melatonin in its compositions for enhancing plant growth, at the claimed concentration ranges set forth in instant claims 1, 6, and 13.
The teachings of TW’631 and CN’665, 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’167 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’167, 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.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2 and 4-20 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 (cited, with machine translation, in the PTO-892 accompanying this action) and CN 109042665 A (Cao, N. et al) published 12/21/2018 (cited, with machine translation, in the PTO-892 accompanying this action), as evidenced by National Institute of Standards and Technology. (2025). Melatonin. https://webbook.nist.gov/cgi/cbook.cgi?ID=C73314&Mask=20 (cited in the PTO-892 accompanying this action; hereinafter “NIST”).
App’278 is a CON of App’167, addressed in the provisional nonstatutory double patenting rejection supra. App’278 claims all of the same limitations of App’167 as detailed above, just with different claim numbers. 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, as recited by the limitations set forth in instant claims 1, 4-6, 11-13, and 19-20. 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 1, 6, and 13.
The teachings of TW’631 and CN’665, 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.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 18-20 of copending Application No. 17/973,639 in view of TW I609631 B (Huang, Y. W. et al) published 01/01/2018 (cited, with machine translation, in the PTO-892 accompanying this action) and CN 109042665 A (Cao, N. et al) published 12/21/2018 (cited, with machine translation, in the PTO-892 accompanying this action), as evidenced by National Institute of Standards and Technology. (2025). Melatonin. https://webbook.nist.gov/cgi/cbook.cgi?ID=C73314&Mask=20 (cited in the PTO-892 accompanying this action; hereinafter “NIST”).
App’639 claims a concentrate composition for promoting the growth of legumes, comprising between about 0.02 g/L to about 50 g/L auxin; between about 0.2 g/L to about 500 g/L choline chloride; and between about 0.2 g/L to about 500 g/L Aminobutyric acid (GABA) (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 (IPA), and 1-naphthaleneacetic acid (NAA) (claim 2). The concentrate composition for promoting the growth of legumes is diluted about 20 to about 500 folds before use (claim 3). The concentrate composition enhances plant growth by at least one of the methods including increasing nitrogen content in leaves (claim 4), which reads on enhancing nitrogen assimilation. App’639 also claims a ready to use composition for promoting growth of legumes, comprising or consisting essentially of between about 0.2 mg/L to about 500 mg/L auxin; between about 2 mg/L to about 5000 mg/L choline chloride; and between about 2 mg/L to about 5000 mg/L Aminobutyric acid (GABA) (claim 5; claim 10), with the same aforementioned auxin selection (claim 6). App’639 claims the ready to use composition further comprises 0.01-1% (v/v) adjuvant (claim 7); said adjuvant 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 nitrogen content in the leaves (claim 11). Finally, App’639 claims a method for promoting growth of legumes, comprising a step of applying a 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’639 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); said adjuvant is a surfactant (claim 15) or a drift control agent (claim 16). The use solution composition is either applied to foliage of the plant, or to roots (claims 18 and 19). The use solution composition also promotes growth of legumes by the same manner as the concentrate composition and ready to use composition (claim 20).
App’639 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 via enhancing activities of the nitrogen assimilation enzymes, as recited by the limitations set forth in instant claims 4-5, 11-12, and 19-20. Furthermore, App’639 doesn’t include salicylic acid or melatonin in its compositions for enhancing plant growth, at the concentration ranges set forth in instant claims 1, 6, and 13.
The teachings of TW’631 and CN’665, 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’639 with those of TW’631 and CN’665 (all compositions used for promoting plant growth via enhancing nutrient assimilation) to generate a composition for use in promoting legume 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’639, 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 to achieve the same purpose of enhancing nutrient assimilation in the plants. Although TW’631 and CN’665 are both taught for tomato plants specifically, the mechanisms of improved nutrient assimilation would naturally extend to legume plant growth with a reasonable expectation of success. 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.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/SOPHIA MARIE TAYLOR/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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