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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 8, 2025 has been entered.
Claims 1-20 are pending in the application. Claims 1-20 will be examined.
Status of the Claims
The rejection of claims 1-20 under 35 U.S.C. 103 as being unpatentable over Stoller et al. (US 2016/0198714, Stoller et al. ‘714) in view of Stoller et al. (US 2005/0197253, Stoller et al. ‘253), the Cato Publication (2013, Hortic. Bras, Cato et al.), and Jones et al. (US 5,188,655) is maintained.
The rejection of claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 1,653,651 B2 (USPN 651) is maintained.
The following rejections are reiterated. They constitute the complete set of rejections presently being applied to the instant application.
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.
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.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Stoller et al. (US 2016/0198714, Stoller et al. ‘714) in view of Stoller et al. (US 2005/0197253, Stoller et al. ‘253), the Cato Publication (2013, Hortic. Bras, Cato et al.), and Jones et al. (US 5,188,655). Stoller et al. (US 2016/0198714, Stoller et al. ‘714), Stoller et al. (US 2005/0197253), the Cato Publication, and Jones et al. (US 5,188,655) cited on the IDS filed 7/10/2023.
Applicant’s invention
Applicant claims a method of improving plant growth, the method comprising: applying a first growth composition to a plant or part thereof during a first growth stage, the first growth composition comprising a first active component combination comprised of: about 50 to about 90 wt.% of auxin, an amount of gibberellic acid, and about 0 to about 20 wt.% of cytokinin, applying a second growth composition to the plant or part thereof during a second growth stage after the first growth stage, the second growth composition comprising a second active component combination comprised of: about 15 to about 45 wt.% of auxin, about 10 to about 30 wt.% of gibberellic acid and about 45 to about 65 wt.% of cytokinin; and growing the plant to maturity, thereby improving growth of the plant.
Applicant claims a method of improving plant growth, the method comprising: applying a first growth composition to a plant or part thereof as an in furrow application, the first growth composition comprising an active component combination comprises of: an amount of auxin comprising about 50 to about 90 wt.%, an amount of gibberellin, and an amount of cytokinin comprising about 10 to about 20 wt.%, wherein the amount of cytokinin is less than the amount of auxin and gibberellin; applying a second growth composition to a plant or part thereof, the second growth composition an active component combination comprised of: an amount of auxin, an amount of gibberellin, and an amount of cytokinin, wherein the amount of cytokinin is greater than the amount of auxin and gibberellin; and growing the plant to maturity, thereby improving growth of the plant.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Stoller et al. ‘714 teach a non-aqueous solution includes 1) at least one plant growth regulator, also referred to as PGR, and 2) at least one polar organic solvent and/or at least one semi-polar organic solvents (page 2, paragraph 20). Stoller et al. ‘714 teach a preferred embodiment of the present invention, the plant growth regulator may include a PGR mixture of three plant hormones--cytokinin, gibberellin, and auxin. In a preferred mixture, the cytokinin is kinetin, the gibberellin is GA3, and the auxin is IBA (page 3, paragraph 31). Stoller et al. ‘714 teach a water-diluted composition of the non-aqueous solution of the plant growth regulator is applied to the roots, foliage, flowers or fruits of a plant after planting (page 4, paragraph 38). Stoller et al. ‘714 teach the method includes the application of the non-aqueous solution of plant growth regulators, to the foliage and/or flowers of plants at or about the time of the beginning of plant flowering (e.g., during meiosis and when pollen is about to enter dehiscence). Stoller et al. ‘714 teach the non-aqueous solution may be applied to the soil in any appropriate fashion, such as, for example, in an opened furrow near the plant roots, which furrow may subsequently be closed (page 4, paragraph 39). Stoller et al. ‘714 teach when applied as a non-aqueous solution, the non-aqueous solution containing the plant growth regulator, e.g., an auxin or another PGR, may be sprayed on seeds or tubers using conventional spray equipment (page 4, paragraph 40). Stoller et al. ‘714 teach the methods may be used with substantially all plants, they are particularly useful when applied to crop plants, e.g., tomatoes and corn (page 5, paragraph 43). Stoller et al. ‘714 teach as provided in International Publication No. WO 2005/021715, the contents of which are expressly incorporated herein by reference, auxin level may be manipulated within a desired range by application of a plant growth regulator or phytohormone, e.g., cytokinin or gibberellic acid (page 5, paragraph 45).
Stoller et al. ‘714 teach the present non-aqueous solution of plant growth regulators (PGRs), such as auxins and gibberellins, in a polar or semi-polar organic solvent have been shown to have increased stability compared to aqueous-based compositions. The increased stability makes the non-aqueous solution more effective in improving the growth and productivity of plants by altering plant architecture (page 6, paragraph 49).
Difference between the prior art and the claims
(MPEP 2141.02)
Stoller et al. ‘714 do not explicitly disclose adjusting the amount of auxin, the amount of gibberellic acid and/or the amount of cytokinin after the first stage of growth or examples of applying a second growth composition during a second growth stage. Stoller et al. ‘714 do not specifically disclose about 50 to about 90 wt.% of auxin in the first growth composition, about 0 to about 20 wt.% of cytokinin of the first composition, about 15 to about 45 wt.% of auxin, about 10 to about 30 wt.% of gibberellic acid, and about 45 to about 65 wt.% of cytokinin in the second growth composition; the amount of cytokinin in the first growth composition is about 0 to about 10 wt.%, as claimed in claim 2; the amount of the auxin in the first growth composition is about 50 to about 67 wt.% by weight of the first active component combination, as claimed in claim 3; the amount of gibberellic acid in the first growth composition is about 20 to about 50 wt.% by weight of the first active component combination, as claimed in claim 4; the amount of auxin in the amount of cytokinin in the second growth composition is about 50 to about 60 wt.% by weight, as claimed in claim 8; the amount of auxin in the second growth composition is about 20 to about 30 wt.% by weight of the second active component composition, as claimed in claim 9; the amount of gibberellic acid in the second growth composition is about 15 to about 22 wt.% by weight of the second active, as claimed in claim 10.
It is for this reason Stoller et al. ‘253, the Cato Publication, and Jones et al. are added as secondary references.
Stoller et al. ‘253 teach different ratios of hormones are needed at different stages of growth. It is almost impossible to know exactly the ratio of various hormones in different plant species at different periods of growth. It is, therefore, proposed that auxin, cytokinin and/or gibberellic acid be applied in abundance at regular intervals to enable the plant to balance its own hormonal needs. This is critical to the use of plant growth hormones in order to control and increase the yield of crops. This is particularly important in obtaining the maximum genetic expression from any of the plant cells that are developing during any period of the plant's growth cycle (page 7, paragraph 75). Stoller et al. ‘253 teach a method for manipulating plant architecture to alter growth of a plant and its fruit, comprising: manipulating the ratio of auxin to cytokinin in the roots of said plant by applying, to seeds or tubers for a plant prior to planting or to roots, foliage, flowers or fruit of a plant after planting, one or more plant growth hormones or a precursor or conjugate of said hormones in an amount effective to adjust the auxin to cytokinin ratio in said plant roots to a level which will alter the plant growth to produce a desired result selected from the group consisting of increasing root size, extending root life, altering internode length, increasing lateral branching, regulating the appearance of new top growth, increasing fruit quality and combinations thereof wherein said amount is insufficient to negatively affect growth of plant tissues (page 16, claim 45).
Cato et al. teach seedlings of cultivar Micro-Tom tomato (Solanum lycopersicum) were planted. The following treatments were sprayed three times on tomato plants, at one-week intervals, with one spray during the growing season and twice during the flowering: GA3 +IBA +KIN (5 mg L-1 +5 mg L-1 + 9 mg L-1) (26% gibberellic acid+ 26% auxin + 46% cytokinin) (page 550, col. 2-3, Materials and Methods). Cato et al. teach the use of three plant growth regulators (GA3, IBA and KIN) increased the development when compared to control (Figure 1) (page 551, col. 1, 1st full paragraph).
Jones et al. teach a plant growth enhancing composition comprising as an active ingredient a synergistic mixture of (a) gibberellins, (b) the heteroauxin indole-3-acetic acid and the cytokinin 6-(4-hydroxy-3-methyl-2-trans-betenylamino) purine in definite proportions. Application of the composition to the locus of various plants or to the seeds of a plant produces a wide variety of plant growth enhancing responses including, increasing yields; stimulating seed germination and breaking of dormancy; increasing flowering and fruiting; preventing lodging and freeze injury; aiding in the recovery of damaged crops and increasing root proliferation (Abstract). Jones et al. teach a growth enhancing composition comprising a synergistic mixture of: (a) 35-45 percent by weight of gibberellins, (b) 35-45 percent by weight of the heteroauxin indole-3-acetic acid, and (c) 15-25 percent by weight of the cytokinin 6-(4-hydroxy-3-methyl-2-trans-betenylamino) purine (col. 3, lines 9-15). Jones et al. teach the compositions are used in conjunction with specific auxiliary nutrients or other plant growth stimulators (col. 4, lines 29-31).
Finding of obviousness/Rationale and Motivation
(MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of Stoller et al. ‘714, Stoller et al. ‘253 and Cato et al. and adjust the amount of auxin, the amount of gibberellic acid and/or the amount of cytokinin after the first stage of growth. Stoller et al. ‘714 teach a method of application of a non-aqueous solution of plant growth regulators, to the foliage and/or flowers of plants at or about the time of the beginning of plant flowering (e.g., during meiosis and when pollen is about to enter dehiscence). Stoller et al. ‘714 teach the plant growth regulator include a PGR mixture of three plant hormones--cytokinin, gibberellin, and auxin. In a preferred mixture, the cytokinin is kinetin, the gibberellin is GA3, and the auxin is IBA. One of ordinary skill in the art would have been motivated to adjust the amount of auxin, the amount of the amount of gibberellic acid and/or the amount of cytokinin after the first stage of growth because Stoller et al. ‘714 specifically teach auxin level may be manipulated within a desired range by application of a plant growth regulator or phytohormone, e.g., cytokinin or gibberellic acid. This is evidenced by Stoller et al. ‘253 which teaches that different ratios of hormones are needed at different stages of growth. Because Stoller et al. ‘253 teach that auxin, cytokinin and/or gibberellic acid is applied in abundance at regular intervals to enable the plant to balance its own hormonal needs which is critical to the use of plant growth hormones, one of ordinary skill in the art would have been motivated to adjust the amount of the PGRs in the mixture in order to control and increase the yield of crops.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of Stoller et al. ‘714, Stoller et al. ‘253, and Cato et al. and apply a second growth composition during a second growth stage. Stoller et al. ‘714 teach a method of application of a non-aqueous solution of plant growth regulators, to the foliage and/or flowers of plants at or about the time of the beginning of plant flowering (e.g., during meiosis and when pollen is about to enter dehiscence). Stoller et al. ‘714 teach the plant growth regulator include a PGR mixture of three plant hormones--cytokinin, gibberellin, and auxin. In a preferred mixture, the cytokinin is kinetin, the gibberellin is GA3, and the auxin is IBA. One of ordinary skill in the art before the effective filing date of the invention would have been motivated to apply a second growth composition because based on the teachings of Stoller et al. ‘253 as indicated above, one would have been motivated to apply a second growth composition during a second growth period to manipulate the amount of auxin, gibberellin and cytokinin in the composition. One of ordinary skill in the art would also have been motivated to use known methods from the prior art to determine if a second growth composition is needed, such as taught in the Cato Publication (Cato et al.). Cato et al. teach GA3 +IBA +KIN (5 mg L-1 +5 mg L-1 + 9 mg L-1) was sprayed three times on tomato plants, at one-week interval, with one spray during the growing season and twice during the flowering. As such, it would have been obvious to one of ordinary skill in the art to modify the application of the PGRs, cytokinin, gibberellin and auxin, taught by Stoller et al. ‘714, to apply more than one growth composition during a second growth season.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of Stoller et al. ‘714, Stoller et al. ‘253, Cato et al. and Jones et al. (US 5,188,655) and use the weight percentages of the cytokinin, the auxin, and the gibberellic acid in the first growth composition as a matter of experimentation and optimization in claims 1 and 19. Stoller et al. ‘714 teach a method of application of a non-aqueous solution of plant growth regulators, to the foliage and/or flowers of plants at or about the time of the beginning of plant flowering (e.g., during meiosis and when pollen is about to enter dehiscence). Stoller et al. ‘714 teach the plant growth regulator include a PGR mixture of three plant hormones--cytokinin, gibberellin, and auxin. In a preferred mixture, the cytokinin is kinetin, the gibberellin is GA3, and the auxin is IBA. Combined with the teachings of Stoller et al. ‘253 and the Cato Publication, one of ordinary skill in the art would have been motivated to determine the amount of cytokinin, auxin and gibberellic acid to use in the composition. In addition, Jones et al. teach a growth enhancing composition comprising a synergistic mixture of: (a) 35-45 percent by weight of gibberellins, (b) 35-45 percent by weight of the heteroauxin indole-3-acetic acid, and (c) 15-25 percent by weight of the cytokinin 6-(4-hydroxy-3-methyl-2-trans-betenylamino) purine. 35-45 percent by weight of gibberellins falls within the range of about 20 to 50 wt.% of gibberellic acid, as currently claimed. 15-25 percent by weight of the cytokinin 6-(4-hydroxy-3-methyl-2-trans-betenylamino) purine falls with the range of about 0 to about 20 wt.% by weight of cytokinin, as claimed. Cato’s and Jones’s disclosed amounts are art recognized amounts for the three PGRs known to enhance plant growth. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Likewise, the use the weight percentages of the cytokinin, the auxin, and the gibberellic acid in the second growth composition as a matter of experimentation and optimization. One of ordinary skill in the art would have been motivated to adjust the amount of cytokinin, auxin, and gibberellic acid in the subsequent compositions that are applied to plants. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Regarding claims 11, 12, and 13, wherein the first growth stage comprises a VE growth stage, the second growth stage comprises a V4 growth stage and wherein the second growth stage spans a V1 and V4 growth stage, one of ordinary skill in the art would have been motivated to apply the compositions during the claimed growth stages as a matter of optimization and experimentation. One of ordinary skill in the art would have been motivated to use the prior art teaching to determine the application timing such as that taught by Cato et al. wherein the plants are sprayed one time during the growing season, which would be early growth and vegetative or VE stage and twice during the flowering stage which would cover a V1 and V4 stage. One of ordinary skill in the art would have been able to determine, using the prior art teaching, the optimal timing of application of the PGR mixtures. The adjustment of particular conventional working conditions (e.g., determining application timing) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made because every element of the invention has been fairly suggested by the cited references.
Response to Arguments
Applicant's arguments filed December 8, 2025 have been fully considered but they are not persuasive. Applicant argues that the Office’s reliance on International Publication No. WO 2005/021715, which is incorporated by reference in Stoller ‘714, as purportedly teaching that the “auxin level may be manipulated within a desired range by application of a plant growth regulator or phytohormone (page 5, paragraph 45)” is misplaced. Applicant argues that paragraph 45 is not on page 5, and paragraph 45 does not address manipulating levels of auxin. Applicant further argues that there seems to be a similar statement in paragraph 22 at p. 8 of International Publication No. WO 2005/021715. In response to Applicant’s argument, the examiner notes that paragraph 45 is on page 5 of US 2016/0198714, the primary reference, as evidenced by a replication of the page and passage
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Paragraph 45 specifically states that as provided in International Publication No. WO 2005/021715, the contents of which are expressly incorporated by reference and it teaches that auxin level may be manipulated within a desired range by application of a plant growth regulator or phytohormone, e.g. cytokinin or gibberellic. With Applicant’s reference to passages in WO 2005/021715, specifically paragraph 22 on page 8, which teaches the auxin is selected from the group consisting of the natural auxins…auxin derivatives and mixtures thereof. It teaches alternatively, manipulation of the auxin level within the desired range can be achieved by application of a plant growth regulator or hormone, e.g., cytokinin or gibberellic acid. This is the same teaching as the primary reference. Paragraph 23 of WO 2005/021715 further teaches a hormone, e.g., an auxin or another PGR, is applied to the seed or tubers of the plant prior to planting. Alternatively, the auxin or PGR is applied to the roots, foliage, flowers or fruits of the plant after planting. WO 2005/021715 teaches the amount of auxin applied to roots, foliage, flowers or fruits of plants. WO 2005/021715 further teaches that multiple applicants may be required over an extended growing period. Based on this teaching, one of ordinary skill in the art would have been motivated to adjust the amount of auxin, the amount of the amount of gibberellic acid and/or the amount of cytokinin after the first stage of growth because Stoller et al. ‘714 specifically teach auxin level may be manipulated within a desired range by application of a plant growth regulator or phytohormone, e.g., cytokinin or gibberellic acid. This is evidenced by Stoller et al. ‘253 which teaches that different ratios of hormones are needed at different stages of growth.
The examiner notes that while Applicant’s references and some arguments against WO 2005/021715 have been addressed, the references of record are Stoller et al. (US 2016/0198714, Stoller et al. ‘714) in view of Stoller et al. (US 2005/0197253, Stoller et al. ‘253), the Cato Publication (2013, Hortic. Bras, Cato et al.), and Jones et al. (US 5,188,655).
Applicant argues that in response to Applicant’s arguments relating to Stoller ‘253 in Applicant’s Response filed May 12, 2025, the Office refuses to respond to the substance and chooses to argue citing In re Keller. Applicant argues that none of the references disclose, teach, or suggest adjusting the amounts of auxin, gibberellic acid, and/or cytokinin in the plant growth composition applied in the first stage to the plant growth composition applied in the second stage. Applicant repeats the argument that Stoller ‘253 does not disclose, teach, or suggest adjusting the amounts of auxin, gibberellic acid, and/or cytokinin in the plant growth composition applied in the first stage to the plant growth composition applied in the second stage. Applicant argues that Stoller ‘253 proposed to apply auxin, cytokinin, and/or gibberellic acid “in abundance at regular intervals”—that does not disclose, teach or suggest adjusting the amounts of auxin, cytokinin, and/or gibberellic acid between applications. Applicant argues that in the Sept. 10, 2025 Office Action, the Office further relies on claim 45. Consistent with disclosure discussed with regard to paragraph 75, claim 45 does not disclose, teach, or suggest adjusting the amounts of auxin, gibberellic acid, and/or cytokinin in the plant growth composition applied in the first stage to the plant growth composition applied in the second stage.
In response to applicant's arguments against the references individually, the examiner maintains that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection of record is directed to Stoller et al. (US 2016/0198714, Stoller et al. ‘714) in view of Stoller et al. (US 2005/0197253, Stoller et al. ‘253), the Cato Publication (2013, Hortic. Bras, Cato et al.), and Jones et al. (US 5,188,655).
The examiner maintains that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of Stoller et al. ‘714, Stoller et al. ‘253 and Cato et al. and adjust the amount of auxin, the amount of gibberellic acid and/or the amount of cytokinin after the first stage of growth. Stoller et al. ‘714 teach a method of application of a non-aqueous solution of plant growth regulators, to the foliage and/or flowers of plants at or about the time of the beginning of plant flowering (e.g., during meiosis and when pollen is about to enter dehiscence). Stoller et al. ‘714 teach the plant growth regulator include a PGR mixture of three plant hormones--cytokinin, gibberellin, and auxin. In a preferred mixture, the cytokinin is kinetin, the gibberellin is GA3, and the auxin is IBA. One of ordinary skill in the art would have been motivated to adjust the amount of auxin, the amount of the amount of gibberellic acid and/or the amount of cytokinin after the first stage of growth because Stoller et al. ‘714 specifically teach auxin level may be manipulated within a desired range by application of a plant growth regulator or phytohormone, e.g., cytokinin or gibberellic acid. This is evidenced by Stoller et al. ‘253 which teaches that different ratios of hormones are needed at different stages of growth. Because Stoller et al. ‘253 teach that auxin, cytokinin and/or gibberellic acid is applied in abundance at regular intervals to enable the plant to balance its own hormonal needs which is critical to the use of plant growth hormones, one of ordinary skill in the art would have been motivated to adjust the amount of the PGRs in the mixture in order to control and increase the yield of crops, without evidence to the contrary. While Stoller et al. ‘253 teaches the application to adjust hormone levels, the method step is the same application of the compositions at varying times to the plants and plant parts. The reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. While there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention.
The secondary references Cato and Jones teach amounts of plant growth regulators, that are known to enhance plant growth. Stoller et al. ‘714 specifically teach auxin levels may be manipulated within a desired range. As such, one of ordinary skill in the art would have been motivated to use the ranges taught by Cato and Jones et al., as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007), without evidence to the contrary.
Regarding Applicant argument against claim 45, Stoller et al. ‘253 teach a method for manipulating plant architecture to alter growth of a plant and its fruit, comprising: manipulating the ratio of auxin to cytokinin in the roots of said plant by applying, to seeds or tubers for a plant prior to planting or to roots, foliage, flowers or fruit of a plant after planting, one or more plant growth hormones or a precursor or conjugate of said hormones in an amount effective to adjust the auxin to cytokinin ratio in said plant roots to a level which will alter the plant growth to produce a desired result selected from the group consisting of increasing root size, extending root life, altering internode length, increasing lateral branching, regulating the appearance of new top growth, increasing fruit quality and combinations thereof wherein said amount is insufficient to negatively affect growth of plant tissues. Stoller et al. ‘714 specifically teach auxin level may be manipulated within a desired range by application of a plant growth regulator or phytohormone, e.g., cytokinin or gibberellic acid. This is evidenced by Stoller et al. ‘253 which teaches that different ratios of hormones are needed at different stages of growth. Because Stoller et al. ‘253 teach that auxin, cytokinin and/or gibberellic acid is applied in abundance at regular intervals to enable the plant to balance its own hormonal needs which is critical to the use of plant growth hormones, one of ordinary skill in the art would have been motivated to adjust the amount of the PGRs in the mixture in order to control and increase the yield of crops, without evidence to the contrary. While the Stoller et al. ‘253 teaches the application to adjust hormone levels, the method step is the same application of the compositions at varying times to the plants and plant parts. The reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. While there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention.
The claims remain rejected for the reasons of record.
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.
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Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 1,653,651 B2 (USPN 651).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping methods of improving plant growth, the method comprising: applying a first growth composition to a plant or part thereof during a first growth stage, the first growth composition comprising a first active component combination comprised of: about 20 to about 67 wt. % auxin, about 20 to about 67 wt. % gibberellic acid, and about 0 to about 20 wt. % cytokinin; applying a second growth composition to the plant or part thereof during a second growth stage, the second growth composition comprising a second active component combination, comprised of: about 20 to about 30 wt. % auxin, about 15 to about 22 wt. % gibberellic acid, and about 50 to about 60 wt. % cytokinin; and growing the plant to maturity, thereby improving growth of the plant.
Response to Arguments
Applicant requests that the nonstatutory double patenting rejection be maintained until the claims are found to be allowable. The examiner notes applicants request to hold the double patenting rejection in abeyance. The rejection of claims 1-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 1,653,651 B2 (USPN 651) is maintained.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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