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 .
Status of claims
The amendment filed 11/5/2025 has been entered.
Claims 2, 6-7 have been canceled.
Claims 1, 3-5, 11-14, 16 have been amended.
In summary, claims 1, 3-5, 8-19 are pending and examined in this office action.
All previous objections and rejections not set forth below have been withdrawn in view of the applicant’s amendment and/or upon further consideration. See “Response to Arguments” at the end of office action. The following rejections are repeated, modified and/or added for the reasons of record as set forth in the last Office action of 8/5/2025, and/or necessitated by the applicant’s amendments. The applicant’s arguments filed 11/5/2025 have been thoroughly considered but are not deemed fully persuasive.
Claim Objections
Amended claim 13 is objected for the following informalities:
In claim 13, the “and” in the claim is in not in the correct place. It should before the last (5th) wherein clause, not before the 3rd wherein clause.
The claim is suggested to be amended to
--- wherein the nanomaterial conjugate comprises a nanocarrier and an active agent linked to the nanocarrier;
wherein the nanocarrier is cellulose natural crystal;
wherein the nanocarrier delivers the active agent across the cell walls of the plant cells;
wherein the active agent is an agrochemical for the plant; and
wherein the nanomaterial conjugate is applied at a concentration in a range of 0.1 mg/L to 100g/L ---.
See claim 1 that the “and” is in where it should be.
See the requirement of 37 CFR 1.71(a) for “full, clear, and exact terms”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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.
Amended claims 1, 3, 8-9, 11-12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Frey et al (US Patent 9861096, granted and published 1/9/2018).
The specification does not define nanomaterial conjugate or conjugate. According to Leiro et al (Chapter 2. Conjugation Chemistry Principles and Surface Functionalization of Nanomaterials. Biomedical Applications of Functionalized Nanomaterials. P35-65, 2018), a conjugate refers to a compound formed by the joining of two or more chemical entities. …. Chemical conjugation and in particular bioconjugation, where a stable covalent link is formed between two molecules, in which at least one is a biomolecule.
According to the specification (p8, 3rd para), Agrochemicals include growth regulators, herbicides, antifungal treatments, and other compounds.
According to https://www.britannica.com/technology/agrochemical, agrochemicals include fertilizers, herbicides, and insecticides. Thus, pesticides are agrochemicals.
Amended claim 1 is drawn to a nanomaterial conjugate comprising:
a nanocarrier-- cellulose nanocrystal (CNC); and
an active agent (that is an agrochemical for a plant) linked to the nanocarrier,
wherein the nanocarrier delivers the active agent across cell walls of cells of the plant (wherein clause).
for delivering an active agent to a plant, the nanomaterial conjugate (preamble).
Frey et al teach and claim a polymeric material/matrix comprising
cellulose nanocrystals (CNC), and
one or more compounds of plant growth hormones selected from a plant growth hormone, and a pesticide like herbicide (col 11, lines 34-43; claims 1, 3). Either a plant growth hormone or a pesticide/herbicide reads on an agrochemical for a plant. The growth hormone also reads on the limitation of claim 3.
Frey et al teach that the incorporated the materials are covalently associated (col 5, lines 26-29). Thus, the polymeric material read on a nanomaterial conjugate. The covalent association also reads on the limitation of claim 9.
Therefore, Frey et al teach the same structure of claim 1, except
are silent on delivering an active agent to a plant (preamble), and that the nanocarrier nanocrystal delivers the active agent across cell walls of cells of the plant (wherein clause).
According to MPEP 2111.02, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). According to MPEP 2111.04, if a wherein or whereby clause does not require the method steps to be performed, or by claim language that does not limit a claim to a particular structure, such wherein or whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited. Quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003).
In addition, according to MPEP 2112. I, SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. The court stated that “just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel.” Id.
According to MPEP 2112. III, A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103rejection is appropriate for these types of claims as well as for composition claims.
In this case, the preamble and the wherein clause does not limit the structure of the claim, but rather express an intended use, thus, they are not accorded patentable weights.
Frey et al teach the exact the same structure of the claimed conjugate. The for delivering an active agent to a plant and the CNC delivering the active agent across cell walls of cells of the plant, are inherent property of the conjugate of Frey et al. Even if such property or function is previously unappreciated, it does not render the old composition patentably new to the discoverer.
Nevertheless, Frey et al further teach that the CNC serves as a carrier (col 39, 2nd para). Frey et al tested and demonstrated that a model pesticide is released from the conjugate comprising CNC (Example 3, from col 35 to col 44). Frey et al also tested and demonstrated that a pesticide/insecticide imidacloprid is released from the conjugate comprising CNC (Example 4 in col 44-46). Thus, for delivering an agrochemical to a plant or plant cell the is not unexpected intended use.
Frey et al further teach that the CNC is from 1-10% in the complex comprising active agent model pesticide 50% (same example 3 in col 42, 2nd para), teaching the limitation of claim 8.
Frey et al further teach that the CNC content is below 10 weight % (col 19, 1st para), meaning lower than 100 mg/L, teaching the limitation of claims 11-12.
Therefore, the claims are anticipated by, or in the alternative, as obvious over, Frey et al.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness.
Amended claims 13-14, 17-19 are rejected under 35 U.S.C. 103 being unpatentable over Schiavi et al (Exploring cellulose nanocrystals obtained from olive tree wastes as sustainable crop protection tool against bacterial diseases. Nature Scientific Reports, p1-14, 2022), in view of Frey et al.
Amended claim 13 is drawn to a method comprising the steps of:
(a) providing the plant cells in a medium;
(b) introducing an amount of a nanomaterial conjugate comprising a nanocarrier (CNC) and an active agent (agrochemical) linked to the nanocarrier to the medium to form a mixture thereof; and
(c) maintaining the mixture at a temperature for a period of time to allow sufficient interaction of the plant cells with the nanomaterial conjugate,
wherein the nanocarrier nanocrystal delivers the active agent across the cell walls of the plant cells (wherein clause),
for delivering an active agent across cell walls of plant cells (preamble).
Schiavi et al teach a method comprising steps of
(a) providing the plant cells in a medium,
(b) introducing an amount of comprising a nanocarrier CNCto the medium to form a mixture thereof, and
(c) maintaining the mixture at a temperature (27 °C) for a period of time (48 hours) to allow sufficient interaction of the plant cells with the nanomaterial ((p11, 3rd para),
Schiavi et al demonstrated that CNCs are up-taken into a plant organ (olive root, having cell walls) (p4, 2nd para, fig 5). The CNCs not only are aggregated on the root surface (p4, 2nd para, fig 4), but also are inside the cells of the root organ (p4, 2nd para; p9, last para, fig 5), indicating that the nanocrystals passed plant cell walls.
Thus, Schiavi et al teach the limitation of steps (a), (b) and (c) of claim 13, and demonstrated that the CNCs are into plant cells across cell walls, except
do not teach the CNCs are conjugated with an agrochemical to form a nanomaterial conjugate.
Nevertheless, Schiavi et al suggest that CNCs can be used as promising nanocarriers for delivering active ingredients/agents particularly agrochemicals to plant cells for various benefit (p1, Abstract; p2, 1st to 2nd para). Schiavi et al teach and cite references to demonstrate that the agrochemicals have various benefit to plant cells (p1, 1st and 2nd paras), an advantage.
As analyzed above, Frey et al teach and claim a polymeric material/matrix comprising cellulose nanocrystals (CNC), and one or more compounds of plant growth hormones selected from a plant growth hormone, and a pesticide like herbicide. Either a plant growth hormone or a pesticide/herbicide reads on an agrochemical for a plant. The growth hormone also reads on the limitation of claim 14.
Frey et al further teach that the CNC serves as a carrier, which is also taught by Schiavi et al. Frey et al also tested and demonstrated that a pesticide/insecticide imidacloprid is released from the conjugate comprising CNC.
Frey et al further teach that the CNC is from 1-10% in the complex comprising model pesticide (same example 3 in col 41, lines 1-50), teaching the limitation of claims 17-18.
Frey et al further teach that the complex/conjugate comprising CNC and model pesticide is 1% and 10% (col 41, lines 40-49), meaning 1 mg/L to 100 mg/L, teaching the limitation of claim 19.
An invention would have been obvious to one ordinary skill in the art if any teaching, suggestion or motivation in prior art leading the one to combine the teaching(s) or suggestion(s) of the cited references to arrive the claimed invention.
In this case, it would have been obvious to one ordinary skill in the art to modify the invention of Schiavi et al such that the CNC is conjugated with an agrochemical to formed a nanomaterial conjugate thus the nanocrystal serves as a carrier of the active agent, as suggested by Schiavi et al, and taught by Frey et al. One ordinary skill in the art would have been motivated to do so because agrochemicals have various benefit to plant cells, an advantage as taught by Schiavi et al and by Frey et al. Since the conjugate of CNC-agrochemical had been taught and had been available and/or the method of making had been taught, and CNC had been demonstrated to be up-taken into plant cells, the expectation of success would have been reasonably high.
Therefore, the invention would have been obvious to one ordinary skill in the art.
Claims 4 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Frey et al or Schiavi et al in view of Frey et al, as applied to claims 1, 13-14 above, and further in view of Song et al (Insight into the mode of action of 2,4‐dichlorophenoxyacetic acid (2,4‐D) as an herbicide. Journal of Integrative Plant Biology. P106-113, 2014).
Claims 1, 13-14 have been analyzed above.
Claims 4 and 15 limit the agrochemical to 2,4-dichlorophenoxyacetic acid (2,4-D).
Frey et al or Schiavi et al in view of Frey et al teach the subject matter of agrochemicals particularly plant growth regulators and herbicides, but do not teach that such agrochemical is 2,4-D.
Song et al teach that agrochemicals include herbicides and auxins (plant growth regulator), and that 2,4-D is an auxin and also an herbicide. 2,4-D is one of the most commonly used auxins (plant growth regulator) and herbicides in plants (p106, whole page; p107, left col, 1st para).
Thus, it would have been obvious to one ordinary skill in the art to slightly modify the invention of Frey et al or Schiavi et al in view of Frey et al, such that the invention uses 2,4-D as the agrochemical. One ordinary skill in the art would have been motivated to do so because 2,4-D is multiple functional as an herbicide and as a plant growth regulator, and is one of the most commonly used in plants. The expectation of success would have been high because nanocrystal had been demonstrated to carry agrochemicals, and would have been expected to be able to carry 2,4-D.
Therefore, the dependent claims would have been obvious to one ordinary skill in the art.
Amended claims 5 and 16 are rejected under pre-AIA 35 U.S.C. 103 being unpatentable over Frey et al or Schiavi et al in view of Frey et al, as applied to claims 1 and 13 above, further in view of Shoseyov et al (USPGPUB 20200121581, published 4/23/2020, filed 4/4/2018).
Claims 1 and 13 have been analyzed above.
Amended claims 5 and 16 limit the active agent of claims 1 and 13 to a polypeptide or a polynucleotide.
Frey et al or Schiavi et al in view of Frey et al do not teach the subject matter of an active agent and an agrochemical for a plant, but do not explicitly teach that the active agent is a polypeptide or a polynucleotide.
Shoseyov et al teach making a conjugate comprising nanocrystal and poly-lysine (poly-Lys), a polypeptide (Example 1, [0321]-[0323]). Shoseyov et al also suggest that polynucleotides, like polypeptides, are also an embodiment of the invention, and the advantage that the polynucleotides can encode the polypeptides ([0194], [0196], [0211]).
Therefore, it would have been obvious to one ordinary skill in the art to modify the invention of Frey et al or Schiavi et al in view of Frey et al such that the active agent of Frey et al is a polypeptide or a polynucleotide as taught by Shoseyov et al. One ordinary skill in the art would have been motivated to do so because Shoseyov et al teach the advantage that the polynucleotide encodes a polypeptide in the target cells. The expectation of success would have been high, because both polynucleotides and polypeptides are polymers. Shoseyov et al achieved success of making the conjugate and delivering polypeptides.
Therefore, the dependent claims would have been obvious to one ordinary skill in the art.
Remarks
According to Arockiasamy et al (Review article. Navigating the nano-world future: Harnessing cellulose nanocrystals from green sources for sustainable innovation. Heliyon 11, p1-23, 2025), cellulose nanocrystals (nanocrystals) are reasonably similar in structure (p3, 4th para; p7, last para).
Arockiasamy et al also teach that nanocrystals exhibited low cytotoxicity, even at high concentrations 5 mg/ml (p12, 2nd para).
There is no evidence or indication in the art that nanocrystals cause toxicity in plant cells. Thus, rejection for scope of enablement is not made.
Response to Arguments
Claims have been significantly amended, all of the “active agents” are eliminated except agrochemicals, and more, which also affects the combination of the structure and dependent claims, thus, necessitate the new ground(s) of rejections.
The objections and rejections are newly written accordingly in view of the amendments. The arguments by the applicant are fully analyzed, but they are to the previous rejections, and no longer applicable.
The Objection to the specification and drawings is withdrawn. The applicant’s arguments are considered persuasive.
The rejections under USC 112 are withdrawn in view of the claim amendments.
Conclusion
No claim is allowed.
The 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). The 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 extension fee 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 date of this final action.
Contact information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE ZHONG whose telephone number is (571)270-0311. The examiner can normally be reached 8:30am to 5:00pm EST.
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/Wayne Zhong/
Primary Examiner, Art Unit 1662