DETAILED ACTION
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.
Status of the Claims
Claims 1-20 are pending and under consideration in this action. Claims 12-20 are newly added.
Claim Objections
Claims 5-7 are objected to because of the following informalities: “hydroxyoctadecaenoic acid” in claim 5 and “octadecaenoic acid” in claims 6 and 7 should be “hydroxyoctadecenoic acid” and “octadecenoic acid” respectively. Appropriate correction is required.
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.
Claims 1, 2, 5, and 8-15 are 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.
With regards to claim 1, the definition for R1 and R2 both recite “optionally comprise one or more bonds…provided that the double bond is comprised”. R1 and R2 are definitions for the structures of formula (I) and formula (II). The transitional phrase “comprising” allows for the inclusion of unrecited elements. It is unclear what additional elements/structures are and are not permitted in the definitions of R1 and R2, and thus, it is unclear what the boundaries of the scope of the structures of formula (I) and formula (II) are.
Furthermore, the phrase “provided that the double bond is comprised” at the end of the definitions of R1 and R2 renders the claim indefinite because the phrase appears to imply that the double bond is required, but each definition also notes earlier in the claim that the double bonds are optional. Thus, it is unclear if the double bond is required or not. For the purposes of examination below, in light of the dependent claims, the definition will be interpreted as the double bonds in the definitions R1 and R2 as being optional.
Claims 2, 5, and 8-15 are subsequently rejected as they incorporate the limitations discussed above and do not remedy the issues discussed above.
Further regarding claim 11, the claim is directed to a product, a plant activator, but the claim recites that “the plant activator is applied to at least one plant” implying method steps for using this product. Per MPEP 2173.05(p), a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite.
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.
Claim 5 is 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 5 ultimately depends from claim 1, which recites that the hydroxy fatty acid derivative is that of formula (I) and/or formula (II). Hydroxyoctadecenoic acid is not a structure of formula (I) or formula (II). Both formula (I) and formula II) are at the very least trihydroxyoctadecenoic acids. Thus, claim 5 fails to further limit the claim upon which it depends as it widens the scope of the claim it ultimately depends from.
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 § 102
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.
Claims 1-4, 7, 8, 10-14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cowley et al. (Cowley) (Pest Management Science; published 2005).
Cowley discloses the treatment of the first leaves of barley seedlings with the trihydroxy oxylipin, 9,12,13-trihydroxy-10(E)-octadecenoic acid (reading on a compound of formula (II), where R1 is (-(CH2)7-) and R2 is (CH3CH2CH2CH2CH2--). Treatment was shown to reduce infection of that leaf by the powdery mildew fungus Blumeria graminis Speer f sp hordei Marchal (abstract; p.573, Sec.3).
The oxylipin was suspended in acetone and distilled water (reading on diluent or carrier) and were sprayed onto the first leaves of plants (reading on a spraying agent) (p.573, Sec. 2.2).
With regards to the instant claims 12 and 13, “immersion agent” and “soil injection agent” are recitations of intended use of claims 12 and 13, respectively. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02. In the instant case, as there does not appear to be a structural difference between the claimed invention and the prior art, and the prior art structure does not require the inclusion of any components that would preclude the prior art structure from use as an immersion agent for application to plant stems, leaves, or roots or as a soil injection agent, absent evidence to the contrary, the prior art structure is capable of performing the intended use, and thus meets the claim.
Claims 1-4, 6-8, 10-14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bowser et al. (Bowser) (US 5,342,976; published Aug. 30, 1994).
Bowser discloses a composition suitable for topical application to human skin comprising, in addition to a suitable vehicle, an active ingredient which can control skin barrier functions. The active ingredient is an hydroxy- or epoxy-derivative of an essential fatty acid (abstract). Examples of hydroxyderivatives of essential fatty acid include: 9,10,13-trihydroxy-11-octadecenoic acid (reading on a compound of formula (I), where R1 is (-(CH2)7-) and R2 is (CH3CH2CH2CH2CH2--) and 9,12,13-trihydroxy-10-octadecenoic acid (reading on a compound of formula II, where R1 is (-(CH2)7-) and R2 is (CH3CH2CH2CH2CH2--) (col.7, ln.4-10).
The compositions should also comprise a vehicle to enable the active ingredient to be conveyed to the skin in an appropriate dilution. The compositions can include water as a vehicle (reading on diluent or carrier) (col.15, ln.1-22). The composition can be formulated as a liquid (col.16, ln.34-35).
With regards to the instant claims 1, 10 12 and 13, “plant activator”, “spraying agent”, “immersion agent”, and “soil injection agent” are recitations of intended uses of the claimed compositions. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02. In the instant case, as there does not appear to be a structural difference between the claimed invention and the prior art, and the prior art structure does not require the inclusion of any components that would preclude the prior art structure from use as a plant activator, spraying agent, an immersion agent for application to plant stems, leaves, or roots, or as a soil injection agent, absent evidence to the contrary, the prior art structure is capable of performing the intended uses, and thus meets the claim.
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 1-4 and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bowser et al. (Bowser) (US 5,342,976; published Aug. 30, 1994).
The teachings of Bowser are set forth above and incorporated herein. Additional relevant teachings of Bowser are set forth herein below.
Bowser discloses that the composition should comprise a vehicle to enable the active ingredient to be conveyed to the skin an appropriate dilution (col.15, ln.3-5). Bowser discloses that the amount of the vehicle can comprise the major portion of the composition, particularly where little or no other ingredients are present in the composition. The composition will accordingly comprise from 15 to 99.9999% by weight of the vehicle (col.15, ln.63-col.16, ln.5).
The composition can also be employed as a vehicle for a wide variety of cosmetically or pharmaceutically active ingredients, particularly ingredients which have some beneficial effect when applied to the skin (col.16, ln.20-24).
In preparing the cosmetic composition for topical application to the skin, the active ingredient is mixed with a suitable vehicle to provide a concentration of from 0.001% to 0.5% (col.16, ln.29-33).
With regards to the concentration of the hydroxy fatty acid derivative recited in the instant claims 9, 15, and 17-20, in light of Bowser’s disclosure, it would have been obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results. In particular, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated before the effective filing date to use the prior art disclosed ranges, which involve small amounts of the active ingredient and allows for admixture with additional actives and auxiliary ingredients, and engage in routine experimentation to determine effective amounts of the ingredients beneficially taught by the prior art reference. The adjustment of particular conventional working conditions 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 before the effective filing date of the instant invention, because the teachings of the prior art reference is fairly suggestive of the claimed invention.
Conclusion
Claims 1-20 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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/MONICA A SHIN/Primary Examiner, Art Unit 1616