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 .
Claims 1-15 are pending in this application.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 14 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because “Use of” a substance as recited in claim 14 does not fall within at least one of the categories of patent eligible subject matter recited in 35 U.S.C. 101: process, machine, manufacture, or composition of matter.
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 14 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.
“Use of” of a substance as recited in claim 14 fails to recite a process step. It is therefore an incomplete process claim if that were the intended category of invention. The claim is indefinite for this reason.
For these reasons, claim 14 cannot be further examined on the merits.
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.
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 1-7, 9-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2,518,062.
EP 2,518,062 discloses strigolactone derivatives having the following structure:
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204
238
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, wherein
Ra can be H,
Rb can be hydrogen, halogen, C1-8 alkyl, C1-8 alkoxy, C3-8 cycloalkyl,
Rc can be hydrogen, halogen, C1-8 alkyl, C1-8 alkoxy, C3-8 cycloalkyl,
Rf can be H,
Rd can be COOH or COO-C1-8 alkyl,
Re can be -CH=CH-R7, wherein
R7 can represent H, C1-8 alkyl, or a 4-, 5-, 6-, or 7-membered saturated carbocyclic ring, or a fused ring system containing more than one of those rings.
See paragraphs 18-25. Re is preferably -CH=CH-R7, with R7 preferably saturated or unsaturated carbocyclic ring (paragraph 25). The following specific compound having the above described Rd (COOH) and Re (-CH=CH-R7) is exemplified on page 5 and claim 4:
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222
332
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.
EP 2,518,062 discloses that these compounds induce germination of seeds of parasitic weeds (paragraph 42). Treatment of seeds of useful crops is disclosed (id.). Increased crop yield due to enhanced hyphal growth of symbiotic mycorrhizal fungi is disclosed (paragraph 43). Enhancement of cambium growth, regulation of branching, tillering, and root development of plants are also disclosed (paragraphs 44-48). Formulation with carriers, supports, fillers, surfactants, and other additives is disclosed (paragraph 66).
EP 2,518,062 does not exemplify a specific compound of Applicant’s formula (I), but strigolactone derivatives of EP 2,518,062 encompass the same substituents and are thus suggestive of compounds Applicant’s formula (I).
The specific cyclohexenyl compound of EP 2,518,062 shown above differs from Applicant’s formula (I) in that the cyclohexenyl is unsaturated, whereas the ring moiety in Applicant’s formula (I) at the same position is “cycloalkyl” or ‘carbotricylic.” However, R7 of EP 2,518,062 encompasses 4-, 5-, 6-, or 7-membered saturated or unsaturated carbocyclic rings. The cyclohexenyl ring exemplified by EP 2,518,062 is suggestive of the saturated cyclohexyl ring.
Claim 13 recites “improving the nutrient uptake of a crop.” EP 2,518,062 teaches various plant growth regulating activity, including enhanced hyphal growth of symbiotic mycorrhizal fungi, which increases crop yield (paragraph 43). EP 2,518,062 further discloses that arbuscular mycorrhiza allows plants to obtain water and nutrients from the soil through the haphae of the fungi (paragraph 9). Thus, EP 2,518,062 suggests improving the nutrient uptake of a crop.
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 claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited reference.
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 8 is directed to compounds of formula (I), wherein R4, R5, and R6 together with the carbon to which they are attached form an 8- to 10-membered carbotricyclic ring optionally substituted with one or two R9. See for example Applicant’s compound P-4 on specification page 47 and its excellent plant growth regulation activity shown in Examples B1 and B2 (pages 51-52). Although R7 of EP 2,518,062 can represent a 4-, 5-, 6-, or 7-membered saturated carbocyclic ring, or a fused ring system containing more than one of those ring, there is insufficient teaching, suggestion or motivation to obtain a carbotricyclic ring that is 8- to 10-membered.
The prior art fails to adequately disclose, suggest, or otherwise render obvious such compounds.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
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