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 1-9 are pending in this 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.
35 U.S.C. 102 or, in the alternative, 35 U.S.C. 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.
Claims 1-7 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 Matsuo et al. (hereinafter, Matsuo).1
Matsuo explicitly discloses adding L-DOPA powder to soil and then planting sweet corn (Zea mays) and bell pepper (Capsicum annuum L.) seeds in the treated soil. See the English abstract and the paragraph bridging translation pages 5-6. Significantly longer crown roots and other growth improvements were observed compared to control group. See translation page 10, last paragraph of left column; translation page 11, lines 1-15 of left column; and translation page 13, paragraph bridging the two columns.
Instant claim 1 encompasses applying L-DOPA to roots of plants, and instant 7 encompasses applying to plants in soil culture cultivation. Therefore, the claims read on Matsuo’s treatment of soil with L-DOPA and planting sweet corn and sweet pepper seeds in the treated soil, particularly in view of Matsuo’s disclosure of improved growth effect on roots.
Although Matsuo does not explicitly mention enhancing plant attractiveness to beneficial insects of the Braconidae family, such effect would have been a necessary result of Matuso’s treatment method. By treating the soil with L-DOPA, sweet corn (Poaceae family) and sweet pepper (Solanaceae family) grown by Matsuo would necessarily have had their roots in contact with L-DOPA. Because Matsuo’s treated soil contains L-DOPA, and Poaceae and Leguminosae plant roots are in contact with L-DOPA in the soil, the same result of enhanced attractiveness to beneficial insects belonging to the Braconidae family would have been necessarily obtained.
Claims 2 and 3 recite specific subfamily and species of the Braconidae family, but enhanced attractiveness to such insects would have been necessarily possessed by Matsuo’s plants grown in soil, and also the soil itself, treated with L-DOPA.
Instant claim 6 encompasses application by dusting or application through the roots. These features read on Matsuo’s incorporation of L-DOPA powder to soil and/or plants and roots thereof grown in the soil treated with L-DOPA.
Instant claim 7 encompasses application to plants in soil culture cultivation method. This feature reads on Matsuo’s incorporation of L-DOPA powder to soil and/or plants and roots thereof grown in the soil treated with L-DOPA.
The claims are thereby anticipated.
In the alternative, the claims would have been obvious because the same exact method steps are disclosed by Matsuo. It is well established that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). In Baxter, the court held that even when the prior art did not expressly disclose hemolysis-suppression feature or property of a blood bag plasticizer, such unrecognized feature or property is insufficient for rebutting a prima facie case of obviousness over a prior art blood bag that utilized the same plasticizer. Id. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”).
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.
35 USC 103
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuo.
It is noted that claims 1-7 were rejected over Matsuo in the previous ground of rejection under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103. This ground of rejection includes claims 8 and 9.
Matsuo explicitly discloses adding L-DOPA powder to soil and then planting sweet corn (Zea mays) and bell pepper (Capsicum annuum L.) seeds in the treated soil. See the English abstract and the paragraph bridging translation pages 5-6. Significantly longer crown roots and other growth improvements were observed compared to control group. See translation page 10, last paragraph of left column; translation page 11, lines 1-15 of left column; and translation page 13, paragraph bridging the two columns.
Instant claim 1 encompasses applying L-DOPA to roots of plants, and instant 7 encompasses applying to plants in soil culture cultivation. Therefore, the claims read on Matsuo’s treatment of soil with L-DOPA and planting sweet corn and sweet pepper seeds in the treated soil, particularly in view of Matsuo’s disclosure of improved growth effect on roots.
Although Matsuo does not explicitly mention enhancing plant attractiveness to beneficial insects of the Braconidae family, such effect would have been a necessary result of Matuso’s treatment method. By treating the soil with L-DOPA, sweet corn (Poaceae family) and sweet pepper (Solanaceae family) grown by Matsuo would necessarily have had their roots in contact with L-DOPA. Because Matsuo’s treated soil contains L-DOPA, and Poaceae and Leguminosae plant roots are in contact with L-DOPA in the soil, the same result of enhanced attractiveness to beneficial insects belonging to the Braconidae family would have been necessarily obtained.
It is well established that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). In Baxter, the court held that even when the prior art did not expressly disclose hemolysis-suppression feature or property of a blood bag plasticizer, such unrecognized feature or property is insufficient for rebutting a prima facie case of obviousness over a prior art blood bag that utilized the same plasticizer. Id. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”).
Claims 2 and 3 recite specific subfamily and species of the Braconidae family, but enhanced attractiveness to such insects would have been necessarily possessed by Matsuo’s plants grown in soil, and also the soil itself, treated with L-DOPA.
Instant claim 6 encompasses application by dusting or application through the roots. These features read on Matsuo’s incorporation of L-DOPA powder to soil and/or plants and roots thereof grown in the soil treated with L-DOPA.
Instant claim 7 encompasses application to plants in soil culture cultivation method. This feature reads on Matsuo’s incorporation of L-DOPA powder to soil and/or plants and roots thereof grown in the soil treated with L-DOPA.
Instant claim 8 encompasses “further active ingredient” such as “fungicides … humics components, organic compounds … fertilizers …” It would have been obvious to the ordinary skilled artisan in the field of growing sweet corn and sweet pepper to further apply additional active ingredients such as fungicides, humics, organic compounds, and fertilizers to provide plant food and nutrients and control infection.
Instant claim 9 encompasses applying L-DOPA to the plant at least once every three months. Such repeat application would have been obvious to the ordinary skilled artisan to obtain additional growth improvement benefits of L-DOPA or to replenish the soil.
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.
For the foregoing reasons, all claims must be rejected at this time. No claim is allowed.
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
1 Matsuo was published in Japanese with an English abstract. A machine translation is provided herewith. The translation document has page numbers located on the top right corner of each page – this is the page number referenced in this Office action unless otherwise noted.