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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15 and 18, in the reply filed on 11/25/2025 is acknowledged.
Claims 16 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/25/2025.
Status of Claims
Preliminary amendment filed on 06/16/2023, and claim amendment filed on 11/25/2025 are acknowledged.
Claims 16-17 are withdrawn without traverse. Claims 1-15 and 18 are amended.
Claims 1-15 and 18 are pending and being examined on merits herein.
Priority
This instant application 18268211, filed on 06/16/2023, is a 371 of PCT/EP2021/087264, filed on 12/22/2021, which claims foreign priority of Belgium BE2020/5966, filed on 12/22/2020.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 06/16/2023, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Objection to Specification
Specification is objected to for the following informalities:
All numbers with decimal in specification should use decimal sign dot “.”, not comma “,”. For example, between 5,00 and 50,00 wt.% in line 6 on Pg. 11 should be 5.00 and 50.00 wt.%.
All numbers higher than 1000 should use “,” at thousand digital spot, not “.”, or simple use the whole number without comma. For example, 5.000 ppm, 3.000 ppm, 2.000 ppm from lines 30-36 on Pg. 5 should be 5,000 ppm, 3,000 ppm, 2,000 ppm respectively; or simply put as 5000 ppm, 3000 ppm, and 2000 ppm.
Claim Objections
Claims 6-13 and 18 are objected to because of the following informalities:
Claims 6-13 and 18 each recites “characterized in that,” which is recommended to replace as “wherein”. Claim 6 recites “100.000 ppm”, in which the dot within the number should be a comma so that it reads as “100,000 ppm” interpreted based on specification.
Claim 7 recites “0,10” and “0,30”. The comma within a number should be corrected to a dot, as “0.10” and “0.30”. Claim 7 also uses “-“ in front of equations containing “+” sign. The hyphens in front of the equations shall be removed in order not to generate confusion as subtraction or negative sign in the equations.
Claim 9 recites “5,00”, 50,00”, “based on a total weight of”, which should be “5.00”, “50.00”, and “based on the total weight of”, respectively.
Claim 10 recites “0,10” and “30,00”, which should be corrected to “0.10” and “30.00”.
Claim 11 recites “0,01”, “10,00”, and “based on a total weight of”, which should be “0.01”, “10.00” and “based on the total weight of”.
Claim 12 recites “their esters”, which should be removed because the phrase shown as “or vegetable oil ester” already covers the specific oil esters.
Claim 13 recites “4,0” and “7,0”, which should be “4.0” and “7.0”.
Claim 18 recites “5,0” and 6,5”, which should be “5.0” and “6.5”.
Appropriate correction is required.
Claim Interpretation
Claim 1 is interpreted as a method comprising applying a composition to a targeted plant and/or to soil in contact with said targeted plant, wherein the composition comprising ferulated chitosan.
The phrase “for regulation and/or stimulation of plant growth” does not provide structural method steps in the limitation, and it is interpreted as property or “intended use” of the composition and the method.
Claims 2-5, similar to claim 1 as discussed above, are drawn to property or results of the method in claim 1, which they depend upon.
Claim 7 is interpreted in light of specification as following: the ferulated chitosan in the method of claim 1 constitutes a linear polysaccharide composed of randomly distributed beta-(1-4) linked D-glucosamine and N-acetyl-D-glucosamine moieties as chitosan backbone, and ferulic acid is randomly grafted onto the backbone as monomer, dimer, and/or trimer.
The claim language fails to define random distribution of moieties, while specification (Pg. 4, Lines 11-18) provides explanation that chitosan is composed of randomly distributed beta-(1-4) linked D-glucosamine and N-acetyl-D-glucosamine moieties, and ferulic acid is grafted on the chitosan preferably on amine group, and can be grafted as a monomer, dimer and/or trimer, and/or in different isomer forms.
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 and 7 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.
Claim 1 recites “applying a composition … in a targeted plant, …, wherein said composition is applied to said targeted plant and/or to soil in contact with said targeted plant”. It is unclear whether the composition is applied to just “in a targeted plant” as defined earlier in the sentence, or it is applied to “targeted plant and/or to soil in contact with said targeted plant” defined by later phrase. These two different targets introduce different conflicting scopes into the limitation. In light of the claim interpretation as presented above, for the purpose of compact prosecution, the later phrase with a broader scope is set forth as the limitation scope.
Claim 7 recites a compound formula (I) while definitions of the letters (a), (b), and (c) are missing. Currently, (a), (b), and (c) appears to be defining the three different moieties while a ratio a : b : c with the equations suggests these letters are meant to be integers, for instance, (b) appears to represent the ferulated D-glucosamine moiety and a numeric number at the same time. Each letter can not represent both at the same time, and it is unclear what each letter is meant to be.
Claim 7 recites “moieties are randomly distributed in said compound”. The term “randomly” is a relative term which renders the claim indefinite. The term “randomly” is not defined by the claim. the claim language does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what “randomly distributed” means in claim language: whether it is meant that the compound has to comprise all the three moieties as shown in formula (I) but their locations in the compound can be shifted around as random, or it is meant to randomly graft ferulic acid on the backbone as monomer, dimer, and/or trimer, on same amine and/or different amine groups in the backbone.
Based on the claim 7 limitation language, “a ferulated D-glucosamine moiety (b)” already includes the ferulic acid substituent, as a result, when (b) is an integer, it would represent integer (d), and thus integer (d) would not be needed. It is unclear what defines (b) and what differences are between (b) and (d) without clear definition.
In addition to the unclarified issues above, claim 7 recites “ following a ratio a : b : c, wherein: a+b+c>15, b/(a+b+c) <0.10; and c/(a+b+c)<0.30”. There is insufficient antecedent basis for this limitation in the claim, because “a+b+c”, “b/(a+b+c)”, “c/(a+b+c)” each is not mentioned earlier in the ratio a : b : c. Plus, the equations would not be able to allow one of ordinary skill in the art to see definite values or answer to a : b : c, and the claim scope 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.
Claims 2-5 are 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.
Claims 2-5 each does not set forth any structural limitation of method steps of claim 1, to the extent that the claims are further defining the property or results of the method in claim 1. Therefore, these claims are improper dependent form for failing to further limit the subject matter, e.g., composition and method steps, of claim 1, which claims 2-5 directly depend upon.
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
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 13-15 and 18 are rejected under 35 U.S.C. 102 (a)(1) /(a)(2) as being anticipated by Cabrera Pino et al. (Hereafter “Pino”, WO2017046237, 03/23/2017; PCT/EP2026071810, filed on 09/15/2016, with US in designated states; IDS of 06/16/2023).
Pino throughout the reference teaches a composition for improving stress tolerance of plants and directs to a method for improving stress tolerance of a plant comprising applying such composition on the plant (e.g., Abstract).
Regarding instant claims 1-5, Pino specifies that the method of applying the composition is for improving stress tolerance of plants (e.g., Abstract), wherein “tolerance” can be replaced by resistance or defense, protection, support, strength, toughness, endurance, vigor, resilience, struggle, and the like (e.g, Pg. 20, Lines 9-11), indicating applying the composition constitutes properties for plant growth regulation.
Pino exemplifies in Example 7 using oligomers of ferulic acid to be grafted on chitosan (Pg., 34, Materials and Methods, Lines 14-21) (corresponding to instantly claimed ferulated chitosan in instant claim 1, as evidenced by instant specification, Pg. 4, Lines 11-18) inducing tolerance in wheat plants to drought stress (Pg. 34, Lines 11-12), and results show that plants with treatment of ferulated chitosan significantly increase the fresh weight of plant under conditions that simulate drought (Pg. 35, Results, Table 2, Lines 7-10). Pino then concludes that the results demonstrate that composition comprising hydroxycinnamic acid derivative oligomers, such as ferulic acid oligomers grafted on chitosan (or ferulated chitosan) (e.g., Table 2, Pg. 35; Claim 2, Pg. 42, Lines 8-10), can be used to improve plant tolerance to an abiotic stress (Pg. 35, Lines 11-12). Pino also points out that said stress can be abiotic or biotic (e.g., Claim 9), and the method for improving stress tolerance of a plant comprising applying the composition to said seed (e.g., Claim 13) or said plant (e.g., Claims 14-15) in the form of foliar sprays, turf sprays, in furrow sprays, seedling dips, root dips, soil drenches, soil drips, and others (e.g., Pg. 22, Lines 27-30).
Thus, Pino teaches a method comprising applying a composition to a targeted plant and/or to the soil in contact with targeted plant, wherein the composition comprises ferulated chitosan, and the method comprising such composition results in improvement of plant tolerance to abiotic stress or biotic stress, as a consequence of regulation of plant growth, corresponding to instant claim 1. In light of claim interpretation as shown above, for regulation and/or stimulation of plant growth is interpreted as property or intended use of the composition and method, even if Pino does not explicitly teach regulation and/or stimulation of plant growth resulting from the method comprising the composition.
Also in light of the claim interpretation, by applying the composition comprising ferulated chitosan to plant as taught by prior art as instantly claimed, the properties are thus also taught by prior art, such as increasing harvest yield of the target plant (corresponding to instant claim 2), increasing flowering of the target plant (corresponding to instant claim 3), shortening the time to harvest (corresponding to instant claim 4), or increasing the amount of fruit produced by the target plant (corresponding to instant claim 5).
Regarding instant claim 6, Pino indicates the composition comprises from 100 to 100,000 ppm of the at least one solubilizing agent, preferably from 500 to 50,000 ppm, more preferably from 1,000 to 20,000 ppm. Or it can be at about 4,000 ppm or 5,000 ppm in particular embodiments (Pg. 19, Lines 7-12). The chitosan and ferulated chitosan correspond to the at least one solubilizing agent in the composition as discussed above (e.g., Pg. 6, Lines 1-5; Pg. 18, Lines 18-20; Pg., 34, Lines 14-21), therefore, Pino teaches ferulated chitosan concentration range falling within the instantly claimed range.
Regarding instant claims 13 and 18, Pino teaches that the composition has an acidic pH, meaning a pH value inferior or equal to 7. In one embodiment, the composition has a pH inferior or equal to 6; in one particular embodiment, the composition has a pH of about 5.5 (Pg. 17, lines 25-28), the specific pH values falling within the pH between 4.0 to 7.0 in instant claim 13, or pH between 5.0 and 6.5 in instant claim 18.
Regarding instant claims 14 and 15, as discussed above, Pino teaches that the method for regulating plant growth comprising applying the composition to said plant (e.g., Claims 14-15) in the form of foliar sprays, turf sprays, in furrow sprays, seedling dips, root dips, soil drenches, soil drips, and others (e.g., Pg. 22, Lines 27-30).
MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Thus, both ferulated chitosan concentration and pH instantly claimed values are anticipated.
MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). The prior art would expect one skilled in the art to reasonably draw from throughout Pino’s reference to apply the method comprising ferulated chitosan composition for the claimed various intended use.
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 1-7, 13-15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Cabrera Pino et al. (Hereafter “Pino”, WO2017046237, 03/23/2017, IDS of 06/16/2023), as applied to claims 1-6, 13-15 and 18 above, in view of Aljawish et al. (Food Chemistry 161, 2014, Pg. 279-287, IDS of 06/16/2023; Scheme 1 supplementary uploaded, PTO-892).
Pino throughout the reference teaches a method for regulating plant growth, e.g., enhancing tolerance to stress, comprising applying a composition to target plant and/or soil in contact with target plant, wherein the composition comprises ferulated chitosan as discussed above and applied to claims 1-6, 13-15 and 18 in greater detail and incorporated herein.
Regarding instant claim 7, Pino further teaches that oligomers of ferulic acid is prepared using chitosan as polymerization template using laccase as catalyst, and the reaction is carried out in pH 7.0 phosphate buffer with ferulic acid (in methanol), enzyme laccase, and chitosan, reaction mix at 30 C for 4 h in a magnetic stirring reactor, recovering the oligomers grafted on chitosan by filtration and washing with abundant phosphate buffer (Pg. 34, Lines 14-21), the same general method as seen in instant specification (Pg. 16, Lines 13-21), with slight differences in ferulic acid and laccase concentrations. Therefore, Pino’s teaching would have resulted in the same ferulated chitosan product as instantly claimed with varied grafting efficiency due to the template concentration difference.
Pino does not explicitly teach the ferulated chitosan constitutes a linear polysaccharide composed of randomly distributed beta-(1-4) linked D-glucosamine and N-acetyl-D-glucosamine moieties as chitosan backbone, and ferulic acid is randomly grafted onto the backbone as monomer, dimer, and/or trimer, as interpreted above of instant claim 7.
Aljawish throughout the reference teaches characterization for physico-chemical, antioxidant, and antibacterial properties of chitosan functionalized by laccase-catalyzed oxidation of ferulic acid (e.g., Abstract).
Aljawish describes the same method of enzymatic grafting of ferulic acid onto chitosan by using laccase as catalyst (Pg. 280, Chapter 2.2), with differences in template concentrations seen in instant invention (Specification, Pg. 16, Lines 13-21). Aljawish shows in supplementary material Scheme 1 (uploaded, PTO-892), chitosan is a linear polysaccharide composed of beta-(1-4) linked D-glucosamine and N-acetyl-D-glucosamine moieties, and three ferulic acid molecules (trimer) are grafted onto chitosan backbone. Aljawish evaluates grafting efficiency, indicating 1 mg ferulated chitosan contains almost 25 ug of ferulic acid oxidation products (Pg. 282, Chapter 3.2). To one person with ordinary skills in the art, it is obvious that ferulic acid molecules are randomly grafted on the chitosan backbone as monomer, dimer and trimers during the reaction with no targeting control, as a result, the ferulic acid-grafted moiety and other original chitosan backbone moieties would be randomly distributed, even though Scheme 1 in Aljawish shows ferulic acid being grafted on as a trimer. "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
It would have been prima facie obvious for a person with ordinary skills in the art to incorporate Aljawish’s teaching of the compound structure of chitosan and ferulic acid grafting forms into the method of Pino to arrive at current invention. Because both Pino and Aljawish teach the same method using laccase as catalyst for grafting ferulic acid onto chitosan backbone, while Aljawish teaches the chitosan and ferulic acid with details of the structures, it would motivate scientists to conveniently select these specific templates to carry out the method. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Moreover, Aljawish demonstrates that chitosan and ferulated chitosan both exhibit favorable antibacterial properties (Pg. 286, Chapter 4), which are desirable properties for plant growth combating bacterial diseases. It would have motivated scientists in the field to combine teachings of Aljawish and Pino, taking advantage of antibacterial property along with enhancement in stress tolerance of the composition comprising ferulated chitosan. By implementing the method of Pino to apply the composition with additional desirable property to targeted plants and/or soil in contact with the targeted plant, one would have reasonable expectation of success. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
Claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Cabrera Pino et al. (Hereafter “Pino”, WO2017046237, 03/23/2017, IDS of 06/16/2023), as applied to claims 1-6, 13-15 and 18 above, in view of Flores et al. (WO2018009549, 11/01/2018, PTO-892).
Pino throughout the reference teaches a method for regulating plant growth, e.g., enhancing tolerance to stress, comprising applying a composition to target plant and/or soil in contact with target plant, wherein the composition comprises ferulated chitosan as discussed and applied to claims 1-6, 13-15 and 18 above in greater detail and incorporated herein.
Pino further teaches that the composition can further comprise diluting agents, surfactants, and can be prepared in the form of emulsion (Pg. 22, Lines 20-22) including diluent of water-insoluble solvent oil (Pg. 17, Lines 15-18).
Pino does not teach the composition can be an oil-in-water emulsion having an oil to water ratio between 1:20 to 20:20 as recited in instant claim 8, having the water-insoluble solvent at a concentration of between 5.00 and 50.00 wt.% of the total composition as recited in instant claim 9, having a rheological modifier at a concentration of between 0.10 and 30.00 wt.% in the composition as recited in instant claim 10, having a hydrophilic and/or a lipophilic surfactant at a concentration of between 0.01 and 10.00 wt.% of the composition as recited in instant claim 11, and also does not teach that the water-insoluble solvent is a vegetable oil or vegetable oil ester, chosen from linseed oil, rapeseed oil, soybean oil, palm oil, coconut oil, canola oil, sunflower oil, or combinations thereof as recited in instant claim 12.
Flores throughout the reference teaches nontoxic concentrates for agricultural uses (e.g., Abstract; [0031]) comprising a concentrated liquid suspension which can be in an aqueous formulation with an agricultural treatment agent, and methods of treating an agricultural target by applying the agricultural formulation onto the agricultural target (e.g., Abstract), as nontoxic alternatives to protect agricultural materials from insects, fungi, animals, drought conditions, etc. (e.g., [0004]; [0055]) by applying the composition to any targets including plant leaves, fruits, soils of many listed crops (e.g., [0050]) via spraying, brushing, irrigating or broadcasting, etc. (e.g., [0011]; [0028]; [0054]).
Flores states that the concentrated liquid suspension comprising an oil-based continuous phase (oil phase, wherein oil is the water-insoluble solvent) and suspended particles (e.g., [0018]) such as chitosan (e.g., Claim 26; [0008]; [0015]). Flores teaches that the concentrated oil suspension can be diluted with water to form a diluted liquid suspension in the form of an oil-in-water emulsion (e.g., [0028]). Flores specifies that for application to agricultural targets, e.g., for spraying onto plant surfaces, the diluted liquid suspension can contain from about 60% to about 99% water (e.g., [0054]), indicating oil phase can be about 1% to about 40%, resulting in the oil to water ratio of between 1 : 99 to 30 : 60, corresponding to oil-in-water emulsion with overlapping oil to water range in instant claim 8.
Flores teaches that the concentrated liquid suspension containing suspended particles and the continuous oil phase, wherein the oil phase can be about 40% to about 99% weight (e.g., [0008], line 16) comprising plant oil such as linseed oil, castor oil, poppy seed oil, grapeseed oil, sunflower oil, etc. (e.g., [0008]; [0012]), fatty acid or fatty esters (e.g., [0012]), corresponding to water-insoluble solvent oil species in instant claim 12). As discussed above, the concentrated suspension can be diluted into water to form a diluted suspension containing from about 60% to about 99% water (e.g., [0054]), thus, oil phase results in minimum amount at about 40%*(1- 99%) to maximum at about 99% * (1-60%), resulting in the range about 0.40% to about 39.60% oil in the diluted oil-in-water emulsion form, corresponding to water-insoluble solvent with overlapping range between 5.00 and 50.00 wt.% based on total weight of the composition as recited in instant claim 9.
Flores teaches that stabilizing additives can be employed to increase the viscosity of the continuous phase, or to decrease viscosity with increasing shear rate for desirable viscosity (e.g., [0022]), with stabilizing additive added in amounts ranging from 0.1 wt% to 30 wt% of the agricultural formulation (e.g., [0021]). Suitable additives for manifesting these properties include castor oil derivatives such as related rheology modifiers (THIXCIN® and THIXATROL® (Elementis Specialties)), or RHEOCIN® or RHEOCIN T® (BYK Additives and Instruments) which can be added from 0.01 to 1 wt% (e.g., [0024]), and modified urea, glycol ethers, and others, at a concentration amount from 0.1 to 4 wt%, or from 3 to 5 wt% [0025]. These viscosity adjusting additives and rheology modifiers correspond to rheological modifier with overlapping range of between 0.10 and 30.00 wt.% as recited in instant claim 10.
Flores teaches the agricultural formulation comprises surfactants to improve dispersibility of the particulate minerals in the oil phase and to improve the wetting of the diluted formulation on an agricultural target (e.g., [0019]). Flores also teaches that surfactants derivatized from fatty acids (lipophilic type) such as fatty acid polydiethanolamide species, are suitable to be added as stabilizing additives at a dose ranging from 1 to 5 wt% in the composition (e.g., [0025]), corresponding to the surfactant, e.g., lipophilic surfactant, with overlapping range at a concentration between 0.01 and 10.00 wt.% of the composition as recited in instant claim 11.
It would have been obvious for one person with ordinary skills in the art to incorporate the teaching of Flores and select the agents into the composition of ferulated chitosan comprised in the method of treating plant taught by Pino to arrive at current invention. Because Pino and Flores both use agricultural compositions to treat targeted plants or oil in contact with plant to achieve plant growth enhancements, while Flores teaches the essentially nontoxic ingredients in the agricultural composition, it would have motivated scientists in the field to select such ingredients for the advantage of general safety over vegetables and fruits, or crops. Moreover, Flores also uses chitosan in the composition (e.g., Claim 26), plant growth regulator, or biopesticide (e.g., Claim 27) in the agricultural composition, which suggests incorporating these nontoxic agents taught by Flores into the ferulated chitosan composition and method taught by Pino are naturally compatible. Therefore, selecting and incorporating these nontoxic agents into Pino’s composition and method would have provided reasonable expectation of success for the beneficial effects and compatibility. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, all the concentration ranges of ingredients overlap with those taught by prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
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 1-15 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 3, 5-12, and 18-19 of copending Application No. 18267983 (hereafter App’983), in view of Cabrera Pino et al. (Hereafter “Pino”, WO2017046237, 03/23/2017, IDS of 06/16/2023).
App’983 recites a method comprising providing a composition comprising a ferulated chitosan, and applying said composition to a target plant, to soil in contact with said target plant (Claim 1), which increases harvest yield (Claim 3), corresponding to instant claims 1-2 and 15. As presented in claim interpretation, “for regulation and/or stimulation of plant growth” does not provide structural limitation of the claim scope, rather it is considered as property of the composition or intended use of the method. Thus, the composition in App’983 recites the method comprising the same component of ferulated chitosan, which would achieve the properties as instantly claimed as in claims 3-5.
App’983 recites composition concentration between 0.01 to 100,000 ppm (Claim 5), corresponding to instant claim 6; oil to water ratio in the composition as between 1:20 to 20:20 (Claim 6), corresponding to instant claim 8; water-insoluble solvent concentration between 5.00 and 50.00 wt.% (Claim 7), corresponding to instant claim 9; rheological modifier amount between 0.10 and 30 wt.% (Claim 8), corresponding to instant claim 10; surfactant 0.01 to 10% (Claim 9), corresponding to instant claim 11; water-insoluble species (Claim 10), corresponding to instant claim 12; pH 4.0-7.0 (Claim 11), corresponding to instant claim 13; ferulated chitosan comprises an oligomeric and/or polymeric compound following formula (Claim 18), corresponding to instant claim 7; pH is between 5.0 and 6.5 (Claim 19), corresponding to instant claim 18.
App’983 does not recite the method applying the composition to the targeted plant comprises foliar application through spraying of the composition of the targeted plant as recited in instant claim 14, and/or drenching of the composition on the soil in contact with said targeted plant as recited in instant claim 15.
As discussed above in detail and incorporated herein, Pino teaches the method applying the ferulated chitosan composition to targeted plants or soil via spraying, dripping, or drenching.
It would be obvious for a person with ordinary skills in the art to combine Pino and App’983 to arrive at current invention. Because both recite ferulated chitosan composition for treating plants, while Pino provides the application method with practical details of treatment, it would have motivated artisans in the field to implement such forms of treatment conveniently. This renders obviousness as combining prior art elements according to known methods to yield predictable results, see In Supreme Court KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, most concentration ranges recited in App’983 are identical to those in instant claims. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616