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 .
Claims 32-51 are pending in the application.
Election/Restrictions
Applicant's election with traverse of
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in the reply filed on
June 8, 2026 is acknowledged. The traversal is on the ground(s) that there will be no
additional burden to search all species. This is not found persuasive because the
examiner maintains that the common structure is not a significant structural element
because it represents only a small portion of the compound structures and does not
constitute a structurally distinctive portion in view of constituents R1, R2, RA, and Z-A.
Further, the compounds of these groups do not belong to a recognized class of
chemical compounds. There are multiple alternatives for substituents R1, R2, RA, and
Z-A. For example, R1 can be H or C1-C4 alkoxy. The Z-A substituent can be
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or
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. The compounds wherein R1 is
hydrogen are structurally different from those compounds wherein in R1 is C1-C4 alkoxy. Likewise, compounds wherein Z-A is
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are structurally different from compounds wherein Z-A is
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. Based on the structural differences, the compounds wherein R1 is hydrogen would have different properties, modes of action and activity than those compounds wherein R1 is C1-C4 alkoxy. Likewise, based on the structural differences, the compounds wherein Z-A is
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would have different properties, modes of action and activity than those compounds wherein Z-A is
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. This is illustrated by the structures in the specification and in claims 44 and 45. For example, compound (Ia)
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(claims 44 and 45);
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(claims 44 and 45);
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(claims 44 and 45); and
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(claim 44). As such, there is a search and/or examination burden for the patentably distinct species as they would require a different field of search (including searching different classes/subclasses or electronic resources, or employing different search queries) and the prior art applicable to one species would not likely be applicable to another species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 42 and 43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 8, 2026.
Claims 32-51 are pending in the application. Claims 42 and 43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species. Claims 32-41 and 44-51 will presently be examined to the extent they read on the elected subject matter of record.
Priority
This application is a National Stage Entry of PCT/GB2021/053335 filed December 16, 2021, which claims benefit to United Kingdom Foreign Application No. 2020389.9 filed December 22, 2020.
Information Disclosure Statement
Receipt of Information Disclosure Statements filed September 28, 2023, May 1, 2024, May 9, 2025, and June 8, 2026 is acknowledged.
Claim Rejections - 35 USC § 101
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.
Claims 50 and 51 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claims recite a plant, seed, bulb or tuber comprising a compound or selection of compounds defined in claim 32 (claim 50) and optionally a fertilizer and a plant, seed, bulb, or tuber obtainable by the method of claim 32 (claim 51). This judicial exception is not integrated into a practical application because the plant, seed, bulb or tuber are natural products. Review of the claims and the specification do not indicate the plant, seed, bulb or tuber that is coated with the compound changes the composition of the plant, seed, bulb, or tuber to something more than a product of nature. The specification indicates that the compounds were tested for their effects on hypocotyl growth assay and root growth assay, it was found that all of the analogues showed a different degree of promotion of hypocotyl growth (Figure 10A) (page 46, lines 28-34). While it shows root and hypocotyl growth it does not indicate the plant, seed, bulb, or tubers are different from those found in nature. This leads to the conclusion that the plant, seed, bulb or tuber, as claimed come from nature.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because based on these teachings plants, seeds, bulbs and tubers exist in nature. In the absence of evidence that Applicants manipulated or modified the plants, seeds, bulbs, or tubers to produce non-natural plants, seeds, bulbs, or tubers and in view that plants, seeds, bulbs and tubers exist in nature, the claimed plants, seeds, bulbs, and tubers is not considered markedly different from naturally occurring plants, seeds, bulbs and tubers that exists in nature. Being found naturally would provide the same properties to the treated plant, seed, bulb or tuber which is routine and adds nothing more than a mere field of use. Therefore, the claimed invention is not considered to be patent eligible subject matter.
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 35 and 50 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.
Regarding claim 35, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is unclear if “2” is a part of the claimed invention.
Withdrawn claims 42 and 43 also use the phrase “such as” and are also indefinite.
Claim 49 recites the limitation "A composition comprising any one or a selection of compounds defined in claim 32 and a fertiliser" in lines 1 and 2. Claim 49 is indefinite because Claim 32 is directed to a method of promoting plant growth by contacting the compounds of formula (I) to a plant, seed, bulb or tuber. While claim 32 does recite compounds, it is unclear if Applicant is trying to claim the compounds of claim 32 only in the composition, which would lack antecedent basis because claim 32 is specifically directed to a method of using the compounds. Since claim 32 is specifically directed to a method of using the compounds this recitation is indefinite. Claim 50 recites the limitation "A plant, seed, bulb or tuber comprising a compound or selection of compounds defined in claim 32 and optionally a fertiliser" in lines 1 and 2. Claim 50 is indefinite because Claim 32 is directed to a method of promoting plant growth by contacting the compounds of formula (I) to a plant, seed, bulb or tuber. It is unclear if Applicant is trying to claim the compounds of claim 32 only, which would lack antecedent basis because claim 32 is specifically directed to a method of using the compounds. Since claim 32 is specifically directed to a method of using the compounds this recitation is indefinite. Applicant should clarify the claim.
Examiner’s Note
The Examiner searched Applicant’s elected species
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in the claimed method. However, since no prior art was found to reject the elected compound the search was expanded. The search was expanded to include compounds of formula (I), wherein Z-A is (IIIb)
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, particularly compound (Il)
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.
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.
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.
(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 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 44, and 45 are rejected under 35 U.S.C. 102(a)(1) and U.S.C. 102(a)(2) as being anticipated by Oshio et al. (US 4,113,463).
Oshio et al. disclose a method of regulating the elongation of plants so as to increase their resistance to lodging by applying a plant regulating effective amount of a plant growth regulator containing a benzenesulfonamide compound of the formula
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(Abstract; col. 1, lines 3-15).
Oshio et al. disclose a method for effectively regulating the growth of cultivated plants both in stem-leaf treatment and in soil treatment without any phytotoxicity (col. 2, lines 46-50).
Regarding 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 44, and 45, Oshio et al. disclose compound 15, wherein Xn is 4-CH3; n is 1, R1 is H, and R2 is -CH2CH2NH2, which is
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, and currently claimed compound (Il), as claimed in claims 44 and 45 of the instant invention (cols. 7 and 8, Table 1, compound (15)).
Regarding claims 32, 50, and 51, in Example 16, two weeks after planting, the plants were pinched, and, 2 weeks after pinching when new buds had elongated, each of the present compounds at such concentrations as shown in Table 2 was applied to the plants. On the 42nd day after the chemical treatment, the plants were observed to investigate the plant growth-regulating effects of the present compounds. The results obtained were as set forth in Table 2 (col. 15, line 66-68-col. 16, lines 1-10). Compound 15, as delineated herein above was one of the compounds tested (col. 16, Table 2).
The plant that is treated with compound 15 is a plant comprising a compound as defined in claim 32, as claimed in claim 50 and obtainable by the method of claim 32, as claimed in claim 51.
Oshio et al. disclose the compounds not only have actions of controlling the elongation of rice and wheat plants, but also have such effects as to promote the increase the number of tillers and ears of the plants to increase the yields of rice and wheat crops (col. 8, lines 15-19).
Oshio et al. disclose the aqueous preparation is obtained by dissolving the present compound as active ingredient in water (col. 15, lines 33-34).
Oshio et al. disclose the emulsifiable concentrate is obtained by adding the present compound as active ingredient to an organic solvent (col. 15, lines 42-50).
Oshio et al. disclose the plant growth regulators of the present invention may not only be used in combination with vehicles and other surfactants used in agriculture to expect the enhancement and accuracy of the effects thereof, but may also be used in admixture with fertilizers (col. 15, lines 51-57).
Oshio et al. meet all the limitations of the claims and thereby anticipate the claims.
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.
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 32-41, 44, 45, 46, and 49-51 are rejected under 35 U.S.C. 103 as being unpatentable over Oshio et al. (US 4,113,463).
Applicant’s Invention
Applicant claims a method of promoting plant growth comprising contacting a plant, seed, bulb or tuber with a compound or selection of compounds of formula (I) and optionally a fertilizer, wherein the compound of formula (I) is:
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.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Oshio et al. with respect to the 35 U.S.C. 103 rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Oshio et al. do not specifically disclose the compound or selection of compounds is at the concentration of about 20 to 200 µM, as claimed in claim 46, examples wherein the composition comprises a fertilizer, as claimed in claim 49 or a plant, seed, bulb or tuber, as claimed in claim 50 or a plant, seed, bulb or tuber obtainable by the method of claim 32, as claimed in claim 51.
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Oshio et al. and use experimentation and optimization to determine the concentration of the compound, as claimed in claim 46. Oshio et al. teach the amount of the benzenesulfonamide derivative used varies depending on the manner of application. Oshio et al. teach that the benzenesulfonamide is used at a concentration in the range of from 0.5 to 500 p.p.m., which is equivalent to 0.5 to 500 µM, preferably from 10 to 100 p.p.m. per part of soil, which is equivalent to 10 to 100 µM . Based on this teaching one of ordinary skill in the art would have been motivated to use the teaching of Oshio et al. to determine the concentration to use in the methods of applying the compounds. In addition, it would have been obvious to use optimization to determine the concentration. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed), 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.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Oshio et al. and use a fertilizer in the compositions, as claimed in claim 49. Oshio et al. disclose a method of regulating the elongation of plants so as to increase their resistance to lodging by applying a plant regulating effective amount of a plant growth regulator containing a benzenesulfonamide compound of the formula
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(Abstract; col. 1, lines 3-15). Oshio et al. teach the treatment of plants with compound 15, which is currently claimed compound (Il). Oshio et al. teach the plant growth may also be used in admixture with fertilizers. Examples 17 and 18 use fertilizers with other benzenesulfonamide compounds. Based on this teaching, it would have been obvious to one of ordinary skill in the art to add fertilizers to the compositions used in the methods, with a reasonable expectation of success,
because they influence the growth of plants.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Oshio et al. and obtain a plant comprising the compounds of formula (I), as claimed in claims 50 and 51. Oshio et al. teach in Example 16, two weeks after planting, the plants were pinched, and, 2 weeks after pinching when new buds had elongated, each of the present compounds at such concentrations as shown in Table 2 was applied to the plants. The treated plants were then observed. Based on this teaching it would have been obvious to one of ordinary skill in the art that the treating of the plants will produce a plant that comprises the benzenesulfonamide compounds, without evidence to the contrary.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claims 32-41 and 46-51 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. (US 2008/0200461).
Applicant’s Invention
Applicant claims a method of promoting plant growth comprising contacting a plant, seed, bulb or tuber with a compound or selection of compounds of formula (I) and optionally a fertilizer, wherein the compound of formula (I) is:
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.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Regarding claims 32, 33, 35, 36, 37, 38, 39, 40, 41, Anderson et al. teach compounds of formula I:
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with methods of use for the control of agricultural pests (Abstract). Anderson et al. teach compound 309,
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, which is equivalent to Z-A is IVb, R is H, R1 is H, RA is H, R2 is C1-C4alkyl, and X is NHCH2CH3, of the currently claimed compounds, which falls within the scope of the claimed compounds.
Anderson et al. teach the active compounds are used for protecting plants against diseases that are caused by fungi. The active compounds can be used in the agricultural sector and related fields as active ingredients for controlling plant pests (page 88, paragraph 79).
Anderson et al. teach the active compounds may be used as dressing agents for the treatment of plant propagation material, in particular of seeds (fruit, tubers, grains) for the protection against fungal infections as well as against phytopathogenic fungi occurring in the soil (page 88, paragraph 80).
Anderson et al. teach the active compounds can be used in the form of compositions and can be applied to the crop area or plant to be treated, simultaneously or in succession with further compounds (page 88, paragraph 83).
Anderson et al. teach these further compounds can be e.g. fertilizers or micronutrient donors or other preparations which influence the growth of plants (page 88, paragraph 84).
Anderson et al. teach the active compounds may also be applied to seeds (coating) by impregnating the seeds or tubers either with a liquid formulation of the fungicide or coating them with a solid formulation (page 89, paragraph 89).
Anderson et al. teach the term locus is intended to embrace the fields on which the treated crop plants are growing, or where the seeds of cultivated plants are sown, or the place where the seed will be placed into the soil. The term seed is intended to embrace plant propagating material such as cuttings, seedlings, seeds, and germinated or soaked seeds (page 89, paragraph 90).
Anderson et al. teach the enzyme concentration is 50 nM and 25 nM (page 95, Tables II and III).
Regarding claim 47, Anderson et al. teach the compositions containing the compound of formula I are prepared in known manner, typically by intimately mixing the compound with solvents (page 89, paragraph 94).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Anderson et al. do not specifically disclose the concentration of 20 to 200 µM, as claimed in claim 46, the method comprises drying the seed, as claimed in claim 48, examples wherein the composition comprises a fertilizer, as claimed in claim 49, a plant, seed, bulb or tuber comprising a compound or selection of compounds defined in claim 32, as claimed in claim 50, or a plant, seed, bulb or tuber obtainable by the method of claim 32, as claimed in claim 51.
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Anderson et al. and use experimentation and optimization to determine the concentration of the compounds of formula (I). Anderson et al. teach for the inhibition of fungal enzyme activity the concentration is 50 nM and 25 nM. Anderson et al. also teach other application rates. It would have been obvious to one of ordinary skill in the art to use experimentation to determine how much of the compound of formula (I) to use to control pests and enhance the growth of plants. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) 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.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Anderson et al. and dry the seed. Anderson et al. teach the compositions containing the compound of formula I are prepared in known manner, typically by intimately mixing the compound with solvents. Anderson et al. further teach the active compounds may also be applied to seeds (coating) by impregnating the seeds or tubers either with a liquid formulation of the fungicide or coating them with a solid formulation. One of ordinary skill in the art would have found it obvious to use a known technique for seed dressing to coat the seeds. Anderson et al. teach that methods of application include spraying, atomizing, dusting, coating or pouring, for the intended objectives and the prevailing circumstances. It is known in the agricultural art to dry seeds after application of active compounds. As such, the skilled artisan would have been motivated to dry the seeds, as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Anderson et al. and use a fertilizer in the compositions. Anderson et al. teach compounds of formula I:
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with methods of use for the control of agricultural pests. Anderson et al. teach the compounds are applied to seeds, tubers, plants, and bulbs. Anderson et al. teach the active compounds can be used in the form of compositions and can be applied to the crop area or plant to be treated, simultaneously or in succession with further compounds. Fertilizers are further compounds that Anderson et al. teach are added to the compositions. Anderson et al. also teach fertilizers are used as carriers, binders and tackifiers. Therefore, it would have been obvious to one of ordinary skill in the art to add fertilizers since Anderson et al. specifically teach the use of fertilizers, with a reasonable expectation of success, because they influence the growth of plants.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Anderson et al. and obtain a plant, seed, bulb, or tuber comprising the compounds of formula (I). Anderson et al. teach the compositions containing the compound of formula I are prepared in known manners, typically by intimately mixing the compound with solvents. Anderson et al. further teach the active compounds may also be applied to seeds (coating) by impregnating the seeds or tubers either with a liquid formulation of the fungicide or coating them with a solid formulation. Based on this teaching it would have been obvious to one of ordinary skill in the art that the coating of seeds and tubers will produce a seed, bulb or tuber comprising the compounds of formula (I), without evidence to the contrary.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRIAE M HOLT/ Examiner, Art Unit 1614
/ALI SOROUSH/ Supervisory Patent Examiner, Art Unit 1614
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