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 .
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 15 and 17 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 15 contains the trademark/trade name TWEEN, e.g. TWEEN 20. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe polysorbate 20 and, accordingly, the identification/description is indefinite.
Claim 17 recites the limitation "the biotic stress" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 17 depends from claim 16 which is only directed to improving plant resistance to abiotic stress. Thus, it is completely unclear to the examiner where the biotic stress is coming from.
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.
Claim(s) 8-14, 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2019231412 (‘412), and further in view of US11058116 (‘116, which has priority to at least the filing date of 02/05/19 and the provisional application filed 02/06/18) as evidenced by McCormick (https://www.mccormick.it/us/all-cereal-production-data/#:~:text=Corn%20is%20by%20far%20the%20most%20widely,for%20nearly%2090%25%20of%20world%20cereal%20production.).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 8-9, 11, 13-14, and 16, ‘412 teaches plant stress relieving compositions, which read on the composition/active used in the newly claimed method of improving resistance of plants to stress, comprising isoleucine which is homologous to the claimed 2-amino-3-methyl hexanoic acid (see entire document; abstract; [0001]; [0016]; [0013-0014]; [0018-0020]; Claims). Isoleucine differs from the claimed 2-amino-3-methyl hexanoic acid by the addition of a CH2 group to alkyl chain which leads to the claimed 2-amino-3-methyl hexanoic acid. ‘412 teaches wherein the crops/plants have their stress tolerance, specifically abiotic stress tolerance/resistance, more specifically cold temperature tolerance/resistance is improved specifically for temperatures down to -9° C which would include the newly claimed range of no more than -4° C, and wherein the plants which have their stress resistance/tolerance increased include the claimed vegetables and fruits, etc. (see entire document; abstract; [0001]; [0016]; [0013-0014]; [0018-0020]; Claims). Regarding the newly claimed method steps, ‘412 teaches applying their homologous stress relieving composition comprising their homologous isoleucine in effective amounts to plants/plant parts to improve resistance of plants to various stresses (See entire document; [0001]; [0016-0019]; [0013-0014]; [0018-0020]; Claims; abstract;).
Regarding claims 13-14, 412 teaches plant stress relieving compositions which comprise isoleucine which is homologous to the claimed 2-amino-3-methyl hexanoic acid, and which further comprise the claimed surfactant/spreading agent/spreading adhesive (see entire document; [0001]; [0016-0019]; [0013-0014]; [0018-0020]; Claims; abstract).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claim 12, ‘412 does not teach wherein the plants include the specifically claimed wheat or tomatoes. However, this deficiency is addressed by ‘116.
‘116 teaches using compositions which can comprise isoleucine to induce resistance to abiotic and biotic stresses, specifically cold/low temperatures (see entire document; abstract; Col. 6, ln. 54-65; Claim 25), and wherein the composition comprising isoleucine is known to be effective on cereal seeds/crops which would read on/include the claimed wheat (the most common cereals are in order of production: corn, wheat, rice, barley, sorghum, oats, and rye as is evidenced by McCormick) (see what are the most widely growth cereals in the world section including all figures/graphs).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art to add and/or substitute the claimed 2-amino-3-methyl hexanoic acid in addition to or in place of the isoleucine in the stress resistance improving compositions of ‘412 to form the claimed compositions for use in the claimed method(s) for improving resistance of plants to abiotic stress, specifically low temperature/cold because the compounds are homologous to one another and it is known, “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have used the claimed frost inhibitor/low temperature stress resistance improving composition taught by the combined ‘412 and ‘116 on the claimed wheat and/or tomatoes as is instantly claimed because it was known to use compositions comprising isoleucine which is homologous to the claimed 2-amino-3-methyl hexanoic acid to increase resistance to abiotic stresses specifically the claimed cold/low temperature on cereals and vegetables and it would be obvious if it is being used on cereals to use it on corn and the claimed wheat because these are the two most commonly grown cereal crops as is evidenced by McCormick. Thus, it would be obvious to use the homologous 2-amino-3-methyl hexanoic acid in combination with the isoleucine containing plant stress resistance improving compositions or in place of isoleucine in the plant stress resistance improving compositions of the prior art because, “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Regarding claims 10 and 17, the combined references do not specifically teach wherein the biotic stresses are the exact diseases instantly claimed. However, the only active step required by the claimed method is applying an effective amount of 2-amino-3-methylhexanoic acid to the plant or plant portion thereof, and because the combination of the prior art as discussed above is performing the claimed active step with homologous compounds which are known to be useful for improving resistance of plants to stress then it would also obviously inducing plant immunity/improving resistance of the plant to the claimed biotic stresses specifically the claimed plant diseases when applied to wheat for instance in effective amounts which is/are taught by ‘412, especially since the only active step is the applying step and the claimed method does not require the presence of the specifically claimed biotic stresses. Thus, performing the claimed applying step on the claimed plant species will obviously be accomplishing the claimed improving resistance to the claimed diseases, etc. as instantly claimed.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the 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, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2019231412 (‘412), and further in view of US11058116 (‘116, which has priority to at least the filing date of 02/05/19 and the provisional application filed 02/06/18) as evidenced by McCormick (https://www.mccormick.it/us/all-cereal-production-data/#:~:text=Corn%20is%20by%20far%20the%20most%20widely,for%20nearly%2090%25%20of%20world%20cereal%20production.) as applied to claims 8-14, and 16-17 above and further in view of Ryu et al. (WO2016048061).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references teach the composition and methods of claims 8-14 and 16-17 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not teach wherein the surfactant is TWEEN 20 in a concentration of 0.02% v/v. This deficiency in the combined references is addressed by Ryu.
Ryu teaches adding/using 0.02% of Tween 20 to increase/promote leaf penetration of the agricultural active agents (See Examples).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have used the claimed amount/concentration of Tween 20 in the formulation used in the method of ‘412 and the combined references discussed above because Ryu clearly teaches that by using this concentration of the same Tween 20 leads to improved leaf penetration of agricultural/agrochemical active agents. Thus, it would be obvious to select this specific surfactant for use in claimed methods where penetration of the actives into the leaves to better allow the actives to improve resistance of the plants to stresses is desired.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the 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, as evidenced by the references, especially in the absence of evidence to the contrary.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 8-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, and 9 of copending Application No. 18686785 (reference application) in view of US11058116 (‘116, which has priority to at least the filing date of 02/05/19 and the provisional application filed 02/06/18), and Ryu et al. (WO2016048061). Although the claims at issue are not identical, they are not patentably distinct from each other because both ‘785 and the instant application require the same active step of applying effective amounts of the claimed 2-amino-3-methylhexanoic acid and wherein the plants to which the 2-amino-3-methylhexanoic acid include grains and vegetables which are the same crops that are instantly claimed. ‘785 does not teach wherein the composition is used in the claimed methods of improving stress resistance specifically the claimed types of abiotic and biotic stress or for stress against the claimed temperatures, and/or specific diseases in the specifically claimed crop types or wherein the composition comprises the claimed surfactant/Tween 20. ‘785 does not teach wherein the crops are the claimed wheat, tea, cotton, ryegrass or tomato. However, the fruits, vegetables and grains of ’785 are not particularly limited and it was known to apply compositions comprising homologous isoleucine to wheat for improving stress resistance of plants as is taught by ‘116 above.
‘116 teaches using compositions which can comprise isoleucine to induce resistance to abiotic and biotic stresses, specifically cold/low temperatures (see entire document; abstract; Col. 6, ln. 54-65; Claim 25), and wherein the composition comprising isoleucine is known to be effective on cereal seeds/crops which would read on/include the claimed wheat (the most common cereals are in order of production: corn, wheat, rice, barley, sorghum, oats, and rye as is evidenced by McCormick) (see what are the most widely growth cereals in the world section including all figures/graphs).
Ryu teaches adding/using 0.02% of Tween 20 to increase/promote leaf penetration of the agricultural active agents (See Examples).
It would have been obvious to formulate the instantly claimed method when looking to ‘785, ‘116 and Ryu because ‘785 teaches applying the claimed actives to the same types of crops in effective amounts and it would be obvious to use the claimed active of ‘785 to improve resistance of plants to abiotic and biotic stresses because ‘116 teaches that it was known to use the homologous isoleucine which only differs from the claimed compound by a CH2 group as is discussed above, and it would be obvious to add in the claimed surfactant, specifically the claimed amounts of Tween 20 because Ryu teaches that this surfactant in these amounts promotes leaf penetration of agricultural active agents. Further, application of the claimed compound as in ‘785 to the claimed grains, vegetables and/or fruits would obviously already be accomplishing the claimed method because the only required active step in the method is the applying step and because the instantly claimed method does not require the presence of the specifically claimed abiotic or biotic stresses for the method to be accomplished.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments/Remarks
Applicant’s new claims and canceling of previous claims has overcome the previous grounds of rejection under 101, 112, and 103 which are hereby withdrawn. Applicant’s new claims have prompted the new and/or revised grounds of rejection presented herein. Applicants arguments because they are directed to the new claims are addressed herein. Applicants first argue that ‘412 discloses a frost inhibitor but that both ‘412 and ‘116 do not disclose isoleucine as a separate standalone active ingredient for inducing plant stress resistance. The examiner respectfully points out that the instant claims use comprising language and as such ‘412, as well as ‘116, both do not have to be directed to a separate standalone use of isoleucine as an active for inducing plant stress resistance, to still render obvious the claimed method. That is to say, by using comprising as the transitional phrase of the instant claims nothing is excluded from the instant claims, e.g. blends of active agents, etc. contrary to applicant’s arguments about ‘412 not teaching the use of isoleucine as a single active agent. The examiner maintains that it would be obvious to use the claimed MIA in place of or with the compositions of ‘412 to develop the instantly claimed method because the isoleucine is homologous to claimed MIA as is discussed above and incorporated herein because as discussed above, “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Applicants then further argue that ‘116 mostly revolves around silicon organic compounds and does not teach MIA as a single active agent. This is not persuasive for the same reasons discussed above because as discussed above the claimed methods use the transitional phrase comprising which is open-ended and does not exclude other active agents from the claimed method. Applicants then argue that MIA was not previously known as a plant stress inhibitor because the prior art teaches that MIA is a metabolic inhibitor and antibacterial agent not a plant growth promoter and immunity inducer. This is not persuasive because firstly MIA is homologous to the isoleucine of ‘412 and ‘116 and the claimed method remains obvious for the same reasons discussed above. It would have been obvious to one of ordinary skill in the art to at the very least try homologous compounds to isoleucine, etc. as compounds to improve plant stress resistance because as discussed above, “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Thus, the examiner disagrees that other prior art teaching different/additional biological activity of MIA overcomes the arguments of homology/homologous compounds because it is known in the art that many compounds exhibit multiple types of biological activity and as such this argument is not persuasive at this time. Especially since applicant’s claims are not at all limited to the application of MIA to plants contrary to applicants arguments for the reasons which have been discussed above.
Applicants then argue that the claimed results are unexpected. Applicants argue that MIA is effective in unexpectedly low concentrations and also improves tea quality by increasing amino acid content even under normal temperatures which they argue would not be expected by one of ordinary skill in the art. The examiner respectfully points out that these argued unexpected results are not commensurate in scope with applicants claims which are not limited to the argued unexpectedly low concentrations. The instant claims only require any effective amount which is not limited to these “extraordinarily low concentrations” that are argued by applicants and it is not clear that these amounts are actually unexpected in any way, e.g. are these amounts markedly lower than the amounts of the homologous isoleucine which were effective in ‘412 for the same properties of improving plant stress resistance, etc.? Additionally, the claimed method does not actually require the presence of the stresses in order to achieve the claimed method it only requires applying effective amounts of MIA to plants/plant parts and as discussed above the use of the comprising transitional phrase does not limit the applying step to only applying MIA, contrary to applicants arguments about applying MIA alone.
Applicants then argue that the double patenting rejection is moot because the previous claims have been canceled. The examiner agrees the previous rejection is moot. However, applicant’s new claims have prompted the new grounds of double patenting which is presented herein which remains obvious for the reasons discussed above which are incorporated herein.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the 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, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIN E HIRT/Primary Examiner, Art Unit 1616
Prosecution Insights