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 Interpretation
Applicants do not specifically define vegetable. However, they exemplify that the vegetable is preferably a tomato. Thus, the examiner has interpreted vegetables to include tomatoes even though tomatoes are technically a fruit.
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 1-4, 6-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because these claims are directed to a use of 2-amino-3-methylhexanoic acid. However, use is not one of the statutory categories of invention in US practice. For the purposes of compact prosecution the examiner is interpreting the use claims as composition claims because they contain no active steps.
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 1-7 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.
Claims 1-4, 6-7 are indefinite because they provide for the use of 2-amino-3-methylhexanoic acid but do not set forth any steps so it is unclear if these use claims are meant to be directed to a method/process or if applicants were/are actually trying to claim a composition comprising 2-amino-3-methylhexanoic acid or 2-amino-3-methylhexanoic acid as a compound? A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced because this is makes it unclear if the Use claims are meant to be method claims or if they are meant to be composition/compound claims.
Claims 2 and 5 are also indefinite because they recite “high temperature” and “low temperature” and “high” and “low” are both terms of degree which make the claim indefinite. The terms “high” and “low” are not defined by the claim, the specification 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. Thus, the metes and bounds of what is considered a “high temperature” and a “low temperature” are not clearly defined and as such the examiner is not clear as to where the line is drawn from a normal or average temperature to a high or a low temperature.
For compact prosecution purposes the examiner is interpreting applicant’s use claims 1-4, and 6-7 as being composition claims comprising the claimed 2-amino-3-methylhexanoic acid for improving plant resistance to the specifically claimed abiotic and biotic stresses in the claimed plant types.
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) 1-7 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 1-3, and 5-6, ‘412 teaches plant stress relieving compositions, which read on improving resistance of plants to stress, comprising isoleucine which is homologous to the claimed 2-amino-3-methyl hexanoic acid (see entire document; [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, and wherein the plants which have their stress resistance/tolerance increased include the claimed vegetables and fruits, etc. (see entire document; [0016]; [0013-0014]; [0018-0020]; Claims).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 4 and 7, ‘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 and method 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).
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 1-7 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). Although the claims at issue are not identical, they are not patentably distinct from each other because both ‘785 and the instant application merely require compositions comprising 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 for improving stress resistance specifically the claimed types of abiotic and biotic stress. However, as ‘785 claims the same compositions applied to the same plants it is inherent and/or obvious that ‘785 would also be accomplishing the claimed method and anticipates the claimed composition at this time.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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.
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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.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616