DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1, 5, 9-11, 13 and 17-29 are pending.
Withdrawn Rejections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Attention is directed to In re Wands, 8 USPQ2d 1400 (CAFC 1988) at 1404 where the court set forth the eight factors to consider when assessing if a disclosure would have required undue experimentation. Citing Ex parte Forman, 230 USPQ 546 (BdApls 1986) at 547 the court recited eight factors:
1) the nature of the invention
2) the state of the prior art
3) the relative skill of those in the art
4) the predictability of the art
5) the breadth of the claims
6) the amount of direction or guidance provided
7) the presence or absence of working examples
8) the quantity of experimentation necessary
The instant specification fails to provide guidance that would allow the skilled artisan to practice the instant invention without resorting to undue experimentation, as discussed in the subsections set forth herein below.
The nature of the invention
The claimed invention relates to a method for preventing or alleviating disease or infection in plants by improving distribution and efficacy of applied silicon.
The state of the prior art
The prior art teaches formulations comprising an aryl substituted urea and a water-soluble calcium salt, and may further comprise silicon as a micronutrient.
The relative skill of those in the art
A person of ordinary skill in the art would have experience with agricultural compositions and formulations, including fertilizers.
The predictability of the art
A person of ordinary skill in the art would not be able to predict whether a composition would be effective for preventing or alleviating any and all diseases or infections in plants.
The breadth of the claims
The claim is broadly drawn to preventing or alleviating any and all diseases or infections in plants.
The amount of direction or guidance provided
The instant specification does not provide any guidance with respect to the types of diseases or infections, or the types of plants that can be treated with the inventive compositions. The specification states that silicon crystal layers, opals, confer physical strength protecting against pest and disease attack, but do not teach the types of disease and infection that can be prevented or alleviated with the inventive compositions.
The presence or absence of working examples
The specification does not provide any examples of preventing or alleviating disease or infection in plants with the claimed invention.
The quantity of experimentation necessary
It would require undue experimentation for a person of ordinary skill in the art to determine the efficacy of the agricultural compositions according to the instant invention for preventing or alleviating disease or infection in plants. A person of ordinary skill in the art would have to determine which diseases and infections can be prevented, which can be alleviated, and in which plants the compositions are effective for the claimed method.
Therefore, for the aforementioned reasons, the instant specification does not describe the claimed invention in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Response to Arguments
Applicant's arguments filed 2 February 2026 have been fully considered but they are not persuasive. Applicant asserts that the instant specification discloses how elevated silicon levels are known to influence disease susceptibility in plants. See [0040]; see also [0005] ("Silicon is known to form crystal layers called 'opals' made of amorphous silica in the cuticle. Opals confer physical strength protecting against pest and disease attack and preventing water loss.") The specification also describes how poor root to shoot transport via xylem reduces deposition and show evidence that the claimed invention improves this. See, e.g., [0121]-[0133]. One of ordinary skill in the art could readily achieve these effects by applying the composition recited in claim 1 to the plants or an environment thereof. This is especially true as specific examples and formulations are given that provide the desired effects. It is therefore clear from reading Applicant's specification that improving silica deposition in foliage will achieve better disease resistance.
The examiner respectfully argues that the instant claim is drawn to “preventing or alleviating disease or infection in plants”, which broadly includes prevention of all diseases and infections in plants. Applicant asserts that elevated silicon levels are known to influence disease susceptibility in plants, and opals confer physical strength protecting against pest and disease attack and preventing water loss. This argument is not commensurate with preventing and alleviating all diseases or infections in plants. At best Applicant has argued that the instant invention is capable of influencing (reducing) disease susceptibility in plants, or protecting against pest and disease attack, but that is not the same as preventing or alleviating all diseases and infections in plants. It is noted that claim 19 already claims a method for reducing physical damage of plants by pests.
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.
Claim 29 is 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 29 recites the step of “utilizing” a diphenyl urea compound in an effective amount to act as a silicon transport stimulant. It is unclear how the diphenyl urea is utilized since the claim does not recite an active step, such as applying, administering, combining, mixing, adding, treating, etc.
Response to Arguments
Applicant's arguments filed 2 February 2026 have been fully considered but they are not persuasive. Applicant asserts that the instant specification provides a more than adequate demonstration of utility as a fertilizer.
The examiner respectfully argues that it is unclear how the diphenyl urea is being utilized since the claim does not state an active step.
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, 9-11 and 17-29 are rejected under 35 U.S.C. 103 as being unpatentable over Marks (WO 2006/134361 A2) in view of Marafon et al. (Revista de Ciencias Agrarias / Amazonian Journal of Agricultural and Environmental Sciences, 2013).
Regarding claim 1, Marks teaches agricultural compositions comprising (i) a water-soluble salt of calcium and (ii) an auxin mimic that is an aryl substituted urea (Abstract; pg. 3, ln. 15-17; Claim 1). The aryl substituted urea includes CPPU, DPU, NDPU, mono- or di- methyl DPU and mono- or di- ethyl DPU (pg. 4, ln. 28 to pg. 5, ln. 1; Claims 8-9). Marks teaches that the agricultural composition further comprises additional nutrient material, wherein the nutrient materials are preferably in the form of a water-soluble salt, suitably a water-soluble salt of a micronutrient, such as silicon (pg. 6, ln. 17-19 and 25-31).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to prepare agricultural compositions according to Marks comprising an aryl substituted urea and a water-soluble silicon. Such would have been obvious because Marks teaches that the agricultural compositions may further comprise a water-soluble silicon as a micronutrient. Marks further teaches that plants need a range of nutrients for healthy growth, including micronutrients such as silicon (pg. 1, ln. 7-12).
Regarding claim 1, Marks teaches a water-soluble micronutrient, such as silicon, but does not explicitly disclose potassium silicate and/or sodium silicate.
Marafon et al. teach that Si benefits to plants are related mainly with increasing their resistance to attacks by insect pests, nematodes and diseases, and with reducing their transpiration rate, which provides further tolerance to water stress during periods of low soil moisture (Abstract). Fertilizers containing Si minerals can be categorized as simple (Table 1), mixed, complex, organomineral or acidity-neutralizing mineral fertilizers. Among the materials used as a source of Si by plants are slag, wollastonite, byproducts of elemental phosphorous production, calcium, sodium, potassium and magnesium silicates (serpentinite), cement and fused phosphate (pg. 384, col. 2).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare agricultural compositions according to Marks wherein the water-soluble silicon micronutrient is selected from sodium silicate and potassium silicate. Such would have been obvious because Marks teaches the water-soluble micronutrients to include silicon, and Marafon et al. teach sodium silicate and potassium silicate as among the sources of Si used by plants. Also, it would have been obvious to include a silicon fertilizer with the agricultural compositions according to Marks et al. in order to increase their resistance to attacks by insect pests, nematodes and diseases, and reduce their transpiration rate, which provides further tolerance to water stress during periods of low soil moisture, as reasonably taught by Marafon et al.
Regarding claim 9, Marks teaches that the aryl substituted urea includes CPPU, DPU, NDPU, mono- or di- methyl DPU and mono- or di- ethyl DPU; and provides examples comprising DPU (pg. 4, ln. 28 to pg. 5, ln. 1; Examples 1-6; Claims 8-9).
Regarding claims 10-11, Marks teaches that the auxin mimic may be present in the composition according to the invention at a concentration in the range of 20 to 2000 ppm, and preferably in the range 30 to 300 ppm, most preferably in the range of 20 to 200 ppm, e.g. 50 to 100 ppm; and teaches examples comprising 50, 100, 250 or 2000 ppm DPU (pg. 5, ln. 12-15; Examples 1-6; Claims 10-11).
Regarding claims 17-24 and 26, Marks teaches methods comprising applying the agricultural compositions to plants or to the environment thereof (Claims 17-23). Application of the compositions according to Marks comprising the aryl substituted urea and a water-soluble silicon as a micronutrient would necessarily also perform the instantly claimed methods. Also, the silicon according to Marks is within the scope of a silicon fertilizer and the water-soluble source of silicon.
Regarding claim 25, Marks teaches applications at approximately two weekly intervals (pg. 27, ln. 18-19).
A person of ordinary skill in the art would have been able to determine through routine experimentation the optimum time between applications of the agricultural formulations, including at approximately two weekly intervals.
Regarding claim 27, Marks teaches mixing the components of the composition in order to prepare the agricultural compositions (Examples 1-6).
Regarding claims 28-29, Marks teaches using their agricultural compositions as a fertilizer for administration to crops. Also, Marks teaches combining the aryl substituted urea with a micronutrient, such as silicon.
Therefore, the aryl substituted urea, such as DPU, would necessarily act as a silicon transplant stimulant when combined with the silicon micronutrient of Marks.
Response to Arguments
Applicant's arguments filed 2 February 2026 have been fully considered but they are not persuasive. Applicant asserts that one of ordinary skill in the art would readily understand that potassium silicate cannot be combined with soluble calcium due to the formation of a highly insoluble polymer.
The examiner respectfully argues that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. See MPEP 716.01(c)(II).
Applicant also argues that although Marks discloses DPU, CPPU, NDPU mono- or di- methyl DPU and mono- or di- ethyl DPU, they are only disclosed as being auxin mimics. Marks fails to disclose or suggest that these compounds can be used as silicon transport stimulants.
The examiner respectfully argues that Marks et al. teach agricultural compositions comprising aryl substituted urea, and the agricultural composition further comprises additional nutrient material, wherein the nutrient materials are preferably in the form of a water-soluble salt, suitably a water-soluble salt of a micronutrient, such as silicon.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Marks (WO 2006/134361 A2) as applied to claims 1, 9-11 and 17-29 above, further in view of Archer (US 2011/0143941 A1).
Regarding claim 5, Marks teaches agricultural compositions comprising a water-soluble salt of silicon as an additional nutrient material, but Marks does not explicitly disclose agricultural compositions comprising water-soluble salt of silicon present in the composition in an amount of 70 to 90% w/w, as instantly claimed.
Archer teaches silicon-containing glass powder particles suitable for use in providing plant available silicon to a plant growth medium or a plant, a method for producing these particles and a method of providing plant available silicon to a plant growth medium or a plant using the particles. The present invention also relates to a method of improving plant growth and a method of improving plant yield which include applying the particles of the invention to the plant or plant growth medium (Abstract; [0002]). Archer teaches that an acceptable material for use as a source of plant available silicon can be produced from glass, particularly soda lime glass. This can be achieved if the material is ground to a suitable particle size. Without wishing to be bound by theory it is felt that during glass manufacture the reaction of quartz with sodium carbonate leads to the formation of sodium silicate. When this is contacted with acidic aqueous solution (such as in the soil) hydrogen ions convert the sodium silicate to silicic acid which is water soluble. As such glass is thought to be able to provide a ready source of plant available silicon ([0014]). Archer teaches in some embodiments the silicon-containing glass powder particles have a silica content of at least 60 wt %. In some specific embodiments the particles have a silica content of at least 70 wt % ([0018], [0024]-[0025], [0036], [0042]).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare agricultural formulations according to Marks comprising silicon and an aryl substituted urea for application to plants, wherein the silicon is the silicon-containing glass powder particles according to Archer having a silica content of at least 70 wt.% Such would have been obvious because Archer teaches that the silicon-containing particles improve plant growth and yield.
Response to Arguments
Applicant's arguments are the same as above. Therefore, the examiner’s response above is repeated here.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Marks (WO 2006/134361 A2) as applied to claims 1, 9-11 and 17-29 above, further in view of Witte (Plant Science, 2011).
Regarding claim 13, Marks teaches that plants need a range of nutrients for healthy growth, including nitrogen. Marks does not explicitly disclose agricultural compositions further comprising urea.
However, Witte teaches that urea is the most widely used nitrogen fertilizer in agriculture on a global scale (pg. 432, col. 1).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare agricultural compositions according to Marks, wherein the compositions further comprise urea as a source of nitrogen. Such would have been obvious because Marks teaches that plants need nitrogen for healthy growth, and Witte teaches that urea is the most widely used nitrogen fertilizer in agriculture.
Response to Arguments
Applicant's arguments are the same as above. Therefore, the examiner’s response above is repeated here.
Conclusion
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue 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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/N.W.S/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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