DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed April 22, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Election/Restrictions
The claims originally presented and acted upon by the Office on their merits determine the invention elected by an applicant in the application, and in any request for continued examination (RCE) filed for the application. See MPEP 818.02 (a).
Newly submitted claim 25 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claims 1-17 and 22-24 are drawn to an agricultural composition
Claim 25 is drawn to a method of treating a plant
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-II lack unity of invention because even though the inventions of these groups require the technical features of a melatonin in an amount of 0.1 to 20 wt.% and at least one metal compound in the form of a metal ion or metal complex in a range of about 0.1 to 20 wt.%, wherein the melatonin and the metal in the composition is in a ratio ranging from 0.1:10 to 1:10 these technical features are not special technical features as they do not make a contribution over the prior art in view of Marks (US 2009/0038355 A1) and Bednarek et al. (US 2009/0028796 A1) (see pg. 4-5 below).
Groups I-II lack unity of invention, and do not make a contribution to the art, in view of Marks and Bednarek.
Since applicant has received an action on the merits for the originally presented invention, Group I (Claims 1-17 and 22-24) has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 25 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claims 5 and 6 are objected to because of the following informalities:
Claim 5 should read “in an amount ranging from…”.
Claim 6, should read “jasmonic acid or any combination thereof”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103 (Maintained)
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 1-3 are rejected under 35 U.S.C. 103 as being as being obvious over Marks (US 2009/0038355 A1) in view of Bednarek et al. (US 2009/0028796 A1).
Regarding claim 1, Marks discloses an agricultural composition for treating plants [0001] with a nutrient or micronutrient, such as Zn, added in salt (Zn2+) or complexed form [0008]-[0012]. Marks discloses the concentration of the nutrient or micronutrient is in the composition in a concentration range of 0.01-30% w/w [0010].
Marks does not disclose the composition includes melatonin in a range of about 0.1 to 20 wt.%.
Bednarek teaches an agrochemical composition for protecting plants against pests [abstract] [0001] [0006] with an indole derivative, such as melatonin [0116], as an active compound in an amount of 0.1 to 95 wt.% [0178]. Bednarek teaches that an indole derivative, such as melatonin, is useful as a pesticide to protect plants against phytopathogenic fungi [0001].
Since Marks generally teaches a composition for plants, it would have been prima facie obvious to one of ordinary skill in the art to include an indole derivative, such as melatonin, in an amount of 0.1 to 95 wt.%, within the teachings of Marks, because Bednarek teaches this amount in a composition for plants. An ordinarily skilled artisan would be motivated to use melatonin because Bednarek teaches that an indole derivative, such as melatonin, is useful as a pesticide to protect plants against phytopathogenic fungi [0001].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Regarding the ratio of melatonin and the metal complex in claim 1, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general conditions of the amount of melatonin and metal ion/metal complex have been taught by the prior art (Marks and Bednarek); as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation.
Marks in view of Bednarek reads on claims 1-3.
Response to Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive
Applicant argues at pg. 7 that one of ordinary skill in the art reviewing the teachings of Marks, would not have had reason to look to the teachings of Bednarek to modify the compositions of Marks to arrive at the claimed composition because Marks is directed to agricultural compositions for the administration of nutrients or micronutrients and Marks is silent reading the incorporation of compounds with pesticidal properties.
The Examiner disagrees, Marks and Bednarek are analogous art because both are in the field of endeavor of a composition for plants. An ordinarily skilled artisan would be motivated to use melatonin within the composition for plants taught by Marks because Bednarek teaches that an indole derivative, such as melatonin, is useful as a pesticide to protect plants against phytopathogenic fungi [0001].
Applicant argues at pg. 8 that Bednarek does not contain any teachings that would have led one of ordinary skill in the art to the specific use of melatonin over any of the other claimed indoles. The Examiner disagrees, patents are relevant as prior art for all that they contain and nonpreferred or alternative embodiments constitute prior art. See MPEP 2123. Therefore, although Bednarek has many teachings, the large number of teachings does not detract from teaching melatonin as a useful indole derivative to act as a pesticide to protect plants against phytopathogenic fungi [0001].
Analysis of Alleged Unexpected Results
Applicant argues at pg. 6 that the inventors of the instant application surprisingly discovered that agricultural compositions comprising a combination of at least one metal compound and melatonin, when used to treat plants, provides numerous agricultural benefits including a) enhanced plant growth, plant height and leaf area, b) a reduction in stress symptoms exhibited by the plants, and c) enhanced phenol content, protein content, and nutrient composition. The Examiner is directed to Example 4 (and Table 4) and Example 5 (and Table 5) of the instant application.
The Examiner has fully reviewed and considered the unexpected results alleged by the applicant.
First, it does not appear that applicant has adequately explained the data presented as being evidence of non-obvious. See MPEP § 716.02(b)(II).
In Examples 4-5, it is not clear which components in what amounts are being compared. In Tables 4-5 the sample names are titled “Farmer Practice”, “Melatonin”, “Melatonin with MN”, and “Melatonin with MN and hormones”. There is no clear description of the components that are present in these compositions as the samples are just described as “1 g of test sample”. For the compositions of “Melatonin with MN” and “Melatonin with MN and hormones” there are formulations given in Tables 1 and 2 that the Examiner is assuming are the compositions being tested (with Table 1 describing “Melatonin with MN” and Table 2 describing “Melatonin with MN and hormones”). However, without the compositions being labeled as such, clarity is lacking and further description/clarification is required. There is no composition which is labeled as or would be assumed to be “Melatonin” so it is not clear in what amount the melatonin is being tested. To properly analyze the alleged unexpected results each of the tested sample names should be described in detail with their respective components and amounts.
With the analysis that can be done at this time, it does appear that the addition of melatonin leads to higher phenol and protein content (18.6 ppm and 0.076 %, respectively) compared to the untreated controls (12.28 ppm and 0.068 %). The phenol and protein content is further enhanced with the addition of “MN” (to levels of 20.7 ppm and 0.087 %, respectively). The “Melatonin with MN” composition (assumed to be that in Table 1) includes a combination of calcium, copper, zinc, iron, manganese, magnesium, nickel, cobalt, and potassium.
However, these results do not appear to be unexpected over what is generally known in the art. For example, in regards to the increase in phenol and protein content with the addition of melatonin, Nawaz et al. (Sustainability, 2021, 13, 294) teaches that melatonin is known to lead to improved phenolic content in plants (pg. 6, bottom; Table 1) and increased protein content (pg. 4, top; pg. 5, bottom). The increase in phenol and protein content with the addition of micronutrients also does not appear to be unexpected over what is generally known in the art. Tripathi et al. (Acta Physiol Plant, 2015, 37:139) teaches that micronutrients (such as Cu, Fe, Mn, and Zn) play an eminent role in plant growth and development (abstract) and lead to higher phenol and protein content (pg. 9, left column, 2nd-3rd full paragraph; pg. 4, right column).
Third and finally, assuming purely arguendo that unexpected results have been established, (the Examiner does not believe at this time that they have), the claims would still not be “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has allegedly demonstrated enhanced phenol content and protein content, but even if this is so then it would only have been shown for with the specific combination of metals (calcium, copper, zinc, iron, manganese, magnesium, nickel, cobalt, and potassium) and amounts of metals and melatonin. It is unclear that a comparative composition containing these specific components and in these specific percentages would be reasonably representative of compositions containing other metal compounds and in differing amounts, falling within the broader scope currently claimed.
Claims 4-17 and 22 are rejected under 35 U.S.C. 103 as being as being obvious over Marks (US 2009/0038355A1) in view of Bednarek et al. (US 2009/0028796 A1) and further in view of Sawant et al. (WO 2019/215697 A1).
The 35 U.S.C. 103 rejection over Marks in view of Bednarek was previously discussed.
Regarding claim 4, Marks further discloses the composition includes hormones (salicylic acid) [0014] [0020] [claim 10], excipients (e.g., emulsifiers) [0048], surfactants [0051] [0054], additional active ingredients [0008]-[0012] [0080], additional nutritional products [0055], growth stimulation agents [0055], nitrogenous compounds with minerals, minerals and trace metals [0008]-[0012].
Marks does not disclose the composition includes iodine, as recited in claim 4, in an amount ranging from 0.05 to 0.1 wt.%, as recited in claim 5.
Sawant discloses an agrochemical composition for treating plants (abstract) with a micronutrient, such as iodine, in an amount of 0.1 to 70% w/w of the composition (pg. 23, line 29-pg. 24, line 12). Sawant teaches that the addition of micronutrients adds to the nutritional value of crops and improves crop yields (pg. 70, line 19 – pg. 81, line 2) and that micronutrients are essential elements in plant nutrition (pg. 1, line 31 – pg. 2, line 1).
Since Marks generally teaches a composition for plants, it would have been prima facie obvious to one of ordinary skill in the art to include a micronutrient, such as iodine, in an amount of 0.1-70 wt.%, within the teachings of Marks, because Sawant teaches this amount of micronutrient, such as iodine, in a composition for plants. An ordinarily skilled artisan would be motivated to use iodine in this amount because Sawant teaches that it is a micronutrient for plants which adds to the nutritional value of crops and improves crop yields (pg. 70, line 19 – pg. 81, line 2) and that micronutrients are essential elements in plant nutrition (pg. 1, line 31 – pg. 2, line 1). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 6 and 7 rendered prima facie obvious because Marks discloses a benzoic acid derivative, such as salicylic acid, in an amount of 0.001 to 1.000% w/w [0014] [0020] [0023] [claim 10]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 8 is rendered prima facie obvious because Marks discloses emulsifiers [0048].
Regarding claim 9, Marks does not disclose excipients in a concentration ranging from 0.1 to 5 wt.%.
Sawant discloses emulsifiers in the agrochemical composition an amount of 0.1-60% w/w (pg. 33, lines 23-24). Sawant teaches that the composition with this amount of emulsifier is stable (pg. 10, lines 1-6).
Since Marks generally teaches a composition for plants with emulsifiers, it would have been prima facie obvious to one of ordinary skill in the art to include an emulsifier in an amount of 0.1-60 wt.% because Sawant teaches this amount of emulsifier to form a stable composition (pg. 33, lines 23-24; pg. 10, lines 1-6). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 10 is rendered prima facie obvious because Marks discloses cationic, anionic, or non-ionic type surfactants [0054].
Regarding claim 11, Marks does not disclose surfactants in a concentration ranging from 0.1 to 10 wt.%.
Sawant discloses surfactants in the agrochemical composition an amount of 0.1-50% w/w (pg. 7, lines 30-31). Sawant teaches that the composition with this amount of surfactant is stable (pg. 10, lines 1-6).
Since Sawant generally teaches a composition for plants with surfactants, it would have been prima facie obvious to one of ordinary skill in the art to include a surfactant in an amount of 0.1-50 wt.% because Sawant teaches this amount of surfactant to form a stable composition (pg. 7, lines 30-31; pg. 10, lines 1-6). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 12 and 14-15 are rendered prima facie obvious because Marks discloses secondary nutrients, such as calcium, in an amount of 0.01-30% w/w [0008]-[0012]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 12 and 13 are rendered prima facie obvious because Marks discloses the primary nutrient, nitrogen [0080].
Claims 16-17 are rendered prima facie obvious because Marks discloses the additional nutritional product and/or growth stimulation agent, essential oils, in an amount of 3 w/w [0055]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 22 is rendered prima facie obvious because Marks discloses the composition includes hormones (salicylic acid) [0014] [0020] [claim 10], and it would have been obvious to include iodine, as taught by Sawant (pg. 23, line 29-pg. 24, line 12), within the teachings of Marks, as previously discussed.
Response to Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive
Applicant argues that claims 4-17 should be allowed because they depend from an allowable claim.
The Examiner disagrees because claim 1 is not in condition for allowance.
Claims 23 and 24 are rejected under 35 U.S.C. 103 as being as being obvious over Marks (US 2009/0038355A1) in view of Bednarek et al. (US 2009/0028796 A1) and further evidenced by Nawaz et al. (Sustainability, 2021, 13:294) and Tripathi et al. (Acta Physiol Plant, 2015, 37:139)
The 35 U.S.C. 103 rejection over Marks in view of Bednarek was previously discussed.
Regarding claims 23 and 24, the prior art does not explicitly disclose that the treatment of a plant with the composition results in an increased phenol content, as recited in claim 23, or an increased protein content, as recited in claim 24.
Nevertheless, as evidenced by Nawaz and Tripathi, both melatonin and micronutrients are generally known in the art to result in an increased phenol and protein content in plants. Nawaz discloses that melatonin is known to lead to improved phenolic content in plants (pg. 6, bottom; Table 1) and increased protein content (pg. 4, top; pg. 5, bottom). Tripathi discloses that micronutrients (such as Cu, Fe, Mn, and Zn) play an eminent role in plant growth and development (abstract) and lead to higher phenol and protein content (pg. 9, left column, 2nd-3rd full paragraph; pg. 4, right column).
A chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because the prior art teaches a composition with the same components (metal compound/melatonin), the properties the applicant discloses and/or claims (increased phenol content and increased protein content) are reasonably expected to be necessarily present, especially as both melatonin and micronutrients (such as Cu, Fe, Mn, and Zn) are generally known in the art to result in an increased phenol and protein content in plants.
Response to Arguments
The rejection over claims 23 and 24 is newly applied and has not been traversed.
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 1-17 and 22-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent Application No. 18/551,835.
Although the claims at issue are not identical, they are not patentably distinct from each other because the species (composition) recited in the claims of the copending application falls within the genus (composition) recited in the claims of the instant application, and thus read on the instant claims.
The amounts of the components, as claimed, would be achieved through one of ordinary skill in the art through routine optimization.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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