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 .
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 Objections
Claims 6, 7, 9, 11, 13-15, and 17-18 are objected to because of the following informalities:
Claim 6, line three, “Jasmonic acid” should be lowercase.
Claim 7, line 2, the percent of hormones should be defined (e.g., wt.%).
Claim 9, line 2, the percent of excipients should be defined (e.g., wt.%).
Claim 11, line 2, the percent of surfactants should be defined (e.g., wt.%).
Claim 13, line 2, “Nitrogen”, “Phosphorous”, and “Potash” should be lowercase.
Claim 14, line 2, “Calcium”, “Magnesium”, and “Sulfur” should be lowercase.
Claim 15, line 2, the percent of additional active ingredients should be defined (e.g., wt.%).
Claim 17, line 2, the percent of additional nutritional products should be defined (e.g., wt.%).
Claim 18, requires a period at the end of the claim. See MPEP 608.01(m).
Appropriate correction is required.
Claim Rejections - 35 USC § 112, Second Paragraph
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 1-21 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 broad to narrow limitation, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation “0.1% to 20%”, and the claim also recites “(wt)” in lines 2 and 3, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. To overcome this rejection, the parathesis can be removed from the claim.
Claim 5 is indefinite because it recites, “the iodine is in a ratio ranging from 0.05 to 0.1”, but does not define what the iodine is in ratio to.
Claim 20 recites the limitation “the plants" in line 2. There is insufficient antecedent basis for the limitation “the plants” in the claim.
Claim 20 recites the limitation “in an appropriate amount" in line 2. This claim is indefinite because it is not clear what “an appropriate amount” is and guidance is not found in the specification.
Claim 21 recites the limitation “the plant foliage" in line 2. There is insufficient antecedent basis for the limitation “the plant foliage” in the claim.
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 1-3 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.
Claims 4-21 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, and minerals and trace metals [0008]-[0012].
Marks does not disclose the composition includes iodine, as recited in claim 4, in a ratio ranging from 0.05 to 0.1, as recited in claim 5.
Examiner’s Note: The instant claim 5 recites, “the iodine is in a ratio ranging from 0.05 to 0.1”. It is not clear what the ratio is in reference to and no additional guidance is found in the specification. In the interest of compact prosecution, the Examiner is interpreting this claim limitation to be the % of the iodine in the composition as is recited throughout the claims for the other components.
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%.
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%.
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.
Regarding claim 18, Marks discloses the compositions of the disclosure are administered to crops at a rate of 1 to 30 liters per hectare [0070] (1 hectare = 2.47 acres, so 0.404 to 12.14 L/acre). The majority of the composition is water [0064] [0067] [0083] (density = 1000 g/L) so this is around 400-12,100 g of composition/acre. Marks discloses the total concentration of micronutrients in the composition (which are minerals and trace metals [0008]-[0009]) are in an amount of 0.01 to 40% w/w, therefore the range of minerals and trace metals in the composition are around 0.04-4,840 g/acres. A prima facie case of obviousness exists because of overlap, as previously discussed. Furthermore, 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 minerals and trace metals have been disclosed by Marks, as such, it would not have been inventive for the skilled artisan to have discovered the optimum amount in units of g/acre through routine experimentation.
Regarding claim 19, Marks does not disclose the composition is in a concentration range of 2 g/acre to 10 g/acre.
Bednarek discloses that when the active substance (indole derivative, such as melatonin) is employed in plant protection, the amount of active substance is between 0.01 and 2.0 kg (10-2000 g) of active substance per hectare [0179] (1 hectare = 2.47 acres, so around 4-800 g active substance/acre). Bednarek teaches the active substance is in the composition in a range of 0.1 to 95% by weight [0178]. This is around 4.2-800,000 g of agricultural composition/acre. Bednarek teaches that when the composition is applied at this concentration, it is useful as a pesticide to protect plants against phytopathogenic fungi [0001] [0178]-0179] [0182].
Since Marks generally teaches a composition for plants, it would have been prima facie obvious to one of ordinary skill in the art to use a concentration range from around 4.2-800,000 g of agricultural composition/acre within the teachings of Marks, because Bednarek teaches that when the composition is applied at this concentration, it is useful as a pesticide to protect plants against phytopathogenic fungi [0001] [0178]-0179] [0182]. A prima facie case of obviousness exists because of overlap, as previously discussed. Furthermore, 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 condition of the concentration of the agricultural composition has been taught by Bednarek, as such, it would not have been inventive for the skilled artisan to have discovered the optimum concentration in units of g/acre through routine experimentation.
Regarding claim 20, the limitation “can be applied to the plants” is interpreted as an intended use limitation. The compositions of Marks appear to be capable of meeting the intended use because Marks discloses the composition is applied to plants in the form of a spray [0060].
Regarding claim 21, the limitation “can be applied to the plant foliage” is interpreted as an intended use limitation. The compositions of Marks appear to be capable of meeting the intended use because Marks discloses in Example 1 [0083]-[0085], an agricultural formulation which is applied to plants. The composition includes 81 wt.% water and 19 wt.% other components (
81
g
H
2
O
x
1
L
H
2
O
1000
g
H
2
O
=
0.081
L
H
2
O
;
19
g
0.081
L
=
234.56
g
/
L
). The composition is then diluted by 0.5% before application [0085] so the composition is applied at a concentration at 1.17 g/L. A prima facie case of obviousness exists because of overlap, as previously discussed. Furthermore, 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 condition of the concentration of the agricultural composition has been taught by Marks, as such, it would not have been inventive for the skilled artisan to have discovered the optimum concentration in units of g/L for application to plant foliage through routine experimentation.
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 1-21 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
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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/ASHLEE E WERTZ/ Examiner , Art Unit 1612
/FREDERICK F KRASS/Supervisory Patent Examiner, Art Unit 1612