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 .
DETAILED ACTION
Status of the Claims
Claims 4, 7, 8, 12 and 14 have been amended. Claims 12-15 have been withdrawn. Claims included in the prosecution are claims 1-11.
Election/Restrictions
Applicants’ election of Group I (claims 1-11), drawn to a spreading agent without traverse in the reply filed on 05/22/2026 is acknowledged.
Priority
This application is a 371 of PCT/JP2022/010072 filed 03/08/2022 and claims priority to JAPAN 2021-048786 filed on 03/23/2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 09/22/2023 and 06/12/2025 follow the provisions of 37 CFR 1.97. Accordingly, the IDSs are considered by the Examiner.
Claim Objections
Claims 2, 3, 5 and 6 are objected to because of the following informalities:. The article, “the” appears to be missing before “glycosidic bonds” in line 3 of claim 2 and claim 5; and before “polymer bonds” in line 2 of claims 3 and 6. Appropriate correction is required.
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 m2atter which the applicant regards as his invention.
Claims 2, 3, 5 and dependent claims thereof 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.
The phrase “in at least part of” recited in claim 2 (line 3) and claim 5 (line 3) renders the claims indefinite. It is not clear to what extent glycosidic bonds of chitin oligosaccharide contain the recited alpha-1,6-glycosidic bond.
Claim 2 and claim 5 recite the limitation "glycosidic bonds" in the last line of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 and claim 6 recite the limitation “polymer bonds” in line 2. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more. The claims recite a spreading agent, comprising at least one oligosaccharide selected from the group consisting of chitin oligosaccharides, cello-oligosaccharides, and xylo-oligosaccharides. Accordingly, the claims are directed to a composition of matter. The claims are a combination of naturally occurring oligosaccharides. So, the nature-based product is analyzed to determine whether it has markedly different characteristics from any naturally occurring counterpart in their natural state.
The claims read on marine environments containing chitin. As evidenced by Hirano et al. (Chitin Heterodisaccharide, Released from Chitin by Chitinase and Chitin Oligosaccharide Deacetylase, Enhances the Chitin Metabolizing Ability of Vibrio parahaemolyticus. J Bacteriol Vol. 20 Issue 20, 2019), chitin, a water-insoluble-(1,4)-linked polymer of N-acetyl-D-glucosamine (GlcNAc) that is a component of the shells of crabs and shrimp (page 1, last paragraph) and bacteria (i.e., Vibrio) in the marine biosphere decompose chitin to its oligosaccharides, particularly N,N’-diacetylchitobiose [(GlcNAc)2] (page 2, paragraph 1).
The claims read on naturally decomposing pineapple or naturally decomposing banana peels. As evidenced by Zaini et al. (Banana peels as a bioactive ingredient and its potential application in the food industry. Journal of Functional Foods 2002; 92:12 pages 1-12), banana peels are made up of amino acids such as histidine, glycine and glutamic acid (Table 3, page 3) and xylo oligosaccharides (Table 7, page 8). As evidenced by Avila et al. (Cello-oligosaccharides production from multi-stage enzymatic hydrolysis by lignocellulosic biomass and evaluation of prebiotic potential. Innovative Food Science and Emerging Technologies 85 (2023) 103335 pg. 1-8), cello-oligosaccharides are the degradation products of sugarcane straw and coffee husk (abstract).
Therefore, the claimed combination does not appear to have markedly different characteristics from what occurs in nature. The term "spreading agent" does not appear to add significantly more to the exception because these are intended uses of the composition and do not add any further structural elements. Therefore, the claims as a whole add nothing significantly more to the "product of nature" itself. Accordingly, the claims do not amount to significantly more than the judicial exception itself and the claims do not qualify as eligible subject matter.
Claim Rejections - 35 USC § 103
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.
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.
1. Claims 1, and 8-11 are rejected under 35 U.S.C. § 103 as being unpatentable over Fujita et al. (US 20220369569 A1, filed 06/15/2020, cited on IDS WO 2020255934 A1 equivalent).
Fujita discloses plant-activating agent containing amino acids or salts thereof and an oligosaccharides, and a method for cultivating and producing plants that use the plant-activating agent (abstract). The oligosaccharides contained in the plant-activating agent are at least one selected from the group consisting of chitin oligosaccharides, cello oligosaccharides, and xylo oligosaccharides ([0018], claim 2). The plant-activating agent contains all three types ([0019], claim 3) and contains a spreading agent ([0024], claim 8). When the plant vitalizer contains chitin oligosaccharide, cello oligosaccharide and xylo oligosaccharide as oligosaccharides, the percentage of each oligosaccharide with respect to the total content of the chitin oligosaccharide, cello oligosaccharide and xylo oligosaccharide is preferably 10 to 50 mass % of the chitin oligosaccharide, 10 to 50 mass % of the cello oligosaccharide and 10 to 60 mass % of the xylooligosaccharides (paragraph [0049]). The percentage of each oligosaccharide is preferably 20 to 40 mass % of the chitin oligosaccharide, 20 to 40 mass % of the cello oligosaccharide and 20 to 55 mass % of the xylo oligosaccharide (paragraph [0049]). Here the teachings of Fujita read on the limitations of claims 1 and 8-11.
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to utilize the composition of Fujita comprising an amino acid or its salt and an oligosaccharide with expected results. One would be motivated to do so because Fujita provides a composition that increases nutrient absorption and nutrient utilization in the plant, promoting its growth and improving the yield and quality of crops ([0003]).
2. Claims 2-6 are rejected under 35 U.S.C. § 103 as being unpatentable over Fujita et al. (US 20220369569 A1, filed 06/15/2020, cited on IDS WO 2020255934 A1 equivalent). in view of Sun et al. (CN 103435414 A, pub. 12/11/2013, cited on IDS), evidenced by Chen et al. (Synthesis of cello-oligosaccharides by depolymerization of cellulose: A review. Applied Catalysis A, General 621, 118177, April 29, 2021) and . Citations for Sun are taken from the machine translated documents provided.
The teachings of Fujita are discussed above.
Fujita teaches that cellooligosaccharides are oligosaccharides polymerized by β-glycoside bonding of multiple glucose molecules and refers to recent work in which cello oligosaccharides comprising oligomers have a glucose polymerization degree (DP) of 3 to 6 in paragraph [0042] but does not teach the limitations of the claims.
However, Sun discloses a chitinous oligosaccharide-based leaf surface spray that can be applied directly to the surface of plant leaves, and the production method and use thereof, and discloses that the spray contains 2-8% chitinous oligosaccharides, 0.01-0.1% ammonium sulfide, and 001-0.1% potassium dihydrogen phosphate (claims 1, 2). Sun teaches that chitin oligosaccharide refers to condensation polymerization combination of glucosamine with alcohol of straight chain or branched chain, compared with chitosan has good water-solubility, strong function, high biological activity formed by connecting by a glycosidic bond by dehydration reaction of 2 to 10 monosaccharide (paragraph [0002]). As evidence from Chen, glycosylation during the depolymerization reaction can create α-1,4, α /β-1,3, α /β-1,6, and α /β-1,2- glycosidic linkages, and that cello-oligosaccharides with degree of polymerization (DP) of 2-6 are fairly soluble in water at room temperature (page 2, column 2, paragraph 2). Chen shows α-1,6 branching (Fig. 8).
Regarding claims 2 (i.e., chitin) and 5 (i.e., cello) α-1,6-glycosidic bond linkages, and ratio of 1 to 50% α-1,6-glycosidic bond to polymer bonds (i.e., claims 3 and 6), Fujita teaches degree of polymerization (DP) of 3 to 6 ([0042]) and all three recited oligosaccharides each in an amount that is from 20 to 40 mass % of the chitin oligosaccharide (paragraph [0049]). It would have been prima facie obvious to one of ordinary skill in the art to apply Sun’s disclosure of branched oligosaccharides to Fujita with expected results. One would be motivated to do so because Sun discloses that the water solubility is improved ([0002]) that chitin oligosaccharide has a “synergistic effect” which enhances the absorption of the element (i.e., Fe, Cu, etc.) (abstract, [0010]) to suggest enhanced efficacy of a spreading agent. It would have taken no more than the relative skills of a person having ordinary skill applying routine experimentation to arrive at the α-1,6-glycosidic bond to oligo saccharide ratio 1-50% claimed. Sun teaches a composition in which the chitinous oligosaccharides have branched chains and comprises 2%-8% chitin oligosaccharide. 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 MPEP2144.05(II)(A). Here the teachings of Fujita in view of Sun with evidence from Chen render the ratio of α-1,6-glycosidic bond to polymer bonds to be 1 to 50% obvious.
Regarding claim 4 (i.e., chitin 420-2050 mw), Sun teaches chitin oligosaccharide is 300 Dalton (D) - 3000 D, i.e., 300-3000 g/mol, to overlap with the claimed range.
3. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Fujita et al. (US 20220369569 A1, filed 06/15/2020, cited on IDS WO 2020255934 A1 equivalent) in view of Sun et al. (CN 103435414 A, pub. 12/11/2013, cited on IDS), evidenced by Chen et al. (Synthesis of cello-oligosaccharides by depolymerization of cellulose: A review. Applied Catalysis A, General 621, 118177, April 29, 2021) further in view of Capanema et al. (US 20170275385 A1) evidenced by Chen et al. reference above.
The teachings of Fujita, Sun and Chen are discussed above.
Regarding claim 7 (i.e., cello 340-1640 mw), Sun does not disclose a molecular weight for cello-oligosaccharide.
Capanema discloses cellulose-containing compositions and method of making same (abstract) that can be utilized for many applications ([0002]). Capanema teaches “oligosaccharide” referring to linear or branched carbohydrate molecules of the same or different monosaccharide units which are joined together by glycosidic bonds having the general formula of Cx(H2O)y ([0046]). In an embodiment, the composition comprises a water-soluble fraction comprising at least one cello-oligosaccharide ([0007], [0122], [0218]), wherein the at least one cello-oligosaccharide has a weight-average molecular weight of about 200 g/mol to about 1,500 g/mol ([0219], see Tables 2-3 [0333]). Capanema teaches a molecular weight range for cello oligosaccharide that overlaps and lies within the claimed range of 340 to 1640.
Fujita discloses “increasing plant disease resistance using low molecularized chitin” ([0005]). Sun describes chitin oligosaccharide “by biological technology degradation formed low molecular quantity products” ([0002]). It would have been prima facie obvious to one of ordinary skill in the art to utilize the low molecular weight disclosed by Capanema. One would be motivated to do so because Capanema teaches that oligosaccharides may be thought of as shorter chain polysaccharides, i.e., polysaccharides simply having less monomeric residues in the polymeric chain ([0046]). Capanema discloses “As used herein, an oligomer (e.g., cello-oligosaccharide) has a DP of 2 to about 9, whereas a polymer (e.g., cellulose) has a DP of at least about 10” ([0046]). As evidence by Chen, the chain length or degree of polymerization (DP) (page 2, section 2, column 2, paragraph 1) affects solubility where the solubility decreases with increase in chain length (page 6, section 6, column 2, paragraph 3), and the price of COS drastically increases with the increase in chain length (page 2, column 1, paragraph 2). Therefore one skill in the art would be motivated to utilize the low molecular weight taught by Capanema to complement Fujita and Sun’s teachings and for solubility improvement and cost-effectiveness.
Prior Art of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Inoue et al. (US 2013/0203599 A1). Inoue provides a spreading agent composition comprising a polysaccharide in an amount of 5-30% by weight, a polyoxyalkylene sorbitan fatty acid ester in an amount of 5 to 40% by weight; and (C) at least one nonionic surfactant selected from polyoxyalkylene alkyl ethers, sorbitan fatty acid esters, and silicone surfactants in an amount of 5 to 40% by weight that can improve wetting and spreading performances of an agricultural chemical (abstract, [0013], claim 1)
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 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 and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6, and 8 of copending Application No. 17/619,627 17/619,821 in view of Fujita et al. (US 2022/0369569 A1). Although the claims at issue are not identical, they are not patentably distinct because the copending is also directed to chitin oligosaccharide, cello oligosaccharide and a xylo oligosaccharides and further comprises a spreading agent in claim 8. The copending mass % amounts chitin oligosaccharide are not patentably distinct in view of Fujita’s teaching of amounts.
Claims 1 and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 8 of copending Application No. 17/619,821 in view of Fujita et al. (US 2022/0369569 A1). Although the claims at issue are not identical, they are not patentably distinct because the copending is also directed to chitin oligosaccharide, cello oligosaccharide and a xylo oligosaccharides and further comprises a spreading agent in claim 8. The copending mass % amounts chitin oligosaccharide are not patentably distinct in view of Fujita’s teaching of amounts.
Claims 1, and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, and 6 of copending Application No. 17/619,801 in view of Fujita et al. (US 2022/0369569 A1). Although the claims at issue are not identical, they are not patentably distinct because the copending is also directed to cello oligosaccharide and a xylooligosaccharides and further comprises a spreading agent in claim 6. The copending mass % amounts of COS and XOS are not patentably distinct in view of Fujita’s teaching of amounts and of chitin oligosaccharide.
Conclusion
Claims 1-11 are rejected. Claims 12-15 are withdrawn. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Karen A. Ketcham whose telephone number is (571)270-5896. The examiner can normally be reached M-F, 9-5.
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/Karen A Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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