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 1-15 and 17-27 are pending.
Withdrawn Objections/Rejections
The objection to claim 11 is withdrawn in view of the amendment to replace “of” with “further comprising”.
The rejection of claims 3, 5, 16-19, 20 and 22-26 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the claim amendments.
Applicant’s arguments, see pg. 5, filed 25 November 2025, with respect to the rejection of claims 3, 16-18, 20, 22 and 24-26 under 13 USC 112(b) have been fully considered and are persuasive. Applicant argues that the specification describes various examples that enable the methods and peanut seeds, and it would unduly limit applicant’s scope to add concentration limitations for the maximum amount of resveratrol present in the peanut seeds. The rejection of claims 3, 16-18, 20, 22 and 24-26 has been withdrawn.
The rejection of claim 17 under 35 U.S.C. 102(a)(1) as being anticipated by Chang et al. (Journal of Agricultural and Food Chemistry, 2006) is withdrawn in view of the amendment to claim 17.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim recites “combine concentrations of… trans-arachidin-1 and trans-arachidin-1”. It appears from the specification that the claim should state “trans-arachidin-1” and “trans-arachidin-3”. Appropriate correction is required.
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.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Instant claim 1 recites “the ratio of concentration of resveratrol to the combined concentrations of trans-viniferin, trans-arachidin-1 and trans-arachidin-1 is greater than 7:3”. The instant specification and claims as originally filed do not provide explicit support for the ratio of greater than 7:3. The specification and claims as originally filed do not recite any ratios regarding the concentrations of resveratrol and the combined concentration of trans-viniferin, trans-arachidin-1 and trans-arachidin-1.
Claims 2-11 depend from claim 1 and also include the limitation of the ratio recited in claim 1. Therefore, these claims also do not comply with the written description requirement.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 depends from claim 27, but claim 27 already states all the limitations of claim 19. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sobolev (Journal of Agricultural and Food Chemistry, 2013).
Regarding instant claims 12-15, Sobolev discloses a method of increasing resveratrol concentration in peanut seeds comprising imbibing peanut seeds in sterile water for 16-18 h at room temperature, rinsing, and separating embryos from testa-free cotyledons. The embryos were cut into two halves at the long axis. Wounded embryos and cotyledons were placed in Petri dishes with sterile filter paper to which one portion of 5% H2O2 was added. In alternative set of experiments, the plant material underwent multiple treatments with H2O2. The peanut seeds were incubated for up to 132 hours (pg. 1851, col. 2; pg. 1856, col. 1-2; Fig. 7-8).
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, 6-10 and 17-27 are rejected under 35 U.S.C. 103 as being unpatentable over Sobolev (Journal of Agricultural and Food Chemistry, 2013) as applied to claims 12-15 above, further in view of Francisco et al. (Critical Reviews in Food Science and Nutrition, 2008).
Regarding claim 1, Sobolev teaches treating peanut embryos and testa-free cotyledons with the abiotic elicitor hydrogen peroxide (pg. 1853, col. 1). Sobolev teaches that it is reasonable to suggest that epicotyl/plumule emerging from the peanut embryo may have either no or limited physical barriers, such as exocarp or waxes, and must be protected by natural chemical defenses. A 20-fold higher concentration of p-coumaric acid in embryos compared to cotyledons has been reported. This fact suggests that embryos may have the capacity to accumulate phytoalexins since p-coumarate is an immediate source of p-coumaryl-CoA, an intermediate in the biosynthesis of resveratrol (pg. 1853, col. 2).
Sobolev teaches peanut seeds were imbibed in sterile H2O for 16-18 h at room temperature, rinsing with sterile H2O, and separating embryos from testa-free cotyledons. The embryos were cut into two halves at the long axis. Wounded embryos and cotyledons were placed in Petri dishes with sterile filter paper to which one portion of 5% H2O2 was added. In alternative set of experiments, the plant material underwent multiple treatments with H2O2. The peanut seeds were incubated for up to 132 hours (pg. 1851, col. 2; pg. 1856, col. 1-2; Fig. 7-8).
Sobolev further teaches that a single treatment of embryos and cotyledons with H2O2 triggered production of stilbenoids. High production of major stilbenoids in the seed material within 72 h after treatment with H2O2 (Figure 7) indicated the high potency of H2O2 as an elicitor of common stilbenoids (pg. 1856, col. 1).
Sobolev do not explicitly disclose incubating whole peanut seeds, as instantly claimed.
Francisco et al. teach that stilbene phytoalexins are produced by the peanut plant as a defense mechanism against exogenous stimuli like fungal invasion. Stilbenoids found in peanut include resveratrol, 3-isopentadienyl resveratrol, and various arachidins. Resveratrol is present in peanuts to protect the plant from plant pathogens. The amount, however, is low compared to those of grapes. Resveratrol was found to be present in substantial amounts in the leaves, roots, and shells of peanuts, but very little was found in developing seeds and seed coats of field-grown peanuts. The phytoalexin content of peanuts, however, increases during germination and is enhanced by microbial infection, postharvest induction procedures such as soaking and drying; wounding (slicing and incubation); UV light exposure, among others. Raw peanuts soaked in water for about 20 hours and dried for 66 hours increased the resveratrol content between 45 and 65 times after the soaking treatment. Others were able to increase the resveratrol content of peanut kernels by application of abiotic stress (pg. 733, 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 treat whole peanut seeds with 5% H2O2 for at least 12 hours with the reasonable expectation that the whole peanut seeds would produce significant amounts of resveratrol. Such would have been obvious because Sobolev teaches treating peanut seeds with 5% hydrogen peroxide for more than 12 hours to increase resveratrol, and Francisco et al. teach that application of abiotic stress increases resveratrol in peanut kernels.
Regarding the ratio of resveratrol to the combined concentration of trans-viniferin, trans-arachidin-1 and trans-arachidin-3 being greater than 7:3. Sobolev teaches that high production of major stilbenoids in the seed material within 72 h after treatment with H2O2 (Figure 7) indicates the high potency of H2O2 as an elicitor of common stilbenoids (pg. 1856, col. 1). Sobolev teaches that some peanut stilbenoids have been suggested to be biosynthesized by the peanut plant from the structurally simple stilbenoid resveratrol. The results of present research agree with those suggestions, as resveratrol was detected at high concentrations at early stages of incubation followed by its exponential decline (pg. 1857, col. 1).
Therefore, a person of ordinary skill in the art would have been able to determine through routine experimentation the appropriate incubation period to maximize the optimum ratio of resveratrol to other stilbenoids.
Regarding claim 2, Sobolev teaches a concentration of 5% H2O2.
Regarding claim 3, Sobolev teaches concentrations of resveratrol greater than 50 µg per gram peanut seed (Figure 7).
Regarding claim 6, Sobolev teaches imbibing the peanut seeds in sterile H2O for 16-18 h at room temperature (pg. 1851, col. 2).
Regarding claim 7, it is noted that the solution of Sobolev will necessarily be acidic, neutral or basic.
Regarding claim 8, Sobolev does not explicitly disclose the pH of the medium being 2-6.9 or 7.5-11.5 in a 1-4 wt.% hydrogen peroxide.
The Office does not have the facilities for determining the pH of the solutions taught by Sobolev. It is noted that the pH range claimed is 2-6.9 and 7.5-11.5 (i.e., almost the entire pH range of 0-12). It is also noted that a 5% hydrogen peroxide solution typically has a pH in the range of about 3.0 to 6.0. In the absence of evidence to the contrary, the burden is upon the applicant to prove that the claimed pH range is different than that of the solution taught by the prior art and to establish patentable differences. See Ex parte Phillips, 28 U.S.P.Q.2d 1302, 1303 (PTO Bd. Pat. App. & Int. 1993), Ex parte Gray, 10 USPQ2d 1922, 1923 (PTO Bd. Pat. App. & Int.) and In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 9, Sobolev does not explicitly disclose the ratio of seeds to hydrogen peroxide solution being 1:3 to 1:20 (w/v).
It would have been prima facie obvious for a person of ordinary skill in the art to determine through routine experimentation the necessary quantity of H2O2 aqueous solution to properly cover the peanut seeds and ensure optimal production of resveratrol.
Regarding claim 10, Sobolev teaches a single treatment with H2O2 as well as multiple treatments with H2O2 wherein excess of H2O2 was removed with a pipet every 24 h and replaced with an equal volume of fresh H2O2 (pg. 1851, col. 2; pg. 1856, col. 1).
Regarding claim 17, Sobolev teaches resveratrol concentrations of at least 100 µg per g seed (Figure 7).
Regarding claims 27 and 19-23, Francisco et al. teach an increase of the resveratrol content of peanut kernels by application of abiotic stress (pg. 733, col. 2).
Regarding claims 18 and 24-26, Sobolev does not explicitly disclose a peanut seed comprising at least about 200, at least about 250, at least about 300, or at least about 500 µg resveratrol per g seed.
Sobolev teaches a peanut embryo comprising about 175 µg resveratrol per gram of peanut seed after treatment with 5% H2O2 for 72 hours (Figure 7). Sobolev also teach that high production of major stilbenoids in the seed material within 72 h after treatment with H2O2 indicates the high potency of H2O2 as an elicitor of common stilbenoids (pg. 1856, col. 1). Sobolev also teaches that resveratrol was detected at high concentrations at early stages of incubation followed by its exponential decline (col. 1857, 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 determine through routine experimentation the optimum H2O2 concentration and incubation time to maximize the concentration of resveratrol before it exponentially declines.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sobolev (Journal of Agricultural and Food Chemistry, 2013) in view of Francisco et al. (Critical Reviews in Food Science and Nutrition, 2008) as applied to claims 1-3, 6-10, 12-15 and 17-27 above, further in view of Wang et al. (Southwest China Journal of Agricultural Sciences, 2016).
The teachings of Sobolev and Francisco et al. are discussed above.
Regarding claim 4, Sobolev does not explicitly disclose treating peanut seeds with 1-4 wt.% H2O2 aqueous solution.
Wang et al. teach that 1% H2O2 induction of peanut seedlings significantly increased resveratrol content in the peanut leaves, with peak values achieved after 24 to 36 hours (Abstract).
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 treat the peanut seeds according to Sobolev with an aqueous solution comprising 1-5 wt.% of H2O2 with the reasonable expectation that the treatment would enhance the production of trans-resveratrol in the peanut seeds. Such would have been expected because Wang et al. teach that 1 wt.% increased resveratrol content in peanut seedlings, and Sobolev teaches that 5 wt.% increased resveratrol content in peanut seeds. A person of ordinary skill in the art would reasonably expect 1 wt.% and up to 5 wt.% H2O2 to increase resveratrol content in peanut seeds.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sobolev (Journal of Agricultural and Food Chemistry, 2013) in view of Francisco et al. (Critical Reviews in Food Science and Nutrition, 2008) as applied to claims 1-3, 6-10, 12-15 and 17-27 above, further in view of Resurreccion et al. (US 7,666,455).
The teachings of Sobolev and Francisco et al. are discussed above.
Regarding claim 5, Sobolev does not explicitly disclose slowly agitating the incubating peanut seeds.
However, Resurreccion et al. teach stirring the peanut kernels to ensure that all sides of the kernels were exposed to the stress (col. 5, ln. 35-37).
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 also stir the peanut seeds according to Sobolev incubating in a H2O2 solution to ensure adequate contact between all areas of the peanut seed with the H2O2.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sobolev (Journal of Agricultural and Food Chemistry, 2013) in view of Francisco et al. (Critical Reviews in Food Science and Nutrition, 2008) as applied to claims 1-3, 6-10, 12-15 and 17-27 above, further in view of Lee et al. (Journal for the Korean Society of Food Science and Nutrition, 2005) and Resurreccion et al. (US 7,666,455).
Regarding claim 11, Lee et al. teach a method for determining the amount of water, soaking time and drying time for optimizing resveratrol in raw peanuts. The amount of water and soaking time were found to be significant factors, but the drying time was not significant (Abstract).
Resurreccion et al. teach methods for increasing the amount of resveratrol in a peanut kernel including stressing the peanut kernel abiotically (Abstract). Resurreccion et al. teach stressing both whole peanut kernels and size-reduced peanut kernels followed by drying at 40 °C for about 24 hours (col. 5, ln. 23-25; col. 19, ln. 9-12; Fig. 1; Tables 8-9).
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 determine the optimum drying time for the peanuts treated according to Sobolev to achieve the desired content of resveratrol, as reasonably suggested by Lee et al. and Resurreccion et al.
Claims 1-16 and 18-26 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (Journal of Agricultural and Food Chemistry, 2006) in view of Wang et al. (Southwest China Journal of Agricultural Sciences, 2016).
Regarding claims 12-15, Chang et al. teach that biosynthesis of resveratrol and some other stilbenoids enhanced by imbibation of peanut kernels and subjected to biotic or abiotic inductions, such as germination, artificial microbial inoculation, wounding, UV irradiation, or ultrasonic treatment, has been extensively investigated (pg. 10282). Peanut kernels were imbibed by soaking with tap water for 16 hours at ambient temperature (pg. 10282).
Chang et al. do not explicitly teach incubating harvested hydrated peanut seeds for at least 12 hours in aqueous H2O2.
However, Chang et al. teach that resveratrol is biosynthesized in peanuts by induction as a secondary metabolite under stress (pg. 10281). Chang et al. teach imbibing peanut kernels with water, draining, and subjecting the peanut kernels to incubation on a punctured plastic tray at the ambient temperature for germination, followed by slicing manually with a razor blade and incubation (pg. 10282).
Wang et al. teach that 1% H2O2 induction of peanut seedlings significantly increased resveratrol content in the peanut leaves, with peak values achieved after 24 to 36 hours (Abstract).
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 incubate harvested hydrated peanut seeds in an aqueous 1% H2O2 solution in order to increase the resveratrol content of the peanut seed. Chang et al. teach that imbibing peanut kernels and subjecting to biotic and abiotic inductions enhanced resveratrol production (pg. 10282). Wang et al. teach that 1% H2O2 induction of peanut seedlings significantly increased resveratrol content in the peanut leaves. Therefore, a person of ordinary skill in the art would reasonably expect that hydrating peanut seeds followed by incubation in aqueous 1% H2O2 solution would result in significantly increased content of resveratrol in the peanut seeds.
Response to Arguments
Applicant's arguments filed 25 November 2025 have been fully considered but they are not persuasive. Applicant argues that the instant claims provide peanut seeds with significantly boosted concentrations of resveratrol without physically altering peanut seeds by slicing. This element of instant claims is not taught by Wang or Chang.
Applicant also argues that the instant claims provide whole peanut seeds with significantly boosted concentrations of resveratrol by using imbibed peanut seeds and do not use seedlings which are germinated seeds.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., concentration of resveratrol and the seeds being whole and not germinated) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further argues that the effect of hydrogen peroxide on plant cells in a rapidly growing and changing seedling with complex and rapid cell division and differentiation among various processes underway is complicated and unpredictable. Applicant asserts that there is no reasonable expectation of success by combining Chang and Wang because the seedlings described in Chang and Wang are in a different physiological state.
The examiner respectfully argues that Chang et al. teach that biosynthesis of resveratrol and some other stilbenoids enhanced by imbibation of peanut kernels and subjected to biotic or abiotic inductions, such as germination, artificial microbial inoculation, wounding, UV irradiation, or ultrasonic treatment, has been extensively investigated. Wang et al. teach that H2O2 inducing can increase the resveratrol content in peanut seedling leaves, and single seed weigh can server as indicator for evaluating original resveratrol content for peanut varieties (Abstract)．
A person of ordinary skill in the art would have a reasonable expectation that H2O2 would be a suitable abiotic stress for inducing resveratrol production in peanut seeds in view of the teaching of Chang et al. that peanut kernels produce resveratrol in the presence of abiotic stresses, and Wang et al. teaching the H2O2 effectively caused peanut seedlings to produce resveratrol.
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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/N.W.S/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616