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 .
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.
Claim(s) 12, 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pioneer (WO2013/055916, from IDS), and further in view of Zhu et al. (Field Crops Res., 2004, 88, 211-226).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 12 and 15, Pioneer teaches a method of increasing corn hybrid seed production in a field comprising a) planting male and female parent plants in a field, and b) treating the plants, which includes the male plants with a topical treatment specifically a spray, comprising sodium chlorate (DEFOL 750) which is a desiccant/defoliant, and Pioneer teaches wherein this method should also work in wheat as they disclose using this method to produce increased amounts of hybrid wheat seeds (and thereby would be treating the parent wheat plants with the sodium chlorate as claimed) which reads on qualifying hybrid seed production step which would be increase with respect to a control planting as claimed (see entire document; pg. 1, ln. 10-14, 28-pg. 2, ln. 6; pg. 3, ln. 1-12; Figures; all claims, particularly claims 11-20; pg. 5, ln. 29-pg. 6, ln. 2; pg. 6, ln. 33-26; pg. 7, ln. 16-23; pg. 9, ln. 14-20; examples which use sodium chlorate).
Regarding claim 14, Pioneer teaches wherein properly timed defoliation of the plants, which would include male plants provides numerous advantages which include, and are not limited to, greater number of seeds per pound; increased volume or proportion of saleable seed per field and per female acre; decreased discard of seed due to commercially undesirable size or shape; lower moisture content of seed at harvest; earlier harvest date; less fuel and time expended in drying seed for storage; improved performance in laboratory tests for germination at cold temperatures; improved seed treatment efficacy; improved emergence under stress in field conditions; improved plantability in mechanical systems; more uniform stand; fewer runt plants and improved grain yield, e.g. the increased seed yield instantly claimed (see entire document; pg. 1, ln. 10-14, 28-pg. 2, ln. 6; pg. 3, ln. 1-12; Figures; all claims, particularly claims 11-20; pg. 5, ln. 29-pg. 6, ln. 2; pg. 6, ln. 33-26; pg. 7, ln. 16-23; pg. 9, ln. 14-20).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Regarding claims 12, 14-15, Pioneer does not teach an example wherein the plants are other than corn plants, specifically the claimed wheat plants. However, they claim that the plants can be wheat plants as the wheat seed produced from the methods with wheat plants would be hybrid wheat seed as instantly claimed. Pioneer also does not teach wherein the topical treatment results in at least 1 day delay in male flowering or in a shortened male flowering window. However, Pioneer stresses the importance of properly timing the defoliation of the plants, and as such it would be obvious to test other timings during growth of the male and female parent wheat plants in order to provide a method which produces the highest yields of hybrid wheat seed, especially since it is known to defoliate wheat prior to flowering to increase seed yields as is taught by Zhu (See abstract) and as such it would be obvious to apply the sodium chlorate (DEFOL 750) which is a defoliant to wheat plants prior to flowering in order to increase the hybrid seed yield from the wheat plants by applying the sodium chlorate of Pioneer at the timings of Zhu in order to develop the claimed method and it would be obvious that this application of the sodium chlorate defoliant of Pioneer when applied to wheat plants prior to flowering to improve seed yields would lead to the claimed results of the instant claims, e.g. improved hybrid seed yield and delayed male flowering/shorter flowering window as this is result effective of applying the claimed sodium chlorate to the wheat plants prior to flowering to improve the resultant hybrid seed yields which was known/rendered obvious by the combination of Pioneer and Zhu as discussed above.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Argument/Remarks
Applicant’s amendments have overcome the previous 112 rejections which are hereby withdrawn.
Regarding the 103 rejection of record these arguments have been fully considered but were not persuasive at this time. The examiner first notes that increasing wheat hybrid seed production in a field is the intended use/result of the claimed method steps and because the claimed method uses comprising language no additional steps or ingredients, etc. are excluded because comprising language is open-ended. The method steps which are required by the claimed method are a)-c), and the examiner notes that the only active steps of the claimed method are the planting of the parent wheat plants in a field and the treating the male plants with a topical treatment wherein the topical treatment comprises at least one of i-iii. The quantifying step c) is a mental step of measuring. The examiner also notes that the claimed treating step does not require any specific amounts or any specific timing of application contrary to applicants arguments, e.g. any treating of the male plants with a topical treatment comprising any of the claimed ingredients should therefore lead to applicant’s method as this is the only active step required. Specifically the quantifying step can be done by counting in one’s head for instance and as such is not a particular active step that directly leads to increasing wheat hybrid seed production as claimed.
Applicants argue that Zhu does not teach what the examiner asserts it does. The examiner respectfully points out that the only active steps for accomplishing the claimed method are planting wheat seeds and applying to male wheat plants one or a combination of the claimed actives. Applicant’s method as written reads on any timing of application achieving the the claimed method and the application of any amount of any of the actives or any combination thereof achieving the claimed result which is the preamble/intended use of the claimed method. Applicants argue that the examiner’s rationale requires assumptions which go beyond what either reference teaches. The examiner respectfully disagrees.
Applicants argue that their method is directed to selective topical treatment of the male parent plants. The examiner respectfully disagrees that this limitation actually limits the application step in any way because nothing in claim 12 requires the treatment to be selective treatment of the male parent plants only because the instant claims use comprising as the transitional phrase which is open-ended and does not exclude treatment of the all of the parent plants in the field which when treating all plants in the field would obviously therefore be treating the male parent plants as claimed. Thus, contrary to applicant’s arguments, the selective treatment of only the male parent plants is not actually required by the instant claims based on the plain language of the claim as it is currently written, i.e. use of the transitional phrase “comprising” which is open-ended and excludes nothing from the instantly claimed method. Further, nothing in claim 12 which is the independent claim as written requires specific flowering-timing outcomes as is asserted by applicants. This is only required by dependent claim 14 and appears to be result effective of the applying step which is taught by the combination of the prior art as discussed above.
Applicants then argue that the examiner relies on Zhu to teach that defoliating wheat prior to flower increases seed yields. Applicants argue that Zhu does not show that this timing teaching can be used in a hybrid female/male system to yield the specifically claimed method. The examiner respectfully points out that applicants themselves have not provided any evidence demonstrating that the above argued combination would have been unobvious. Zhu teaches application to wheat and corn, etc. to increase seed yields by use of defoliation with the claimed defoliators, e.g. sodium chlorate, prior to flowering, which appears to be rendering obvious the claimed method to which the same defoliator is being applied to wheat plants. Just because applicants have discovered another feature, e.g. delay in flowering, etc. that is not explicitly recognized in the prior art does not make the instantly claimed method patentable at this time because “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, the examiner disagrees that the claimed combination of prior art does not render the method of the instant claims prima facie obvious at this time for the reasons discussed above and herein.
Additionally with respect to applicants arguing impermissible hindsight by the examiner, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case the active steps and increased yield were known to occur by application of sodium chlorate to wheat and/or other plants. Thus, it would have been obvious to optimize the timing of this application to said plants in order to achieve the highest yields from the treated plants. This is something that one of ordinary skill in the art routinely does. Thus, the examiner does not believe that the obviousness rejection uses impermissible hindsight for the reasons discussed above and of record which are incorporated herein.
Applicants then argue that Zhu does not provide a reasonable expectation of success for the claimed male-flowering outcomes and that neither Zhu nor Pioneer recognizes timing of application of sodium chlorate to affect flowering timing. The examiner first respectfully points out that flowering timing is only required by claim 14, and none of the other claims require this limitation. Secondly, as discussed above the combination of the prior art recognizes that application of sodium chlorate to wheat and other crops leads to improved yields which is the specific method that is instantly claimed. It is known to optimize timing of agricultural applications in order to achieve the most effective/highest yields. This is something that one of ordinary skill in the art routinely does is optimize prior art methods in order to achieve the most effective method for increasing yields of crops. Secondly, the male-flowering outcomes are result effective of the applying step and would result from the combination of the prior art as discussed above especially in the absence of evidence to the contrary especially since applicants own method merely requires the active step of treating the male plants with any amount of any topical treatment comprising at least one of the disclosed active agents which is taught by the combined prior art as discussed above. Thus, it appears that the delay in flowering is a result of the applying the step which is taught by the combination of the prior art as discussed above and it is known, “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Additionally, the instant rejection is an obviousness not an anticipatory rejection. Thus, Zhu does not have to expressly teach and/or provide evidence of each and every feature claimed. Especially since, the delay in flowering, etc. claimed by applicants is result effective of the applying step which is taught by the combined prior art as discussed above and would naturally flow from the applying step taught by the combined prior art, and further just because appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The examiner respectfully disagrees that the rationale for combining the prior art does not provide sufficient support as asserted by applicants especially since as previously discussed nothing in the instantly claimed method as plainly written requires selective treatment of only the male parent plants as is argued by applicants. That is to say, the claim as it is plainly written does not require only the treatment of the male parent plants in the field with the claimed sodium chlorate or other active agents for the reasons previously detailed above, i.e. comprising as the transitional phrase, etc. and further male flowering delay is only required by one of the examined claims. Independent claim 12 and dependent claim 15 do not require this argued limitation.
Applicants further argue that the cited art does not recognize flowering timing manipulation can be done by applying sodium chlorate. Again the flowering timing is not required of all of applicant’s instant claims and further the flowering is a result of the applying step and as such would naturally flow from the method taught by the combined prior art especially since it would have been obvious to optimize the timing of the application of the sodium chlorate in order to achieve the highest yield which is the intended result of claims 12 and 15 for instance and as such the result of claim 14 would naturally flow from the applying step taught by/rendered obvious by the combined prior art as discussed above and as such one of ordinary skill in the art would have a reasonable expectation of success in developing the claimed method which is directed to increasing wheat hybrid seed production as is instantly claimed. Applicants focus on the delay of flowering not being recognized by the prior art but as discussed above it is a result which occurs due to the applying step which is taught and/or rendered obvious for the reasons discussed above and would have been result effective/naturally flow from this active step of the method which is taught by/rendered obvious by the combined prior art as discussed above.
Applicants further argue that Zhu teaches away from application of sodium chlorate leading to a delay in anthesis of wheat. The examiner respectfully disagrees. Zhu teaches that the anthesis was around day 112. Anthesis in wheat typically occurs between days 107 and 122 as evidenced by Rimmey (Wheat Growing Stages: Full Timeline and Life Cycle, 2026) (see Rimmey: Stage 7 days) and a 1 day difference in anthesis could be occurring in Zhu and still fall within the typical anthesis window and would also still read on the about 112 days cited in Zhu, e.g. 111 days is ca. 112 days, i.e. applicants delay of at least one day of anthesis, etc. is still rendered obvious by Zhu which teaches that no significant differences for dates of anthesis being observed wheat typically goes through anthesis over a range of days in the growth cycle (e.g. see 3.2.3 in Zhu, see also paragraph beginning, “Minimum destructive measurements were taken by limiting sampling…”). Thus, a difference of 1 day which reads on the claimed at least one day, would still fall within the normal window of anthesis and as reported by Zhu would not be a significant difference in the date of anthesis because anthesis would still be happening within the typical time frame of the growth cycle of wheat. Thus, this argument is not persuasive at this time especially in the absence of evidence to the contrary.
Applicants then argue that claim 15 is unobvious over the prior art for the same reasons as discussed above. The examiner respectfully disagrees for the same reasons which are explained above and which are incorporated herein.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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