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 .
Election/Restrictions
Applicant's election without traverse of group II, claims 12-15 in the reply filed on 11/13/25 is acknowledged. Claim 13 has been canceled, leaving claims 12, and 14-15 for examination. Further, applicants have elected the species: a plant growth regulator with trinexapac-ethyl, a sodium chlorate dessicant, and a phenoxy herbicide with MCPA as the active ingredient. However, this elected species does not read on claims 12, 14-15 as currently presented because claim 12 uses “is…or” language to disclose the actives and the “or” in this phrase to link the active agents and does not say at least one, and because of the “or” language used in the instantly amended claim 12 the claim does not allow for any subcombinations or a combination of all 3 active agents as applicants have elected. Based on the plain language of applicant’s claim as written, the examiner is interpreting that the active agent can be any one of the three agents listed in the claim but not the combination that applicants elected because the claim as plainly written does not allow for all three to be present. Thus, the examiner has elected sodium chlorate as the species under examination as it is one of the three species listed in the claim based on applicant’s use of “or” in the claim.
Claim Interpretation/Examiner Suggestion
Applicant’s amended claim language in claim 12 recites in b. …treating the male plants with a topical treatment, wherein the topical treatment is a plant growth regulator with trinexapac-ethyl as the active ingredient, a sodium chlorate dessicant, or a phenoxy herbicide with MCPA…as the active ingredient. The examiner is interpreting these limitations due to the “is” and the “or” that the topical treatment is one of these compositions. Further, as plant growth regulators and phenoxy herbicides are inherently/inherently have an active ingredient/are active ingredients the phrase “the active ingredient” which is used in conjunction with plant growth regulator and phenoxy herbicide has inherent antecedent basis.
The examiner suggests the following language which would read better in this claim:
“…wherein the topical treatment is a plant growth regulator comprising triexapac-ethyl, sodium chlorate, or a phenoxy herbicide comprising MCPA…”.
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 matter which the applicant regards as his invention.
Claim 14 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.
Claim 14 recites wherein the treatment results in at least 1 day delay in male flowering…However, it is unclear what the 1 day delay in male flowering or in a shortened male flowering window is delayed or shortened relative to? Is this delay/shortening relative to the control planting of claim 12, or is relative to some other variety of wheat or some other common treatment? Based on claim 12, the examiner is interpreting the delay or shortened window for flowering to be relative to the control planting of claim 12 but suggests applicants add the language “as compared to the control planting”, which would clarify this issue.
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.
Conclusion
No claims are allowed.
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