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 .
This Office Action is in response to Applicant’s response filed December 17, 2025. Claims 1, 2, 4, 22-23, 36, and 460-471 are pending in the application. Claim 1 has been amended. All previously withdrawn claims have been cancelled. Claims 464-471 are newly added. Claims 1, 2, 4, 5, 22-23, 36, 460-471 will be examined.
Priority
This application is a continuation of U.S. Provisional Patent Application No. 63/411,636 filed September 30, 2022. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 112 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Provisional Patent Application No. 63/411,636 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, fails to provide by first paragraph for one or more claims of this application. The claims are not entitled to priority of the parent application because they do not have support for “a sprayable liquid carrier” in amended claim 1 and newly added independent claim 468 or “operable to reduce severity of infection caused by said pathogen” in newly added claim 471. The effective filing date of claims 1-2, 4, 22, 23, 36, 460-463, and 468-471 of the instant application is October 2, 2023. The effective filing date of newly added claims 464-467 of the instant application is September 30, 2022.
Status of the Claims
The rejection of claims 1, 22, 23, 36, 460, 461, and 462 under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Qin et al. (WO 2023/043648) is withdrawn due to Applicant’s convincing argument.
The rejection of claims 1, 22, 23, 36, and 460-462 under 35 U.S.C. 103 as being unpatentable over Unkefer et al. (US 2007/0105719, Unkefer et al. ‘719) in view of Unkefer et al. (US 6,831,040, Unkefer et al. ‘040) is maintained.
The rejection of claims 2 and 4 under 35 U.S.C. 103 as being unpatentable over Unkefer et al. (US 2007/0105719, Unkefer et al. ‘719) in view of Unkefer et al. (US 6,831,040, Unkefer et al. ‘040) as applied to claims 1, 22, 23, 36, and 460-462, above, and further in view of Dora Agri-tech Publication (2021) is maintained.
Rejections not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New Rejections Necessitated by Amendments filed December 17, 2025
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 1-2, 4, 22, 23, 36, 460-463, and 468-471 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. The new matter introduced, “sprayable liquid carrier” lacks written description as originally filed. While the specification does provide on page 5, “the composition are provided in liquid solutions (page 5, lines 8-9)”; “the 2HOP or derivative thereof may be diluted in a spray application solution (page 7, lines 21-22)”, the specification does not provide support explicitly or implicitly for the recitation of “a sprayable liquid carrier”.
Claims 2, 4, 22, 23, 36, 460-463 are dependent from independent claim 1, and are also therefore rejected. Claims 469-471 are dependent from independent claim 468, and are also therefore rejected.
Likewise, the new matter introduced, “the composition is operable to reduce severity of infection caused by said pathogen” in newly added claim 471 lacks written description as originally filed. The original specification does not provide support for this newly added claim limitation.
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 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.
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, 22, 23, 36, and 460-471 are rejected under 35 U.S.C. 103 as being unpatentable over Unkefer et al. (US 2007/0105719, Unkefer et al. ‘719) in view of Unkefer et al. (US 6,831,040, Unkefer et al. ‘040). Unkefer et al. ‘719 and Unkefer et al. ‘040 cited by Applicant on the IDS dated 11/4/2024.
Applicant’s Invention
Applicant claims a foliar composition for increasing plant growth characteristics comprising: a. at least one of 2HOP, and a functional derivative of 2HOP; b. at least one of L-PGA, and a functional derivative of L-PGA; and c. a sprayable liquid carrier. Applicant claims a composition for reducing abiotic stress comprising: a. at least one of 2HOP, and a functional derivative of 2HOP; b. at least one of L-PGA, and a functional derivative of L-PGA; and c. a biocide. Applicant claims a composition for treating a plant suffering from a pathogen infection comprising: a. at least one of 2HOP, and a functional derivative of 2HOP; b. at least one of L-PGA, and a functional derivative of L-PGA; and c. a sprayable liquid carrier.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Regarding claim 1, Unkefer et al. ‘719 teach a composition including a mixture of L- and D-pyroglutamate stereoisomers in a ratio of L to D of from about 80:20 to about 97:3, and a carrier medium (Abstract).
Regarding claims 1 and 486, Unkefer et al. ‘719 teach the compositions including a mixture of L- and D-pyroglutamate stereoisomers with a L to D stereoisomer ratio of from about 80:20 to about 97:3 may be combined with a carrier medium as known in the art. For example, the compositions may be in water, including distilled and tap water, in a fertilizer solution, or in a herbicide solution (page 2, paragraph 15).
Regarding claims 1, 36, 464, 465, 467, 468 and 470, Unkefer et al. ‘719 teach growing oat plants were treated with a mixture of pyroglutamate (isomer ratio 85:15 of L:D) and 2,4-D and their growth monitored. The 2,4-D was included in the mixture at 1/4 of the recommended field strength; a surfactant/wetting agent (Gly Surf P) was also used. The treatment solution was applied with a backpack R&D sprayer using 2 passes over the plants to assure that all plants received treatment solution (page 3, paragraph 41).
Regarding claim 22, Unkefer et al. ‘719 teach the composition may include a carrier. The carrier can also facilitate transportation or handling of seeds and/or plants. The support can be a solid or fluid (e.g. water, alcohols, and liquified gases) (page 1, paragraph 18).
Regarding claim 23, Unkefer et al. ‘719 teach a method of treating seeds prior to planting comprising wetting the seeds directly with a solution of the composition including a mixture of L- and D-pyroglutamate stereoisomers (page 1, paragraph 10).
Regarding claim 36, Unkefer et al. ‘719 teach the composition further includes a herbicide (page 4, claim 4).
Regarding claim 462, Unkefer et al. ‘719 teach oat seedlings, growing vigorously in a greenhouse, were treated with a mixture of 2,4-D and pyroglutamate (13.5 g/L) (page 3, paragraph 41).
Regarding claims 465 and 470, Unkefer et al. ‘719 teach the pyroglutamate compositions include one or more surfactants, including anionic and nonionic surfactants (page 2, paragraph 19).
Regarding claims 1 and 468, Unkefer et al. ‘719 teach preferably, the compositions are applied by spraying on the foliage of the plants (page 2, paragraph 21).
Unkefer et al. ‘719 teach the pyroglutamate compositions considerably improves the growth and yield of plants, for example the amount and quantity of the yield (page 2, paragraph 23).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Unkefer et al. ‘719 do not specifically disclose a composition comprising 2HOP; 2HOP is present in the composition in a range of about 0.01 wt.% to about 99.9 wt.%, as claimed in claim 460; the L-PGA is present in the composition in a range of about 0.01 wt.% to about 99.9 wt.%, as claimed in claim 461; the weight ratio of 2HOP and L-PGA is about 1:5 to about 1:7, as claimed in claim 463; or the weight ratio of 2HOP to L-PGA is in the range of about 1:1 to 1:10, as claimed in claims 466 and 469. It is for this reason Unkefer et al. ‘040 is added as a secondary reference.
Regarding claims 1 and 468, Unkefer et al. ‘040 teach increasing the concentrations of prolines, such as 2-hydroxy-5-oxoproline, in the foliar portions of plants has been shown to cause an increase in carbon fixation, growth rate, dry weight, nutritional value, nodulation and nitrogen fixation, photosynthetically derived chemical energy and resistance to insect pests over the same property for wild type plants (Abstract). Unkefer et al. ‘040 teach increasing the concentration of prolines in the foliar tissues of a plant to improve plant growth and other properties. This can be accomplished in four ways including: (1) the application of a solution of the proline directly to the foliar portions of the plant by spraying these portions (col. 4, lines 19-24).
Unkefer et al. ‘040 teach that since prolines are readily degraded by commonly occurring microbes, foliar treatment is expected to be more economical and efficient (col. 5, lines 46-49).
Unkefer et al. ‘040 teach a solution of 2-hydroxy-5-oxoproline is applied to the foliar portion of the plant (col. 3, lines 41-43). Unkefer et al. ‘040 teach 2-hydroxy-5-oxoproline is applied at a rate sufficient to maintain an effective concentration of the proline in the leaf during the growing period of the plant (col. 3, lines 44-46).
Regarding claims 23 and 470, Unkefer et al. ‘040 teach the aqueous treatment solution contained 2-hydroxy-5-oxoproline (10 mg/liter) in 0.07% sodium laurel sulfate, and 1.2% glycerol (col. 8, lines 46-49).
Regarding claim 471, Unkefer et al. ‘040 teach a method for improving plant resistance to insect pests over that for a wild type plant, comprising contacting said plant with an effective amount of a proline, wherein said proline is selected from the group consisting of 2-hydroxy-5-oxoproline (2-oxoglutaramate), 5-oxoproline (2-pyrrolidone-5-carboxylic acid), and mixture thereof (col. 14, claim 9).
Finding a prima facie obviousness Rationale and Motivation
(MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Unkefer et al. ‘719 and Unkefer et al. ‘040 and formulate a composition comprising 2HOP and L-PGA. Unkefer et al. ‘719 teach a composition including a mixture of L- and D-pyroglutamate stereoisomers in a ratio of L to D of from about 80:20 to about 97:3, and a carrier medium, specifically a liquid carrier medium that is a foliar spray. Unkefer et al. ‘719 teach L- and D-pyroglutamate stereoisomers improve plant growth and yield. Unkefer et al. ‘719 teach the L-and D-pyroglutamate is combined with a herbicide. Unkefer et al. ‘040 teach increasing the concentrations of prolines, such as 2-hydroxy-5-oxoproline, in the foliar portions of plants has been shown to cause an increase in carbon fixation, growth rate, dry weight, nutritional value, nodulation and nitrogen fixation, photosynthetically derived chemical energy and resistance to insect pests over the same property for wild type plants. Unkefer et al. ‘040 teach a method for improving plant resistance to insect pests over that for a wild type plant, comprising contacting said plant with an effective amount of a proline, wherein said proline is selected from the group consisting of 2-hydroxy-5-oxoproline (2-oxoglutaramate), 5-oxoproline (2-pyrrolidone-5-carboxylic acid), and mixture thereof. In view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional plant growth regulators set forth prima facie obvious subject matter. Therefore, the skilled artisan would have been motivated to formulate the combination of L- and D-pyroglutamate stereoisomers and 2-hydroxy-5-oxoproline as a plant growth regulator composition, with a reasonable expectation of success since Unkefer et al. ‘719 and Unkefer et al. ‘040 teach they provide similar plant growth results. This is further supported in the teaching of Unkefer et al. ‘040 wherein the proline composition is selected from the group consisting of 2-hydroxy-5-oxoproline (2-oxoglutaramate), 5-oxoproline (2-pyrrolidone-5-carboxylic acid), and mixture thereof. 5-oxoproline (2-pyrrolidone-5-carboxylic acid) has a structure similar to L-pyroglutamate. As such, the skilled artisan would have been motivated to combine 2HOP and L-PGA with a reasonable expectation of success, as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007).
One of ordinary skill in the art would have been motivated to use experimentation and optimization to determine the result effective amount of 2HOP and L-PGA to include in the composition. Unkefer et al. ‘719 teach a composition including a mixture of L- and D-pyroglutamate stereoisomers in a ratio of L to D of from about 80:20 to about 97:3, and a carrier medium, specifically a liquid carrier that is sprayable. Unkefer et al. ‘040 teach 2-hydroxy-5-oxoproline is applied at a rate sufficient to maintain an effective concentration of the proline in the leaf during the growing period of the plant. One of ordinary skill in the art would have been motivated to use these teachings to determine the result effective amount of 2HOP and L-PGA, such as those claimed in claims 460 and 461, respectively, to formulate an effective plant growth regulating solution. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Likewise, one of ordinary skill in the art would have been motivated to use experimentation and optimization to determine the result effective weight ratios of 2HOP to L-PGA to include in the composition, as claimed in claims 463, 466, and 469. Unkefer et al. ‘719 teach a composition including a mixture of L- and D-pyroglutamate stereoisomers in a ratio of L to D of from about 80:20 to about 97:3, and a carrier medium, specifically a liquid carrier that is sprayable. Unkefer et al. ‘040 teach 2-hydroxy-5-oxoproline is applied at a rate sufficient to maintain an effective concentration of the proline in the leaf during the growing period of the plant. One of ordinary skill in the art would have been motivated to use these teachings to determine the result effective amount of 2HOP and L-PGA, including a weight ratio of 1:1 to formulate an effective plant growth regulating solution. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Regarding the limitation of claim 471 wherein the composition is operable to reduce severity of infection caused by said pathogen, Unkefer et al. ‘040 teach a method for improving plant resistance to insect pests over that for a wild type plant, comprising contacting said plant with an effective amount of a proline, wherein said proline is selected from the group consisting of 2-hydroxy-5-oxoproline (2-oxoglutaramate), 5-oxoproline (2-pyrrolidone-5-carboxylic acid), and mixture thereof. As such, since the proline composition improves plant resistance to insect pests over that for a wild type plant. It would have been obvious to one of ordinary skill in the art that an improvement of plant resistance will reduce the severity of an infection caused by insect pests, especially since it is over that of a wild type plant, without evidence to the contrary.
Therefore, the claimed 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.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Unkefer et al. (US 2007/0105719, Unkefer et al. ‘719) in view of Unkefer et al. (US 6,831,040, Unkefer et al. ‘040) as applied to claims 1, 22, 23, 36, and 460-462, above, and further in view of Dora Agri-tech Publication (2021).
Applicant’s Invention
Applicant claims a foliar composition for increasing plant growth characteristics comprising: a. at least one of 2HOP, and a functional derivative of 2HOP; b. at least one of L-PGA, and a functional derivative of L-PGA; and c. a sprayable liquid carrier. Applicant claims the composition comprises at least one organic acid. Applicant elects ethylenediaminetetraacetic acid (EDTA) as the organic acid.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Unkefer et al. ‘719 and Unkefer et al. ‘040 with respect to the 35 U.S.C. 103(a) rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Unkefer et al. ‘719 and Unkefer et al. ‘040 do not specifically disclose a composition comprising an organic acid, wherein the organic acid is ethylenediaminetetraacetic acid (EDTA). It is for this reason the Dora Agri-tech Publication is added as a secondary reference.
Dora Agri-tech Publication teaches that ethylenediaminetetraacetic acid (EDTA) series chelating agents are widely used in agriculture and other fields to their own chelating properties, stability and mature synthesis process (page 1, paragraph 3). Dora Agri-tech Publication teaches with the research on the nutrients and fertilizers necessary for crops, it is found that trace elements play an important role in promoting growth of crops and the absorption of nitrogen, phosphorus, and potassium (page 2, Application of EDTA in Agricultural Production, paragraph 1). The development of EDTA chelated organic micro-fertilizer enhances the beneficial synergistic effect between trace elements, improves biological activity, and is easily absorbed by plants (page 2, Application of EDTA in Agricultural Production, paragraph 3). Dora Agri-tech Publication teaches considering the comprehensive benefits such as cost, EDTA series chelating agents will not be replaced for a long period of time in the future and will play an important role (page 2, EDTA Chelated Fertilizer, paragraph 5).
Finding a prima facie obviousness Rationale and Motivation
(MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Unkefer et al. ‘719, Unkefer et al. ‘040 and the Dora Agri-tech Publication and add a stabilizer to the composition. Unkefer et al. ‘719 teach a composition including a mixture of L- and D-pyroglutamate stereoisomers in a ratio of L to D of from about 80:20 to about 97:3, and a carrier medium. Unkefer et al. ‘719 teach L- and D-pyroglutamate stereoisomers improve plant growth and yield. Unkefer et al. ‘040 teach increasing the concentrations of prolines, such as 2-hydroxy-5-oxoproline, in the foliar portions of plants has been shown to cause an increase in carbon fixation, growth rate, dry weight, nutritional value, nodulation and nitrogen fixation, photosynthetically derived chemical energy and resistance to insect pests over the same property for wild type plants. One of ordinary skill in the art would have been motivated to add a known agricultural stabilizer, such as EDTA, to the compositions. The Dora Agri-tech Publication teaches that ethylenediaminetetraacetic acid (EDTA) series chelating agents are widely used in agriculture and other fields to their own chelating properties, stability and mature synthesis process. The development of EDTA chelated organic micro-fertilizer enhances the beneficial synergistic effect between trace elements, improves biological activity, and is easily absorbed by plants. Based on the teachings of the Dora Agri-tech Publication, one of ordinary skill in the art would have found it obvious to add a known agricultural agent, such as EDTA, that is cost-effective and efficient, as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007).
Therefore, the claimed 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.
Response to Arguments
Applicant's arguments filed December 17, 2026 have been fully considered but they are not persuasive. Applicant argues neither reference alone or in combination, discloses or fairly suggests a foliar spray composition comprising both 2-HOP and L-PGA and there is no motivation in the prior art to merge their teachings except through hindsight. Applicant argues that ‘719’s focus is solely on improving pyroglutamate’s effects by using a stereoisomer mixture; it does not contemplate adding any other active compound. Applicant further argues that ‘040 describes that applying pyroglutamate to plants can yield growth benefits. The ‘040 patent does not disclose a single composition or formulation that actually combines 2-HOP and L-PGA together. Applicant agues that nothing in the ‘404 points toward a simultaneous co-application of 2-HOP with L-PGA in a foliar spray or any exception that such combination would be useful.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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). The examiner maintains that Unkefer et al. ‘719 teach a composition including a mixture of L- and D-pyroglutamate stereoisomers in a ratio of L to D of from about 80:20 to about 97:3, and a carrier medium, specifically a liquid carrier medium that is a foliar spray. Unkefer et al. ‘719 teach L- and D-pyroglutamate stereoisomers improve plant growth and yield. Unkefer et al. ‘719 teach the L-and D-pyroglutamate is combined with a herbicide. Unkefer et al. ‘040 teaches plants are treated by application of the solution of 2-hydroxy-5-oxoproline to the foliar portions and that prolines are readily degraded by commonly occurring microbes. Thus, foliar treatment is expected to be more economical and efficient. Unkefer et al. ‘040 teach increasing the concentrations of prolines, such as 2-hydroxy-5-oxoproline, in the foliar portions of plants has been shown to cause an increase in carbon fixation, growth rate, dry weight, nutritional value, nodulation and nitrogen fixation, photosynthetically derived chemical energy and resistance to insect pests over the same property for wild type plants. Based on these teachings Unkefer et al. ‘040 and Unkefer et al ‘791 each teach foliar spray compositions. Unkefer et al. ‘040 teach a method of increasing the rate of growth of plants over that for a wild type plant, comprising contacting said plant with an effective amount of a proline, wherein said proline is selected from the group consisting of 2-hydroxy-5-oxoproline (2-oxoglutaramate), 5-oxoproline (2-pyrrolidone-5-carboxylic acid), and mixture thereof. In view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional plant growth regulators set forth prima facie obvious subject matter. Therefore, the skilled artisan would have been motivated to formulate the combination of L- and D-pyroglutamate stereoisomers and 2-hydroxy-5-oxoproline as a plant growth regulator composition, with a reasonable expectation of success since Unkefer et al. ‘719 and Unkefer et al. ‘040 teach they provide similar plant growth results. This is further supported in the teaching of Unkefer et al. ‘040 wherein the proline composition is selected from the group consisting of 2-hydroxy-5-oxoproline (2-oxoglutaramate), 5-oxoproline (2-pyrrolidone-5-carboxylic acid), and mixture thereof. 5-oxoproline (2-pyrrolidone-5-carboxylic acid) has a structure similar to L-pyroglutamate. As such, a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007).
Applicant argues that claim 1 is patentable over the ‘719 publication in view of ‘040 patent for the additional reason of the unexpected results. Applicant argues the super-additive or synergistic effect shown by the data (e.g. in FIGS. 15 and 16) is unexpected. In response to Applicant’s argument, evidence of nonobviousness must be commensurate in scope with that of the claimed subject matter. Applicant claims a foliar composition for increasing plant growth characteristics comprising: a. at least one of 2HOP, and a functional derivative of 2HOP; b. at least one of L-PGA, and a functional derivative of L-PGA; and c. a sprayable liquid carrier. The data in Fig. 15, Table 20 indicates that L-PGA (8.5 g/T) + 2HOP (1.5 g/T) provides a small increase in yield compared to L-PGA (10g/T) and 2HOP (10g/T). The comparative examples of L-PGA and 2HOP use 10 g/T each, while the composition comprising L-PGA + 2HOP comprises 8.5 g/T and 1.5 g/T, respectively. While the total application is 10 g/T, this is not comparing the same amount of L-PGA and 2HOP used in the comparative examples. The test composition comprising L-PGA and 2HOP was not applied at the same application rate to provide a good comparison. In addition, the claims are directed a composition comprising L-PGA at any concentration and 2HOP at any concentration. It cannot be determined if compositions outside the exemplified amount will provide the same purported increase in yield. The data in Fig. 16, Table 21 indicates that there is an increase in yield with a composition comprising 2HOP + L-PGA compared to compositions comprising L-PGA and 2HOP, alone. Based on the original specification, 85% of L-PGA was applied and 15% of 2HOP was applied. This data is not commensurate in scope with the claimed invention wherein L-PGA and 2HOP are applied at any amount. It cannot be determined if compositions outside the exemplified amount will provide the same purported increase in yield.
While Applicant does not have to show examples applying all concentrations, weight ratios, or weight percentages of compositions comprising L-PGA and 2HOP, Applicant should show enough to show a trend. Applicant has not proven to provide a trend in the exemplified data which would allow the skilled artisan to reasonably extend the probative value thereof. See In re Kollmann and Irwin, 201 USPQ 193 (C.C.P.A. 1979). Applicant has not established nonobvious evidence that is commensurate in scope with that of the claimed subject matter.
Applicant argues that Dora Agri-Tech fails to cure the deficiencies of the ‘719 publication in view of the ‘040 patent explained above. In response to Applicant’s argument, the Dora-Agri-Tech Publication to provide a motivation to use EDTA in the composition, not to provide a motivation to formulate a composition comprising L-PGA and 2HOP, as indicated hereinabove.
The claims remain rejected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614