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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/5/2026 has been entered.
Information Disclosure Statement
Receipt of Information Disclosure Statement filed on 4/5/2026 is acknowledged.
Status of Action/Claims
Receipt of Remarks/Amendments filed on 4/5/2026 is acknowledged. Claims 1-3, 10-13, 15-17 and 19-24 are currently pending and presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn.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 presently being applied to the instant application.
Withdrawn Rejections
Applicant’s arguments/amendments, filed 4/5/2026, with respect to the previous 112(b) rejections have been fully considered and are persuasive. The previous 112(b) rejections have been withdrawn due to claim amendments.
New/Maintained Claim Objection(s) / Rejection(s)
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 of this title, 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 1-3, 10-13, 15-17 and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over FR2405650 in view of Coleman (US 2004/0266852 A1; Dec. 30, 2004), Egel (Purdue Extension Publication, Dec. 2015) and Juma (Biological Control, Volume 90, November 2015, Pages 92-95).
FR2405650 discloses an example of the practical conditions for treatment with (L) phenyl alanine, in the case of fusarium silt tomatoes. Phenyl alanine is dissolved in water (carrier). (page 3, lines 82-86, Translation).
Plantlets of lycopersicum esculentum, variety Saint-Pierre, are cultivated (page 3, lines 8-89, Translation) (claim 15, tomato).
Twelve days after emergence, when the seedlings have two developed leaves, following immersion in the mineral medium (claim 11 - applying pre-harvest, claim 12 - blossom stage), the tanks are immersed daily for 10 hours in a solution of (L) phenyl alanine M/100 this for 3 consecutive days (repeated application) (page 3, lines 95-97, Translation). The reference teaches immersion of developed leaves in a solution of phenylalanine. FR2405650 also discloses the treatment of plants infested by fungi is carried out by periodically watering the crops with aqueous solution of phenylalanine (page 2, line 69-70, Translation).
After the 3 days of treatment, the plantlets to be inoculated are pulled up. After washing the roots, their ends are cut to facilitate the penetration of the pathogen. The root system is then immersed for two hours in a suspension of conidia containing on the order of 8 to 10 x106 conidia/ml of Fusarium oxysporum F. sp. Lycopersici (page 3, lines 100-104, Translation). To estimate the severity of the disease triggered by fusarium, the size of the plants is measured as a function of time, the date of infestation, being time zero of the experiment, only aerial part being considered (page 3, lines 112-114, Translation). The treatment carried out with (L) phenyl alanine M/100 completely protects the tomato plants from Fusarium wilt and that the size of the plants is not influenced by the treatment with (L) phenyl alanine (page 4, lines 131-133, Translation). The reference teaches using ~10 mM concentrated phenylalanine (phenylalanine’s MW as 165g/mol, and the reference teaches dissolving 1.65g of phenylalanine in 1L volume) (page 3, line 85, Translation). Thus, the amount of approximately 10mM phenylalanine taught by FR2405650 is effective to inhibit germination of fungal spores (Fusarium oxysporum) because FR2405650 teaches this amount of phenylalanine completely protects the tomato plants from Fusarium wilt. Moreover, the instant specification (Fig. 1A – Fig. 1E) disclose 15 mM of phenylalanine being effective to reduce necrosis or chlorosis and approximately 10 mM of phenylalanine taught by FR2405650 reads on 15 mM of phenylalanine.
The reference teaches carrying out the treatment in “a condition room” (page 3, lines 100+, Translation), which reads on the “storage facility” as the term can be broadly and reasonably interpreted to be any room.
The teachings of FR2405650 have been set forth above.
As discussed supra, FR2405650 discloses the treatment of plants infested by fungi can be carried out by periodically watering the crops with aqueous solution of phenylalanine. FR2405650 does not teach the application method comprises spraying and wherein the composition is formulated as a spray. FR2405650 also does not teach spraying specifically flower of the plant and wherein repeated spraying comprises weekly spraying said flower of said plant during blossom pre-harvest. FR2405650 also does not teach the particular fungal infection of the plant such as the ones recited in instant claims. However, these deficiencies are cured by Coleman, Egel and Juma.
Coleman teaches a method of controlling fungal infection in crops, said method comprising applying to the crop an effective amount of a fungicidal composition comprising a fatty acid or a salt thereof and an organic carboxylic acid different from the fatty acid, selected from phenylalanine and tyrosine. The composition can be applied to flower, leaves or any other component of a plant before or after harvesting. (claims 1, 9, 20, 26-28; para 0021; 0015). The composition can be provided and applied to the crops either as a spray or dipped solution and can be used as a single or multiple treatment application. Coleman teaches the agricultural composition can be applied either as a pre-emergent, post-emergent, foliar or post-harvest application (pre-harvest, post-bloom stage, bloom stage, or pre-bloom stage). (para 0015; 0026; 0032). Coleman teaches fungus is selected from Botrytis cinereal and Alternaria sp. (Para 0033). Coleman also teaches phenylalanine exhibits fungicide activity against Pythium species. (Para 0033).
Egel discloses tomato plants are known to have fungal infection caused by Botrytis cinereal (gray mold) and Sclerotinia sclerotiorum (white mold) (see: Pages 2 and 3). Juma reference teaches tomato plants are known to have fungal infection caused by Pythium aphanidermatum (see: Pages 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of FR2405650, Coleman, Egel and Juma and use phenylalanine taught by FR2405650 for controlling fungal infection caused by Botrytis cinereal and Pythium aphanidermatum in plants such as tomato plant. Coleman teaches the use of phenylalanine for controlling fungal infections caused by Botrytis cinereal and Pythium species, Egel discloses tomato plants are known to have fungal infection caused by Botrytis cinereal (gray mold) and Sclerotinia sclerotiorum and Juma teaches tomato plants are known to have fungal infection caused by Pythium aphanidermatum. Since FR2405650 teaches applying phenylalanine to tomato plant to control fungal infections, one would have been highly motivated to use phenylalanine to control fungal infections caused by Botrytis cinereal and Pythium aphanidermatum in tomato plants because Egel and Juma teach tomato plants are known to have fungal infection caused by Botrytis cinereal and Pythium aphanidermatum and Coleman teaches the use of phenylalanine for controlling fungal infections caused by Botrytis cinereal and Pythium species.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of FR2405650, Coleman, Egel and Juma and apply the composition of FR2405650 as a spray as taught by Coleman because this method of application of phenylalanine for controlling fungal infection in plants was known in the art as shown by Coleman. Particularly, FR2405650 discloses application can be carried out by watering the crops with phenylalanine composition and watering encompasses spraying. Since Coleman teaches composition comprising phenylalanine can be applied by spraying, it would have been obvious to skilled artisan to use this method for application of the composition of FR2405650.
It would also have been obvious to one skilled in the art to spray specifically flower of the plant and wherein repeated spraying comprises weekly spraying said flower of said plant during blossom pre-harvest. As discussed supra, FR2405650 teaches repeated application of the composition to leaves of the plant during pre-harvest and blossom stage, and Coleman teaches composition comprising phenylalanine to control fungal infection can be applied, in multiple treatments, to flower, leaves or any other component of a plant before harvesting during bloom stage. Therefore, it would have been obvious to one skilled in the art to apply the composition to flower or leaves of the plant because both Coleman and FR2405650 are directed to controlling fungal infection in plants and Coleman teaches the composition can be applied to leaves or flower. With respect to the method step of weekly application, it would have been obvious to one skilled in the art to manipulate and optimize the frequency of application which would depend on the severity of fungal infection, and size and number of crops being treated.
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 because every element of the invention has been fairly suggested by the cited references.
Response to Arguments
Applicant argued FR2405650 states that the development of tomato downy mildew is not inhibited by treatment of the method of the invention and which is a parasite developing on the outer part of tomato leaves. Applicant submits that one skilled in the art would acknowledge that mildew and mold are closely related foliar fungal diseases. Like downy mildew, gray mold (Botrytis cinerea) and white mold (Sclerotinia sclerotiorum) are parasites that develop on the outer parts of plants rather than within the vascular system. Given FR2405650’s explicit teaching that phenylalanine treatment does not inhibit downy mildew, a skilled artisan would have been discouraged from attempting to treat other types of molds disrupting the foliage of a plant, such as gray mold (Botrytis) and white mold (Sclerotinia), with phenylalanine. Applicant argued U.S Environmental Protection Agency (EPA) states that Mildew refers to certain kinds of mold or fungus.. the term mildew is often used generically to refer to mold growth.
In response, firstly the examiner notes that applicant provide a webpage link to EPA, however no supporting document has been submitted. Thus, the examiner requests the applicant submit the support document for the reference to EPA to be considered. Further, the examiner argues that while FR2405650 states that the development of tomato downy mildew is not inhibited by treatment of the method of the invention, this does not suggest that treatment with phenylalanine would not inhibit any other fungal pathogen such as gray mold (Botrytis) and white mold (Sclerotinia). Applicant appear to argue that because downy mildew, gray mold (Botrytis cinerea) and white mold (Sclerotinia sclerotiorum) are parasites that develop on the outer parts of plants, one skilled in the art would come to the conclusion that phenylalanine would also not inhibit gray mold and white mold. However, downy mildew is a plant disease caused by different pathogen than gray mold (Botrytis cinerea) and white mold (Sclerotinia sclerotiorum) and one would expect that phenylalanine not inhibiting downy mildew pathogen does not necessarily mean that it would also not inhibit other pathogens that cause disease in tomato plants, such as gray mold (Botrytis cinerea) and white mold (Sclerotinia sclerotiorum).
Further, as discussed supra, FR2405650 teaches applying to the plant (i.e., tomato plant) ~10 mM of phenylalanine. As disclosed by the Egel reference, tomato plants are known to have fungal infection caused by Botrytis cinereal (gray mold) and Sclerotinia sclerotiorum (white mold) (see: Pages 2 and 3). Also, as disclosed by Coleman, phenylalanine was known to be used against fungal infection caused by Botrytis cinereal (Para 0033; Claim 1). Since FR2405650 teaches the method of applying to the plant (i.e., tomato plant) ~10 mM of phenylalanine as required in the instant claims, the method taught by the reference would necessarily result in controlling the fungus infection caused by the fungus recited in the instant claim because tomato plants are capable of fungal infection caused by Botrytis cinereal (gray mold) and Sclerotinia sclerotiorum (white mold) and phenylalanine was known to have antifungal properties against the fungus recited in the instant claims. The claims recite a method of controlling a foliage fungus infection in a plant susceptible thereto, and FR2405650 teaches application of phenylalanine to tomato plants and, as discussed supra, tomato plants are known to be susceptible to the fungal pathogens recited in the claims. The cited prior art teaches the same method as recited in the instant claims, therefore, the properties possessed by the composition of the instant application, control of fungus infection in the fruit, the leaf, the seed, or the flower, would be possessed by the prior art. Where the claimed and prior art product(s) are identical or substantially identical, the burden of proof is on applicant to establish that the prior art product(s) do not necessarily or inherently possess the characteristics of the instantly claimed product(s), see In re Best, 195 USPQ 430.
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 for 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 1-3, 10-13, 15-17 and 19-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11812746B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘746 patent claims a method of treating a fungus infection in a fruit, a leaf, a seed, or a flower of a plant, the method comprising selecting a plant infected with a fungus selected from the group consisting of Botrytis, Plenodomus tracheiphilus syn Phoma tracheiphila, Sclerotinia sclerotiorum, Pythium aphanidermatum and Alternaria; and applying to said plant infected with said fungus a composition comprising a carrier and active agent, wherein said active agent consists of 2-30 mM of phenylalanine for treating said fungus infection. Applying comprises pre-harvest applying or post-harvest applying. Said plant is at a post-blossom stage, at a blossom stage, or at a pre-blossom stage. Phenylalanine is formulated in a composition selected from the group consisting of a dip, a spray or a concentrate. Applying is by irrigation, drenching, dipping, soaking, injection, coating or spraying. Plant is selected from the group consisting of petunia, tomato, sweet basil, cucumber, avocado, strawberry, grape, apple, blueberry, cherry, bean, cabbage, carrot, onion and lemon. Applying is in a storage facility. Applying comprises repeated application. Applying comprises weekly administration during blossom pre-harvest. Applying is by spraying.
The difference between the instant claims and ‘746 patent is that the instant claims recite a method of controlling a fungus infection and ‘746 recites a method of treating a fungus infection. However, treating a fungus infection would constitute controlling of the fungus infection and therefore the instant claims and ‘746 patent claims overlap and the limitations “treating” and “controlling” are obvious variants of one another.
Response to Arguments
Applicant have not provided any arguments related to the double patenting rejection above and therefore, the rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALI SAEED whose telephone number is (571)272-2371. The examiner can normally be reached M-F 8-5 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, SUE X LIU can be reached at 5712725539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALI S SAEED/ Examiner, Art Unit 1616
Prosecution Insights