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 .
Claims 1-8 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1 and 2 in the reply filed on 03/20/2026 is acknowledged. The traversal is on the ground(s) that the examiner has not provided sufficient reasoning or evidence to establish that a proper examination of the claimed inventions would require distinct and separate searches, nor has the examiner demonstrated that examining the various groups and species would be unduly burdensome and that there is substantial overlap in the search and examination requirements for the group of inventions. This is not found persuasive because Applicant’s assertion that the restriction requirement is improper is not consistent with the fact pattern of the instant case. The Requirement for Restriction mailed 01/28/2026 establishes the independent and distinctness of each group of inventions and also the inventions are classified under different classifications. Moreover, in addition to searching for limitations such as method steps, not present in the group directed to the product, inventions directed to processes have different considerations under 35 USC §§ 101 and 112 than product inventions.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 1 and 2 are objected to because of the following informalities: Claims 1 and 2 do not formally recite one of the statutory categories of invention in the preamble. Although the body of the claims and the response to the restriction requirement make clear that the invention delineated by claims 1 and 2 is a composition of matter the examiner recommends respectively amending claims 1 and 2 to recite “A composition for regulating highland barley…” and “The composition for regulating highland barley according to claim 1…”. Appropriate correction is required.
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.
Claims 1 and 2 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.
The phrase “using water as a solvent” renders claim 1 indefinite because it is unclear whether the claimed invention requires water to be present.
Claim 1 contains the trademark/trade name Tween in two locations. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe an active agent and, accordingly, the identification/description is indefinite.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Claim Rejections - 35 USC § 103
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.
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 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Dong (CN 102027994; 04/27/2011) in view of Hopkinson et al. (US 20030050194; publication date: 03/13/2013) and Deng et al. (CN 106234360; publication date: 12/21/2016).
With regard to claim 1, Dong discloses a regulator for increasing low temperature resistance, increasing lodging resistance, enlarging ears, increasing grains and increasing yield for paddy and a preparation method thereof. The regulator comprises 50-150g/L of poly-aspartate, 20-30g/L of plant growth regulator and 65-67g/L of activator and spreader, and the solvent is water (abstract; limitations of instant claim 1). The activator and spreading agent is Tween 20.
Dong does not disclose lentinan or ethephon.
Hopkinson discloses that ethephon is a plant growth regulator (claim 19).
Deng discloses that lentinan is a plant growth regulator (abstract).
It would have been prima facie obvious to use ethephon and lentinan as the plant growth regulators in Dong’s invention because they were recognized in the agricultural arts as of the instant effective filing date to serve the same purpose as the plant growth regulators disclosed by Dong. See MPEP 2144.06(II).
With regard to the concentrations of each substance required by the instant claims, as noted above, the composition contains 50-150 g/L polyaspartate, which overlaps with the amount required by the instant claims. See MPEP 2144.05(I). Deng discloses a range of 20-30 g/L plant growth regulator for the specific substance alpha-naphthalene acetic acid. As discussed above, it would have been obvious to replace the plant growth regulator disclosed by Deng with other substances known in the art to serve the same purpose. The examiner considers it a matter of routine testing to discover optimal concentrations of the ethephon and lentinan to achieve their known plant growth regulating effects, recognizing that the optimal concentration would likely differ depending upon the specific plant growth regulating substance and also depending upon the identity of the crop to be treated. See MPEP 2144.05(II)(A): Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The amount of “activator and spreader”, preferably Tween 20, is taught to provide the following benefits: promote the infiltration of the drug solution on the surface of the plant leaves, promote the absorption of the drug solution, and effectively improve the effect of the drug solution (page 4). Although the range in concentration of activator and spreader disclosed by Deng falls above the range recited in the instant claims, the examiner considers it a matter of routine to optimize the quantity of activator/spreader required to achieve the stated benefits, which may vary depending upon the identity of the plant growth regulator substance (see MPEP 2144.05(II)(A) noted above).
With regard to claim 2, the polyaspartate is potassium polyaspartate (page 1).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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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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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617