DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Receipt and consideration of Applicant’s amended claim set and Applicant’s arguments/remarks submitted on June 19, 2026 are acknowledged.
All rejections/objections not explicitly maintained in the instant office action have been withdrawn per Applicant’s claim amendments and/or persuasive arguments. Applicant’s claim amendments have necessitated new grounds of rejections set forth below.
Status of the Claims
Claims 1-20 are pending. Claims 14-20 are withdrawn. Claims 1-13 are under consideration in this action.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 19, 2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13) in the reply filed on October 16, 2025 is acknowledged.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Scheer et al. (Scheer) (US 2015/0230462 A1; published Aug. 20, 2015) and Silverman et al. (Silverman) (US 2021/0259252 A1; of record).
With Claims 1 and 6, Scheer discloses a seed treatment with one or more jasmonates, which is effective for improving a germination characteristic of the seed and for improving a stress tolerance characteristic of the seed. Embodiments also encompass situations in which a jasmonate is applied to seeds not to improve their germination characteristics per se, but to obtain other jasmonate-mediated benefits later in the plant life cycle without compromising the germination characteristics of the seeds (abstract; para.0011, 0109, 0110). Among the suitable jasmonates for use are those with stress tolerance or germination promoting activity, such as jasmonic acid (par.0012).
Examples of biotic stress factors which may be targeted for defense activating application of jasmonates include bacteria, viruses, fungi, parasites, insects, weeds, and other plants, as well as pests, such as herbivores. Examples of abiotic stress factors which may be targeted for defense activating application of jasmonates include drought, salt stress, osmotic stress, cold stress, heat stress, variations in temperature, mechanical stress, extreme wetness, nutrient deficiency, nutrient excess, radiation stress, atmospheric pollution, and soil pollution, soil quality, soil pH. The biotic or abiotic stresses may be any stress that involves the jasmonate/ethylene pathway or the salicylic acid pathway (para.0111).
To improve seed germination or stress tolerance characteristics, the jasmonate may be applied in a formulation (e.g., aqueous solution, solid preparations, or liquid suspensions) comprising other elements, compounds, or substances. The formulation may include plant nutrients, plant growth regulators, plant defense activators, or other active compounds (para.0070).
The seeds that may be treated include seeds of a variety of vegetables including soybean, wheat corn, tomato, and beans (para.0115).
With regards to Claims 10-12, the jasmonates may be present at a concentration of 0.001% to 0.01% (10 to 100 ppm) (par.0099).
With regards to Claim 13, the jasmonate may be applied in a formulation with other compounds such as wetting agents, adjuvants, and dispersants (para.0070).
Scheer does not appear to explicitly disclose the inclusion of 1-amino-1-cyclopropanecarboxylic acid (ACC) as recited in the instant claims 1 and 6; the ratio of ACC and jasmonic acid as recited in the instant claims 2-5; or the amount of ACC as recited in claims 7-9. Silverman is relied upon for these disclosures. The teachings of Silverman are set forth herein below.
Silverman discloses methods of improving heat stress tolerance in plants comprising applying an effective amount of 1-amino-1-cyclopropanecarboxylic acid (ACC) to the plant (abstract; para.0001) (Claims 1 and 6). Among the suitable plants for treatment include wheat, corn, soybean, tomato, and bean (para.0006; 0016, 0018). The term “improving” is defined as increasing growth and/or yield of the plant exposed to heat stress (para.0012).
The effective amount of ACC is from about 1 to about 1000 ppm, more preferably from about 1 to about 500 ppm, even more preferably from about 10 to 300 ppm, yet more preferably from about 30 to about 300 ppm, and most preferably from about 30 to about 100 ppm (para.0019) (Claims 7-9).
The methods contemplate application of ACC to the plant during any growth stage of the plant (para.0021). The ACC can be applied by any convenient means. The ACC may be applied as a seed treatment (para.0026).
With regards to Claims 1 and 6-9, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Scheer and Silverman and add in ACC in amounts disclosed by Silverman into Scheer’s jasmonate (jasmonic acid) formulation. One of ordinary skill in the art would have been motivated to do so in order to obtain the advantage of both Scheer’s and Silverman’s active ingredients when treating crops (e.g., wheat, corn soybean, etc.), such as improving the growth and/or yield of corn even when exposed to heat stress (Silverman) and/or providing additional jasmonate-mediated benefits (e.g., stress tolerance) against biotic and abiotic stress factors discussed above in Scheer. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as both Scheer and Silverman are directed to plant growth promoters for application to various crops (such as wheat, soybean, corn, tomato, and beans), both of which may be seed treatment formulations for application to corn. Furthermore, Scheer discloses that their jasmonate formulation may be used with other active compounds such as plant growth regulators and plant defense activators.
Furthermore, as a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. In the present case, both Scheer and Silverman are each directed to compositions useful for promoting the growth of plants (e.g., wheat, soybean, corn, tomato, and beans) and being combined for the very same purpose.
With regards to the limitation in the instant Claim 1, “wherein 1-amino-1-cyclopropanecarboxylic acid, a hydrate thereof, a polymorph thereof of a salt thereof and jasmonic acid are the only agriculturally active ingredients,” the only agriculturally active ingredient required in Scheer is a jasmonate, which may be jasmonic acid, and the only agriculturally active ingredient required in Silverman is ACC. Thus, absent evidence to the contrary, the combined teachings of Scheer and Silverman as discussed above only require jasmonic acid and ACC as the agriculturally active ingredients in the formulation.
With regards to the ratios as recited in Claims 2-5, as discussed above, Scheer discloses jasmonate (jasmonic acid) may be present at a concentration of 0.001% to 0.01% (10 to 100 ppm), and Silverman discloses that the effective amount of ACC is from about 1 to about 1000 ppm, and most preferably from about 30 to about 100 ppm. In light of these prior art disclosed effective amounts for providing plant growth promoting effects and improving stress tolerance, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. In particular, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to engage in routine experimentation and determine the optimal amount of each ingredient within the prior art disclosed ranges to add into the composition in order to best achieve the desired results based on art recognized factors such as the environment (e.g., climate) where the crop is being grown and what environmental stress factors the crop is subject to face during its growth cycle. Where 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, 105 USPQ 233 (CCPA 1955). One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Scheer and Silverman disclose art recognized ranges of amounts of jasmonic acid and ACC, respectively, known for providing growth promoting effects.
Further regarding the amounts and ranges disclosed by the prior art, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 [R-5].
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Response to Arguments
Applicant's arguments filed June 19, 2026 have been fully considered but they are not persuasive.
(1) Applicant argues the application demonstrates evidence of unexpected results, in particular, that a mixture of ACC and jasmonic acid synergistically enhanced coloration of a variety of apples at various concentrations (e.g., Examples 1-13 in Specification). Applicant argues that a skilled artisan would not have a reasonable expectation from the cited prior art that a synergistic effect would occur for any purpose for the claimed mixture.
With regards to Applicant’s argument (1), the traversal argument is not found persuasive. While the motivation for combining Scheer and Silverman in the rejection set forth above is different from Applicant’s rationale for combining ACC and jasmonic acid, note MPEP 2144(IV): “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).”
Furthermore, the results shown in the instant specification are not commensurate in scope with the claims as the effects are seen when applied to apples, but the instant claims are directed to a composition and do not require the application to apples.
Additionally, it appears that the purported synergism is based on the OCE/ECE ratios calculated for each of Examples 1-13 in the Specification (i.e., an OCE/ECE ratio greater than 1 indicating a greater than expected interaction being present in the mixture (Spec. para.026)). However, it appears that the OCE/ECE ratios are comparing the performance of the combination of jasmonic acid and ACC to a control (Regulaid®). Each of the cited prior art references discussed above explicitly disclose the use of jasmonic acid and ACC each as active ingredients. It is not clear that the OCE/ECE ratios necessarily demonstrate that the combination of jasmonic acid and ACC result in synergism compared to using jasmonic acid alone or using ACC alone. Across Examples 1-13, it does not appear consistent that using a combination of jasmonic acid and ACC consistently provide a greater than additive effect in apple coloration over jasmonic acid alone or ACC alone in all varieties of apple tested or in all amounts/ratios encompassed by the instant claims (see e.g., Example 2, Table 2; Examples 4-7; Examples 9-13).
Conclusion
Claims 1-13 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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/MONICA A SHIN/Primary Examiner, Art Unit 1616
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