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 .
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) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uzquiza et al. (Am. J. Enol. Vitic., 2014, 65(4), 504-509), in view of Takahashi et al. (Plants (Basel), 2021, 10(9), 1920).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 6, and 13, Uzquiza teaches agricultural treatments/compositions comprising 1-amino-1-cyclopropanecarboxylic acid, a hydrate thereof, a polymorph thereof or a salt thereof and a jasmonate derivative, specifically methyl jasmonate and wherein the mixture/composition further comprises an adjuvant, specifically Latron-B 1956 (see entire document; abstract; experiment 1; Results section, Table 1; discussion section).
Regarding claims 2-5, Uzquiza teaches wherein the 1-aminocyclopropanecarboxylic acid and methyl jasmonate are used together in weight concentration ratios of 1:2 to 1.48:1 (see entire document; abstract; experiment 1; Results section, Table 1; discussion section).
Regarding claims 7-8 and 10, Uzquiza teaches wherein the 1-aminocyclopropanecarboxylic acid (ACC) and methyl jasmonate are used in ppm ranges of about 1 to about 1000 ppm as is instantly claimed (specifically they use 500 or 1000 mg/L of ACC and 672 or 1344 mg/L of methyl jasmonate), and which also reads on the claimed about 10 to about 500 ppm of ACC that is instantly claimed (see entire document; abstract; experiment 1; Results section, Table 1; discussion section).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-13, Uzquiza does not teach wherein the jasmonate derivative is the claimed prohydrojasmon. However, this deficiency in Uzquiza is addressed by Takahashi.
Takahashi teaches that prohydrojasmon is a synthetic jasmonate analogue and functions similarly to methyl jasmonate, and that jasmonic acid and its derivatives (which would include prohydrojasmon and methyl jasmonate) function similarly to each other as plant hormones and/or plant growth regulators in higher plants that control fruit ripening and coloration including pigment accumulation (see entire document; 6th paragraph discussion section; 5th paragraph introduction section).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Regarding claims 1 and 6, it would have been obvious to substitute and/or combine the prohydrojasmon of Takahashi in place of and/or with the methyl jasmonate of Uzquiza in order to form the claimed combination because Takahashi teaches wherein prohydrojasmon is a synthetic jasmonate which functions similarly to methyl jasmonate. One of ordinary skill in the art would want to do this in order to form additional effective compositions for improving grape abscission.
Regarding claims 1-5, it would have been obvious to substitute the prohydrojasmon of Takahashi in place of the methyl jasmonate of Uzquiza in the same concentrations that are instantly claimed and taught by Uzquiza in order to form the claimed combinations/compositions because Takahashi teaches wherein prohydrojasmon is a synthetic jasmonate which functions similarly to methyl jasmonate. One of ordinary skill in the art would want to do this in order to form additional effective compositions for improving grape abscission.
Regarding claims 6-12, it would have been obvious to one of ordinary skill in the art to have optimized the concentrations of prohydrojasmon and 1-aminocyclopropane carboxylic acid to read on the claimed amounts because Uziquiza teaches using similar and/or overlapping amounts of 1-aminocyclopropanecarboxylic acid and similar and/or overlapping amounts of other jasmonates, and as such it would be obvious to use the claimed prohydrojasmon in place of the methyl jasmonate and to optimize the amounts of prohydrojasmon using the amounts of methyl jasmonate as a starting point to determine the most effective amounts of prohydrojasmon for combining with 1-aminocyclopropane carboxylic acid. Further, it was known to optimize the amounts active agents, in the instant case it would be obvious to optimize the amounts of the claimed 1-aminocyclopropane carboxylic acid and the claimed prohydrojasmon in order to form the most effective combinations/compositions because, “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).
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.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10517299 (‘299) in view of Uzquiza et al. (Am. J. Enol. Vitic., 2014, 65(4), 504-509), in view of Takahashi et al. (Plants (Basel), 2021, 10(9), 1920). ‘299 teaches compositions/formulations comprising applicant’s 1-amino-1-cyclopropanecarboxylic acid (ACC) for use in fruit coloration with the claimed excipients/chelating agents. ‘299 does not teach wherein the composition comprises the claimed prohydrojasmon or wherein the ACC and prohydrojasmon are present in the claimed ratios and concentrations. This deficiency in ‘299 is addressed by Uzquiza and Takahashi.
Takahashi teaches that prohydrojasmon is a synthetic jasmonate analogue and functions similarly to methyl jasmonate, and that jasmonic acid and its derivatives (which would include prohydrojasmon and methyl jasmonate) function similarly to each other as plant hormones and/or plant growth regulators in higher plants that control fruit ripening and coloration including pigment accumulation (see entire document; 6th paragraph discussion section; 5th paragraph introduction section).
Uzquiza teaches agricultural treatments/compositions comprising 1-amino-1-cyclopropanecarboxylic acid, a hydrate thereof, a polymorph thereof or a salt thereof and a jasmonate derivative, specifically methyl jasmonate and wherein the mixture/composition further comprises an adjuvant, specifically Latron-B 1956 (see entire document; abstract; experiment 1; Results section, Table 1; discussion section). Uzquiza also teaches wherein the 1-aminocyclopropanecarboxylic acid and methyl jasmonate are used together in weight concentration ratios of 1:2 to 1.48:1 (see entire document; abstract; experiment 1; Results section, Table 1; discussion section).
Uzquiza also teaches wherein the 1-aminocyclopropanecarboxylic acid (ACC) and methyl jasmonate are used in ppm ranges of about 1 to about 1000 ppm as is instantly claimed (specifically they use 500 or 1000 mg/L of ACC and 672 or 1344 mg/L of methyl jasmonate), and which also reads on the claimed about 10 to about 500 ppm of ACC that is instantly claimed (see entire document; abstract; experiment 1; Results section, Table 1; discussion section).
It would have been obvious to add the prohydrojasmon of Takahashi into the compositions of ‘299 in order to form the claimed mixtures/compositions because Takahashi teaches wherein prohydrojasmon is a synthetic jasmonate which functions similarly to methyl jasmonate/jasmonic acids as plant hormones and/or plant growth regulators in higher plants that control fruit ripening and coloration including pigment accumulation. One of ordinary skill in the art would want to do this in order to add additional active agents which help to improve fruit coloration to form a new effective composition for enhancing fruit coloration.
It also would have been obvious to add the prohydrojasmon of Takahashi into the compositions of ‘299 in the same ratios and concentrations that are instantly claimed and taught by Uzquiza in order to form the claimed combinations/compositions because Takahashi teaches wherein prohydrojasmon is a synthetic jasmonate and that jasmonic acid and jasmonate derivatives function similarly to each other as plant hormones and/or plant growth regulators in higher plants that control fruit ripening and coloration including pigment accumulation. One of ordinary skill in the art would want to do this in order to form additional effective compositions for improving grape/fruit coloration and abscission. Further, it would be obvious to optimize the amounts/ratios of the ACC and the prohydrojasmon active agents in the composition of ‘299 as taught by the combined references in order to read on the claimed amounts in the mixtures and compositions because “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).
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19245857 (‘857) in view of Takahashi et al. (Plants (Basel), 2021, 10(9), 1920) and Uzquiza et al. (Am. J. Enol. Vitic., 2014, 65(4), 504-509).
‘857 teaches compositions comprising the claimed 1-aminocyclopropane carboxylic acid which are used methods of enhancing grape coloration and wherein the compositions can comprise at least one of the claimed excipients that are instantly claimed. ‘857 does not teach wherein the 1-aminocyclopropane carboxylic acid is used with the claimed prohydrojasmon in the claimed ratios and concentrations. However, these deficiencies in ‘857 are addressed by Takahashi and Uzquiza.
Takahashi teaches that prohydrojasmon is a synthetic jasmonate analogue and functions similarly to methyl jasmonate, and that jasmonic acid and its derivatives (which would include prohydrojasmon and methyl jasmonate) function similarly to each other as plant hormones and/or plant growth regulators in higher plants that control fruit ripening and coloration including pigment accumulation (see entire document; 6th paragraph discussion section; 5th paragraph introduction section).
Uzquiza teaches that it was known to use combinations of 1-aminocyclopropane carboxylic acid and other jasmonates, specifically methyl jasmonate on grapes to also promote berry abscission in concentrations/ratios which overlap those instantly claimed.
Specifically, Uzquiza teaches agricultural treatments/compositions comprising 1-amino-1-cyclopropanecarboxylic acid, a hydrate thereof, a polymorph thereof or a salt thereof and a jasmonate derivative, specifically methyl jasmonate and wherein the mixture/composition further comprises an adjuvant, specifically Latron-B 1956 (see entire document; abstract; experiment 1; Results section, Table 1; discussion section).
Uzquiza teaches wherein the 1-aminocyclopropanecarboxylic acid and methyl jasmonate are used together in weight concentration ratios of 1:2 to 1.48:1 (see entire document; abstract; experiment 1; Results section, Table 1; discussion section).
Uzquiza teaches wherein the 1-aminocyclopropanecarboxylic acid (ACC) and methyl jasmonate are used in ppm ranges of about 1 to about 1000 ppm as is instantly claimed (specifically they use 500 or 1000 mg/L of ACC and 672 or 1344 mg/L of methyl jasmonate), and which also reads on the claimed about 10 to about 500 ppm of ACC that is instantly claimed (see entire document; abstract; experiment 1; Results section, Table 1; discussion section).
It would have been obvious to combine the prohydrojasmon of Takahashi into the composition of ‘857 in order to form the claimed mixtures/compositions because Takahashi teaches that the jasmonate derivatives such as the claimed prohydrojasmon are good for inducing/enhancing fruit coloration and it would be obvious to add prohydrojasmon to the composition of ‘857 in order to form the claimed composition which would also be useful for enhancing grape color/fruit coloration as is claimed by ‘857.
It also would have been obvious to add the prohydrojasmon of Takahashi into the compositions of ‘857 in the same ratios and concentrations that are instantly claimed and taught by Uzquiza in order to form the claimed combinations/compositions because Takahashi teaches wherein prohydrojasmon is a synthetic jasmonate and that jasmonic acid and jasmonate derivatives function similarly to each other as plant hormones and/or plant growth regulators in higher plants that control fruit ripening and coloration including pigment accumulation. One of ordinary skill in the art would want to do this in order to form additional effective compositions for improving grape/fruit coloration and abscission. Further, it would be obvious to optimize the amounts/ratios of the active agents because “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).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the previous 112 rejection. Applicant’s filing of terminal disclaimer and its approval on 02/26/26 have rendered moot the previous double patenting rejections over copending 18479392 and 18479417, and these rejections are withdrawn.
Applicants arguments with respect to the 103 rejections have been fully considered but are not persuasive at this time. Firstly, applicants argue that Uzquiza does not teach prohydrojasmon and that Takahashi teaches that prohydrojasmon mimics jasmonic acid functions and does not teach that methyl jasmonate and prohydrojasmon would be expected to function similarly. The examiner respectfully disagrees because Takahashi teaches that PDJ (prohydrojasmon) and methyl jasmonate both enhance PAL expression (which includes PAL activity) thus contrary to applicant’s arguments the two compounds do function similarly and would be expected to function similarly especially since Takahashi also expressly teaches that jasmonic acid and its derivatives (which include methyl jasmonate and prohydrojasmon) are plant hormones and/or plant growth regulators that control fruit ripening and coloration and this teaching is in the cited paragraphs of the previous office action, thus, methyl jasmonate and prohydrojasmon which are both jasmonic acid derivatives would be expected to function similarly to each other since Takahashi teaches that jasmonic acid and its derivatives (which include methyl jasmonate and prohydrojasmon) are plant hormones and/or plant growth regulators that control fruit ripening and coloration. Thus, the examiner disagrees with applicants arguments because the prior art does teach that methyl jasmonate and prohydrojasmon function similarly to each other.
Applicants then argue that they have provided evidence of unexpected results. The examiner respectfully points out that these results are not commensurate in scope with applicant’s claims as they are currently written because applicants claims are to any mixture or composition comprising the claimed prohydrojasmon and 1-amino-1-cyclopropanecarboxylic acid, whereas the argued unexpected results were obtained with specific ratios and amounts of the claimed prohydrojasmon and 1-amino-1-cyclopropanecarboxylic acid. Additionally, the examiner respectfully again points out that not all of applicant’s results are synergistic and the instant claims do not require synergy nor do they require any specific amounts or ratios of applicant’s claimed prohydrojasmon and 1-amino-1-cyclopropanecarboxylic acid and as such these argued results are not commensurate in scope with the instant claims as they are currently written.
Applicants then argue the double patenting rejections over copending 19245857 and US10517299 and that they have provided evidence of unexpected results. These arguments are not persuasive for the same reasons discussed above with respect to the 103 rejection.
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.
THIS ACTION IS MADE FINAL. 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 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
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