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 .
Acknowledgement is made to Applicant’s response filed 04/20/2026.
Claims 1 and 3-20 are pending.
Claims 15-20 remain withdrawn.
Claim 1 is newly cancelled.
Claim 1 is currently amended.
Claims 1 and 3-14 are currently under consideration to the extent that they read upon Applicant’s elected species.
NOTE Applicant elected:
Solvent - 2-butoxy ethanol,
Active – a combination of auxin, gibberellin, and cytokinin,
Excluded – propylene glycol,
95-99% plant growth composition.
It is noted that the in process of searching the elected species, the Examiner previously came across art that read upon ethyl acetate as the solvent and gibberellin as the active. For the sake of compact prosecution, the species was expanded to read upon ethyl acetate and gibberellin.
Withdrawn Rejections
The rejections directed to claim 2 are withdrawn in view of Applicant’s cancellation of said claim.
Rejections Maintained and Made Again in view of Applicant’s Amendments
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 3-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims, as written, do not sufficiently distinguish over compositions comprising gibberellin and ethyl acetate as they exist naturally because the claims do not particularly point out any non-naturally occurring differences between the claimed composition and the naturally occurring compositions. The claimed composition reads upon naturally occurring safflowers, which comprises endogenous gibberellins (see as evidence Potter et al, Plant Growth Regulation 12:133-140, 1993, Abstract) and ethyl acetate (see as evidence Ethyl Acetate – Ataman Kimya which states that all eukaryotes have ethyl acetate).
In the absence of the hand of man, naturally occurring compositions (e.g. red clover) are considered non-statutory subject matter (Diamond v. Chakrabarty, 206 U.S.P.Q. 193 (1980)). It should be noted that the mere purity of a naturally occurring product does not necessarily impart patentability (Ex parte Siddiqui, 156 U.S.P.Q. 426 (1996)). However, when purification results in a new utility, patentability is considered (Merck Co. v. Chase Chemical Co., 273 F. Supp 68 (1967), 155 U.S.P.Q. 139, (District Court, New Jersey, 1967)). The examiner suggests narrowing the scope of claim 1 to include components that are not naturally occurring so as to indicate the hand of the inventor. See MPEP 2105.
Response to Arguments
Applicant argues in the remarks filed 01/09/2026 that the preamble indicates that the composition is a plant growth composition, and therefore, distinguishes over the naturally occurring safflower. Applicant’s argument is not found persuasive. The instant claims are directed to a product, not a method, wherein the preamble does not have a structural aspect to it that distinguishes over naturally occurring safflower. It is further noted that the components naturally occur in safflowers, wherein safflowers are plants that grow, demonstrating that the components are not in such an orientation as to negate their properties. Further, it is noted that if the components that naturally occur together in nature do not have the properties as instantly asserted, this would raise questions regarding the enablement of the instant claims since claim 1 indicates that any of the solvents (in any amount and in any form) combined with any active agent (in any amount and in any form) result in increased plant growth and provide improved stability. Should Applicant’s argument regarding the 101 be found persuasive, it would be at the expense of the enablement of the invention. As such, the rejection is maintained.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 3-14 (all claims currently under consideration) is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gallazzo et al (US 6,287,800).
Gallazzo teaches that the gibberellin product of the ion-exchange columns can
be further purified by extraction by ethyl acetate and crystallization (see entire document, for instance, column 5, line 66 through column 6, line 1). It is noted that gibberellin is recovered by adsorption which would eliminate all but residual solvent (see entire document, for instance, column 5).
Response to Arguments
Applicant argues in the remarks filed 04/20/2026 that Gallazzo does not teach a plant growth composition or that the composition provides stability. Applicant is reminded that in US practice, the intended use of a product claim carries no patentable weight unless it imparts a structural limitation. See MPEP 2111.02. Therefore, since the intended use of the composition as a plant growth composition and a provider of stability is merely identifying that the composition can be utilized in said manner, and does not impart a structural limitation, it is the Examiner's position that the composition is capable of performing the intended use. Applicant further asserts that the body of the claim has limitations directed to the composition being able to increase plant growth, and therefore, the rejection is improper. Applicant’s argument is not found persuasive. It is noted that the claims assert that the components, in any orientation and any amounts result in the claimed increase in plant growth, unless Applicant has excluded essential subject matter from the claims. As such, the rejection is maintained.
Applicant further asserts that the composition is a solvent composition, wherein Applicant does not believe that the prior art teaches said limitation. Applicant’s argument is not found persuasive. Specifically, when the gibberellin product is purified by extraction with ethyl acetate, the composition is taught. Applicant is once again reminded that the instant claims are directed to a product.
Applicant further argues that the prior art does not use ethyl acetate with the gibberellin, and rather, utilize activated carbon. Applicant’s argument is not found persuasive. The bottom of column 5 directly states, “The gibberellin product of the ion-exchange columns can be further purified by extraction by ethyl acetate and crystallization.“
Applicant additionally argues that the Office has failed to consider all of the limitations of claim 1. Applicant’s arguments are not found persuasive. Specifically, the Examiner did not indicate that the limitations are improper, but rather, it appears that Applicant believes the claims to require structural elements that are not clear from the claims or the Specification. A patent Applicant is required to enable one of ordinary skill in the art to make and use the invention. Applicant appears to assert that the composition having the intended use of a plant growth composition and being able to achieve stability are not merely properties of the components, but have some undisclosed structural aspects. The Examiner does not find this argument persuasive, and rather, maintains the rejection based on the plain and normal reading of the specification and the claims.
Applicant further asserts that the prior art does not teach Applicant’s elected species. Applicant is again reminded that the in process of searching the elected species, the Examiner previously came across art that read upon ethyl acetate as the solvent and gibberellin as the active. For the sake of compact prosecution, the species was expanded to read upon ethyl acetate and gibberellin. As such, the rejection is proper.
Further, regarding the amount of the solvent composition, Applicant has previously asserted that the prior art does not teach the instantly claimed amount. It is again reiterated that the instantly claimed range is modified by the term “about”, wherein the instant specification indicates that, “Where modified by the term "about" the claims appended hereto include equivalents to these quantities.” It is noted that since the solvent is functioning as a solvent and the gibberellin is functioning as the active, that any particular amount would be considered equivalent since Applicant has not articulated a particular criticality of said amount.
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.
Claim(s) 1 and 3-14 (all claims currently under consideration) is/are rejected under 35 U.S.C. 103 as being unpatentable over Gallazzo et al (US 6,287,800).
Gallazzo recites gibberellin being isolated utilizing ethyl acetate (see entire document, for instance, column 5, lines 39-44, 66, and 67). It is noted that gibberellin is recovered by adsorption which would eliminate all but residual solvent (see entire document, for instance, column 5).
Gallazzo, while teaching that the gibberellin is recovered by adsorption, does not expressly state that the solvent composition comprises between about 95 to about 99% of the plant growth composition.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instantly claimed invention, to optimize the amount of gibberellin in the composition, particularly since Gallazzo teaches the purpose is the isolation of the gibberellin. It is noted that even when isolation is intended, there will be residual solvent. It is further noted that the range is modified by the term “about”, wherein the instant specification indicates that, “Where modified by the term "about" the claims appended hereto include equivalents to these quantities.” It is noted that since the solvent is functioning as a solvent and the gibberellin is functioning as the active, that any particular amount would be considered equivalent since Applicant has not articulated a particular criticality of said amount.
It is noted regarding the limitations directed to the compatibility of the composition, since the composition comprises the same components as the instantly claimed composition, it would have the same properties, including compatibilities, solubility profiles, and stability profile, and temperature properties. It is noted that MPEP 2112.01 states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. /n re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
Response to Arguments
Applicant argues in the remarks filed 04/20/2026 that Gallazzo does not teach a plant growth composition or that the composition provides stability. Applicant is reminded that in US practice, the intended use of a product claim carries no patentable weight unless it imparts a structural limitation. See MPEP 2111.02. Therefore, since the intended use of the composition as a plant growth composition and a provider of stability is merely identifying that the composition can be utilized in said manner, and does not impart a structural limitation, it is the Examiner's position that the composition is capable of performing the intended use.
Applicant asserts that the prior art does not teach that the composition is for the same purpose, and therefore, the prior art does not read on the instantly claimed invention. Applicant’s argument is not found persuasive. It is noted that the art is not required to teach the same reasoning for adding components as Applicant, MPEP 2144 (IV) states “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, 411 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).”
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 and 3-14 (all claims currently under consideration) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,812,753. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued Patent recites a plant growth composition comprising 2-butoxy ethanol, gibberellin, auxin, and cytokinin (see claim 1).
Response to Arguments
Applicant requests in the remarks filed 04/20/2026 that the double patenting rejection be maintained and that it will be addressed, if necessary, once the claims are found to be otherwise patentable. This argument is not found persuasive against the ground of rejection and therefore, the rejection is maintained.
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 TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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, Bethany Barham can be reached at 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611
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